Derma Pen v. 4EverYoung Limited et al
MEMORANDUM DECISION AND ORDER denying without prejudice 1231 Motion in Limine; denying without prejudice 1232 Motion in Limine. Signed by Judge David Nuffer on 12/11/18 (alt)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
DERMA PEN, LLC,
AND ORDER DENYING
MOTIONS IN LIMINE
Case No. 2:13-cv-00729
4EVERYOUNG LIMITED, et al.,
District Judge David Nuffer
Plaintiff Derma Pen LLC (“Derma Pen”) filed a motion in limine (“Derma Pen’s
Motion”) 1 to exclude all evidence and comments at the evidentiary hearing, which is scheduled
to begin December 17, 2018, “relating to the DERMAPEN® Mark being awarded to Derma Pen,
LLC, under the Court’s Final Order and Permanent Injunction, including without limitation, the
scope of the Injunction . . . .” Nonparties Joel Marshall, Sasha Marshall, and DP Derm LLC
(collectively, “Nonparties”) also filed a motion in limine (“Nonparties’ Motion”) 2 to “preclude
evidence of any conduct by the [Nonparties] in alleged violation of the Judgment occurring
before July 25, 2017.” For the following reasons, both motions are DENIED without prejudice.
Plaintiff’s Motion in Limine to Exclude All Claims, Evidence in Support of Such Claims Prior to the Final Order
and Permanent Injunction, and Commentary Thereon (“Derma Pen’s Motion”), docket no. 1232, filed December 5,
2018; see Memorandum in Opposition to Plaintiff’s Motion in Limine to Exclude All Claims, Evidence in Support
of Such Claims Prior to the Final Order and Permanent Injunction, and Commentary Thereon, docket no. 1238, filed
December 10, 2018.
Motion in Limine re: Relevant Time Period for Alleged Contempt by Nonparties Joel Marshall, Sasha Marshall
and DP Derm LLC (“Nonparties’ Motion”), docket no. 1231, filed December 5, 2018; Plaintiff’s Response to
Nonparties’ Motion in Limine re: Relevant Time Period for Alleged Contempt by Nonparties Joel Marshall, Sasha
Marshall and DP Derm LLC, docket no. 1240, filed December 10, 2018.
Derma Pen’s Motion
Derma Pen contends that, based on a recent order, 3 the Nonparties “should be restrained
from arguing at the Evidentiary Hearing any claims, defenses, facts or issues relating to the scope
of the Injunction,” including “the validity of ownership of the [DERMAPEN®] trademark.” 4 But
the order3 to which Derma Pen refers does not state that Derma Pen owns the trademark or that it
owned the trademark when the injunction (the “Injunction”) 5 was entered. Instead, that order
states that Derma Pen IP Holdings LLC (“Holdings”) “was the registrant of the DERMAPEN®
mark when the Injunction was entered and is still its registrant today.” 6
Derma Pen next asserts that the October 19, 2018 deposition testimony of Defendant
Stene Marshall should be excluded because, in violation of two docket text orders, 7 the attorney
who represented Marshall at that deposition has not filed an appearance in this case.4 Contrary to
Derma Pen’s assertion, neither docket text order7 provides a basis to exclude Marshall’s
Derma Pen further argues that all evidence “relating to the ownership of the
DERMAPEN® Mark” should be excluded because Derma Pen “has been judicially found to be
the owner of the trademark.” 8 Derma Pen does not cite to any specific order to support this
Memorandum Decision and Order Denying Motion to Vacate or Modify Permanent Injunction (“Order on Motion
to Vacate”), docket no. 1230, entered December 4, 2018.
Derma Pen’s Motion, supra note 1, at 2.
Final Judgment ¶ 3, docket no. 1043, entered May 8, 2017.
Order on Motion to Vacate, supra note 3, at 4.
Docket Text Order, docket no. 1151, entered June 29, 2018; Docket Text Order, docket no. 1153, entered July 3,
Derma Pen’s Motion, supra note 1, at 3.
argument. The fact that Holdings was the registrant of the trademark when the Injunction was
entered does not mean that Derma Pen is the owner of the trademark today. It also does not mean
that Derma Pen is presently entitled to enforce the Injunction.
Derma Pen’s final contention is that all evidence should be excluded regarding use of the
DERMAPEN® mark by Derma Pen, Holdings, or “any future successor in interest” from the date
the Injunction was entered (May 8, 2017) because, according to Derma Pen, “only evidence
showing that [Nonparties] have violated the Permanent Injunction is relevant.” 9 This contention
lacks merit, as evidence supporting the Nonparties’ defenses may also be relevant.
For each of these reasons, Derma Pen’s Motion will be denied.
The Nonparties argue that all evidence of an “alleged violation of the [Injunction]
occurring before July 25, 2017,” should be excluded based on Fed. R. Civ. P. 65(d)(2) because
there is no evidence that the Nonparties received notice of the Injunction before July 25, 2017. 10
This rule provides that an order granting an injunction “binds only the following who receive
actual notice of it by personal service or otherwise: (A) the parties; (B) the parties’ officers,
agents, servants, employees, and attorneys; and (C) other persons who are in active concert or
participation with anyone described in Rule 65(d)(2)(A) or (B).” 11
Because it has not yet been established when each of the Nonparties received actual
notice of the Injunction, the Nonparties’ Motion will be denied.
Nonparties’ Motion, supra note 2, at 1-2.
FED. R. CIV. P. 65(d)(2).
THEREFORE, IT IS HEREBY ORDERED that Derma Pen’s Motion 12 and the
Nonparties’ Motion 13 are both DENIED without prejudice.
Signed December 11, 2018.
BY THE COURT:
United States District Judge
Docket no. 1232, filed December 5, 2018.
Docket no. 1231, filed December 5, 2018.
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