Ketab Corp v. Mesriani and Associates, P.C. et al

Filing 248

ORDER re: Plaintiff Ketab Corp.'s Motions in Limine [209, 210, 211] by Judge Ronald S.W. Lew. 1)The Court GRANTS in part Plaintiff's Motion in Limine #1 209 . 2)The Court GRANTS Plaintiff's Motion in Limine #2 210 . 3.The Court DENIES Plaintiff's Motion in Limine #3 211 . SEE ORDER FOR COMPLETE DETAILS. (jre)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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12 KETAB CORP.,
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Plaintiff,
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v.
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MESRIANI LAW GROUP; RODNEY )
MESRIANI; SEYED ALI
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LIMONADI; STUDIO
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CINEGRAPHIC LOS ANGELES dba )
IRTV; and MELLI YELLOW
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PAGES, INC.,
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Defendants.
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CV 14-07241-RSWL-MRWx
ORDER re: Plaintiff
Ketab Corp.’s Motions in
Limine [209, 210, 211]

Currently before the Court are Plaintiff Ketab

23 Corp.’s (“Plaintiff”) Motions in Limine Nos. 1 through
24 3 [209, 210, 211].

Having reviewed all papers

25 submitted pertaining to this Motion, the Court NOW
26 FINDS AND RULES AS FOLLOWS:
27 1.

The Court GRANTS in part Plaintiff’s Motion in

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Limine #1 [209].
1

1 2.

The Court GRANTS Plaintiff’s Motion in Limine #2

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[210].

3 3.

The Court DENIES Plaintiff’s Motion in Limine #3

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[211].

5 A.

Plaintiff’s Motion in Limine #1

6

Pursuant to § 33(b) of the Lanham Act, registration

7 of an incontestable mark is “conclusive evidence of the
8 validity of the registered mark and of the registration
9 of the mark, or the registrant’s ownership of the mark,
10 and of the registrant’s exclusive right to use the
11 registered mark, in commerce.”

15 U.S.C. § 1115(b).

12 Once a mark is deemed incontestable, the registrant’s
13 “exclusive right to use the mark” is “subject to the
14 conditions of § 15 and the seven defenses enumerated in
15 § 33(b) itself.”1

Park’N Fly, Inc. v. Dollar Park and

16 Fly, Inc., 469 U.S. 189, 196 (1985); see also 15 U.S.C.
17 § 1065 (Section 15 of the Lanham Act); KP Permanent
18 Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d
19 596, 603 (9th Cir. 2005).

Accordingly, the statutorily

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The defenses enumerated under § 33(b) are: (1) fraudulent
registration; (2) abandonment; (3) that the registered mark is
being used by or with the permission of the registrant or a
person in privity with the registrant, so as to misrepresent the
source of the goods or services on or in connection with which
the mark is used; (4) fair use defense; (5) prior use defense;
(6) that the infringing mark was registered and used prior to the
publication of the registrant’s mark and has not been abandoned;
(7) that the mark has been or is being used to violate antitrust
laws; (8) that the mark is functional; or (9) that equitable
principles, including laches, estoppel, and acquiescence, are
applicable. 15 U.S.C. § 1115(b). Section 15 provides that “no
incontestable right shall be acquired in a mark which is the
generic name for the goods or services or a portion thereof, for
which it is registered.” 15 U.S.C. § 1065.
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1 enumerated defenses are the only permissible defenses
2 to an action to enjoin infringement of an incontestable
3 trademark.

See Park’N Fly, 469 U.S. at 196.

4 Importantly, an incontestable mark may not be
5 challenged as merely descriptive.
6

Id.

Factual assertions in pleadings and pretrial

7 orders, unless amended, are considered judicial
8 admissions conclusively binding on the party who made
9 them.

Am. Title Ins. Co. v. Lacelaw Corp., 861 F.2d

10 224, 226 (9th Cir. 1988).

