Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd.
| Decision Date | 23 May 2021 |
| Docket Number | Case No.: 3:18-cv-02109-BEN-LL |
| Court | U.S. District Court — Southern District of California |
| Parties | GOLDEN EYE MEDIA USA, INC., a California corporation, Plaintiff, v. TROLLEY BAGS UK LTD, a corporation of the United Kingdom, Defendant. TROLLEY BAGS UK LTD, a corporation of the United Kingdom, Counterclaimants, v. GOLDEN EYE MEDIA USA, INC., a California corporation; FARZAN DEHMOUBED, an individual; and JENNIFER DUVALL, an individual, Counterdefendants. |
(3) TO CERTIFY FINAL JUDGMENT UNDER RULE 54(b) OF THE FEDERAL RULES OF CIVIL PROCEDURE, and
Plaintiff/Counterdefendant GOLDEN EYE MEDIA USA, INC., a California corporation ("Plaintiff") brought this action for a declaratory judgment of non- infringement against Defendants/Counterclaimants TROLLEY BAGS UK LTD, a corporation of the United Kingdom ("Trolley Bags"); and BERGHOFF INTERNATIONAL, INC., a Florida corporation ("Berghoff") (collectively, "Defendants"). Complaint, ECF No. 1 ("Compl.").
Before the Court is the Joint Motion (1) to Dismiss Certain Claims, (2) for a Consent Judgment, (3) to Certify Final Judgment Under Rule 54(b) of the Federal Rules of Civil Procedure, and (4) to Stay Proceedings of Plaintiff and Trolley Bags (the "Joint Motion"). ECF No. 152. For the reasons outlined below, the Court GRANTS IN PART and DENIES IN PART the Joint Motion.
This matter arises out of a dispute over whether Plaintiff is infringing on the claim of U.S. Design Patent No. D779,828 (the "828 Patent") as well as the trademark held by Defendant Trolley Bags. Compl. at 21:7-9; see also Answer, ECF No. 14 at 9:24-27. Both parties have asserted various patent, trademark, and business tort claims for relief against each other. See Compl.; ECF No. 33. A more detailed factual and procedural history is set forth in the Court's previous order and is incorporated by reference. See ECF No. 136; see also Golden Eye Media, Inc. v. Trolley Bags UK Ltd., et al., No. 3:18-CV-02109-BEN-LL, 2021 WL 966533, at *1 (S.D. Cal. Mar. 15, 2021).
Trial in this matter was originally scheduled for February 22, 2021,2 and as such, all discovery and pre-trial motions in this case have been resolved by the Court. See Order, ECF No. 136; Order, ECF No. 137; Order, ECF No. 142.
On March 12, 2021, while the motions in limine were pending, this Court granted inpart both parties' cross-motions for summary judgment, finding, inter alia, that (1) the 828 Patent is invalid; (2) even if the 828 Patent were valid, it was not infringed; (3) Plaintiff had not infringed on Defendants' common law trademark; (4) Plaintiff's tort-based claims were not protected by the Noerr-Pennington Doctrine; and (5) a genuine issue of fact exists as to whether (a) Plaintiff's tort-based claims for relief are protected by California's litigation privilege, (b) Defendants' complaints to Amazon were made in bad faith and preempted by federal patent law, (c) Plaintiff had proven damages, and (d) Plaintiff can prove its claims for intentional interference with prospective economic relations and negligent misrepresentations. Order, ECF No. 136 ("MSJ Order") at 125-127. Consequently, the Court determined that Plaintiff was the prevailing party as to (1) Plaintiff's First Claim for Relief for declaratory judgment of non-infringement of the 828 Patent and Defendants' related First Counterclaim for infringement of the 828 Patent as well as (2) Plaintiff's Second Claim for Relief seeking a declaratory judgment of non-infringement of the Trademark and Defendants' related Second Counterclaim, for common law trademark infringement (collectively, the "IP Claims"). See id.
Following resolution of the cross-motions for summary judgment, the following claims remained at issue in this case: (1) Plaintiff's (a) Third Claim for Relief for interference with prospective of contractual economic relations and (b) Fourth Claim for Relief for negligent misrepresentation as well as (2) Trolley Bags' (a) Third Counterclaim for a declaratory judgment of invalidity of the Plaintiff's U.S. Design Patent No. D835,912 for reusable shopping bags (the "912 Patent"); (b) Fourth Counterclaim for interference with prospective contractual relations; (c) Fifth Counterclaim for negligent misrepresentation; (d) Sixth Counterclaim for unfair competition, 15 U.S.C. § 1125; and (e) Seventh Counterclaim for unfair competition under the common law and Cal. Bus. & Prof. Code § 17200 (collectively, the "Residual Claims"). MSJ Order at 125-127.
