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1 NOEL M. COOK, SBN 122777 2 3 4 5
LINDA JOY KATTWINKEL, SBN 164283 OWEN, WICKERSHAM & ERICKSON, P.C. 455 Market Street, Suite 1910 San Francisco, CA 94105 Telephone: 415-882-3200 Telecopier: 415-882-3232 [email protected] [email protected] SANRIO COMPANY, LTD. and
6 Attorneys for Plaintiffs, 7 SANRIO, INC. 8
UNITED STATES DISTRICT COURT
9
IN AND FOR THE NORTHERN DISTRICT OF CALIFORNIA
10 11 SANRIO COMPANY, LTD., a Japanese 12 13 14 15 16 17 18 19 20
corporation and SANRIO, INC., a California corporation, ) ) ) ) Plaintiff, ) ) vs. ) ) TORRI BUTLER TORRES, a North ) Carolina state resident and POSH.LIFE, an ) unincorporated entity, dba POSH) LIFE.COM, POSHLIFEBEAUTY.COM, ) and POSHLIFEBLING.COM, and DOES ) 1- 10, ) ) Defendants. ) ___________________________________ ) Civil Action No. C 07-05024 VRW PLAINTIFFS' CASE MANAGEMENT STATEMENT AND PROPOSED ORDER Date: January 3, 2008 Time: 3:30 p.m. Courtroom 6, 17th Floor, San Francisco
This is an action to redress violations of the federal trademark laws, 15 U.S.C. §1114, et
21 seq., federal copyright laws, 17 U.S.C. § 501, et seq., federal laws of unfair competition, 15 22 U.S.C. §1125(a) et seq., as amended, California state law of unfair competition, Cal. Bus. & 23 Prof. Code § 17200 et seq., and common law unfair competition, as the result of allegedly willful 24 and unauthorized use by Defendants of Sanrio's famous HELLO KITTY character name, 25 trademark and copyrighted artwork. 26
Defendants to date are proceeding pro se, and to date have not filed an Answer or other
27 responsive pleading. Plaintiffs' counsel initially contacted Ms. Torres to seek her participation in 28
PLAINTIFFS' CASE MANAGEMENT STATEMENT - 1No. C 07-05024 VRW
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1 a joint case management statement. However, it became apparent that Ms. Torres could not 2 meaningfully participate in preparing a joint statement. Plaintiffs believe it is not prudent to file a 3 joint statement under these circumstances. Plaintiffs' counsel have suggested several times to 4 Defendant Ms. Torres that she hire counsel. The parties have engaged in limited settlement talks. 5
Given the posture of the case, Plaintiffs suggest that the Case Management Conference be
6 continued for ninety days. 7 1. 8
Jurisdiction and Service: This Court has subject matter jurisdiction over Plaintiff's claims under and pursuant to 28
9 U.S.C. §§ 1331 and 1338. This court has supplemental jurisdiction over Plaintiff's claims 10 pursuant to 28 U.S.C. § 1367. Venue in the Northern District of California is proper pursuant to 11 28 U.S.C.§ 1391(b), § 1392 and § 1400(a). 12
On October 11, 2007, Plaintiffs served Defendants with all appropriate documents
13 including the summons, complaint, and order setting the Case Management Conference and 14 ADR deadlines. Defendants have confirmed their receipt thereof. No parties remain to be served. 15 2. 16
Facts: Plaintiff Sanrio Co., Ltd. is a Japanese corporation. Since 1960, Sanrio Co., Ltd. has been
17 engaged in the business of manufacturing, distributing and selling products for use by children 18 and young adults. Plaintiff Sanrio, Inc. is a wholly owned subsidiary of Sanrio Co., Ltd. located 19 in South San Francisco, California. Since 1976, Sanrio, Inc. has been the exclusive United States 20 distributor of the products of Sanrio Co., Ltd. and is currently the exclusive United States master 21 licensee of the rights in and to the SANRIO trademarks and copyrights. 22
Sanrio Co., Ltd. created the famous HELLO KITTY character. Since 1976, most of
23 Sanrio's merchandise has displayed the HELLO KITTY name and design on the products and 24 product packaging. Sanrio Co., Ltd. owns over 30 U.S. copyright registrations for artwork 25 depicting HELLO KITTY, as well as numerous U.S. trademark registrations for the name 26 HELLO KITTY and the design mark comprising the face of HELLO KITTY. HELLO KITTY is 27 one of the most popular children's characters. Sales in the U.S. alone of Sanrio's genuine 28
