Bernatello's Pizza, Inc. v. Hansen Foods, LLC

Filing 39

ORDER granting 31 Motion for Clarification and requiring further submissions on 26 Order on Motion for Preliminary Injunction. Signed by District Judge James D. Peterson on 04/09/2016. (jdp)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

BERNATELLO’S PIZZA, INC.,
Plaintiff,
v.

ORDER
16-cv-65-jdp

HANSEN FOODS, LLC,
Defendant.

The court granted plaintiff’s motion for an injunction on March 25, 2016. Dkt. 26.
The court instructed the parties to confer on the form of injunction order, but there are now
two motions before the court that show that the parties have not cooperated fruitfully.
Defendant’s motion, Dkt. 31, seeks clarification of the court’s order for an injunction issued
March 25, 2016. Plaintiff’s motion, Dkt. 34, proposes an injunction order, but it defers the
question of an injunction bond until defendant ponies up with more financial information.
I will grant defendant’s motion for clarification and provide a few words of guidance.
Defendant’s interpretation is essentially correct. The court’s intent was to allow defendant to
sell its existing inventory, including inventory on store shelves, as well as any inventory that
had been manufactured and packaged as of the date of the order, March 25. The court would
expect defendant to undertake some ordinary promotional activities to support the phase-out
sales. But the court would not expect defendant to step up efforts to promote and distribute
goods with trademarks that were soon to be enjoined. (Nor would I expect defendant’s
management to mislead anyone concerning the court’s order, which is a concern raised by
plaintiff’s motion.) Also, defendant’s phase-out right will not last forever, and imposing a
reasonable end date would be appropriate.

As for the enjoined marks themselves, again defendant is essentially correct.
Defendant cannot use forms of the term “brew,” such as “brewer” or “brewery,” but other
terms suggestive of taverns or pubs would not necessarily be off-limits. I will leave it to the
parties to craft the precise wording, as I can imagine confusingly similar uses of other terms.
“Beer Pub” or “Draft Pub,” for example, might well be confusingly similar to Brew Pub.
Plaintiff’s motion raises its own issues. But the March 25 order already set April 15 as
defendant’s response date, so I will rule on plaintiff’s motion after I have defendant’s
response.
However, one problem requires attention now: plaintiff’s motion fails to provide a
proposal for adequate security, contrary to my March 25 order. Based on plaintiff’s
submission, it is not clear that the parties have attempted to reach agreement on the
injunction security. Plaintiff seems to believe that it needs a large amount of financial
information from defendant before it can propose injunction security. Not so. Counsel for
the parties must confer on this issue and plaintiff has until April 12 to submit a proposal
based on whatever information it has available. The burden will then be on defendant to
respond to that proposal in its April 15 submission.
It is not too late to reach agreement on the injunction, and a negotiated agreement
will probably be better for both parties than one imposed by the court.

Entered April 9, 2016.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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