Judicial Notice of Internet Evidence (Lanham Act Case): (1) Party’s Filings As They Appear on Secretary of State Website; (2) Corporate Info from Google Search; (3) Co. Profile on ZoomInfo.com; (4) Party’s Website (Admission)
Nat’l Grange of Order of Patrons of Husbandry v. Cal. State Grange, 2016 U.S. Dist. LEXIS 53038 (E.D. Cal. Apr. 20, 2016):
Plaintiff National Grange of the Order of Patrons of Husbandry brought this action against defendant California State Grange for trademark infringement and unfair competition under the Lanham Act. Presently before the court is plaintiff's motion for an [*2] injunction pursuant to the Lanham Act, 15 U.S.C. § 1116(a). (Docket No. 126.) For the reasons explained below, plaintiff's motion is GRANTED in part.
I. Factual and Procedural Background
Plaintiff is a national fraternal organization founded in 1867 to promote the interests of farming and agriculture. (July 14, 2015 Order at 1-2 (Docket No. 60).) Plaintiff has grown to a network of approximately 2,000 local chapters across the country, through which it provides a variety of goods and services to agricultural communities. (Id. at 2.) Plaintiff owns numerous registered numerous trademarks featuring the word "Grange," which it uses for associational, educational, and advocacy activities. (Id.)
Plaintiff chartered defendant as its affiliate California state chapter in 1873. (Id.) As a chartered affiliate, defendant collected dues from local subordinate granges and turned over a portion of those dues to plaintiff. (Id.) In 1946, defendant registered as a non-profit corporation with the California Secretary of State. (Huber Decl. ¶ 8, Mar. 22, 2016 (Docket No. 126-3).)
In 2012, a dispute arose between plaintiff and defendant. (Compl. ¶ 5 (Docket No. 1).) As a result, plaintiff revoked defendant's charter and the parties [*3] disaffiliated. (Id. ¶ 7.) Plaintiff's California-based members subsequently voted to reorganize a California state chapter under the name Grange of the State of California's Order of Patrons of Husbandry, Chartered. (Id. ¶ 38.)
Despite the parties' disaffiliation, defendant continued to use its registered corporate name, California State Grange, and represent itself publically as California State Grange on its website, at events, and in its newsletters. (July 14, 2015 Order at 2.) In March 2014, plaintiff filed this action, bringing claims for (1) federal trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114; (2) unfair competition and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) federal trademark dilution under § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); and (4) federal trademark counterfeiting under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). (Compl. ¶¶ 48-101.)1
1 This case is related to another action presently pending before this court, National Grange of the Order of Patrons of Husbandry v. California State Grange, Civ. No. 2:16-201 WBS AC. (Docket No. 112.) Plaintiff also filed an action in California state court seeking a declaration of the parties' rights and duties following the revocation of defendant's charter. [*4] National Grange v. California State Grange, Civ. No. 34-2012-130434 (Cal. Sup. Ct. filed Oct. 1, 2013).
On July 14, 2015, the court granted plaintiff's motion for partial summary judgment on its claims for trademark infringement and unfair competition and false designation of origin. (July 14, 2015 Order at 12, 19.)2 The court then denied plaintiff's motion to enjoin defendant from using the words "Granger," "CSG," and "CG" because summary judgment was limited to the use of "Grange." (Sept. 29, 2015 Order at 4.) On September 29, 2015, the court entered final judgment permanently enjoining "defendant and its agents, affiliates, and assigns, or any party acting in concert with defendant and its agents, affiliates, and assigns from using marks containing the word 'Grange.'" (Docket No. 86.)
2 Plaintiff voluntarily dismissed its remaining claims with prejudice. (Docket No. 64.)
On October 28, 2015, defendant filed a notice of appeal from the court's judgment and its July 14 and September 29 Orders. (Docket No. 87.) Plaintiff cross-appealed the portion of the court's September 29, 2015 Order limiting injunctive relief to the word "Grange." (Docket No. 90.) The appeals are currently pending before [*5] the United States Court of Appeals for the Ninth Circuit. In January 2016, the court denied defendant's motion to stay the injunction pending appeal, holding that plaintiff "would be substantially injured by defendant's continued infringement of its trademark were the court to grant a stay of the injunction." (Jan. 12, 2016 Order at 4 (Docket No. 108).)
Defendant additionally registered with Sacramento County to do business as "California State Guild" and "CSG." (Sept. 29, 2015 Order at 4.) To date, however, defendant continues to use "California State Grange" as its corporate name on file with the California Secretary of State. (McFarland Decl. ¶¶ 12-13, Feb. 22, 2016 ("McFarland I Decl.") (Docket No. 114-1).) Based on defendant's continued use of "California State Grange," among other things, plaintiff brought a motion for an order to show cause why defendant should not be held in contempt for violating the court's injunction. (Docket No. 109.) The court denied that motion without prejudice to plaintiff filing the pending motion and requesting to enjoin defendant's specific conduct based on the issues litigated and evidence presented to the court at the time of the injunction. (Docket [*6] Nos. 117, 120, 125.)
Plaintiff now moves to enjoin defendant, its agents, affiliates, and any party acting in concert with defendant, from: (1) using "Grange," "Granger," or "CSG" in conducting business activities or as part of a business, trade, or domain name; (2) using "Grange" in corporate registrations or other filings with any federal, state, or local government; and (3) representing themselves to be the successor to "California State Grange." (Docket No. 126-4.) Plaintiff further requests that defendant (4) remove the name "Grange" from all telephone and business directory listings; (5) include a prominent disclaimer on its website and in all future communications that it is "not affiliated with the California State Grange"; (6) include a hyperlink on its website that redirects users to plaintiff's California-based grange website; and (7) pay plaintiff reasonable attorney's fees in bringing the pending motion and its previous motion for an order to show cause why defendant should not be held in contempt. (Id.)
