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Case No. 13-17622


United States Court of Appeals
for the
Ninth Circuit
SUNEARTH INC., AND THE SOLARAY CORP.
Plaintiffs Appellants
v.
SUN EARTH SOLAR POWER CO. LTD., AND NBSOLAR USA, INC.
Defendants Appellees

On Appeal From the Judgment of the United States District Court


for the Northern District of California
The Honorable Claudia Wilken
Case No. 4:11-cv-04991-CW

PLAINTIFFS / APPELLANTS
PETITION FOR PANEL REHEARING OR
FOR REHEARING EN BANC
Daniel N. Ballard, Esq.
SEQUOIA COUNSEL PC
6624 Penney Way
Carmichael, CA 95608

Stephen B. Mosier, Esq.


Clark E. Proffitt. Esq.
HAYES SOLOWAY P.C.
4640 E. Skyline Drive
Tucson, AZ 85718
Attorneys for Plaintiffs-Appellants

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TABLE OF CONTENTS
TABLE OF AUTHORITIES..................................................................iii
INITIAL STATEMENT...........................................................................................1
ARGUMENT ...........................................................................................................4
I.

The Panel Erred In Holding That Fifty-Six Hope Road Is Binding


Precedent5
A. Overlooked Material Points of Fact....5
B. Overlooked Material Points of Law....6

II.

The Panel Erred By Creating An Unnecessary Circuit Split..........................8

III.

This Appeal Permits The Court To Address Questions of Exceptional


Importance.10
A. The Evidentiary Burden To Prove A Case Exceptional.....11
B. The Standard Of Review Of The Decision To Award Fees...12

IV.

The Panels Purported Application Of The Octane Standard Is Dicta


And Improper13

CONCLUSION.......................................................................................................14
STATEMENT OF RELATED CASES...................................................................15
CERTIFICATE OF COMPLIANCE ......................................................................15
CERTIFICATE OF SERVICE................................................................................15

ii

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TABLE OF AUTHORITIES
Cases
Baker v. Deshong, No. 14-11157, 2016 U.S. App. LEXIS 8014
(May 3, 2016)...2,3,9,11
CollegeNET, Inc. v. XAP CORP., 483 F.Supp.2d 1058 (D. Ore.2007)...11
Estate of Saunders v. CIR, 745 F. 3d 953 (9th Cir.2014).6
Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3rd Cir.2014)..2, 8
Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059
(9th Cir. 2015)........passim
Georgia-Pacific Consumer Products LP v. Von Drehle Corp.,
781 F.3d 710 (4th Cir. 2015)2,9
Gracie v. Gracie, 217 F.3d 1060 (9th Cir. 2000)..4
Harper v. Virginia Dep't of Taxation, 509 U.S. 86 (1993)5
Highmark Inc. v. Allcare Health Mgmt. Sys., Inc.,
134 S. Ct. 1744 (2014)...passim
MM v. Lafayette School Dist., 681 F. 3d 1082 (9th Cir.2012)..6
Miller v. Gammie, 335 F. 3d 889 (9th Cir.2003)...7
Octane Fitness, LLC v. Icon Health & Fitness, Inc.,
134 S. Ct. 1749 (2014)...passim
Playboy Enterprises v. Baccarat Clothing Co. Inc., 692 F.2d 1272
(9th Cir.1982) .4,7
Seven Arts Filmed Entertainment Ltd. v. Content Media Corp.,
733 F.3d 1251 (9th Cir. 2013).7
Skydive Ariz., Inc. v. Quattrochi, 704 F.Supp.2d 841 (D. Ariz.2010).....11
Slep-Tone Entertainment v. Karaoke Kandy Store, 782 F.3d 313
(6th Cir.2015).....2,10
Smith v. Entrepreneur Media, Inc. (In re Smith), 2009 Bankr. LEXIS 4582
(B.A.P. 9th Cir. Dec. 17, 2009).11
Silvers v. Sony Pictures Entertainment, Inc., 402 F. 3d 881 (9th Cir.2005).7
Thacker v. FCC, 503 F.3d 984 (9th Cir.2007)..6
United States v. Johnson, 256 F.3d 895 (9th Cir.2001)6
Statutes
15 U.S.C. 1117(a)...4,9,10
Rules of Procedure
Ninth Circuit Rule 36-3...10
iii

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INITIAL STATEMENT
Plaintiffs/Appellants SunEarth, Inc. and The Solaray Corp. (SunEarth)
prevailed below after a bench trial in its trademark infringement action under the
Lanham Act. SunEarth subsequently appealed the district courts (1) denial of its
attorneys fee request, (2) the scope of the permanent injunction and (3) denial of
its fourth contempt motion. In a Memorandum Decision issued on May 24, 2016, a
three-judge panel of this Court affirmed the Judgment in all respects.1
The basis for requesting this combined Petition for Reconsideration or En
Banc Review is limited to the panels decision affirming the district courts denial
of attorneys fees. Specifically, the panel held it was precluded by precedent from
considering whether the standard used to award attorneys fees in Lanham Act
cases has been altered by the Supreme Courts decision in Octane Fitness, LLC v.
Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014). Id. at p.3.
In the undersigned counsels judgment, that erroneous conclusion was based
on overlooked material points of fact and law. Specifically, the panels conclusion
that it was required by Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778
F.3d 1059, 1078 (9th Cir. 2015) to apply the pre-Octane attorneys fee award
standard was erroneous as a matter of law because it did not take into account that
all the appellate briefing in Fifty-Six Hope Road was complete before Octane was

The panels Memorandum Decision is Attachment 1.

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decided, that none of that briefing mentioned Octane, that at no point in oral
argument was Octane or the attorneys fee award mentioned, and that panels
decision did not address Octane at all but, rather, recited the existing law by rote.
That panel was not asked to decide, and did not decide, if Octane altered the legal
standard in this Circuit for fee awards in Lanham Act cases. The overlooked
material points of law are the rule that statements made by three-judge panels
merely in passing, without analysis, are not binding precedent and the rule that
circuit courts should not unnecessarily create splits in the law.2
If panel rehearing is denied, this Court should sit en banc to consider
whether its definition of a Lanham Act exceptional case must be changed in light
of Octane. The panels Memorandum Decision holding it could make no changes
directly conflicts with four circuit courts that have each held the Octane totality of
the circumstances fee award standard in patent cases must now also be applied in
Lanham Act cases and must replace their existing law.3 The panel has created an
unnecessary circuit splitleaving this Court standing alone.
Moreover, Octane changed not only the standard used to determine whether
2

SunEarths Rule 28(j) letter informing the Court that other circuit courts
adopted the Octane standard in Lanham Act cases is Attachment 2.
3

Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 313-315 (3rd Cir.2014);
Georgia-Pacific Consumer Products LP v. Von Drehle Corp., 781 F.3d 710, 72021 (4th Cir. 2015); Baker v. DeShong, No. 14-11157, 2016 U.S. App. LEXIS 8014,
*10-11 (May 3, 2016). See also, Slep-Tone Entertainment v. Karaoke Kandy Store,
782 F.3d 313, 317-18 (6th Cir.2015).

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to award attorneys fees, it also changed the evidentiary burden to prove a case is
exceptional from clear and convincing to a preponderance of the evidence.
Octane, 134 S.Ct. at 1758. A companion patent case decided by the Supreme Court
the very same day on overlapping issues also changed the standard of review of a
district courts exceptional patent case determination from de novo to an abuse
of discretion. Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744,
1748 (2014). These changes are issues of exceptional importance in patent law
and, by extension, trademark law if Octane and Highmark applythat no circuit
court, with one exception, has addressed in the context of the Lanham Act.4 This
appeal provides the Court the opportunity to address them en banc.
The panels alternative conclusion that even under the Octane standard this
case is not exceptional and does not warrant fee shifting is dicta, and worse,
legally improper. If Octane applies then so does Highmark and the change it made
in the standard of review. Highmark held appellate review is abuse of discretion
instead of de novo because determining whether a case is exceptional is a matter
of discretion rooted in factual determinations the district court is better
positioned to decide. The district court did not perform a totality of the
circumstances fee shifting analysis and so the panel could not, and did not, have

The Fifth Circuit held Octane requires that to prove a Lanham Act case
exceptional the burden is by a preponderance of the evidence. Baker v.
Deshong, 2016 U.S. App. LEXIS 8014 at *10.

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one for review. Its own de novo analysis was improper under Highmark and, was
moreover, functionally deficient in that it evaluatedand rationalized awayeach
of Defendants bad acts in isolation rather than, as Octane requires, holistically
under a totality of circumstances approach. The panels truncated Octane analysis
cannot stand as the example for how such an analysis should properly be done.
In the event rehearing is granted, SunEarth requests reconsideration of the
panels decision to deny SunEarths motion to supplement the appellate record to
include evidence of Defendants post-Judgment bad acts and the panels holding
this case is not exceptional under either the current standard or Octane.
ARGUMENT
The prevailing party in an exceptional case under the Lanham Act may be
awarded its attorneys fees. 15 U.S.C. 1117(a).5 This Circuits current rule when
the trademark owner prevails is that a case is exceptional "when the infringement is
malicious, fraudulent, deliberate, or willful." Gracie v. Gracie, 217 F.3d 1060,
1068 (9th Cir.2000). That list of adjectives was taken from the Lanham Acts
legislative history and first adopted as that Acts fee-shifting standard by Playboy
Enterprises v. Baccarat Clothing Co. Inc., 692 F.2d 1272, 1276 (9th Cir.1982).
The district court applied this standard when rejecting SunEarths request for
attorneys fees. The district courts application of that standard was understandable
5

The fee-shifting provision in its entirety states: The court in exceptional cases
may award reasonable attorney fees to the prevailing party. 15 U.S.C. 1117(a).

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given that it ruled on SunEarths fee request in August, 2013long before the
Supreme Court issued Octane in April, 2014 (while this case was on appeal). If, as
every other circuit court to address the matter has held, the Octane totality of the
circumstances standard applies in Lanham Act cases, then that standard must now
apply to this case as well. See Harper v. Virginia Dep't of Taxation, 509 U.S. 86,
97 (1993) (Supreme Court interpretations of law are given full retroactive effect in
all cases still open on direct review).
I.

