William Keeton Enterprises, Inc. v. A All American Strip-O-Rama, Inc.

74 F.3d 178, 1996 WL 12896
CourtCourt of Appeals for the Ninth Circuit
DecidedJanuary 16, 1996
DocketNo. 94-35712
StatusPublished
Cited by1 cases

This text of 74 F.3d 178 (William Keeton Enterprises, Inc. v. A All American Strip-O-Rama, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
William Keeton Enterprises, Inc. v. A All American Strip-O-Rama, Inc., 74 F.3d 178, 1996 WL 12896 (9th Cir. 1996).

Opinion

OPINION

PER CURIAM:

This is an appeal from an order entered July 21, 1994, enjoining defendants from using or doing business as “A All American Strip-O-Rama” and/or “Strip-O-Rama/A All American”; ordering them to disconnect and terminate use of all telephone numbers listed under those names and imposing sanctions of $500 per day for violation of the order; and imposing attorneys’ fees on defendants as sanctions for their breach of “the ... settlement agreement and Stipulated Judgment and Permanent Injunction.”

The district court had subject matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. § 1338(a). We have jurisdiction under 28 U.S.C. § 1292 of this appeal from an order granting an injunction.

We vacate and remand because the district court lacked jurisdiction under Kokkonen v. Guardian Life Ins. Co., — U.S. -, 114 S.Ct. 1673, 128 L.Ed.2d 391 (1994), to enforce the settlement agreement that ostensibly provided the basis for its order. Further, even if the district court’s order had satisfied Kokkonen, the record indicates that the parties never reached an enforceable settlement agreement. Finally, even assuming that the parties had reached agreement on the terms of a settlement agreement and jurisdiction existed to enforce it, the district court’s order would have to be vacated for failing to comply with the requirements of Fed.R.Civ.P. 65(d).

FACTS

For a number of years, plaintiff William Keeton Enterprises, Inc. and defendants A All American Strip-O-Rama, Inc. have been involved in a dispute, accompanied by public confusion, over their simultaneous use of different variations of the trade names “Strip-O-Rama” and “Strip-O-Gram” in connection with their strip-tease telegram businesses. On August 3, 1992, plaintiff filed this action against defendants for violating federal service mark rights. On June 29, 1993, on the [180]*180eve of trial, the parties reached a settlement. Counsel for both sides appeared before the court to recite the terms of the settlement on the record.' Counsel for defendants said in relevant part:

The terms of the agreement are that the defendants agreed to change their name. The new name that the defendants will use is A All American Stripper, one word, ST-R-I-P-P-E-R, Rama, next word, capital R-A-M-A, that’s capital R and small A-M-A.
... [I]n any telephone listing or printed material there shall be blank spaces directly between all of the words as opposed to any hyphens or other mark differentiating.
That doesn’t mean we can’t go beyond the scope of the word for advertising purposes.
The court is to enter a permanent injunction.

Following the hearing, counsel for the parties prepared the Stipulated Judgment and Permanent Injunction (“SJPI”) and delivered it to the court for signature. The SJPI had three provisions. First, it provided that “both parties shall be permanently enjoined from making disparaging references about each other, expressly or by implication.” Second, it provided for court approval and order of certain “Stipulated Terms,” as follows:

1. That both parties shall use selling methods that state what services they offer and what services they do not offer.
2. That defendant shall use good faith efforts to change telephone listings, printed materials and advertisements as soon as reasonably possible.
3. That the parties shall bear their own respective costs and attorney’s fees.

Third, it provided for a dismissal with prejudice of all claims and counterclaims.

The SJPI was signed and filed by the court on June 29. Later that same day, however, counsel for both parties became aware that certain aspects of their agreement had been omitted from the SJPI submitted to the court and attempted to withdraw it. They contacted the court but by then it had already been signed. On July 2, defendants requested a hearing on the “presentment of judgment,” “withdrawing] any consent to entry of further Stipulated Judgments herein.” Counsel pointed out that defendants reserved the question of the continuing validity of their service marks and also stated that “[t]he settlement reached by the parties does not provide for any continuing action or jurisdiction by the ... Court except for a permanent injunction enjoining the corporate parties from making ‘disparaging references about each other.’ ” (Emphasis in original.)

On July 21, the court entered a minute order striking the stipulated judgment “erroneously entered” on June 30. It directed the parties to submit a “revised Stipulated Judgment” within ten days. On July 26, plaintiff submitted to the clerk a proposed injunction, which expanded on the stipulated terms but still restricted the injunction to prohibiting the parties from making disparaging references. Defendants never signed it, however, and the court did not enter it.

On August 30, the court entered a minute order setting a hearing for September 14 to discuss defendants’ request to vacate the settlement agreement that had been read into the record on June 29 and to reschedule the trial.

At the September 14 hearing, defendants pointed out “that the parties cannot agree to the interpretation of the agreement that we put together.” Defendants maintained that the agreement does not address the validity of its service mark “Strip-O-Rama.” The court dismissed this interpretation as “ridiculous,” and stated that it would not be necessary to submit a new order “because the terms of the agreement are set forth in the record. They are binding and enforceable, and I think that is perfectly adequate.” He added that he would “rescind the minute order that vacated the settlement agreement and order and reinstate the order ... [of] June 29.” The court raised the subject of sanctions against the defendants, and defendants’ counsel responded:

I don’t see how sanctions are appropriate in this ease. What we have is an honest mistake by the parties. In fact, the Court right now is granting relief that [181]*181sounds to us like what we wanted in the first place with this initial order of June 29.

The minute entered in the court’s docket after the hearing stated:

The Court will rescind the Minute Order ... vacating the stipulated settlement. The order signed 6/29/98 is reinstated. The Court declines to impose sanctions ... at this time.

On May 13, 1994, plaintiff moved for an order “enforcing the terms of the settlement agreement entered into the record on June 29, 1993.” Defendants’ response maintained that they had changed their name and were using “Strip-O-Rama” in conjunction with “A All American” such that all confusion had been eliminated.

On June 29, the court entered a minute order stating that the recent decision of the Supreme Court in Kokkonen v. Guardian Life Ins. Co., — U.S.-, 114 S.Ct. 1673, 128 L.Ed.2d 391 (1994), did not bar enforcement, because

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
74 F.3d 178, 1996 WL 12896, Counsel Stack Legal Research, https://law.counselstack.com/opinion/william-keeton-enterprises-inc-v-a-all-american-strip-o-rama-inc-ca9-1996.