Here, the parties admit in

11 the Final Pretrial Conference Order that Plaintiff’s
12 “08" Mark is incontestable.
13 Order ¶ 12.

Final Pretrial Conference

The parties also admit that Defendants do

14 not challenge the validity of the “08" Mark based on
15 fraud.

Id. at ¶ 13.

These admissions are binding on

16 both parties.
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Because the incontestability of the “08" Mark is

18 established, Defendants may not challenge the validity
19 of the “08" Mark under any defenses that are not
20 enumerated in § 15 and § 33(b) of the Lanham Act.
21 Accordingly, the Court GRANTS in part Plaintiff’s
22 Motion in Limine #1.

The only remaining defenses that

23 may be raised by Defendants are for (1) genericness and
24 (2) abandonment.2
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2

The Court is aware of Defendants’ pending Motion for Leave

26 to Amend Pretrial Conference Order [215] to amend the Final
27 Pretrial Conference Order to include the defense of laches.
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If
the Court grants leave to amend, the equitable defense of laches
may be raised as an enumerated defense in § 33(b) of the Lanham
Act.
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1 B.

Plaintiff’s Motion in Limine #2

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Federal Rule of Civil Procedure 26(a)(1)(A)

3 requires a party to disclose, among other things, “the
4 name . . . of each individual likely to have
5 discoverable information” and “a copy-or a description
6 by category and location-of all documents,
7 electronically stored information, and tangible things
8 that the disclosing party has in its possession,
9 custody, or control and may use to support its claims
10 or defenses, unless the use would be solely for
11 impeachment.”

Fed. R. Civ. P. 26(a)(1)(C).

A party

12 must make its initial disclosures within 14 days of the
13 parties’ Rule 26(f) conference.
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Id.

Here, the parties’ Rule 26(f) conference occurred

15 on January 9, 2015.
16 ECF No. 44.

See Joint Rule 26(f) Report 2:4,

The parties agreed to exchange their

17 initial disclosures by February 20, 2015.
18 13.

Id. at 5:10-

Plaintiff asserts that Defendants made their

19 Initial Disclosures on December 21, 2015, and
20 Defendants do not contest that assertion.

Defendants

21 Initial Disclosures are untimely, and Defendants
22 violated their obligations to properly disclose
23 evidence and witnesses in accordance with Rule 26(a).
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“Rule 37(c)(1) gives teeth to these requirements by

25 forbidding the use at trial of any information required
26 to be disclosed by Rule 26(a) that is not properly
27 disclosed.”

Yeti by Molly, Ltd. v. Deckers Outdoor

28 Corp., 259 F.3d 1101, 1106 (9th Cir. 2001).
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Under Rule

1 37, exclusion of evidence not disclosed is appropriate
2 unless the failure to disclose was substantially
3 justified or harmless.

Hoffman v. Constr. Protective

4 Servs., Inc., 541 F.3d 1175, 1179 (9th Cir. 2008).

The

5 burden to prove that the failure was substantially
6 justified or harmless is on the party facing sanctions.
7 Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d
8 1101, 1107 (9th Cir. 2001).
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Defendants’ only argument is that the timing of its

10 initial disclosure was substantially justified because
11 nearly all of Plaintiff’s witnesses and documents were
12 identified on the date of the discovery cut-off and
13 several months later.

However, a party is not excused

14 from timely making its initial disclosures because it
15 challenges the sufficiency of another party’s
16 disclosures or because another party has not made its
17 disclosures.

Fed. R. Civ. P. 26(a)(1)(E).

Defendants’

18 initial disclosure was made several months after the
19 deadline imposed under the Federal Rules of Civil
20 Procedure.

Defendants’ failure to make its initial

21 disclosure in a timely manner is not substantially
22 justified, and Defendants should not be permitted to
23 present the information or witnesses contained in their
24 initial disclosure at trial.
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Defendants also do not meet their burden to show

26 that the delay was harmless because Defendants do not
27 argue that their failure to timely disclose was
28 harmless.