The Panel Erred In Holding That Fifty-Six Hope Road Is Binding


Precedent
Although SunEarth requested the panel apply the Octane totality of the

circumstances standard when reviewing the denial of its fee request, the panel
held it could not because it was bound by a post-Octane Fitness panels decision
applying our prior definition of exceptional. Memorandum Decision at p.3-4
(citing Fifty-Six Hope Road, 778 F.3d at 1078). The panel, however, overlooked
material points of fact and law when coming to that erroneous conclusion.
A.

Overlooked Material Points of Fact

As a matter of fact, all of the briefing submitted by the parties in Fifty-Six


Hope Road was completed before Octane was decided.6 None of the briefing
submitted to that panel could have, or did, mention Octane. Moreover, neither that
6

A review of the appellate docket for Fifty-Six Hope Road Music [No. 13-15407 at
Dkt. 71] reveals the last brief was filed in that case on March 20, 2014a month
before Octane was decided on April 29, 2014. See Attachment 3.

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ruling nor the attorneys fees award was discussed during oral argument.7 The
Fifty-Six Hope Road panel was not presented with the question whether Octane
changed the definition of exceptional under the Lanham Act. Even though
decided ten months after Octane, the panel had no briefing on, and did not
consider, let alone answer, that question. That panels decision merely recited the
existing law. Fifty-Six Hope Road, 778 F.3d at 1078.
B.

Overlooked Material Points of Law

As a matter of law, the Fifty-Six Hope Road panels passing statement of the
existing law on Lanham Act attorneys fee awards was not binding precedent on
the panel that decided this appeal. In the Ninth Circuit, statements made in
passing, without analysis, are not binding precedent." Thacker v. FCC, 503 F.3d
984, 993-94 (9th Cir.2007). This rule applies even when the statement is a
statement of law. Estate of Saunders v. CIR, 745 F. 3d 953, 960-61 (9th Cir.2014);
MM v. Lafayette School Dist., 681 F. 3d 1082, 1088 (9th Cir.2012).8 The Fifty-Six

The oral argument was held about two months after Octane was decided.
Available at http://www.ca9.uscourts.gov/media/view.php?pk_id=0000013011
8

See also, United States v. Johnson, 256 F.3d 895, 915 (9th Cir.2001) (en banc)
(Kozinski, J., concurring with four judge plurality)("Of course, not every statement
of law in every opinion is binding on later panels. Where it is clear that a statement
is made casually and without analysis, where the statement is uttered in passing
without due consideration of the alternatives, or where it is merely a prelude to
another legal issue that commands the panel's full attention, it may be appropriate
to re-visit the issue in a later case.)(adopted by the Court in Miranda B. v.

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Hope Road panel was not asked to decide, did not focus on, and did not decide
whether Octane changed the Lanham Acts definition of exceptional.
Merely because Fifty-Six Hope Road was decided after Octane does not
mean its unexamined, rote recitation of an existing rule of law is binding precedent
on all subsequent three-judge panelsespecially when that rule was not raised as
an issue or addressed by that panel. Octane is admittedly not intervening
Supreme Court authority decided after Fifty-Six Hope Road. But that panels
recitation of this Courts long-held and unexamined standard for fee shifting under
the Lanham Act was dicta the panel was not obligated to follow.
Octane is, however, intervening Supreme Court authority decided after
Playboy Enterprises, 692 F.2d at 1276which directly considered the issue and
literally created this Courts Lanham Act fee award standard. Because Octane
undercut the theory or reasoning underlying the Playboy Enterprises standard in
an irreconcilable way,9 the panel should have considered itself bound by Octane.
See Miller v. Gammie, 335 F. 3d 889, 900 (9th Cir.2003) (en banc).
The panel also overlooked the rule that circuit courts should not
unnecessarily create splits in the law. See, e.g., Seven Arts Filmed Entertainment
Ltd. v. Content Media Corp., 733 F.3d 1251, 1256 (9th Cir.2013); Silvers v. Sony
Kitzhaber, 328 F.3d 1181, 1186 (9th Cir.2003) and quoted in In re Wal-Mart Wage
& Hour Emp't Practices Litig., 737 F.3d 1262, 1268 n. 8 (9th Cir.2013)).
9

See Section II, infra.

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Pictures Entertainment, Inc., 402 F. 3d 881, 890 (9th Cir.2005). SunEarth timely
provided the panel with a Rule 28(j) letter that identified the then-three (now four)
circuit courts that held the Octane standard must now be applied in Lanham Act
cases.10 The panel, however, did not mention any of those decisions but, instead,
asserts without discussion that Fifty-Six Hope Road is binding precedent.
II.

The Panel Erred By Creating An Unnecessary Circuit Split


Each of the four circuit courts that have addressed whether Octane changed

the Lanham Act fee award standard has held it does or, in the case of the Sixth
Circuit, that it likely does. Those decisions are:
a. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 313-315 (3rd Cir.2014).
While Octane Fitness directly concerns the scope of a district
court's discretion to award fees for exceptional case under 285
of the Patent Act, the case controls our interpretation of 35(a) of
the Lanham Act. Not only is 285 identical to 35(a), but
Congress referenced 285 in passing 35(a). Thus, we have
look[ed] to the interpretation of the patent statute for guidance in
interpreting 35(a). Moreover, in its explication of the word
"exceptional, the Octane Fitness Court relied in part on the D.C.
Circuit's holding that the term exceptional, as used in 35(a) of
the Lanham Act, means "uncommon or not run-of-the-mill. In so
doing, the Octane Fitness Court noted that the Lanham Act fee
provision is identical to 285 of the Patent Act. We believe that
the Court was sending a clear message that it was defining
exceptional not just for the fee provision in the Patent Act, but
for the fee provision in the Lanham Act as well. We therefore
import Octane Fitness's definition of exceptionality into our
interpretation of 35(a) of the Lanham Act. (emphasis added and
internal citations omitted).
10

See Attachment 2.

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b. Georgia-Pacific Consumer Products LP v. Von Drehle Corp., 781 F.3d 710,


720-21 (4th Cir.2015).
To be sure, the Octane Fitness Court did not interpret the
attorneys fees provision of 1117(a). But the language of
1117(a) and 285 is identical, and we conclude that there is no
reason not to apply the Octane Fitness standard when considering
the award of attorneys fees under 1117(a). Thus, we conclude
that a district court may find a case exceptional and therefore
award attorneys fees to the prevailing party under 1117(a) when
it determines, in light of the totality of the circumstances, that (1)
there is an unusual discrepancy in the merits of the positions taken
by the parties based on the non-prevailing party's position as
either frivolous or objectively unreasonable; (2) the non-prevailing
party has litigated the case in an `unreasonable manner'; or(3)
there is otherwise the need in particular circumstances to advance
considerations of compensation and deterrence. Because the
district court did not have the benefit of the Octane Fitness
standard when considering whether Georgia-Pacific was entitled to
attorneys fees under 1117(a), we vacate the court's award of
attorneys fees and remand the question for further consideration in
light of this standard. (sic) (emphasis added and internal citations
omitted).
c. Baker v. DeShong, No. 14-11157, 2016 U.S. App. LEXIS 8014, *10-11 (May 3,
2016)
While Octane Fitness directly concerns the scope of a district
court's discretion to award fees for an exceptional case under
285 of the Patent Act, the case guides our interpretation of
1117(a) of the Lanham Act and is instructive here. In light of
the Supreme Court's clear guidance under 285and given the
parallel purpose, structure, and language of 1117(a) to 285
we join our sister circuits in their reading of exceptional under
Octane Fitness and construe the same meaning here. We merge
Octane Fitness's definition of exceptional into our interpretation
of 1117(a) and construe its meaning as follows: an exceptional
case is one where (1) in considering both governing law and the
facts of the case, the case stands out from others with respect to the
substantive strength of a party's litigating position; or (2) the

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unsuccessful party has litigated the case in an unreasonable


manner. The district court must address this issue in the case-bycase exercise of their discretion, considering the totality of the
circumstances." (emphasis added and internal citations omitted).
d. Slep-Tone Entertainment v. Karaoke Kandy Store, 782 F.3d 313, 317-18 (6th
Cir.2015)
Moreover, after the district court denied the Defendants' fees
motion (but while the final judgment was suspended), the Supreme
Court decided Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
which clarified the meaning of exceptional under the Patent Act's
fee-shifting provision, 35 U.S.C. 285. The fee-shifting provisions
in 285 and 1117(a) are identical. And statutes using the same
language should generally be interpreted consistently. Accordingly,
on remand the district court should resolve the pending Rule 52
motion and assess the applicability of Octane Fitness before
determining whether it is necessary to reassess if this case qualifies
as extraordinary under 1117(a). (emphasis added and internal
citations omitted).
The reasoning used by these circuit courts to hold the Octane standard must
now apply in Lanham Act cases is nearly identicaland unassailable. There is no
reason for this Court to create a circuit split on this issue.
While the panels Memorandum Decision is not precedent, it may still be
cited to all the courts of this circuit. Ninth Circuit Rule 36-3. As the only word
from this Court on this issue, litigants and district courts will likely afford the
panels Memorandum Decision undeserved weight.
III.

This Appeal Permits The Court To Address Questions of Exceptional


Importance
The Court should use this appeal to address whether Octane and Highmark

10

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are intervening authority that must now be applied in Lanham Act caseswhich, if
so, would both clarify and change the law of this Circuit.
A.

The Evidentiary Burden To Prove A Case Exceptional

Octane changed the evidentiary burden to prove a patent case exceptional


from clear and convincing to preponderance of the evidence. Id. at 1758.11 This
Court has not defined that burden even under its existing Lanham Act law.
This circuits Lanham Act exceptional case analysis is generally focused
on whether the infringement was willful. If found, that supports (but does not
compel) the conclusion the case is exceptional. This Court has not, however,
defined the burden to prove willfulness eitherleaving district courts to cite outof-circuit precedent or none when noting that willfulness must be proved by clear
and convincing evidence. CollegeNET, Inc. v. XAP CORP., 483 F.Supp.2d 1058,
1065 (D. Ore.2007)(citing out-of-circuit law);12 Skydive Ariz., Inc. v. Quattrochi,
704 F.Supp.2d 841, 844 (D. Ariz.2010) (no law cited).
This Court should clarify for its district courts that, as is now the rule they
apply in the patent cases they hear, the burden to prove a Lanham Act case
exceptional is by a preponderance of the evidencenot by the clear and

11

The Fifth Circuit holds that change applies in Lanham Act cases. Baker, 2016
U.S. App. LEXIS 8014 at *10.
12

Relied on by Smith v. Entrepreneur Media, Inc. (In re Smith), 2009 Bankr.


