Toppan Interamerica, Inc. v. Whalen LLC

• Court: District Court, S.D. California
• Decided: February 14, 2024
• Docket: 3:23-cv-01948
• Status: Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 Toppan Interamerica, Inc., Case No. 23-cv-1948-BAS-BGS

12 Plaintiff, ORDER GRANTING UNOPPOSED 13 v. MOTION TO STAY PROCEEDINGS (ECF No. 11) 14 Whalen LLC,

15 Defendant. 16 17 Before the Court is Defendant’s Motion to Stay Proceedings Pending International 18 Trade Commission (“ITC”) Resolution. (ECF No. 11.) Plaintiff does not oppose. (ECF 19 No. 13.) Based on the state of the record, as applied to the applicable law, the Court 20 GRANTS the motion. 21 I. BACKGROUND 22 Toppan brought this case alleging that Whalen has infringed a number of Toppan’s 23 copyrights. Specifically, Toppan alleges that Whalen has infringed United States Copyright 24 Registration Nos. VA 2-142-287 (the “Fitzroy Copyright”), VA 2-176-002 (the 25 “Roughsawn Oak Copyright”), VA 2-142-295 (the “Aspen Oak Copyright”), VA 2-142- 26 292 (the “Manaslu Oak Copyright”), VA 2-178-041 (the “Bianco Oak Copyright”), and 27 VA 2-188-328 (the “Charcoal Oak Copyright”). (ECF No. 1, ¶¶ 27‒80.) The case remains 28 1 in its infancy, as Defendant has yet to file an Answer to Plaintiff’s Complaint. (See ECF 2 No. 14.) 3 Toppan subsequently filed a complaint with the ITC, under Section 337 of the Tariff 4 Act of 1930, alleging that Whalen infringes the Fitzroy Copyright, the Roughsawn Oak 5 Copyright, the Aspen Oak Copyright, and the Manaslu Oak Copyright (together, the 6 “Overlapping Copyrights”). (See ECF No. 11-2, Ex. 1, ¶ 2.) On January 9, 2024, the ITC 7 instituted an investigation titled In the Matter of Certain Furniture Products Finished with 8 Decorative Wood Grain Paper and Components Thereof, naming Whalen as the sole 9 respondent. (Id., Ex. 2.) On January 12, 2024, the Notice of Institution was published in 10 the Federal Register. (Id., Ex. 3.) 11 II. LEGAL STANDARD 12 A district court has the inherent power to stay proceedings pending before it. Landis 13 v. N. Am. Co., 299 U.S. 248, 254 (1936). The court’s decision to stay proceedings under 14 Landis is discretionary. Mediterranean Enters., Inc. v. Ssangyong Corp., 708 F.2d 1458, 15 1465 (9th Cir. 1983). When a party seeks to stay the proceedings, the court weighs “the 16 competing interests which will be affected by the granting or refusal to grant a stay.” 17 Lockyer v. Mirant Corp., 398 F.3d 1098, 1110 (9th Cir. 2005) (quoting CMAX, Inc. v. Hall, 18 300 F.2d 265, 268 (9th Cir. 1962)). 19 III. ANALYSIS 20 A. Mandatory Stay under 28 U.S.C. § 1659 21 Six copyrights are at issue in this litigation. Defendant first seeks to stay this action 22 as it concerns four of the Overlapping Copyrights under 28 U.S.C. § 1659. (ECF No. 11- 23 1 at 2.) Plaintiff does not oppose the motion. (ECF No. 13.) For its part, § 1659 provides 24 that: 25 In a civil action involving parties that are also parties to a proceeding before the United States International Trade 26 Commission under section 337 of the Tariff Act of 1930, at the 27 request of a party to the civil action that is also a respondent in the proceeding before the Commission, the district court shall 28 1 stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any claim that 2 involves the same issues involved in the proceeding before the 3 Commission, but only if such request is made within— (1) 30 days after the party is named as a respondent in the 4 proceeding before the Commission, or 5 (2) 30 days after the district court action is filed, whichever is later. 6 Both Plaintiff and Defendant are parties to this litigation and the ITC Action. In the 7 latter litigation, Defendant is the sole respondent and Plaintiff is the sole complainant. 8 Each case involves substantially the same issues, specifically, the alleged infringement of 9 the Fitzroy, Roughsawn Oak, Aspen Oak, and Manaslu Oak Copyrights. (Compare ECF 10 No. 1, ¶¶ 27‒53, 63‒71, with ECF No. 11-2, Ex. 1, ¶ 2.) Furthermore, the Complaint here 11 and the ITC Complaint allege the same products infringe these copyrights. (Compare ECF 12 No. 1, with ECF No. 11-2, Ex. 1.) Defendant filed the motion on January 17, 2024, well 13 within thirty days of when the ITC issued its Notice of Institution naming Defendant as a 14 respondent in the ITC action. Because Defendant is a respondent in the ITC Action, 15 Plaintiff alleges infringement of the same copyrights both here and in the ITC Action, and 16 Defendant’s motion was timely filed, the statutory requirements for a mandatory stay are 17 met as to the Fitzroy, Roughsawn Oak, Aspen Oak, and Manaslu Oak Copyrights. 18 Therefore, the Court GRANTS Defendant’s unopposed request to stay this action 19 as to the Overlapping Copyrights. Accordingly, this matter is STAYED as to Plaintiff’s 20 claims concerning the Fitzroy, Roughsawn Oak, Aspen Oak, and Manaslu Oak Copyrights 21 pending final resolution of the ITC Action, including any and all appeals until the ITC 22 proceedings are no longer subject to judicial review. See In re Princo Corp., 478 F.3d 23 1345, 1355 (Fed. Cir. 2007). 24 B. Landis Stay 25 In performing a Landis analysis, the Court is primarily concerned with balancing the 26 competing interests of the moving and non-moving parties. Rivers v. Walt Disney Co., 980 27 F. Supp. 1358, 1360 (C.D.Cal.1997). However, in this instance, Plaintiff does not oppose 28 1 || Defendant’s motion to stay. (ECF No. 13.) Therefore, because the parties appear to agree 2 || that staying the remaining Charcoal Oak and Bianco Oak copyright claims is warranted, or 3 || at least acceptable, the Court sees no reason not to exercise its inherent power to issue one. 4 ||See, e.g., White v. Novartis Pharms. Corp., No. CIVS0600665WBSGGH, 2006 WL 5 || 1409556, at *1 (E.D. Cal. May 22, 2006). 6 CONCLUSION 7 It is therefore ORDERED that all proceedings in this matter shall be STAYED and 8 ||the file ADMINISTRATIVELY CLOSED. Within fourteen (14) days of the ITC 9 rendering a final decision on Plaintiff's Overlapping Claims, the parties shall file a joint 10 |/request to lift the stay. The parties are further ORDERED to file a joint status report 11 |/notifying the Court of the procedural posture of the ITC proceedings, if the proceedings 12 || are not yet resolved, by no later than August 15, 2024. 13 IT IS SO ORDERED. 14 A , 15 || DATED: February 14, 2024 (Yin A (Lyohan. 16 United States District Judge 17 18 19 20 21 22 23 24 25 26 27 28 A.