Opinion
CASE NO. 3:12-cv-0604-GPC-KSC
08-27-2015
JAMES W. BRADY and PATRICIA M. BRADY, Plaintiffs, v. GRENDENE USA, INC., a Delaware Corporation, and GRENDENE S.A., a Brazil Corporation, Defendants. AND RELATED COUNTERCLAIMS
ORDER:
(1) DENYING PLAINTIFFS' MOTION FOR RECONSIDERATION;
[ECF No. 305]
(2) DISMISSING WITHOUT PREJUDICE GRENDENE'S FIRST COUNTERCLAIM FOR A DECLARATORY JUDGMENT OF NONINFRINGEMENT;
(3) DENYING DEFENDANTS' EX PARTE MOTION FOR LEAVE TO FILE MOTION FOR SUMMARY JUDGMENT;
[ECF No. 316]
(4) DENYING THE PARTIES' MOTION TO CONTINUE;
[ECF No. 357]
(5) DENYING WITHOUT PREJUDICE THE PARTIES' PRETRIAL MOTIONS AND ACCOMPANYING MOTIONS TO SEAL
[ECF Nos. 272, 273, 274, 275, 277, 280, 281, 284, 289, 290, 291, 292, 293]
I. INTRODUCTION
Before the Court are three primary issues: (1) Plaintiffs James W. Brady and Patricia M. Brady's (collectively, "the Bradys") Motion for Reconsideration of Order Granting Defendants' Partial Renewed Motion for Summary Judgment, or in the Alternative, Partial Summary Judgment, (ECF No. 305); (2) whether Grendene's counterclaims should be dismissed, (ECF Nos. 304, 310); and (3) Grendene USA, Inc and Grendene S.A.'s (collectively, "Grendene") Ex Parte Motion for Leave to File Motion for Summary Judgment re Second Counterclaim, (ECF No. 316). The parties have fully briefed the issues. (ECF Nos. 304, 305, 310, 316, 318, 320, 321, 328, 333, 337.)The Court finds the issues suitable for disposition without oral argument pursuant to Civil Local Rule 7.1 (d)(1). Upon review of the moving papers, admissible evidence, and applicable law, the Court: (1) DENIES the Bradys' motion for reconsideration, (2) DISMISSES WITHOUT PREJUDICE Grendene's first counterclaim for a declaratory judgment of noninfringement, and (3) DENIES Grendene's motion for leave to file a summary judgment motion.
II. PROCEDURAL BACKGROUND
On June 3, 2015, the Court granted summary judgment in favor of Grendene, finding that: (1) Grendene had been validly assigned the '543 mark, and (2) the Settlement Agreement between the Bradys' company, MIB, and Grendene's alleged predecessor, ISC, barred the Bradys' causes of action against Grednene. (ECF No. 295.) Based on that ruling, the Court found it proper to sua sponte consider whether Grendene's two counterclaims should be dismissed, (id. at 16-17), resulting in the Bradys' pending motion to dismiss Grendene's counterclaims, (ECF No. 310). On June 19, 2015, the Bradys filed a motion to reconsider the Summary Judgment Order. (ECF No. 305.) On June 30, 2015, Grendene filed an ex parte motion for leave to file a motion for summary judgment on its second counterclaim. (ECF No. 316.)
In this order, the Court defines terms the same as they are in the Summary Judgment Order.
III. FACTUAL BACKGROUND
The facts of this case are laid out in detail in this Court's previous orders on Grendene's prior summary judgment motions. (See ECF No. 158, at 2-7; ECF No. 295, at 2-3.) Quoting the Court's initial order:
On September 13, 1983, the Ipanema Shoe Corporation ("ISC") obtained a registration in the mark "IPANEMA" from the United States
Patent and Trademark Office ("USPTO"). (ECF No. 72-3, Ex. A); IPANEMA, Registration No. 1,251,204 (the "'204 Mark"). On January 25, 1990, ISC's IPANEMA mark was cancelled for failure to timely submit a Section 8 affidavit. (ECF No. 72-3, Ex. A.)
