United States District Court, E.D. California
THE NATIONAL GRANGE OF THE OF PATRONS OF HUSBANDRY, a District of Columbia nonprofit corporation, Plaintiff
CALIFORNIA STATE GRANGE, a California corporation, d/b/a
WILLIAM B. SHUBB UNITED STATES DISTRICT JUDGE
February 1, 2016, plaintiff National Grange of the Order of
Patrons of Husbandry filed the present action against the
California State Grange, currently known as the California
Guild (the "Guild"), and its president, Robert
McFarland ("McFarland"), asserting six causes of
action for violations of the Lanham Act, Copyright Act, and
related state laws. Plaintiff had previously filed a similar
action in March 2014 against the Guild, alleging violations
of the Lanham Act ("Grange I"). See
Nat'l Grange of the Order of Patrons of Husbandry v.
California State Grange, Civ. No. 2:14-676 WBS AC, 2016
WL 1587193, at *1 (E.D. Cal. Apr. 20, 2016). In July 2015 in
Grange I, the court granted summary judgment in
favor of plaintiff on its Lanham Act claims for trademark
infringement and unfair competition and false designation of
origin. Id. In September 2015 in Grange I,
the court entered final judgment permanently enjoining
"[the Guild] and its agents, affiliates, and assigns, or
any party acting in concert with [the Guild] and its agents,
affiliates, and assigns from using marks containing the word
‘Grange.'" Id. The court in
Grange I declined plaintiff's request to enjoin
the Guild from using the words "Granger, "
"CSG, " and "CG" because whether those
words were protected trademarks was never litigated or before
the court in Grange I. Id. at *1, *9.
Guild has appealed the court's July and September 2015
Orders in Grange I, and plaintiff has cross-appealed
that portion of the September 2015 Order limiting injunctive
relief to the word "Grange." Id. at 2.
Those appeals are currently pending before the United States
Court of Appeals for the Ninth Circuit. See id.,
appeal filed, No. 15-17179 (9th Cir. Nov. 2, 2015);
id., appeal filed, No. 15-17274 (9th Cir.
Nov. 17, 2015). Plaintiff's claims in the present case
are allegedly based on defendants' unlawful conduct
following the entry of judgment in Grange I and
issues that were not litigated in Grange I,
including defendants' use of the words "Granger,
" "CSG, " and "CG." (Compl. ¶ 7
(Docket No. 1).)
March 1, 2016, McFarland filed a motion to dismiss
plaintiff's federal claims in this action for failure to
state a claim upon which relief can be granted pursuant to
Federal Rule of Civil Procedure 12(b)(6), (Docket No. 20),
and a motion to strike plaintiff's state-law claims
pursuant to California's anti-Strategic Lawsuits Against
Public Participation ("anti-SLAPP") statute, Cal.
Civ. Proc. Code § 425.16, (Docket No. 21). On April 5,
2016, the Guild moved to dismiss all of plaintiff's
claims for failure to state a claim upon which relief can be
granted pursuant to Rule 12(b)(6), or, in the alternative,
for a more definite statement pursuant to Rule 12(e). (Docket
No. 32.) Those motions are currently set for hearing on July
Complaint in the present action, however, does not take into
account the events that have transpired after it filed its
Complaint on February 1, 2016. Specifically, on April 20,
2016 in Grange I, this court granted plaintiff's
motion for additional injunctive relief based on the issues
that were litigated in that case. See Grange I, 2016
WL 1587193, at *15-16. The April 2016 Order in Grange
I consequently granted plaintiff much of the relief that
plaintiff seeks in the present action. The Guild and
McFarland submitted reports in Grange I setting
forth in detail the manner and form in which they, their
agents and affiliates, and all parties acting in concert with
them have complied with the court's April 2016 Order in
Grange I. See id. (ECF Nos. 140-141, 145,
149). Additionally, on June 24, 2016 in the present action,
plaintiff filed a motion to amend its Complaint to add four
additional claims and an additional plaintiff, (Docket No.
55), and a motion for a preliminary injunction, (Docket No.
54), both of which are set for hearing on August 22, 2016.
Rule of Civil Procedure 16(a) provides that, "[i]n any
action, the court may order the attorneys . . . to appear for
one or more pretrial conferences for such purposes as: (1)
expediting disposition of the action; (2) establishing early
and continuing control so that the case will not be
protracted because of lack of management; [and] (3)
discouraging wasteful pretrial activities." Fed.R.Civ.P.
16(a); see also Fed.R.Civ.P. 1 ("These rules .
. . should be construed, administered, and employed by the
court and the parties to secure the just, speedy, and
inexpensive determination of every action and
proceeding."). In light of the court's April 2016
Order in Grange I and plaintiff's pending motion
to amend its Complaint in the present action, the court finds
that a further status conference in this case is warranted.
The court will thus vacate the hearings set for July 11, 2016
on defendants' pending motions to dismiss and to strike
plaintiff's Complaint, given that the motions were filed
before the court's April 2016 Order in Grange I
and plaintiff's motion to amend its Complaint in the
present case, and convert those hearings into a status
conference on that date.
for the parties shall appear at the status conference on July
11, 2016 and be prepared to address the following issues: (1)
whether the present action should be stayed pending the
resolution of the parties' cross-appeals in Grange
I; (2) whether any claims in the present action are moot
in light of the relief granted in the court's April 2016
Order in Grange I; (3) whether defendants intend to
oppose plaintiff's pending motion to amend its Complaint
in the present action; (4) whether all or any parts of
defendants' motions to dismiss will be moot if
plaintiff's motion to amend its Complaint is granted; and
(4) whether defendants intend to re-file their pending
motions to dismiss and to strike plaintiff's Complaint in
the present action in light of the relief granted in the
court's April 2016 Order in Grange I and
plaintiff's pending motion to amend its Complaint in this
case. Prior to the July 11, 2016 status conference and to the
extent they can do so, the parties shall submit a joint or
separate status reports that succinctly address these four
issues and any other issues that they think need to be
addressed at the status conference.
THEREFORE ORDERED that:
(1) the hearings set for July 11, 2016 on defendants'
pending motions to dismiss and to strike plaintiff's
Complaint, (Docket Nos. 20, 21, 32), are hereby VACATED;
(2) a status conference shall be set for July 11, 2016 at
1:30 p.m. in Courtroom 5; and
(3) the parties shall submit a joint or separate status
reports prior to the July 11, 2016 status conference
addressing the four issues outlined in this Order and any
other issues that they think ...