United States District Court, W.D. Washington, Tacoma
ORDER DENYING THE REMAINING QUESTIONS ON
DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
BENJAMIN H. SETTLE, UNITED STATES DISTRICT JUDGE
matter comes before the Court on Defendant Crawl Space
Cleaning Pros, Inc.'s (“CSCP”) motion for
summary judgment, Dkt. 39, the Court's Order denying the
motion in part, granting it in part, and requesting
supplemental briefing, Dkt. 75, and the parties'
supplemental briefing, Dkts. 80, 83, 90, 91. The Court has
considered the pleadings filed in support of and in
opposition to the motion and the remainder of the file and
hereby denies the remainder of the motion for the reasons
PROCEDURAL HISTORY AND FACTUAL BACKGROUND
suit arises from copyright and trademark disputes between
Plaintiff Clean Crawl, Inc. (“CCI”) and CSCP, two
businesses which clean attic and crawl spaces and provide
pest exclusion services for homes in the Western Washington
area. See Dkts. 48 at 7, 39 at 2.
began doing business in its current iteration in 2001 when
its president, Charles Henrichsen (“Henrichsen”),
transferred his Bio Bug Pest Management, Inc. business to
CCI, Dkt. 48 at 6, and began using the trade name CLEAN
CRAWLS, Dkt. 49, Declaration of Charles Henrichsen
(“Henrichsen Decl.”) at 3. CSCP, using the
trade name Crawl Pros, began operations on January 9, 2013,
under founder and owner Richard Herron
(“Herron”). Dkt. 39 (citing Dkt. 40, Declaration
of Richard Herron (“Herron Decl.”), at 1). CCI
provides “air duct cleaning services, animal
contamination cleaning and disposal services, pest control
for commercial and residential buildings, and environmental
containment.” Dkt. 48 at 7 (citing Henrichsen Decl. at
2-3, 6-7). CSCP provides “crawlspace and attic cleaning
and restoration, insulation installation, crawl space
encapsulation and sealing, rodent exclusion, duct sealing,
and water mediation and flooding.” Dkt. 39 at 2 (citing
Herron Decl. at 1). CSCP characterizes the nature of the
companies' business as “substantially
similar.” Dkt. 39 at 2. CCI confirms this, stating that
“[i]t is undisputed that both companies provide
identical, directly competing services.” Dkt. 48 at 24.
declares that he met Herron in 2008 through an insulation and
energy efficiency industry association and mentored Herron in
starting a business, Sustainable Building and Insulation
(“SBI”). Henrichsen Decl. at 3-4. Henrichsen
declares that he made SBI a CCI subcontractor, and one of his
employees, CCI sales representative Jared Pullen
(“Pullen”), referred “many jobs” to
SBI. Id. at 4. Henrichsen declares that these
referrals allowed Pullen and Herron to be “heavily
exposed” to CCI's “family of trademarks and
copyrights” between 2010 and 2013. Id.
Henrichsen also declares that all of CCI's copyrighted
materials at issue “were substantially completed in the
form registered in the 2008-2009 time frame.”
Id. at 5. Finally, Henrichsen declares that CCI has
used its trademarks and copyrights with customers in fourteen
western Washington counties since 2010. Id. at 6.
August 14, 2017, CSCP filed a complaint against CCI in the
Pierce County Superior Court for violation of
Washington's Trademark Registration Act, RCW Chapter
19.77 et seq., common law trademark infringement,
and violation of Washington's Consumer Protection Act
(“CPA”), RCW Chapter 19.86. Dkt. 39 at
September 6, 2017, CCI filed this lawsuit against CSCP,
alleging copyright infringement, trademark infringement,
false designation of origin and unfair competition, and
violation of the CPA, and seeking a permanent injunction
against infringement of the copyrighted materials and the
trademarked materials, destruction of all infringing
materials, damages, and other relief. Dkt. 1. On March 19,
2018, CSCP filed an amended answer in the instant case,
asserting counterclaims and affirmative defenses. Dkt. 32.
