United States District Court, W.D. Washington, Tacoma
ORDER DENYING DEFENDANT'S SECOND MOTION FOR
PARTIAL SUMMARY JUDGMENT AND GRANTING PLAINTIFF'S MOTION
FOR LEAVE TO FILE DECLARATION
BENJAMIN H. SETTLE UNITED STATES DISTRICT JUDGE.
matter comes before the Court on Defendant Crawl Space
Cleaning Pros' (CSCP) second motion for partial summary
judgment, Dkt. 120, and Plaintiff Clean Crawl, Inc's
(“CCI”) motion for leave to file declaration of
Charles E. Henrichsen (“Second Henrichsen
Decl.”), Dkt. 129. The Court has considered the
pleadings filed in support of and in opposition to the
motions and the remainder of the file and hereby denies the
motion for summary judgment and grants the motion for leave
to file declaration for the reasons stated herein.
PROCEDURAL HISTORY AND FACTUAL BACKGROUND
suit arises from copyright and trademark disputes between CCI
and CSCP, two businesses which clean attic and crawl spaces
and provide pest exclusion services for homes in the Western
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. CCI is headquartered
in Marysville, Washington. Dkt. 1, ¶ 2. CSCP 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). Henrichsen and Herron had met each
other in 2008, and Henrichsen declares that he 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.
specifically declares that by 2012, Herron and Pullen
“knew and had used repeatedly in association with [CCI]
its family of trademarks, ” including the CLEAN CRAWLS
trade name, WE GO WHERE YOU DON'T WANT TO (“Slogan
One”), and WE DO THE WORK YOU DON'T WANT TO
(“Slogan Two”) (collectively “the family of
marks”). Henrichsen Decl. at 4. Henrichsen declares
that CCI has used the Clean Crawls trade name, Slogan One,
and Slogan Two “and similar slogan variations with
customers on a daily basis, and have for more than 15 years
throughout the Pacific Northwest, ” but typically has
not used its slogans in printed advertising or on company
vehicles or other items, “instead using them primarily
on the Internet and verbally with customers, associates, and
the public.” Id. 2-3, 6, 7. Henrichsen and
others at CCI declare that CCI has used the Slogans
extensively dating back to at least 2010. See, e.g.
Henrichsen Decl. at 4; Dkt. 50 Declaration of Vice President
of CCI Dale Gjerness (“Gjerness Decl.”) at 4-5;
Dkt. 52, Declaration of Patrick J. Smith (“Smith
Decl.”), at 1.
testified as CSCP's corporate representative that CSCP
acquired the CrawlPros.com domain name “either in the
end of 2012 or the beginning of 2013.” Dkt. 121, Ex. 2
at 211. CSCP began operations at a single location in Tacoma
in early 2013. Herron declares that it used Slogan One
extensively to brand its business. See Herron Decl.
at 6-41; Dkt. 120 at 2. Herron testified as CSCP's
corporate representative that an employee named Paul came up
with Slogan One in “April, May, around that time frame,
in 2013” as Paul was finishing out his time with CSCP
before moving to Australia. Dkt. 121 at 79-80.
Vice President Dale Gjerness testified that he became aware
of CSCP's existence by “2014, 2013, somewhere in
there.” Dkt. 123, Ex. 1 at 49. CCI General Manager
Andrew Gjerness testified as CCI's corporate
representative that CCI first became aware that CSCP used the
name Crawl Space Cleaning Pros “sometime in mid-2013,
around the summer, ” because salesmen “down in
that area” including Pullen and Henrichsen heard that
Herron had started a new company and was operating under that
name. Dkt. 121, Ex. 2 at 11.
2013, CSCP placed Slogan One in advertising including an
Angie's list ad, on company cars and trucks, and on its
company headquarters. Herron Decl. at 6-24. CSCP opened its
second location in Everett, Washington sometime between 2013
and 2016. Dkt. 120 at 2 & n.6 (citing Dkt. 119, Ex. A at
131). Between 2013 and 2019, Herron testified,
CCI and CSCP would have both been required to have industry
representatives present at annual meetings for three utility
companies-Tacoma Power, Puget Sound Energy, and Snohomish
County Public Utility District. Dkt. 121, Ex. 5 at 64.
Henrichsen testified that he saw Herron at Tacoma Power and
Puget Sound Energy meetings. Dkt. 121, Ex. 4 at 86. Herron
also testified that during that span “[t]here could be
times at the Seattle Home Show where [CCI does] show up and
have a booth that [CSCP] would have a booth too.”
