SC Johnson & Son Inc v. Nutraceutical Corporation et al

Filing 99

ORDER signed by Judge Rudolph T. Randa on 9/25/2014. 91 Defendants' Motion to Stay DENIED as to paragraph 1 and GRANTED as to paragraph 2 of the injunction. See Order for details. (cc: all counsel) (cb)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
S.C. JOHNSON & SON, INC.,
Plaintiff-Counterclaim Defendant,
v.

Case No. 11-C-861

NUTRACEUTICAL CORPORATION and
NUTRAMARKS, INC.,
Defendants-Counterclaimants.

DECISION AND ORDER

The Defendants Nutraceutical Corporation (“Nutraceutical”) and
NutraMarks, Inc. (“NutraMarks”) (collectively the “Defendants”) have filed an
expedited non-dispositive motion (ECF No. 91) for stay of the injunction
ordered August 29, 2014, until 30 days after the Court’s ruling on their motion
for relief pursuant to Fed. R. Civ. P. 59.

Plaintiff S.C. Johnson (“SCJ”)

opposes the motion, and indicates that a monetary amount is not appropriate
security pending resolution of the Defendants’ motion. (ECF Nos. 95, 96.)
Instead, it suggests the temporary modification of the injunction while the
motion is pending so that the Defendants would not be required to deliver up
for destruction their inventory and advertising, but would be required to cease
selling the infringing goods and remove the goods from any websites.
Rule 62(b)(3) of the Federal Rules of Civil Procedure provides that “[o]n

appropriate terms for the opposing party’s security, the court may stay the
execution of a judgment . . . pending disposition of any of the following
motions: . . . under Rule 59, for a new trial or to alter or amend a judgment.”
Four factors are used to determine whether a stay is appropriate: “(1) whether
the stay applicant has made a strong showing that he is likely to succeed on
the merits; (2) whether the applicant will be irreparably injured absent a stay;
(3) whether issuance of the stay will substantially injure the other parties
interested in the proceeding; and (4) where the public interest lies.” Hilton v.
Braunskill, 481 U.S. 770, 776 (1987) (regarding a stay on appeal).
The injunction provides:

The Defendants and their agents, servants,
employees and attorneys and all persons in active
concert or participation with them or acting for,
with, by, through or under them, are permanently
enjoined from counterfeiting and infringing SCJ’s
BUG-OFF® Mark, from unfair competition with
SCJ and from falsely designating the origin of the
SCJ goods; and,
No later than September 28, 2014, the Defendants
must deliver up for destruction to SCJ all
unauthorized products and/or advertisements in
its possession or under its control bearing the
infringing BUG OFF mark or any simulation,
reproduction, counterfeit, copy or colorable
imitation thereof, pursuant to 15 U.S.C. § 1118.
(Court’s Aug. 29, 2014, Decision and Order, 39.) (ECF No. 90.)
Having considered the arguments of the parties, the Court denies
-2-

the motion for a stay of paragraph one of the injunction and grants the
requested stay as to paragraph two of the injunction. The implementation
of paragraph one of the injunction will not cause irreparable harm to the
Defendants; however, delivery of materials for destruction involved in
paragraph two is likely to cause irreparable harm.

Implementation of

paragraph one of the injunction will eliminate confusion from the
marketplace which is in the public interest; however, the destruction of
the materials required by paragraph two is only of marginal benefit to the
public interest when the marketplace confusion has been eliminated. The
harms to SCJ and the public outweigh the harm to the Defendants if
paragraph one were stayed.

However, the harm to the Defendants

outweighs the harm to SCJ and the public if paragraph two were not
stayed. By fashioning the stay as described, the Court achieves the same
effect as SCJ’s proposed temporary modification of the injunction.
Dated at Milwaukee, Wisconsin, this 25th day of September, 2014.

SO ORDERED:
__________________________
HON. RUDOLPH T. RANDA
U.S. District Judge

-3-