shingle springs 9th circuit

NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

SHINGLE SPRINGS BAND OF MIWOK

INDIANS,

Plaintiff - Appellee,

v.

CESAR CABALLERO,

Defendant - Appellant.

No. 13-15411

D.C. No. 2:08-cv-03133-JAM-AC

MEMORANDUM*

Appeal from the United States District Court

for the Eastern District of California

John A. Mendez, District Judge, Presiding

Argued and Submitted September 1, 2015

San Francisco, California

Before: GRABER and WATFORD, Circuit Judges, and FRIEDMAN,** District

Judge.

* This disposition is not appropriate for publication and is not precedent

except as provided by 9th Cir. R. 36-3.

** The Honorable Paul L. Friedman, United States District Judge for the

District of Columbia, sitting by designation.

FILED

NOV 19 2015

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

Case: 13-15411, 11/19/2015, ID: 9762266, DktEntry: 78-1, of 6

2

1. Plaintiff-Appellee Shingle Springs Band of Miwok Indians (“the Tribe”)

alleges that Cesar Caballero infringed various trademarks related to the Tribe and a

casino it owns and operates, the Red Hawk Casino, in violation of the Lanham Act,

the California Business and Professions Code, and common law, and that

Caballero cybersquatted on related domain names. The district court granted

summary judgment to the Tribe on those claims and permanently enjoined

Caballero from using the marks in any way. Caballero appeals the district court’s

judgment.

The trademarks allegedly infringed by Caballero fall into two categories:

(1) marks related to the Tribe and its Rancheria (the “Tribal Marks”); and (2) the

“Red Hawk Casino Mark.” The latter mark is registered with the United States

Patent and Trademark Office; the Tribal Marks are not.

2. We have jurisdiction over Caballero’s appeal pursuant to 28 U.S.C.

§ 1291, and review the district court’s grant of summary judgment de novo.

Hexcel Corp. v. Ineos Polymers, Inc., 681 F.3d 1055, 1059 (9th Cir. 2012). To

obtain summary judgment, the moving party — in this case the Tribe — has the

burden of establishing the absence of any genuine dispute of material fact and its

entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317,

322-23 (1986). An issue of material fact is genuine “if the evidence is such that a


3

reasonable jury could return a verdict for the nonmoving party.” Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). We must view the evidence in the

light most favorable to the nonmovant and draw all reasonable inferences in the

nonmovant’s favor. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257

(9th Cir. 2001). We reverse and remand for further proceedings.1

3. For both the unregistered Tribal Marks and the registered Red Hawk

Casino Mark, under the Lanham Act, the Tribe must show that Caballero used the

marks “in connection with . . . goods or services” to establish infringement. 15

U.S.C. § 1125(a)(1) (unregistered marks); 15 U.S.C. § 1114(1)(a) (registered

marks) (requiring “use in commerce . . . in connection with the sale, offering for

sale, distribution, or advertising of any goods or services”). The Tribe primarily

points to the following evidence to demonstrate that Caballero used the Tribal

Marks in connection with a good or service: (1) Caballero’s statements at a

deposition that his rival tribe provides “association services,” “welfare services,”

“employment services,” and “special event services”; and (2) Caballero’s website,

1 We decline to consider Caballero’s argument that the Tribal Marks are

invalid because they identify an ethnic group, nor do we consider his related

contention that the Tribe’s trademark claims hinge on a determination of its

“legitimacy” as the federally recognized tribe. These arguments were not

sufficiently developed before the district court nor squarely raised on appeal. In

any event, we need not address them because we conclude that the Tribe failed to

meet its burden on summary judgment.


4

www.shinglespringsreservation.com, which provided an email address under the

heading “Enrollment Questions.”

