1 tucker ellis llp - dlbjbjzgnk95t.cloudfront.net memo... · uf ¶¶ 4-5. according to billboard...

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TUCKER ELLIS LLP David J. Steele - SBN 209797 [email protected] Howard A. Kroll - SBN 100981 [email protected] Steven E. Lauridsen - SBN 246364 [email protected] 515 South Flower Street Forty-Second Floor Los Angeles, CA 90071 Telephone: 213.430.3400 Facsimile: 213.430.3409 Attorneys for Plaintiffs, COACHELLA MUSIC FESTIVAL, LLC and GOLDENVOICE, LLC

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

COACHELLA MUSIC FESTIVAL, LLC and GOLDENVOICE, LLC

Plaintiffs,

v.

ROBERT TREVOR SIMMS, FILMCHELLA, KYLE BLIVEN, WYATT DENNY and DOES 4-20

Defendants.

) ) ) ) ) ) ) ) ) ) ) ) )

Case No. 2:17-cv-06059-RGK (GJSx) PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF THEIR MOTION FOR PARTIAL SUMMARY JUDGMENT AS TO LIABILITY DATE: September 10, 2018 TIME: 9:00 a.m. CTRM: 850 – Roybal Hon. R. Gary Klausner

Case 2:17-cv-06059-RGK-GJS Document 135-1 Filed 08/13/18 of 25 Page ID #:2013

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Table of Contents Page

I. INTRODUCTION .................................................................................... 1

II. STATEMENT OF FACTS ....................................................................... 2

A. Coachella Valley Music And Arts Festival .................................... 2

B. Plaintiffs’ Trademarks And Service Marks .................................... 5

C. Simms’ Infringing Acts .................................................................. 5

III. PLAINTIFFS ARE ENTITLED TO SUMMARY JUDGMENT ON

THEIR TRADEMARK INFRINGEMENT CLAIMS. ............................ 7

A. Plaintiffs own valid protectable trademarks and service marks. .... 7

B. Simms has used Plaintiffs’ Coachella Marks and confusingly

similar Filmchella Designations without authorization and as

trademarks. ...................................................................................... 8

C. Simms’ use of the Coachella marks and the Filmchella

Designations is likely to cause consumer confusion. ..................... 9

1. The Coachella Marks are strong. ....................................... 10

2. Simms intentionally copied the Coachella Marks. ............. 11

3. The Filmchella Designations are similar to the

Coachella Marks. ................................................................ 14

4. The proximity of the goods, degree of care by the

purchaser, and the marketing channels used all strongly

favor plaintiffs. ................................................................... 16

5. The “likelihood of expansion” analysis collapses into

the “proximity of the goods” as the services are the

same. ................................................................................... 18

6. Lack of actual confusion renders that factor irrelevant. ..... 19

IV. CONCLUSION ....................................................................................... 20


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TABLE OF AUTHORITIES

Page(s)

CASES

A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc.,

237 F.3d 198 (3d Cir. 2000) ......................................................................................... 14

Accuride Int’l, Inc. v. Accuride Corp.,

871 F.2d 1531 (9th Cir. 1989) ..................................................................................... 11

Adidas Am., Inc. v. Skechers USA, Inc.,

890 F.3d 747 (9th Cir. 2018) ........................................................................................ 13

adidas-Am., Inc. v. Payless Shoesource, Inc.,

546 F. Supp. 2d 1029 (D. Or. 2008) ............................................................................. 20

AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) ................................................................................. passim

Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,

457 F.3d 1062 (9th Cir. 2006) ...................................................................................... 10

Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp.,

174 F.3d 1036 (9th Cir. 1999) ............................................................................... passim

Dep’t of Parks & Recreation v. Bazaar Del Mundo Inc.,

448 F.3d 1118 (9th Cir. 2006) ........................................................................................ 7

DSPT Intern., Inc. v. Nahum,

624 F. 3d 1213 (9th Cir. 2010) ..................................................................................... 16

Eli Lilly & Co. v. Natural Answers, Inc.,

233 F.3d 456 (7th Cir. 2000) ........................................................................................ 21

Filipino Yellow Pages, Inc. v. Asian Journal Publs., Inc.,

198 F.3d 1143 (9th Cir. 1999) ........................................................................................ 8

GoPets Ltd. v. Hise,

657 F.3d 1024 (9th Cir. 2011) ........................................................................................ 9

GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199 (9th Cir. 2000) ...................................................................................... 15

Icon Enters. Intern, Inc. v. Am. Prods. Co.,

No. 04-cv-1240-SVW, 2004 WL 5644805 (C.D. Cal. Oct. 7, 2004) .......................... 15

Interstellar Starship Servs., Ltd. v. Epix Inc.,

184 F.3d 1107 (9th Cir. 1999) ..................................................................................... 14


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JL Beverage Co., LLC v. Jim Beam Brands Co.,

828 F.3d 1098 (9th Cir. 2016) ...................................................................................... 13

Kendall–Jackson Winery, Ltd. v. E. & J. Gallo Winery,

150 F.3d 1042 (9th Cir.1998) ................................................................................... 7, 11

Levi Strauss & Co. v. Blue Bell, Inc.,

632 F.2d 817 (9th Cir. 1980) ........................................................................................ 18

Miss Universe, Inc. v. Flesher,

433 F. Supp. 271 (C.D. Cal. 1977) ............................................................................... 16

N Light Tech., Inc. v. N Lights Club,

236 F.3d 57 (1st Cir. 2001) .......................................................................................... 16

Network Automation, Inc. v. Adv. Sys. Concepts, Inc.,

638 F.3d 1137 (9th Cir. 2011) ........................................................................................ 9

NextEngine Ventures, LLC v. Lastar, Inc.,

2014 WL 12581777 (C.D. Cal. Jun. 3, 2014) ................................................................ 9

Nissan Motor Co. v. Nissan Computer Corp.,

378 F.3d 1002 (9th Cir.2004) ....................................................................................... 10

Nutri/System, Inc. v. Con-Stan Industries, Inc.,

809 F.2d 601 (9th Cir. 1987) ........................................................................................ 18

Official Airline Guides v. Goss,

6 F.3d 1385 (9th Cir. 1993) .......................................................................................... 11

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 US 189 (1985) ......................................................................................................... 8

