Free Brief (Non Appeal) - District Court of Arizona - Arizona

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Rick N. Bryson (Arizona Bar No. 010568) Brett M. Hager (Arizona Bar No. 018793) SANDERS & PARKS 3030 North Third Street Suite 1300 Phoenix, AZ 85102-3099 Telephone: (602) 532-5600 Facsimile: (602) 230-5014 Michael A. Grow Joseph R. Price Janine A. Carlan ARENT FOX PLLC 1050 Connecticut Avenue, NW Washington, DC 20036-5339 Telephone: 202.857.6000 Facsimile: 202.857.6395 Attorneys for Plaintiff CENTURY 21 REAL ESTATE LLC UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA Case No. CIV 03-0053-PHX-SMM CENTURY 21 REAL ESTATE LLC'S MEMORANDUM OF LAW REGARDING DISPOSITION OF REMAINING CLAIMS

CENTURY 21 REAL ESTATE LLC, Plaintiff, v. CENTURY SURETY CO., Defendant.

I.

INTRODUCTION On March 16, 2006, the Court granted partial summary judgment to Defendant

Century Surety Co. on most of the claims filed in this case. Plaintiff Century 21 Real Estate LLC ("Century 21") desires to file an appeal from that decision. It cannot do so at the present time as a few claims have not yet been resolved. On June 19, 2006, Defendant agreed to dismissal of its counterclaim for breach of contract with prejudice. Accordingly, the only counts remaining are Count 9 of the Complaint and counterclaim (collectively the "Remaining Claims").

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In Count 9, Century 21 is opposing registration of the mark "Century Surety Group" on various grounds including that the mark will create a likelihood of confusion with marks owned and registered by Century 21. Century 21's counterclaim seeks cancellation of a federal registration of the mark "Century Insurance Group" on similar grounds including that the mark is likely to cause confusion if used on the services listed in the registration. On July 7, 2006, this Court ordered the parties to simultaneously file briefs addressing how the Court should resolve these Remaining Claims. Century 21 respectfully submits that the Remaining Claims involve many of the same issues of fact and law that were already decided and that are now ripe for appeal. However, the remaining issues are not all subsumed within the findings made in the summary judgment ruling. Rather, the disposition of the two Remaining Claims would require consideration of different legal standards. This would require the Court to consider facts in addition to those already submitted as to the likelihood of confusion and dilution issues. This would undoubtedly take significant additional time. There is no just reason to delay an appeal until all of the Remaining Claims are decided. Indeed, a decision by the Ninth Circuit may facilitate a final disposition of the Remaining Claims thereby streamlining any further proceedings and avoiding duplicative effort by this court. Accordingly, in the interests of judicial economy, Century 21 respectfully submits that the Court should enter a final appealable order under Fed. R. Civ. P. 54(b) and that it should stay further proceedings in this case pending a ruling by the Ninth Circuit. II. ISSUANCE OF A RULE 54(b) ORDER IS APPROPRIATE BECAUSE THERE IS NO REASON TO DELAY AN APPEAL UNTIL THE FEW REMAINING ISSUES ARE RESOLVED. A. A Rule 54(b) Order Is Proper Even Where The Remaining Claims Require Proof Of The Same Facts If The Legal Issues Appealed Will Streamline The Ensuing Litigation.

Pursuant to Rule 54(b), a court may direct the entry of a final judgment as to one or more but fewer than all of the claims or parties "upon an express determination that there is no just reason for delay and upon an express direction for the entry of judgment." Fed. R.
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Civ. P. 54(b). Issuance of a final order under Rule 54(b) is routine and encouraged in the Ninth Circuit. See James v. Price Stern Sloan, Inc., 283 f.3d 1064, 1068 n.6 (9th Cir. 2002) ("[I]ssuance of a Rule 54(b) order is a fairly routine act that is reversed only in the rarest instances."). "The present trend is toward greater deference to a district court's decision to certify under rule 54(b)." See Cadillac Fairview/California, Inc. v. United States, 41 F.3d 562, 562 n.1 (9th Cir. 1994); Texaco, Inc. v. Ponsoldt, 939 F.2d 794, 798 (9th Cir. 1991).1 The Ninth Circuit holds that "Rule 54(b) certification is proper if it will aid `expeditious decision' of the case. The Rule 54(b) claims do not have to be separate from and independent of the remaining claims." Texaco, 939 F.2d at 797 (quoting Sheehan v. Atlanta Int'l Ins. Co., 812 F.2d 812, 468 (9th Cir. 1987)). Explaining this position in Texaco, the Ninth Circuit found that "although the claims disposed of on appeal and the remaining counterclaims require proof of the same facts, the legal issues now appealed will streamline the ensuing litigation. Further, [the trial judge's] rulings separated the legal from the factual questions. . . . [C]ertain theories of recovery were eliminated, limiting the issues to be tried below." Id. at 798. The Texaco court relied on the Ninth Circuit's earlier decision in Continental Airlines v. Goodyear Tire & Rubber Co., 819 F.2d 1519 (9th Cir. 1987). There, the Ninth Circuit again upheld the trial court's issuance of a Rule 54(b) order, "even though the remaining claims would require proof of the same facts involved in the dismissed claims." Texaco, 939 F. Supp. at 798 (citing Continental, 819 F.2d at 1525). In Continental, Continental Airlines sued McDonnell Douglas, the manufacturer of a DC-10 airplane, and Goodyear, the supplier of defective tires on the DC-10 which caused it to crash. Continental, 819 F.2d at 1525. McDonnell Douglas was granted partial summary judgment on the basis of language in its sales contract with Continental Airlines, but the Court did not reach Continental Airlines claims for fraud, breach of warranty or passenger indemnification. Id.
The Ninth Circuit has made clear that Morrison-Knudsen Co. v. Archer, 655 F.2d 962 (9th Cir.1981) is an outdated and overly restrictive view of the appropriateness of Rule 54(b) certification. See Texaco, 939 F.2d at 798.
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On appeal of Texaco, the Ninth Circuit affirmed issuance of the Rule 54(b) order on the claims decided on summary judgment, holding that the trial court adopted a "pragmatic approach focusing on severability and efficient judicial administration." Id. Agreeing with Continental, the Texaco court further explained that "[e]ven though the summary judgment `eliminated none of the parties and left open potentially full recovery in both of Continental's ultimate areas of loss,' the appellate panel approved the lower court's effort to streamline litigation by narrowing the issues for trial, `efficiently separate[ing] the legal from the factual questions.'" Texaco, 939 F. Supp. at 798 (quoting Continental, 819 F.2d at 1525) (alterations in original). B. Immediate Appeal of this Court's Partial Summary Judgment Decision Will Streamline the Remaining Litigation And Serve Judicial Efficiency.