Id. Henrichsen testified that the Seattle Home Show
occurs twice a year but CCI “didn't always do it
twice a year. Most of the time we did it, but not
always.” Dkt. 121, Ex. 4 at 76.
testified as CCI's corporate representative that in
Spring 2014, he was at the Seattle Home Show at CSCP's
booth, and Henrichsen came by the booth. Dkt. 121, Ex. 2 at
64. Herron testified that Henrichsen looked at a banner on
the booth which featured Slogan One, read Slogan One out loud
to Herron, and told Herron “[t]hat's a great
slogan, Richard.” Id. Herron testified that
the spring Home Show was usually held in March or April.
Id. at 65. Henrichsen testified that his guess was
the first time he saw CSCP at the show was in 2013 or 2014,
“[s]omewhere around the time” that CSCP started
and testified that he would see CSCP's banners. Dkt. 121,
Ex. 4 at 76-77. When asked in deposition if he ever
complimented Herron on his booth, Henrichsen replied
“Maybe.” Dkt. 121, Ex. 4 at 78. Henrichsen
declared that he never saw Slogan One at the Home Show and
declared that if he had, he would have complained about it.
Dkt. 122 at 5 (citing Second Henrichsen Decl., ¶ 3).
Henrichsen also declared that he never complimented Herron on
CSCP's use of Slogan One. Id. (citing Second
Henrichsen Decl., ¶ 4).
2014, according to Herron's testimony, he was approached
by Pullen at an industry show. Dkt. 121, Ex. 5 at
55-56. Pullen told Herron he had planned to leave
CCI to start his own business but that plan had failed and
CCI had reassigned his territory, so he was interested in a
position with CSCP. Id. Herron conducted two
interviews with Pullen “probably in February or March
of 2014” and then hired him as CSCP's sales manager
“in 2014.” Id. at 56. Pullen worked for
CSCP “for approximately six months before [CCI] hired
him back.” Id. at 56-57. Herron testified that
at an unspecified point, Henrichsen told him he “could
use [CCI's Project Graph] to create my own graph as long
as [Herron] changed it up some.” Dkt. 127 at
88-89. Herron as CSCP's corporate
representative testified that Pullen created CSCP's
venting calculator. Dkt. 119 at 184-85.
testified that approximately fifteen employees left CCI
around the time Pullen left and when they came back some
three weeks later, told him they had been working at CSCP.
Dkt. 121, Ex. 4 at 71. He declared that this episode
constituted “a major disruption to our business in the
southern branch.” Henrichsen Decl. at 5. Herron
testified as CSCP's corporate representative that
“somewhere around March, April” of 2014, fifteen
CCI employees came to CSCP seeking employment because CCI
reduced their commissions and he hired three of them. Dkt.
119 at 168-69. Herron also testified that during a
conversation after a Tacoma Power annual meeting, Henrichsen
told him that most of these employees returned to CCI. Dkt.
119 at 169.
testified that when Pullen returned to CCI as an employee, he
told Henrichsen that CSCP had copied CCI's “project
worksheet, bid sheet, the venting calculator and the project
graph.” Dkt. 121, Ex. 4 at 114. Henrichsen testified
that other salesmen had also told him about the copying, but
he did not know if it was before or after Pullen returned as
an employee. Id. at 114-15. Henrichsen testified
that a particular salesman, Jeff Young, told him “[a]
couple of years ago, maybe” that CSCP copied CCI's
project worksheet. Id. at 116. In response to a
series of questions about which salesmen had notified him
about copying of particular documents, Henrichsen confirmed
these conversations had all occurred a couple of years ago.
Id. at 117. Henrichsen testified that he did not
discuss this copying with Herron when he learned of it
because he prefers to “just focus on my own business
and move ahead, that's why. I try to ignore the
competition and do what I need to do to take care of my
employees and my customers.” Id.
as CCI's corporate representative, testified that between
2014 and 2015 Henrichsen was president of the Washington
Weatherization Association (“WWA”). Dkt. 121, Ex.
5 at 64. Henrichsen testified this was “an
association of your insulation contractors” which he
joined “because every business owner wants to be able
to share and try to help each other out to grow a
business.” Dkt. 121, Ex. 4 at 36. When asked if he had
conversations with Herron about CSCP after CSCP began
operations, Henrichsen testified “we would run into
each other when I was on the way out from the Weatherization
Association.” Dkt. 121, Ex. 4 at 85.
Gjerness as CCI's corporate representative testified that
CCI first “heard stuff” in 2015 or 2016 on the
topic of CSCP's using CCI's Project Graph. Dkt. 123,
Ex. 3 at 42. He testified that Henrichsen “might have
heard a rumor or two, but he thought nothing of it, that they
were using our stuff.” Id.