Perfumebay.com Inc. v. eBay, Inc.,

506 F.3d 1165 (9th Cir. 2007) ...................................................................................... 16

Sabinsa Corp. v. Creative Compounds, LLC,

609 F.3d 175 (3d Cir. 2010) ......................................................................................... 14

Shields v. Zuccarini,

254 F.3d 476 (3d Cir. 2001) ......................................................................................... 16

Streetwise Maps, Inc. v. VanDam, Inc.,

159 F.3d 739 (2d Cir. 1998) ......................................................................................... 14

Surfvivor Media, Inc. v. Survivor Prods.,

406 F.3d 625 (9th Cir. 2005) ........................................................................................ 20

Thane Int’l, Inc. v. Trek Bicycle Corp.,

305 F.3d 894 (9th Cir. 2002) ........................................................................................ 10


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Woodsmith Pub. Co. v. Meredith Corp.,

904 F.2d 1244 (8th Cir. 1990) ...................................................................................... 10

STATUTES

15 U.S.C. § 1057(b) ........................................................................................................... 8

15 U.S.C. § 1065 ................................................................................................................ 8

15 U.S.C. § 1125 ................................................................................................................ 7

15 U.S.C. § 1125(a) ........................................................................................................... 7

15 U.S.C. § 1125(d) ......................................................................................................... 15

15 U.S.C. §§ 1114 .............................................................................................................. 7

OTHER AUTHORITIES

McCarthy on Trademarks and Unfair Competition ........................................ 14, 16, 19, 20


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I. INTRODUCTION

Plaintiffs seek partial summary judgment of liability against Defendant Robert

Trevor Simms because of his flagrant infringement on Plaintiffs’ COACHELLA and

CHELLA trademarks and service marks.1 Simms is liable because he was aware of

Plaintiffs’ famous Coachella Valley Music and Arts Festival (“Coachella”) and Plaintiffs’

marks when he adopted the name Filmchella to identify his multi-day outdoor festival

that, like Coachella, featured live music, films, and camping, and was located near the

same geographic region as the Coachella festival. Simms is also liable because he used

confusingly similar designations such as “COACHELLA FILM FESTIVAL,”

“FILMCOACHELLA,” “FILMCHELLA,” “FILMCHLLA,” and “FILMCHILLA” and

the confusingly similar domain names filmcoachella.com, filmchella.com, filmchilla.com

and filmchlla.com (collectively, the “Filmchella Designations”) to promote Filmchella.

And, in a blatant attempt to trade off Plaintiffs’ goodwill, Simms even described

Filmchella as “COACHELLA FOR MOVIES” and “THE ROCK N ROLL

EXPERIENCE FOR FILMMAKERS & FANS” (emphasis added).

After filing this action, Plaintiffs promptly moved for a preliminary injunction,

which the Court granted. (Dkt. 38). Additional facts discovered since the preliminary

injunction further support a finding that Simms’ infringed the COACHELLA and

CHELLA marks. For example, Simms has admitted that he based the Filmchella name on

the Coachella name. Furthermore, in his trademark application for Filmchella, Simms

filed a sworn declaration representing that Filmchella was being used for, among other

things, “[e]ntertainment services, namely, providing advice and information for

music . . .” (emphasis added). Simms also admitted that he used the same distinctive and

well-known design of the Coachella (stylized) mark to promote his festival. In addition,

although Simms represented to the Court in a declaration that his festival was not a music

1 Although all four Defendants are liable, Simms is the founder, owner, operator and promoter of the infringing activities at issue. As such, Plaintiffs’ motion is directed solely against Simms. Furthermore, although Plaintiffs’ First Amended Complaint has numerous causes of action against Defendants, Plaintiffs only seek summary judgment for liability on its trademark infringement causes of action.


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festival, discovery has shown that claim to be false, as music was a prominent component

of Filmchella. Finally, since Plaintiffs have repeatedly included film screenings and film

festivals at the Coachella festival since 2001, there is a substantial overlap in services

provided at both Coachella and Filmchella.

Because these facts are not in dispute, Plaintiffs are entitled to summary judgment

as a matter of law on liability on its trademark infringement claims.

II. STATEMENT OF FACTS

A. Coachella Valley Music And Arts Festival

Held each year at the 78-acre Empire Polo Club in Indio, California, Coachella is

one of the most critically acclaimed music and arts festivals in the world. Separate

Statement of Undisputed Facts (“UF”) ¶¶ 2-3. Attendance to the Coachella festival,

aggregated over its two consecutive weekends, is estimated at nearly 750,000 attendees.

UF ¶¶ 4-5. According to Billboard Magazine, Coachella was the top grossing festival in

the world in 2015, with gross ticket sales in excess of 84 million dollars. UF ¶ 6.

The first Coachella festival, held in October 1999, drew approximately 25,000

attendees into the California desert. UF ¶ 7. Over the years, Coachella’s attendance and

prominence have grown tremendously, as demonstrated in part by the vast amount of

unsolicited media coverage Coachella receives. See, e.g., ¶ 8. The caption from a

collection of photographs accompanying a story from CNN reads, “[a]n aerial view taken

from a helicopter on Sunday shows how big the [2011] festival is.” Id.

Coachella mixes some of the most groundbreaking and world-famous musical

artists with unique art installations, film and other forms of art. The list of musical artists

who have performed at Coachella include: Beyoncé, Lady Gaga, Coldplay, Jay-Z, Kanye

West, Madonna, Paul McCartney, Prince and Red Hot Chili Peppers, to list only a very

few. UF ¶¶ 9-10.

Coachella is carefully produced, curated, and controlled to provide a unique, one-

of-a-kind, festival experience. UF ¶ 59. Because of this unique and limited experience,

tickets to Coachella sell out and for the past few years have sold out in less than a day.


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UF ¶ 61. The Coachella experience also includes on-site camping facilities for some

15,000 attendees (complete with a karaoke lounge and a general store), an amazing

selection of food and beverages from a wide range of restaurants, and a variety of art

exhibits, including sculptures and “interactive” art. The art exhibits have included a

virtual reality experience, short and feature-length films, a silent disco, and other unique

works. UF ¶¶ 62-63.

