The Vineyard House, LLC v. Constellation Brands U.S. Operations, Inc., No. 4:2019cv01424 - Document 214 (N.D. Cal. 2020)
Court Description: ORDER GRANTING [202-3] **REDACTED VERSION ** STIPULATION RE PRESENTATION OF TRIAL EVIDENCE. Signed by Judge Yvonne Gonzalez Rogers on 11/30/2020. (fs, COURT STAFF) (Filed on 11/30/2020)
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The Vineyard House, LLC v. Constellation Brands U.S. Operations, Inc. Doc. 214 Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 1 of 8 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA 1 2 3 THE VINEYARD HOUSE, LLC, a California limited liability company, Plaintiff and CounterclaimDefendant, 4 5 6 7 8 9 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP 10 v. CASE NO.: 4:19-cv-01424-YGR (Consolidated) ORDER GRANTING STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE CONSTELLATION BRANDS U.S. OPERATIONS, INC., a New York corporation, Defendant and CounterclaimPlaintiff. 11 12 Pursuant to the Court’s September 2, 2020 Order (Dkt. No. 176), Plaintiff and Counterclaim 13 Defendant The Vineyard House, LLC and Defendant and Counterclaim Plaintiff Constellation Brands 14 U.S. Operations, Inc., hereby stipulate to the following factual matters to be presented at trial: 15 1. The Parties hereby STIPULATE that for purpose of trial in this matter, TVH currently 16 owns and occupies a portion of land previously owned by William Baldridge, as depicted 17 on Exhibit 2 appended to the Expert Declaration of Jon Webb, dated July 10, 2020. 18 2. The parties hereby STIPULATE that for purposes of trial in this matter, CBUSO's profits 19 on the sales of wine labeled as TO KALON or TO KALON VINEYARD are between 20 as set out in Paragraph 20 of the Jarosz Rebuttal Report of July 21 31, 2020. The parties further stipulate that pursuant to Stipulation # 3 and 6, Ena Marie 22 Chalk will not be called to testify at trial, who was to be called to authenticate the 23 documents from which Mr. Jarosz relied upon in preparing his January 8, 2020 Rebuttal 24 Report. 25 stipulation and not calling Mr. Wagner to testify at trial, that CBUSO may still call Mr. 26 Jarosz to testify as to the matters set forth in his January 8, 2020 Rebuttal Report. The parties further stipulate that notwithstanding TVH’s reliance on this 27 3. The Parties hereby STIPULATE to the authenticity and admissibility of the financial 28 documents of the Parties produced in this matter and relied upon by the Parties’ respective 1 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE Dockets.Justia.com Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 2 of 8 1 financial experts. The Parties have separately designated the stipulation of admissibility 2 of such financial exhibits in the trial exhibit list filed as Dkt. No. 183. 3 4. The Parties have stipulated to the admissibility of certain exhibits that qualify as Ancient 4 Documents under Fed. R. Evid. 803(16). Specifically, the Parties have stipulated to the 5 admissibility of such Ancient Documents where the authenticity is not in question pursuant 6 to Fed. R. Evid. 901(8). 7 disseminated publications (such as books, newspapers, periodicals), government issued 8 documents whether certified or uncertified, filings with governmental/administrative 9 agencies. The Parties have separately designated the stipulation of admissibility of such 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP 10 This shall include Ancient Documents that are widely Ancient Document exhibits in the trial exhibit list filed as Dkt. No. 183. 11 5. The Parties hereby stipulate as authentic and admissible the following categories of 12 exhibits (subject to reservation of objections as to relevance or hearsay depending how the 13 document is offered): 14 a. Any government issued records (whether certified or uncertified) 15 b. Any filings made to governmental agencies (e.g., USPTO filings, TTB filings, 16 probate records, chain of title records for real estate) 17 6. The Parties hereby stipulate and request the Court to admit into the trial record all the 18 exhibits that the Parties stipulated as admissible in Dkt. No. 183 without need for a 19 sponsoring witness at trial; provided, however, the parties reserve all rights to interpose 20 objections and arguments as to how the trial exhibits listed on Dkt. No. 183 are actually 21 used at trial or in any post-trial submissions or proceedings. 