1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 TALAVERA HAIR PRODUCTS, INC., Case No.: 3:18-cv-00823-RBM-JLB

12 Plaintiff,

ORDER DENYING RENEWED

13 v. MOTION FOR PERMANENT

INJUNCTION AFTER JURY TRIAL

14 TAIZHOU YUNSUNG ELECTRICAL

WITHOUT PREJUDICE

APPLIANCE CO., LTD. et al., 15 Defendants. [Doc. 163] 16 17 18 Pending before the Court is Plaintiff Talavera Hair Products, Inc.’s (“Plaintiff”) 19 renewed motion for permanent injunction after jury trial (“Renewed Motion”). (Doc. 163- 20 1.) The Court finds this matter suitable for determination without oral argument pursuant 21 to Civil Local Rule 7.1(d)(1). For the reasons set forth below, Plaintiff’s Renewed Motion 22 is DENIED WITHOUT PREJUDICE. 23 I. PROCEDURAL BACKGROUND 24 On April 30, 2018, Plaintiff filed this action against dozens of entities and 25 individuals alleging: (1) copyright infringement pursuant to 17 U.S.C. §§ 101 et seq.; (2) 26 unfair competition pursuant the Lanham Act, 15 U.S.C. § 1125(a); (3) trademark 27 infringement pursuant to 15 U.S.C. § 1114; and (4) infringement of Plaintiff’s U.S. Patent 28 Nos. 6,588,108, 7,040,021, and 9,587,811 (collectively, the “U.S. Patents”) pursuant to 35 1 U.S.C. § 271(a). (Doc. 1 (“Compl.”) ¶¶ 40–84.) Plaintiff alleged that Defendants, with 2 “full knowledge of Plaintiff’s copyrights, trademark rights and/or patent rights,” (id. ¶ 20), 3 “are promoting, advertising, distributing, selling, and/or offering for sale cheap copies of 4 Plaintiff’s Split-Ender® hair trimmers in interstate commerce that infringe Plaintiff’s 5 copyrights, trademark rights, and patent rights” on Amazon and/or eBay, (id. ¶ 21). 6 Plaintiff subsequently obtained a default judgment and permanent injunction against 7 certain Defendants. (See Docs. 134, 137.) On January 9, 2023, Plaintiff and the sole 8 remaining defendant, Taizhou Yungsung Electrical Appliance Co., Ltd. (“Taizhou”), 9 appeared for a jury trial on Plaintiff’s remaining claims against Taizhou. (Doc. 147.) On 10 January 11, 2023, the jury found in favor of Plaintiff with respect to Plaintiff’s patent and 11 copyright claims against Taizhou. (See Docs. 155, 156.) 12 On April 5, 2023, Plaintiff filed a motion for a permanent injunction. (Doc. 161-1.) 13 In that motion, Plaintiff explained that “many third party Internet or phone app providers 14 have declined to remove (or timely remove) infringing split end hair trimmer products, 15 packaging and/or manuals” because “third parties could not easily understand whether the 16 court empowered the third parties to remove infringing material.” (Id. at 7.)1 Plaintiff’s 17 proposed permanent injunction contained sections titled “Internet Selling Platforms,” 18 “Internet Marketing/Advertising Sites,” “Internet Hosting Service Providers,” and 19 “Internet Payment Providers” which “lists specific web sites where Plaintiff has seen 20 infringing split end hair trimmer products, packaging and/or manuals.” (Id. at 7–8.) 21 On June 27, 2023, this Court issued an Order finding that Plaintiff’s proposed 22 permanent injunction appeared broader than the relief Plaintiff sought in the Complaint 23 and the issues presented at trial. (Doc. 162 at 2.) Specifically, this Court found Plaintiff’s 24 proposed permanent injunction overbroad because it stated that numerous, named third 25 parties that were not parties to this lawsuit “may remove” any listing, display, and/or 26 27