Although Coachella is well-known for its music, film has long been an integral and

prominent part of the festival. In fact, Coachella has both conducted film festivals and

screened various short and feature-length films since its inception. UF ¶¶ 31-57. During

Coachella’s second year in 2001, Plaintiffs launched the Coachella Independent Film

Festival (the “Coachella Film Festival”). UF ¶ 33. From 2001 to 2007, the Coachella

Film Festival physically took place within the main event grounds of Coachella festival

and was an integral part of the art component of the Coachella festival. UF ¶ 34. The

Coachella Film Festival was widely promoted in flyers, posters, and in Coachella’s

official program guide available to festival attendees. UF ¶ 36. In 2002, the Coachella

Film Festival created a website, available at coachellafilmfestival.com, which provided

information about the Coachella Film Festival. UF ¶ 37.

In 2008 and 2009, the Coachella Film Festival moved to Coachella’s campground

area, a location better suited for film screening. UF ¶ 39. With more green space and a

greater distance from the musical performances, Coachella’s campground area offered

more viewers with better screening experiences. UF ¶ 40. In 2008, the Coachella Film

Festival exhibited Laserium’s multi-media Pink Floyd film. UF ¶ 41. The exhibition

included multiple large screens, lighting and lasers. Id. Approximately 10,000 Coachella

festival goers attended this film exhibition in the campgrounds. UF ¶ 42.

As Coachella’s attendance soared and space in the campgrounds was needed for

other purposes, a decision was made to temporarily pause the Coachella Film Festival.

UF ¶ 43. Plaintiffs, however, continue to evaluate the feasibility of reintroducing the

Coachella Film Festival during future Coachella festivals and consistently maintained the


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coachellafilmfestival.com domain name. UF ¶ 44.

In 2016, Plaintiffs identified the necessary technology to provide festival attendees

with high quality screenings, and they partnered with Hewlett-Packard to create the

Antarctic Dome (“Antarctic”) – a film screening venue within Coachella. UF ¶¶ 45, 49.

Antarctic is one of the largest geodesic projection domes in the world, seating up to 500

viewers, and offering viewers a 360-degree immersive film screening experience along

with a state-of-the-art sound system. UF ¶¶ 46-48. The Antarctic venue, which was

prominently located within the Coachella festival grounds, was first included at

Coachella in 2017 and returned in 2018. UF ¶¶ 50-53. Plaintiffs work closely with

studios to produce and curate the films that are exhibited in Antarctic during Coachella

and have screened several short films in 2017 and 2018. UF ¶¶ 52-56. In both 2017 and

2018, more than 100,000 Coachella attendees viewed films exhibited in Antarctic. UF

¶ 57. Given Antarctic’s success, Coachella will likely incorporate some aspect of film

screening in future festival programming. UF ¶ 58.

Taken together, the films, music, food, art, and the curation of each of these

elements makes Coachella more than just a concert—it truly is a unique cultural

experience. UF ¶¶ 9-10, 59-64.

In addition to the festival itself, Plaintiffs have also curated and created a world-

class online presence for Coachella, beginning with the festival’s website, coachella.com.

UF ¶¶ 11-12. This website received over 25 million page views in 2016, and hosted

nearly 8 million users in over 11 million sessions. UF ¶ 13. By 2018, those numbers

increased to over 27.9 million page views and over 9.5 million users in almost

14.9 million sessions. Id. Coachella also has a mobile app for use on iPhone / iPad and

Android devices with a substantial user base. UF ¶¶ 14-15.

Plaintiffs extensively promote their Coachella festival through a variety of media

and Internet social media sites, including Facebook, Twitter, Instagram, and others. UF

¶ 16. In 2016, the Coachella Facebook page has over 1.7 million likes; Coachella’s

Twitter account was being followed by 700,000 consumers; and, the festival’s Instagram


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account was being followed by over 900,000 million consumers. UF ¶¶ 17-18.

Plaintiffs invested over $680,000 dollars in 2015 and over $1 million in 2018 in

media and related content to promote Coachella. UF ¶¶ 20-22. An Internet search using

the Google search engine for the term “Coachella Music Festival” provided over 2.6

million hits. A cursory review of the results shows nearly every hit was related to

Plaintiffs’ festival and the first search result was to Plaintiffs’ www.coachella.com

website. UF ¶ 65. Tracked online media impressions (news articles) for Coachella from

March 27, 2015 through May 1, 2015 exceeded 60 million impressions and increased to

over 70 million in 2017 and 2018. UF ¶¶ 24-25. Moreover, Plaintiffs’ webcast of

Coachella received tens of millions of views each year, with over 40 million views in

2018. UF ¶¶ 26-29. In addition, over 500 credentialed journalists, from print media,

radio, television, and the Internet reported live from the 2016 festival, including media

outlets as diverse as Time, Billboard, and the BBC, to list a few. UF ¶ 30.

B. Plaintiffs’ Trademarks And Service Marks

Plaintiffs own numerous federal registrations for its COACHELLA,

COACHELLA (stylized), CHELLA, and COACHELLA VALLEY MUSIC AND ARTS

FESTIVAL trademarks and service marks which it uses in connection with a wide range

of goods and services, including entertainment, namely, organizing and producing

musical events, and selling merchandise (collectively the “Coachella Marks”).2 UF ¶ 67.

Many of these registrations are incontestable. See, e.g., UF ¶ 68. Plaintiffs diligently

protect the Coachella Marks from unauthorized use, including sending over 200 cease

and desist letters and emails on average each year to unauthorized users. UF ¶ 69.

C. Simms’ Infringing Acts

Simms created, organized, advertised, executed, and operated Filmchella. UF ¶ 71.

Filmchella is a festival directly competitive with Coachella. UF ¶¶ 83-89. Simms was

aware of Plaintiffs, Coachella and the Coachella Marks when he conceived of and

2 Due to their extensive and exclusive use for over twenty years, Plaintiffs also own common law trademark and service mark rights for COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL. UF ¶ 66.


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adopted the Filmchella name. UF ¶¶ 89-91. Simms also admits that he intentionally based

Filmchella on the COACHELLA name. UF ¶ 92. Simms has used the Filmchella

Designations to promote his multi-day outdoor festival. UF ¶ 72-84. Simms referred to

and advertised Filmchella as the “COACHELLA FOR MOVIES” on the Filmchella

websites and Facebook pages, and Simms further described Filmchella as “THE ROCK

N ROLL EXPERIENCE FOR FILMMAKERS & FANS.” UF ¶¶ 83-84. Even when

Simms briefly switched the name of his infringing festival to Filmchilla, he did so using

the same distinctive and well-known design as the registered COACHELLA (stylized)

mark. UF ¶ 99-101; cf. Reg. No. 3,196,129. UF ¶ 67.