This evidence fails to carry the Tribe’s burden on summary judgment. There

is insufficient evidence in the record to prove that Caballero offered “association

services” within the meaning of the Lanham Act. Caballero’s own vague and

conclusory statements are insufficient to establish that Caballero or his tribe

provided or offered any services. The only remaining factual support for the

Tribe’s allegations is a snapshot of Caballero’s website depicting a contact email

address for those with “Enrollment Questions,” which, standing on its own, does

not support the grant of summary judgment. Even if the “Enrollment Questions”

heading on his website could be construed as constituting an offer of membership

— what Caballero refers to as “association services” — solicitation of members in

and of itself is insufficient to constitute an offer of a service without evidence as to

what those prospective members would be joining. As to the Red Hawk Casino

Mark, the Tribe has failed to present any evidence that Caballero used the mark in

connection with a good or service. On the present record, no reasonable jury could

conclude that Caballero offered or provided any service in connection with his use


5

of either the Tribal Marks or the Red Hawk Casino Mark.2

4. The Tribe also is not entitled to summary judgment on the cybersquatting

claims. To establish liability under the Anti-Cybersquatting Consumer Protection

Act, the Tribe must show that, by registering, trafficking in, or using a domain

name identical or confusingly similar to a protected mark, 15 U.S.C.

§ 1125(d)(1)(A)(ii), Caballero acted with “bad faith intent to profit from that

mark,” 15 U.S.C. § 1125(d)(1)(A)(i); see DSPT Int’l, Inc. v. Nahum, 624 F.3d

1213, 1218-19 (9th Cir. 2010). “The ‘intent to profit’ . . . means simply the intent

to get money or other valuable consideration,” id. at 1221, and may include using

the domain name “to get leverage in a business dispute,” id. at 1219. There is no

evidence in the record — not even in Caballero’s brief exchange with the Tribe’s

counsel at his deposition — that Caballero intended to profit by using the domain

2 Because the parties agree that the Tribe’s state law claims follow

directly from its federal claims, we also reverse the district court’s grant of

summary judgment to the Tribe on its state law claims. See Seltzer v. Green Day,

Inc., 725 F.3d 1170, 1180 n.1 (9th Cir. 2013) (We have “consistently held that

state common law claims of unfair competition and actions pursuant to California

Business and Professions Code § 17200 are ‘substantially congruent’ to claims

made under the Lanham Act.”) (quoting Cleary v. News Corp., 30 F.3d 1255,

1262-63 (9th Cir. 1994)); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th

Cir. 2008) (California state law trademark infringement claims “are subject to the

same test” as federal claims under the Lanham Act); Mallard Creek Indus., Inc. v.

Morgan, 56 Cal. App. 4th 426, 435 (Cal. Ct. App. 1997).


6

names involving the Tribal Marks or the domain names involving the Red Hawk

Casino Mark, either in the traditional sense or as exerting pressure on the Tribe to

gain an advantage in a business dispute. The Tribe therefore has failed to provide

sufficient evidence on this statutory element of its claims for cybersquatting.3

Whether the parties may be permitted to supplement the record and file

additional motions for summary judgment, as to both the trademark and

cybersquatting claims, are matters that we leave to the district court’s discretion on

remand.

REVERSED AND REMANDED.

3 Because we conclude that the Tribe has failed to show evidence of

bad faith intent to profit, we do not reach the question with respect to a separate

requisite statutory element: whether the domain names at issue were “identical or

confusingly similar to a protected mark owned by the plaintiff.” DSPT Int’l, Inc.,

624 F.3d at 1218-19.


Shingle Springs Band of Miwok Indians v. Caballero, No. 13-15411

GRABER, Circuit Judge, concurring in part and dissenting in part:

I agree with the majority that the district court erred in granting summary

judgment to Plaintiff on the claims related to the Red Hawk Casino Mark.

Accordingly, I concur in that part of the judgment. But I disagree with the

majority as to the claims related to the Tribal Marks. I would affirm as to those

claims. Accordingly, I dissent from that part of the judgment.

