Levi Strauss & Co. et al v. AmericanJeans.com, Inc. et al

Filing 39

ORDER CONTINUING CASE MANAGEMENT CONFERENCE re 38 . Case Management Conference set for 8/26/2011 10:30 AM in Courtroom 3, 5th Floor, San Jose. Signed by Judge Jeremy Fogel on 7/19/11. (dlm, COURT STAFF) (Filed on 7/21/2011)

1
2
3
4
5
6
7
8
9
10
11
12
13
14

KILPATRICK TOWNSEND & STOCKTON LLP
GREGORY S. GILCHRIST (State Bar No. 111536)
TIMOTHY R. CAHN (State Bar No. 162136)
GIA L. CINCONE (State Bar No. 141668)
Two Embarcadero Center Eighth Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiff
LEVI STRAUSS & CO. and
LEVI STRAUSS & CO. EUROPE COMM. VA/SCA
BARTON S. SELDEN
GARTENBERG GELFAND WASSON & SELDEN LLP
220 Montgomery Street, 15th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile. [phone]
Email: [e-mail]
Attorney for Defendants
AMERICANJEANS.COM, INC., and
STEVEN LEIGH

15

UNITED STATES DISTRICT COURT

16

FOR THE NORTHERN DISTRICT OF CALIFORNIA

17

SAN JOSE DIVISION

18
19
20
21
22
23

LEVI STRAUSS & CO. and LEVI STRAUSS
& CO. EUROPE COMM. VA/SCA,
Plaintiffs,
v.
AMERICANJEANS.COM, INC., AND
STEVEN LEIGH, AND DOES 1 THROUGH
10,
Defendants.

Case No. CV10- 5340-JF (PSG)
FURTHER JOINT CASE
MANAGEMENT STATEMENT,
REQUEST FOR CONTINUANCE
AND ------------------ ORDER
[PROPOSED]
Date:
July 22, 2011
Time:
10:30 a.m.
Courtroom: 3, 5th Floor
Hon. James Fogel

24
25
26
27
28
FURTHER JOINT CASE MANAGEMENT STATEMENT, REQUEST
FOR CONTINUANCE AND [PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

Plaintiffs Levi Strauss & Co. and Levi Strauss & Co. Europe Comm. VA/SCA (“LSE”)

2

(jointly “Levi Strauss”), and Defendants Americanjeans.com, Inc. and Steven Leigh

3

(collectively, “Defendants”) jointly submit this Further Case Management Statement, Request

4

for Continuance and Proposed Order.

5

With the assistance of the mediator, the parties are in the process of finalizing a

6

settlement in both this case and in Levi Strauss & Co and Levi Strauss & Co. Europe Comm.

7

VA/SCA. v. Joon Hahn and IDW International, Inc., Case No. CV10-5342-JW, which is

8

pending before Judge Ware. A status conference date is currently set in the latter case for

9

September 19, 2011. Thus, the parties request a continuance of the Further Case Management

10

Conference in the instant case, until September 16, 2011, or another date that is convenient for

11

the Court, to allow the parties to conclude settlement and to dismiss the case (which the parties

12

expect will occur well in advance of that time).

13

As to all other matters, the parties believe that the previously filed Joint Case

14

Management Conference Statement dated May 31, 2011 [Docket No. 30], remains accurate,

15

except paragraphs 4, 5, 7, 10 and 12, which are supplemented or changed here. The new

16

material in those paragraphs is shown in italics for the Court’s ease of reference.

17

1.

18

Levi Strauss’s first, second and third claims arise under the Lanham Act. This Court

19

has subject matter jurisdiction over those claims pursuant to 28 U.S.C. §§ 1331, 1338(a) and

20

1338(b) and 15 U.S.C. §1121, and supplemental jurisdiction over Levi Strauss’s state law

21

claims pursuant to 28 U.S.C. §1367. Levi Strauss’s seventh claim for relief based on European

22

trademark law was dismissed by order of this Court on April 11, 2011.

Jurisdiction and Venue.

23

2.

24

Levi Strauss & Co. is a Delaware corporation which has its principal place of business

25

in San Francisco, California. LSE is a Belgian corporation with its principal place of business

26

in Brussels, Belgium. Levi Strauss & Co. is the sole owner of several trademarks which it uses

27

on its jeans and casual apparel products and in connection with various retail services and

28

internet services in the clothing business. These trademarks include “LEVI’S,” the TAB

Facts.

FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

trademark, the ARCUATE trademark, “501,” “517,” “550,” and the HOUSEMARK

2

trademark. Levi Strauss & Co. owns trademark registrations for these trademarks throughout

3

the world, including the United States and Europe. LSE is the exclusive licensee of these

4

trademarks in Europe.