Simms’ festival is strikingly similar to Plaintiffs’ Coachella festival. UF ¶ 84-87.

Like Coachella, Simms’ Filmchella festival was held over three days3 in Southern

California. UF ¶ 85. And, just like Coachella, Filmchella featured live concerts complete

with a stage and a lighting rig, a silent disco, sculptural works, films, and camping. UF

¶¶ 86,102. Despite Simms’ prior contrary representations to the Court, (Opp. to PI

Motion at 10 (Dkt. 21); Simms Decl. ¶16 (Dkt. 21-1)) discovery reveals that Filmchella

prominently featured multiple live music concerts with at least 4 musical performers, a

performance stage, and a concert sound system. UF ¶ 102. In fact, at least half of a

promotional video for Filmchella is dedicated to highlighting the live music performed on

stage at the festival. UF ¶ 104. In this same video, Simms mentions waiting until “the

concert” is over before beginning the next film. Id. Further, as can be seen from social

media posts from some attendees, music was a prominent component of Filmchella. UF

¶ 102. Additionally, at least one performer referred to Filmchella as a music festival, thus

indicating that music was a key component of the Filmchella festival. Id.

In his further efforts to trade off Plaintiffs’ goodwill, Simms has registered and has

used or is using the domain names filmcoachella.com, filmchella.com, filmchlla.com, and

filmchilla.com, each of which incorporates one of the Coachella Marks, to advertise and

3 Although Coachella is held over three days, it is duplicated during a second weekend to accommodate consumer demand. UF ¶ 4.


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promote the Filmchella festival. UF ¶¶ 72-78. Simms also has used the Coachella Marks

in meta description tags and meta keyword tags for these infringing websites to drive

traffic to them. UF ¶¶ 79-80. In addition, Simms advertised the Filmchella festival

through a variety of social media sites including Facebook, Twitter, Instagram, YouTube,

and Filmfreeway, to name a few. UF ¶ 81. Furthermore, Simms uses Filmchella as the

handle / account name, or user account for each of these various social media accounts

and still uses Filmchella as his email address, [email protected], which appeared on

the Filmchella website and was used in connection with the Filmchella festival. UF ¶ 82.

Finally, Simms applied to register Filmchella as a trademark with the U.S. Patent and

Trademark Office, which Plaintiffs promptly opposed. UF ¶¶ 93, 97-98. It is significant

that in conjunction with the Filmchella registration, Simms filed a sworn declaration that

the Filmchella mark was being used for “Entertainment services, namely, providing

advice and information for music, video and film concept and script development.” UF

¶ 94-95.

III. PLAINTIFFS ARE ENTITLED TO SUMMARY JUDGMENT ON THEIR

TRADEMARK INFRINGEMENT CLAIMS.

Trademark infringement requires proof that (a) Plaintiffs own valid protectable

marks; (b) Simms used, without authorization, the asserted marks or confusingly similar

designations thereto; and (c) Simms’ use is likely to cause consumer confusion. Dep’t of

Parks & Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006); 15

U.S.C. §§ 1114, 1125.4 The undisputed facts here show that each element has been

proven and that Plaintiffs are entitled to judgment as a matter of law.

A. Plaintiffs own valid protectable trademarks and service marks.

Plaintiffs own numerous federal registrations for their COACHELLA,

4 Whereas 15 U.S.C. § 1114(1) provides protection only to registered marks, 15 U.S.C. § 1125(a) protects against infringement of unregistered marks as well as registered marks. See, e.g., Kendall–Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1046 (9th Cir.1998); 15 U.S.C. §§ 1114, 1125(a). “Despite these differences, the analysis under the two provisions is oftentimes identical.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1047 (9th Cir. 1999). Such is the case here.


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COACHELLA (stylized), CHELLA, and COACHELLA VALLEY MUSIC AND ARTS

FESTIVAL trade and service marks in connection with a wide range of goods and

services, including of importance here, “entertainment, namely, organizing and producing

musical events.” UF ¶ 67. A certificate of registration constitutes “prima facie evidence

of the validity of the trademark and of the facts stated in the certificate.” 15 U.S.C. §

1057(b). As a result, Plaintiffs’ registered trademarks are presumed valid and Simms

bears the burden of proving invalidity. See Filipino Yellow Pages, Inc. v. Asian Journal

Publs., Inc., 198 F.3d 1143, 1146 (9th Cir. 1999). Moreover, Registrations Nos.

3,196,119, 3,196,129, and 3,196,128 and United States Trademark Registration No.

5,075,233 are incontestable as a matter of law, which means they cannot be challenged as

being descriptive. 15 U.S.C. § 1065; cf. id. at § 1064; Park ‘N Fly, Inc. v. Dollar Park &

Fly, Inc., 469 US 189, 198 (1985) (“We conclude that the holder of a registered mark

may rely on incontestability to enjoin infringement and that such an action may not be

defended on the grounds that the mark is merely descriptive.”). It cannot be disputed that

Plaintiffs own valid protectable marks, and that Defendant may not defend on the

grounds that the COACHELLA mark is merely descriptive, geographically or otherwise.

B. Simms has used Plaintiffs’ Coachella Marks and confusingly similar

Filmchella Designations without authorization and as trademarks.

Simms has used the Coachella Marks and the infringing Filmchella Designations to

put on a competing festival and to promote that festival. This use is plainly a commercial

use as a mark, sufficient to support a claim for trademark infringement. In fact, when

applying for a trademark registration of Filmchella, Simms declared that his use was as a

mark. UF ¶ 94. Additionally, Simms used the COACHELLA mark in its entirety in his

filmcoachella.com domain name, used the CHELLA mark in its entirety in his

filmchella.com domain name, and used a confusingly similar variant of the CHELLA

mark in his filmchilla.com and filmchlla.com domain names. UF ¶¶ 72-75. These domain

names were used to advertise Simms’ event. UF ¶ 77. Commercial use of a domain name

containing an infringing mark constitutes trademark infringement. GoPets Ltd. v. Hise,


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657 F.3d 1024, 1035 (9th Cir. 2011) (when content is added to a web site identified by a

domain name, the Lanham Act is triggered by this commercial use). See also NextEngine

Ventures, LLC v. Lastar, Inc., 2014 WL 12581777, at *4 (C.D. Cal. Jun. 3, 2014) (citing

Network Automation, Inc. v. Adv. Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011))

(using a domain name even solely to redirect to another commercial cite constitutes

commercial use of that domain name and therefore constitutes infringement of any mark

in that domain name). It is further undisputed that Simms’ uses described above were

without authorization. UF ¶¶ 89-90. This element is therefore met.