Summary judgment for the Tribe is appropriate on the trademark claim with

respect to the Tribal Marks. Defendant has registered for a fictitious business

name in the Tribe’s name, leading to a proof of publication that he was doing

business under the Tribe’s name; he received a business license in the Tribe’s

name; he opened bank accounts in the Tribe’s name; he received an employer

identification number from the IRS in the Tribe’s name; he registered domain

names using variations on the Tribe’s name; he criminally attempted to divert the

Tribe’s mail to his own address; he called a Berkeley museum about efforts by the

Tribe to repatriate tribal artifacts; he represented himself as "the chief of the

Shingle Springs Band of Miwok Indians" and told the museum’s repatriation

coordinator not to continue her contacts with the Tribe; and his website invites

visitors to email him with any "Enrollment Questions." In my view, those

actions—the fact of which are not disputed by Defendant—are highly likely to

FILEDNOV 19 2015

MOLLY C. DWYER, CLERKU.S. COURT OF APPEALS

Case: 13-15411, 11/19/2015, ID: 9762266, DktEntry: 78-2, Page 1 of 3

cause confusion because governmental entities and members of the public would

be confused about whether Defendant represents the federally recognized tribe.

See Comm. for Idaho’s High Desert, Inc. v. Yost (CIHD), 92 F.3d 814, 823 (9th

Cir. 1996) ("The acts that the individual appellants performed included the

formation of the appellant corporation under the name ‘Committee for Idaho’s

High Desert, Inc.’ and Hoffman's testimony—under the title of president of CIHD,

with the intent ‘to add to his credibility as an environmentalist’—at a U.S. Air

Force hearing in favor of an air force training range in southern Idaho. . . . [T]hese

acts would be sufficient to render the individual appellants liable under [the

Lanham Act] for using in commerce, in connection with services, a name which is

likely to confuse." (emphasis added) (citations omitted)).

For related reasons, summary judgment for the Tribe also is appropriate on

the cybersquatting claim with respect to the Tribal Marks. See 15 U.S.C.

§ 1125(d)(1)(B)(i)(V) (permitting a court to consider, when determining bad faith,

"the intent to tarnish or disparage the mark, by creating a likelihood of confusion as

to the source, sponsorship, affiliation, or endorsement of the site" (emphasis

added)).

In summary, I would affirm the district court’s grant of summary judgment

on the claims related to the Tribal Marks and reverse the district court’s grant of

2


summary judgment on the claims related to the Red Hawk Casino Mark. I

therefore concur in part and dissent in part.

3


1 Post Judgment Form - Rev. 08/2013

United States Court of Appeals for the Ninth Circuit

Office of the Clerk 95 Seventh Street

San Francisco, CA 94103

Information Regarding Judgment and Post-Judgment Proceedings

Judgment • This Court has filed and entered the attached judgment in your case.

Fed. R. App. P. 36. Please note the filed date on the attached decision because all of the dates described below run from that date, not from the date you receive this notice.

Mandate (Fed. R. App. P. 41; 9th Cir. R. 41-1 & -2) • The mandate will issue 7 days after the expiration of the time for

filing a petition for rehearing or 7 days from the denial of a petition for rehearing, unless the Court directs otherwise. To file a motion to stay the mandate, file it electronically via the appellate ECF system or, if you are a pro se litigant or an attorney with an exemption from using appellate ECF, file one original motion on paper.

Petition for Panel Rehearing (Fed. R. App. P. 40; 9th Cir. R. 40-1) Petition for Rehearing En Banc (Fed. R. App. P. 35; 9th Cir. R. 35-1 to -3)

(1) A. Purpose (Panel Rehearing): • A party should seek panel rehearing only if one or more of the following grounds exist:

► A material point of fact or law was overlooked in the decision; ► A change in the law occurred after the case was submitted which

appears to have been overlooked by the panel; or ► An apparent conflict with another decision of the Court was not

addressed in the opinion. • Do not file a petition for panel rehearing merely to reargue the case.

B. Purpose (Rehearing En Banc) • A party should seek en banc rehearing only if one or more of the following

grounds exist:



► Consideration by the full Court is necessary to secure or maintain uniformity of the Court’s decisions; or

► The proceeding involves a question of exceptional importance; or ► The opinion directly conflicts with an existing opinion by another

court of appeals or the Supreme Court and substantially affects a rule of national application in which there is an overriding need for national uniformity.

