1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

1

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF CALIFORNIA

----oo0oo----

BLUE MAGIC PRODUCTS, INC.,

(BOYD FLOTATION, INC., ALLEGED

SUCCESSOR OR ASSIGN), 

NO. CIV. S-00-1155 WBS JFM

Plaintiff, NO. CIV. S-04-2398 WBS JFM

 

v. MEMORANDUM AND ORDER

RE: MOTION TO ENFORCE

SETTLEMENT AGREEMENT & MOTION 

FOR DECLARATORY RELIEF

BLUE MAGIC, INC., et al., (THE

RECTORSEAL CORPORATION,

SUCCESSOR),

Defendant.

______________________________

BOYD FLOTATION, INC.,

Plaintiff

v.

THE RECTORSEAL CORPORATION,

Defendant.

----oo0oo----

These two related cases both arise from the same set of

facts and revolve around a 2002 settlement agreement (“the

Settlement Agreement”) between Blue Magic Products, Inc. (“BMPI”)

and Blue Magic, Inc. (“BMI”) that is, by its terms, binding on

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 1 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

1 Unless otherwise stated, all citations to documents in

this order refer to documents in case No. 00-1155.

2 Rectorseal and Boyd Flotation have requested that the

court take judicial notice of, among other things, certain

registered trademarks, financial statement filings, court

filings, and trademark Assignment Abstracts of Title. (See

DRJN). Federal Rule of Evidence 201 permits the court to take

judicial notice of facts that are “capable of accurate and ready

determination by resort to sources whose accuracy cannot

reasonably be questioned.” Fed. R. Ev. 201(b). The facts at

issue meet this standard. Taylor v. Charter Med. Corp., 162 F.3d

827, 828 (5th Cir. 1998)(court may take judicial notice of

existence and content of court filings in another court); Morgan

v. Morgan, 197 B.R. 892 (N.D. Cal. 1996)(taking judicial notice

of a financing statement filed with California’s Secretary of

State); Cf. Metro Publ’g , Ltd. v. San Jose Mercury News, 987

F.2d 637 (9th Cir. 1993)(taking judicial notice of certified

copies of trademark registrations). 

2

their “successors and assigns.” In case No. 00-1155, BMI’s

successor, the Rectorseal Corporation (“Rectorseal”), seeks to

enforce the Settlement Agreement against Boyd Flotation, Inc.

(“Boyd Flotation”), who Rectorseal claims is a successor or

assign of BMPI. In case No. 04-2398, Boyd Flotation seeks a

declaration that it is not bound by or otherwise subject to the

terms of the Settlement Agreement. Because the resolution of

issues pending in each case is dispositive of the other, the

cases are resolved together. 

I. Factual and Procedural Background1

At one time, BMPI owned three registered trademarks. 

First, BMPI registered the term “BLUE MAGIC” as a word mark for 

a waterbed conditioner on June 2, 1981. This word mark was

assigned United States Registration No. (“USRN”) 1,156,014 (“‘014

trademark”). (See Def.’s Req. for Judicial Notice (“DRJN”), Ex.

A (United States Patent and Trademark Office Electronic Search

System Printout)).2 Next, BMPI registered “BLUE MAGIC” as a word

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 2 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

3

mark for a chemical fabric protector on January 15, 1985. This

word mark was assigned USRN 1,314,169 (“‘169 trademark”). (See

DRJN, Ex. B (United States Patent and Trademark Office Electronic

Search System Printout)). Thereafter, BMPI registered “BLUE

MAGIC” as a word mark for a chemical protector for vinyl,

leather, plastic and wood, on September 24, 1985. This word mark

was assigned USRN 1,361,253 (“‘253 trademark”). (See DRJN, Ex. C

(United States Patent and Trademark Office Electronic Search

System Printout)). 

On May 20, 1986, BMI registered the same term, “BLUE

MAGIC,” as a word mark for an automobile polishing cream, wheel

cleaner, automobile gloss and paint sealant. This word mark was

assigned USRN 1,393,685 (“‘685 trademark”). (See DRJN, Ex. D

(United States Patent and Trademark Office Electronic Search

System Printout)). 

In 1995, BMPI and Wells Fargo Bank (“Wells Fargo”)

entered into an agreement whereby BMPI granted Wells Fargo a

security interest in its general intangibles - including the

‘014, ‘169, and ‘253 trademarks - to Wells Fargo in order to

secure certain BMPI obligations. Afterwards, BMPI filed a

Uniform Commercial Code Financing Statement (No. 9522960240) with

the California Secretary of State reflecting the agreement. (See

DRJN, Ex. E (Financing Statement No. 9522960240 filed on August

15, 1995). On or about August 31, 1999, BMPI entered into an

agreement to continue to grant Wells Fargo a security interest

in, among other things, its general intangibles. (See Boyd Decl.