LEXIS 4582 (B.A.P. 9th Cir. Dec. 17, 2009).

11

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convincing burden the litigants shoulder to prove willful infringement.


B.

The Standard Of Review Of The Decision To Award Fees

In this Circuit, whether a trademark infringement case is exceptional is a


question of law reviewed de novo. Lahoti v. Vericheck, Inc., 636 F.3d 501, 505
(9th Cir. 2011); Watec Co., Ltd. v. Liu, 403 F.3d 645, 656 (9th Cir. 2005).
However, the decision whether to then actually award attorneys fees is reviewed
for an abuse of discretion. Lahoti, 636 F.3d at 505; Stephen W. Boney, Inc. v.
Boney Servs., Inc., 127 F.3d 821, 825 (9th Cir.1997).
The Supreme Court in Highmark addressed and rejected this type of twophase standard of review. Relying on Octane and non-patent cases, the Court held
that determining whether a case is exceptional is a matter of discretion, and that
an appellate court should apply an abuse-of-discretion standard in reviewing all
aspects of a district court's fee award determination in patent cases. Highmark,
134 S. Ct. at 1748-49 (2014) (emphasis added and internal quotations and citations
omitted). The Court explained that [a]lthough questions of law may in some cases
be relevant to the [] inquiry, that inquiry generally is, at heart, rooted in factual
determinations that the district court is better positioned" to decide. Id.
As a result, the fee award decisions made by the district courts in this Circuit
(and elsewhere) are now being reviewed by the Federal Circuit for an abuse of
discretion. This Court should consider whether, in light of Octane, it must now

12

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review its district courts Lanham Act fee award decisions for an abuse of
discretionand do away with the type of two-phase standard of review rejected by
Highmark.
IV.

The Panels Purported Application Of The Octane Standard Is Dicta


And Improper
The panel purported to apply the Octane totality of the circumstances

standard to assess whether this is an exceptional case that warrants fee shifting.
Although it concluded this is not such a case, that cannot be an alternative holding.
First, it had already held it was foreclosed from applying Octane.
Second, the analysis it performed was wrong. The panel evaluatedand
rationalized awayeach of the Defendants bad acts that were presented to the
district court in isolation rather than, as Octane requires, holistically under a
totality of the circumstances approach.
Third, it was not reviewing a proper totality of the circumstances fee
shifting analysis as Octane defined that process because the district court did not
perform one. The panels own de novo analysis was constrained by the particular,
and limited, facts that were presented to, and considered by, the district court in
order to prove the case exceptional under the very different, and much more
constrained, willful infringement standard. More facts now apply, including, for
example, continued infringing action by Defendants and their dilatory conduct
in failing to prosecute and refusing to stipulate to dismissal of their cross-appeal.

13

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See, Memorandum Decision at p. 5.


Fourth, its de novo analysis is foreclosed by Highmarks admonition, and
reasoning, that the exceptional case analysis is a matter of discretion rooted in
factual determinations the district court is better positioned to decide.
For all these reasons, the panels purported Octane fee shifting analysis
cannot stand as the example for how such an analysis should properly be done.
CONCLUSION
For all the reasons presented above, this Court should grant a panel
rehearing or rehearing en banc to reconsider the panels decision affirming the
district courts denial of SunEarths attorneys fee request.

Dated: June 7, 2016


SEQUOIA COUNSEL PC

HAYES SOLOWAY P.C.

By: /s/ DANIEL N. BALLARD. ESQ.

By: /s/ STEPHEN B. MOSIER, ESQ.


Attorneys for Plaintiffs/Appellants

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STATEMENT OF RELATED CASES


There are no known related cases pending in this Court.
CERTIFICATE OF COMPLIANCE PURSUANT TO
CIRCUIT RULES 35-4 AND 40-1
I certify that pursuant to Circuit Rule 35-4 and 40-1, the attached Petition for
Panel Rehearing Or Rehearing En Banc is proportionately spaced, has a typeface
of 14 points or more, and contains 3,608 words.
Dated: June 7, 2016

By: /s/ Daniel N. Ballard, Esq.

CERTIFICATE OF SERVICE
I certify that I electronically filed the foregoing with the Clerk of the Court
for the United States Court of Appeals for the Ninth Circuit by using the appellate
CM/ECF system on June 7, 2016. I certify that all participants in the case are
registered CM/ECF users and that service will be accomplished by the appellate
CM/ECF system.
Dated: June 7, 2016

By: /s/ Stephen B. Mosier, Esq.

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SUNEARTH v. SUN EARTH SOLAR POWER, Case No. 13-17622

ATTACHMENT 1

PETITION FOR PANEL REHEARING OR FOR REHEARING EN BANC

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FILED
NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS

MAY 24 2016
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT


SUNEARTH, INC., a California
corporation; THE SOLARAY
CORPORATION, a Hawaiian corporation,

No. 13-17622
D.C. No. 4:11-cv-04991-CW

Plaintiffs - Appellants,
MEMORANDUM*
v.
SUN EARTH SOLAR POWER CO.,
LTD., a Chinese limited liability company,
FKA Ningbo Solar Electric Power Co.,
Ltd.; NBSOLAR USA INC., a California
corporation,
Defendants - Appellees.
SUNEARTH, INC., a California
corporation; THE SOLARAY
CORPORATION, a Hawaiian corporation,
Plaintiffs - Appellants,
v.
SUN EARTH SOLAR POWER CO.,
LTD., a Chinese limited liability company,
FKA Ningbo Solar Electric Power Co.,
Ltd.; NBSOLAR USA INC., a California
corporation,
Defendants - Appellees.

No. 15-16096
D.C. No. 4:11-cv-04991-CW

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Appeal from the United States District Court


for the Northern District of California
Claudia Wilken, Senior District Judge, Presiding
Argued and Submitted December 8, 2015
San Francisco, California
Before: KOZINSKI, BYBEE, and CHRISTEN, Circuit Judges.
The district court did not abuse its discretion by granting an injunction that
permitted Sun Earth Solar Power Co., Ltd. and its subsidiary NBSolar USA Inc.
(collectively, SESP) to identify Sun Earth Solar Power Co., Ltd. as the
manufacturer, importer, or seller on goods branded as NBSolar rather than Sun
Earth . . . to the minimum extent necessary as required by law or ordinary business
customs to operate within the United States under the NBSolar name. When
fashioning an injunction to remedy trademark infringement, the district court has
the discretion to permit non-misleading uses of a trade name. See E. & J. Gallo
Winery v. Gallo Cattle Co., 967 F.2d 1280, 129798 (9th Cir. 1992). Nor does the
exception violate Rule 65(d)s requirements that the order granting the injunction
state its terms specifically and describe in reasonable detail . . . the act or acts
restrained. Fed. R. Civ. P. 65(d). An injunction allowing limited use of a
trademark need not catalog the entire universe of possible uses but must only, as
*

This disposition is not appropriate for publication and is not precedent


except as provided by 9th Cir. R. 36-3.
2

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here, give the trademark holder adequate notice of the enjoined partys
permissible uses. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1211
(9th Cir. 2000).
The district court did not err in determining that this was not an exceptional
case. The district court did not clearly err in its determination that SESPs
infringing conduct was the result of a negligent failure to investigate, not
malicious, fraudulent, deliberate, or willful infringement. See Fifty-Six Hope Rd.
Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1078 (9th Cir. 2015). Nor did the
district court clearly err in determining that SESPs missteps in its efforts to
comply with the preliminary injunction were the result of incompetence and
carelessness, not intentional mistakes. Appellants argue that a recent Supreme
Court case interpreting the Patent Act altered the definition of exceptional under
the Lanham Acts fee-shifting provision. See Octane Fitness, LLC v. ICON Health
& Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). Appellants argue that under Octane
Fitness the district court should have analyzed their claim for fees under a totality
of the circumstances test instead of looking to our prior case law requiring
malicious, fraudulent, deliberate, or willful infringement. We are bound by a
post-Octane Fitness panels decision applying our prior definition of exceptional.

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See Fifty-Six Hope Rd. Music, Ltd., 778 F.3d at 1078 (citing Gracie v. Gracie, 217
F.3d 1060, 1068 (9th Cir. 2000)).
Further, given the district courts findings, we have little doubt that this case
is unexceptional even under Octane Fitnesss totality of the circumstances test.
SESPs products bear the Sun Earth name abroad. The district court found that
SESPs lead executive credibly and consistently testified that SESP did not
intend to copy Sun Earths mark but instead sought to unify its U.S. brand with its
global brand. SESP also successfully registered its mark with the USPTO and the
district court credited SESPs explanation that it mistakenly believed that this
registration established non-infringement. As to the websites, the district court
found that SESPs post-injunction failure to implement choice pages was due to IT
incompetence and that SESP voluntarily brought itself into compliance after Sun
Earth filed its contempt motion. As to the labels, the district court determined that
SESPs original label violated the modified preliminary injunction because it
included the manufacturers name at the top as opposed to the bottom of the label.
The label included the words Sun Earth Solar Power Co., Ltd. next to a NBSolar
logo, and in the same size font as the other text on the label. Again, the district
court found that SESP voluntarily complied once notified of the deficiency.
Similarly, the district court found that SESPs various factual misstatements in its
4

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court filings were due to mistake and carelessness and were affirmatively
acknowledged and corrected. Finally, SESPs brief assertion of non-frivolous,
state-law counterclaims cannot make this a case of exceptional infringement
under the Lanham Act.
The district court did not abuse its discretion in failing to order contempt
sanctions against SESP for infringing content on its independent distributors
websites. The injunction only applied to websites maintained by SESP. Sun Earth,
Inc. has not shown that SESP engaged in the type of knowing, affirmative conduct
necessary for it to have aided or abetted its distributors violations. See Inst. of
Cetacean Research v. Sea Shepherd Conservation Socy, 774 F.3d 935, 95052
(9th Cir. 2014).
Appellants also request attorneys fees as damages for time expended
responding to SESPs cross appeal. SESP filed a cross appeal, failed to prosecute
it, but refused to stipulate to dismissal. We recognize that appellants may be
entitled to a modest fee award due to this dilatory conduct, see 28 U.S.C. 1912,
Fed. R. App. P. 38, and refer appellants motion to the Appellate Commissioner.
See 9th Cir. R. 39-1.9.