The present case epitomizes the rationale endorsed by the Ninth Circuit in both Continental and Texaco. Here, the Remaining Claims are different from but related to those previously decided and involve some of the same legal issues. Specifically, the Court's summary judgment rulings regarding the likelihood of confusion factors will likewise be at play in considering and deciding the Remaining Claims. As a result, having guidance from the Ninth Circuit will clearly "streamline the remaining litigation" by providing definitive direction on the legal standards and analysis to be applied, both to the claims decided on summary judgment and in determination of the Remaining Claims. While some of the legal issues between what was decided on summary judgment and what remains to be decided are related, a different standard is used in evaluating at least one of the likelihood of confusion factors when determining whether a mark is registrable.2 Specifically, when deciding issues of registerability, the court must presume that the applicant

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Solar Turbines Inc. v. Gemini Engine Co., 218, USPQ 854, 856, 1983 WL 51983 (T.T.A.B. Jan 28, 1983) (holding that "Accordingly, where the goods as identified in the application are broadly described, we must presume for the purpose of this opposition that applicant seeks registration of its mark for all goods embraced by the broad terminology."); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 902 (C.C.P.A. 1973) ("Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective description of goods."). See also Toro Co. v. Hardigg Industries, Inc., 549 F.2d 785, 789 (C.C.P.A. 1977) (holding that "The rule is clear that registration must be determined in the light of an applicant's goods as described in the application.").
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will use the mark on all of the goods or services listed in the application for registration, which are broader in this case than the services allegedly sold by the Defendants. Consequently, presentation of new evidence and additional--though related--legal arguments will be required to resolve the Remaining Claims. This further supports the propriety and efficiency of entering a Rule 54(b) order now. Rather than have the Court and the parties invest resources in the presentation of these new facts and arguments, and then have to decide the additional claims without the Ninth Circuit's guidance, immediate appeal of the claims decided on summary judgment will streamline if not entirely eliminate the remaining litigation. As in Continental and Texaco, even though the summary judgment eliminated none of the parties and there are still claims to be decided, issuance of a Rule 54(b) order will streamline litigation by narrowing the issues for trial, efficiently separating the legal from the factual questions. III. CONCLUSION For the foregoing reasons Century 21 respectfully requests that the Court issue a final order pursuant to Rule 54(b), direct entry of judgment on the claims decided on summary judgment, and stay the Remaining Claims.

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Dated: July 21, 2006

Respectfully submitted,

By:

Rick N. Bryson (Arizona Bar No. 010568) Brett M. Hager (Arizona Bar No. 018793) SANDERS & PARKS 3030 North Third Street Suite 1300 Phoenix, AZ 85102-3099 (off) 602-532-5600 (fax) 602-230-5014 -andMichael A. Grow Joseph R. Price Janine A. Carlan ARENT FOX PLLC 1050 Connecticut Avenue, NW Washington, DC 20036-5339 (off) 202-857-6000 (fax) 202-857-6395 Attorneys for Plaintiff CENTURY 21 REAL ESTATE LLC

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CERTIFICATE OF SERVICE It is hereby certified that the foregoing Century 21 Real Estate LLC's Memorandum of Law Regarding Disposition of Remaining Claims has been served upon Defendants' counsel by first class mail, postage prepaid and by facsimile, this 21st day of July, 2006 addressed as follows:

Donald A. Wall, Esq. David E. Rogers, Esq. Squire, Sanders & Dempsey LLP 40 North Central Avenue, Suite 2700 Phoenix, Arizona 85004-4498 Telephone: (602) 528-4122 Facsimile: (602) 253-8129

CENTURY 21 REAL ESTATE LLC'S MEMORANDUM OF LAW REGARDING DISPOSITION OF REMAING CLAIMS

CIV 03-0053-PHX-SMM

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