C. Simms’ use of the Coachella marks and the Filmchella Designations is

likely to cause consumer confusion.

To determine whether Simms’ use causes a likelihood of confusion, courts within

the Ninth Circuit apply the Sleekcraft factors. AMF Inc. v. Sleekcraft Boats, 599 F.2d

341, 348-349 (9th Cir. 1979). In Sleekcraft, the Ninth Circuit provided a non-exhaustive

list of factors that are relevant in “determining whether confusion between related goods

or services is likely: (1) strength of the mark, (2) proximity or relatedness of the goods,

(3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used,

(6) type of goods and the degree of care likely to be exercised by the purchaser, (7)

defendant’s intent in selecting the mark, and (8) likelihood of expansion of the product

lines or services.” Sleekcraft, 599 F.2d at 341. However, not all of the Sleekcraft factors

have equal weight, and not every factor will be at issue in every case. See Thane Int’l,

Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002). “[I]t is often possible to

reach a conclusion . . . after considering only a subset of factors.” Brookfield, 174 F.3d at

1054.

Absent a genuine dispute of material facts, summary judgment on likelihood of

confusion is appropriate. Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002,

1019 (9th Cir.2004) (affirming summary judgment where the marks were “legally

identical,” the goods at issue were related, and the marketing channels overlapped); Au-

Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1075 (9th Cir. 2006)


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(“As part of our de novo review, we conclude as a matter of law that likelihood of

confusion is clear cut here.”). See Woodsmith Pub. Co. v. Meredith Corp., 904 F.2d 1244,

1247 (8th Cir. 1990) (“In unfair competition cases, the dispute between the parties

usually centers on the interpretation to be given to the facts - not the facts themselves or

the inferences that can be drawn from the facts.”) Since there are no relevant facts in

dispute and each of the relevant Sleekcraft factors weighs strongly in Plaintiffs’ favor,

summary judgment is appropriate.

1. The Coachella Marks are strong.

A strong mark is one that is likely to make a consumer think a product or service

comes from a particular source. Official Airline Guides v. Goss, 6 F.3d 1385, 1392 (9th

Cir. 1993) (“the stronger a mark, the more likely consumers will think that a product or

service comes from a particular source”). To determine strength, marks are placed within

one of several categories, which are referred to, in increasing order of distinctiveness, as

generic, descriptive, suggestive, arbitrary, or fanciful. See, e.g., Kendall-Jackson Winery,

Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). Marks that are

descriptive or suggestive “may be strengthened by such factors as extensive advertising,

length of exclusive use, public recognition and uniqueness.” Accuride Int’l, Inc. v.

Accuride Corp., 871 F.2d 1531, 1536 (9th Cir. 1989) (citation omitted).

Plaintiffs’ Coachella Marks are descriptive and suggestive of the geographic

location where their music festival is held. However, as the Ninth Circuit explained in

Accuride and as the Court found at the preliminary injunction stage (Dkt. 38), due to

extensive advertising, length of exclusive use, public recognition, and uniqueness,

Plaintiffs’ Coachella Marks are extremely strong. Plaintiffs extensively advertise their

uniquely designed and exclusive Coachella Marks and spend hundreds of thousands of

dollars in advertising each year. UF ¶¶ 11-22. Hundreds of thousands of attendees attend

Coachella each year, with last year’s aggregated daily attendance reaching nearly

750,000, and nearly 8 million Internet users visited the Coachella.com website in 2016.

UF ¶¶ 5, 13. The public overwhelmingly recognizes the Coachella Marks and closely


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associates them with Plaintiffs and Coachella. UF ¶¶ 1-30, 59-61, 64-65. This factor

strongly favors a finding of likelihood of confusion.

2. Simms intentionally copied the Coachella Marks.

Simms admits that he was aware of Plaintiffs and their Coachella Marks, and that

he based the Filmchella name on the Coachella name. UF ¶¶ 91-92. Simms referred to

and advertised Filmchella as the “COACHELLA FOR MOVIES.” UF ¶ 83. Simms has

even used the same distinctive and well-known design as the registered COACHELLA

(stylized) mark to advertise his event. UF ¶¶ 101-02. These undisputed facts show that

Simms adopted Filmchella not only with knowledge of Plaintiffs and their marks, but

with the intent to trade off Plaintiffs’ goodwill. Courts hold that this factor “favors the

plaintiff ‘where the alleged infringer adopted his mark with knowledge, actual or

constructive, that it was another’s trademark.’” JL Beverage Co., 828 F.3d at 1111-12

(quoting Brookfield, 174 F.3d at 1059). When “an alleged infringer knowingly adopts a

mark similar to another’s, courts will presume an intent to deceive the public.” Official

Airline Guides, 6 F.3d at 1394. Intent is thus often dispositive.

Despite finding at the preliminary injunction stage that Simms intended to copy

Coachella,5 the Court found the intent factor to weigh slightly in Simms’s favor because

“Simms did not intend to confuse consumers” and “Simms has provided evidence that he

relied in good faith on a valid trademark search conducted by a trademark examiner—

that did not return any conflict . . .” Id. at 9, 10. Since the Court’s ruling, however, new

facts have been discovered which undercut Simms’ claims.

First, Simms now admits that he based the Filmchella name on the Coachella

name. UF ¶¶ 91-92. Second, and more importantly, Simms did not and could not have

relied on the trademark examiner’s June 24, 2017 search (UF ¶ 96) to develop a good-

faith belief that his conduct was not infringing for the simple reason that Simms

5 In particular, the Court found: “the Filmchella website advertised Filmchella as ‘Coachella for Movies,’ which evinces both awareness of Coachella and an intent to copy;” “Filmchella . . . was intended to copy, at least in part the Coachella Music Festival;” and “Plaintiffs’ argument that Simms intended to trade on the goodwill of Coachella’s famous marks has a strong basis.” Injunction Order at 9 (Dkt. 38).


