United States District Court, D. Colorado
ZAHOUREK SYSTEMS, INC., and JON ZAHOUREK, Plaintiffs/Counter-Defendants,
BALANCED BODY UNIVERSITY, LLC, Defendant/Counter-Plaintiff.
RAYMOND P. MOORE United States District Judge
This matter is before the Court on Defendant/Counter-Plaintiff Balanced Body University, LLC’s (“BBU” or “Defendant”) (1) motion for partial summary judgment (“MSJ”) (ECF No. 81) and (2) motion to strike (“Motion to Strike”) (ECF No. 119) the affidavit of Frank Baca (“Baca”) (ECF No. 102). Plaintiffs/Counter-Defendants Zahourek Systems, Inc. (“ZSI”) and Jon Zahourek (“Zahourek”) (collectively, “Plaintiffs”) filed responses to the respective motions (ECF Nos. 94; 123) and Defendant filed respective replies (ECF Nos. 117; 129).
At issue in this matter are three trademarks: (1) “Anatomy in Three Dimensions™” (“Ai3D Mark”); (2) “Anatomy in Three Dimensions an Introduction to Anatomy in Clay™” (“Introduction Mark”); and (3) “Anatomy in Clay™” (“Clay Mark”). (ECF No. 49 ¶ 17.) At issue in this matter is a copyright to the Maniken® model. (ECF No. 49 ¶ 19.) At issue in this matter with respect to Plaintiffs’ breach of contract claim is a Product License Agreement(“PLA”). (ECF No. 49 ¶ 21.) Plaintiffs’ unfair competition (ECF No. 49 ¶¶ 61-82) and misappropriation (ECF No. 49 ¶¶ 83-90) claims address Defendants’ alleged tortious conduct related to the trademarks and copyrighted material. Plaintiffs also seek an order directing the United States Patent and Trademark Office (“USPTO”) to deny Defendant’s notice of opposition to ZSI’s registration of the Ai3D Mark. (ECF No. 49 ¶¶ 91-94.)
Defendant’s MSJ “seeks dismissal of Plaintiffs’ trademark infringement, breach of contract, copyright, unfair competition and misappropriation claims, and judgment in favor of BBU and against Plaintiffs on the First through Ninth Causes of Action in BBU’s Counterclaim. . . .” (ECF No. 81 at 4.) Because it was unclear to the Court as to how Defendant’s MSJ addressed each of Plaintiffs’ claims (with its subclaims related to particular trademarks, copyrighted material, and specific contracts) and advanced support for its Counterclaims, the Court ordered the parties to appear before the Court to address this confusion. (ECF Nos. 135; 136; 139; 141.) On March 24, 2016, the Court held a hearing at which it made inquiry with respect to various issues covered by this Order, provided the parties an opportunity to respond to its inquiries, and advised the parties that a written order would follow. (See ECF No. 142.)
For the reasons stated below, the Court (1) GRANTS, in part, Defendant’s MSJ, (2) DENIES, in part, Defendant’s MSJ, (3) GRANTS, in part, Defendant’s Motion to Strike; and (4) DENIES, in part, Defendant’s Motion to Strike.
I. LEGAL STANDARDS
Summary judgment is appropriate only if there is no genuine dispute of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Henderson v. Inter-Chem. Coal Co., Inc., 41 F.3d 567, 569-70 (10th Cir. 1994). “A party seeking summary judgment bears the initial responsibility of informing the district court of the basis for its motion . . . .” Robertson v. Bd. of Cty. Comm’rs of the Cty. of Morgan, 78 F.Supp.2d 1142, 1146 (D. Colo. 1999) (citation omitted). Whether there is a genuine dispute as to a material fact depends upon whether the evidence presents a sufficient disagreement to require submission to a jury or is so one-sided that one party must prevail as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986); Stone v. Autoliv ASP, Inc., 210 F.3d 1132, 1136 (10th Cir. 2000). Once the moving party meets its initial burden of demonstrating an absence of a genuine dispute of material fact, the burden then shifts to the non-moving party to move beyond the pleadings and to designate evidence which demonstrates the existence of a genuine dispute of material fact to be resolved at trial. See 1-800-Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1242 (10th Cir. 2013) (citation omitted). A fact is “material” if it pertains to an element of a claim or defense; a factual dispute is “genuine” if the evidence is so contradictory that if the matter went to trial, a reasonable jury could return a verdict for either party. Anderson, 477 U.S. at 248. In considering whether summary judgment is appropriate, the facts must be considered in a light most favorable to the non-moving party. Cillo v. City of Greenwood Vill., 739 F.3d 451, 461 (10th Cir. 2013) (citations omitted).
