Carter v. Yahoo Holdings, Inc.

Filing 74

ORDER Denying 66 72 Motions for Award of Compensation; Order to Show Cause. Show Cause Response due by 8/24/2018. Signed by Judge Kandis A. Westmore on 8/6/2018. (kawlc2, COURT STAFF) (Filed on 8/6/2018)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

BRIAN K. CARTER,
Plaintiff,

8
9

ORDER DENYING MOTIONS FOR
AWARD OF COMPENSATION; ORDER
TO SHOW CAUSE

v.

10

OATH HOLDINGS INC.,

11
United States District Court
Northern District of California

Case No. 17-cv-07086-KAW

Defendant.

Re: Dkt. Nos. 66, 72

12
13

Plaintiff brought the instant case against Defendant Oath Holdings, Inc., alleging that

14

Defendant infringed on Plaintiff's registered trademark "The House of Figurine Sculptures.com."

15

(Compl. at 2, Dkt. No. 1-1.) Plaintiff's claim appears to be based on the results of a web search

16

using Defendant's search engine, Yahoo. (See Compl. at 3, Exh. C.) Pending before the Court are

17

Plaintiff's two motions for an award of compensation. (Dkt. Nos. 66, 72.) Having considered the

18

parties' filings, and for the reasons stated below, the Court DENIES Plaintiff's motions for an

19

award of compensation, and issues an order to show cause why the case should not be dismissed

20

for failure to prosecute.

21

I.

BACKGROUND

22

On June 14, 2018, Plaintiff filed an "Administrative Motion for Award of Compensation

23

and Stop the Prejudicing of Plaintiff." (Dkt. No. 66.) Plaintiff's motion is based on "Defendant

24

s[elling] Plaintiff's case to Verizon Communications Inc. along with two counterfeit marks" before

25

Plaintiff's case could be adjudicated. (Id. at 3.) Plaintiff asserts the purchase ended the case, and

26

that he is entitled to compensation of $5 million for the sale of the duplicate marks. (Id. at 5-6.)

27
28

On June 21, 2018, Judge Freeman, the then-presiding judge, granted Defendant's motion to
dismiss the complaint, Defendant's motion for a more define statement, and Defendant's motion

1

for a protective order staying discovery. (Freeman Order, Dkt. No. 68 at 1.) Judge Freeman

2

concluded that the complaint failed to plead that Defendant "uses" Plaintiff's mark because

3

"merely returning search results to purportedly display a trademark does not show that Defendant

4

is liable under the Lanham Act." (Id. at 4.) To the extent Plaintiff was alleging that Defendant

5

used "two active counterfeit marks identical to Plaintiff's," Judge Freeman found that such

6

allegations were conclusory and "not entitled to be assumed true." (Id.) Judge Freeman also

7

concluded that there were insufficient allegations of confusion. (Id. at 5.) Plaintiff was given until

8

July 23, 2018 to file an amended complaint. (Id. at 8.)

9

The case was subsequently reassigned to the undersigned. (Dkt. No. 70.) On June 28,
2018, Defendant filed its opposition to Plaintiff's June 14, 2018 motion for an award of

11
United States District Court
Northern District of California

10

compensation, arguing that the motion was moot because the complaint had been dismissed. (Dkt.

12

No. 71 at 1.) Defendant also argued that Plaintiff failed to explain why Verizon's acquisition of

13

Yahoo would "end the case" or why it would entitle Plaintiff to $5 million. (Id.)

14

Plaintiff's reply was due on July 5, 2018. Plaintiff did not file a reply. Instead, on July 6,

15

2018, Plaintiff filed a second "Administrative Motion for Award of Compensation and Stop

16

Prejudicing Plaintiff Brian K. Carter." (Dkt. No. 72.) As with the first motion, Plaintiff argued

17

that Defendant "sold Plaintiff's case and the two counterfeit marks in question to a third-party

18

Verizon Communications." (Id. at 1-2.) Based on the sale, Plaintiff asserted a right to

19

compensation of $5 million. (Id. at 9.) Plaintiff cited no legal or statutory authority for this

20

proposition.

21

On July 20, 2018, Defendant filed its opposition to Plaintiff's July 6, 2018 motion for an

22

award of compensation, making the same arguments as those in its prior opposition. (Dkt. No. 73

23

at 1.) No reply was filed.

24
25

II.

DISCUSSION

The Court DENIES Plaintiff's motions for an award of compensation. First, as of the date

26

of this order, Plaintiff has not filed an amended complaint. Without an operative complaint,

27

Plaintiff is not entitled to any relief. Second, Plaintiff cites no legal authority for why Verizon's

28

acquisition of Yahoo would end the case, and no factual basis for why Plaintiff's damages would
2

1

be valued at $5 million. Thus, Plaintiff fails to establish any basis for the relief sought.1
Because Plaintiff has failed to file his amended complaint, the Court also ORDERS

2
3

Plaintiff to show cause, by August 24, 2018, why the case should not be dismissed for failure to

4

prosecute by: (1) filing an amended complaint that complies with the requirements of Judge

5

Freeman's June 21, 2018 order, and (2) explaining why Plaintiff failed to timely file the amended

6

complaint. Failure to complete both tasks will result in the dismissal of this case for failure to

7

prosecute.

8

III.

CONCLUSION

Plaintiff's motions for compensation are DENIED. Plaintiff's response to the order to show

9

cause must be filed by August 24, 2018; failure to timely comply will result in the case being

11
United States District Court
Northern District of California

10

dismissed without prejudice for failure to prosecute.
IT IS SO ORDERED.

12
13

Dated: August 6, 2018
__________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

14
15
16
17
18
19
20
21
22
23
24
25
26
1

27
28

The Court also notes that, as Defendant points out, Plaintiff improperly describes these motions
as administrative motions. Per Rule 7-11, motions for administrative relief are limited to
miscellaneous administrative matters, such as motions to exceed the page limit or to file
documents under seal.
3