Bauer Bros, LLC v. Nike, Inc.

Filing 200

ORDER: The Judgment in this case (Doc. 181 ) and Order Taxing Costs (Doc. 192 ) are VACATED. The Motion for Attorney Fees filed by Nike (Doc. 184 ) and Motion to File Documents Under Seal (Doc. 185 ) are DENIED as premature. The Sealed Lodged Pro posed Documents (Doc. 186 ) shall not appear on the public record. The Clerk of the Court is instructed to re-open this case. A pretrial conference is set for 9/28/2012 at 10:00 AM in Courtroom 04. Signed by Judge William Q. Hayes on 9/10/2012. (mdc)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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BAUER BROS. LLC, a California limited
liability company,

CASE NO. 09cv500-WQH-BGS

Plaintiff,

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ORDER

vs.
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NIKE, INC., an Oregon Corporation,

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Defendant.

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NIKE, INC., an Oregon Corporation,
Counterclaimant,

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vs.
BAUER BROS. LLC, a California limited
liability company,

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Counterdefendant.

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HAYES, Judge:
On March 12, 2009, Bauer Bros. LLC ("Bauer") initiated this action by filing a

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Complaint against Nike, Inc. ("Nike") alleging unfair competition under the Lanham Act,

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unfair competition under California law, and common law trademark infringement related to

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two U.S. Trademarks held by Bauer. (ECFNo. 1). On October 8, 2010, Nike filed Amended

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Counterclaims seeking cancellation ofthe trademarks on the grounds of fraud upon the U.S.
Patent and Trademark Office. (ECF No. 43).
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09cv500-WQH-BGS

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On September 16, 2011, Nike filed a Motion for Summary Judgment on Liability (ECF

2 No.1 09), and Bauer filed aMotion for Summary Judgment on Nike' s Counterclaims (ECF No.
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112). On May 24, 2012, the Court granted Nike' s Motion for Summary Judgment on Liability,

4 concluding that "the trademark registrations held by Bauer ... are void ab initio and cannot be
5 used as the basis for a federal unfair competition or trademark infringement claim against
6 Nike." (ECF No. 180 at 12). The Court denied Bauer's Motion for Summary Judgment on
7 the Counterclaims, concluding that "Nike has shown sufficient evidence to support an
8 inference that Bauer committed fraud on the USPTO in obtaining federal registrations for the
9 trademarks .... '" [d. at 15. The Counterclaims filed by Nike remain pending before the Court.
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The entry ofJudgment by the Clerk ofthe Court on May 24,2012 was premature. (ECF

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No. 181). The Clerk of the Court is instructed to re-open this case so that the Court may

12 resolve the Counterclaims filed by Nike.

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The issuance ofan Order Taxing Costs by the Clerk ofthe Court on June 29, 2012 was

14 premature. (ECF No. 192). Pursuant to Local Rule 54.1, "the prevailing party is entitled to
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costs." (ECF No. 192). There is no prevailing party in this case, as claims remain pending

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before the Court and the case is not properly closed.

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CONCLUSION

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IT IS HEREBY ORDERED that the Judgment in this case (ECF No. 181) and Order

19 Taxing Costs (ECF No. 192) are VACATED.
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IT IS FURTHER ORDERED that the Motion for Attorney Fees filed by Nike (ECF No.

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184) and Motion to File Documents Under Seal (ECF No. 185) are DENIED as premature.

22 The Sealed Lodged Proposed Documents (ECF No. 186) shall not appear on the public record.
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The Clerk of the Court is instructed to re-open this case.

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A pretrial conference is set for September 28,2012, at 10 A.M. in Courtroom 4.

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IT IS SO ORDERED.

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27 Dated:

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WILLIAMQ.

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UNITED STAT

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09cv500-WQH-BOS