United States District Court, D. Utah, Central Division
MEMORANDUM DECISION AND ORDER DENYING MOTIONS IN
Nuffer United States District Judge.
Derma Pen LLC (“Derma Pen”) filed a motion in
limine (“Derma Pen's Motion”) to exclude all
evidence and comments at the evidentiary hearing, which is
scheduled to begin December 17, 2018, “relating to the
DERMAPEN® Mark being awarded to Derma Pen,
LLC, under the Court's Final Order and Permanent
Injunction, including without limitation, the scope of the
Injunction . . . .” Nonparties Joel Marshall, Sasha
Marshall, and DP Derm LLC (collectively,
“Nonparties”) also filed a motion in limine
(“Nonparties' Motion”) to
“preclude evidence of any conduct by the [Nonparties]
in alleged violation of the Judgment occurring before July
25, 2017.” For the following reasons, both motions are
DENIED without prejudice.
Pen contends that, based on a recent order,  the Nonparties
“should be restrained from arguing at the Evidentiary
Hearing any claims, defenses, facts or issues relating to the
scope of the Injunction, ” including “the
validity of ownership of the [DERMAPEN®]
trademark.” But the order to which Derma Pen refers
does not state that Derma Pen owns the trademark or that it
owned the trademark when the injunction (the
“Injunction”) was entered. Instead, that order states
that Derma Pen IP Holdings LLC (“Holdings”)
“was the registrant of the DERMAPEN®mark
when the Injunction was entered and is still its registrant
toda y. ”
Pen next asserts that the October 19, 2018 deposition
testimony of Defendant Stene Marshall should be excluded
because, in violation of two docket text orders,
attorney who represented Marshall at that deposition has not
filed an appearance in this case.4 Contrary to Derma
Pen's assertion, neither docket text order provides a
basis to exclude Marshall's deposition testimony.
Pen further argues that all evidence “relating to the
ownership of the DERMAPEN® Mark” should
be excluded because Derma Pen “has been judicially
found to be the owner of the trademark.” Derma Pen does
not cite to any specific order to support this argument. The
fact that Holdings was the registrant of the trademark when
the Injunction was entered does not mean that Derma Pen is
the owner of the trademark today. It also does not mean that
Derma Pen is presently entitled to enforce the Injunction.
Pen's final contention is that all evidence should be
excluded regarding use of the DERMAPEN® mark
by Derma Pen, Holdings, or “any future successor in
interest” from the date the Injunction was entered (May
8, 2017) because, according to Derma Pen, “only
evidence showing that [Nonparties] have violated the
Permanent Injunction is relevant.” This contention
lacks merit, as evidence supporting the Nonparties'
defenses may also be relevant.
each of these reasons, Derma Pen's Motion will be denied.
Nonparties argue that all evidence of an “alleged
violation of the [Injunction] occurring before July 25, 2017,
” should be excluded based on Fed.R.Civ.P. 65(d)(2)
because there is no evidence that the Nonparties received
notice of the Injunction before July 25, 2017.This rule
provides that an order granting an injunction “binds
only the following who receive actual notice of it by
personal service or otherwise: (A) the parties; (B) the
parties' officers, agents, servants, employees, and
attorneys; and (C) other persons who are in active concert or
participation with anyone described in Rule 65(d)(2)(A) or
it has not yet been established when each of the Nonparties
received actual notice of the Injunction, the Nonparties'
Motion will be denied.
IT IS HEREBY ORDERED that Derma Pen's
Motion and the Nonparties'