United States District Court, S.D. California
JAMES W. BRADY and PATRICIA M. BRADY, Plaintiffs,
GRENDENE USA, INC., a Delaware Corporation, and GRENDENE S.A., a Brazil Corporation, Defendants. AND RELATED COUNTERCLAIMS
ORDER GRANTING GRENDENE'S PARTIAL RENEWED MOTION FOR SUMMARY JUDGMENT, OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT [ECF No. 216]
GONZALO P. CURIEL, District Judge.
This is a trademark infringement action. Defendants Grendene USA, Inc. and Grendene S.A. (collectively, "Grendene") previously moved for summary judgment based on a settlement agreement and an affirmative defense of laches. (ECF No. 72.) Because there were disputes of material fact regarding the validity of the trademark assignments among Grendene and its predecessors, the Court denied that motion (the "November 12 Order"). (ECF No. 158.) Grendene now moves the Court to reconsider its initial ruling. (ECF No. 216.) Plaintiffs James W. Brady and Patricia M. Brady (collectively, the "Bradys") oppose, arguing that Grendene's motion is both untimely and substantively flawed. (ECF No. 266.) A hearing on Grendene's motion was held on May 22, 2015. (ECF No. 269.) Upon review of the moving papers,  admissible evidence, oral argument, and applicable law, the Court GRANTS Grendene's motion for summary judgment because the Court finds that Grendene has been validly assigned the '543 mark and therefore the Settlement Agreement bars the Bradys' causes of action against Grendene.
The factual and procedural background of this case is detailed in the Court's November 12 Order. (ECF No. 158, at 2-7.) In sum, the Bradys and the Ipanema Shoe Corporation ("ISC") both obtained registration in the mark "IPANEMA"; the Bradys' mark was for swimwear, IPANEMA, Registration No. 1, 778, 404 (the "'404 mark"), and ISC's mark was for footwear, IPANEMA, Registration No. 1, 908, 543 (the "'543 mark"). (Id. ) After a dispute arose between them regarding the IPANEMA mark, but the Bradys, through their company Made in Brazil, Inc. ("MIB"), and ISC entered into a settlement agreement (the "Settlement Agreement"). (Id. ) The '543 mark was then purportedly assigned by ISC to Utopia Marketing Inc. ("Utopia"), then by Utopia to Consolidated Shoe Corporation ("CSC"), and finally by CSC to Grendene. (Id. ) In the November 12 Order, the Court found that the evidence submitted at the time indicated a dispute of material fact regarding the validity of these assignments. (Id. at 12-13) Grendene, citing new evidence, now argues that: (1) these assignments were valid, (2) which makes Grendene a successor to ISC under the Settlement Agreement, and (3) the Settlement Agreement bars the Bradys' claims against Grendene. (ECF No. 216.) Based on this argument, Grendene asserts that it is entitled to summary judgment on all five of the Bradys' causes of action. (Id. ) The Bradys counter that: (1) at least some of these assignments were invalid, (2) which means that Grendene is not a successor to ISC under the Settlement Agreement, and (3) even if Grendene were ISC's successor, the Settlement Agreement bars the sale of Grendene's sandals, which forms the basis of the Bradys' causes of action. (ECF No. 266.)
III. LEGAL STANDARD
A. Summary Judgment
Federal Rule of Civil Procedure 56 empowers the Court to enter summary judgment on factually unsupported claims or defenses, and thereby "secure the just, speedy and inexpensive determination of every action." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 327 (1986); FED. R. CIV. P. 56. Summary judgment is appropriate if the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). A fact is material when it affects the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
The moving party bears the initial burden of demonstrating the absence of any genuine issues of material fact. Celotex, 477 U.S. at 323. The moving party can satisfy this burden by demonstrating that the nonmoving party failed to make a showing sufficient to establish an element of his or her claim on which that party will bear the burden of proof at trial. Id. at 322-23. If the moving party fails to bear the initial burden, summary judgment must be denied and the Court need not consider the nonmoving party's evidence. Adickes v. S.H. Kress & Co., 398 U.S. 144, 159-60 (1970).
Once the moving party has satisfied this burden, the nonmoving party cannot rest on the mere allegations or denials of his pleading, but must "go beyond the pleadings and by her own affidavits, or by the depositions, answers to interrogatories, and admissions on file' designate specific facts showing that there is a genuine issue for trial.'" Celotex, 477 U.S. at 324 (citing FED. R. CIV. P. 56 (1963)). If the non-moving party fails to make a sufficient showing of an element of its case, the moving party is entitled to judgment as a matter of law. Id. at 325. "Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.'" Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citing FED. R. CIV. P. 56 (1963)). In making this determination, the Court must "view  the evidence in the light most favorable to the nonmoving party." Fontana v. Haskin, 262 F.3d 871, 876 (9th Cir. 2001). The Court does not engage in credibility determinations, weighing of evidence, or drawing of legitimate inferences from the facts; these functions are for the trier of fact. Anderson, 477 U.S. at 255.
Under Federal Rules of Civil Procedure 59 and 60, federal district courts may reconsider final orders to correct "manifest errors of law." Turner v. Burlington N. Sante Fe R.R., 338 F.3d 1058, 1063 (9th Cir. 2003). Generally, parties must show either: (1) an intervening change in the law; (2) additional evidence that was not previously available; or (3) that the prior decision was based on clear error or would work manifest injustice. Marlyn Natraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 880 (9th Cir. 2009); Sch. Dist. No. 1J v. ACandS, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993); Pyramid Lake Paiute Tribe of Indians v. Hodel, 882 F.2d 364, 369 n.5 (9th Cir. 1989).
Reconsideration is an "extraordinary remedy, to be used sparingly in the interests of finality and conservation of judicial resources." Kona Enters., Inc. v. Estate of Bishop, 229 F.3d 877, 890 (9th Cir. 2000). "A motion for reconsideration is not an opportunity to renew arguments considered and rejected by the court, nor is it an opportunity for a party to re-argue a motion because it is dissatisfied with the original outcome.'" Fed. Trade Comm'n v. Neovi, Inc., No. 06-cv-1952-JLS-JMA, 2009 WL 56130, at *2 (S.D. Cal. Jan. 7, 2009) (quoting Devinsky v. Kingsford, No. 05-cv-2064-PAC, 2008 WL 2704338, at *2 (S.D.N.Y. July 10, 2008)).
In addition to these substantive standards, Civil Local Rule 7.1.i.1 requires a party moving for reconsideration to submit an affidavit or certified statement of an attorney:
setting forth the material facts and circumstances surrounding each prior application, including inter alia: (1) when and to what judge the application was made, (2) what ruling or decision or order was made thereon, and (3) what new or different facts and circumstances are claimed to ...