On April 21, 2021, the Court held a Status Conference in this case. ECF No. 149. Counsel for Plaintiff and Trolley Bags appeared. See id. The Court discussed the fact that Plaintiff has two claims remaining in this case, while Trolley Bags has five remainingcounterclaims, three of which resemble the claims dismissed by this Court in the cross-motions for summary judgment. However, because neither party moved for summary judgment as to those claims, they remain at issue.
At the Status Conference, Plaintiff provided notice to the Court that on April 14, 2021, the United States Patent and Trademark Office ("USPTO") issued a non-final office action, rejecting all claims of the 828 Patent based on invalidity grounds, just as the Court's MSJ Order had done. ECF No. 147. That same day, Trolley bags also provided notice that on November 27, 2020, the UPSTO issued a final office action rejecting the 912 Patent as invalid. ECF No. 148. On February 26, 2021, the USPTO also issued an advisory action in the ex parte reexamination of the 912 Patent, rejecting Plaintiff's proposed response to the non-final office action. See id. As such, according to Trolley Bags, all claims of the 912 Patent will be cancelled unless a timely appeal is filed or Plaintiff takes other appropriate action to overcome the outstanding rejections. Id.
Because, inter alia, the UPSTO had found the 912 Patent invalid, and the 912 Patent claim and Trolley Bags' one counterclaim for unfair competition under the Lanham Act were the only claims over which federal question jurisdiction applied, on April 23, 2021, this Court issued an Order to Show Cause as to Why Summary Judgment Should Not be Granted as to the Residual Claims. ECF No. 150. In this order, the Court directed the parties to address the following issues:
1. Why Defendants' claims for unfair competition, pursuant to 15 U.S.C. § 1125, the common law, and California's Unfair Competition Law, Cal. Bus. & Prof. Code § 17200, et seq. (the "UCL"), are not subject to summary judgment and dismissal for the same reasons outlined in the Court's MSJ Order granting summary judgment on the claims brought by Plaintiff arising out of the same facts.
2. Why the Court should not grant summary judgment in Trolley Bags' favor on its counterclaim seeking a declaratory judgment of invalidity of the 912 Patent given (1) the 912 Patent closely resembles the 828 Patent, which this Court ordered held invalid and (2) the USPTO's decision finding the 912 Patent invalid.
3. Why the Court should exercise supplemental jurisdiction over both parties' remaining mutual claims against each other for negligent misrepresentation and interference with prospective contractual relations if the Court dismisses the only claims over which it has original federal jurisdiction (i.e., the Lanham Act unfair competition claim and remaining patent claim).
On April 30, 2021, Plaintiff, Counterdefendants, and Berghoff stipulated to a dismissal with prejudice of Berghoff from the case, and as such, Plaintiff, Counterdefendants Farzan Dehmoubed and Jennifer Duvall ("Counterdefendants"), and Trolley Bags are the only remaining parties in this case. ECF No. 151.
Plaintiff's opening brief in response to the Court's Order to Show Cause was due by Friday, May 14, 2021. See ECF No. 150 at 6. Instead, on May 14, 2021, Plaintiff, Defendant, and Counterdefendants (collectively, the "Parties") respectfully submitted the instant Joint Motion. See Joint Motion, ECF No. 152.
"Except as otherwise provided, stipulations must be recognized as binding on the Court only when approved by the judge." S.D. Cal. Civ. R. 7.2(a). Such stipulations "must first be filed as a 'joint motion,'" which require neither a hearing date for the motion nor a "a separate points and authorities or declaration unless required by the nature of the motion or requested by the assigned judicial officer." S.D. Cal. Civ. R. 7.2(b).
As set forth below, the Court finds the following: First, the Parties' Joint Motion to Dismiss Certain Claims does not require a court order. Although the issue is likely moot, the Court GRANTS the Joint Motion to Dismiss. Second, because entry of a judgment based on the Parties' consent is permissible, the Court GRANTS the Parties' Joint Motion to Enter a Consent Judgment. Third, given this case meets the criteria making it appropriate for the Court to certify the IP Claims for appeal, the Court GRANTS the Parties' Joint Motion to Certify Judgment for Appeal. Fourth, having certified the IP Claims for appeal while entering judgment as to the only remaining claim arising out of federal jurisdiction,the Court (1) DENIES the Parties' Joint Motion to Stay this Case, (2) declines supplemental jurisdiction over the remaining claims, and (3) dismisses those claims without prejudice.
If a plaintiff wants to dismiss a case without a court order, the plaintiff may do so pursuant to Rule 41(a)(1) of the Federal Rules of Civil Procedure ("Rule 41(a)(1)"), "by filing" either (1) "a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment" or (2) "a stipulation of dismissal signed by all parties who have appeared." FED. R. CIV. P. 41(a)(1). Only where a plaintiff does not proceed by filing a notice or ...
To continue reading
Request your trial