United States District Court, N.D. Mississippi, Aberdeen Division
RONALDO DESIGNER JEWELRY, INC. PLAINTIFF
JAMES B. COX and CATHERINE A. COX d/b/a JC DESIGNS d/b/a WIRE N RINGS and JOHN DOE a/k/a LEROY and JOHN DOES Numbers 1 through 99 DEFENDANTS
ORDER DENYING INJUNCTIVE RELIEF
M. BROWN UNITED STATES DISTRICT JUDGE
the Court is Ronaldo Designer Jewelry Inc.'s
“Renewed Motion for Temporary Restraining Order,
” Doc. #11, which has been converted to a motion for a
preliminary injunction pursuant to the parties'
Original Complaint, TRO Motion, and Related Filings
January 3, 2017, Ronaldo filed a verified complaint against
James B. Cox and Catherine A. Cox d/b/a JC Designs d/b/a Wire
N Rings; John Doe a/k/a Leroy; and John Does Numbers 1
through 99, alleging copyright infringement, trade dress
infringement, and common law unfair competition and unfair
trade practices. Doc. #1. Nine days later, Ronaldo filed a
motion seeking a temporary restraining order against the
defendants. Doc. #4. On January 19, 2017, the Court denied
the motion for a temporary restraining order because Ronaldo
failed to comply with Federal Rule of Civil Procedure
65's requirements for the issuance of a temporary
restraining order without notice. Doc. #10. Six days later,
Ronaldo renewed its motion for a temporary restraining order.
Doc. # 11. The Court set a telephonic status conference for
February 9, 2017. Doc. #16.
the scheduled conference, on February 7, 2017, the Coxes
filed identical motions to dismiss the verified complaint for
failure to state a claim or, alternatively, lack of venue and
personal jurisdiction. Doc. #25; Doc. #27. The motions were
supported by a separately-filed memorandum. Doc. #26. That
same day, the Coxes also filed a three-page response to
Ronaldo's renewed motion. Doc. #28.
the status conference on February 9, the Court set a schedule
for discovery and briefing on the preliminary issues of
personal jurisdiction and venue. Doc. #31. On February 22,
2017, after being advised that the defendants conceded the
propriety of personal jurisdiction and venue, the Court
issued an order setting a briefing schedule for the renewed
motion for a temporary restraining order, which the parties
agreed should be converted to a motion for preliminary
injunction. Doc. #41. The order also set a briefing schedule
for the Coxes to refile their motions to dismiss “to
indicate their concessions on the record ....” The
Coxes refiled an amended motion to dismiss and accompanying
memorandum the next day. Doc. #48; Doc. #49. Also that day,
the Court noticed for April 12, 2017, an evidentiary hearing
on the motion for preliminary injunction. Doc. #47.
First Amended Complaint and Related Filings
March 3, 2017, Ronaldo filed an unopposed motion to amend its
complaint. Doc. #51. Three days later, the Coxes filed an
unopposed motion for leave to amend their motion to dismiss.
Doc. #53. On March 7, 2017, United States Magistrate Judge
David A. Sanders granted Ronaldo's motion to amend. Doc.
#54. A “Notice of Withdrawal of Pending Motion to
Dismiss filed by Defendants James B. Cox and Catherine A.
Cox” was filed the same day, in which the Coxes
withdrew all prior motions to dismiss as well as the motion
for leave to amend their motion to dismiss. Doc. #57.
filed the amended complaint on March 9, 2017. Doc. #58. The
Coxes moved to dismiss the amended complaint on March 23,
2017. Doc. #60. Ronaldo responded to the motion to dismiss on
April 6, 2017. Doc. #62.
Evidentiary Hearing, Second Amended Complaint, and Related
April 6, 2017, six days before the scheduled preliminary
injunction hearing, Ronaldo filed (1) a motion for leave to
file a second amended complaint, Doc. #63; and (2) a motion
to continue the preliminary injunction hearing until an
unknown date, Doc. #64. The Coxes filed a response on April
10, 2017, opposing continuance. Doc. #66. After convening a
status conference on the issue of continuance, the Court
denied Ronaldo's motion to continue. Doc. #70.
evidentiary hearing on the motion for preliminary injunction
commenced April 12-13, 2017, and was continued until May 1,
2017. On April 24, 2017, Ronaldo filed a notice
withdrawing its April 6 motion for leave to file a second
amended complaint. Doc. #74. The same day, Ronaldo filed a
new unopposed motion for leave to file a second amended
complaint to revise the proposed second amended complaint
initially submitted. Doc. #75. The proposed amended complaint
withdrew Ronaldo's claims for copyright infringement with
regard to “The Love Knot” bracelet and the
“Name This Bracelet” (now known as “The
Hero Bracelet”) and added a copyright infringement
claim based on Ronaldo's “The Power of Prayer
Bracelet.” Id. On April 27, 2017, the Court
issued an order granting Ronaldo's second motion for
leave to file a second amended complaint, and denying as moot
all of the Coxes' prior motions to dismiss as well as
Ronaldo's April 6 motion for leave. Doc. #81.
