Oracle America, Inc. v. Myriad Group AG

Filing 60

ORDER, Set/Reset Deadlines as to 59 Preliminary Injunction, and Partial Stay of Court Order., Motions terminated: 59 Ex Parte MOTION for Temporary Restraining Order filed by Oracle America, Inc.. Responses due by 12/8/2011. Replies due by 12/13/2011.. Signed by Judge ARMSTRONG on 11/30/11. (lrc, COURT STAFF) (Filed on 12/1/2011)

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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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ORACLE AMERICA, INC.,

Case No: C 10-05604 SBA

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Plaintiff,
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vs.
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MYRIAD GROUP AG,

ORDER DENYING MOTION FOR
TEMPORARY RESTRAINING
ORDER and SETTING BRIEFING
SCHEDULE ON MOTION FOR
PRELIMINARY INJUNCTION

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Defendant.

Dkt. 59

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The parties are presently before the Court on Plaintiff’s ex parte motion for

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temporary restraining order (“TRO”) and order to show cause regarding preliminary

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injunction, and request for partial stay of court order. Dkt. 59. Having read and

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considered the papers filed in connection with this matter and being fully informed, the

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Court hereby DENIES the motion for TRO and GRANTS Plaintiff’s alternate request for

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an order directing Defendant to show cause why a preliminary injunction should not be

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issued.

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I.

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BACKGROUND
The instant action arises from a software licensing dispute between Plaintiff Oracle

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America, Inc. and Defendant Myriad Group AG. The Complaint filed by Plaintiff on

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December 10, 2010, alleges four claims for relief, as follows: (1) trademark infringement

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under the Lanham Act, 15 U.S.C. § 1125(a); (2) copyright infringement, 17 U.S.C. § 101,

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et seq.; (3) breach of contract; and (4) violation of California’s Unfair Competition Law

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(“UCL”), Cal. Bus. & Prof. Code § 17200. Dkt. 1. Thereafter, Defendant filed a motion to

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compel arbitration of all claims alleged in the pleadings. Dkt. 18.

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On August 15, 2011, Defendant submitted a demand for arbitration with the

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International Centre for Dispute Resolution (“IDR”) with respect to the claims alleged by

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Plaintiff in this action. Shohet Decl. ¶ 4 & Ex. B, Dkt. 59-1, 59-3. Approximately two

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weeks later, on September 1, 2011, the Court issued its ruling on Defendant’s pending

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motion to compel arbitration. The Court granted Defendant’s motion with respect to

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Plaintiff’s claim for breach of contract and denied the motion with respect to all other

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claims. Dkt. 42 at 12.1 In addition, the Court referred the matter to a magistrate judge of

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this Court for an early, mandatory settlement conference and held the action in abeyance

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pending the conclusion of the settlement conference.

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The settlement conference took place on November 3, 2011 before Magistrate Judge

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Laporte, but the case did not settle. Dkt. 57. The next day on November 4, 2011,

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Defendant reinitiated the arbitration proceeding before the IDR by designating a proposed

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arbitrator, thereby triggering a thirty-day period for Plaintiff to agree or propose an

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alternate arbitrator. Shohet Decl. ¶ 10; Pl.’s Mot. at 6.

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On November 29, 2011, Plaintiff filed the instant ex parte motion for TRO and order

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to show cause regarding preliminary injunction, and request for partial stay of court order.

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Dkt. 59. Plaintiff seeks to enjoin Defendant from proceeding with the arbitration before the

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IDR and to stay the portion of the Court’s September 1, 2011 Order directing the parties to

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arbitrate Plaintiff’s contract claim.

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II.

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DISCUSSION
A TRO under Federal Rule of Civil Procedure 65 is an extraordinary remedy that is

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generally reserved for emergency situations in which a party may suffer immediate

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irreparable harm. See Whirlpool Corp. v. Marshall, 445 U.S. 1, 20 n.33 (1980) (temporary

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After receiving the Court’s ruling, Plaintiff requested that Defendant dismiss its
demand for arbitration before the IDR, but Defendant refused to do so. Shohet Decl. ¶¶ 628 7.
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restraining orders used for “emergency situations”); c.f., Oakland Tribune, Inc. v. Chronicle

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Pub. Co., 762 F.2d 1374, 1377 (9th Cir. 1985) (delay in seeking injunctive weighs against a

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finding of urgency). No such emergency is evident in this action. Since August 15, 2011,

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Plaintiff has been aware of Defendant’s efforts to arbitrate all of the Plaintiff’s claims in a

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proceeding before the IDR. More recently on November 4, 2011, Defendant allegedly

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reinitiated the arbitration proceeding by designating a proposed arbitrator. Yet, Plaintiff

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waited until November 29, 2011 before filing the instant motion for TRO. In view of this

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delay, the Court, in its discretion, concludes that Plaintiff has not demonstrated that a

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sufficient exigency exists to justify imposition of a TRO. Rather, this matter is more

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appropriately heard in the context of Plaintiff’s motion for a preliminary injunction.

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Accordingly,

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IT IS HEREBY ORDERED THAT Plaintiff’s ex parte application for a TRO is

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DENIED. Plaintiff’s request for an order to show cause why a preliminary injunction

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should not issue is GRANTED. By no later than December 8, 2011, Defendant shall file its

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response to Plaintiff’s request for a preliminary injunction and request for partial stay.

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Plaintiff’s reply shall be filed by no later than December 13, 2011. No hearing will be held

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on the motion unless otherwise ordered by the Court.

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IT IS SO ORDERED.
Dated: November 30, 2011

_______________________________
SAUNDRA BROWN ARMSTRONG
United States District Judge

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