Tee Turtle, LLC v. Kellytoy Worldwide, Inc.
| Decision Date | 26 February 2021 |
| Docket Number | Case No. 2:20-cv-11301-MCS-MAA |
| Citation | 522 F.Supp.3d 695 |
| Parties | TEE TURTLE, LLC, Plaintiff, v. KELLYTOY WORLDWIDE, INC. et al., Defendant. |
| Court | U.S. District Court — Central District of California |
Case Lee Collard, Dorsey and Whitney LLP, Denver, CO, Connor J. Hansen, Pro Hac Vice, Dorsey and Whitney LLP, Seattle, WA, Jill Gutierrez, Dorsey and Whitney LLP, Costa Mesa, CA, for Plaintiff.
AnnMarie Mori, John C. Ulin, TroyGould PC, Mark B. Mizrahi, Freeman Freeman and Smiley LLP, Los Angeles, CA, for Defendant.
ORDER DENYING MOTION AND AMENDED MOTION FOR PRELIMINARY INJUNCTION [7, 18] AND DENYING REQUEST TO STRIKE REPLY [32]
Plaintiff Tee Turtle, LLC ("Tee Turtle") moves for a preliminary injunction enjoining Defendants Kellytoy Worldwide, Inc. and Kellytoy (USA), Inc. (collectively, "Kellytoy") from making, using, and selling its "Flip-A-Mallow" products. ("Mot.," ECF No. 7; see also ECF No. 18 (Amended Motion noticing hearing).) Kellytoy filed a response ("Opp.," ECF No. 21) and evidentiary objections (ECF No. 22). Tee Turtle filed a reply ("Reply," ECF No. 24), a response to the evidentiary objections (ECF No. 25), and its own evidentiary objections (ECF No. 26). Kellytoy filed a request to strike the Reply (ECF No. 32), to which Tee Turtle responded (ECF No. 37) and filed an amended reply ("Am. Reply," ECF No. 38). Kellytoy responded to Tee Turtle's evidentiary objections (ECF No. 47).
The parties also filed various notices and objections concerning potential cross-examination of witnesses at the hearing. See ECF Nos. 23, 27, 28, 29, 33, 34. The Court held a hearing on February 22, 2021. The Court finds that the requested cross-examination is neither necessary nor helpful at this stage and DENIES the requests. For the following reasons, the Court DENIES the motion for preliminary injunction. The Court also DENIES the request to strike the Reply.
Founded in 2012, Tee Turtle "offer[s] cutting edge pop-culture t-shirt designs" and "other popular novelty consumer goods, like the reversible plushie stuffed animals" ("Reversible Plushies") embodying the patents at issue in this case. See Compl. ¶¶ 5-6. (ECF No. 1.) Examples of those Reversible Plushies are shown below.
Tee Turtle filed this patent infringement action against Kellytoy, alleging that, by making and selling reversible plush toys, Kellytoy infringes three of Tee Turtle's design patents and one utility patent embodied by its Reversible Plushies (i.e. , U.S. Patent Nos. D822,127 (the "D127 Patent"), D836,168 (the "D168 Patent"), D860,337 (the "D337 Patent"), and 10,786,746 (the "’746 Patent") ). See Compl. ¶¶ 1-2. Kellytoy, "a large participant in the stuffed animal market," sells "Squishmallow" toys. Id. ¶ 10. Tee Turtle alleges that, in addition to selling 50 million of its popular Squishmallow toys, Kellytoy infringes Tee Turtle's patents by selling reversible Flip-A-Mallows. Id. ¶ 10.
Tee Turtle's patents cover reversible plush toys. Tee Turtle's design patents (the D127, D168, and D337 Patents) claim "the ornamental design for a reversible plush toy, as shown and described," with each patent covering slightly different aspects of the claimed design, as shown below by the non-broken lines.
See D127, D168, and D337 Patents at Claim and Description.
Tee Turtle's utility patent, the ’746 Patent, entitled Reversible Toy, discloses a reversible toy that See ’746 Patent at 1:38-42. Although "[t]oys adapted to convert from one configuration to another [were already] known in the art," the ’746 Patent explains that, "it is important to have a toy that can be easily and quickly reversed between positions to present different appearances or configurations." Id. at 1:26-28. Figure 1 of the ’746 Patent depicts "an isometric view of a reversible toy in a first orientation according to one embodiment of the present disclosure." Id. at 2:30-33; see also id. at Fig. 1. Figure 2 of the ’746 Patent depicts "an isometric view of the reversible toy in a second orientation according to one embodiment of the present disclosure." Id. at 2:34-36; see also id. at Fig. 2.