If a movant properly supports a motion for summary judgment, the opposing party may not rest on the allegations contained in his complaint, but must respond with specific facts showing a genuine factual issue for trial. Fed.R.Civ.P. 56(e); Scott v. Harris, 550 U.S. 372, 380 (2007) (holding that “[t]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact”) (citation omitted).
The content of evidence must be admissible to be considered when ruling on a motion for summary judgment. Adams v. Am. Guarantee & Liability Ins. Co., 233 F.3d 1242, 1246 (10th Cir. 2000); Jaramillo v. Colo. Judicial Dep’t, 427 F.3d 1303, 1314 (10th Cir. 2005) (citation omitted) (holding that hearsay evidence is not acceptable in opposing a summary judgment motion); World of Sleep, Inc. v. La-Z-Boy Chair Co., 756 F.2d 1467, 1474 (10th Cir. 1985). Affidavits must be based on personal knowledge and must set forth facts that would be admissible evidence at trial. Murray v. City of Sapulpa, 45 F.3d 1417, 1422 (10th Cir. 1995) (quotations and citation omitted). “Conclusory and self-serving affidavits are not sufficient.” Id. The Court will not consider statements of fact, or rebuttals thereto, which are not material or are not supported by competent evidence. Fed.R.Civ.P. 56(c)(1)(A), 56(e)(2), 56(e)(3). “[O]n a motion for summary judgment, it is the responding party’s burden to ensure that the factual dispute is portrayed with particularity, without depending on the trial court to conduct its own search of the record.” Cross v. The Home Depot, 390 F.3d 1283, 1290 (10th Cir. 2004) (internal quotation and citation omitted). The Court is “not obligated to comb the record in order to make [Plaintiffs’] arguments for [them].” See Mitchell v. City of Moore, Okla., 218 F.3d 1190, 1199 (10th Cir. 2000). Further, Local Rule 7.1(e) provides that “[e]very citation in a motion, response or reply shall include the specific page or statutory subsection to which reference is made.” D.C. Colo. L. Civ. R. 7.1(e).
“In order to survive summary judgment, the content of the evidence that the nonmoving party points to must be admissible.” Adams, 233 F.3d at 1246 (alteration in original and citation omitted). “The nonmoving party does not have to produce evidence in a form that would be admissible at trial, but “‘the content or substance of the evidence must be admissible.’” Adams, 233 F.3d at 1246 (citation omitted). “Evidence presented must be based on more than ‘mere speculation, conjecture, or surmise’ to defeat a motion for summary judgment.” Southway v. Cent. Bank of Nigeria, 149 F.Supp.2d 1268, 1274 (D. Colo. 2001) (citations omitted). “Rule 56 expressly prescribes that a summary judgment affidavit must ‘be made on personal knowledge, set forth facts that would be admissible in evidence, and show that the affiant is competent to testify on the matters stated.’” Johnson v. Weld Cty., Colo., 594 F.3d 1202, 1210 (10th Cir. 2010) (citation omitted); accord Fed. R. Civ. P. 56(c)(4). “If a party fails to properly support an assertion of fact or fails to properly address another party’s assertion of fact . . ., the court may: (1) give an opportunity to properly support or address the fact; (2) consider the fact undisputed for purposes of the motion; (3) grant summary judgment if the motion and supporting materials-including the facts considered undisputed-show that the movant is entitled to it; or (4) issue any other appropriate order.” Fed.R.Civ.P. 56(e).
II. RELEVANT BACKGROUND
A. Procedural Background
On July 10, 2013, ZSI filed a petition to compel arbitration against Balanced Body, Inc. (ECF No. 1.) ZSI’s demand to arbitrate described the nature of the dispute as “[b]reach of contract; alternatively, trademark infringement; copyright infringement; unfair competition (multiple bases), misappropriation (multiple bases), deceptive trade practices, misrepresentation, each under various states’ laws as applicable; business liability and individual liability for infringement related activities.” (ECF No. 1-2 at 2.)