28 1 1 advertising that violates the permanent injunction. (Id. at 2–3.) The Court denied 2 Plaintiff’s proposed permanent injunction without prejudice, explaining Plaintiff could 3 refile the motion and “either narrow the scope of the proposed permanent injunction or 4 provide the Court with authority for the broader relief sought.” (Id. at 3.) 5 On July 27, 2023, Plaintiff filed the instant Renewed Motion. (Doc. 163-1.) In the 6 Renewed Motion, Plaintiff explains the first paragraph of the proposed permanent 7 injunction is based on the Prayer for Relief in the Complaint and the statutory language of 8 Federal Rule of Civil Procedure 65(d)(2). (Id. at 6.; Doc. 163-4 (“Proposed Permanent 9 Injunction After Jury Trial”) at 4 (“Defendant and its officers, agents, representatives, 10 servants, employees, and all other persons who are in active concert or participation 11 therewith, are hereby…).) Plaintiff states Paragraph 1(a) is a direct quote from the Prayer 12 for Relief in the Complaint. (Doc. 163-1 at 6.) Plaintiff explains Paragraphs 1(b), (c), and 13 (f) concerning Defendant’s secondary liability are supported by the jury’s findings in the 14 verdict form. (Id.; Doc. 155 (“Verdict Form”) ¶¶ 10–13.) Plaintiff states that Paragraphs 15 1(d) and (e) are direct quotes from the Prayer for Relief in the Complaint with one 16 exception. (Doc. 163-1 at 6.) That exception is the language “publicly displaying” based 17 on the text of 17 U.S.C. § 106(5). (Id.) Finally, Plaintiff explains Paragraph 1(g) cautions 18 that non-parties, even if not specifically named, can be bound by the permanent injunction, 19 but that this Court is not stating any specific non-party “shall be bound” by the injunction. 20 (Id. at 6–7.) 21 II. LEGAL STANDARD 22 Under Rule 65(d)(2), an injunction “binds only the following who receive actual 23 notice of it by personal service or otherwise: (A) the parties; (B) the parties’ officers, 24 agents, servants, employees, and attorneys; and (C) other persons who are in active concert 25 or participation with anyone described in Rule 65(d)(2)(A) or (B).” As the Supreme Court 26

27 2 Plaintiff also failed to point to any instance where the third-party websites (other than 28 1 has explained, this rule “derived from the commonlaw doctrine that a decree of injunction 2 not only binds the part[y] defendant but also those identified with them in interest, in 3 ‘privity’ with them, represented by them or subject to their control. In essence it is that 4 defendants may not nullify a decree by carrying out prohibited acts through aiders and 5 abettors, although they were not parties to the original proceeding.” Regal Knitwear Co. 6 v. NLRB, 324 U.S. 9, 14 (1945); see also Consumer Fin. Prot. Bureau v. Howard L., P.C., 7 671 F. App’x 954, 955 (9th Cir. 2016) (“An injunction binds a non-party only if it has 8 actual notice, and either abet[s] the [enjoined party] in violating the injunction, or is legally 9 identified with the enjoined party[.]”) (internal quotation marks and citations omitted). 10 In Chase Nat. Bank v. City of Norwalk, Ohio, the Supreme Court ruled that a district 11 court clearly erred in granting an injunction that enjoined “all persons to whom notice of 12 the order of injunction should come from taking any steps or action of any kind to cause 13 the enforcement of the ouster in the state court.” 291 U.S. 431, 436 (1934). The Supreme 14 Court reasoned that the city alone was named as a defendant and while persons not 15 technically agents or employees of the city “may be specifically enjoined from knowingly 16 aiding a defendant in performing a prohibited act if their relation is that of associate or 17 confederate,” the injunction “assumed to make punishable as a contempt the conduct of 18 persons who act independently and whose rights have not been adjudged according to law.” 19 Id. at 436–37. 20 III. DISCUSSION 21 The Court considers whether Paragraph 1(g) in Plaintiff’s proposed permanent 22 injunction is reasonable. Paragraph 1(g) reads as follows: 23 The court cautions that non-parties to this litigation can be bound by this permanent injunction. The language “other persons who are in active concert or participation” 24 in Fed. R. Civ. Proc. 65(d)(2) “not only binds the parties defendant but also those 25 identified with them in interest, in ‘privity’ with them, represented by them or subject to their control.” Golden State Bottling Co. v. NLRB, 414 U.S. 168, 179, 94 26 S. Ct. 414, 38 L. Ed. 2d 388 (1973) (quoting Regal Knitwear Co. v. NLRB, 324 U.S. 27 9, 14, 65 S. Ct. 478, 89 L. Ed. 661 (1945). See also Cal. Chamber of Commerce v. Council for Educ. & Rsch. on Toxics, 29 F.4th 468, 483 (9th Cir. 2022) (quoting 28 1 Golden State Bottling Co.). This injunction “automatically applies” to such non- parties “even if they are not expressly mentioned in the text of the order.” Wash. 2 Metro. Area Transit Comm’n v. Reliable Limousine Serv., LLC, 414 U.S. App. D.C. 3 1, 9, 776 F.3d 1, 9 (2015).