April 28, 2017, Ronaldo filed its second amended complaint,
Doc. #82; along with a “Notice of Withdrawal of Certain
Claims for Pending Preliminary Injunction, ” Doc. #83.
The notice states:
Ronaldo's claims for trade dress infringement and unfair
competition, under both the Lanham Act and common law, remain
pending in this matter and are applicable to all infringing
works using Ronaldo's “Kissing Roof” clasp
trade dress, including but not limited to those works which
use the trade dress -- even though claims for copyright
infringement with respect thereto are now withdrawn.
Ronaldo's claims for copyright infringement with regard
to its “The Angelina Bracelet” and “The
Power of Prayer Bracelet” Works also remain pending.
Ronaldo's copyright infringement claim with regard to
“The Power of Prayer Bracelet” Work is not
currently subject to the preliminary injunction hearing.
preliminary injunction hearing resumed and concluded on May
1, 2017, with oral arguments on the motion.
12, 2017, the Coxes filed an answer and a counterclaim. Doc.
#87. On June 16, 2017, Ronaldo filed a motion to dismiss the
Coxes' counterclaim. Doc. #92. The Coxes responded to
Ronaldo's motion to dismiss on June 29, 2017, Doc. #95;
and Ronaldo replied on July 6, 2017, Doc. #96.
conclusion of the evidentiary hearing, the Court took under
advisement objections to the admission of two exhibits: P-20
and P-23. In resolving these objections, the Court notes that
“[t]he law is well-settled that because the procedures
governing a preliminary injunction are generally less formal
than those at trial, the court may rely upon otherwise
inadmissible evidence when considering a preliminary
injunction.” ADT, LLC v. Capital Connect,
Inc., 145 F.Supp.3d 671, 682 (N.D. Tex. 2015) (citations
evidentiary hearing, the Coxes objected to the admission of
P-20 on the grounds of lack of authentication and foundation.
A foundation objection generally refers to a proponent's
ability to satisfy specific requirements for an exhibit's
admission into evidence, such as authentication, best
evidence, or an exception to the hearsay rule. 1 McCormick on
Evidence § 51 (7th ed.); see, e.g., United
States v. Barnes, 803 F.3d 209, 217 (5th Cir. 2015)
(foundation requirement for Facebook and text messages
satisfied by authentication). Of relevance here, Rule 901(a)
of the Federal Rules of Evidence provides that “[t]o
satisfy the requirement of authenticating ... an item of
evidence, the proponent must produce evidence sufficient to
support a finding that the item is what the proponent claims
….” Fed.R.Evid. 901(a).
purportedly a page of photographs from a book authored by
Linda Chandler. While there is no express testimony linking
P-20 to the book, Dale Armstrong, a witness called by the
Coxes, testified that she recognized Chandler's book and
then testified from the book while the exhibit was placed on
the ELMO system in the courtroom. Although this is not ideal
authentication testimony, the Court deems it sufficient under
the informal rules of admission for preliminary injunction
hearings. Accordingly, the objection to P-20 is overruled and
P-20 is admitted.
Coxes also objected to P-23, a “new releases
page” from a recent Ronaldo catalog showing a Ronaldo
Forget Me Not bracelet. The Coxes objected on the grounds
that P-23, which was introduced during the redirect
examination of Ronaldo employee Laura Lynette Johnson
Wimberly, was a “brand new exhibit and document”
and was “beyond the scope of cross.” Later,
counsel for the Coxes offered the following less-than-clear
soliloquy on the admissibility of the exhibit:
Object to P 23 as unnecessarily confusing, beyond the course
of cross-examination and presents an image not crossed on. I
mean, it is - there is no foundation - I don't know how
to make the objection, Your Honor. I apologize. Other than
this isn't the same bracelet [the witness] was asked to
look at and simply given another opportunity to do another
version of it.
scope of redirect, including the introduction of exhibits, is
“committed to the district court judge's
discretion.” United States v. Rodriguez, 866
F.2d 390, 394 (11th Cir. 1989). Where an exhibit falls within
the proper scope of redirect, admission is proper.
Id. Generally, the scope of redirect cannot exceed
the scope of cross examination. United States v.
Reed, 277 F. App'x 357, 362 (5th Cir. 2008).
cross examination, Wimberly was questioned about the clasp on
a Forget Me Not bracelet. The questioning involved the use of
a photograph which Wimberly found “really difficult to
see.” On redirect, Ronaldo introduced P-23 to
“show a better picture that shows the clasp.”
Insofar as questioning on cross examination related to the
clasp on the Forget Me Not bracelet, introduction of P-23 for
the purpose of showing the clasp was within the scope of
cross and was, therefore, properly introduced on redirect. As
to the Coxes remaining objections, the Court notes that
Wimberly identified P-23 as coming from the catalog so as to
lay a proper foundation, that the picture is in no way
confusing, and that the Coxes offered no authority (such as a
governing pretrial order) which would prevent introduction of
a new exhibit. Accordingly, the Coxes' objections to P-23
are overruled and P-23 is admitted.
Ronnie Needham ...