Filed: May 07, 2012
Latest Update: Feb. 12, 2020
Summary: FILED United States Court of Appeals Tenth Circuit May 7, 2012 UNITED STATES COURT OF APPEALS Elisabeth A. Shumaker FOR THE TENTH CIRCUIT Clerk of Court CARTER HARGRAVE, Plaintiff–Appellant, v. No. 11-5112 (D.C. No. 4:10-CV-00006-JHP-TLW) CHIEF ASIAN, LLC; MARTIN ENG, (N.D. Okla.) Defendants–Appellees. ORDER AND JUDGMENT * Before LUCERO, McKAY, and GORSUCH, Circuit Judges. Plaintiff Carter Hargrave, proceeding pro se, appeals from the district court’s denial of his motion for default judgment an
Summary: FILED United States Court of Appeals Tenth Circuit May 7, 2012 UNITED STATES COURT OF APPEALS Elisabeth A. Shumaker FOR THE TENTH CIRCUIT Clerk of Court CARTER HARGRAVE, Plaintiff–Appellant, v. No. 11-5112 (D.C. No. 4:10-CV-00006-JHP-TLW) CHIEF ASIAN, LLC; MARTIN ENG, (N.D. Okla.) Defendants–Appellees. ORDER AND JUDGMENT * Before LUCERO, McKAY, and GORSUCH, Circuit Judges. Plaintiff Carter Hargrave, proceeding pro se, appeals from the district court’s denial of his motion for default judgment and..
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FILED
United States Court of Appeals
Tenth Circuit
May 7, 2012
UNITED STATES COURT OF APPEALS
Elisabeth A. Shumaker
FOR THE TENTH CIRCUIT Clerk of Court
CARTER HARGRAVE,
Plaintiff–Appellant,
v. No. 11-5112
(D.C. No. 4:10-CV-00006-JHP-TLW)
CHIEF ASIAN, LLC; MARTIN ENG, (N.D. Okla.)
Defendants–Appellees.
ORDER AND JUDGMENT *
Before LUCERO, McKAY, and GORSUCH, Circuit Judges.
Plaintiff Carter Hargrave, proceeding pro se, appeals from the district
court’s denial of his motion for default judgment and the dismissal of his
complaint with prejudice. Exercising jurisdiction under 28 U.S.C. § 1291,
we affirm.
*
After examining the briefs and appellate record, this panel has determined
unanimously that oral argument would not materially assist the determination of
this appeal. See Fed. R. App. P. 34(a)(2); 10th Cir. R. 34.1(G). The case is
therefore ordered submitted without oral argument. This order and judgment is
not binding precedent, except under the doctrines of law of the case, res judicata,
and collateral estoppel. It may be cited, however, for its persuasive value
consistent with Fed. R. App. P. 32.1 and 10th Cir. R. 32.1.
I
Hargrave is a martial arts instructor who specializes in teaching “Jeet Kune
Do,” which is a style of martial arts that Bruce Lee created in the 1960s. He was
a student of the Bruce Lee Jeet Kune Do School in California, founded the World
Jeet Kune Do Federation, and has published “The Original Jeet Kune Do Training
Manual” and the “World Jeet Kune Do Federation DVD series.” Additionally, he
has registered a number of domain names that use “Jeet Kune Do” in the title.
Defendants Chief Asian, LLC and Martin Eng have registered the domain
name “www.jeetkunedo.com.” In an effort to obtain this domain, Hargrave filed
a complaint claiming that defendants were cybersquatting and infringing on his
interests in the mark “Jeet Kune Do.” Hargrave subsequently filed a motion for
default judgment, asserting that Chief Asian did not enter an appearance in the
case and that Eng submitted an untimely answer to the complaint. 1
The district court held a hearing on the default judgment motion. After
allowing Hargrave to submit evidence, the court denied the motion and dismissed
Hargrave’s claim with prejudice. As the court explained, Hargrave submitted
evidence that established that he was not the owner of the contested mark. This
evidence established that there was no legal basis for the claim, and warranted
dismissal of the complaint.
1
Chief Asian and Eng were not represented by an attorney in the
proceedings before the district court.
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Hargrave filed a motion asking the court to reconsider the default judgment
ruling, or alternatively, to vacate the dismissal with prejudice. The court
reconsidered its initial order, but ultimately concluded that it had properly
dismissed the case for failure to state a claim under Fed. R. Civ. P. 12(b)(6). The
court thus denied the motion to vacate and stated that the initial order dismissing
the case with prejudice remained in effect.
II
On appeal, Hargrave challenges the district court’s dismissal of his
complaint on the merits and its denial of his motion for default judgment.
Hargrave also contends that the district court was biased against him as a pro se
litigant.
A
“We review de novo the district court’s Rule 12(b)(6) dismissal . . . . To
survive a motion to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to state a claim for relief that is plausible on its face.” Bixler v.