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Accordingly, we AFFIRM the district courts permanent injunction, its


denial of attorneys fees to appellee, and its denial of sanctions.2
AFFIRMED.

We also DENY Appellants motion to supplement the record as moot.


6

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SUNEARTH v. SUN EARTH SOLAR POWER, Case No. 13-17622

ATTACHMENT 2

PETITION FOR PANEL REHEARING OR FOR REHEARING EN BANC

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Page1 2ofof2 3

4640 E. Skyline Drive


Tucson, Arizona 85718
P: 520-882-7623
F: 520-882-7643

Norman P. Soloway*
Stephen B. Mosier
Todd A. Sullivan
Thomas J. Rossa**
Huw R. Jones***
Clark E. Proffitt
Daniel H. Landau

175 Canal Street


Manchester, NH 03101
P: 603-668-1400
F: 603-668-8567
2150 South 1300 East, Suite 500
Salt Lake City, Utah 84106
P: 801-326-1982
F: 801-990-4601

May 1, 2015
Molly Dwyer, Clerk of Court
Office of the Clerk
U.S. Court of Appeals for the Ninth Circuit
P.O. Box 193939
San Francisco, CA 94119-3939
RE:

SunEarth, Inc., et al v. Sun Earth Solar Power Co., Ltd, et al


Ninth Circuit Case No. 13-17622

Dear Ms. Dwyer:


Appellant SunEarth, Inc. provides four supplemental authorities related to
Case No. 13-17622 pursuant to Federal Rule of Appellate Procedure 28(j).
This appeal is from a judgment holding that SunEarths trademark was
infringed but because the case was not exceptional SunEarth could not recover
its attorneys fees under 17 U.S.C. 1117(a)(3). The supplemental authorities are
provided to inform the Court that two, and perhaps three, circuit courts have now
held that their trademark law exceptional case analysessimilar if not identical
to this Courts analysisare no longer good law in light of the Supreme Courts
Octane Fitness decision.
One day before SunEarth filed its opening brief, the Supreme Court rejected
and replaced the Federal Circuits patent law exceptional case analysis used to
MANCHESTER, NH

TUCSON, AZ
*Admitted in NY and MA; practice in AZ limited to Patent, Trademark and Federal Matters
** Admitted in UT; practice in AZ limited to Patent, Trademark and Federal Matters
*** Admitted in IL and DC; practice in AZ limited to Patent, Trademark and Federal Matters

SALT LAKE CITY, UT

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Molly C. Dwyer
Page 2
May 1, 2015

consider when the prevailing party could recover its attorneys fees. Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014). Both parties
in this appeal have cited Octane Fitness.
Supplemental Authorities: Two circuit courts have now held that the new
Octane Fitness patent law exceptional case analysis also controls when courts
consider fee awards in trademark cases. Fair Wind Sailing, Inc. v. Dempster, 764
F. 3d 303, 313-345 (3rd Cir.2014); Georgia-Pacific Consumer Prods. LP v. Von
Drehle Corp., 781 F.3d 710 at *26-*27 (4th Cir. 2015). Another has suggested as
much, without expressly so holding. Slep-Tone Entm't Corp. v. Karaoke Kandy
Store, Inc., 2015 U.S. App. LEXIS 5475, 10-11 (6th Cir. Ohio 2015).1
Appellant is unaware of any case before any Circuit Court of Appeals that
has addressed the issue and declined to apply the analysis of Octane Fitness in the
context of 17 U.S.C. 1117(a)(3).

Respectfully,

/s/ Stephen B. Mosier


Stephen B. Mosier, Esq.
Attorney for Appellants

In

Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1078 (9th
Cir. 2015)) upholding a finding of an exceptional case under 15 U.S.C. 1117, the
parties briefing in that case had closed prior to the Supreme Courts Octane
Fitness decision, and this Court did not sua sponte address or mention the issues
raised by the Octane Fitness decision at all.

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SUNEARTH v. SUN EARTH SOLAR POWER, Case No. 13-17622

ATTACHMENT 3

PETITION FOR PANEL REHEARING OR FOR REHEARING EN BANC

1 of 13

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General Docket
United States Court of Appeals for the Ninth Circuit
Court of Appeals Docket #: 12-17519
Nature of Suit: 3840 Trademark
Fifty-Six Hope Road Music, Ltd, et al v. Jem Sportswear, et al
Appeal From: U.S. District Court for Nevada, Las Vegas
Fee Status: Paid

Docketed: 11/09/2012
Termed: 02/20/2015

Case Type Information:


1) civil
2) private
3) null
Originating Court Information:
District: 0978-2 : 2:08-cv-00105-PMP-GWF
Court Reporter: Araceli V. Bareng
Court Reporter: Joan P. Quiros
Court Reporter: Summer Rivera, Court Reporter
Court Reporter: Erin Smith, Court Reporter
Trial Judge: Philip M. Pro, Senior District Judge
Date Filed: 01/23/2008
Date Order/Judgment:
Date Order/Judgment EOD:
07/03/2012
07/03/2012
Prior Cases:
11-16155

Date Filed: 05/06/2011

Date Disposed: 06/28/2011

Date NOA Filed:


11/09/2012

Date Rec'd COA:


11/09/2012

Disposition: FRAP 42b Dismissal - Staff Atty Order

Current Cases:
Lead

Member

Start

End

12-17502
12-17519
12-17595

12-17519
13-15407
13-15407

11/09/2012
03/04/2013
03/04/2013

12-17502

13-15407

03/12/2013

12-17502
12-17502
12-17519
12-17519
12-17595
13-15407

12-17595
13-15473
12-17595
13-15473
13-15473
13-15473

11/21/2012
03/15/2013
11/21/2012
03/15/2013
03/15/2013
03/15/2013

Companion

Consolidated
Cross-Appeal

FIFTY-SIX HOPE ROAD MUSIC, LTD.


Plaintiff - Appellee,

Paul Bost
Direct: 310-228-3700
[COR NTC Retained]
Sheppard Mullin Richter & Hampton LLP
Suite # 1600
1901 Avenue of the Stars
Los Angeles, CA 90067-6001
Jill Maria Pietrini, Attorney
Direct: 310-228-3700
[COR NTC Retained]
Sheppard Mullin Richter & Hampton LLP
Suite 1600
1901 Avenue of the Stars
Los Angeles, CA 90067-6001
L. Christopher Rose, Esquire
Direct: 702-699-7500
[COR NTC Retained]
Jolley Urga Woodbury & Little
3800 Howard Hughes Parkway

5/31/2016 7:05 PM

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Sixteenth Floor
Las Vegas, NV 89169
William R. Urga, Esquire
Direct: 702-699-7500
[COR NTC Retained]
Jolley Urga Woodbury & Little
16th Floor
3800 Howard Hughes Parkway
Sixteenth Floor
Las Vegas, NV 89169
Karin Dougan Vogel, Esquire, Attorney
Direct: 619-338-6532
[COR NTC Retained]
Sheppard Mullin Richter & Hampton LLP
Suite 1900
501 West Broadway
San Diego, CA 92101-3598
ZION ROOTSWEAR, LLC
Plaintiff - Appellee,

Paul Bost
Direct: 310-228-3700
[COR NTC Retained]
(see above)
Timothy Joseph Ervin, Attorney
Direct: 978-256-6041
[COR NTC Retained]
Gallant & Ervin LLC
Firm: 978-256-6041
One Olde North Rd., Suite 103
Chemsford, MA 01824
Jill Maria Pietrini, Attorney
Direct: 310-228-3700
[COR NTC Retained]
(see above)
L. Christopher Rose, Esquire
Direct: 702-699-7500
[COR NTC Retained]
(see above)
William R. Urga, Esquire
Direct: 702-699-7500
[COR NTC Retained]
(see above)
Karin Dougan Vogel, Esquire, Attorney
Direct: 619-338-6532
[COR NTC Retained]
(see above)

v.
A.V.E.L.A., INC.
Defendant,

Michael Ray Adele


Direct: 714-342-6987
[COR NTC Retained]
Technology Litigation Center
828 S. Marjan
Anaheim, CA 92806

X ONE X MOVIE ARCHIVE, INC.


Defendant,

Michael Ray Adele


Direct: 714-342-6987
[COR NTC Retained]

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(see above)
CENTRAL MILLS, INC. (FREEZE)
Defendant,

Michael Ray Adele


Direct: 714-342-6987
[COR NTC Retained]
(see above)

LEO VALENCIA
Defendant,

Michael Ray Adele


Direct: 714-342-6987
[COR NTC Retained]
(see above)

JEM SPORTSWEAR
Defendant - Appellant,

John Root Yates, Esquire, Attorney


Direct: 818-382-6200
[COR LD NTC Retained]
Greenberg & Bass LLP
Suite 1000
16000 Ventura Boulevard
Encino, CA 91436

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FIFTY-SIX HOPE ROAD MUSIC, LTD.; ZION ROOTSWEAR, LLC,
Plaintiffs - Appellees,
v.
A.V.E.L.A., INC.; X ONE X MOVIE ARCHIVE, INC.; CENTRAL MILLS, INC. (FREEZE); LEO VALENCIA,
Defendants,
and
JEM SPORTSWEAR,
Defendant - Appellant.

