United States District Court, D. Oregon
OPINION AND ORDER
J. BROWN United States Senior District Judge.
matter comes before the Court pursuant to the Mandate (#86)
issued May 28, 2019, by the United States Court of Appeals
for the Federal Circuit remanding this matter for further
reasons that follow, the Court denies Plaintiff Versatop
Support System LLC's request for entry of a permanent
brought this action against Defendant Georgia Expo, Inc., and
alleged five claims in its First Amended Complaint: violation
of patent law (Ct. I); violation of copyright law (Counts II
and III); and violation of trademark law (Counts IV and V).
Plaintiff's trademarks at issue are "2.0" and
"Pipe & Drape 2.0."
parties filed cross-motions for summary judgment on all
February 16, 2017, Magistrate Judge John Jelderks issued
Findings and Recommendations (F&R)(#45) and recommended
the Court grant Defendant's Cross-Motion on all counts
and deny Plaintiff's Motion. On April 13, 2017, this
Court adopted the F&R, entered Judgment in favor of
Defendant, and dismissed Plaintiff's case with prejudice.
On February 12, 2018, the Court subsequently denied
Defendant's Motion for extraordinary attorneys' fees.
appealed the Court's dismissal of the case, and Defendant
appealed the Court's denial of its request for
appeal the Federal Circuit noted "[o]nly the trademark
issue is before us" and addressed only two issues:
whether there was a violation of trademark law and whether
Defendant was entitled to an award of extraordinary
attorneys' fees. On the trademark issue the Federal
Circuit found this Court's adoption of the F&R was
erroneous as a matter of law and that there was a violation
of the Trademark Act based on Defendant's admitted use of
Plaintiff's trademarks. The Federal Circuit reversed the
judgment in favor of Defendant, stated "judgment is
entered in favor of Plaintiff," and remanded the case
"for any appropriate further proceedings." The
Federal Circuit also denied without opinion Defendant's
appeal on the attorneys' fees issue.
return of the Mandate Magistrate Judge Jelderks contacted the
parties and directed them to confer regarding the form of
judgment to be entered in light of the Federal Circuit
holding. When the parties were unable to agree on a form of
judgment, Magistrate Judge Jelderks directed the parties to
submit their proposed respective forms of judgment and
supporting memoranda for the court's consideration.
October 4, 2019, each party filed a proposed form of judgment
and a supporting memorandum. On October 8, 2019, Plaintiff
filed the same papers again, but Plaintiff included
additional Declarations that were referenced but not included
in their earlier submission.
the parties concur the court must now enter judgment in
Plaintiff's favor as to Counts IV and V for Trademark
Infringement, they disagree as to whether such judgment
should also include injunctive relief. Plaintiff contends it
is entitled to a form of judgment that includes a permanent
injunction against Defendant, but Defendant contends entry of
a permanent injunction as part of the judgment is not
Lanham Act permits a court to grant injunctions
"according to the principles of equity and upon such
terms as the court may deem reasonable" to prevent
further trademark infringement. 15 U.S.C. § 1116.
See also Reno Air ...