Sierra On-Line, Inc. v. Phoenix Software, Inc.

• Decision Date: 07 August 1984
• Docket Number: ON-LIN,INC,No. 83-2150,83-2150
• Citation: 739 F.2d 1415,223 USPQ 227
• Parties: , 223 U.S.P.Q. 227 SIERRA, Plaintiff-Appellee, v. PHOENIX SOFTWARE, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1415

739 F.2d 1415

39 Fed.R.Serv.2d 1067, 223 U.S.P.Q. 227

SIERRA ON-LINE, INC., Plaintiff-Appellee, v. PHOENIX SOFTWARE, INC., Defendant-Appellant.

No. 83-2150.

United States Court of Appeals Ninth Circuit.

Argued and Submitted April 11, 1984.

Aug. 7, 1984.

Joseph A. Greco, Patricia Nicely Kopf, Fenwick, Stone, Davis & West, Palo Alto, Cal., for plaintiff-appellee.

Thomas R. Vigil, Barrington, Ill., for defendant-appellant.

Appeal from the United States District Court for the Eastern District of California.

Before WISDOM, ^* SKOPIL, and NORRIS, Circuit Judges.

WISDOM, Senior Circuit Judge:

This appeal arises out of a dispute over the right to use the term "Hi-Res Adventure" to identify home computer strategy games with high-resolution (hi-res) graphic displays. ¹ The defendant, Phoenix Software, Inc. (Phoenix), appeals from an order denying reconsideration of a preliminary injunction, and also denying its motion for summary judgment. We affirm the preliminary injunction in favor of the plaintiff, Sierra On-Line, Inc. (Sierra), and dismiss the remainder of the appeal for lack of jurisdiction.

I.

Sierra is a manufacturer of computer software. Since 1980 it has used "Hi-Res Adventure" (for which federal registration is pending) in connection with a number of computer games. In October 1982 Sierra sued to stop Phoenix from using the term in connection with Phoenix games. The district court issued a temporary restraining order on October 28, 1982, and a preliminary injunction on February 3, 1983. ² In granting the injunction, the court held that "Hi-Res Adventure" is a "descriptive" term, that such a term can be a protected trademark only if it has acquired secondary meaning, and that Sierra had shown "a fair chance of success on the merits". Although the court found that Sierra had not yet produced sufficient evidence to support an ultimate finding of secondary meaning, the court granted the injunction because the balance of hardships strongly favored Sierra. Phoenix had voluntarily stopped using the term and would therefore not be injured by the injunction. The court did not explicitly discuss Phoenix's principal contentions: that "Hi-Res Adventure" was a generic term incapable of trademark protection, and that Phoenix was protected by a "fair use" defense.

On February 14 Phoenix filed a motion for reconsideration and a memorandum of points and authorities in support of this motion, but did not file a formal "Notice of Motion", setting a date for hearing, until February 23. The motion for reconsideration did not assert any new grounds, but rather reasserted the "generic" and "fair use" defenses. The district court denied the motion for reconsideration on May 31. At that time the court also denied Phoenix's motion for summary judgment. On June 30 Phoenix filed its notice of appeal "from the Order denying the Motion for Reconsideration of Preliminary Injunction and the Motion for Summary Judgment entered in this action on the 31st day of May, 1983". ³

II.

Sierra attacks our jurisdiction to hear this appeal, on the ground that Phoenix did not file its appeal within 30 days of the February 3 order granting the preliminary injunction, as required by Fed.R.App.P. 4(a)(1). ⁴ This time limit is jurisdictional. Browder v. Director, Department of Corrections, 434 U.S. 257, 264, 98 S.Ct. 556, 561, 54 L.Ed.2d 521 (1978). Sierra acknowledges that a valid and timely motion to alter or amend the judgment, ⁵ made under Fed.R.Civ.P. 59(e), will toll the time for appeal. Clipper Exxpress v. Rocky Mountain Motor Tariff Bureau, Inc., 690 F.2d 1240, 1247 (9th Cir.1982), cert. denied, 459 U.S. 1227, 103 S.Ct. 1234, 75 L.Ed.2d 468 (1983); Fed.R.App.P. 4(a)(4)(iii). A Rule 59(e) motion must be served within ten days of the entry of judgment; if it is not timely served, it will not toll the time for appealing the judgment. Cel-a-Pak v. California Agricultural Relations Board, 680 F.2d 664, 666 (9th Cir.), cert. denied, 459 U.S. 1071, 103 S.Ct. 491, 74 L.Ed.2d 633 (1982); Hayward v. Britt, 572 F.2d 1324, 1325 (9th Cir.1978).