4 5 The Court is not persuaded that Paragraph 1(g) is reasonable or necessary in light of 6 the language in Paragraph 1 reflecting the statutory text from Rule 65(d)(2) concerning 7 coverage of other persons who are in “active concert or participation” with Defendant. The 8 admonition in Paragraph 1(g) directed at non-parties raises concerns and may cause 9 confusion regarding whether it covers those who “act independently and whose rights have 10 not been adjudged according to law.” See Chase Nat. Bank, 291 U.S. at 436–37; see also 11 Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 96 F.3d 1390, 1395 (Fed. 12 Cir. 1996) (“[T]he prohibition against entering an injunction against non-parties does not 13 mean that non-parties may not be held in contempt of court for violating injunctions 14 directed at others. Courts have carefully distinguished between entering an injunction 15 against a non-party, which is forbidden, and holding a non-party in contempt for aiding 16 and abetting in the violation of an injunction that has been entered against a party, which 17 is permitted.”). 18 As the Supreme Court explained in Regal Knitwear Co., the common law doctrine 19 underlying Rule 65(d)(2) is intended to prevent defendants from “nullify[ing] a decree by 20 carrying out prohibited acts through aiders and abettors, although they were not parties to 21 the original proceeding.” 324 U.S. at 14. The rule is not intended to bind all individuals 22 who may engage in similar conduct to Defendant, but rather those who receive actual notice 23 of the injunction and aid and abet Defendant or are legally identified with Defendant. See 24 Consumer Fin. Prot. Bureau, 671 F. App’x at 955. The Court has identified numerous 25 permanent injunctions reflecting the “active concert or participation” statutory language 26 from Rule 65(d)(2). See e.g., Mountz, Inc. v. Ne. Indus. Bolting & Torque, LLC., No. 3:15- 27 CV-04538-JD, 2016 WL 6679548, at *1 (N.D. Cal. Nov. 14, 2016) (entering permanent 28 injunction covering “[d]efendant, its officers, agents, servants, employees, and attorneys, 1 and those persons in active concert or participation with Defendant who receive actual 2 notice of this Order by personal service or otherwise…”). However, the Court has 3 identified no case where a district court ordered a permanent injunction with a similar 4 admonition directed at non-parties to that requested here. 5 IV. CONCLUSION 6 Accordingly, Plaintiff’s Renewed Motion (Doc. 163-1) is DENIED WITHOUT 7 PREJUDICE. Plaintiff may refile its Renewed Motion on or before February 8, 2024. 8 If Plaintiff chooses to refile its motion for permanent injunction, Plaintiff must remove 9 Paragraph 1(g) or provide the Court with authority for the broader relief sought in the 10 instant Renewed Motion. 11 IT IS SO ORDERED. 12 DATE: January 8, 2024 13 _____________________________________

HON. RUTH BERMUDEZ MONTENEGRO

14

UNITED STATES DISTRICT JUDGE

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