5/31/2016 7:05 PM

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(34 of 41)
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11/09/2012

1
10 pg, 198.75 KB

11/09/2012

2
5 pg, 126.83 KB

11/15/2012

3
5 pg, 133.17 KB

11/15/2012

4
7 pg, 276.74 KB

11/21/2012

5
17 pg, 639.26 KB

11/28/2012

11/28/2012
11/28/2012

Filed (ECF) Appellant Jem Sportswear Mediation Questionnaire. Date of service: 11/15/2012. [8402828]
(Yates, John) [Entered: 11/15/2012 10:29 AM]
Filed (ECF) Appellant Jem Sportswear Correspondence: notice of designation of portions of transcripts to
be included in record on appeal and statement of issues to be presented on appeal. Date of service:
11/15/2012. [8402851]--[COURT UPDATE: Edited docket text to reflect content of filing. Resent NDA.
11/15/2012 by RY] (Yates, John) [Entered: 11/15/2012 10:35 AM]
DOCKETED CAUSE AND ENTERED APPEARANCES OF COUNSEL. SEND MQ: Yes. Setting crossappeal briefing schedule as follows: Mediation Questionnaire due on 11/28/2012. First cross appeal brief
due 02/19/2013 for A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Jem Sportswear, Leo Valencia and X
ONE X Movie Archive, Inc.. Second brief on cross appeal due 03/21/2013 for Fifty-Six Hope Road Music,
Ltd. and Zion Rootswear, LLC. Third brief on cross appeal due 04/22/2013 for A.V.E.L.A., INC., Central
Mills, Inc. (Freeze), Jem Sportswear, Leo Valencia and X ONE X Movie Archive, Inc. Optional cross appeal
reply brief is due 14 days from service of third cross appeal brief. [8411468] [12-17595, 12-17502,
12-17519] (GR) [Entered: 11/21/2012 12:27 PM]
Filed (ECF) notice of appearance of Karin Dougan Vogel for Appellees Fifty-Six Hope Road Music, Ltd.
and Zion Rootswear, LLC. Date of service: 11/28/2012. [8418715] (Vogel, Karin) [Entered: 11/28/2012
04:26 PM]

Added attorney Karin Dougan Vogel for Fifty-Six Hope Road Music, Ltd. Zion Rootswear, LLC, in case
12-17519. [8418749] (EL) [Entered: 11/28/2012 04:38 PM]

Filed (ECF) Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC Mediation
Questionnaire. Date of service: 11/28/2012. [8418322]--[COURT UPDATE: Spread docket text to 12-17502
and 12-17519. Resent NDA. 11/29/2012 by RY] (Pietrini, Jill) [Entered: 11/28/2012 02:42 PM]

9
3 pg, 34.55 KB

01/04/2013

Filed Appellant Jem Sportswear Mediation Questionnaire. Served on 11/07/2012. [8396735] (GR)
[Entered: 11/09/2012 02:53 PM]

2 pg, 55.29 KB

4 pg, 166.96 KB

11/29/2012

DOCKETED CAUSE AND ENTERED APPEARANCES OF COUNSEL. SEND MQ: No. The schedule is
set as follows: Transcript ordered by 12/10/2012. Transcript due 01/08/2013. Appellant Jem Sportswear
opening brief due 02/19/2013. Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC
answering brief due 03/21/2013. Appellant's optional reply brief is due 14 days after service of the
answering brief. [8396728] (GR) [Entered: 11/09/2012 02:51 PM]

10
2 pg, 24.66 KB

Filed order MEDIATION (VLS): These cases are under consideration for inclusion in the Mediation
Program. Within 14 days of the date of this order, counsel for all parties intending to file briefs in this matter
are requested to inform Stephen Liacouras, Circuit Mediator, in writing, by email at
stephen_liacouras@ca9.uscourts.gov, of their clients views on whether the case is appropriate for
settlement discussions or mediation. This communication will be kept confidential, if requested, from the
other parties in the case. This communication shall not be served on the opposing party and shall not be
filed with the court. For more detailed information about the Mediation Program and its procedures
generally, please see Mediation Program web site: www.ca9.uscourts.gov/mediation. The existing briefing
schedule remains in effect pending the determination whether the case will be selected for inclusion in the
Mediation Program. [8420242] [12-17502, 12-17595, 12-17519] (AF) [Entered: 11/29/2012 03:47 PM]
Filed order MEDIATION (SL): The court has determined that these appeals will not be selected for
inclusion in the Mediation Program. [8461508] [12-17502, 12-17595, 12-17519] (AF) [Entered: 01/04/2013
11:20 AM]

01/23/2013

11

Filed (ECF) Streamlined request for extension of time to file Opening Brief by Appellant Jem Sportswear.
New requested due date is 03/21/2013. [8483968] (Yates, John) [Entered: 01/23/2013 10:37 AM]

01/23/2013

12

Streamlined request [11] by Appellant Jem Sportswear in 12-17519 to extend time to file the brief is
approved. Amended briefing schedule: First cross appeal brief due 03/21/2013 for Jem Sportswear.
Second brief on cross appeal due 04/22/2013 for A.V.E.L.A., INC., Central Mills, Inc. (Freeze) and
Fifty-Six Hope Road Music, Ltd.. Third brief on cross appeal due 05/22/2013 for Jem Sportswear.
The optional reply brief is due 14 days from the date of service of the answering brief. [8485349]
[12-17519, 12-17502, 12-17595] (LKK) [Entered: 01/23/2013 04:40 PM]

01/24/2013

13

Filed (ECF) Streamlined request for extension of time to file First Brief on Cross-Appeal by Appellants
A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17502.
New requested due date is 03/21/2013. [8486336] [12-17502, 12-17595, 12-17519] (Woo, Melissa)
[Entered: 01/24/2013 11:56 AM]

01/24/2013

14

Streamlined request [13] by - A.V.E.L.A., INC., Leo Valencia and X ONE X Movie Archive, Inc. to
extend time to file the brief is approved. Amended briefing schedule: First cross appeal brief due
03/21/2013 for A.V.E.L.A., INC., Leo Valencia and X ONE X Movie Archive, Inc.. Second brief on

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Case: 13-17622, 06/07/2016, ID: 10005756, DktEntry: 66-4, Page 7 of 13
cross appeal due 04/22/2013 for Central Mills, Inc. (Freeze) and Fifty-Six Hope Road Music, Ltd..
Third brief on cross appeal due 05/22/2013 for A.V.E.L.A., INC., Leo Valencia, X ONE X Movie
Archive, Inc. and Jem Sportswear. The optional reply brief is due 14 days from the date of service
of the answering brief. [8486480] (LKK) [Entered: 01/24/2013 01:01 PM]
03/11/2013

15
9 pg, 835.16 KB

03/12/2013

16
3 pg, 27.54 KB

03/15/2013

17
18 pg, 648.06 KB

03/21/2013

18
703 pg, 21.15 MB

03/22/2013

19
3 pg, 98.56 KB

Filed (ECF) Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519,
Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595 Stipulated Motion to
consolidate cases 12-17502. 12-17519, 12-17595 and 13-15407. Date of service: 03/11/2013. [8545785]
[12-17502, 12-17595, 12-17519] (Pietrini, Jill) [Entered: 03/11/2013 03:32 PM]
Filed clerk order (Deputy Clerk: CAG): The parties joint motion to consolidate is granted. Nos. 12-17502
and 13- 15407 proceed as consolidated appeals. The parties request that the briefing schedule be reset is
granted in part. The first brief on cross appeal is due May 24, 2013; the second brief is due June 24, 2013;
the third brief on cross-appeal is due July 24, 2013. If the parties need additional time to file their briefs, the
parties may file a motion pursuant to Ninth Circuit Rule 31-2.2(b). The parties motion for leave to file
oversize briefs is denied without prejudice to renewed motions that are accompanied be the proposed
briefs. Ninth Circuit Rule 32-2. [8547787] [12-17502, 12-17595, 12-17519, 13-15407] (AF) [Entered:
03/12/2013 03:17 PM]
DOCKETED CAUSE AND ENTERED APPEARANCES OF COUNSEL. SEND MQ: Yes. Setting crossappeal briefing schedule as follows: Mediation Questionnaire due on 03/22/2013. First cross appeal brief
due 05/24/2013 for A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Jem Sportswear, Leo Valencia and X
ONE X Movie Archive, Inc.. Second brief on cross appeal due 06/24/2013 for Fifty-Six Hope Road Music,
Ltd. and Zion Rootswear, LLC. Third brief on cross appeal due 07/24/2013 for A.V.E.L.A., INC., Central
Mills, Inc. (Freeze), Jem Sportswear, Leo Valencia and X ONE X Movie Archive, Inc. Optional cross appeal
reply brief is due 14 days from service of third cross appeal brief. [8551838] [13-15473, 12-17502,
12-17595, 13-15407, 12-17519] (GR) [Entered: 03/15/2013 08:25 AM]
Submitted (ECF) First Brief on Cross-Appeal and excerpts of record for review. Submitted by - Jem
Sportswear in 12-17502, Appellant Jem Sportswear in 12-17519, Appellee Jem Sportswear in 12-17595,
13-15473. Date of service: 03/21/2013. [8560229] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519]
(Yates, John) [Entered: 03/21/2013 03:52 PM]
Filed clerk order: The first brief on cross-appeal [18] submitted by Jem Sportswear is filed. Within 7 days of
the filing of this order, filer is ordered to file 7 copies of the brief in paper format, accompanied by
certification, attached to the end of each copy of the brief, that the brief is identical to the version submitted
electronically. Cover color: blue. The paper copies shall be printed from the PDF version of the brief
created from the word processing application, not from PACER or Appellate ECF. The Court has reviewed
the excerpts of record [18] submitted by Jem Sportswear in 12-17519. Within 7 days of this order, filer is
ordered to file 4 copies of the excerpts in paper format, with a white cover. The paper copies must be in the
format described in 9th Circuit Rule 30-1.6. [8560893] [12-17502, 12-17595, 13-15473, 13-15407,
12-17519] (WWP) [Entered: 03/22/2013 10:08 AM]

03/25/2013

20

Filed Appellant Jem Sportswear paper copies of excerpts of record [18] in 3 volume(s). [8563938]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 03/26/2013 07:15 AM]

03/26/2013

21

Received 7 paper copies of First Brief on Cross-Appeal brief [18] filed by Jem Sportswear. [8564958]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (SD) [Entered: 03/26/2013 02:24 PM]

22

Submitted (ECF) First Brief on Cross-Appeal for review. Submitted by Appellants A.V.E.L.A., INC., Central
Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17502. Date of service:
05/24/2013. [8643052] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519]--[COURT UPDATE: Edited
docket text to reflect content of filing (brief only, no excerpts). Resent NDA. 05/28/2013 by RY] (Woo,
Melissa) [Entered: 05/24/2013 03:11 PM]