Tee Turtle alleges that its Reversible Plushies "have been a popular and successful product line for Tee Turtle." Id. Tee Turtle alleges further that, "Kellytoy's Flip-A-Mallows misappropriate" Tee Turtle's "intellectual property, including infringement of the patented design claimed in the Tee Turtle Patents, and generally appear to copy Tee Turtle's Reversible Plushies." Id. ¶ 22. Tee Turtle claims that, "Kellytoy's violation of Tee Turtle's intellectual property rights has and will continue to cause significant damage to Tee Turtle's market, including lost sales, lost market share, lost reputation, and diminution of brand value." Id. ¶ 23. As an example of the alleged infringement, Tee Turtle provides "a comparison of one of Kellytoy's products, the sloth/hedgehog Flip-A-Mallow, [alongside] the claims of the Tee Turtle Design Patents," as shown below. Id. ¶ 24. Id.
As a result of Kellytoy's alleged infringing activities, Tee Turtle filed this patent infringement action. See Compl. ¶¶ 35-50. In its present Motion, Tee Turtle seeks a preliminary injunction preventing Kellytoy from making and selling its Flip-A-Mallows.
A preliminary injunction is an "extraordinary remedy." Winter v. Nat. Res. Def. Council, Inc. , 555 U.S. 7, 22, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008). As such, in patent cases like in other cases, "[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest." Id. at 20, 129 S.Ct. 365. "Furthermore, a patentee must establish a causal nexus between the infringement and the alleged harm." Luminara Worldwide, LLC v. Liown Elecs. Co. , 814 F.3d 1343, 1352 (Fed. Cir. 2016).
"With regard to the first factor—establishing a likelihood of success on the merits—the patentee seeking a preliminary injunction in a patent infringement suit must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent." Titan Tire Corp. v. Case New Holland, Inc. , 566 F.3d 1372, 1376 (Fed. Cir. 2009). "If the accused infringer ‘raises a substantial question concerning either infringement or validity,’ then the patentee has not established that it is likely to succeed on the merits, and a preliminary injunction is not appropriate." LifeScan Scotland, Ltd. v. Shasta Techs., LLC , 734 F.3d 1361, 1366 (Fed. Cir. 2013).
Additionally, when considering the Winter factors, a preliminary injunction may only be awarded "upon a clear showing" of evidence that supports each relevant preliminary injunction factor. Winter , 555 U.S. at 22, 129 S.Ct. 365. "This ‘clear showing’ requires factual support beyond the allegations of the complaint, but the evidence need not strictly comply with the Federal Rules of Evidence." CI Games S.A. v. Destination Films , No. 2:16-CV-05719-SVW, 2016 WL 9185391, at *11 C.D. Cal. Oct. 25, 2016 (citing Flynt Distrib. Co., Inc. v. Harvey , 734 F.2d 1389, 1394 (9th Cir. 1984) ).
The Court has read and considered the parties’ competing evidentiary objections to the declarations filed in support of their respective briefs, as well as the responses filed thereto. See ECF Nos. 22 (Kellytoy's Objections to Badie Declaration), 25 (Tee Turtle's Objections to Mizrahi Declaration), 26 (Tee Turtle's Response to Kellytoy's Objections), 30 (Tee Turtle's Objections to the Wilson Declaration), 47 (Kellytoy's Response to Tee Turtle's Objections).
"[A] preliminary injunction is customarily granted on the basis of procedures that are less formal and evidence that is less complete than in a trial on the merits." Univ. of Tex. v. Camenisch , 451 U.S. 390, 395, 101 S.Ct. 1830, 68 L.Ed.2d 175 (1981). Thus, a district court may give inadmissible evidence, including hearsay, weight in deciding a preliminary injunction. See, e.g., Johnson v. Couturier , 572 F.3d 1067, 1083 (9th Cir. 2009). Although evidentiary issues are still relevant at this stage, these issues properly go to weight rather than admissibility.
Garcia v. Green Fleet Systems, LLC , No. CV 14-6220 PSG (JEMx), 2014 WL 5343814, at *5 (C.D. Cal. Oct. 10, 2014). Accordingly, the Court has considered the parties’ objections when deciding how to weigh the relevant evidence; where the Court has expressly relied on evidence that is subject to an evidentiary objection, the Court has OVERRULED the objection.
As a preliminary matter, the Court addresses the parties’ competing arguments regarding improperly filed documents. First, Tee Turtle asks the Court to disregard arguments made in Kellytoy's Opposition wherein Kellytoy incorporates by reference certain information from the Mizrahi Declaration and the Wilson Declaration. See Reply at 8; Am. Reply at 4. Second, Kellytoy asks the Court to strike Tee Turtle's over-length reply brief, which contains 30 pages instead of 10, as required by the Court's Standing Order. See ECF No. 32. In its response to the request to strike, Tee Turtle apologizes for the oversight in misreading the Court's order, but Tee Turtle argues that good cause supports allowing the extra pages nonetheless, given Kellytoy's incorporation by reference of voluminous material. See ECF No. 37. If the Court does not accept the over-length Reply, Tee Turtle asks the Court to instead accept its shortened Amended Reply. Id.
Considering that each party has fallen short of following Court rules...
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