Safetyweb Inc v. Intercede Ltd

Filing 32

(IN CHAMBERS): ORDER TO SHOW CAUSE by Judge David O. Carter: WHY THE PARTIES SHOULD NOT BE REALIGNED: (See document for details.) The Court will afford the parties the courtesy of responding to the idea of realignment. Any response must be filed by May 17, 2012. The failure to respond will be deemed consent to realignment, such that Intercede shall be designated as the plaintiff and SafetyWeb shall be designated as the defendant. (rla)

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No. SACV 12-0004 DOC (RNBx)

Date: May 10, 2012

Title: SAFETYWEB, INC v. INTERCEDE LTD.
PRESENT:
THE HONORABLE DAVID O. CARTER, JUDGE
Julie Barrera
Courtroom Clerk

Not Present
Court Reporter

ATTORNEYS PRESENT FOR PLAINTIFFS: ATTORNEYS PRESENT FOR DEFENDANTS:
NONE PRESENT

NONE PRESENT

PROCEEDING (IN CHAMBERS): ORDER TO SHOW CAUSE WHY THE PARTIES SHOULD
NOT BE REALIGNED
Before the Court is a Motion to Dismiss the Fifth and Sixth Claims of SafetyWeb, Inc.’s
(“SafetyWeb”) First Amended Complaint filed by Defendant Intercede Ltd.(“Intercede”) (Docket 21)
(“Motion to Dismiss”). Upon the Court’s initial examination of the First Amended Complaint (“FAC”)
and Motion to Dismiss, it immediately became clear that the present structure of this case is somewhat
unusual and far from ideal. SafetyWeb, the present plaintiff, asserts six claims: four claims for
declaratory relief – non-infringement, non-dilution, non-cybersquatting, and unenforceability – and
two claims under 15 U.S.C. § 1119 (“Section 1119") – rectification and cancellation. Intercede, the
present defendant, asserts counterclaims for trademark infringement, false designation of origin, unfair
competition, and contributory and vicarious liability. Quite simply, the parties are switched. It appears
that SafetyWeb only added its final two claims for rectification and cancellation to its FAC so that they
could operate as counterclaims to Intercede’s counterclaims. This litigation does not need to be so
complex. Intercede was somewhat understandably perplexed by the inclusion of Section 1119 claims in
a complaint, as Section 1119 claims are typically expressed by a trademark infringement defendant as
counterclaims. See Empresa Cubana del Tabaco v. Culbro Corp., 541 F.3d 476, 478-79 (2d Cir. 2008);
Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1325 (Fed. Cir. 2008). If the present structure
has caused both the parties and the Court some confusion at this early stage, there is no telling what
effect it would have on a jury.
The Court is thus considering sua sponte ordering realignment of the parties. Plumtree
MINUTES FORM 11 DOC
CIVIL - GEN

Initials of Deputy Clerk: jcb
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Software, Inc. v. Datamize, LLC is exactly on point. No. C 02-5693 VRW, 2003 WL 25841157 (N.D.
Cal. Oct. 6, 2003). There, the court held that it had the authority to realign the parties and chose to
exercise that power primarily because the original defendant was the “natural plaintiff” and the original
plaintiff was more appropriately the defendant. Id. at *2-3. The original plaintiff’s declaratory action
for noninfringement and invalidity was essentially a defense to the original defendant’s counterclaim;
the same is true here. Id. at *3. It simply makes logical sense for the ease of all future motions, as well
as any potential trial, to label the parties consistently with their positions in this litigation. Intercede’s
claims of trademark infringement and the like are more appropriately classified as those of a plaintiff,
while SafetyWeb’s requests for declaratory relief and cancellation are typically asserted by the
defendant to a trademark infringement action.
The Court will afford the parties the courtesy of responding to the idea of realignment.
Any response must be filed by May 17, 2012. The failure to respond will be deemed consent to
realignment, such that Intercede shall be designated as the plaintiff and SafetyWeb shall be designated
as the defendant.
The Clerk shall serve this minute order on all parties to the action.

MINUTES FORM 11 DOC
CIVIL - GEN

Initials of Deputy Clerk: jcb
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