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1 HELLO KITTY character merchandise exceeded $400 million last year. Sanrio's HELLO 2 KITTY products are frequently knocked-off by counterfeiters. Sanrio expends significant 3 resources policing infringers. 4
Plaintiffs believe that Defendant Torri Butler Torres is a North Carolina resident. She is
5 the sole proprietor of Defendants Posh.Life,
In May 2006, Plaintiffs (collectively, "Sanrio") became aware that Posh.Life, through its
10 own websites well as through some third-party sites, was displaying and offering for sale various 11 counterfeit HELLO KITTY cell phone and PDA covers as well as offering customization 12 crystalizing services featuring HELLO KITTY designs. Sanrio, though its counsel, sent a cease 13 and desist letter to the California and North Carolina addresses listed in the domain name 14 registrations for the Posh.Life websites. Sanrio also sent take-down notices under the Digital 15 Millennium Copyright Act, 17 U.S.C. § 512( c) ("DMCA"), to Internet service providers (ISP) 16 which, to the best Sanrio could determine, were hosting the Posh.Life websites, including 17 Yahoo!. Ms. Torres responded, stating that pages featuring the HELLO KITTY items in question 18 had been removed from the Posh.Life website and would not be put up again. Yahoo! responded 19 with a form email message stating that appropriate action would be taken. 20
About one month later in July, 2006, Sanrio became aware that Posh.Life continued to
21 display and offer for sale the various unauthorized HELLO KITTY cell phone and PDA covers 22 and related customization services. Sanrio sent another cease and desist message to Ms. Torres 23 by email, as well as a second DMCA take-down notice to Yahoo!. Ms. Torres responded by 24 acknowledging that the unauthorized HELLO KITTY items were still displayed, but asserted that 25 Defendants no longer offered them for sale. Sanrio again told Ms. Torres that continued 26 unauthorized display of these items constituted infringement, and again demanded their removal. 27 Yahoo! responded to the second DMCA notice with another form email message stating that 28
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1 appropriate action would be taken. 2
A month later, in July 2006, Sanrio became aware that the unauthorized HELLO KITTY
3 items and customization services remained on the Posh.Life websites. Sanrio attempted to send 4 another cease and desist letter to Defendants at their California address. The letter was returned 5 with an indication that the California address was no longer valid. Sanrio continued to monitor 6 the Posh.Life websites for approximately a month and determined that Ms. Torres continued and 7 had seemingly expanded the infringing activities to include customization services for more 8 items. In August 2006, Sanrio sent a follow-up cease and desist letter to Ms. Torres, and a third 9 DMCA take-down notice to Yahoo!. Ms. Torres responded, again stating that she no longer 10 offered for the items for sale and asserted that she intended to remove all unauthorized images of 11 the infringing and/or counterfeit HELLO KITTY items. Yahoo! responded to the third DMCA 12 take-down notice with another form email message stating that appropriate action had been 13 taken. 14
In September 2006, Sanrio determined that Posh.Life was offering at least seven
15 counterfeit HELLO KITTY items and/or related customization services, ranging in price between 16 $165.00 and $650.00. Sanrio attempted to make a purchase of representative samples through 17 the Posh.Life website. Sanrio's representative received an email response from Ms. Torres 18 stating that Posh.Life was not permitted to make HELLO KITTY items and that such items 19 should have been removed from the site. Sanrio continued to monitor the Posh.Life websites 20 through the end of September 2006, and determined that Ms. Torres had seemingly ceased the 21 infringement. 22
However, in June 2007, Sanrio became aware that Posh.Life was again displaying and
23 apparently offering for sale an expanded selection of at least nineteen counterfeit crystalized 24 HELLO KITTY items, including baby pacifiers covered in rhinestones that clearly presented a 25 choking hazard. In August 2007, Sanrio confirmed that Ms. Torres was continuing to sell and 26 ship counterfeit HELLO KITTY items via online orders, including a rhinestone-covered baby 27 pacifier sold to Sanrio's representative within the Northern District of California. Sanrio also 28