On January 8, 1991, Made in Brazil, Inc. ("MIB"), the Bradys' past and present employer, (ECF No. 96, ¶ 2), obtained a registration in the IPANEMA WEAR mark from the USPTO. (ECF No. 94-17); IPANEMA WEAR, Registration No. 1,630,915 (the "'915 Mark"). On September 26, 1991, MIB applied to register the IPANEMA mark for swimwear with the USPTO, and on June 22, 1993, the USPTO granted MIB's application. (ECF No. 72-3, Ex. B); IPANEMA, Registration No. 1,778,404 (the "'404 Mark"). MIB subsequently assigned the '404 Mark to the Bradys. (ECF No. 72-4, Ex. A.) On June 22, 2003, the Bradys renewed the '404 Mark. (ECF No. 94-3.)
On November 24, 1992, after learning of the cancellation of the '204 Mark, ISC applied to re-register the IPANEMA mark with the USPTO. (ECF No. 72-3, Ex. C); U.S. Trademark Application Serial No. 74,334,106 (filed November 24, 1992). On March 8, 1993, the USPTO denied ISC's 1992 application in light of MIB's '915 Mark. (ECF No. 95-2, at 70.) On July 30, 1993, ISC filed a petition with the Trademark Trial and Appeal Board ("TTAB") seeking to cancel MIB's '915 and '404 Marks. (ECF No. 72-3, at 20.) On January 18, 1994, the USPTO again denied ISC's 1992 application in light of MIB's '404 Mark. (Id. at 52.)
On Feburary 16, 1995, MIB and ISC entered into a settlement agreement (the "Settlement Agreement") with the following covenants and conditions:
1. MIB, its affiliates, predecessors and successors agree to use the marks IPANEMA and IPANEMA WEAR only in connection with the sale of swimwear and activewear, and not in connection with any footwear;
2. ISC, its affiliates, predecessors and successors agree to make no objection, formally or informally, to the use by MIB, its affiliates, predecessors and successors of the terms IPANEMA or IPANEMA WEAR as a trademark in the selling of swimwear and activewear (excluding all footwear) as long as such use is in accordance with the terms of this Agreement.
3. MIB has executed a Letter of Consent, which is attached to this Agreement as Exhibit A. Further, MIB agrees to execute any further consent papers to assist ISC to register ISC's federal trademark application for the trademark IPANEMA, Serial No. 74/334,106, which is currently pending at the U.S. Patent and Trademark Office.
4. MIB, its affiliates, predecessors and successors agree to make no objection, formally or informally, to the use by ISC, its affiliates, predecessors and successors of the term IPANEMA as a trademark in the selling of footwear as long as such use is in accordance with the terms of this
Agreement.
5. This settlement agreement is subject to ISC obtaining registration at the Patent and Trademark Office of its trademark IPANEMA, Serial No. 74/334,106. If ISC cannot obtain registration for the trademark IPANEMA, Serial No. 74/334,106, this Agreement will be null and void. In that event, the rights of ISC and MIB to the name IPANEMA and IPANEMA WEAR will revert to the rights of the respective parties prior to settlement.
6. ISC agrees to stipulate to a suspension of any cancellation proceeding it may nave brought against MIB's IPANEMA and IPANEMA WEAR trademark registrations pending the final results of the registration of ISC's application to register IPANEMA, Serial No. 74/334,106.
7. If ISC obtains registration of the trademark IPANEMA, Serial No. 74/334,106, as stated in Paragraphs 5 and 6, ISC agrees to withdraw without prejudice its Petition to Cancel, Cancellation No. 22,022, MIB's registrations for the trademarks IPANEMA WEAR and IPANEMA now pending before the Trademark Trial and Appeal Board.
8. This Agreement shall apply and be binding upon the parties hereto, all related companies, and their respective successors, assigns, officers, directors, agents, employees and attorneys and all those in privity with them. The Agreement will be governed and construed in accordance with the laws of the State of New York.
9. This Agreement constitutes the entire Agreement between the parties hereto with respect to the subject matter hereof, and any modification of this Agreement shall be in writing and shall be signed by a duly authorized representative of each party. There are no understandings, representation or warranties except as herein expressly set forth.
10. This Agreement may be executed in counterparts, each of which shall be deemed an original but together shall constitute one and the same instrument. IN WITNESS WHEREOF, the parties hereto have caused this instrument to be executed by their duly authorized representatives and intend to be bound by this Agreement as of the date first set forth below.
(ECF No. 158, at 3-6.)
