Statement of Jurisdiction

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  • Topic: Trademark, Genericized trademark, Trademark law
  • Pages : 26 (6557 words )
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  • Published : January 23, 2013
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I.

STATEMENT OF JURISDICTION
The district court and this Court have subject matter jurisdiction over

this case pursuant to 28 U.S.C. Section 1331 (federal question) and Section 1338(a) (trademarks). This Court has jurisdiction over this appeal pursuant to 28 U.S.C. Section 1291(a)(1) in that this is an appeal from a permanent injunction entered after the district court granted a motion for partial summary judgment. See LaVine v. Blaine School Dist., 257 F.3d. 981 (9th Cir. 2001).

The district court entered the order from which appeal No. 02-17353 was taken on October 22, 2002. Defendant/appellant JSL Corporation (“JSL”) timely filed its Notice of Appeal on November 20, 2002. See Fed. R. App. P. 4. The district court entered the order from which appeal No. 0315420 was taken on February 12, 2003. JSL timely filed a Supplemental Notice of Appeal on March 3, 2003. See Fed. R. App. P. 4.

JSL filed a motion to consolidate appeal Nos. 02-17353 and 03-15420 on April 16, 2003. Plaintiff/appellee Visa International Services Association (“Visa”) does not oppose that motion. That motion is pending. II.

STATEMENT OF THE ISSUES
1.

Whether summary judgment in favor of Visa’s dilution claim

was proper, when Visa’s famous trademark, “VISA,” is not distinctive –

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indeed, is generic -- with respect to circumstances in which the English word "visa" is used in its immigration/travel sense and that is the sense in which JSL uses the word within its mark, “evisa.”

2.

Whether summary judgment in favor of Visa’s dilution claim

was proper under the U.S. Supreme Court’s recent case of Moseley v. V Secret Catalogue, Inc., 537 U.S. __, 123 S. Ct. 1115 (2003), when the district court applied a “likelihood of dilution” standard instead of the “actual dilution” standard confirmed in Moseley and the record is bereft of evidence sufficient to establish actual dilution.

III.

REVIEWABILITY AND STANDARD OF REVIEW
Each issue is reviewable under 28 U.S.C. Section 1291(a)(1) and

LaVine v. Blaine School Dist., 257 F.3d. 981 (9th Cir. 2001). This is an appeal from a permanent injunction entered after the district court granted a motion for partial summary judgment. LaVine, 257 F.3d at 987. This Court reviews the determination underlying the grant of an injunction by the standard that applies to that determination -- summary judgment in this case. Id. A district court's grant or denial of summary judgment is reviewed de novo. Id.; Balint v. Carson City, 180 F.3d 1047, 1050 (9th Cir.1999) (en banc). Summary judgment is appropriate if, viewing the evidence in the light most favorable to the nonmoving party,

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(a) "the district court correctly applied the relevant substantive law" and (b) there are no genuine issues of material fact. Id.; Fed. R. Civ. P. 56(c). The burden of proof dictates which party must come forward with affirmative, admissible evidence. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). On a dilution claim under the Federal Trademark Dilution Act of 1995 (“FTDA”), 15 U.S.C. Section 1125(c), the plaintiff must prove that each of the statutory requirements is present. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 874 (9th Cir. 1999).

IV.

STATEMENT OF THE CASE
Visa filed its complaint on March 15, 2001. The complaint stated

claims against JSL for trademark infringement, unfair competition under the Lanham Act, trademark dilution, cybersquatting, common law trademark infringement, state law deceptive trade practices, and intentional interference with prospective advantage. (Excerpt of Record ("ER") 1-14). On November 13, 2001, Visa filed a motion for partial summary judgment on its trademark dilution claim. JSL counter-moved for partial summary judgment on Visa’s claim for trademark infringement and then on Visa’s claim for cybersquatting. Visa countered the latter motion with its own motion to establish its cybersquatting claim....
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