On August 5, 2013, Balanced Body, Inc. filed a motion to dismiss. (ECF No. 10.) On August 20, 2013, ZSI filed a Verified First Amended Petition to Compel Arbitration against BBU. (ECF No. 13.) ZSI’s demand to arbitrate described the nature of the dispute as “[b]reach of contract; alternatively, trademark infringement; copyright infringement; unfair competition (multiple bases), misappropriation (multiple bases), deceptive trade practices, misrepresentation, each under various states’ laws as applicable; business liability and individual liability for infringement related activities.” (ECF No. 13-15 at 2.) On August 26, 2013, BBU moved to dismiss the Verified First Amended Petition to Compel Arbitration. (ECF No. 18.) On July 2, 2014, Magistrate Judge Craig B. Shaffer ordered ZSI to file a complaint and move to withdraw with prejudice the petition for arbitration with all attendant agreements. (ECF No. 41.)
With an extension of time, on August 5, 2014, Plaintiffs filed the at-issue Complaint in this matter. (ECF Nos. 46; 49.) On August 26, 2014, Defendant filed its answer to the complaint and its Counterclaims. (ECF No. 50.)
On March 6, 2015, Defendant filed a motion for partial summary judgment as described previously. (ECF No. 81.) Defendant raises numerous legal and factual arguments with respect to Plaintiffs’ Complaint. (See ECF No. 81.) The parties briefed Defendant’s MSJ and set forth the purported undisputed material facts. (ECF Nos. 94; 117; 118.) Defendant also moved to strike Baca’s affidavit submitted by Plaintiffs in opposition to Defendant’s MSJ. (ECF No. 119.) The parties briefed Defendant’s Motion to Strike which includes Plaintiffs’ supplemental Baca affidavit. (ECF Nos. 123; 123-2; 129.)
The Court, in reviewing the material submitted in support of and in opposition to Defendant’s MSJ, determined that it lacked specificity as to how Defendant’s MSJ applied to certain of Plaintiffs’ claims (ECF No. 49) and its Counterclaims (ECF No. 50). Because Defendant’s MSJ was titled “Partial, ” the Court desired clarity as to how its ruling would apply to the parties’ claims and what, if any, would remain pending for trial. For this and other reasons, the Court ordered a hearing at which it discussed various aspects of Defendant’s MSJ and invited argument by the parties as to various matters which would impact the parties’ claims. (ECF Nos. 135; 136; 139; 141.) After receiving argument and taking the entire matter under advisement, the Court sets forth this Order.
B. Factual Background
The Court sets forth, generally, the undisputed material facts giving rise to the matter. The Court analyzes the potentially materially disputed facts in greater detail in the Analysis section, infra.
1. ZSI and Zahourek
This case relates to a technology and products developed by Plaintiffs. ZSI manufactures and sells models of the human skeleton which are used to teach anatomy. (See ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 44:3-9; ECF No. 84-15, BBU Ex. 115: BBU 4359.) ZSI refers to this model of the human skeleton as Maniken®. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 30:1-6; see ECF No. 83-46, BBU Ex. 96: ZSI 5791-6901.) Zahourek “created and developed an innovative system of anatomy study [and] ZSI is dedicated to sharing the power of the ideas that led [him] to build Anatomy in Clay™ and all elements of the system.” (ECF No. 83-10, BBU Ex. 60: BBU 3520.) At various times, Zahourek used the term “Anatomy in Clay Learning System” and he also used the term “Maniken Learning System.” (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 49:19-25, 50:1-3.)