Ex. B (Continuing Security Agreement)). As part of that security

agreement, BMPI agreed “not to sell, hypothecate or otherwise

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 3 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

4

dispose of, nor permit the transfer by operation of law of . . .

any of the interest therein, except sales of inventory to buyers

in the ordinary course of Debtor’s business.” (Id. ¶ 6(b)(v)). 

Thereafter, BMPI and Wells Fargo filed a financing statement with

the California Secretary of State indicating that BMPI was

continuing to grant Wells Fargo this interest. (See DRJN, Ex. F

(Financing Statement No. 00056C0106 filed on February 22, 2000)). 

 On or about May 25, 2000, BMPI filed a complaint in

case No. 00-1155 against BMI; AutoCleaner, LLC; Michael Moshontz;

and Blue Magic Polish corporation for trademark infringement. 

BMI made counterclaims of infringement against BMPI related to

the ‘685 trademark. (See DRJN, Ex. J (BMI’s Am. Answer,

Countercl. and Cross-cl.). The litigation was resolved when BMPI

entered into a Settlement Agreement with BMI and the other

defendants in the suit in March of 2002. (See Pl.’s Mot. to

Reopen, Ex. 1 (Settlement Agreement)). That agreement provided,

in pertinent part:

! that BMPI and its successors not use the mark BLUE

MAGIC in any form or combination on any product it

markets or sells or may market or sell that

relates to the automotive industry; 

 

! that BMPI delete any reference to the mark BLUE

MAGIC on its website in connection with products

that it markets or sells to the automotive

industry;

! that BMPI release and discharge BMI, its

successors and assigns, from any and all claims,

liabilities, actions, expenses and fees of every

kind and nature;

! that BMPI had full authority to enter into the

settlement through its President, Anthony J. Bova

! that the provisions shall be binding and inure to

the benefit of each of the parties and their

respective heirs, executors, administrators,

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 4 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

5

agents, representatives, successors and assigns;

! that the parties’ rights and obligations under the

Settlement Agreement shall be interpreted,

enforced and governed by and under the laws of the

State of California.

(Id. ¶¶ 2.A, 2.C, 4, 11, 15, 17). 

After the parties entered into the Settlement

Agreement, the court dismissed case No. 00-1155 on or about May

14, 2002. (May 14, 2002 Order). The dismissal order provides

that “the Court shall retain jurisdiction in this matter.” (Id.

at 2). Shortly before the dismissal order was issued,

Wells Fargo filed a Uniform Commercial Code Financing Statement

with the California Secretary of State on May 1, 2002 indicating

that Wells Fargo had assigned its security interest in the

collateral identified in Financing Statement No. 95522960240 to

LINC Credit, LLC (“LINC”). (See DRJN, Ex. G (Financing Statement

No. 02122C0012 filed on May 1, 2002)). 

On June 11, 2003, BMPI filed a voluntary petition for

Chapter 11 relief in the United States Bankruptcy Court for the

Eastern District of California. (See Boyd Decl. Ex. A ¶¶ Y-Z). 

Thereafter, LINC Credit filed a motion for relief from stay to

foreclose on its lien on BMPI’s assets. (Id.). On or about

August 3, 2003, the bankruptcy court granted that motion,

permitting LINC to take possession and dispose of the BMPI assets

on which LINC had a lien. (Id.). LINC foreclosed on its

security interests in the assets of BMPI, whose bankruptcy

trustee assigned the ‘014, ‘169, and ‘253 trademarks to LINC. 

(DRJN, Ex. N (Mem. In Supp. of Def.’s Mot. to Abstain, Transfer,

Stay or Dismiss) (“Def.’s Mot. to Abstain”)) at 3:3-7; See also

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 5 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

3 At one time, Boyd Flotation erroneously presumed to

have acquired rights to BMI’s ‘685 trademark, as well, but has

since relinquished any claim to that trademark. (See Baker Decl.

Ex. 11 (Letter from Boyd Flotation’s counsel)(apologizing for an

oversight in attempting to register the ‘685 trademark); Def.’s

Opp. to Pl.’s Mot. To Enforce Settlement Agreement at 2 (“Boyd

Flotation does not purport to be the owner of this [the ‘685]

trademark.”)). Because the rights to the ‘685 trademark are

undisputed, the court need not reach any arguments regarding that

trademark. 

6

Baker Decl. Exs. 14-16(Trademark Assignment Abstracts of Title)). 

 On August 28, 2003, LINC entered into a Purchase 

Agreement with Boyd Flotation whereby LINC assigned its interest

in, among other things, the ‘014, ‘169, and ‘253 trademarks to

Boyd Flotation.3 (See Boyd Decl., Ex. A (Purchase Agreement

dated August 28, 2003); DRJN, Ex. N (Def.’s Mot. to Abstain) at

3:4-7; see also Baker Decl. Exs. 14-16 (Trademark Assignment

Abstracts of Title)).