(ECF No. 72-4, Ex. D.) On August 1, 1995, the USPTO granted ISC's 1992 application for the IPANEMA trademark for footwear. (ECF No. 72-3, at 16); IPANEMA, Registration No. 1,908,543 (the "'543 Mark").
In 1993, ISC sold various types of women's woven leather shoes bearing the IPANEMA mark—including flats, pumps, and slings—that
were either open-toed, closed-toed, or snip-toed. (ECF No. 108-3, Ex. A, at 9.) In 1997, ISC sold women's sandals with a velcro closure and metal accents. (ECF No. 108-4, Ex. B, at 10.) Through at least June 3, 1999, ISC sold footwear bearing the IPANEMA mark. (ECF No. 108-2 ¶ 2; ECF No. 108-4, Ex. D.)
On October 5, 1999, ISC purported to assign the '543 Mark to Utopia Marketing, Inc. ("Utopia"). (ECF No. 108-8.) On October 20, 1999, Utopia filed a Form 8-K with the United States Securities and Exchange Commission ("SEC") stating that Utopia "intends to continue to operate the business formerly conducted by Ipanema with the purchased assets for the foreseeable future." (ECF No. 108-7, at 19.) However, on March 22, 2000, Utopia filed a Form 8-K/A with the SEC stating that Utopia "intends to utilize the Ipanema brand for a different line of shoe products" and "has significantly changed the line of products sold under the Ipanema brand name." (ECF No. 95-14, at 599.) On November 3, 2000, Utopia filed for bankruptcy. (ECF No. 108-12.) On November 11, 2000, Utopia filed a Form 10-QSB with the SEC stating that, during the nine months prior to September 30, 2000, Utopia generated $6,644,000 selling products under the NAKEDFEET and IPANEMA marks. (ECF No. 108-10, at 131-32.)
In 2002, Utopia's bankruptcy trustee purportedly assigned the '543 Mark to Consolidated Shoe Corporation ("CSC") "with the good will of the business connected with the use of and symbolized by the mark." (ECF No. 108-13, Ex. K, at 162.) In July 2003, CSC started selling footwear under the IPANEMA mark. (See ECF No. 95-17.) In the spring of 2007, CSC sold twelves types of women's shoes bearing the IPANEMA mark, including several types of cross strap sandals, an open-toed wedge with a slingback, a kitten heel, and several flats. (See ECF No. 108-14.)
On May 18, 2004, the Bradys obtained a registration in the "THE GIRL FROM IPANEMA" mark from the USPTO. (ECF No. 94-3); THE GIRL FROM IPANEMA, Registration No. 2,843,768. In 2004, the Bradys discussed the various IPANEMA marks as well as potential licensing with Grendene. (ECF No. 98-2, Exs. 7-8.)
On October 9, 2007, CSC purported to assign the '543 Mark to Grendene for $500,000. (ECF Nos. 108-15, 108-16.) Starting in 2008 and continuing through 2011, the Bradys again discussed the various IPANEMA marks and potential licensing with Grendene. (ECF No. 94, ¶ 18-19; ECF No. 98-2, Exs. 10-12.) In 2009 and 2010, the Bradys filed five lawsuits against alleged infringers of the Bradys' rights in the IPANEMA mark. (ECF No. 94, ¶ 24.) The Bradys settled all five lawsuits. (Id. ¶ 25.)
On October 11, 2010, Grendene first sold footwear under the IPANEMA mark in the U.S. to ViX Swimwear, Inc ("ViX"). (ECF No.
95-16, at 724.) At the end of 2011, the Bradys became aware of ViX's sales of Grendene's footwear bearing the IPANEMA mark. (ECF No. 94, ¶ 31.)
The Bradys allege five causes of action against Grendene: (1) trademark infringement under 15 U.S.C. § 1114; (2) false designation of origin under 15 U.S.C. § 1125(a); (3) unfair competition under California Business and Professions Code § 17200; (4) unfair competition under California common law; and (5) cancellation of U.S. Trademark Registration No. 1,908,543 under 15 U.S.C. § 1119. (FAC.)
References to the exhibits attached to ECF No. 108-2, (ECF Nos. 108-3- 108-17), refer to the page numbers stamped in the bottom right corner of each page.
Due to the low quality of the images submitted to the Court in ECF No. 108-14, the Court's description of the shoes is approximate.