See Yeti, 259 F.3d at 1107.
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Accordingly,

1 the Court GRANTS Plaintiff’s Motion in Limine #2.
2 C.

Plaintiff’s Motion in Limine #3

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Issue preclusion, or collateral estoppel, bars

4 relitigation of issues adjudicated in an earlier
5 proceeding if three requirements are met: (1) the issue
6 necessarily decided at the previous proceeding is
7 identical to the one which is sought to be relitigated;
8 (2) the first proceeding ended with a final judgment on
9 the merits; and (3) the party against whom collateral
10 estoppel is asserted was a party or in privity with a
11 party at the first proceeding.

Reyn’s Pasta Bella, LLC

12 v. Visa USA, Inc., 442 F.3d 741, 746 (9th Cir. 2006).
13 A federal court must give to a state-court judgment the
14 same preclusive effect as would be given that judgment
15 under the law of the State in which the judgment was
16 rendered.

Migra v. Warren City School Dist. Bd. of

17 Educ., 465 U.S. 75, 81 (1984).
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The party seeking to assert collateral estoppel has

19 the burden of proving all the requisites for its
20 application.
21 Cir. 1994).

In re Berr, 172 B.R. 299, 306 (B.A.P. 9th
“To sustain this burden, a party must

22 introduce a record sufficient to reveal the controlling
23 facts and pinpoint the exact issues litigated in the
24 prior action.

Any reasonable doubt as to what was

25 decided by a prior judgment should be resolved against
26 giving it collateral estoppel effect.”
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Id.

Here, Plaintiff has not met its burden to show that

28 collateral estoppel should apply.
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Specifically,

1 Plaintiff does not show whether the validity of the
2 marks at issue in the 1995 lawsuit was litigated, and
3 that the Judgment was a “judgment on the merits.”
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“Ordinarily, stipulated or consent judgments do not

5 provide a basis for collateral estoppel” because the
6 “very purpose of a stipulated or consent judgment is to
7 avoid litigation, so the requirement of actual
8 litigation will always be missing.”

Id.

However, such

9 judgment may be given preclusive effect if that was the
10 intent of the parties.

Id.

The intent of the parties

11 can be inferred either from the judgment or the record.
12 Id.
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Here, it cannot be inferred from the Judgment or

14 Permanent Injunction that any preclusive effect should
15 be given to the validity of Plaintiff’s Marks.
16 Additionally, Plaintiff merely provides the court
17 docket as the record for the 1995 lawsuit.

See Decl.

18 of Marina Manoukian, Ex. A, ECF No. 238-2.

This

19 exhibit is insufficient to apprise the Court of what
20 was litigated in the 1995 lawsuit.

The Court cannot

21 infer from the record whether the parties intended to
22 give preclusive effect to the issue of the validity of
23 Plaintiff’s Marks.
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In any case, both claim and issue preclusion are

25 affirmative defenses that must be pled, or they are
26 waived.

Fed. R. Civ. P. 8(c)(1); Inouye v. Kemna, 504

27 F.3d 705, 709 n. 3 (9th Cir. 2007); Kern Oil & Refining
28 Co. v. Tenneco Oil Co., 840 F.2d 730, 735 (9th Cir.
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1 1988).

Plaintiff did not raise a res judicata defense

2 in its Answer to Defendants’ Counterclaim [32].
3 Plaintiff also did not argue in its motions to dismiss
4 the Defendants’ Counterclaims that the issue of
5 validity was established by collateral estoppel.
6 Additionally, Plaintiff did not raise a collateral
7 estoppel defense in Final Pretrial Conference, and it
8 is not included in the Final Pretrial Conference Order.
9 Thus, Plaintiff waived its res judicata defense.
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Accordingly, the Court DENIES Plaintiff’s Motion in

11 Limine #3.
12 IT IS SO ORDERED.
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14 DATED: March __, 2016
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HONORABLE RONALD S.W. LEW
Senior U.S. District Judge

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