Rolex Watch U.S.A., Inc. v. Leland Stanford Hoffman, Jr.

Filing 52

OPINION & ORDER: Granting Plaintiff's E-mail Motion to Enforce Settlement Agreement. Signed on 1/24/13 by Magistrate Judge Paul Papak. (Corrected to include Order attachment.) (gm)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON

ROLEX WATCH U.S.A., INC.,
Plaintiff,
3:12-CV-736-PK
OPINION AND
ORDER

v.

LELAND STANFORD HOFFMAN, JR.,
Defendant.
PAPAK, Magistrate Judge:
PlaintiffRolex Watch U.S.A., Inc. ("Rolex") filed this action against defendant Leland
Stanford Hoffman, Jr. (doing business as Antique Time, www.rolexcrown.com, and
www.horologist.com), on April25, 2012, alleging Hoffman's liability for trademark infi·ingement
in violation of 15 U.S.C. § 1114, cybersquatting in violation of 15 U.S. C. § 1125(d)(l)(A), and
unfair competition in violation of 15 U.S.C. § 1125(a), and seeking money damages, an
accounting, injunctive relief to enjoin Hoffman from engaging in any further allegedly infringing
conduct, and award of its attomeyfees and costs. On November 15,2012, the parties advised the
court that they had settled their dispute in principle. Since that time, Hoffman has declined to

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sign, or fully to comply with the terms of, the pmiies' formal, written settlement agreement.
Now before the court is Rolex's constructive motion (#42) to enforce the pmiies'
settlement agreement. I have considered the motion, the pmiies' respective evidentiary proffers
in support thereof, oral argument on behalf of the parties, and all of the pleadings and papers on
file. For the reasons set forth below, Rolex's motion is granted.

LEGAL STANDARD
It is well-settled that the district courts have the inherent, equitable power summarily to

enforce agreements to settle cases pending before them. See, e.g., Callie v. Near, 829 F.2d 888,
890 (9th Cir. 1987), citing ivfid-South Towing Co. v. Har-Win, Inc., 733 F.2d 386, 389 (5th Cir.
1984); Aro Cm]J. v. Allied Witan Co., 531 F.2d 1368, 1372 (6th Cir. 1976); Autera v. Robinson,
419 F.2d 1197, 1200 (D.C. Cir. 1969); see also Dacanay v. }vfendoza, 573 F.2d 1075, 1078 (9th
Cir. 1978). Such power extends, however, only to "complete" settlement agreements as to all
material tetms of which the parties have agreed with the intent to be bound. Callie, 829 F.2d at
890, citing Ozyagcilar v. Davis, 701 F.2d 306, 308 (4th Cir. 1983), Gardiner v. A.H Robins Co.,
747 F.2d 1180, 1189 (8th Cir. 1984).
A motion to enforce a settlement agreement is in essence an action for specific
enforcement of a contract, and thus sounds in equity and is to be tried to the court. See Adams v.
Johns-lvfanville Cmp., 876 F.2d 702, 709-710 (9th Cir. 1989). As such, the comi may
appropriately hear evidence and make ultimate factual determinations in connection with such a
motion. See Stewart v. M.D.F., Inc., 83 F.3d 247,251 (8th Cir. 1996). Moreover, "[w]here
material facts concerning the existence or tem1s of an agreement to settle are in dispute, the
parties must be allowed an evidentiary hearing." Callie, 829 F.2d at 890, citing Russell v. Puget

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Sound Tug & Barge Co., 737 F.2d 1510, 1511 (9th Cir. 1984), Kukla v. National Distillers
Products Co., 483 F.2d 619, 621 (6th Cir. 1973).
MATERIAL FACTS