22 23 7. The Parties hereby stipulate and request the Court establish in the trial record the following stipulated facts: 24 a. Declaratory Judgement Plaintiff The Vineyard House, LLC (“TVH”) filed case no. 25 4:19-cv-01424-YGR (the “Declaratory Judgment Action”) on March 18, 2019, 26 alleging (i) false advertising and false designation of origin (15 U.S.C. § 1125(a)); 27 (ii) declaratory determination of its and Constellation Brands U.S. Operations, 28 Inc.’s (CBUSO’s) rights with respect to use of the TO KALON name, (iii) 2 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 3 of 8 1 cancellation of U.S. Registration Nos. 1,489,619 (TO KALON) and 1,857,851 (TO 2 KALON VINEYARD) (the “To Kalon Marks”) based on a claim that the To Kalon 3 Marks were obtained by fraud on the United States Patent & Trademark Office; (iv) 4 false advertising (California Business & Professions Code §17500 et seq.); and (v) 5 unfair competition (California Business & Professions Code §17200 et seq.). 6 7 8 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP 9 b. On July 1, 2019, TVH amended its Complaint to consolidate the second and third counts. c. On July 15, 2019, Constellation filed its Answer to the Amended Complaint, denying TVH’s claims. 10 d. Constellation filed Case No. 4:20-cv-00238-YGR (the “Infringement Action”) on 11 January 10, 2020 for: (i) federal trademark infringement in violation of 15 U.S.C. 12 § 1114; (ii) federal unfair competition in violation of 15 U.S.C. § 1125(a); (iii) 13 federal false advertising (iv) trademark infringement under California common 14 law; (v) unfair competition under California common law; and (vi) unfair 15 competition under Cal. Bus. & Prof. Code §17200 et seq. 16 e. On January 10, 2020, Constellation sought preliminary injunctive relief to prevent 17 TVH from using TO KALON in conjunction with the sale of its wines. The Court 18 granted the requested relief on February 21, 2020. 19 f. On February 5, 2020, TVH filed its Answer, denying the claims set forth in 20 Constellation’s complaint. 21 Constellation had abandoned the TO KALON and TO KALON VINEYARD 22 trademarks because Constellation and its predecessor, Robert Mondavi Winery, 23 had entered into a license and failed to play a meaningful role in controlling the 24 quality of the licensed products, namely a “naked license.” 25 26 TVH also stated the affirmative defense that g. On February 25, 2020, the Court consolidated the Declaratory Judgment and Infringement Actions. 27 h. Plaintiff The Vineyard House LLC is a California limited liability company with 28 its principal place of business at 1581 Oakville Grade, Oakville, CA 94562. Jeremy 3 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 4 of 8 1 Nickel is TVH’s sole member, manager, and President. Nickel founded TVH in 2 2008 to produce and sell wine. 3 i. Defendant Constellation Brands U.S. Operations, Inc. is a New York corporation 4 with its principal place of business at 235 North Bloomfield Road, Canandaigua, 5 New York 14424. Constellation promotes and sells a line of wine under the names 6 TO KALON and TO KALON VINEYARDS and is the owner of federal trademark 7 registrations for those trademarks. 8 j. In December 2004, Constellation Brands, Inc. acquired The Robert Mondavi 9 Corporation (“RMC”), together with all RMC’s subsidiaries, including Robert 10 Mondavi Winery (“RMW”). From December 2004 to March 2011, RMC was a 11 wholly owned subsidiary of Constellation Brands, Inc. Effective in March 2011, 12 RMC merged with and into Constellation Wines U.S, Inc. (“CWUS”) and shortly 13 thereafter, effective in March 2011, RMW merged with and into CWUS. As a 14 result, effective in March 2011, CWUS acquired the To Kalon Trademarks by 15 operation of law. Effective June 1, 2012, CWUS amended its certificate of 16 incorporation and changed its name to Constellation Brands U.S. Operations, Inc. 17 k. Robert Mondavi Winery selected the mark TO KALON for its wine and first used 18 it in commerce at least as early as in 1987 and has since then sold wine under 19 trademarks comprising or including TO KALON. l. Robert Mondavi Winery was awarded the following U.S. Trademark Registrations 20 (the “TO KALON Registrations”): 21 22 23 24 25 26 27 28 Mark TO KALON TO KALON VINEYARD Date of Reg. May 24, 1988 Reg. No. 1,489,619 Oct. 11, 1994 1,857,851 Goods Wine (IC 033) Wine (IC 033) m. Constellation’s predecessor, Robert Mondavi Winery, was originally granted registrations for TO-KALON and TO-KALON VINEYARD (with hyphens). In 2004 and 2008, however, Constellation amended its registrations (as permitted 4 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 5 of 8 1 under 15 U.S.C. § 1057(e)) to remove the hyphens, changing them to TO KALON 2 and TO KALON VINEYARD. 