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registered the domain names for the Filmchella websites in January and March 2017. UF

¶¶ 72-75.6 Courts hold that intent is measured at the time Simms selected the mark. See,

e.g., Sleekcraft, 599 F.2d at 349, 354 (discussing “intent in selecting the mark”); JL

Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1111-12 (9th Cir. 2016)

(“We turn last to factor seven of the Sleekcraft test, which assesses the defendant’s intent

in selecting the mark.”).

Plaintiffs also sent Simms a cease and desist letter on March 7, 2017, more than 3

months before the trademark search, asserting that Filmchella infringed the Coachella

Marks. UF ¶ 89. It was not until after receiving this cease and desist letter that Simms

filed his trademark application for Filmchella on April 1, 2017. UF ¶ 93. Further

highlighting Simms’ intent to copy the Coachella Marks, the Filmchella trademark

application contained a sworn declaration by Simms that the mark was being used in

commerce in connection with “Entertainment services, namely, providing advice and

information for music . . .” UF ¶ 94-95.

By the time the USPTO conducted a trademark search on June 24, 2017, Simms

had already selected the infringing mark with full knowledge of the Coachella Marks

(and had based it on them), received notice of the infringement from Plaintiffs, and had

even told Plaintiffs he would change the Filmchella name. UF ¶¶ 90, 96. When he

selected Filmchella, Simms could not have reasonably relied on the trademark examiner’s

search because that search took place months after Simms’ actual selection of Filmchella.

Simms’ statements to the contrary should be ignored because they are just after-the-fact

justifications for his infringement.

Since Simms was aware of the Coachella Marks when he selected and used

Filmchella in early 2017, the undisputed facts now more clearly show that Simms

intended to copy the Coachella Marks without any justification. See Adidas Am., Inc. v.

Skechers USA, Inc., 890 F.3d 747, 758 (9th Cir. 2018) (“When one party knowingly

6 During January 2017, the website went live, and Simms registered a non-profit organization by the same name. UF ¶ 105.


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adopts a mark similar to another’s, reviewing courts presume that the defendant will

accomplish its purpose, and that the public will be deceived.”); Interstellar Starship

Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1111 (9th Cir. 1999) (“Adopting a designation

with knowledge of its trademark status permits a presumption of intent to deceive.”);

Brookfield, 174 F.3d at 1059 (“The district court found that the intent factor favored [the

defendant] because [the defendant] did not adopt the… mark with the specific purpose of

infringing [plaintiff’s] trademark. The intent prong, however, is not so narrowly confined.

This factor favors the plaintiff where the alleged infringer adopted his mark with

knowledge, actual or constructive, that it was another’s trademark.”).7

This factor strongly weighs in Plaintiffs’ favor because: (1) Simms was aware of

the Coachella Marks when he selected and used Filmchella in early 2017, (2) Simms

admitted, and his actions showed, that he based Filmchella on COACHELLA, (3) Simms

referred to and advertised Filmchella as the “COACHELLA FOR MOVIES,” and (4)

Simms even used the same distinctive and well-known design as the registered

COACHELLA (stylized) mark to advertise his event. Furthermore, the only mitigating

evidence of good faith, the alleged trademark search, occurred months after the

infringement began. Even if the trademark search had been conducted before Simms

adopted the mark this factor still cannot favor Simms because, as a matter of law, intent

only goes one way. See, e.g., GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1208

7 In its Preliminary Injunction Order, however, the Court found that “the intent to copy is not necessarily the intent to confuse.” Dkt. 38 at 9. The cases from the Second and Third Circuits relied upon by the Court to distinguish between intent to copy and intent to confuse are inapposite. In A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 225-26 (3d Cir. 2000), there was no intent because “no one at Victoria's Secret Stores knew about [the] Miraclesuit” mark. Id. In contrast, where defendants are aware of the trademark and knowingly use a similar trademark, the Third Circuit finds intent based on that copying, just like every other circuit. Sabinsa Corp. v. Creative Compounds, LLC, 609 F.3d 175, 188 (3d Cir. 2010). In Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 745 (2d Cir. 1998) the Second Circuit focused on intentionally copying features of a product or service in an attempt to compete rather than intentionally copying a trademark. “[D]efendants probably copied the size and concept of Streetwise’s map, but not in an effort to mislead consumers.…[t]he intent to compete by imitating the successful features of another’s produce is vastly different from the intent to deceive purchasers.”)). While Simms certainly copied features of Coachella, Simms did not stop at copying features of the event. Simms knowingly copied the Coachella Marks, giving rise to a presumption that he did so to confuse consumers.


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(9th Cir. 2000) (“Absence of malice is no defense to trademark infringement”);

McCarthy on Trademarks and Unfair Competition8 § 23:124 (“The Relevance of Intent

Goes in Only One Direction. While the accused infringer’s bad faith intent to cause

confusion is admitted as evidence of liability, evidence of good faith is not a defense to

liability.”) (emphasis in original).

3. The Filmchella Designations are similar to the Coachella Marks.

Each of the Filmchella Designations is similar to the Coachella Marks. In

evaluating the similarity of the marks, “first, the marks must be considered in their

entirety and as they appear in the marketplace; second, similarity is adjudged in terms of

appearance, sound, and meaning; and third, similarities are weighed more heavily than

differences.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000).

