United States District Court, D. Arizona
DOUGLAS L. RAYES UNITED STATES DISTRICT JUDGE.
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
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
(Doc. 208-1 at 3-4.) Stone Creek rejected the offer.
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.
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.)
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.)
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.”
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 ...