5

Levi Strauss alleges that Defendants have infringed Levi Strauss’s trademarks and have

6

unfairly competed with Levi Strauss in the United States and Europe. Among these claims,

7

Levi Strauss asserts that Defendants have engaged in practices that deceive and confuse

8

consumers around the world, including in the United States and Europe, by overuse and misuse

9

of Levi Strauss’s trademarks and other proprietary material on the www.americanjeans.com

10

website and in conjunction with selling their products, delivery of substandard and out of

11

season product, and sale of branded LEVI’s® products into the European Union without Levi

12

Strauss’s consent.

13

Defendants filed a Motion to Dismiss Levi Strauss’s Seventh Affirmative defense

14

relating to Levi Strauss’s claims under European law, and the Court granted that motion on

15

April 11, 2011. Defendants further deny any improper use of Levi Strauss trademarks on the

16

Americanjeans.com website, and any implication that the products sold on the website are not

17

genuine Levi Strauss products.

18
19

Defendants assert that Steven Leigh is an officer, director and shareholder of
Americanjeans.com, Inc., and that he is an individual residing in California.

20

Principal Factual Issues in Dispute:

21

a.

22
23
24
25
26
27
28

Whether Defendants’ use of Levi Strauss’s trademarks is likely to create

confusion about whether its retail services are authorized or sponsored by Levi Strauss.
b.

Whether Defendants sell products that have been defaced or altered and

whether Defendants take measures to conceal the nature of their products from their customers.
c.

Whether and to what extent Levi Strauss has been damaged by

Defendants’ actions.
d.

Whether Defendants have used Levi Strauss’s trademarks in such ways

so as to generate search term priority and diverting consumer attention to their unauthorized
-2-

FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

online store.

2

e.

Whether Defendants’ infringement, if any, of Levi Strauss’s trademarks

4

f.

Whether Defendant’s use of Levi Strauss’s marks is likely to diminish

5

the distinctiveness of the marks.

3

is willful.

6

3.

7

Legal Issues in dispute:

Legal Issues in Dispute

8

a.

Whether or to what extent Levi Strauss is entitled to injunctive relief.

9

b.

Whether or what extent Levi Strauss is entitled to monetary relief.

10

4.

11

As the parties are in the process of settling the case, no additional motions are

Motions.

12

anticipated at this time. If, however, settlement negotiations should unexpectedly fail, Levi

13

Strauss may file a motion to amend the Complaint and a summary judgment motion at the

14

appropriate time. Levi Strauss also may file a Petition for Judicial Assistance under 28 U.S.C.

15

§ 1782(a) for on order permitting Levi Strauss to obtain discovery for use abroad relating to

16

Defendants’ alleged infringement in Europe. Alternatively, in the event that the anticipated

17

settlement is not finalized, Levi Strauss may seek leave to file an amended pleading that would

18

renew its Seventh Claim in light of an intervening European Court of Justice decision that – in

19

Plaintiff’s view -- has bearing on the Court’s earlier ruling regarding Defendants’ motion to

20

dismiss.

21

Defendants may file a summary judgment motion regarding the Lanham Act claims.

22

5.

23

The Parties agree that the pleadings may be amended as the Court may permit pursuant

24

Amendments of Pleadings.

to joint request of the parties or by motion.

25

6.

26

Counsel for both parties have informed their respective clients of the duty to preserve

Evidence Preservation

27

evidence, including electronic evidence, relevant to the claims and defenses in this case.

28

///
-3-

FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

7.

2

The parties exchanged initial disclosures on June 6, 2011.

3

8.

4

The parties expect to agree upon a stipulation regarding the entry of a protective order

Disclosures.

Discovery Plan.

5

governing documents and information to be disclosed in the course of this litigation. The

6

parties anticipate exchanging document requests and other written discovery and cooperating

7

in arranging depositions of pertinent party and non-party witnesses. The parties do not propose

8

any other changes with regard to the timing, form, or requirement for disclosures under FRCP

9

Rule 26(a). The parties have not agreed to any limitations on the subject matter of discovery,

10

and are to complete discovery within the time limits to be set by the Court. The parties further

11

anticipate completing fact discovery followed by completion of expert discovery. Should the

12

need arise at a later date to amend these deadlines, they may be modified by stipulation and

13

order or motion supported by good cause.

14

9.

15

N/A.

16

10.

17

On May 13, 2011, Defendants filed an Administrative Motion to Consider Whether

Class Actions

Related Cases.

18

Cases Should be Related, pursuant to Local Rule 3012 (Dkt. No. 27), asking the Court to

19

consider whether the instant case should be related to Levi Strauss & Co and Levi Strauss &

20

Co. Europe Comm. VA/SCA. v. Joon Hahn and IDW International, Inc., Case No. CV10-5342-

21

JW, which is pending before Judge Ware. The motion was denied by court order on June 16,

22

2011 (Dkt No. 36). Defendants reserve the right to renew the motion if the anticipated

23

settlement is not finalized.