3 4 5 6 7 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP 8 n. The TO KALON Registrations are “incontestable” under Section 15 of the Trademark Act, 15 U.S.C. §1065. o. Pohndorff & Co. applied for and registered TO KALON as a trademark in 1887 (Reg. 14,962). p. The wine and spirits products Mr. Crabb manufactured were sold in TO KALON branded stores in Washington, DC and New Orleans. 9 q. Mary Alice Churchill organized the “To Kalon Vineyard Company” in 1903 to 10 conduct her business operations, which according to the company’s Articles of 11 Incorporation included the “rais[ing of] . . . grapes, fruits and berries,” as well as 12 the “purchase [of] grapes, fruits and berries” from third parties and “manufacture 13 the same into wines, brandies, and other liquors.” 14 15 r. The To Kalon Wine Co. registered TO KALON as a trademark in 1906 (Reg. No. 53,905). 16 s. The To Kalon Wine Co. advertised and sold both domestic and imported wines. 17 t. In July 1943 Mary Alice Churchill, sold her real property to a businessman named 18 Martin Stelling, Jr. 19 u. After Mr. Stelling died, his widow sold off all of the real property by the mid-1950s. 20 Ivan Schoch, who had worked for Mr. Stelling, acquired a portion of the vineyard 21 property once owned by Crabb. 22 v. In 1966, Mr. Mondavi purchased a twelve-acre property on which the Robert 23 Mondavi Winery sits. He called his operation the Robert Mondavi Winery. Over 24 the years, the Robert Mondavi Winery acquired hundreds of additional adjoining 25 acres from Mr. Schoch and others. By 1978, Robert Mondavi Winery controlled 26 around 550 acres of contiguous, prime vineyard land, including most of Crabb’s 27 original parcels on which Crabb operated his winery business. 28 w. TVH is owned and managed by Jeremy Nickel, who inherited a vineyard and 5 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 6 of 8 1 buildings in Napa Valley. TVH has sold wines under the brand THE VINEYARD 2 HOUSE since 2010. 3 4 x. Beginning in June 2018, TVH filed the following trademark applications for wine in the United States Patent and Trademark Office: Mark 5 6 7 8 9 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP 10 11 12 13 14 15 16 17 18 19 20 Appl. No. H.W. CRABB'S TO-KALON VALLEY 88/009,718 H.W. CRABB'S TO-KALON VALLEY VINEYARD TO-KALON ESTATE 88/009,715 88/009,713 TO KALON GRAND CRU TO KALON HALTER 88/009,709 87/945,348 TO KALON FIRST GROWTH TO KALON VALLEY VINEYARD 88/009,711 87/945,345 TO KALON VALLEY 87/945,344 TO KALON VINEYARD HALTER VALLEY 87/945,337 TO KALON HALTER VALLEY VINEYARD 87/945,342 TO KALON VALLEY 87/945,332 TO KALON 1889 87/945,321 HALTER VALLEY TO KALON VINEYARD 87/944,970 TO KALON VINEYARD COMPANY TO KALON HALTER VALLEY CRABB'S HALTER TO KALON VALLEY 87/945,330 87/944,973 87/944,926 21 22 23 24 25 26 27 28 6 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 7 of 8 1 2 3 4 5 6 7 8 9 DATED: November 20, 2020 On Behalf of The Vineyard House, LLC On Behalf of Constellation Brands U.S. Operations, Inc. BUCHALTER HUNTON ANDREWS KURTH LLP By: /s/ Jeffrey Judd PETER H. BALES JEFFREY JUDD BUCHALTER 55 Second Street, Suite 1700 San Francisco, CA 94105-3493 Tel: (415) 227-0900 Fax: (415) 227-0770 By: /s/ Erik C. Kane TIMOTHY J. CARLSTEDT HUNTON ANDREWS KURTH LLP 50 California Street, Suite 1700 San Francisco, California 94111 Tel.: (415) 975-3700 Fax: (415) 975-3701 EDWARD T. COLBERT WILLIAM M. MERONE ERIK C. KANE HUNTON ANDREWS KURTH LLP 2200 Pennsylvania Avenue, N.W. Washington, D.C. 20037 Tel.: (202) 955-1500 Fax: (202) 778-2201 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP 10 11 12 13 14 ARMIN GHIAM HUNTON ANDREWS KURTH LLP 200 Park Ave. New York, NY 10166 Tel.: (212) 908-6207 Fax: (212) 309-1100 15 16 17 18 19 20 21 _________ PURSUANT TO STIPULATION, IT IS SO ORDERED. DATED: November 30, 2020 Honorable Yvonne Gonzalez Rogers United States District Judge 22 23 24 25 26 27 28 7 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE Case 4:19-cv-01424-YGR Document 214 Filed 11/30/20 Page 8 of 8 CERTIFICATE OF SERVICE 1 2 3 4 8 Peter H. Bales Jeffrey Judd BUCHALTER 55 Second Street, Suite 1700 San Francisco, CA 94105-3493 Email: pbales@buchalter.com jjudd@buchalter.com 9 Dated: November 20, 2020 5 6 7 10 50 California Street, Suite 1700 San Francisco, California 94111 Hunton Andrews Kurth LLP The undersigned certifies that the foregoing STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE was filed and therefore served electronically via the CM/ECF system on November 20, 2020 to the below counsel of record: By: /s/ Erik C. Kane Hunton Andrews Kurth LLP 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 STIPULATION REGARDING PRESENTATION OF TRIAL EVIDENCE
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