05/24/2013

77 pg, 438.62 KB

05/28/2013

23
3 pg, 103.01 KB

05/28/2013

24

Filed clerk order: The first brief on cross-appeal [22


] submitted by A.V.E.L.A., INC., Central Mills, Inc.
(Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17502 is filed. Within 7 days of the filing of
this order, filer is ordered to file 7 copies of the brief in paper format, accompanied by certification, attached
to the end of each copy of the brief, that the brief is identical to the version submitted electronically. Cover
color: blue. The paper copies shall be printed from the PDF version of the brief created from the word
processing application, not from PACER or Appellate ECF. The Court has reviewed the excerpts of record
[8643246-2] submitted by A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie
Archive, Inc. Within 7 days of this order, filer is ordered to file 4 copies of the excerpts in paper format, with
a white cover. The paper copies must be in the format described in 9th Circuit Rule 30-1.6. [8643633]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 05/28/2013 08:53 AM]
Filed Appellants A.V.E.L.A., INC., Leo Valencia and X ONE X Movie Archive, Inc. paper copies of excerpts
of record [8643246-2] in 3 volume(s). [8644232] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519]
(WWP) [Entered: 05/28/2013 12:25 PM]

5/31/2016 7:05 PM

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25

Received 7 paper copies of First Brief on Cross-Appeal brief [22


] filed by A.V.E.L.A., INC., et al.
[8650109] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (SD) [Entered: 05/31/2013 11:00 AM]

06/05/2013

26

Filed (ECF) Streamlined request for extension of time to file Second Brief on Cross-Appeal by Appellees
Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519, Appellants Fifty-Six
Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473. New requested due
date is 07/24/2013 at 11:59 pm. [8656354] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Vogel,
Karin) [Entered: 06/05/2013 02:36 PM]

06/05/2013

27

Streamlined request [26] by Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in
12-17502, 12-17519, Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in
12-17595, 13-15407, 13-15473 to extend time to file the brief is approved. Amended briefing
schedule: Second brief on cross appeal due 07/24/2013 for Fifty-Six Hope Road Music, Ltd. and
Zion Rootswear, LLC. Third brief on cross appeal due 08/23/2013 for A.V.E.L.A., INC., Central Mills,
Inc. (Freeze), Jem Sportswear, Leo Valencia and X ONE X Movie Archive, Inc.. The optional reply
brief is due 14 days from the date of service of the answering brief. [8656557] [12-17502, 12-17595,
13-15473, 13-15407, 12-17519] (LN) [Entered: 06/05/2013 03:31 PM]

28

Filed (ECF) Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519,
Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473
Stipulated Motion to extend time to file Opening brief until 08/14/2013. Date of service: 07/11/2013.
[8700380] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Pietrini, Jill) [Entered: 07/11/2013 03:31
PM]

07/11/2013

5 pg, 107.64 KB

07/15/2013
07/15/2013

29

defendants obtained ext of time to file 3rd brief; not eligible for SL request [8703140] [12-17502, 12-17595,
13-15407, 12-17519] (CB) [Entered: 07/15/2013 09:59 AM]

30

Filed clerk order (Deputy Clerk: CB): The joint second request for an extension of time to file the second
crossappeal brief is granted. Plaintiffs second brief is due August 14, 2013. Defendants third brief(s) shall
be due September 20, 2013. Plaintiffs optional reply brief is due within 14 days after service of the third
brief. Defendants are reminded of the courts preference for joint briefing. 9th Cir. R .28-4. [8703385]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (AF) [Entered: 07/15/2013 10:46 AM]

3 pg, 37.2 KB

08/14/2013

31
105 pg, 585.69 KB

08/14/2013

32
1093 pg, 69.15 MB

08/15/2013

33
3 pg, 103.05 KB

08/15/2013

34
1 pg, 33.95 KB

Filed (ECF) Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519,
Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473
Motion to file oversized brief. Date of service: 08/14/2013. [8743567] [12-17502, 12-17595, 13-15473,
13-15407, 12-17519] (Pietrini, Jill) [Entered: 08/14/2013 09:48 PM]
Submitted (ECF) Second Brief on Cross-Appeal and excerpts of record for review. Submitted by Appellees
Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519, Appellants Fifty-Six
Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473. Date of service:
08/14/2013. [8743568] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Pietrini, Jill) [Entered:
08/14/2013 09:52 PM]
Filed clerk order: The second brief on cross-appeal [32] submitted by Fifty-Six Hope Road Music, Ltd. and
Zion Rootswear, LLC is filed. Within 7 days of the filing of this order, filer is ordered to file 7 copies of the
brief in paper format, accompanied by certification, attached to the end of each copy of the brief, that the
brief is identical to the version submitted electronically. Cover color: red. The paper copies shall be printed
from the PDF version of the brief created from the word processing application, not from PACER or
Appellate ECF. The Court has reviewed the supplemental excerpts of record [32] submitted by Fifty-Six
Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502. Within 7 days of this order, filer is ordered
to file 4 copies of the excerpts in paper format, with a white cover. The paper copies must be in the format
described in 9th Circuit Rule 30-1.6. [8743664] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519]
(WWP) [Entered: 08/15/2013 08:08 AM]
Filed clerk order (Deputy Clerk: CB): Plaintiffs motion for leave to file an overlength brief is granted. The
previously submitted brief has been filed. The current schedule continues to govern the remainder of
briefing. Plaintiffs are reminded that a motion should provide the position of opposing counsel with regard
to the requested relief. Advisory Committee Note to Rule 27-1. [8744178] [12-17502, 12-17595, 13-15473,
13-15407, 12-17519] (AF) [Entered: 08/15/2013 11:26 AM]

08/22/2013

35

Filed Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC paper copies of excerpts of
record [32] in 4 volume(s). [8753682] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP)
[Entered: 08/23/2013 07:38 AM]

08/22/2013

36

Received 7 paper copies of Second Brief on Cross-Appeal brief [32] filed by Fifty-Six Hope Road Music,
Ltd. and Zion Rootswear, LLC. [8753850] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (SD)
[Entered: 08/23/2013 09:15 AM]

5/31/2016 7:05 PM

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09/04/2013

37

Filed (ECF) Streamlined request for extension of time to file Third Brief on Cross-Appeal by - Jem
Sportswear in 12-17502, Appellant Jem Sportswear in 12-17519, Appellee Jem Sportswear in 12-17595,
13-15473. New requested due date is 10/21/2013. [8767713] [12-17502, 12-17595, 13-15473, 13-15407,
12-17519] (Yates, John) [Entered: 09/04/2013 11:22 AM]

09/04/2013

38

Streamlined request [37] by Appellant Jem Sportswear in 12-17519 to extend time to file the brief is
approved. Amended briefing schedule: Third brief on cross appeal due 10/21/2013 for Jem
Sportswear. The optional reply brief is due 14 days from the date of service of the answering brief.
[8768109] [12-17519, 12-17502, 12-17595, 13-15473, 13-15407] (JN) [Entered: 09/04/2013 01:50 PM]

39

Filed (ECF) Appellants A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie
Archive, Inc. in 12-17502, Appellees A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE
X Movie Archive, Inc. in 12-17595, Appellants A.V.E.L.A., INC., Leo Valencia and X ONE X Movie Archive,
Inc. in 13-15407, 13-15473 Motion to extend time to file Third Brief on Cross-Appeal brief until 12/05/2013
at 05:00 pm. Date of service: 10/08/2013. [8813354] [12-17502, 12-17595, 13-15473, 13-15407]--[COURT
UPDATE: Spread docket text to 12-17519. Resent NDA. 10/08/2013 by RY] (Woo, Melissa) [Entered:
10/08/2013 11:33 AM]

10/08/2013

8 pg, 104.79 KB

10/10/2013

41
1 pg, 33.22 KB

10/21/2013

42
76 pg, 1.78 MB

10/22/2013

43
3 pg, 103.1 KB

10/23/2013
10/23/2013

10/24/2013

12/03/2013

45

Submitted (ECF) supplemental excerpts of record. Submitted by Appellant Jem Sportswear in 12-17519, Jem Sportswear in 12-17502, Appellee Jem Sportswear in 12-17595, 13-15473. Date of service:
10/23/2013. [8833843] [12-17519, 12-17502, 12-17595, 13-15473, 13-15407] (Yates, John) [Entered:
10/23/2013 03:38 PM]

47

Filed Appellant Jem Sportswear in 12-17519 paper copies of excerpts of record [42] in 1 volume.
[8836686] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 10/25/2013 09:48 AM]

46

Filed clerk order: The Court has reviewed the supplemental excerpts of record [45] submitted by Jem
Sportswear in 12-17519. Within 7 days of this order, filer is ordered to file 4 copies of the excerpts in paper
format, with a white cover. The paper copies must be in the format described in 9th Circuit Rule 30-1.6.
[8834373] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 10/24/2013 08:20 AM]

48

Filed Appellant Jem Sportswear in 12-17519 paper copies of excerpts of record [45] in 1 volume(s).
[8839694] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 10/28/2013 02:11 PM]

49

Notice of Oral Argument on Thursday, February 13, 2014 - 9:30 AM - Courtroom 1, 3rd Floor - James R.
Browning US Courthouse - San Francisco, CA. Please return ACKNOWLEDGMENT OF HEARING
NOTICE form to: SAN FRANCISCO Office. Please open attached documents to view details about your
case. [8886904] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (RB) [Entered: 12/03/2013 03:32
PM]

9 pg, 466.55 KB

12/04/2013

Filed clerk order: The third brief on cross-appeal [42] submitted by Jem Sportswear is filed. Within 7 days
of the filing of this order, filer is ordered to file 7 copies of the brief in paper format, accompanied by
certification, attached to the end of each copy of the brief, that the brief is identical to the version submitted
electronically. Cover color: yellow. The paper copies shall be printed from the PDF version of the brief
created from the word processing application, not from PACER or Appellate ECF. The Court has reviewed
the supplemental excerpts of record [42] submitted by Jem Sportswear in 12-17519. Within 7 days of this
order, filer is ordered to file 4 copies of the excerpts in paper format, with a white cover. The paper copies
must be in the format described in 9th Circuit Rule 30-1.6. [8830314] [12-17519, 12-17502, 12-17595,
13-15473, 13-15407] (WWP) [Entered: 10/22/2013 08:11 AM]
Received 7 paper copies of Third Brief on Cross-Appeal brief [42] filed by Jem Sportswear. [8833697]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (SD) [Entered: 10/23/2013 03:09 PM]

