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Eat Right Foods Ltd. v. Whole Foods Market, Inc.

United States District Court, W.D. Washington, Seattle

May 25, 2018

WHOLE FOODS MARKET, INC., et al., Defendants.




         This matter comes before the Court on remand from the Ninth Circuit Court of Appeals. Dkts. #127 and #128. This Court previously decided the parties' Cross-Motions for Summary Judgment. Dkts. #90, #96 and #112. Defendants, Whole Foods Market Services, Inc. (“WFMI”) and Whole Foods Market Pacific Northwest, Inc. (“WFMPNW”), had argued that they were entitled to summary judgment on all claims on their affirmative defenses of laches and acquiescence. Dkt. #90. Plaintiff, Eat Right Foods, Ltd. (“ERF”), had responded (and cross-moved) that it was entitled to summary judgment in its favor because the evidence did not support either defense in this case. Dkt. #96. This Court disagreed with Plaintiff, granted Defendants' motion for summary judgment, and denied Plaintiff's motion for summary judgment. Dkt. #112. Plaintiff then appealed. On January 29, 2018, the Ninth Circuit Court of Appeals reversed this Court in part, remanding the matter for further consideration of Defendants' affirmative defenses. Dkt. #127. The Court does so here, and now VACATES its prior Order on the cross-motions for summary judgment in this case, but again GRANTS Defendants' motion for summary judgment and DENIES Plaintiff's motion for summary judgment for the reasons discussed below.


         This matter arises from allegations of trademark infringement, false designation of origin and unfair competition. Dkt. #16 at ¶ ¶ 34-43. Plaintiff alleges that it has used the trademark “EAT RIGHT” since 2001 and the trademark “EATRIGHT” since 2003. Id. at ¶ 19. Plaintiff further alleges that from 2004 to 2013, Defendants sold products produced by Plaintiff and sold under the trademark “EATRIGHT.” Id. at ¶ 30. Plaintiff alleges that Defendants have since sold and marketed products using a trademark confusingly similar to “EATRIGHT” without authorization by Plaintiff, in violation of federal trademark laws and Washington's Consumer Protection Act. Id. at ¶ ¶ 32-43.

         Defendants raised an affirmative defense that Plaintiff's claims are barred by the doctrines of laches and acquiescence. Dkt. #23, Affirmative Defenses at ¶ 1. The parties' cross-motions for summary judgment addressed the affirmative defense only. After the Court granted summary judgment in favor of Defendants, determining that the affirmative defenses of laches and acquiescence barred the claims, Plaintiff appealed to the Ninth Circuit Court of Appeals. Dkt. #120.

         The Ninth Circuit Court of Appeals issued its Opinion remanding this matter on January 29, 2018. Dkt. #127. It issued its Mandate on February 20, 2018. Dkt. #128. The Court of Appeals affirmed in part, and reversed and remanded in part. The court determined that disputed material facts establishing or defeating the affirmative defenses of laches and acquiescence had not been resolved, and therefore the Court erred in granting summary judgment. Dkt. #127. Specifically, the Court of Appeals instructed that on remand:

• This Court should reevaluate the evidence in the light most favorable to the non-moving party - i.e., as if Eat Right Foods (“ERF”) delayed filing suit because it was trying to settle its claims against Whole Foods. Dkt. #127 at 17. The Court of appeals noted that this Court could still determine that the delay was unreasonable, but the Court must proceed from the premise that ERF's account of why it waited to file suit is true. Id.;
• The evidence of expectations-based prejudice this Court considers must be limited to actions Whole Foods took during the period that ERF delayed filing suit. Dkt. #127 at 20; and
• If this Court determines on remand that ERF delayed unreasonably in filing suit and this delay prejudiced Whole Foods, it must consider the extent and reasonableness of Whole Foods' reliance on ERF's affirmative representations before it reaches a finding on acquiescence. Dkt. #127 at 23.

         After remand, this Court requested supplemental briefing from the parties, which has since been filed. Dkts. #133-#137. Thus, this matter is now ripe for review.


         A. Legal Standard on Summary Judgment

         Summary judgment is appropriate where “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). In ruling on summary judgment, a court does not weigh evidence to determine the truth of the matter, but “only determine[s] whether there is a genuine issue for trial.” Crane v. Conoco, Inc., 41 F.3d 547, 549 (9th Cir. 1994) (citing Federal Deposit Ins. Corp. v. O'Melveny & Meyers, 969 F.2d 744, 747 (9th Cir. 1992)). Material facts are those which might affect the outcome of the suit under governing law. Anderson, 477 U.S. at 248. A factual dispute is “genuine” if the evidence is such that reasonable persons could disagree about whether the facts claimed by the moving party are true. Aydin Corp. v. Loral Corp., 718 F.2d 897, 902 (9th Cir. 1983). [T]he issue of material fact required . . . to be present to entitle a party to proceed to trial is not required to be resolved conclusively in favor of the party asserting its existence; rather, all that is required is that sufficient evidence supporting the claimed factual dispute be shown to require a jury or judge to resolve the parties' differing versions of the truth at trial. First Nat. Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288-89, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968).

         The Court must draw all reasonable inferences in favor of the non-moving party. See O'Melveny & Meyers, 969 F.2d at 747, rev'd on other grounds, 512 U.S. 79 (1994). However, the nonmoving party must make a “sufficient showing on an essential element of her case with respect to which she has the burden of proof” to survive summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Further, “[t]he mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff.” Anderson, 477 U.S. at 251.

         While the parties do dispute some facts, they agree that the instant issues are appropriate for disposition on their cross-motions. However, cross motions for summary judgment do not warrant the conclusion that one of the motions must be granted. The Court must still determine whether summary judgment for either party is appropriate. See Fair Housing Council of Riverside County, Inc. v. Riverside Two, 249 F.3d 1132, 1136-1137 (9th Cir. 2001).

         B. Plaintiff's ...

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