• Mutual Defensive Collateral Estoppel Too

    by  • March 21, 2018 • trademark • 0 Comments

    I have written once before about the disputing members of the band RATT. I’ll remind you again about who they are, mostly because this video makes me smile every time I watch it:

    WBS, Inc. claims to be the successor-in-interest to the trademark RATT, by assignment from the predecessor partnership that consisted of the band members. In the last lawsuit WBS, Inc. was suing former member Croucier for calling himself “RATT’s Juan Croucier.” The court held that the assignment from the partnership to WBS was defective and the case was dismissed.

    We now have a later-filed suit against another former band member, Stephen Pearcy. Pearcy is a little differently situated than Croucier, because Pearcy formed the band and was the only consistent member of it up until the time the plaintiff was formed and supposedly acquired the trademark. Pearcy claims that he was never given the shares that were his consideration for agreeing to the assignment to WBS and that the other band members expelled him from WBS. The statement of the case takes longer than the analysis, which is reproduced in full below, all two paragraphs:

    III. Discussion

    Pearcy has adequately demonstrated the absence of any genuine issues of material fact. Plaintiff cannot prevail on its trademark infringement-based causes of action without proving that it has an ownership interest in the RATT trademarks. See Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202-3 (9th Cir. 2012). An invalid assignment of a trademark conveys no rights to that mark. See Mr. Donut of America v. Mr. Donut, Inc., 418 F.2d 838, 842 (9th Cir. 1969).

    Plaintiff alleges that it obtained an ownership interest in the trademarks in 1997 when the RATT Partnership assigned the marks to WBS. Pearcy has presented uncontroverted evidence, however, that the members of the RATT Partnership did not unanimously consent, either in writing or otherwise, to the assignment of the RATT marks to WBS. Thus, any purported assignment of the marks to WBS was invalid, and conveyed no rights. Because no reasonable trier of fact could conclude that WBS had an ownership interest in the RATT marks, Pearcy’s motion for summary judgment must be granted.8

    The decision was based on the same evidence of non-ownership of the mark used in WBS, Inc. v. Croucier. But there is more than one way to crack an egg, it could just as well have been decided on the basis of mutual defensive collateral estoppel, addressed by the court in footnote 8: “As noted above, Plaintiff has not filed a substantive opposition to Pearcy’s motion, which argued not only that the assignment of the marks to WBS was invalid, but also that any argument to the contrary would be barred by the doctrine of collateral estoppel and this Court’s judgment in the Croucier case. See Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000) (explaining that collateral estoppel may apply when “(1) the issue necessarily decided at the previous proceeding is identical to the one which is sought to be relitigated; (2) the first proceeding ended with a final judgment on the merits; and (3) the party against whom collateral estoppel is asserted was a party or in privity with a party at the first proceeding.”)”

    Yeah, that too.

    WBS, Inc. v. Pearcy, No. CV16-03495 DDP(JC), (C.D. Cal. Mar. 6, 2018).

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