a. The Maniken®
When Zahourek designed the first Maniken®, his intent was to make a three-dimensional model that would be usable to study on by using clay and strings or other representation of anatomy. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 31:6-13, 33:17-18, 40:2-16, 47:6-8, 47:24-25, 48:1-6.) Maniken® is an interactive learning tool which requires the user to shape muscles of clay and attach them to the model. (ECF No. 84-4, BBU Ex. 104: ZSI 0873.) The Maniken® is a useful model of skeletal ideas whose overriding intention was to provide a meaningful armature upon which one could explore muscular ideas. (ECF No. 84-7, BBU Ex. 107, ZSI 3194.) Zahourek obtained copyright registrations for the Maniken System® in 1977 and for a revision of the text in 1981. (ECF No. 83-49, BBU Ex. 99: ZSI 4561-62, 3075, 3088.) The first “manikin” was registered for copyright as a “statue” under the name “Maniken” on July 10, 1981, with a first publication date of June 23, 1981. (ECF No. 83-50, BBU Ex. 100: BBU 3753; ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 45:5-11.) The first Maniken® came in a kit that included clays and tools, wires for vascular and neural networks and reference tests. (ECF No. 84-4, BBU Ex. 104: ZSI 0873.) ZSI sells Manikens®, including the Student 1 Maniken® as part of a kit that includes hardware for assembly, a basic tool set, a package of reusable clay, and the Anatomy in Clay Learning Activities booklet. (ECF No. 84-10, BBU Ex. 110: ZSI 1668-1693; ECF No. 84-14, BBU Ex. 114: BBU 4357; ECF No. 84-17, BBU Ex. 117: ZSI 1642, 1658.) The Maniken® is 40% of life-size and stands in the standard anatomical pose. (ECF No. 84-1, BBU Ex. 101: ZSI 1629, 1639, 4357.) The Maniken® is small enough to be used by one person but large enough to accommodate tendons made of clay. (ECF No. 84-5, BBU Ex. 105: ZSI 0938.) Over the years, Zahourek made changes in the Mainkens® to make them more life-like and to produce more zoological ideas into them. (ECF No. 82-1, BBU Ex. 1, Zahourek Dep. 42:11-19, 42:20-24, 192:1-5.)
b. Certain of the Marks and Zahourek’s Copyright
On October 18, 2011, ZSI’s website did not list the Ai3D or Introduction Mark among the trademarks claimed by ZSI. (ECF No. 83-44, BBU Ex. 94: BBU 4025.)
Until it filed trademark applications on May 25, 2012, ZSI never claimed in writing to own the Ai3D or Introduction Mark. (See ECF No. 118 ¶ 59.) Zahourek never communicated to BBU that he believed that ZSI owned the Ai3D Mark. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 120:25-121:8.)
On May 25, 2012, ZSI filed for registration of the Introduction Mark. (ECF No. 83-32, BBU Ex. 82: BBU 3629-3636.) In its Introduction Mark application, ZSI declared that the mark was first used in commerce by “applicant or the applicant’s related company or licensee or predecessor in interest at least as early as 12/11/2004 . . . and is now in use in such commerce” for services in International Class 41. (ECF No. 83-32, BBU Ex. 82: BBU 3629.) ZSI further declared in the Introduction Mark application that the “[u]se of the mark is by a licensee, which use inures to the benefit of Applicant.” (ECF No. 83-32, BBU Ex. 82: BBU 3630.) When ZSI declared in the Introduction Mark application that the “use of the mark is by a licensee, ” ZSI was referring to BBU. (ECF No. 82-2, BBU Ex. 2: V. Zahourek Dep. 234:7-25, 235:1-25, 236:1-2.) Further, ZSI declared that the licensee might be adverse. (ECF No. 83-32, BBU Ex. 82: BBU 3630.) The USPTO registered the Introduction Mark on January 22, 2013. (ECF No. 83-32, BBU Ex. 82: BBU 3615.)
On May 25, 2012, ZSI filed for registration of the Ai3D Mark. (ECF No. 83-33, BBU Ex. 83: BBU 3694-3696.) The Ai3D Mark was filed on the basis of a bona fide intent to use the mark. (ECF No. 83-33, BBU Ex. 83: BBU 3694.) In its Ai3D Mark application, ZSI declared that the “[i]nitial use of the mark will be by a licensee, which inures to the benefit of Applicant.” (ECF No. 83-33, BBU Ex. 83: BBU 3694.) When ZSI declared in the Ai3D Mark application that the “[i]nitial use of the mark will be by a licensee, ” ZSI was referring to BBU. (See ECF No. 82-2, BBU Ex. 2: V. Zahourek Dep. 234:7-25, 235:1-25, 236:1-2.) Further, ZSI declared that the licensee might be adverse. (ECF No. 83-33, BBU Ex. 83: BBU 3694.) At the time ZSI filed its application for the Ai3D Mark, ZSI had no plans or intent to use the Ai3D Mark in any class of goods or services. (ECF No. 82-2, BBU Ex. 2: V. Zahourek Dep. pp. 244-249.) ZSI subsequently amended its Ai3D Mark application. (ECF No. 83-33, BBU Ex. 83: BBU 3667-3669.) On March 26, 2013, the USPTO registered the Ai3D Mark covering services in Class 41. (ECF No. 83-33, BBU Ex. 83: BBU 3642.) Zahourek knows of no license agreement between ZSI and BBU with respect to the Ai3D Mark. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 112:9-24, 116:18-22.)