FILMCOACHELLA (and filmcoachella.com) incorporates the COACHELLA

mark in its entirety and FILMCHELLA (and filmchella.com) incorporates the CHELLA

mark in its entirety. Each of these Filmchella Designations merely prepend the

descriptive term “film” to the Coachella Marks.9 The addition of a generic term to a

plaintiff’s trademark is insufficient to dispel confusion. McCarthy § 23:50;

Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 1176 (9th Cir. 2007) (“The district

court did not err in holding that the marks [Perfumebay and eBay] were similar enough to

create a likelihood of confusion”). Similarly, domain names which merely append a

generic word or geographic descriptor to a distinctive or famous mark are also

confusingly similar to the mark upon which they prey. Senator Hatch, in support of the

passage of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §

8 Professor McCarthy is the world’s leading expert on U.S. trademark law and his treatise, McCarthy on Trademarks and Unfair Competition (“McCarthy”), is considered the definitive treatise on U.S. trademark law, having been cited countless times in published federal decisions. See Icon Enters. Intern, Inc. v. Am. Prods. Co., No. 04-cv-1240-SVW, 2004 WL 5644805, at *29 (C.D. Cal. Oct. 7, 2004). 9 Similarly, COACHELLA FOR MOVIES and COACHELLA FILM FESTIVAL each incorporates the COACHELLA mark in its entirety and combine it with common words describing attributes of Simms’ festival. These additional words do not prevent a finding of confusion. McCarthy § 23:50; e.g., Miss Universe, Inc. v. Flesher, 433 F. Supp. 271, 274 (C.D. Cal. 1977).


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1125(d), cited “attphonecard.com” and “attcallingcard.com” as examples of confusingly

similar domain names the bill would protect against. 145 Cong. Rec. S10513, S10515

(daily ed. August 5, 1999) (statement of Sen. Hatch); see also DSPT Intern., Inc. v.

Nahum, 624 F. 3d 1213 (9th Cir. 2010) (jury finding of confusing similarity of “www.eq-

italy.com” and the trademark EQ upheld on appeal).

Nor can Simms avoid infringement by using FILMCHILLA (or filmchilla.com) or,

FILMCHLLA (or filmchlla.com) which differ from FILMCHELLA by replacing or

omitting a single letter. “A reasonable interpretation of conduct covered by the phrase

‘confusingly similar’ is the intentional registration of domain names that are misspellings

of distinctive or famous names, causing an Internet user who makes a slight spelling or

typing error to reach an unintended site.” Shields v. Zuccarini, 254 F.3d 476, 484 (3d Cir.

2001); see also N Light Tech., Inc. v. N Lights Club, 236 F.3d 57, 66 n.14 (1st Cir. 2001)

(the identical or confusingly similar requirement of the ACPA looks to the facial

similarity of the domain name with the mark).

In its injunction order, the Court found that the similarity of the marks factor

slightly favored Plaintiffs. Injunction Order at 8 (Dkt. 38). Discovery has, however,

revealed that this factor favors Plaintiffs more than originally known because Simms now

admits that he depicted FILMCHILLA in a manner designed to evoke the famous

Coachella Marks by employing the same stylized design used by Plaintiffs. UF ¶ 101.

FILMCHELLA also infringes COACHELLA because both marks are

predominantly used as word marks, including on the Internet as domain names

(coachella.com compared with filmchella.com) and user accounts

(facebook.com/Coachella and facebook.com/filmchella). UF ¶¶ 72-76, 81. Both marks

are comprised of a single, three-syllable word, ending in “chella”: Coa-chella10

and

Film-chella, respectively. Both marks are sometimes used in a stylized design (the

COACHELLA mark (stylized) as depicted in U.S. Reg. Nos. 3,196,129 and 4,266,400),

and in a number of variants for FILMCHELLA. An analysis regarding sound of both

10 It should be noted that COACHELLA is pronounced ko-CHEL-a. UF ¶ 70.


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marks reveals further similarities: both marks have the same three-syllable cadence when

spoken, and both end with the slightly dominant “chella” ending.

That Simms has also displayed Filmchella in a design different from the distinctive

COACHELLA (stylized) mark cannot dispel confusion for two reasons. First, Simms

makes prolific use of the non-stylized wordmark Filmchella in plain text in his various

Internet domain names, as well as in those websites’ metadata, as social media handles,

as a hashtag, and in Internet search results. UF ¶¶ 72-76, 79, 81. This increases the

importance of the sight, sound, and meaning comparison.

Second, consumers will not see the Filmchella Designations and the Coachella

Marks side-by-side since “[a] side-by-side comparison of the conflicting marks is

improper if that is not the way buyers see the products in the market.” McCarthy § 23:59;

see also Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980) (“It is

axiomatic in trademark law that ‘side-by-side’ comparison is not the test.”). Since

consumers encounter each mark separately, and commonly on the Internet, “the court

must determine the purchasing public’s state of mind when confronted by somewhat

similar trade names singly presented.” McCarthy § 23:59 (quotations marks omitted).

Given Plaintiffs’ incorporation of the CHELLA and COACHELLA marks in the

Filmchella Designations, and Plaintiffs’ admission that he used the same stylized font as

COACHELLA (stylized), this factor strongly favors Plaintiffs.

4. The proximity of the goods, degree of care by the purchaser, and

the marketing channels used all strongly favor plaintiffs.

“Related goods are generally more likely than unrelated goods to confuse the

public as to the producers of those goods.” Brookfield, 174 F.3d at 1055. “For related

goods, the danger presented is that the public will mistakenly assume there is an

association between the producers of the related goods, though no such association

exists.” Sleekcraft, 599 F.2d at 350. Similarly, “[c]onvergent marketing channels increase

the likelihood of confusion. Therefore, the courts examine the proximity of the marketing

channels to one another and whether direct competition exists.” Nutri/System, Inc. v.


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Con-Stan Industries, Inc., 809 F.2d 601, 606 (9th Cir. 1987).

In issuing the injunction, the Court analyzed the proximity and type of goods,

degree of care by the purchaser, and the marketing channels used factors together due to

their “substantial overlap.” Injunction Order at 6 (Dkt. 38). Although the Court found

these factors weighed in Plaintiffs’ favor, it also noted that:

[a]s Simms points out, the festivals are quite different. Coachella … focuses

almost entirely on music, whereas Filmchella focuses entirely or almost

entirely on film and is advertised as a “film festival,” not a music festival.

Id. (citations omitted). Discovery has shown, however, that Simms’s representations to

this effect were misleading because music was a prominent feature of Filmchella. The

facts now show that Filmchella featured live music, with at least 4 different performers

and multiple concerts, a performance stage and a concert sound system. Nor is it

surprising that the event prominently featured live music given (a) Simms’ initial

registration of Filmchella claiming that Filmchella was being used to provide, among

other things, entertainment services for music and (b) Simms’ marketing Filmchella as

“THE ROCK N ROLL EXPERIENCE FOR FILMMAKERS & FANS” and the

“COACHELLA FOR MOVIES.” UF ¶ 83, 94. In addition, discovery has revealed that

Filmchella also featured artwork, including a sculpture, which is also a component of

Coachella. UF ¶ 102; cf. UF ¶ 63.

