FILED
NOT FOR PUBLICATION
OCT 28 2021
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
NICHOLAS D. SCOYNI, Nos. 20-35123
20-35564
Plaintiff-Appellant,
D.C. No. 1:18-cv-00506-BLW
v.
DANIEL R. SALVADOR; et al., MEMORANDUM*
Defendants-Appellees.
Appeal from the United States District Court
for the District of Idaho
B. Lynn Winmill, Chief District Judge, Presiding
Submitted October 26, 2021 **
Before: FERNANDEZ, SILVERMAN, and NGUYEN, Circuit Judges
Nicholas Scoyni appeals pro se the district court’s grant of summary
judgment in favor of Defendants (No. 20-35123) and the district court’s grant of
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
costs and attorney’s fees to Defendants (No. 20-35564). We have jurisdiction
pursuant to 28 U.S.C. § 1291, and we affirm.
1. The district court did not err in granting summary judgment to Defendants
for (A) breach of contract, (B) defamation, and (C) trademark infringement.
A. Scoyni failed to establish that an oral contract was created between
Scoyni and Defendants for use of the Off-Spec Solutions mark. See Hoffman v. S
V Co., 628 P.2d 218, 220 (Idaho 1981) (“A distinct understanding common to both
parties is necessary in order for a contract to exist.”). Although there may have
been an offer to contract, no contract was created because there was no “meeting of
the minds.”1 See Barry v. Pac. W. Const., Inc., 103 P.3d 440, 444-45 (Idaho 2004).
B. Scoyni failed to demonstrate that (1) Defendants “communicated
information concerning [him] to others; (2) the information was defamatory; and
(3) [Scoyni] was damaged because of the communication.” See Verity v. USA
Today, 436 P.3d 653, 662 (Idaho 2019). To the extent that Defendants made any
defamatory communications related to the Off-Spec Solutions business or mark in
a cease and desist letter or to the United States Trademark Trial and Appeal Board,
1
Scoyni argues that an implied contract existed. However, he did not allege
an implied contract in his complaint or before the district court. Thus, it is waived.
See Mabe v. San Bernardino Cnty., Dep’t of Pub. Soc. Servs., 237 F.3d 1101, 1112
(9th Cir. 2001).
2
those communications were protected by the litigation privilege. See Dickinson
Frozen Foods, Inc. v. J.R. Simplot Co., 434 P.3d 1275, 1284 (Idaho 2019), as
amended (Apr. 22, 2019).
C. Scoyni’s presumption of a valid mark based on his registration was
rebutted by Defendants’ evidence that Scoyni failed to “use [his service mark] in
commerce.” See Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156-57 (9th
Cir. 2001); see also Gem State Roofing, Inc. v. United Components, Inc., No.
47484, 2021 WL 2303190, at *16 (Idaho June 7, 2021). “Use in commerce”
means the “bona fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark.” 15 U.S.C. § 1127. Here, Scoyni failed to
provide evidence that he used the mark “in the sale or advertising of services and
the services are rendered in commerce.” See id.§ 1127(2). Scoyni only presented
evidence of a magnetic sign placed on a vehicle and an office door and two
affidavits of persons for whom he claimed he performed service. However, in the
deposition of the two affiants, neither could provide evidence that they were aware
of Scoyni’s “offspec solutions” name.
Conversely, Defendants registered the Off-Spec Solutions assumed business
name in August 2012, and, thereafter, the LLC with the State of Idaho. Defendants
also began providing goods and transportation services under that name. Unlike
3
Scoyni, Defendants provided receipts and copies of its Facebook advertisements to
establish use of the mark. Thus, based on a totality of the circumstances, the
district court properly concluded that Defendants established their use of
“Off-Spec Solutions” in commerce prior to 2016 and was entitled to use the mark.2
2. The district court properly concluded that Scoyni’s registration of the mark
was void ab initio based on his failure to use his mark “in commerce” as required
under the Lanham Act and Idaho Code § 48-512, See 15 U.S.C. §§ 1051
(trademark), 1053 (service mark), 1127 (defining “use in commerce”); see also 6
McCarthy on Trademarks and Unfair Competition § 31:72 (5th ed.).
3. The district court properly denied Scoyni’s motion for default judgment.
Scoyni failed to comply with Federal Rule of Civil Procedure 55. Rule 55 is a
“two-step process” consisting of: (1) seeking a clerk’s entry of default under Rule
55(a), and (2) filing a motion for the entry of default judgment under Rule 55(b).
See Eitel v. McCool, 782 F.2d 1470, 1471 (9th Cir. 1986). Scoyni failed to comply
with this two-step process. Furthermore, Defendants timely filed an answer after
the temporary stay was lifted as directed by the court.
2
Because Scoyni did not have a valid trademark, we need not address
whether Defendants’ use of the mark caused confusion.
4
4. The district court did not err in granting attorney fees and costs under Idaho
Code section 12-120(3) and Idaho Rule of Civil Procedure 54(d). Scoyni
challenges the district court’s decision arguing that (1) Defendants’ request was
untimely, (2) the district court lacked of jurisdiction because Scoyni had filed a
notice to appeal, and (3) the primary cause of action was trademark infringement
not a breach of contract. All of these arguments fail.
First, Defendants timely filed their motion within fourteen days of the date
of judgment. See Fed. R. Civ. P. 54(d)(2)(B)(i). Second, the district court did not
lose jurisdiction to rule on attorney’s fees despite the notice of appeal. See
Masalosalo v. Stonewall Ins. Co., 718 F.2d 955, 957 (9th Cir. 1983). Finally,
Scoyni alleged breach of contract in his complaint, thus Idaho Code
section 12-120(3) applies to Scoyni’s breach of contract allegation.
Here, Scoyni alleged oral breach of contract based a commercial transaction
—use of the service mark Off-Spec Solutions. See Idaho Code § 12-120(3)
(defining “commercial transaction” as “all transactions except transactions for
personal or household purposes”). Further, “the commercial transaction [was]
integral to the claim and constitute[d] a basis on which [Scoyni was] attempting to
recover.” See Clayson v. Zebe, 280 P.3d 731, 739 (Idaho 2012) (quoting Great
Plains Equip., Inc. v. Nw. Pipeline Corp., 36 P.3d 218, 223 (Idaho 2001)).
5
Accordingly, Defendants were entitled to an award of attorney fees pursuant to
Idaho Code section 12-120(3) and Idaho Rule of Civil Procedure 54(d).
The district court also properly granted costs pursuant to Federal Rule of
Civil Procedure 54(d)(1). See Fed. R. Civ. P. 54(d)(1) (“Costs other than
attorneys’ fees shall be allowed as of course to the prevailing party unless the court
otherwise directs.”).
AFFIRMED.
6