Zahourek is the owner of the Clay Mark and Maniken® copyright. (ECF No. 118 ¶ 122.) The trademark license between Zahourek and ZSI does not grant ZSI the right to sue third parties for infringement of the Clay Mark. (ECF No. 84-22, BBU Ex. 122: ZSI 5997-5999.)
BBU provides educational services in the field of exercise and movement, including pilates. (See ECF No. 82-13, BBU Ex. 13: BBU 1869-1870.)
3. The Parties’ Relationship
In 2004, BBU decided to hold 2-day workshops using certain of Plaintiffs’ materials during BBU’s Pilates on Tour program. (ECF No. 82-13, BBU Ex. 13: BBU 1869-1870.) Thereafter, a BBU representative identified that during these 2-day workshops, BBU would use ZSI Manikens® and call the workshops “Anatomy in Three Dimensions-An Introduction to Anatomy with Anatomy in Clay.” (See ECF No. 82-13, BBU Ex. 13: BBU 1869-1870.) In late 2004, after seeking ZSI’s review and approval, BBU began using ZSI’s Clay Mark, Maniken™, and Introduction Mark. (ECF No. 82-12, BBU Ex. 12: ZSI 0461-0462; ECF No. 82-15, BBU Ex. 15: ZSI 0089; ECF No. 82-16, BBU Ex. 16: ZSI 0451; ECF No. 82-17, BBU Ex. 17: ZSI 0436-0437; ECF No. 82-18, BBU Ex. 18: ZSI 0063-0064; ECF No. 82-19, BBU Ex. 19: ZSI 0452-0456.) BBU proposed that Zahourek teach a 5-day course for BBU. (ECF No. 82-22, BBU Ex. 22: ZSI 0439.) When a representative from BBU and Zahourek “first agreed to work together . . . [they] created a secondary trademark called Anatomy in Three Dimensions [(“Ai3D”)] and a subtitle of that trademark was An Introduction to Anatomy in Clay.” (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 106:8-20.) Zahourek and a representative from BBU team-taught a workshop for a number of years called Anatomy in Three Dimensions: An Introduction Anatomy in Clay with Zahourek’s permission. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep.106:8-20.)
On April 15, 2005, ZSI and BBU entered into an agreement (“AiC Web Store Agreement”) whereby BBU would establish an internet store that would sell select ZSI products. (ECF No. 112, Pls.’ Ex. C.) ZSI and BBU did not enter into the AiC Web Store Agreement until ZSI’s trademarks were correctly identified on BBU’s website and after ZSI requested that BBU correct its website to show ZSI’s Clay Mark. (ECF No. 82-25, BBU Ex. 25, ZSI 0043-0044.) In 2005, BBU used various unregistered ZSI “design logos” with ZSI’s approval. (ECF No. 118 ¶ 23; ECF No. 82-29, BBU Ex. 29: BBU 3406; ECF No. 82-31, BBU Ex. 31: BBU 3395, 3397, 3398, 3399, 3404.)
In 2007, Zahourek handed a BBU representative a proposed licensing agreement (“2007 Proposal”) for the Clay Mark, Maniken™, and Mylogik™ together with trademark and copyright usage instructions. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 131:11-25, 132:1-24; ECF No. 83-10, BBU Ex. 60: BBU 3509-3537.) The 2007 Proposal included a letter from Zahourek in which he provided a list of the “Current trademarks, ” both registered and unregistered, that ZSI protects which does not list the Ai3D Mark. (ECF No. 83-10, BBU Ex. 60: BBU 3520.) BBU did not accept the 2007 Proposal. (ECF No. 82-1, BBU Ex. 1: Zahourek Dep. 155:1-4.)
In 2009, ZSI contacted BBU to request that certain changes be made to BBU’s use of ZSI’s Clay Mark and Maniken™ on BBU’s website. (ECF No. 83-11, BBU Ex. 61: ZSI 0768-0774; ECF No. 83-13, BBU Ex. 63: ZSI 0746.)
After April 2009, ZSI quotes and invoices included notice of a PLA. (ECF No. 99-2, Pls. Ex. Q: BBU 274, 278, 1182, 3158, 3166.)