B. Defendant's Corporate Name
Defendant continues to use "Grange" as part of its corporate name. The California Secretary of State website publically displays defendant's name as "California State Grange" and Robert McFarland as its president. See Business Entity Detail for "CALIFORNIA STATE GRANGE," http://kepler.sos.ca.gov (last visited Apr. 14, 2016).3 Defendant's lobbying registration filed with the California Secretary of State also lists its name as "California State Grange." (McFarland Decl. Ex. C, Apr. 1, 2016 ("McFarland II. Decl.") (Docket No. 132-8).)
3 The court takes judicial notice of filings with the California Secretary of State and County of Sacramento because they are matters of public record whose accuracy is not subject to reasonable dispute. See Fed. R. Evid. 201; Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir.2001); see also Grant v. Aurora Loan Servs., Inc., 736 F. Supp. 2d 1257, 1265 (C.D. Cal. 2010) (judicial notice of incorporation filings with Delaware secretary of state); Helmer v. Bank of Am., N.A., Civ. No. 2:12-733 TLN, 2013 WL 4546285, at *2 (E.D. Cal. Aug. 27, 2013) (judicial notice of records filed with county).
H. Business Directory Listings
Plaintiff requests that the court order defendant to "cancel and discontinue use of all telephone number listings containing the name 'Grange' and [*35] delete all appearances of the name 'Grange' from Defendant's business directory listings with Google and those appearing at ZoomInfo and similar internet websites." Defendant argues that it does not have control over the contents of Google or ZoomInfo, has never requested any information to be posted on those sites, and has not encouraged any third-party website to refer to defendant using the word "Grange." (McFarland II Decl. ¶ 12; Keel Decl. ¶ 8.)
Defendant's address and telephone number appear in response to a Google search for "California State Grange." (Komski I Decl. ¶ 10.) The Google result is a business listing for "California State Grange" in the Google Maps database. See "California State Grange," Google Search, https://www.google.com/search?q=California+State+Grange (last visited Apr. 14, 2016). Immediately under the listed information, there is a link titled "Suggest an edit." That link allows users who "see something wrong with a business [they] don't own or manage" to report wrong business information or remove their own information from an unrelated business that appears on a Google search result. Add or Edit Business Information on Maps, Google.com, https://support.google.com/business/answer/6174435 (last visited Apr. 14, 2016).5 Users can also remove data from Google's [*36] directory for legal reasons by submitting a "legal request." Report a Data Problem in Google Maps, Google.com, https://support.google.com/maps/answer/3094088 (last visited Apr. 14, 2016).
5 To the extent some of the descriptions about Google and ZoomInfo's websites are not in the record, the court takes judicial notice of www.Google.com and www.ZoomInfo.com and the information contained therein pursuant to Federal Rule of Evidence 201. See Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir. 2005) (finding judicial notice of webpages appropriate because "[j]ust as a reader must absorb a printed statement in the context of the media in which it appears, a computer user necessarily views web pages in the context of the links through which the user accessed those pages"); Hendrickson v. eBay, Inc., 165 F. Supp. 2d 1082, 1084 n.2 (C.D. Cal. 2001) (taking "judicial notice of www.eBay.com and the information contained therein pursuant to Federal Rule of Evidence 201").
Defendant's company profile on ZoomInfo.com lists its name as "CSG" and its website as www.californiagrange.org. See "CSG" Company Profile, www.zoominfo.com/c/California-State-Grange/353967545 (last visited Apr. 14, 2016). Its company description states:
The CSG (formerly California State Grange) is the oldest agricultural organization in California, started in 1870. Cities and townships have grown up around our rural halls and the CSG has evolved [*37] into a community service organization with 10,000 members and 206 chapters across California. CSG community halls are often the center of their community, providing opportunities, culture and education, entertainment, emergency shelter, and a meeting place where new friends are made and old friends are cherished. Everyone is welcome to apply for membership in the CSG. Each member contributes at their own pace and level of participation. Each chapter decides how to best serve the community.
Id. The court has previously found that similar language posted on defendant's website strongly suggested that defendant was affiliated with plaintiff. (July 14, 2015 Order at 9-10.)
Like Google, ZoomInfo also allows users to notify it if a company profile in their name is inaccurate or out-of-date and to correct that information. See Contact Us, ZoomInfo, http://www.zoominfo.com/business/contact (last visited Apr. 14, 2016). Users may also remove their business profile completely from the directory. See FAQ, ZoomInfo, http://subscriber.zoominfo.com/usercenter/index.php/pro-faq#removal (last visited Apr. 14, 2016).
Defendant's assertions that it has no control over the contents of its listings on Google or ZoomInfo are therefore not entirely true. Defendant concedes that it has not "attempted to influence [*38] Google or ZoomInfo search results" and has not sent any communications to those websites "since the injunction was entered." (McFarland I Decl. ¶ 18; Docket No. 114 at 14.). Accordingly, since defendant is able to utilize easily-accessible features on Google and ZoomInfo to remove or correct its public business information, the court will order defendant to remove the word "Grange" from all public telephone and business directory listings, on the internet and otherwise, to the extent it can do so.
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