Phoenix's motion for reconsideration did not state the particular rule under which it was filed. A motion for reconsideration, even if it raises no new grounds but "simply rehashes arguments heard at trial", may be made under Rule 59(e). Clipper Exxpress, 690 F.2d at 1249-50. We have consistently held that if a motion is served within ten days of judgment and it could have been brought under Rule 59(e), it tolls the time for appeal although it does not expressly invoke Rule 59. Stephenson v. Calpine Conifers II, Ltd., 652 F.2d 808, 811 (9th Cir.1981); Mir v. Fosburg, 646 F.2d 342, 344 (9th Cir.1980); Whittaker v. Whittaker Corp., 639 F.2d 516, 520 (9th Cir.), cert. denied, 454 U.S. 1031, 102 S.Ct. 566, 70 L.Ed.2d 473 (1981); Sea Ranch Association v. California Coastal Zone Conservation Commissions, 537 F.2d 1058, 1061 (9th Cir.1976). The question in this case, therefore, is whether the motion was served within ten days as required by Rule 59(e).

The injunction was entered on February 3, 1983. The tenth day following was a Sunday; therefore, Phoenix's motion had to be served by Monday, February 14. Fed.R.Civ.P. 6(a). On that day Phoenix filed and served a two-page document entitled "Defendant's Motion for Reconsideration of the Preliminary Injunction Entered on February 3, 1983" (Motion), and a ten-page "Memorandum of Points and Authorities in Support of Defendant's Motion for Reconsideration of the Entry of a Preliminary Injunction by this Court on February 3, 1983" (Memorandum), with an accompanying exhibit. The Motion specifically stated, "Defendant respectfully requests this Motion be set for a hearing on March 14, 1983". A notice of hearing was not filed, however, and a hearing was not scheduled for that date. On February 23 Phoenix filed its formal "Notice of Motion for Reconsideration" setting hearing for March 28.

Sierra argues that the motion was not complete until formal notice was filed, nineteen days after the injunction was entered. We disagree. Sierra's reliance on Daily Mirror, Inc. v. New York News, Inc., 533 F.2d 53 (2d Cir.) (per curiam), cert. denied, 429 U.S. 862, 97 S.Ct. 166, 50 L.Ed.2d 140 (1976) is misplaced. In that case the Court declined to treat a motion as a Rule 59(e) motion because the papers filed within ten days of judgment "on their face indicated that they did not constitute the complete motion" and did not deal with the merits of the motion for reconsideration. Id. at 56 n. 4. In the present case, by contrast, the only thing missing from the filings of February 14 was a formal notice of hearing, and the Motion made clear that a hearing was requested. The Motion and Memorandum dealt thoroughly with the merits. In Clipper Exxpress we rejected an argument that Daily Mirror should be interpreted to require that every single document relevant to a Rule 59(e) motion be served within ten days. The Rules of Civil Procedure require only that a motion "shall be made in writing, shall state with particularity the grounds therefor, and shall set forth the relief or order sought", Fed.R.Civ.P. 7(b)(1); shall contain a caption, Fed.R.Civ.P. 7(b)(2), 10(a); and shall be signed, Fed.R.Civ.P. 7(b)(3), 11. We held in Clipper Exxpress that a Rule 59(e) motion was timely filed although some supporting affidavits were filed after the ten-day period, because the papers that were filed on time satisfied the particularity requirement of Rule 7(b). 690 F.2d at 1248. Obviously the documents filed in the present case also met that requirement.

Sierra argues that formal notice was required by the district court's Local Rule 113(b). ⁶ By its very terms this rule refutes Sierra's argument. The rule does not provide that a motion is untimely unless formal notice is filed within the applicable time period. To the contrary, the rule specifically provides that a defectively noticed motion may be served and filed, but cannot be heard until properly noticed. In Consortium of Community Based Organizations v. Donovan, 530 F.Supp. 520 (E.D.Cal.1982), the district court denied a motion for summary judgment because the motion was never noticed. The summary judgment motion was made not as a separate motion, but rather as part of a memorandum of points and authorities relevant to a different motion. Id. at 541. In the present case, Phoenix did file a motion; but assuming that the court would have been foreclosed from considering that motion until Phoenix filed formal notice, nevertheless the motion tolled the time for appeal. Even if a motion is inartfully drawn or "so defective that it could not properly be granted", it is still enough to toll the time for appeal. Yanow v. Weyerhauser Steamship Co., 274 F.2d 274, 283 (9th Cir.1959) (en banc), cert. denied, 362 U.S. 919, 80 S.Ct. 671, 4 L.Ed.2d 739 (1960). A contrary rule, requiring formal notice on the motion calendar within ten days, would mean that a party could file a Rule 59(e) motion only if it is able, in the first ten days after judgment, to schedule a satisfactory hearing date; if the party cannot find a satisfactory date within those ten days, it must forfeit its right to reconsideration and proceed immediately to appeal. Neither the Federal nor the Local Rules suggest any intent to condition the party's right to file a reconsideration motion on the state of the district court's calendar. ⁷

Phoenix's notice of appeal is inartfully drafted. Because Phoenix advanced no new grounds in support of the motion for reconsideration, the only possible basis for that motion and for this appeal is Phoenix's contention that the underlying injunction was erroneously granted in the first place. The notice of appeal, however, states that the appeal is from the May 31 order denying reconsideration, rather than from the February 3 injunction. Sierra argues that the scope of our review is therefore restricted to considering whether the district court...