Until 2012, BBU publicized the Clay Mark and the Anatomy in Clay Learning System on its website. (ECF No. 82-40, BBU Ex. 40: BBU 4349; ECF No. 82-4, BBU Ex. 4: St. John Dep. 63:5-25, 66:1-7, 66:20-23, 67:5-23, 68:7-21; ECF No. 105, Pls.’ Ex. G: ZSI 0007-0010.) From October 2004 until September 2011, BBU used the Ai3D Mark as the designation for its courses using Maniken®. (ECF No. 118 ¶ 28.)
ZSI does not currently offer in-depth anatomy classes using the Anatomy in Clay™ system. (ECF No. 82-3, BBU Ex. 3: Baca Dep: 74:12-25, 75:1-14, 76:16-25, 77:1-25, 78:1-9.) In the workshop market, ZSI and BBU are not competitors. (ECF No. 82-3, BBU Ex. 3: Baca Dep. 88:1-25, 89:1-19, 91:20-25, 92:1-25, 93:1-3.)
a. The PLAs
BBU purchased and paid for products from ZSI over the phone or by e-mail. (ECF No. 83-35, BBU Ex. 85: ZSI 1388, 1390, 1391; ECF No. 82-5, BBU Ex. 5: Saenz Dep. 18:14-25, 19:1-22.) Between January 1, 2005 and October 9, 2008, ZSI issued 39 invoices to BBU. (ECF No. 83-36, BBU Ex. 86: ZSI 1434-1436.) ZSI issued zero invoices to BBU in 2009, 6 invoices in 2010, 3 in 2011, and 3 in 2012. (ECF No. 83-36, BBU Ex. 86: ZSI 1434-1436.) From 2010 through 2013, ZSI’s invoices contained print at the bottom stating that “Zahourek Systems, Inc. sells products and services only with associated Product License rights. Before you can purchase the item(s), you must read and accept the terms for the associated Product License found at www.anatomyinclay.com/licenserights.html. Payment for the item(s) represents that you have read, understood, and accept the Product License [(“PLA”)] terms.” (ECF No. 118 ¶ 112; ECF No. 83-38, BBU Ex. 88: ZSI 1376, 1483.)
ZSI implemented the first PLA in April 2009. (ECF No. 82-2, BBU Ex. 2: V. Zahourek Dep. 59:24-25; ECF No. 83-39, BBU Ex. 89: 4081-4083, 4084-4086, 4087-4089, 4090-4092.) In September 2011, ZSI posted on its website a revised version of the PLA dated June 1, 2011 (“First Revised PLA”). (ECF No. 118 ¶ 115; ECF No. 83-40, BBU Ex. 90: BBU 4023-4024, 4164-4165.) On or about July 23, 2013, ZSI posted another revised version of the PLA (“Second Revised PLA”). (ECF No. 118 ¶ 116; ECF No. 83-41, BBU Ex. 91: BBU 4176-4177.)
On certain dates from April 2009 until October 18, 2011, the web page referred to in ZSI’s invoices, licenserights.html, did not show the PLA and did not contain any visible hyperlink to the PLA. (ECF No. 83-42, BBU Ex. 92: BBU 4093-4096, 4069-4070, 4178; ECF No. 82-2, BBU Ex. 2: V. Zahourek Dep. 111:21-25, 112:1-8, 112:22-25, 113:1-18, 114:24-25, 115:1-12; ECF No. 102, Pls.’ Ex. AA: Baca Aff. ¶ 2.) On certain dates from April 2009 until June 2011, the web page referred to in ZSI’s invoices, licenserights.html, displayed a table headed “List of Associated Intellectual Property Under the Produce License Agreement” which showed the Maniken™ and Clay Mark as “Corollary Trademarks” for “Maniken Models” and “Maniken Replacement Parts.” (ECF No. 83-42, BBU Ex. 92: BBU 4093-4096, 4069-4070, 4178; ECF No. 82-2, BBU Ex. 2: V. Zahourek Dep. 111:21-15, 112:1-8, 112:22-25, 113:1-18, 114:24-25, 115:1-12; ECF No. 102, Pls.’ Ex. AA: Baca Aff. ¶ 2.) From approximately June 1, 2011 until September 2011, ZSI’s website was offline with a placeholder stating “Check back soon as the site is being redesigned.” (ECF No. 118 ¶ 119; ECF No. 83-43, BBU Ex. 93: 4068-4070.) On certain dates from when ZSI’s website came back online in September 2011 until October 18, 2011, the web page referred to in ZSI’s ...