IV. LEGAL STANDARD
Under Federal Rules of Civil Procedure 59 and 60, federal district courts may reconsider final orders to correct "manifest errors of law." Turner v. Burlington N. Sante Fe R.R., 338 F.3d 1058, 1063 (9th Cir. 2003). Generally, parties must show either: (1) an intervening change in the law; (2) additional evidence that was not previously available; or (3) that the prior decision was based on clear error or would work manifest injustice. Marlyn Natraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 880 (9th Cir. 2009); Sch. Dist. No. 1J v. ACandS, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993); Pyramid Lake Paiute Tribe of Indians v. Hodel, 882 F.2d 364, 369 n.5 (9th Cir. 1989).
Reconsideration is an "extraordinary remedy, to be used sparingly in the interests of finality and conservation of judicial resources." Kona Enters., Inc. v. Estate of Bishop, 229 F.3d 877, 890 (9th Cir. 2000). "'A motion for reconsideration is not an opportunity to renew arguments considered and rejected by the court, nor is it an opportunity for a party to re-argue a motion because it is dissatisfied with the original outcome.'" Fed. Trade Comm'n v. Neovi, Inc., No. 06-cv-1952-JLS-JMA, 2009 WL 56130, at *2 (S.D. Cal. Jan. 7, 2009) (quoting Devinsky v. Kingsford, No. 05-cv-2064-PAC, 2008 WL 2704338, at *2 (S.D.N.Y. July 10, 2008)). Finally, reconsideration is "addressed to the sound discretion of the trial court." Thompson v. Housing Authority of City of LA, 782 F.2d 829, 832 (9th Cir. 1986).
In addition to these substantive standards, Civil Local Rule 7.1 requires a party moving for reconsideration to submit an affidavit or certified statement of an attorney:
setting forth the material facts and circumstances surrounding each prior application, including inter alia: (1) when and to what judge the application was made, (2) what ruling or decision or order was made thereon, and (3) what new or different facts and circumstances are claimed to exist which did not exist, or were not shown, upon such prior application.CivLR 7.1.i.1. Civil Local Rule 7.1.i.2 provides that "any motion or application for reconsideration must be filed within twenty-eight (28) days after the entry of the ruling, order or judgment sought to be reconsidered." CivLR 7.1.i.2.
V. DISCUSSION
A. Reconsideration
The Bradys argue two primary reasons why the Court should reconsider the Summary Judgment Order: (1) the Court incorrectly interpreted the Settlement Agreement, and (2) the evidence surrounding whether Grendene was validly assigned the '543 mark is disputed. (ECF No. 305-1, at 4.) Grendene contends that reconsideration is inappropriate because the Bradys have failed to meet any of the three standards for obtaining reconsideration. (ECF No. 333.) Though the Bradys argue that reconsideration is appropriate based on additional evidence and that the Summary Judgment Order was based on clear error, (ECF No. 305-1, at 4), the Court disagrees. The additional evidence submitted by the Bradys was available to them prior to the Summary Judgment Order and therefore was previously available. Cf. Sch. Dist. No. 1J, 5 F.3d at 1263. Moreover, the clear error alleged by the Bradys is merely repetition of the same arguments made to the Court in advance of the Summary Judgment Order and therefore not a sufficient ground for reconsideration. See Neovi, 2009 WL 56130, at *2. Accordingly, the Court DENIES the Bradys' motion for reconsideration. However, to make the record clear, the Court will address some of the Bradys' arguments.
1. The Settlement Agreement
The Settlement Agreement obligates the Bradys to "make no objection, formally or informally, to the use by ISC, its affiliates, predecessors and successors of the term IPANEMA as a trademark in the selling of footwear as long as such use is in accordance with the terms of this Agreement." (ECF No. 94-5, Ex. 4, at 2.) The Bradys previously argued and continue to argue that "two phrases constitute 'terms' of the Settlement Agreement: (1) a whereas clause, and (2) a statement in the Letter of Consent that the Settlement Agreement obligated MIB to execute." (ECF No. 295, at 6 (citation omitted).) In the Summary Judgment Order, the Court found that neither the language in the Letter of Consent nor the recitals of the Settlement Agreement constituted operative terms. (Id. at 7.)