September 6, 2018, CSCP filed a motion for summary judgment.
Dkt. 39. On January 29, 2019, the Court granted the motion as
to CCI's copyright claims for two of the five copyrighted
documents at issue. Dkt. 75 at 40. The Court denied summary
judgement as to CCI's trademark claims, and reserved
ruling and requested supplemental briefing as to CCI's
copyright claims for the remaining three documents, a Project
Graph, a Project Bid Sheet, and a Venting Calculator.
Id. On February 15, 2019, the parties submitted
opening supplemental briefing. Dkts. 80, 83. On February 22,
2019, the parties submitted responsive supplemental briefing.
Dkts. 90, 91.
Summary Judgment Standard
judgment is proper only if the pleadings, the discovery and
disclosure materials on file, and any affidavits show that
there is no genuine issue as to any material fact and that
the movant is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(c). The moving party is entitled to judgment
as a matter of law when the nonmoving party fails to make a
sufficient showing on an essential element of a claim in the
case on which the nonmoving party has the burden of proof.
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
There is no genuine issue of fact for trial where the record,
taken as a whole, could not lead a rational trier of fact to
find for the nonmoving party. Matsushita Elec. Indus. Co.
v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)
(nonmoving party must present specific, significant probative
evidence, not simply “some metaphysical doubt”).
See also Fed. R. Civ. P. 56(e). Conversely, a
genuine dispute over a material fact exists if there is
sufficient evidence supporting the claimed factual dispute,
requiring a judge or jury to resolve the differing versions
of the truth. Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac.
Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.
determination of the existence of a material fact is often a
close question. The Court must consider the substantive
evidentiary burden that the nonmoving party must meet at
trial-e.g., a preponderance of the evidence in most civil
cases. Anderson, 477 U.S. at 254; T. W. Elec.
Serv., Inc., 809 F.2d at 630. The Court must resolve any
factual issues of controversy in favor of the nonmoving party
only when the facts specifically attested by that party
contradict facts specifically attested by the moving party.
The nonmoving party may not merely state that it will
discredit the moving party's evidence at trial, in the
hopes that evidence can be developed at trial to support the
claim. T. W. Elec. Serv., Inc., 809 F.2d at 630
(relying on Anderson, 477 U.S. at 255). Conclusory,
nonspecific statements in affidavits are not sufficient, and
missing facts will not be presumed. Lujan v. Nat'l
Wildlife Fed'n, 497 U.S. 871, 888-89 (1990).
Remaining Copyright Claims
before the Court are CCI's claims that CSCP has
deliberately copied and used three of CCI's works of
authorship named in pending federal copyright applications:
(1) CCI's Project Graph, (2) CCI's Project Bid Sheet,
and (3) CCI's Venting Calculator. Dkt. 1, ¶¶
alleging copyright infringement must demonstrate: “(1)
ownership of a valid copyright and (2) copying of constituent
elements of the work that are original.” Feist
Publications, Inc. v. Rural Telephone Service Co., 499
U.S. 340, 361 (1991) (“Feist ”).
ownership prong is in question, the Court must consider five
elements: “(1) originality in the author; (2)
copyrightability of the subject matter; (3) citizenship
status of the author, such as to permit a claim of copyright;
(4) compliance with applicable statutory formalities; and (4)
(if the plaintiff is not the author) a transfer of rights or
other relationship between the author and the plaintiff so as
to constitute the plaintiff the valid copyright
claimant.” Advanz Behavioral Mgmt. Res., Inc. v.
Miraflor, 21 F.Supp.2d 1179, 1183 (C.D. Cal. 1998)
(“Advanz”) (citing 4 Nimmer on Copyright
§ 13.01(A) (1997)). “[O]nly those elements of a
work that are protectable and used without the author's
permission can be compared when it comes to the ultimate
question of illicit copying.” Apple Computer, Inc.
v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994).
If the second prong, copying, is at issue but the plaintiff
does not have evidence of ...