3 pg, 101.65 KB

10/25/2013

Submitted (ECF) Third Brief on Cross-Appeal and supplemental excerpts of record for review. Submitted
by Appellant Jem Sportswear in 12-17519, - Jem Sportswear in 12-17502, Appellee Jem Sportswear in
12-17595, 13-15473. Date of service: 10/21/2013. [8830047] [12-17519, 12-17502, 12-17595, 13-15473,
13-15407] (Yates, John) [Entered: 10/21/2013 04:34 PM]

44

221 pg, 12.56 MB

10/23/2013

Filed clerk order (Deputy Clerk: CB): The motion of A.V.E.L.A., et al., for an extension of time to file the
third brief on cross-appeal is granted. The brief is due December 5, 2013. The optionaL reply brief is due
within 14 days after service of the latter served brief. [8817018] [12-17502, 12-17595, 13-15473, 13-15407,
12-17519] (AF) [Entered: 10/10/2013 10:37 AM]

50
1 pg, 19.11 KB

Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Attorney Mr. John Root
Yates, Esquire for Appellant Jem Sportswear in 12-17519, Attorney Mr. John Root Yates, Esquire for
Appellee Jem Sportswear in 12-17595, 13-15473. [8887637] [12-17502, 12-17595, 13-15473, 13-15407,
12-17519] (Yates, John) [Entered: 12/04/2013 10:36 AM]

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12/04/2013

51
1 pg, 85.84 KB

12/05/2013

52
1 pg, 39 KB

12/05/2013

53
1 pg, 74.46 KB

Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Mr. Paul Bost, Esquire
for Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC and Mrs. Jill Maria Pietrini for
Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519, Mr. Paul
Bost, Esquire for Appellant Fifty-Six Hope Road Music, Ltd. and Mrs. Jill Maria Pietrini for Appellants
Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473. [8889214]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Pietrini, Jill) [Entered: 12/04/2013 05:00 PM]
Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Attorney Mr. Timothy
Joseph Ervin for Appellee Zion Rootswear, LLC in 12-17502. [8890408] [12-17502, 12-17595, 13-15473,
13-15407, 12-17519] (Ervin, Timothy) [Entered: 12/05/2013 01:38 PM]
Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Attorney Ms. Melissa
Wing Yee Woo for Appellants A.V.E.L.A., INC., Leo Valencia, X ONE X Movie Archive, Inc. and Central
Mills, Inc. (Freeze) in 12-17502. [8890614] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Woo,
Melissa) [Entered: 12/05/2013 02:15 PM]

12/09/2013

54

Filed (ECF) Streamlined request for extension of time to file Cross-Appeal Reply Brief by Appellee Fifty-Six
Hope Road Music, Ltd. in 12-17502, 12-17519, Appellant Fifty-Six Hope Road Music, Ltd. in 12-17595,
13-15407, 13-15473. New requested due date is 01/21/2014. [8893895] [12-17502, 12-17595, 13-15473,
13-15407, 12-17519] (Pietrini, Jill) [Entered: 12/09/2013 11:43 AM]

12/09/2013

55

Streamlined request [54] by Appellant Fifty-Six Hope Road Music, Ltd. in 12-17595, Appellee
Fifty-Six Hope Road Music, Ltd. in 12-17502, 12-17519, 13-15407, 13-15473 to extend time to file the
brief is not approved because a Notice of Oral Argument has issued; a Ninth Circuit Rule 31-2.2(b)
motion is needed. [8894124] [12-17595, 12-17502, 13-15473, 13-15407, 12-17519] (LBS) [Entered:
12/09/2013 01:15 PM]

12/09/2013

57

Filed Appellants A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie Archive,
Inc. in 12-17502 paper copies of excerpts of record [8891684-2] in 1 volume. [8897647] [12-17502,
12-17595, 13-15473, 13-15407, 12-17519] (sent to PANEL) (WWP) [Entered: 12/11/2013 01:35 PM]

12/10/2013

56

Streamlined request by Appellant Fifty-Six Hope Road Music, Ltd. in 12-17595, Appellee Fifty-Six Hope
Road Music, Ltd. in 12-17502, 12-17519, 13-15407, 13-15473 to extend time to file the brief is not
approved because a Notice of Oral Argument has issued; a Ninth Circuit Rule 31-2.2(b) motion is needed.
[8896471] [13-15473, 12-17502, 12-17595, 13-15407, 12-17519] (LBS) [Entered: 12/10/2013 03:53 PM]

58

Filed (ECF) Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, Appellants
Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473 Unopposed
Motion to extend time to file Cross-Appeal Reply Brief brief until 01/21/2014. Date of service: 12/16/2013.
[8902676] [12-17502, 12-17595, 13-15473, 13-15407]--[COURT UPDATE: Spread entry to 12-17519,
resent notice. 12/16/2013 by ASW] (Bost, Paul) [Entered: 12/16/2013 11:55 AM]

12/16/2013

6 pg, 200.43 KB

12/30/2013

59
5 pg, 93.08 KB

01/03/2014

60
3 pg, 47.02 KB

02/20/2014

62
3 pg, 36.96 KB

02/20/2014

63
3 pg, 101.68 KB

Filed (ECF) Appellants A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie
Archive, Inc. in 12-17502, - A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie
Archive, Inc. in 12-17519, Appellees A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE
X Movie Archive, Inc. in 12-17595, Appellants A.V.E.L.A., INC., Leo Valencia and X ONE X Movie Archive,
Inc. in 13-15407, 13-15473 Stipulated Motion to continue hearing of case. Date of service: 12/30/2013.
[8919127] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Woo, Melissa) [Entered: 12/30/2013
11:08 AM]
Filed clerk order (Deputy Clerk: AF): Pursuant to the parties joint request, oral argument shall be
rescheduled. The date and time will be determined by separate order. [8923798] [12-17502, 12-17595,
13-15473, 13-15407, 12-17519] (AF) [Entered: 01/03/2014 09:31 AM]
Filed order (Appellate Commissioner): Granting Motion (ECF Filing) The defendants motion for leave to
file an oversize third brief on cross-appeal is granted. The Clerk shall file the previously submitted brief.
The plaintiffs motion for an extension of time is granted. The reply brief is due within 14 days after the date
of this order. (Pro Mo) [8985650] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (MS) [Entered:
02/20/2014 01:43 PM]
Filed clerk order: The third brief on cross-appeal [8891329-2] submitted by A.V.E.L.A., INC., Central Mills,
Inc. (Freeze), Leo Valencia and X ONE X Movie Archive, Inc. is filed. Within 7 days of the filing of this
order, filer is ordered to file 7 copies of the brief in paper format, accompanied by certification, attached to
the end of each copy of the brief, that the brief is identical to the version submitted electronically. Cover
color: yellow. The paper copies shall be printed from the PDF version of the brief created from the word
processing application, not from PACER or Appellate ECF. The Court has reviewed the supplemental
excerpts of record [8891684-2] submitted by A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia
and X ONE X Movie Archive, Inc. Within 7 days of this order, filer is ordered to file 4 copies of the excerpts
in paper format, with a white cover. The paper copies must be in the format described in 9th Circuit Rule

5/31/2016 7:05 PM

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(39 of 41)
Case: 13-17622, 06/07/2016, ID: 10005756, DktEntry: 66-4, Page 11 of 13
30-1.6. [8986569] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (LA) [Entered: 02/20/2014 05:18
PM]
02/24/2014

64
3 pg, 103.35 KB

Filed clerk order (Deputy Clerk: cag): Granting Motion (ECF Filing) filed by Fifty-Six Hope Road Music, Ltd.
and Zion Rootswear, LLC in 12-17502, 12-17595, 13-15407, 13-15473; . The optional reply brief is due
3/20/14. [8989135] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (CG) [Entered: 02/24/2014
10:15 AM]

02/26/2014

65

Filed Appellant A.V.E.L.A., INC. in 12-17502 paper copies of excerpts of record [8891684-2] in 1 volume.
[8998550] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 03/03/2014 09:08 AM]

02/26/2014

66

Received 7 paper copies of Third Brief on Cross-Appeal [8891329-2] filed by A.V.E.L.A., INC., et al.
[8999197] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (SD) [Entered: 03/03/2014 01:18 PM]

67

Filed clerk order (Deputy Clerk: CAG): Counsel Andrew Cranner and the law firm of Bremmer, Whyte,
Brown, and OMearas motion to withdraw as counsel of record for AV.E.L.A., Inc., Leo Valencia, X One, X
Movie Archive, Inc. And Central Mills, Inc. is granted. The defendants are reminded that as corporations
they must be represented by licensed counsel. See In re Highley, 459 F.2d 771, 773 (9th Cir. 1986). Nos.
12-17502, etc. Within 14 days after the date of this order, the defendants shall enter the appearance of
new counsel. A copy of this order shall be provided to the defendants by way of Leo Valencia, 1135
Terminal Way, Suite 209, Reno, NV 89502; and Kim Cauley, 1400 Broadway , Suite 1605, New York, NY
10018. [9002355] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (BJB) [Entered: 03/05/2014 09:12
AM]

03/05/2014

5 pg, 47.45 KB

03/05/2014

03/17/2014

68

Terminated Peter Carlton Brown for X ONE X Movie Archive, Inc., Leo Valencia, Central Mills, Inc. (Freeze)
and A.V.E.L.A., INC. in 12-17502, X ONE X Movie Archive, Inc., Leo Valencia, Central Mills, Inc. (Freeze)
and A.V.E.L.A., INC. in 12-17595, X ONE X Movie Archive, Inc., Leo Valencia and A.V.E.L.A., INC. in
13-15407 and X ONE X Movie Archive, Inc., Leo Valencia, Central Mills, Inc. (Freeze) and A.V.E.L.A., INC.
in 13-15473 [9002387] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (BJB) [Entered: 03/05/2014
09:22 AM]

69

Filed (ECF) notice of appearance of Michael Ray Adele for Appellants A.V.E.L.A., INC., Central Mills, Inc.
(Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17502, - A.V.E.L.A., INC., Central Mills, Inc.
(Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17519, Appellees A.V.E.L.A., INC., Central
Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17595, Appellants A.V.E.L.A.,
INC., Leo Valencia and X ONE X Movie Archive, Inc. in 13-15407, 13-15473. Date of service: 03/17/2014.
[9019228] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Adele, Michael) [Entered: 03/17/2014
04:09 PM]