In their motion to reconsider, the Bradys argue that the phrase "as long as such use is in accordance with the terms of this Agreement" is meaningless under the Court's interpretation in the Summary Judgment Order. (ECF No. 305-1, at 19-22 (citation omitted).) Essentially, the Bradys are arguing that the operative terms of the agreement contain no limitations on the use of the IPANEMA mark and thus the Court must turn to the recitals and Letter of Consent to give meaning to the aforementioned phrase. The Court disagrees.
Contrary to the Bradys' argument, there are operative terms that limit the use that the Bradys may not object to under the Settlement Agreement. Indeed, the very sentence containing the phrase cited by the Bradys contains two limitations: (1) the use must be "by ISC, its affiliates, predecessors [or] successors," and (2) the use must be "in the selling of footwear." (ECF No. 94-5, Ex. 4, at 2.) The Court notes that the language used in the Settlement Agreement is somewhat redundant, but that does not make it vague or meaningless. Were an entity other than ISC, or its affiliates, predecessors, or successors, to use the IPANEMA mark, the Settlement Agreement would not bar Plaintiffs from objecting. Were ISC, or its affiliates, predecessors, or successors, to use the IPANEMA mark to sell something other than "footwear," the Settlement Agreement again would not bar Plaintiffs from objecting.
Moreover, even if the Court were to adopt the Bradys' position that the Court's construction rendered the phrase meaningless, the recital and Letter of Consent cited by the Bradys would not support the Bradys' position. The recitals to the Settlement Agreement and the Letter of Consent reveal a number of reasons that ISC and MIB believed that consumers were not likely to be confused by each parties use of the IPANEMA mark, including those mentioned by the Bradys in their present motion. (See, e.g., ECF No. 94-5, Ex. 4, at 2 ("the goods offered by ISC and MIB travel in distinct channels of trade"); ECF No. 94-6 (ISC "has no plans to enter the swimwear and activewear market").) The recitals and Letter of Consent do not, however, express the intent of the parties to turn their motivations into operative terms of the agreement. Thus, the Court finds that, contrary to the Bradys' arguments, the cited statements do not indicate an intent that the parties goods always travel in separate channels of trade. Accordingly, the Court adheres to its prior ruling regarding the Settlement Agreement.
2. Assignment Validity
The Court now turns to the second issue raised by the Bradys: whether there is a dispute of material fact as to the validity of the assignments among Grendene and its predecessors. The Bradys raise five arguments: (1) these are questions of fact to be decided by the jury, (2) the Summary Judgment Order ignored facts that did not pertain to market overlap, (3) the Summary Judgment Order did not properly weigh statements to the USPTO, (4) the Summary Judgment Order did not properly weigh statements to the SEC, and (5) the Summary Judgment Order ignored statements made by Mr. Mulcahy. (ECF No. 305, at 11-18.) The Court agrees with the Bradys that assignment validity is a question of fact to be decided by the jury. However, the issue in the Summary Judgment Order is whether there are any disputes of material fact, to which the Court now turns.
In the Summary Judgment Order, the Court was presented evidence pertaining to the actual shoes sold by Grendene and its predecessors. (See ECF No. 295, at 12-16.) This included images of the shoes, descriptions of the shoes, and the prices at which the shoes were sold. (Id.) This evidence was not disputed. Based on this undisputed evidence, the Court determined that the shoes sold by Grendene and each of its predecessors were substantially similar. (Id. at 15.) However, the Bradys cited, and continue to cite, characterizations of these differences that described the differences between the shoes as significant. Specifically, the Bradys cite: (1) Grendene's statements to the USPTO that Grendene's predecessors sold "for relatively high fashion women's shoes" and that "[a] typical consumer is not likely to confuse the source of [Grendene's] mark appearing on plastic thong sandals with the source of the goods bearing the mark of [its predecessors'] registration," (ECF No. 95-6, Ex. 5, at 490); (2) Utopia's statement that it had "significantly changed the line of products sold under the IPANEMA brand name," (ECF No. 95-14, Ex. 13, at 599); (3) Mr. Mulcahy's statement that there were "significant changes" when Utopia started selling IPANEMA footwear, (ECF No. 229-2, Ex. 1, at 20:4-21:11); and (4) the license back between Grendene and CSC which described differences between their respective shoes, (ECF No. 95-12, Ex. 11, at 570-71). Grendene does not dispute that these statements were made by it and its predecessors. Grendene instead essentially argues that this evidence does not counteract the actual descriptions and images of the shoes sold by it and its predecessors. (ECF No. 333, at 11-20.)
