United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
Lynn Winmill, Chief U.S. District Court Judge
before the Court are Plaintiff's claims for declaratory
relief, Defendant's claims for injunctive relief, and
Defendant's Motion to Reconsider the Court's August
17, 2017 Memorandum Decision and Order. (Dkt. 142). For the
reasons described below, the Court will deny Defendant's
motion to reconsider, and will enter a limited permanent
injunction governing Plaintiff's use of the TimberStone
mark in Southwestern Idaho
August 17, 2017, the Court entered a Memorandum Decision and
Order addressing the parties' post-trial motions in this
case. (Aug. 17, 2017 Order, Dkt. 137). At that time, it
reserved ruling on the parties' requests for equitable
relief. Id. at 3. The Court found that IGPI was
entitled to a new trial on TimberStone Management's
trademark dilution claim, on the grounds that there was a
clear lack of evidence to establish the necessary
“fame” element of the claim. Id. at 19.
The Court further found that the jury did not apportion its
lump-sum damages award between the claims on which it found
that TimberStone Management prevailed. Id. at 35.
Because the Court set aside the jury's verdict on
trademark dilution, it held that the issue of damages on both
claims must be re-submitted to the jury. Id. at 37.
The parties subsequently waived their rights to a new trial
on these issues. See Plaintiff's Notice, Dkt.
August 17, 2017 Order also disposed of several other
post-trial issues. Most relevant to this decision, the Court
denied IGPI's motion for a new trial on TimberStone
Management's unfair competition and false designation
claims after finding that there was no inconsistency in the
jury's verdict. Aug. 17, 2017 Order at 22, Dkt.
137. The jury found for TimberStone Management on these
claims, and IGPI argued that this finding was inconsistent
with the jury's finding against TimberStone Management on
its federal and common law infringement claims. Id.
at 20. Drawing all reasonable inferences in favor of
TimberStone Management, the Court upheld the verdict.
Id. at 22. The Court found that to the extent the
jury verdict appeared inconsistent, it could be reconciled if
the jury had found that IGPI established its affirmative
defense of continuous prior use. Id.
the Court noted in its Order that it was inclined to issue
only a limited permanent injunction, requiring IGPI to take
reasonable steps to avoid any further confusion. Id.
at 38. Before doing so, however, the Court directed the
parties to meet and confer for the purposes of drafting
mutually-agreeable terms for a permanent injunction.
Id. at 38-29. The Court also allowed the parties to
submit proposed findings of fact and conclusions of law on
these issues, and directed them to file a proposed
injunction. Id. at 38.
September 8, 2017, IGPI filed its proposed findings of fact,
conclusions of law, and permanent injunction regarding any
continued use of the TimberStone mark by IGPI. See
Proposed Findings of Fact by IGPI, Dkt. 141. TimberStone
Management filed its own proposed findings of fact and
conclusions of law that same day, and also filed its Motion
for Reconsideration. See Motion for Reconsideration,
Dkt. 142; Proposed Findings of Fact by TimberStone
Management, Dkt. 143. On September 15, 2017, TimberStone
Management filed its proposed injunction. See
Notice, Dkt. 144.
Court will first address TimberStone Management's Motion
for Reconsideration, and then will issue its findings of fact
and conclusions of law on the issues of declaratory and
Motion for Reconsideration
Management asks the Court to reconsider a single line in its
August 17, 2017 Order. Specifically, TimberStone Management
takes issue with the Court's statement that it is
inclined to issue a limited permanent injunction “given
the jury's finding that IGPI established its good faith
remote use defense.” Aug. 17, 2017 Order at
38, Dkt. 137. TimberStone Management argues both that the
jury did not expressly find that IGPI established its
continuous use defense, and that such a finding would be
inconsistent with the jury's determination that IGPI
acted willfully. Def.'s Br. at 4, 7, Dkt. 142-1.
Federal Rules of Civil Procedure do not expressly authorize a
motion for reconsideration, but a “district court has
the inherent power to reconsider and modify its interlocutory
orders prior to entry of judgment . . . .” Smith v.
Massachusetts, 543 U.S. 462, 475 (2005) (internal
quotations omitted); cf. Fed. R. Civ. Pro. 54(b).
Nevertheless, reconsideration is “an extraordinary
remedy, to be used sparingly. . . .” Carroll v.
Nakatani, 342 F.3d 934, 945 (9th Cir. 2003). Absent
highly unusual circumstances, a motion for reconsideration
will not be granted “unless the district court is
presented with newly discovered evidence, committed clear
error, or if there is an intervening change in controlling
law.” Kona Enters., Inc v. Estate of Bishop,
229 F.3d 877, 890 (9th Cir. 2000).
strange turn of events, TimberStone Management has filed this
motion to reconsider on the grounds that the Court clearly
erred when it upheld a verdict in TimberStone
Management's favor. Def.'s Br. at 4, Dkt.
142-1. In the context of reconciling the jury's special
verdict responses, this Court held that a reasonable jury
could find that IGPI had established its continuous use
defense. Aug. 17, 2017 Order at 22, Dkt. 137. This
finding is sufficient to support the Court's ruling that
the verdicts were consistent. See Atl. & Gulf
Stevedores, Inc. v. Ellerman Lines, Ltd., 369 U.S. 355,
364 (1962) (finding that so long as there is “a view of
the case that makes the jury's answers to special
interrogatories consistent” the Court must find them
consistent.). TimberStone Management disagrees with the
Court's finding, though not with its
Management argues that a finding that IGPI established a
continuous use defense would be inconsistent with the
jury's finding that IGPI acted maliciously, fraudulently,
or willfully. In support of its case, it cites a Ninth
Circuit opinion decided almost a year after the jury entered
its verdict in this case. See Special Verdict Form,
Dkt. 117 (entered September 30, 2016) and Stone Creek,
Inc. v. Omnia Italian Design, Inc., 862 F.3d 1131, 1133
(9th Cir. 2017) (decided July 11, 2017). TimberStone
Management cites Stone Creek for the proposition
that “there can be no ‘good faith' remote use
defense where a junior user had prior knowledge of a senior
user's rights.” Def.'s Br. at 6, Dkt.
142-1. They argue that the jury's finding that IGPI acted
maliciously, fraudulently, or willfully requires a finding
that IGPI acted with knowledge of TimberStone
Management's rights, and that IGPI's knowledge would
therefore negate any showing of good faith under Stone
Creek. See, e.g., Def.'s Reply at
Court disagrees. At the time the jury answered the special
verdict questions, Stone Creek had not yet been
decided, and there was no rule in this Circuit stating that
knowledge of a senior user's rights negates a showing of
good faith. The Court's finds that its determination of
the consistency of the jury's verdict is governed by the
law in place at the time the verdict was issued. A subsequent
change in law does not retroactively render a jury's
verdict inconsistent, though it may provide grounds for a
motion to alter or amend the judgment, based on principles of
fairness and justice. See Fed. R. Civ. Pro. 59(e);
Kona Enters., Inc, 229 F.3d at 890. As TimberStone
Management notes, there has been no such motion in this case.
Because Stone Creek was handed down during the
pendency of the parties' equitable claims, however, the
Court will apply Stone Creek in determining ...