Since it is now evident that Simms hosted live music concerts at his event and

featured sculpture, a large percentage of Simms’s Filmchella services are directly

competitive with and related to those of Plaintiffs. Apart from the common musical

component shared by the two festivals, Plaintiffs have been conducting film screenings

and film festivals during Coachella and on the Coachella grounds since 2001. UF ¶ 33.

When goods are related or directly competitive, this factor cuts sharply towards

finding a likelihood of confusion. Sleekcraft, 599 F.2d at 350. In fact, the more similar

the services are, “the less similarity in the marks is requisite to a finding of likelihood of

confusion.” Id. By heavily featuring live music concerts and large sculptures together


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with a film festival, each of which is a hallmark of Coachella, the differences between

Plaintiffs’ services provided under their Coachella Marks and the services provided by

Simms under the Filmchella mark collapse.

Moreover, Plaintiffs, like Simms, advertise extensively on the Internet and their

website. UF ¶¶ 11-29. Simms is directly competing with Plaintiffs in the same geographic

area and to generally the same consumers, using the Internet, including Facebook,

Twitter, Instagram, and other social media, as well as Simms’ websites. In fact, Simms

used metadata in his websites, which incorporates the Coachella Marks and the “music

festival” tag, to misdirect users searching for “Coachella” to the Filmchella websites. UF

¶¶ 72-81. It follows that Simms’ marketing channels are not only convergent, but

identical to those of Plaintiff.

Finally, Plaintiffs and Simms produce multi-day music festivals and sell tickets to

their respective events. UF ¶¶ 85, 87. Tickets to music festivals are not expensive or

complex purchases where consumers are likely to exercise a great deal of care in

distinguishing between trademarks when purchasing the goods. See adidas-Am., Inc. v.

Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1057-58 (D. Or. 2008). When

purchasing inexpensive items, customers often exercise less care, thereby making

confusion more likely. Brookfield, 174 F.3d at 1060. And as the Court found at the

injunction stage, “it would be a stretch to find the degree of care extending to determining

whether Filmchella is affiliated with Coachella.” Dkt. 38 at 6.

Each of these factors therefore strongly favors Plaintiffs.

5. The “likelihood of expansion” analysis collapses into the

“proximity of the goods” as the services are the same.

“To resolve this factor, [courts] must determine whether existence of the allegedly

infringing mark is hindering the plaintiff’s expansion plans.” Surfvivor Media, Inc. v.

Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005). “[A] ‘strong possibility’ that either

party may expand his business to compete with the other will weigh in favor of finding

that the present use is infringing.” Sleekcraft, 599 F.2d at 354. During the briefing on


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Plaintiffs’ motion for an injunction, Simms misrepresented to the Court that Filmchella is

solely “for movie showings” and “is for a specialized market of filmmakers” whereas

Coachella “is for music festivals” and “for music and fashion enthusiasts.” Injunction

Opposition at 10:13-20 (Dkt. 21). However, as explained above, now that Simms has

hosted his festival, new evidence has come to light showing that he did, in fact, produce

an event featuring a “Rock N Roll Experience” complete with a stage, and multiple bands

performing live music. Simms’s similarly named event has already expanded into

Coachella’s music territory, just as it already was coextensive with Plaintiffs’ exhibiting

films and operating a Film Festival. As a result, there is a much higher likelihood that

consumers will be confused as to the source, affiliation, or sponsorship of Filmchella, and

this factor should therefore strongly tilt in Plaintiffs’ favor because the services at issue

sufficiently overlap with those provided under the Coachella Marks.

6. Lack of actual confusion renders that factor irrelevant.

Because there was no evidence of actual confusion when the parties briefed the

injunction motion, the Court found that this factor favored Simms. But, like intent, actual

confusion only goes one way. “Actual confusion or deception of purchasers is not

essential to a finding of trademark infringement or unfair competition, it being

recognized that reliable evidence of actual confusion is practically almost impossible to

secure.” McCarthy § 23:12 (emphasis added); see also Sleekcraft, 599 F.2d at 353 (“this

factor is weighed heavily only when there is evidence of past confusion or, perhaps, when

the particular circumstances indicate such evidence should have been available”)

(emphasis added).

That evidence concerning actual confusion can only favor Plaintiffs makes sense in

situations where the infringer is new to the marketplace: “When the junior user’s product

or service is new on the market, there has been little opportunity for actual confusion and

the absence of any such evidence is to be expected.” McCarthy § 23:12; Eli Lilly & Co. v.

Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000) (when the challenged product is

new on the market “it is not surprising that [plaintiff] cannot identify customers who were


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actually confused”). As Professor McCarthy explained:

The law recognizes that random instance of confusion often go unreported or

unrecorded. Persons who are truly confused will often never be aware of the

deception. Others who were confused and later learned of their deception

will often not bother to report the fact. Therefore, it is error for a court to

find that plaintiff failed to prove injury caused by actual confusion and

conclude that plaintiff has failed to prove a violation of the Lanham Act.

McCarthy § 23:12.

Simms held his inaugural Filmchella festival less than a year ago. Tracking down

confused consumers after the festival ended has proven difficult, especially since Simms

has refused to provide the identities of his festival attendees in discovery. UF ¶ 103. For

this reason, this factor simply has no relevance and cannot favor Simms as a matter of

law (and is at worst neutral).

IV. CONCLUSION

There is no dispute that the Coachella Marks are valid and protectable. There is no

dispute that Simms used the Filmchella Designations in commerce and without

authorization from Plaintiffs. Finally, there is no dispute each of the Sleekcraft factors

either strongly favor Plaintiffs, or are neutral, thus resulting in a likelihood of confusion.

As such, the Court should grant Plaintiffs’ Motion for Partial Summary Judgment that

Simms is liable for trademark infringement because the Filmchella Designations infringe

the Coachella Marks.

DATED: August 13, 2018 Tucker Ellis LLP

By: /s/David J. Steele

David J. Steele Attorneys for Plaintiffs, COACHELLA MUSIC FESTIVAL, LLC and GOLDENVOICE, LLC


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