The opinion of the court was delivered by: Oliver W. Wanger United States District Judge
SCHEDULING CONFERENCE ORDER Discovery Cut-Off: 8/31/09 Non-Dispositive Motion Filing Deadline: 9/15/09 Dispositive Motion Filing Deadline: 9/30/09 Settlement Conference Date: January 16, 2009.
I. Date of Scheduling Conference
None Pre-Trial Conference Date: 12/7/09 11:00 Ctrm. 3 Trial Date: 1/20/10 9:00 Ctrm. 3 (JT-5 days)
II. Appearances Of Counsel
Boutin Gibson Di Giusto Hodell Inc., by Michael E. Chase, Esq., appeared on behalf of Plaintiff.
There was no appearance on behalf of Defendant.
III. Summary of Pleadings
1. Plaintiffs are Enjoy the City North, Inc., a New York corporation with its principal place of business in Binghamton, New York; and Enjoy the City, Inc., a New York corporation with its principal place of business in Birmingham, Alabama.
2. Defendants are Jeff Stranger, an individual who resides in California, and J.L.S. Enterprises and Z Best Dining & Entertainment, both of which are fictitious business names used by defendant Jeff Stranger.
3. Plaintiff's First Amended Complaint alleges that Plaintiffs are the owners of certain registered trademarks which Defendants used for their financial gain without Plaintiffs' permission. Plaintiffs produce, create, and distribute a discount coupon book known as the Enjoy the City Book. Defendant Jeff Stranger is a former distributor of Plaintiffs in various markets in California. The First Amended Complaint alleges that Defendants created a new entity which directly competed with Plaintiffs' business, in violation of the parties' distributor agreements. The First Amended Complaint contains the following claims for relief: Trademark Infringement under 15 U.S.C. § 1114(1); False Designation of Origin under 15 U.S.C. § 1125(a); Trademark Dilution under 15 U.S.C. § 1125(c); Trademark Dilution under New York Gen. Bus. Law § 360-I; Trademark Infringement under New York Gen. Bus. Law § 360-k; Trademark Infringement and Unfair Competition under State Common Law; Deceptive Acts and Practices under New York Gen. Bus. Law §§ 349-350; Common Law Palming Off; Breach of Contract (monetary damages); Breach of Contract (Non-Compete Provision); Common Law Misappropriation of Proprietary Information; and Violation of California's Unfair Competition Law, Cal. Bus. & Prof. Code §§ 17200 et seq.
4. Defendants have filed a Counterclaim alleging that Plaintiffs materially breached the distributor agreements by not providing discount books with a sufficient number of prominent merchants and by failing to deliver books in a timely manner. Defendants seek money damages allegedly suffered as a result of Plaintiffs' breaches. Defendants allege that the amount of damages is not yet determined.
5. This action was previously pending in the United States District Court for the Northern District of New York prior to being transferred to this Court. While the action was pending in New York, Plaintiffs moved for a preliminary injunction which would prevent Defendants from, inter alia, using any documents of any form containing the words "Enjoy the City" or Enjoy the City logos. Defendants stipulated to that portion of the relief. Accordingly, the District Court in New York entered an Order granting Plaintiffs' motion for preliminary injunction to the extent that Defendants are preliminarily enjoined from using any documents of any form containing the words "Enjoy the City" or the Enjoy the City logos.
IV. Orders Re Amendments To Pleadings
1. Plaintiffs are currently pursuing discovery from a non-party called Profit Specialties, an entity of form unknown, to ascertain whether it unfairly and unlawfully competed with Plaintiffs through actions in concert with Defendants. Plaintiffs anticipate discovery obtained from profit Specialties will be completed by January 30, 2009. Plaintiffs request that the Court allow Plaintiffs to file a motion to further amend the Complaint to add Profit Specialties as a defendant, which motion would be filed no later than February 13, 2009.
2. Plaintiffs anticipate adding an additional party defendant. Based on objections by that potential defendant, time to join that party shall extend through and including March 18, 2009.
A. Admitted Facts Which Are Deemed Proven Without Further Proceedings
1. Plaintiff, Enjoy the City North, Inc., is a New York corporation with its principal place of business in Binghamton, New York.
2. Plaintiff, Enjoy the City, Inc., is a New York corporation with its principal place of business in Birmingham, Alabama.
3. Jeff Stranger is an individual and at times alleged in the Complaint, resident of the Eastern District of California, Fresno Division.
4. To the best of Plaintiff's understanding, the businesses known as J.L.S. Enterprises, and Z Best Dining & Entertainment, are fictitious names utilized by Jeff Stranger, an individual.
5. On October 25, 2006, Jeff Stranger entered into a Distributorship Agreement with Enjoy the City North, Inc., regarding the Fresno, California territory.
6. On June 11, 2007, Jeff Stranger entered into a Distributorship Agreement with Enjoy the City North, Inc., regarding the Stockton, California, territory.
7. On April 3, 2007, Jeff Stranger entered into a Distributorship Agreement with Enjoy the City North, Inc., regarding the ...