Foster,
596 F.3d 751, 756 (10th Cir. 2010) (quotation omitted). To state a claim
for trademark infringement under 15 U.S.C. § 1114(1) or cyberpiracy under
15 U.S.C. § 1125(d), the party bringing the action must be the registered owner
(or assignee) of the mark. See 15 U.S.C. §§ 1114(1), 1125(d)(1)(A), 1127.
However, a party who is not the registered owner of a trademark may state a
claim for trademark infringement under 15 U.S.C. § 1125(a)(1). See Two Pesos,
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Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 767-68 (1992) (noting that § 1114(1)
applies to registered marks and § 1125(a)(1) “protects qualifying unregistered
trademarks”).
The district court determined that Hargrave could not establish that he had
a legally enforceable interest in the mark “Jeet Kune Do.” In reaching this
determination, the district court considered the allegations in the complaint as
well as additional documents that Hargrave subsequently filed under seal. 2 The
additional documents include a copy of a settlement agreement between Hargrave
and Concord Moon, LP, outlining Hargrave’s ability to use the mark “Jeet Kune
Do” and a copy of a “Trademark Assignment Abstract of Title” delineating the
succession of owners of the registered mark “Jeet Kune Do.”
The district court explained that the “Trademark Assignment Abstract of
Title” shows that Hargrave “is not now, and never has been, an owner of the
registered mark ‘Jeet Kune Do.’” Hargrave does not dispute this finding; he
alleged in his complaint, however, that the settlement agreement gave him
exclusive rights to the “Jeet Kune Do” mark. He therefore contends that the
2
The district court concluded that it would be appropriate to construe the
additional documents as an addendum to the complaint. We note that “in
deciding a motion to dismiss pursuant to Rule 12(b)(6), a court may look both to
the complaint itself and to any documents attached as exhibits to the complaint.”
Oxendine v. Kaplan,
241 F.3d 1272, 1275 (10th Cir. 2001). Hargrave does not
challenge the district court’s decision to treat the documents as part of his
complaint.
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district court erred by failing to accept as true the allegations in his complaint.
We disagree.
Hargrave’s allegation is contradicted by the plain language of the
settlement agreement, and “we need not accept as true . . . allegations of fact that
are at variance with the express terms of an instrument attached to the complaint
as an exhibit and made a part thereof.” Jackson v. Alexander,
465 F.2d 1389,
1390 (10th Cir. 1972). The settlement agreement states, “[Concord Moon, LP]
and its successors agree that [Hargrave] is free to use the terms ‘Jeet Kune Do,’
‘Official Website of Jeet Kune Do,’ and ‘World Jeet Kune Do Federation.’”
(emphasis added.) The agreement does not, however, grant Hargrave exclusive
rights to the terms.
As the district court explained, “[t]he ‘free to use’ language of the
Agreement cannot establish more than a basic license to use the contested mark,
therefore § 1114(1) cannot provide a basis for [Hargrave] to pursue a trademark
infringement claim.” This was a correct statement of the law; a party bringing an
infringement claim under § 1141(1) or a cyberpiracy claim under § 1125(d) must
be the registered owner (or assignee) of the mark. Accordingly, the district court
properly concluded that Hargrave’s complaint failed to state a claim under those
sections.
Hargrave also asserts that he had common law rights to the mark “Jeet
Kune Do,” which could give rise to a claim under § 1125(a)(1). See, e.g., Tana v.
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Dantanna’s,
611 F.3d 767, 773 (11th Cir. 2010) (“[T]he use of another’s
unregistered, i.e., common law, trademark can constitute a violation of
[§ 1125(a)(1)].” (quotation omitted)). We have explained the circumstances
under which a trademark may be entitled to common law rights as follows:
Even though a trademark may not be validly registered . . . because it
is merely descriptive, common law will afford protection similar to
that under the Act if the mark through usage has become, to the
purchasing public, associated with a particular manufacturer or
producer. To acquire this secondary meaning, the descriptive words
must have been used so long and so exclusively by one producer with
reference to his goods or articles that, in that trade and to that branch
of the purchasing public, the word or phrase (has) come to mean that
the article is his product.
Educ. Dev. Corp. v. Econ. Co.,
562 F.2d 26, 29-30 (10th Cir. 1977) (quotations
omitted).
Hargrave cannot claim common law rights in the mark “Jeet Kune Do” as
the mark is not “merely descriptive.” Moreover, it has already been registered to
another owner who has not relinquished its rights to use the mark. Rather, the
owner has simply granted Hargrave a non-exclusive right or license to use the
mark. We thus agree with the district court that Hargrave’s complaint failed to
establish common law rights to the mark “Jeet Kune Do” and that Hargrave’s
complaint failed to state a claim under § 1125(a)(1).