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1 determined that the Posh.Life websites were apparently being hosted by different ISP's. Sanrio 2 sent DMCA take-down notices to the new ISPs. One ISP responded that it had notified their 3 customer and she had removed the disputed images. However, at least one image of a HELLO 4 KITTY item remained on the Posh.Life websites. 5
Around this same time, Sanrio discovered that Ms. Torres had been displaying an image
6 of a counterfeit HELLO KITTY item as the signature image on her blog site, apparently since at 7 least January 11, 2007. The blog includes a link to the Posh.Life websites. Sanrio also discovered 8 that Ms. Torres was displaying images of her counterfeit HELLO KITTY items on the online 9 auction sites eBay and iOffer. Sanrio sent DMCA take-down notices to the ISP for the blog site 10 and the auction sites. To date, the infringing images appear to have been removed from those 11 third-party sites. In light of the above pattern of repeated postings, this lawsuit was filed to 12 prevent continued infringements. 13
In her correspondence with Plaintiffs, Ms. Torres contends that she has actually sold only
14 two HELLO KITTY items, and that she did not make those items; rather she had purchased them 15 from a third party vendor on eBay. Ms. Torres further asserts that she has destroyed the 16 remaining HELLO KITTY items in her possession; that she does not have any sales records, and 17 that she cannot get access to the sales records for her Posh.Life store while it was hosted by 18 Yahoo! Plaintiffs have evidence discrediting Mr. Torres' claims. Plaintiffs believe that Ms. 19 Torres has made and sold numerous unauthorized HELLO KITTY items despite repeated cease 20 and desist letters. 21 3. 22
Legal Issues: Plaintiffs allege that Defendants' unauthorized display, offering for sale and sale of the
23 crystalized HELLO KITTY products and customized crystalizing services constitutes willful 24 infringement of the Sanrio's copyright, trademark and trade dress rights in the HELLO KITTY 25 name and image, in violation of federal copyright law and federal and state trademark law, and 26 federal and state laws of unfair competition. Ms. Torres asserts that the infringement was not 27 willful. 28
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1 4. 2
Motions: No motions have been filed to date. Plaintiffs request that the court set an appropriate
3 deadline for such filing in consideration of Defendants' pro se status, and anticipate a motion for 4 default judgment in the event Defendants fail to file a responsive pleading. Plaintiffs anticipate 5 filing a motion for summary judgment following limited discovery. 6 5. 7
Amendment of Pleadings: Defendants have not timely filed an Answer or other responsive pleading. At this time,
8 Plaintiffs do not anticipate a need to amend the pleadings. Depending upon the nature of 9 Defendants' responsive pleading, Plaintiffs may want to amend. Also, recognizing that 10 information obtained during discovery may uncover potential new issues or parties, Plaintiffs 11 may want to amend to add new defendants. 12 6. 13
Evidence Preservation: Plaintiffs and their counsel have discussed preservation of electronic and non-electronic
14 evidence. 15 7. 16
Disclosures: In light of Defendants' current pro se status and failure to appear, the parties have not yet
17 exchanged initial disclosures. 18 8. 19
Discovery: No discovery has been taken to date. Plaintiffs do not anticipate a need to limit or modify
20 discovery rules. In light of Defendants' current pro se status and failure to appear, the parties 21 have not yet met and conferred pursuant to Fed. R. Civ. P. 26(f). 22 9. 23 24 10. 25 26 11. 27 28
PLAINTIFFS' CASE MANAGEMENT STATEMENT - 6No. C 07-05024 VRW
Class Actions: Not applicable. Related Cases: Plaintiffs are not aware of any related cases. Relief: Plaintiff seeks the following relief:
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1
A.