As an initial matter, the Court has already found that this evidence does not preclude summary judgment. For example, Utopia's statements to the SEC and Mr. Mulcahy's statements in his deposition merely stand for the proposition that there were differences between the shoes sold by Grendene and its predecessors. (ECF No. 295, at 8-10.) This is undisputed. The issue is whether the products sold by each company were "substantially similar," as defined in the caselaw, and the fact that there were differences does not prevent summary adjudication of that issue. The Bradys also cite the statements made by Grendene to the TTAB. The Summary Judgment Order had rejected this evidence based on the TTAB's ruling and the differing legal standards. The Court now makes clear that this evidence is properly before the Court, but does not create a dispute of material fact. As noted in the Summary Judgment Order, there are visual differences between the shoes produced by Grendene and each of its predecessors. However, these shoes are substantially similar because "[t]he products sold by all the companies involved fashionable women's footwear at a low to medium price point." (ECF No. 295, at 15.) That Grendene stated that its shoes were different from its predecessors' shoes, (see ECF No. 95-6, Ex. 5, at 495 (describing Grendene's footwear as "plastic thong sandals" and its predecessors' footwear as "dress shoes of high fashion")), does not change the types of products sold or the price points at which they were sold. While Grendene's statements are admissible as an opposing party statement, those statements do not create a dispute of material fact regarding whether the products are "substantially similar." Accordingly, the Court adheres to its ruling in the Summary Judgment Order.
B. Grendene's Counterclaims
Grendene is asserting two counterclaims in this action: (1) for a declaratory judgment of noninfringement, and (2) for a declaratory judgment of invalidity. (ECF No. 57 ¶¶ 12-19.) The Court had previously found that Grendene's counterclaims may be moot in light of the Summary Judgment Order. (ECF No. 295, at 16-17.) The Bradys argue that the Court should decline to hear both of Grendene's counterclaims. (ECF No. 304.) Grendene admits that its first counterclaim for a declaratory judgment of noninfringement is now moot. (ECF No. 310, at 1 n.1.) However, Grendene argues that it does still have standing to assert its second counterclaim for a declaratory judgment of invalidity. (Id. at 1-2.) Based on Grendene's admission that its first counterclaim is moot, the Court DISMISSES WITHOUT PREJUDICE Grendene's counterclaim for a declaratory judgment of noninfringement. The Court now turns to Grendene's second counterclaim.
The dismissal is without prejudice in light of the fact that the Bradys intend to appeal the Summary Judgment Order. (See ECF No. 304, at 4-6.)
Both parties agree that Grendene's counterclaim for a declaratory judgment of invalidity is not moot. (ECF No. 304, at 2 ("Likewise, the Bradys do not believe that the mootness or standing doctrines provide a basis for dismissal of the counterclaims."); ECF No. 310, at 4 ("Grendene unequestionably has standing to seek a declaratory judgment of invalidity.") (emphasis omitted).) Instead, the Bradys argue that: (1) the Court should exercise its discretion to decline to hear Grendene's second counterclaim, or (2) the Court should dismiss Grendene's second counterclaim because Grendene has a covenant not to sue and "a judicial decision enforcing that covenant in its favor." (ECF No. 304, at 2-3; ECF No. 318, at 2.)
The Supreme Court's decision in Already, LLC v. Nike, Inc., 133 S. Ct. 721 (2013), is instructive. There, the Supreme Court held that, to moot a counterclaim for a declaratory judgment of invalidity where the alleged infringer has obtained a covenant not to sue from the trademark holder, the trademark holder has the "burden to show that it 'could not reasonably be expected' to resume its enforcement efforts against" the alleged infringer. Already, 133 S. Ct. at 727 (quoting Friends of the Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 167, 190 (2000)).
The Court finds that the Bradys have not satisfied their burden. While they are correct that the Court has ruled in Grendene's favor, the fact that they have filed a motion for reconsideration of the Summary Judgment Order, (ECF No. 305), and the fact that they intend to appeal the Summary Judgment Order, (see ECF No. 304, at 4-6), indicates that they have not shown that they "could not reasonably be expected to resume [their] enforcement efforts against" Grendene. Already, 133 S. Ct. at 727 (internal quotation marks and citation omitted). Accordingly, the Court finds that Grendene's second counterclaim for a declaratory judgment of invalidity is not moot.
