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Stone Creek Inc. v. Omnia Italian Design Inc.

United States District Court, D. Arizona

January 28, 2019

Stone Creek Incorporated, Plaintiff,
v.
Omnia Italian Design Incorporated, et al., Defendants.

          ORDER

          DOUGLAS L. RAYES UNITED STATES DISTRICT JUDGE.

         Before the Court is Defendant Omnia Italian Design Incorporated's (“Omnia”) motion to reverse entry of judgment on taxation of costs (Doc. 219), which is fully briefed. For the following reasons, Omnia's motion is granted.

         I. Background

         On April 5, 2013, Plaintiff Stone Creek Incorporated (“Stone Creek”) accused Defendants Omnia and The Bon-Ton Stores (“Bon-Ton”) of infringing its trademark by selling furniture labeled with Stone Creek's mark. (Doc. 1.) On October 25, 2013, Omnia and Bon-Ton jointly made an Offer of Judgment to Stone Creek under Federal Rule of Civil Procedure 68 with the following terms:

(1) A money judgment against [Omnia and Bon-Ton], jointly and severally, and in favor of [Stone Creek] in the total amount of $25, 000.00, inclusive of all costs and attorney fees that are actually, or potentially, recoverable in this action.
(2) An injunction permanently enjoining and restraining [Omnia and Bon-Ton] . . . from using [Stone Creek's] Marks, for which [Stone Creek] has valid federal trademark registrations or any other mark confusingly similar to [Stone Creek's] Marks . . . .
(3) An injunction permanently enjoining and restraining [Omnia and Bon-Ton] . . . from representing by any means whatsoever, directly or indirectly, or doing any other acts or things calculated or likely to cause confusion, mistake or deception among the members of the public or members of the trade as to the source, sponsorship, or approval of [Omnia's and Bon-Ton's] goods and services and those of Stone Creek.
(4) In the event that [Stone Creek] is aware of learns of any use of [Stone Creek's] Marks by [Omnia or Bon-Ton] . . . that [Stone Creek] believes may constitute[] a violation of the permanent injunction, [Stone Creek] shall notify [Omnia and Bon-Ton] . [Omnia and Bon-Ton] shall have ten (10) business days from notice of any violation to cure that violation.

(Doc. 208-1 at 3-4.) Stone Creek rejected the offer.

         On March 19, 2014, Stone Creek and Bon-Ton reached a settlement and, by stipulation, the Court dismissed the claims against Bon-Ton “with prejudice, with each party to bear its own costs and attorneys' fees.” (Docs. 77-78.) Stone Creek then proceeded to trial against Omnia.

         After a four-day bench trial, the Court found that Omnia did not infringe on Stone Creek's mark because its use of the mark was unlikely to cause confusion. (Doc. 175.) On appeal, the Ninth Circuit disagreed and concluded that Omnia infringed Stone Creek's mark, but remanded “for a determination of whether Omnia had the requisite intent” to support disgorgement of profits as a remedy. (Doc. 193-1 at 34.)

         On remand, this Court found that Stone Creek is entitled to a permanent injunction but is not entitled to disgorgement of profits. (Doc. 201.) As a result, although Stone Creek is the prevailing party, it received no monetary damages. The Clerk entered judgment in favor of Stone Creek and against Omnia for permanent injunctive relief only. (Docs. 204-205.)

         Stone Creek thereafter filed a bill of costs for $141, 924.51. (Doc. 206.) Omnia objected, arguing that Stone Creek is not entitled to costs incurred after October 25, 2013 (and instead is required to pay Omnia's costs incurred after that date) because Stone Creek did not obtain a more favorable judgment than the terms provided in the offer of judgment. (Doc. 215 at 2-3.) Omnia also filed its own bill of costs seeking $13, 516.46. (Doc. 207.) Stone Creek then objected to Omnia's bill, arguing that Omnia is not entitled to recover costs (and instead is responsible for paying Stone Creek's) because Stone Creek “improved its position by rejecting the joint offer of judgment.” (Doc. 216.)

         On May 31, 2018, the Clerk of Court denied Omnia's bill of costs and granted Stone Creek's, with some modifications. (Doc. 218.) Omnia now asks ...


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