United States District Court, N.D. California
ORDER GRANTING IN PART, DENYING IN PART, AND
DEFERRING IN PART THE MOTIONS IN LIMINE RE: DKT. NOS. 97-100,
HAYWOOD S. GILLIAM, JR., United States District Judge
Morton Bassett L.P. (“Morton”) and Defendant
Organic Spices, Inc. (“Spicely”) each have filed
five motions in limine. Dkt. Nos. 97-100, 102-06, 109-5. At
the pretrial conference on June 15, 2017, the Court heard
argument on the motions. Dkt. No. 138 (“Hr'g
Tr.”) at 16:16-17:6, 35:17-54:10. The Court
GRANTS in part, DENIES in
part, and DEFERS in part the motions in
FROM THE BENCH
pretrial conference, the Court ruled as follows for the
reasons stated on the record:
Motion in Limine
Hr'g Tr. Citation
Denied as unnecessary.
Denied as untimely motion for summary judgment.
Denied as untimely motion for summary judgment.
Court now turns to the motions in limine that remain pending.
MORTON'S FIRST MOTION IN LIMINE
First Motion in Limine seeks to “preclude evidence of,
reference to, or argument regarding settlement communications
between counsel for [Morton] and counsel for [Spicely] prior
to [Spicely's] filing of this case.” Dkt. No. 100.
The asserted grounds for exclusion are Federal Rule of
Evidence (“FRE”) 403 and FRE 408. Id.
Spicely does not dispute that the communications in question
were settlement communications, but argues that they should
not be excluded under either FRE 403 or FRE 408. Dkt. No.
to the filing of this case, counsel for the parties engaged
in various settlement communications from February to May
2014, as described below.
February 25, 2014 Letter from Spicely's Counsel
February 25, 2014, Spicely's counsel sent a letter to
Morton's counsel. Dkt. No. 100, Ex. A. The letter listed
four prior communications: three letters exchanged by
Morton's counsel and Spicely's counsel, dated between
February 12 and February 19, 2014, as well as a phone call
between Morton's counsel and Spicely's counsel on
February 19, 2014. Id. at 1.
February 25 letter stated that Spicely was “convinced
that there is no trade dress infringement and no likelihood
of consumer confusion between the Morton . . . jar and the
Spicely jar that were pictured in the . . . February 12
Letter [from Morton's counsel to Spicely's
counsel].” Id. After making supporting
arguments, the February 25 letter noted that Spicely had
“been contemplating redesigning [its] product package
to a more modern look” and attached samples of the
preliminary designs. Id. at 3. Spicely stated its
willingness to provide the “final new design”
within a couple of weeks. Id. Finally, Spicely made
the following offer:
Subject to exhausting sales of the Spicely Jar existing in
our inventories (including containers that are already
printed with the existing design) within the next six (6)
months, our client is willing to discontinue sales of the
Spicely Jar in its existing design and implement the final
new design. We hope this amicably concludes this matter.
March 12, 2014 Letter from Spicely's Counsel
March 12, 2014, Spicely's counsel sent a short letter to
Morton's counsel, enclosing “images of the sample
final new product package design.” Id., Ex.
March 12, 2014 Letter from Morton's Counsel
March 12, 2014, Morton's counsel responded to the
February 25 letter. Id., Ex. B. The letter
“strongly disagree[d]” with the statements
regarding infringement and consumer confusion, but stated
that Morton was “encouraged that Spicely is prepared to
discontinue its use of the Spicely Jar.” Id.
at 1. The letter stated that Morton would only consider the
matter resolved if Spicely agreed to “immediately cease
all advertising, sales, and distribution of the Spicely
Jar.” Id. Morton's counsel also
“enclosed a draft complaint that we are prepared to
finalize and file if we do not receive [Spicely's]
written agreement to immediately and permanently cease all
use of the Spicely jar.” Id. at 1-2.
March 17, 2014 Letter from Spicely's Counsel
March 17, 2014 Spicely's counsel responded to the March
12 letter from Morton's counsel. Id., Ex. D.
Spicely's counsel stated that “Spicely will do
everything reasonably possible to transition its design from
its old design to its new design by June 16, 2014, ”
but stated that “[f]ull commercial implementation of
the new design is an entirely different matter.”
Id. at 1. He warned that “[a]ny attempt to try
to compel [Spicely] to make a transition any quicker would be
ill advised.” Id. He contended that
Morton's product packaging was “generic in shape
and overall trade dress, ” and that “[e]ven if
[Morton] were able to prove distinctive trade dress, it would
not be entitled to any form of injunctive relief that would
hasten Spicely's transition to a new design.”
Id. at 1-2.
March 28, 2014 Letter from Morton's Counsel
March 28, 2014, Morton's counsel responded to the March
17 letter. Id., Ex. E. He stated that “[w]hile
Morton . . . remains encouraged that Spicely will be
discontinuing its infringing Spicely Jar, it is not willing
to allow Spicely three additional months to continue using
[Morton's] distinctive trade dress.” Id.
at 1. Nonetheless, he stated that Morton was “hopeful
that the dispute can be resolved amicably, and out of court.
It is willing to provide Spicely until no later than May 1,
2014 to exhaust all remaining inventory of the Spicely Jar,
and to discontinue producing, selling, distributing, and
advertising it.” Id. at 1.
the letter requested that Spicely enter into a written
In order to complete this matter, we will need Spicely to
enter into a written agreement promising to cease all use of
the Spicely Jar by May 1, 2014. Attached is an agreement for
you to review. If Spicely agrees to these terms, please have
its principal sign and date it, and we will return a fully
signed copy, and forebear from filing suit. We would
appreciate a response by no later than Wednesday, April 2,
April 3, 2014 Letter from Spicely's Counsel
April 3, 2014, Spicely's counsel responded to the March
28 letter. Id., Ex. F. He stated that Spicely
“will advance its transition to a new ...