Friday, February 10, 2023

SDCCU v. CEFCU (9th Cir. - Feb. 10, 2023)

It's been a slow week. One case today from the Court of Appeal, two opinions yesterday, and none the day before. The Ninth Circuit has been similarly slow; two opinions on Monday and two today, but nothing at all on Tuesday, Wednesday and Thursday.

Unless you're a trademark scholar with a keen Article III focus, I doubt that today's opinion will especially wet your whistle. Nonetheless, to be honest, it's one of the most well-written of the opinions I've read from Judge Bea in quite a while. Definitely worthy of a read-- if only from the limited perspective of how to craft things in a readable and coherent manner -- even if you're not especially fascinated by the subject matter.

As a bonus, it comes to what I think is the correct result. The trial court granted a motion for summary judgment holding that one side didn't infringe the trademark of the other side. Given that fact, there was no reason for a subsequent trial as to whether that trademark was valid. Seems right to me.

Or, as Judge Bea puts it: "After a party obtains declaratory relief which decrees that it is not infringing a trademark, does it retain Article III standing to invalidate that mark? That is the central question presented in these appeals, and we answer it: No."

There are lots of other subsidiary holdings in the opinion as well -- e.g., with respect to whether there was personal jurisdiction -- and all those seem right to me as well. On the whole, 42 single-spaced pages of pretty darn good stuff.

I must admit that the whole underlying enterprise seemed fairly silly to me, however. (Though that's not Judge Bea's fault.) A bank in Illinois (that has some branches of a related bank in the San Francisco area) has a particular trademark -- “CEFCU. NOT A BANK. BETTER." -- and feels like a bank in San Diego had a related trademark ("“IT’S NOT BIG BANK BANKING. IT’S BETTER.”) that's a little to close to theirs. So the Illinois bank tries to cancel the trademark of the San Diego bank, and the San Diego bank sues in federal court in California to declare that it's not infringing the other bank's trademark and that the Illinois' bank's trademark is invalid in any event. [Note: An informed reader points out to me that the parties are both credit unions, which are technically not "banks". True enough. I'll keep the term bank, which I used initially, as (admittedly technically inaccurate) shorthand.]

Mind you: These banks do no compete with each other. But they nonetheless decide to spend a ton -- and I mean, a ton -- of money on federal litigation about this whole thing.

That would most definitely not be my call were I running either bank. Honestly. Such a waste.

There are probably also some questionable strategic choices made in the midst of the litigation as well. For example, the Illinois bank elected not to context the MSJ filed by the San Diego bank that contended that there was no infringement of the other's trademark. Probably the wrong call, or at least a call that one might have wanted to make way earlier in the litigation. Similarly, even after winning its MSJ, at which point it doesn't really have to be worried about being sued at all, the San Diego bank elected to waste tons of money to go to trial to try to establish that the trademark that it didn't infringe was invalid anyway. Again, not a great use of resources. And one that, in any event, gets reversed on appeal anyway, for lack of Article III standing.

Plus there are the various contentions on appeal, including one that Judge Bea describes -- entirely accurately -- as "near-frivolous." Not a good look.

Anyway, there you have it. Money that's largely flushed down the toilet.

Bad for the banks (and their customers). Particularly bad since they're both credit unions, which are (at least in theory) owned by the depositors.

Good for lawyers, though. We're happy to take your money pretty much whenever you'd like.