Transamerica Corp. v. Transamerica Bancgrowth Corp.

• Citation: 627 F.2d 963
• Decision Date: 11 September 1980
• Docket Number: No. 78-2677,78-2677
• Parties: TRANSAMERICA CORPORATION and Transamerica Title Insurance Company, Plaintiff-Appellee, v. TRANSAMERICA BANCGROWTH CORPORATION, Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

Page 963

627 F.2d 963

TRANSAMERICA CORPORATION and Transamerica Title Insurance

Company, Plaintiff-Appellee, v. TRANSAMERICA BANCGROWTH CORPORATION, Defendant-Appellant.

No. 78-2677.

United States Court of Appeals,

Ninth Circuit.

Argued and Submitted Aug. 13, 1980.

Decided Sept. 11, 1980.

Joseph T. Tadano, Roush, Mori & Welsh, Phoenix, Ariz., for defendant-appellant.

Ronald Laurie, Townsend & Townsend, San Francisco, Cal., for plaintiff-appellee.

Before TRASK, ANDERSON and FARRIS, Circuit Judges.

TRASK, Circuit Judge:

On July 15, 1975, plaintiffs Transamerica Corporation, and Transamerica Title Insurance Company (hereinafter "Transamerica") filed their complaint for trademark infringement and unfair competition against Transamerica Bancgrowth Corporation (hereinafter "Bancgrowth") in the United States District Court for the District of Arizona, in Phoenix, Arizona. Jurisdiction in the district court was predicated on 28 U.S.C. §§ 1338(a) (trademarks), 1338(b) (unfair competition), and 1332 (diversity).

Factually, the complaint was based on Bancgrowth's unauthorized use of the Transamerica trade name and service mark as to which Transamerica claims exclusive rights in connection with the various services it renders. Transamerica sought relief in the form of an injunction against Bancgrowth's use of the Transamerica name and mark, an accounting for profits and damages, punitive damages, costs of suit and reasonable attorneys' fees.

On April 27, 1976, Transamerica filed an amended complaint naming appellant herein, Arthur S. Brooks (Brooks), doing business as "Trans-America of Arizona," as an additional defendant and seeking the same relief against Brooks as was sought against Bancgrowth in the complaint originally filed. Brooks and Bancgrowth filed their answers to the amended complaint on May 17, 1976, alleging among other things that Brooks had used the business name "Trans-America of Arizona" since 1959.

Immediately following a status conference on September 20, 1976, the district court issued an order setting January 31, 1977, as the date for close of discovery and submission of a stipulated form of pretrial order pursuant to Arizona Local Rule 42. The pretrial conference was scheduled for February 7, 1977. On January 19, 1977, about two weeks before the scheduled close of discovery, the defendants filed a motion for enlargement of time for discovery until March 31, 1977, approximately 60 days longer. The request for extension was supported by affidavit of counsel. The court thereupon vacated the order setting a pretrial hearing date until such time as all discovery was completed and counsel had lodged a stipulated form of pretrial order in compliance with Local Rule 42 C. ¹

A flurry of depositions, requests for protective orders, and other legal strategems followed, until the district court entered a minute order dated April 11, 1977, continuing the date for completion of discovery until August 8, 1977, and rescheduling the pretrial conference to August 15, 1977. The order also emphasized that further delays would not be tolerated.

On April 14, 1978, Transamerica filed a motion for sanctions pursuant to Local Rule 42 E. It was based on Brooks' failure (a) to prepare in good faith for the pretrial conference, and (b) to have complied in good faith with the rules governing pretrial discovery procedures as required by the rule. In its motion, Transamerica requested sanctions in the form of the entry of judgment against defendants as authorized by subsection E of Rule 42. ² At that hearing the following colloquy took place between Brooks' counsel, Mr. Tadano and the court:

The Court: Mr. Tadano, anything to say?

Mr. Tadano: Yes, I do. I attempted to schedule that thing on Wednesday.

The Court: Well why Pretrials have been set three times. They've been continued for every reason under the sun, and yet, by your own response, you show up at the last pretrial pre meeting between the two of you to prepare a pretrial conference with, by your own admission, stacks of new documents you had never seen or produced before.

Mr. Tadano: Our client has an extremely haphazard method of keeping his records.

The Court: I think so too and I think the answer in this case is that the Answer is stricken, default is entered and plaintiffs may prepare a form of judgment in accordance with the prayer of the Complaint. That will be the Order.

C.T. Vol. V, pp. 9-10. Default judgment was entered against the defendant. An appeal was timely filed.

I

Arizona District Court Rule 42 sets out the requirements for a stipulated form of pretrial order to be jointly prepared and submitted to the court in anticipation of the pretrial conference and provides in subsection E:

E. COMPLIANCE

For failure of any counsel to appear at the pretrial conference, to participate therein in good faith, to prepare fully therefor, or to have complied in good faith with the rules governing pretrial...