(2) Deadlines for Filing:

• A petition for rehearing may be filed within 14 days after entry of judgment. Fed. R. App. P. 40(a)(1).

• If the United States or an agency or officer thereof is a party in a civil case, the time for filing a petition for rehearing is 45 days after entry of judgment. Fed. R. App. P. 40(a)(1).

• If the mandate has issued, the petition for rehearing should be accompanied by a motion to recall the mandate.

• See Advisory Note to 9th Cir. R. 40-1 (petitions must be received on the due date).

• An order to publish a previously unpublished memorandum disposition extends the time to file a petition for rehearing to 14 days after the date of the order of publication or, in all civil cases in which the United States or an agency or officer thereof is a party, 45 days after the date of the order of publication. 9th Cir. R. 40-2.

(3) Statement of Counsel

• A petition should contain an introduction stating that, in counsel’s judgment, one or more of the situations described in the “purpose” section above exist. The points to be raised must be stated clearly.

(4) Form & Number of Copies (9th Cir. R. 40-1; Fed. R. App. P. 32(c)(2))

• The petition shall not exceed 15 pages unless it complies with the alternative length limitations of 4,200 words or 390 lines of text.

• The petition must be accompanied by a copy of the panel’s decision being challenged.

• An answer, when ordered by the Court, shall comply with the same length limitations as the petition.

• If a pro se litigant elects to file a form brief pursuant to Circuit Rule 28-1, a petition for panel rehearing or for rehearing en banc need not comply with Fed. R. App. P. 32.



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• The Bill of Costs must be filed within 14 days after entry of judgment. • See Form 10 for additional information, available on our website at

www.ca9.uscourts.gov under Forms. Attorneys Fees

• Ninth Circuit Rule 39-1 describes the content and due dates for attorneys fees applications.

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Form 10. Bill of Costs ................................................................................................................................(Rev. 12-1-09)

United States Court of Appeals for the Ninth Circuit

BILL OF COSTS

Note: If you wish to file a bill of costs, it MUST be submitted on this form and filed, with the clerk, with proof of service, within 14 days of the date of entry of judgment, and in accordance with 9th Circuit Rule 39-1. A late bill of costs must be accompanied by a motion showing good cause. Please refer to FRAP 39, 28 U.S.C. § 1920, and 9th Circuit Rule 39-1 when preparing your bill of costs.

v. 9th Cir. No.

The Clerk is requested to tax the following costs against:

Cost Taxable under FRAP 39,

28 U.S.C. § 1920, 9th Cir. R. 39-1

REQUESTED (Each Column Must Be Completed)

ALLOWED (To Be Completed by the Clerk)

No. of Docs.

Pages per Doc.

Cost per Page*

TOTAL COST

TOTAL COST

Pages per Doc.

No. of Docs.

Excerpt of Record

Opening Brief

Reply Brief

$

$

$

$

$

$

$ $

Other**

Answering Brief

$ $

$

$

$

$

$

$

$

$

$

$

$ $TOTAL: TOTAL:

* Costs per page: May not exceed .10 or actual cost, whichever is less. 9th Circuit Rule 39-1.

Cost per Page*

Any other requests must be accompanied by a statement explaining why the item(s) should be taxedpursuant to 9th Circuit Rule 39-1. Additional items without such supporting statements will not be considered.

Attorneys' fees cannot be requested on this form.

** Other:

Continue to next page

This form is available as a fillable version at: http://cdn.ca9.uscourts.gov/datastore/uploads/forms/Form%2010%20-%20Bill%20of%20Costs.pdf.


Form 10. Bill of Costs - Continued

I, , swear under penalty of perjury that the services for which costs are taxed

were actually and necessarily performed, and that the requested costs were actually expended as listed.

Signature

Date

Name of Counsel:

Attorney for:

Date Costs are taxed in the amount of $

Clerk of Court

By: , Deputy Clerk

(To Be Completed by the Clerk)

("s/" plus attorney's name if submitted electronically)


shingle springs 9th circuit

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district courts judgment

united states district

united states district

district of columbia

cesar caballero

unregistered tribal

enjoined caballero

summary judgment