Injunctive relief: enjoining Defendants from manufacturing, displaying, offering
2 for sale or selling any items bearing the HELLO KITTY name or image, or otherwise using the 3 HELLO KITTY name or mark; otherwise infringing any of Plaintiffs' copyrights or trademarks; 4 otherwise competing unfairly with Plaintiffs; and requiring Defendants to deliver up for 5 destruction all infringing products, and other matter employed in the manufacture, distribution 6 and sale of infringing products. 7
B. That Defendants be required to pay Sanrio: Defendants' profits from the
8 infringements, together with interest thereupon in an amount presently unknown; Sanrio's 9 damages in an amount presently unknown but believed to be at least $150,000, together with 10 interest; statutory damages in an amount not more than $1,000,000 per counterfeit mark, as 11 provided under and pursuant to 15 U.S.C. §1117( c); three times the profits and damages 12 pursuant to 15 U.S.C. § 1117(b); and statutory damages in the amount of $150,000 per copyright 13 infringement, the maximum allowable as provided under and pursuant to 17 U.S.C. § 504( c), as 14 amended. 15
C. That Defendants be required to pay Sanrio the costs of this action, together with
16 Sanrio's reasonable attorneys' fees, under 17 U.S.C. 505 and 15 U.S.C. §1117(a). 17 12. 18
Settlement and ADR: The parties have engaged in some settlement discussions. Plaintiffs do not believe
19 Defendants' factual assertions regarding the scope of infringing sales are credible. Plaintiffs need 20 to obtain accurate records of Defendants' sales in order to determine an appropriate settlement 21 amount. It appears that Plaintiffs will need to subpoena Yahoo! for such records. 22 23 13. 24
Plaintiffs consent to court-ordered mediation. Consent to Magistrate: Plaintiffs consent to have a Magistrate Judge conduct all further proceedings including
25 trial and entry of judgment. 26 14. 27 28
PLAINTIFFS' CASE MANAGEMENT STATEMENT - 7No. C 07-05024 VRW
Other References: Not applicable.
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1 15. 2
Narrowing of Issues: Plaintiffs believe the issues can be narrowed or completely resolved by dispositive
3 motions once limited discovery has been conducted. 4 16. 5
Expedited Schedule: Plaintiffs prefer that the case not be handled on an expedited basis in order to allow time
6 for settlement negotiations. 7 17. 8
Scheduling: Plaintiffs request the following schedule, with the understanding that adjustments may be
9 requested if rendered necessary by timing of the mediation or other matters that may impact 10 scheduling: 11 12 13 14 15 16 17 18 19 18. 20 21 19. 22
Trial: The case will be tried to a jury. Plaintiffs anticipate a one-week trial. Disclosure of Non-party Interested Entities or Persons: Pursuant to Civil L.R. 3-16, Plaintiffs certify that as of this date, other than the named Fact discovery cut-off: Expert disclosure: Rebuttal expert reports due: Expert discovery cut-off: Dispositive motions hearing: Trial: August 15, 2008 September 19, 2008 October 17, 2008 November 14, 2008 January 17, 2008 March 31, 2009, or two months after the court rules on dispositive motions, or at a date thereafter as convenient to the Court's calendar
23 parties, there is no such interest to report. 24 20. 25 26 27 28
PLAINTIFFS' CASE MANAGEMENT STATEMENT - 8No. C 07-05024 VRW
Other Matters: Not applicable.
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1 2 3 Dated: December 26, 2007 4 5 6 7 8
OWEN, WICKERSHAM & ERICKSON, P.C.
By ____/ljk/___________________________ Noel M. Cook Linda Joy Kattwinkel Attorneys For Plaintiff, SANRIO COMPANY, LTD. and SANRIO, INC.
CASE MANAGEMENT ORDER
9 ______________________________________________________________________________ 10 ______________________________________________________________________________ 11 ______________________________________________________________________________ 12 ______________________________________________________________________________ 13 ______________________________________________________________________________ 14 ______________________________________________________________________________ 15 ______________________________________________________________________________ 16 ______________________________________________________________________________ 17 ______________________________________________________________________________ 18 ______________________________________________________________________________ 19 ______________________________________________________________________________ 20 21 22 23 Dated: ____________________ 24 25 26 27 28
PLAINTIFFS' CASE MANAGEMENT STATEMENT - 9No. C 07-05024 VRW S:\1Clients\SANRI\LITIGA\70014-PoshLife\CMCstatement.wpd
IT IS SO ORDERED.
By ___________________________________ HONORABLE VAUGHN R. WALKER Chief Judge, U.S. District Court Northern District of California
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