Bullets2Bandages, LLC v. Caliber Corp., Case No. 3:18-cv-00669-GPC-KSC

• Court: United States District Courts. 9th Circuit. United States District Court (Southern District of California)
• Parties: BULLETS2BANDAGES, LLC, a California limited liability company, Plaintiff, v. CALIBER CORPORATION, an Illinois corporation, Defendant. CALIBER CORPORATION, an Illinois Corporation, Counterclaim-Plaintiff, v. BULLETS2BANDAGES, LLC, a California limited liability company, Counterclaim-Defendant, CALIBER CORPORATION, an Illinois Corporation, Third-Party Plaintiff, v. LUCKY SHOT USA LLC, a Florida Limited Liability Company; and 2 MONKEY TRADING, LLC, a Florida Limited Liability Company, Third-Party Defendants, LUCKY SHOT USA LLC, a Florida Limited Liability Company; and 2 MONKEY TRADING LLC, a Florida Limited Liability Company, Third- Party Counterclaim-Plaintiffs, v. CALIBER CORPORATION, an Illinois Corporation, Third Party Counterclaim-Defendant.
• Docket Number: Case No. 3:18-cv-00669-GPC-KSC
• Decision Date: 01 November 2019

BULLETS2BANDAGES, LLC, a California limited liability company, Plaintiff,
v.
CALIBER CORPORATION, an Illinois corporation, Defendant.

CALIBER CORPORATION, an Illinois Corporation, Counterclaim-Plaintiff,
v.
BULLETS2BANDAGES, LLC,
a California limited liability company, Counterclaim-Defendant,

CALIBER CORPORATION, an Illinois Corporation, Third-Party Plaintiff,
v.
LUCKY SHOT USA LLC, a Florida Limited Liability Company;
and 2 MONKEY TRADING, LLC, a Florida Limited Liability Company, Third-Party Defendants,

LUCKY SHOT USA LLC, a Florida Limited Liability Company;
and 2 MONKEY TRADING LLC, a Florida Limited Liability Company, Third- Party Counterclaim-Plaintiffs,
v.
CALIBER CORPORATION, an Illinois Corporation, Third Party Counterclaim-Defendant.

Case No. 3:18-cv-00669-GPC-KSC

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA

November 1, 2019

ORDER DENYING THIRD PARTY DEFENDANT 2 MONKEY TRADING LLC'S MOTION TO SUBTITUTE IT IN PLACE OF PLAINTIFF BULLETS2BANDAGES, LLC

[Dkt. No. 49.]

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Before the Court is Third Party Defendant/Third Party Counterclaim Plaintiff 2 Monkey Trading LLC's ("2 Monkey") motion to substitute it in the place and stead of Plaintiff/Counterclaim-Defendant Bullets2Bandages, LLC ("B2B") pursuant to Federal Rule of Civil Procedure 25(c). (Dkt. No. 49.) On October 4, 2019, Defendant/Third-Party Plaintiff/Counterclaim Plaintiff/Third Party Counterclaim-Defendant Caliber Corporation ("Caliber") filed an opposition. (Dkt. No. 55.) On October 11, 2019, 2 Monkey filed a reply. (Dkt. No. 26.) Based on the reasoning below, the Court DENIES 2 Monkey's motion to substitute.

Background

Plaintiff Bullets2Bandages, LLC ("B2B") and Caliber both manufacture and sell bullet-shaped bottle openers. (Dkt. No. 5 at 9¹; Case No. 13cv3134-CAB(BLM), Dkt. No. 1, Compl. ¶ 11.) In 2013, in case no. 13cv3134-CAB(BLM), B2B filed a complaint against Caliber for trademark infringement of B2B's U.S. Trademark Registration No. 4,364,453 for the mark CALIBER. (Case No. 13cv3134-CAB(BLM), Dkt. No. 1, Compl.) In turn, Caliber filed a counterclaim against B2B for Caliber's Trademark Application No. 85/588,703 for its Bullet Design mark. (Id., Dkt. No. 15.) Application

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No. 85/588,703 became U.S. Trademark Registration No. 4,630,557 on November 7, 2014. (Dkt. No. 5 at 9.)

On June 9, 2014, B2B and Caliber entered into a settlement agreement in Case No. 13cv3134-CAB(BLM). (Dkt. No. 1 Compl. ¶ 9.) As part of the settlement agreement, B2B assigned to Caliber all rights to the CALIBER mark and agreed to not use the phrase "the ORIGINAL"² in relation with its sale of bullet-shaped bottle openers.³ (Dkt. No. 5, Counterclaim/TPC ¶ 23.) On June 9, 2014, B2B's U.S. Trademark Registration No. 4,364,453 was assigned to Caliber in exchange for good and valuable consideration. (Id. ¶ 18.) In exchange, Caliber granted B2B a worldwide, non-exclusive license to both the CALIBER mark and the Bullet Trade Dress." (Id. ¶ 23.)

The underlying complaint alleges that B2B, relying on the settlement agreement, manufactured products that it then sells to wholesalers, such as 2 Monkey (a/k/a Lucky Shot) who sells the products directly to consumers. (Dkt. No. 1, Compl. ¶ 11.) 2 Monkey sells B2B's products through Amazon and Etsy. (Id.) B2B learned that someone complained that 2 Monkey's products were infringing. (Id. ¶ 12.) Due to the complaints, Amazon and Etsy removed 2 Monkey's listings from their websites, barring it from engaging in any sales of B2B's products. (Id.)

B2B suspected Caliber complained to Amazon and Etsy and when it contacted Caliber, it was slow to respond despite the substantial financial damage to B2B for 2 Monkey's inability to sell its products. (Id. ¶¶ 14-16.) Then Caliber told B2B that it was disappointed that B2B had signed an agreement with 2 Monkey. (Id. ¶ 17.) Instead of raising an issue concerning the Settlement Agreement, it asked B2B to repudiate its agreement with 2 Monkey so that B2B and Caliber could work together to make 2

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Monkey pay a higher rate. (Id.) Caliber also threatened that it would begin licensing the CALIBER Mark and Bullet Trade Dress to anyone so that the market would be flooded ultimately taking sales away from B2B and 2 Monkey. (Id. ¶ 18.)

Consequently, on April 3, 2018, B2B filed the underlying complaint against Caliber for breach of contract, interference with existing contractual relations, interference with prospective economic advantage and unfair competition under California Business & Professions Code section 17200 et seq. (Dkt. No. 1, Compl.)

On April 27, 2018, Defendant Caliber filed its Answer and a Counterclaim against B2B for breach of contract, interference with prospective economic advantage and negligent misrepresentation, unfair competition, two counts of federal unfair competition pursuant to 15 U.S.C. § 1125(a) and two counts of trademark infringement of U.S. Trademark Registration No. 4,930,487 (THE ORIGINAL .50 CALIBER BOTTLE OPENER) and the U.S. Trademark Registration No. 4,364,453⁴ (CALIBER) pursuant to 15 U.S.C. § 1114. (Dkt. No. 5.) Caliber also filed a Third Party Complaint ("TPC") against Third Party Defendants Lucky Shot and 2 Monkey. (Id.) In the TPC, Caliber alleges eight causes of action of common law unfair competition, three counts of trademark infringement...