B
Hargrave argues that the district court violated his right to due process
when it changed the purpose of the hearing on his motion for default judgment
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into a “Trial by Ambush” without giving him any notice. Hargrave further
contends that the district court’s sua sponte ruling was in error and that default
judgment should have been entered in his favor. We review the constitutional
question de novo, Curley v. Perry,
246 F.3d 1278, 1283 (10th Cir. 2001), and the
district court’s denial of a motion for default judgment for an abuse of discretion,
Bixler, 596 F.3d at 761.
The district court addressed the notice issue in its decision on Hargrave’s
motion to reconsider. Specifically, the court indicated that it provided Hargrave
with proper notice by scheduling a hearing to consider the default judgment issue.
Under the Federal Rules, such a hearing can be for the purpose of establishing
whether sufficient evidence exists to support the requested judgment. See
Fed. R. Civ. P. 55(b)(2)(C).
In addition, we have upheld the constitutionality of a sua sponte dismissal
of a meritless complaint that could not be salvaged by amendment. See
Curley,
246 F.3d at 1284. In Curley, we noted that the lack of prior notice is harmless
when “the plaintiff has a reasonable post-judgment opportunity to present his
arguments to the district court and the appellate court, including the opportunity
to suggest amendments that would cure the complaint’s deficiencies.”
Id.
Hargrave took advantage of this opportunity by filing a motion to reconsider, but
again relied on the settlement agreement to support his allegation that he had an
“unlimited Trademark license.” Although he asserted that he “would have
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supplied additional evidence if [he] had been allowed to [do] so,” he did not
specify what that evidence might be.
Because Hargrave’s complaint is based on claims of infringement of a legal
interest which clearly does not exist, the district court properly concluded that it
would be futile to allow Hargrave to amend his complaint. No amendment could
change the fact that Hargrave did not own the contested trademark. As such,
dismissal with prejudice was proper. Brereton v. Bountiful City Corp.,
434 F.3d
1213, 1219 (10th Cir. 2006) (“[A] dismissal with prejudice is appropriate where a
complaint fails to state a claim under Rule 12(b)(6) and granting leave to amend
would be futile.”).
We find no constitutional violation in the way the district court conducted
the default judgment hearing or in its sua sponte dismissal of the complaint with
prejudice. Likewise, we conclude that the district court did not abuse its
discretion in refusing to enter judgment in favor of Hargrave when his claims
were subject to dismissal under Rule 12(b)(6). See
Bixler, 596 F.3d at 761-62.
C
Finally, Hargrave contends that the district court judge harbors a bias
against pro se litigants that was evidenced by the judge’s repeated disrespectful
comments during the proceeding. He claims that this bias violated his right to
due process. However, to “demonstrate a violation of due process because of
judicial bias, a claimant must show actual bias or an appearance of bias.” United
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States v. Nickl,
427 F.3d 1286, 1298 (10th Cir. 2005) (quotation omitted). Under
this standard, Hargrave was required to show that a “reasonable, objective person,
knowing all the relevant facts, [would] question the judge’s impartiality.”
Id.
Hargrave has failed to demonstrate that the district court judge was biased
against him. “[A] judge’s ordinary efforts at courtroom administration, even if
stern and short-tempered, are immune from charges of bias and partiality.”
Id.
“[C]ritical,” “disapproving,” or “hostile,” remarks usually will not support a bias
charge.
Id. Although Hargrave claims that the district court judge made
“disrespectful comments,” it appears the judge was simply expressing frustration
at the case management obstacles he encountered in a case involving two pro se
parties.
As for Hargrave’s claim that the judge held him, as a pro se litigant, to a
higher burden of proof, we have reviewed the district court’s consideration of
Hargrave’s complaint and found no reversible error. The fact that the district
court ruled against Hargrave may not form the basis for a finding of bias.
Nickl,
427 F.3d at 1298 (“[A]dverse rulings cannot in themselves form the appropriate
grounds for disqualification.” (quotation omitted)). Because Hargrave has failed
to demonstrate any bias on the part of the district court judge, he has not shown
that his due process rights were violated.
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III
To summarize, Hargrave neither owns the registered “Jeet Kune Do”
trademark nor the common law rights to that mark. Evidence presented by
Hargrave establishes these facts, and forecloses him from bringing claims under
§§ 1141(1), 1125(a)(1) or 1125(d). Recognizing that there was no scenario in
which Hargrave could succeed in his claim, the district court properly invoked its
discretion to dismiss under Fed. R. Civ. P. 55(b)(2)(C). It may have been
preferable for the district court to alert Hargrave prior to the default judgment
hearing that dismissal was a possibility. But in light of our precedent and
Hargrave’s motion to reconsider, such notice was not necessary.
We AFFIRM the judgment of the district court.
Entered for the Court
Carlos F. Lucero
Circuit Judge
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