Following settlement negotiations, on November 15,2012, counsel for Rolex requested
via email that counsel for Hoffman provide "confirmation" that specific settlement terms set forth
in seven enumerated paragraphs were "acceptable" to his client. That same day, counsel for
Hoffman responded via email that "We have a deal," advising that Hoffman would begin
compliance with his obligations as set forth in the seven enumerated paragraphs. The following
day, November 16, 2012, counsel for Rolex forwarded to counsel for Hoffman a draft written
settlement agreement incorporating all seven of the enumerated paragraphs setting forth the tem1s
the pmiies had agreed to, as well as additional provisions that the parties had not yet negotiated.
The thirteenth paragraph of the written settlement agreement, which the pmiies had not
previously negotiated, read as follows:
The parties agree that the confidentiality of this agreement is a material
consideration for their entering into this agreement. Accordingly, neither of the
parties, nor any of their respective directors, officers, agents, employees, affiliates,
assigns, insurers, successors, attomeys, or other representatives, shall disclose any
tem1s or contents of this agreement, or disparage the other party.
Five days later, on November 21, 2012, counsel for Hoffman advised counsel for Rolex
via email that his client had "one requested change in the settlement agreement," such
modification to be made to one of the negotiated tenns of the agreement not at issue here. The
parties negotiated the detail of Hoffman's requested change, and on November 30, 2012, counsel
for Hoffman advised counsel for Rolex that a formulation of the requested modification proposed
by counsel for Rolex was acceptable to Hoffman. Counsel requested that Rolex provide a copy

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of the "final settlement agreement" incorporating the negotiated modification for his client's
signature.
Over the following weeks, counsel for Hoffman repeatedly advised counsel for Rolex that
Hofflnan intended to sign the agreement in the form provided by Rolex on November 30, 2012.
Specifically, counsel advised on December 6, 2012, that Hoffman "intends on signing the
agreement," on December 7, 2012, that Hoffman indicated to him that he would sign the
agreement the following week, on December 14, 2012, that his client was undertaking to satisfy
his obligations under the negotiated terms of the agreement, and on December 21,2012, that
Hoffman "still indicates his intention to sign the agreement." Ultimately, however, Hoffman
elected to attempt to repudiate the agreement, taking the position that the UJmegotiated mutual
confidentiality provision set forth at paragraph 13 of the unexecuted settlement agreement was
unacceptable to him. Hoffman expresses himself willing to sign the agreement absent that
provision.
ANALYSIS

Following review of the parties' evidentimy submissions in connection with Rolex's
constructive motion, I find that there is no dispute of material fact regarding the formation or
tetms of the parties' putative settlement agreement. In consequence, a formal evidentimy hearing
is unnecessary here, see Callie, 829 F.2d at 890, and I analyze the merits of the motion on the
basis of the existing evidentiary record.
Hoffman does not dispute that his communications with Rolex (by and through his
counsel) unambiguously indicate his assent to be bound by the provisions of the settlement
agreement as memorialized in the draft provided to him on November 30, 2012. However, he

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takes the position that prior to December 21, 2012, he had not read all of the tem1s of the
agreement, and thus did not understand what he was agreeing to. In consequence, he argues,
there cam1ot have been a "meeting of the minds" as to the confidentiality provision of that draft,
and no enforceable contract was fmmed. Hoffman's argument is unpersuasive.
The Oregon courts "subscribe[] to the objective theory of contracts." Harty v. Bye, 258
Or. 398,403 (1971). That is, in dete1mining whether the parties mutually assented to be bound
by the terms of an agreement, in Oregon the inquiry is whether the parties' "communications and
overt acts" suggested each party's "manifested assent" to be so bound; in Oregon "[t]he law of
contracts is not concerned with the parties' undisclosed intents and ideas." Kahil Developments
Corp. v. lvfignot, 279 Or. 151, 156-157 (1977); see also State v. Heisser, 350 Or. 12, 24-25

(2011) (same). Here, Hoffman did not communicate to Ro1ex that he agreed only to the
provisions he had assented to as of November 15, 2012, but rather that the draft provided to him
was acceptable and that he intended to sign it. Crucially, his communications and overt acts do
not suggest in any way that his assent was conditional on reading the entirety of the parties' short
and simple agreement at some unspecified future time, but rather indicated an unconditional
intent to be bound. None of Hoffman's proffered evidence suggests to the contrary.
On the basis of the evidentimy record, I therefore find that Hoffman unambiguously
expressed his intent to be bound by the pmiies' complete settlement agreement. In consequence, I
find that the settlement agreement of November 30, 2012, is enforceable. Rolex is entitled to
specific performance of Hoffman's obligations under the agreement, and Hoffman is hereby
ordered to comply with the te1ms of the parties' settlement as therein memorialized. Rolex's
request for award of its attomey fees in com1ection with bringing and litigating its motion is
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denied.
CONCLUSION
For the reasons set forth above, Rolex's constructive motion (#42) to enforce the parties'
settlement agreement is granted.

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Honorable Paul Papak

Dated this 24th day of January, 2013. \.

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United States Magistrate Judge

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