Alternatively, the Bradys argue that this Court should stay or dismiss without prejudice Grendene's second counterclaim in order to save judicial resources. (ECF No. 304, at 4-6.) The Court disagrees. Assuming that the Bradys appeal the Summary Judgment Order, proceeding to trial on Grendene's second counterclaim would allow that issue to be presented for appeal in conjunction with the Summary Judgment Order and allow the Ninth Circuit to adjudicate all those issues at the same time. Accordingly, the Court finds that a stay or dismissal without prejudice is not warranted.
C. Grendene's Motion for Leave to File Summary Judgment Motion
Grendene has also asked for leave to file a summary judgment motion on their second counterclaim. (ECF No. 316.) The motion filing deadline in this case was May 29, 2015. (ECF No. 138, at 22.) Thus, Grendene must show good cause for failure to abide by this deadline. Fed. R. Civ. P. 6(b)(1). Grendene contends that good cause exists because a motion for summary judgment would conserve judicial resources. (ECF No. 316.) However, this argument ignores that a motion for summary judgment would delay this case, a case that has been pending for over three year. (See ECF No. 1.) Moreover, Grendene has failed to advance a single reason why it did not file a motion for summary judgment on its second counterclaim prior to the May 29, 2015, deadline. Accordingly, the Court finds that Grendene has failed to show good cause and thus DENIES Grendene's motion for leave to file a summary judgment motion, (ECF No. 316.)
D. Pretrial Motions
Additionally, currently pending are various Daubert and pretrial motions filed by the parties. (ECF Nos. 272, 273, 274, 275, 280, 281, 284.) Due to the change in this case's posture from when those motions were filed, many of the issues raised by the motions may be moot. Accordingly, the Court finds it appropriate to DENY WITHOUT PREJUDICE the parties' currently pending pretrial motions. To the extent that any of the issues raised in those motions are not moot, the parties will be able to renew those issues in their motions in limine. The Court will address scheduling issues relating to motions in limine at the pretrial conference, currently scheduled for October 2, 2015.
Additionally, as the Court is not considering those pretrial motions, the related motions to seal, (ECF Nos. 277, 291, 292, 293, 294), are also DENIED WITHOUT PREJUDICE. The documents currently lodged at ECF Nos. 278, 283, 286, and 288 will REMAIN SEALED without further consideration by the Court. To the extent that any renewed pretrial motion contain documents the parties wish to seal, they are directed to file new motions to seal and lodge the documents again.
E. Motion to Continue
Finally, the parties have filed a Joint Motion to Continue the Pretrial Deadlines. (ECF No. 357.) The parties argue that this Court's decisions on the Bradys' reconsideration motion, (ECF No. 305), and the potential dismissal of Grendene's counterclaims "may dramatically affect the scope and substance of the parties' responses to pending motions, pre-trial briefing, and compliance with other pre-trial deadlines." (ECF No. 357, at 1.) However, because the Court is denying the Bradys' motion for reconsideration and dismissing one of Grendene's counterclaims, the scope of the case has not been significantly altered and, in fact, has been narrowed. Accordingly, the Court does not find good cause to extend the current deadlines. Accordingly, the Court DENIES the parties' motion to continue pretrial deadlines.
VI. CONCLUSION
For the reasons stated above, IT IS HEREBY ORDERED that:
1. The Bradys' Motion for Reconsideration, (ECF No. 305), is DENIED;DATED: August 27, 2015
2. Grendene's First Counterclaim for a Declaratory Judgment of Noninfringement, (ECF No. 57 ¶¶ 12-15), is DISMISSED WITHOUT PREJUDICE;
3. Grendene's Motion for Leave to File Motion for Summary Judgment, (ECF No. 316), is DENIED;
4. The parties' Joint Motion to Continue Pretrial Deadlines, (ECF No. 357), is DENIED;
5. The parties pretrial motions, (ECF Nos. 272, 273, 274, 275, 280, 281, 284), and the related motions to seal, (ECF Nos. 277, 291, 292, 293), are DENIED WITHOUT PREJUDICE; and
6. The documents currently lodged under seal at ECF Nos. 278, 283, 286, and 288 will REMAIN UNDER SEAL without further consideration by the Court.
/s/_________
HON. GONZALO P. CURIEL
United States District Judge