24

11.

25

Levi Strauss will seek damages in the amount of Defendants’ profits from the sale of

Relief Sought.

26

infringing goods. Given that discovery with respect to damages has not yet begun, Levi

27

Strauss is unable to compute damages at this time. Levi Strauss may seek recovery of

28

extraordinary damages and recovery of its attorneys’ fees depending on whether Defendants’
-4-

FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

conduct is shown to have been willful. Levi Strauss also seeks injunctive relief.

2

12.

3

The Court referred this case to Early Neutral Evaluation on June 6, 2011 (Dkt No. 34).

Reference to Arbitration.

4

At the request of both parties, Richard C. Collier was appointed as the Evaluator on June 22,

5

2011 (Dkt. No. 37). In reality, all parties had already appeared at an Early Neutral

6

Evaluation conducted by Mr. Collier in the case pending before Judge Ware, and both cases

7

are a part of the tentative settlement referred to above. The evaluator has already reported this

8

to the ADR coordinator.

9

13.

Consent to Magistrate Judge for All Purposes.

10

The parties have declined to proceed before a magistrate judge for all purposes.

11

14.

12

The parties do not believe the case is suitable for reference to binding arbitration, a

13

Other References.

special master, or to the Judicial Panel on Multidistrict Litigation.

14

15.

15

The Court has granted Defendants’ Motion to Dismiss Levi Strauss’s Seventh

16

Narrowing of Issues.

Affirmative Defense, thereby narrowing the issues.

17

16.

18

The parties do not believe this case is suitable for an expedited schedule.

19

17.

20

The parties propose the following discovery and court dates:

Expedited Schedule.

Proposed Schedule.

Fact Discovery Cutoff:
Expert Disclosures:
Rebuttal Expert Disclosures:
Expert Discovery Cut-off:
Deadline for Dispositive Motions:
Final Pretrial Conference Date:
Trial Date:

21
22
23
24
25
26

///

27

January 20, 2012
February 3, 2011
February 17, 2012
March 2, 2012
March 30, 2012
May 18, 2012
June ___, 2012

///

28
-5-

FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

///

2

18.

3
4
5
6
7
8
9
10
11
12
13
14

Trial

The parties expect that the trial will last five court days. The Complaint and Answer
both request a trial by jury. The parties do not believe bifurcation is a viable alternative in this
case.
19.

Disclosure of Non-party interested entity.

Levi Strauss has filed its Disclosure at the time it filed the Complaint. In compliance
with this Court’s Standing Order, Levi Strauss again states that there are no interested nonparty entities to report. Defendants filed their Disclosure on February 14, 2011, also
confirming that there are no non-party interested entities or persons.
20.

Other Items.

None.
DATED: July 14, 2011

15

Respectfully submitted,
KILPATRICK, TOWNSEND & STOCKTON LLP

16
17

By: /s/ Gregory S. Gilchrist
Gregory S. Gilchrist

18

Attorneys for Plaintiff
LEVI STRAUSS & CO and LEVI STRAUSS &
CO. EUROPE COMM. VA/SAC

19
20
21

DATED: July 14, 2011

GARTENBERG GELFAND WASSON & SELDEN LLP

22
23
24
25
26

By: /s/ Barton Selden
Barton Selden
Attorneys for Defendants
AMERICANJEANS.COM, INC. AND STEVEN
LEIGH

27
28
-6-

FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

------------------- CASE MANAGEMENT ORDER
[PROPOSED]

2
3

The Further Joint Case Management Statement and Proposed Order is hereby adopted

4

by the Court as the Case Management Order for the case, and the parties are ordered to comply

5

with this Order.

6

In addition, the Court, having considered the request of the parties, VACATES the
22
8/26/11
Case Management Conference set for July ---- 2011 and sets the new date for _______.
15,

7
8
9
10
11
12
13
14

DATED: 7/19/11

15

The Honorable Jeremy Fogel
United States District Judge

16
17
18
19
20
21
22
23
24
25
26
27
28
FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)

1

GENERAL ORDER 45 ATTESTATION

2

I, Gregory S. Gilchrist, am the ECF user whose ID and password are being used to file

3

this Further Joint Case Management Statement. In compliance with General Order 45, X.B., I

4

hereby attest that counsel for Defendant has concurred in this filing.

5
6
7

DATED: July 14, 2011

By

8
9

/s/ Gregory S. Gilchrist
Gregory S. Gilchrist

63609164 v1

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
FURTHER JOINT CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER

Levi Strauss & Co. v. AmericanJeans.com
Case No. CV10- 5340-JF (PSG)