2014 and 2017, CSCP expanded its use of Slogan One to include
business cards, customer giveaways, a domain name,
advertising, its payment authorization form, and company
jackets. Herron Decl. at 25-41. In late 2016, CSCP opened a
third location in Marysville, Washington. Dkt. 120 at 2.
asked if he had ever seen CSCP's advertising prior to
March 2017, Dale Gjerness testified “I may have seen a
truck going down the freeway or so, but not looking at the
website, nothing.” Dkt. 121, Ex. 6 at 76. He also
testified that at a meeting at some point prior to March 2017
he saw a CSCP employee wearing “either a green jacket
or a green shirt - - and it said Crawl Pros - - it must have
been Crawl Space Cleaning Pros.” Id. at 77.
March 20, 2017, CSCP applied to register Slogan One in
Washington as a trademark in class 37, registering it for use
with “[c]leanup of crawl spaces and attics and
insulation installation services.” Dkt. 41, Declaration
of Emilia L. Sweeney (“Sweeney Decl.”) at 5-14.
Also in March 2017, Herron declares that CSCP “learned
that CCI had begun using [Slogan One] on CCI's website,
” and so asked CCI to cease and desist. Herron Decl. at
3-4. Herron declares that CSCP received a favorable response
but later found that CCI “had added a TM to the end of
[Slogan One] and was also using the confusingly similar
[Slogan Two] on its website.” Id. Andrew
Gjerness as CCI's corporate representative testified that
CCI first became aware CSCP had used Slogan One when CCI
received the cease and desist letter from CSCP sometime in
March or April of 2017. Dkt. 123, Ex. 3 at 12-13. Andrew
Gjerness also testified that in May, June, or July of 2017, a
new sales manager at CCI, Mike Tutsie, “got competitive
bids from quite a few of our competitors to kind of
understand how the process was” which was the first
time CCI “actually saw” that CSCP was using
CCI's documents, specifically the Project Graph and
Project Bid Sheet. Dkt. 123, Ex. 3 at 20, 42, 53, 56.
6, 2017, CCI submitted an application for protection of
Slogan One with the United State Patent and Trademark Office
(“USPTO”). Dkt. 57-1 at 51. CSCP also filed for
protection of Slogan One with the USPTO, which issued a
Notice of Publication on July 12, 2017, announcing its intent
to register Slogan One to CSCP. Sweeney Decl. at 15-24.
Andrew Gjerness as CCI's corporate representative
testified that in June or July 2017, CCI became aware through
checking social media to compare competitor's
advertisements that CSCP was changing their name to Crawl
Pros. Dkt. 121, Ex. 3 at 12. Herron testified as CSCP's
corporate representative that CSCP changed its name because
it was entering the Portland, Oregon market in August of 2017
and because it owned the CrawlPros.com domain name. Dkt. 121,
Ex. 2, at 211. Herron also testified as CSCP President that
CSCP's goal was to entirely switch the name under which
CSCP does business from Crawl Space Cleaning Pros to Crawl
Pros by the end of 2019. Dkt. 123, Ex. 4 at 31.
August 14, 2017, CSCP filed a complaint against CCI in the
Pierce County Superior Court for the State of Washington 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 5. On September 6, 2017, CCI filed
this lawsuit against CSCP, alleging copyright infringement,
trademark infringement, false designation of origin and
unfair competition in 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
October 10, 2017, CCI registered Slogan Two as a service mark
with the USPTO. Dkt. 57-1 at 53. On November 28, 2017, CCI
filed a Notice of Opposition to CSCP's application for
protection of Slogan One with the federal Trademark Trial and
Appeal Board, Sweeney Decl. at 26-31, citing CCI's July 6
application for protection of Slogan One, see Dkt.
57-1 at 51.
March 19, 2018, CSCP filed an amended answer in the instant
case, asserting counterclaims and affirmative defenses
including laches. Dkt. 32. On 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 March 1,
2019, in response to CSCP's request for a continuance,
Dkt. 86, and CCI's notice of non-opposition, Dkt. 101,
the Court granted the motion for a continuance and struck the
scheduling order based on the then-existing trial date. Dkt.
105. On May 31, 2019, the Court ruled on the remaining
questions from CSCP's motion for summary judgment and
granted summary judgment only as to the second page of the
Venting Calculator document and denied summary judgment as to
the remainder of the motion. Dkt. 112.
11, 2019, CSCP filed its second motion for partial summary
judgment. Dkt. 120. On July 29, 2019, CCI responded. Dkt.
122. On August 2, 2019, CSCP replied. Dkt. 126.
August 6, 2019, CCI filed a motion for leave to file Dkt.
128, Second Henrichsen Declaration. Dkt. 129. CSCP did not
September 25, 2019, in response to the parties' joint
status reports, the Court set a new trial date and new
pretrial deadlines including a new dispositive motions
deadline of October 16, 2019. Dkt. 136.
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 ...