2 pg, 403.81 KB

03/17/2014

03/20/2014

70

Added attorney Michael Ray Adele for X ONE X Movie Archive, Inc. A.V.E.L.A., INC. Central Mills, Inc.
(Freeze) Leo Valencia, [9019255] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (EL) [Entered:
03/17/2014 04:15 PM]

71

Submitted (ECF) Cross-Appeal Reply Brief and supplemental excerpts of record for review. Submitted by
Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 13-15473. Date of service:
03/20/2014. [9025163] [12-17502, 12-17595, 13-15473]--[COURT UPDATE: Spread docket text to
13-15407, 12-17519. Resent NDA. 03/21/2014 by RY] (Pietrini, Jill) [Entered: 03/20/2014 06:46 PM]

92 pg, 2 MB

03/21/2014

72
3 pg, 103.07 KB

Filed clerk order: The cross-appeal reply brief [71] submitted by Zion Rootswear, LLC, Fifty-Six Hope Road
Music, Ltd. is filed. Within 7 days of the filing of this order, filer is ordered to file 7 copies of the brief in
paper format, accompanied by certification, attached to the end of each copy of the brief, that the brief is
identical to the version submitted electronically. Cover color: gray. The paper copies shall be printed from
the PDF version of the brief created from the word processing application, not from PACER or Appellate
ECF. The Court has reviewed the excerpts of record [71] submitted by Zion Rootswear, LLC, Fifty-Six
Hope Road Music, Ltd. Within 7 days of this order, filer is ordered to file 4 copies of the excerpts in paper
format, with a white cover. The paper copies must be in the format described in 9th Circuit Rule 30-1.6.
[9025713] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered: 03/21/2014 10:44 AM]

03/27/2014

73

Filed Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC paper copies of excerpts of
record [71] in 1 volume. [9033912] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (WWP) [Entered:
03/27/2014 11:47 AM]

03/27/2014

74

Received 7 paper copies of Cross Appeal Reply brief [71] filed by Zion Rootswear, LLC and Fifty-Six Hope
Road Music, Ltd. [9034253] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (SD) [Entered:
03/27/2014 01:57 PM]

04/28/2014

75

Notice of Oral Argument on Tuesday, 07/08/2014 - 9:00 AM San Francisco, CA Courtroom 1, 3rd Floor Browning US Courthouse.
View the Oral Argument Calendar for your case here.

5/31/2016 7:05 PM

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(40 of 41)
Case: 13-17622, 06/07/2016, ID: 10005756, DktEntry: 66-4, Page 12 of 13
When you have reviewed the calendar, download the ACKNOWLEDGMENT OF HEARING NOTICE form,
complete the form, and file it via Appellate ECF or return the completed form to: SAN FRANCISCO Office.
[9074629] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (RB) [Entered: 04/28/2014 01:57 PM]
04/28/2014

76
1 pg, 19.08 KB

05/06/2014

77
1 pg, 76.27 KB

05/08/2014

78
2 pg, 1.23 MB

05/09/2014

05/09/2014

02/20/2015

80

Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Attorney Mr. Michael
Bergman for Appellants A.V.E.L.A., INC., Leo Valencia, X ONE X Movie Archive, Inc. and Central Mills, Inc.
(Freeze) in 12-17502. [9089907] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Bergman,
Michael) [Entered: 05/09/2014 01:15 PM]

81

ARGUED AND SUBMITTED TO FERDINAND F. FERNANDEZ, N. RANDY SMITH and MORGAN B.


CHRISTEN. [9160179] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (DO) [Entered: 07/08/2014
01:52 PM]

83

FILED OPINION (FERDINAND F. FERNANDEZ, N. RANDY SMITH and MORGAN B. CHRISTEN)


AFFIRMED. Judge: NRS Authoring, Judge: MBC Concurring & dissenting. FILED AND ENTERED
JUDGMENT. [9427595] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (RMM) [Entered:
02/20/2015 07:20 AM]

84
3 pg, 71.03 KB

03/06/2015

85
3 pg, 90.04 KB

03/06/2015

86
80 pg, 1.9 MB

03/23/2015

Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Attorney Mr. Timothy
Joseph Ervin for Appellee Zion Rootswear, LLC in 12-17502, 12-17519, Attorney Mr. Timothy Joseph Ervin
for Appellant Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473. [9093192] [12-17502, 12-17595,
13-15473, 13-15407, 12-17519] (Ervin, Timothy) [Entered: 05/13/2014 11:45 AM]

82

54 pg, 365.39 KB

03/06/2015

Filed (ECF) notice of appearance of Michael Bergman for Appellants A.V.E.L.A., INC., Central Mills, Inc.
(Freeze), Leo Valencia and X ONE X Movie Archive, Inc. in 12-17502. Date of service: 05/08/2014.
[9089127] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (Bergman, Michael) [Entered: 05/08/2014
05:19 PM]
Added attorney Michael Bergman for X ONE X Movie Archive, Inc. A.V.E.L.A., INC. Central Mills, Inc.
(Freeze) Leo Valencia, in case 12-17502 Michael Bergman for X ONE X Movie Archive, Inc. A.V.E.L.A.,
INC. Central Mills, Inc. (Freeze) Leo Valencia, in case 13-15473 Michael Bergman for X ONE X Movie
Archive, Inc. A.V.E.L.A., INC. Leo Valencia, in case 13-15407 Michael Bergman for X ONE X Movie
Archive, Inc. A.V.E.L.A., INC. Central Mills, Inc. (Freeze) Leo Valencia, in case 12-17595. [9089198]
[12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (CW) [Entered: 05/09/2014 07:16 AM]

1 pg, 64.17 KB

07/08/2014

Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Mr. Paul Bost, Esquire
for Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC and Mrs. Jill Maria Pietrini for
Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502. [9084857] [12-17502,
12-17595, 13-15473, 13-15407, 12-17519] (Bost, Paul) [Entered: 05/06/2014 12:23 PM]

79

1 pg, 850.79 KB

05/13/2014

Filed (ECF) Acknowledgment of hearing notice. Location: San Francisco. Filed by Attorney Mr. John Root
Yates, Esquire for Appellant Jem Sportswear in 12-17519, Attorney Mr. John Root Yates, Esquire for
Appellee Jem Sportswear in 12-17595, 13-15473. [9075075] [12-17502, 12-17595, 13-15473, 13-15407,
12-17519] (Yates, John) [Entered: 04/28/2014 03:41 PM]

87
4 pg, 153.8 KB

Filed (ECF) Appellee Fifty-Six Hope Road Music, Ltd. in 12-17502, 12-17519, Appellant Fifty-Six Hope
Road Music, Ltd. in 12-17595, 13-15407, 13-15473 bill of costs (Form 10) in the amount of $632.70 USD.
Date of service: 03/06/2015 [9448552] [12-17502, 12-17519, 12-17595, 13-15407, 13-15473] (Pietrini, Jill)
[Entered: 03/06/2015 02:37 PM]
Filed (ECF) - Jem Sportswear in 12-17502 bill of costs (Form 10) in the amount of $528.5 USD. Date of
service: 03/06/2015 [9448829] [12-17502, 12-17519, 12-17595, 13-15407, 13-15473] (Yates, John)
[Entered: 03/06/2015 04:10 PM]
Filed (ECF) Appellants A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie
Archive, Inc. in 12-17502, - A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE X Movie
Archive, Inc. in 12-17519, Appellees A.V.E.L.A., INC., Central Mills, Inc. (Freeze), Leo Valencia and X ONE
X Movie Archive, Inc. in 12-17595, Appellants A.V.E.L.A., INC., Leo Valencia and X ONE X Movie Archive,
Inc. in 13-15407, 13-15473 petition for panel rehearing and petition for rehearing en banc (from 02/20/2015
opinion). Date of service: 03/06/2015. [9449005] [12-17502, 12-17519, 12-17595, 13-15407, 13-15473]
(Adele, Michael) [Entered: 03/06/2015 06:30 PM]
Filed (ECF) Appellees Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17502, 12-17519,
Appellants Fifty-Six Hope Road Music, Ltd. and Zion Rootswear, LLC in 12-17595, 13-15407, 13-15473
response opposing motion (). Date of service: 03/23/2015. [9468581] [12-17502, 12-17519, 12-17595,
13-15407, 13-15473] (Bost, Paul) [Entered: 03/23/2015 06:51 PM]

5/31/2016 7:05 PM

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(41 of 41)
Case: 13-17622, 06/07/2016, ID: 10005756, DktEntry: 66-4, Page 13 of 13
04/02/2015

88
3 pg, 35.84 KB

04/16/2015

89
3 pg, 204.78 KB

09/03/2015

90
1 pg, 53.68 KB

11/03/2015

91
1 pg, 63.02 KB

Filed order (FERDINAND F. FERNANDEZ, N. RANDY SMITH and MORGAN B. CHRISTEN): The panel
has voted to deny the petition for panel rehearing. Judge N.R. Smith and Judge Christen have voted to
deny the petition for rehearing en banc, and Judge Fernandez has so recommended. The full court was
advised of the petition for rehearing en banc and no judge has requested a vote on whether to rehear the
matter en banc. Fed. R. App. P. 35. The petition for rehearing and the petition for rehearing en banc are
DENIED. [9481370] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (AF) [Entered: 04/02/2015
09:13 AM]
MANDATE ISSUED.(FFF, NRS and MBC) Costs taxed against Appellant in the amount of $632.70.
[9498031] [12-17519, 12-17502, 12-17595, 13-15473, 13-15407] (SW) [Entered: 04/16/2015 10:46 AM]
Received notice from the Supreme Court: petition for certiorari filed on 06/29/2015. Supreme Court
Number 15-264. [9672193] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (RR) [Entered:
09/03/2015 05:24 PM]
The petition for writ of certiorari was denied on 11/02/2015. Supreme Court number 15-264. (Panel: FFF,
NRS and MBC). [9743853] [12-17502, 12-17595, 13-15473, 13-15407, 12-17519] (RL) [Entered:
11/03/2015 05:15 PM]

5/31/2016 7:05 PM

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