Rectorseal asserts that its subsidiary, Cargo Chemical 

Corporation, has acquired BMI and its assets. (Boyd Decl. Ex. C

(Rectorseal’s Letter to BMPI dated February 23, 2004)). Because

of this acquisition, Rectorseal claims to have succeeded to BMI’s

rights and obligations under the Settlement Agreement and asserts

that Boyd Flotation is BMPI’s successor or assign under the

agreement. (See id.). Rectorseal sent Boyd Flotation a letter

explaining its position on February 23, 2004. (Id.). 

In June 2004, Boyd Flotation filed an action in the

Circuit Court for St. Louis County in the State of Missouri

seeking a declaration that it was not bound by the terms of the

Settlement Agreement. (See DRJN Ex. M (Pet. for Declaratory

Relief)). On July 9, 2004, Rectorseal’s counsel sent Boyd

Flotation’s president a letter purporting to give notice to Boyd

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 6 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

4 The court will continue to cite this motion as

“Plaintiff’s Motion to Reopen” as it was originally captioned,

with the understanding that it is construed as a motion to

enforce the Settlement Agreement. 

5 Rectorseal also argues that Boyd Flotation is in

violation of Paragraphs 4, 11, 15, and 17 of the Settlement

Agreement. However, these “violations” are more accurately

characterized as disputes about the applicability and/or validity

of the Settlement Agreement as opposed to violations of it, and

Rectorseal is not seeking relief for these “violations,” other

than attorney’s fees, expenses, and costs incurred in resolving

them. Therefore, the court will not address these “violations”

7

Flotation that it was in violation of the Settlement Agreement. 

(See Pl.’s Mot. to Reopen, Ex. 5 (Letter dated July 9, 2004)). 

On or about September 14, 2004, Rectorseal filed a motion to

reopen the case with this court. (See Pl.’s Mot. to Reopen). 

Thereafter, Boyd Flotation’s declaratory relief action was

removed to the United States District Court for the Eastern

District of Missouri, and transferred to this court by the

parties’ stipulation. (See DRJN Ex. O (Mot. to Transfer from

United States District Court Eastern District of Missouri)). The

action was assigned case No. 04-2398. On November 22, 2004, this

court entered a Related Case Order finding that Rectorseal’s

motion to reopen and Boyd Flotation’s declaratory relief action

raise substantially the same issues. (November 22, 2004 Order). 

 On or about December 3, 2004, both parties stipulated

that Rectorseal’s motion to reopen be treated as a motion to

enforce the settlement agreement in case No. 00-1155 and that

Rectorseal is not seeking to reopen the litigation or to vacate

the court’s May 14, 2002 stipulated dismissal order.4 Rectorseal

argues that Boyd Flotation is in violation of Paragraphs 2.A and

2.C5 of the Settlement Agreement and seeks an order (1) enjoining

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 7 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

in this order.

6 The Settlement Agreement provides that certain notice

procedures must be followed before invoking the court’s

jurisdiction. (See id, Ex. 1 ¶ 6). There is no dispute that

these procedures were followed. 

8

Boyd Flotation from using the BLUE MAGIC trademark except as

provided in the Settlement Agreement; (2) requiring Boyd

Flotation to take down its current website displaying the BLUE

MAGIC trademark in a manner prohibited by the terms of the

Settlement Agreement; and (3) compelling Boyd Flotation to pay

Rectorseal its reasonable attorney’s fees, expenses and costs

incurred in this matter pursuant to paragraph 16 of the

Settlement Agreement. 

II. Discussion

A. Jurisdiction

A district court is authorized to enforce a settlement

agreement that led to a dismissal where it retains jurisdiction

over the settlement agreement in its dismissal order with the

parties’ consent. Kokkonen v. Guardian Life Ins. Co. of Am., 511

U.S. 375, 381-382 (1994). Because the court explicitly retained

jurisdiction over the matter in its dismissal order with the

parties’ consent, the court has jurisdiction to enforce the

settlement agreement. (See May 14, 2002 Order; Pl.’s Mot. to

Reopen, Ex. 1 (Settlement Agreement) ¶¶ 7, 15).6 

B. Merits

By its terms, the Settlement Agreement is enforceable

against “the [p]arties and their . . . successors and assigns.” 

(Pl.’s Mot. to Reopen, Ex. 1 (Settlement Agreement) ¶ 15). 

Neither Rectorseal nor Boyd Flotation were parties to the

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 8 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

9

Settlement Agreement. Rectorseal, however, claims to have

succeeded to BMI’s rights and obligations under the Settlement

Agreement. ((Boyd Decl. Ex. C (Rectorseal’s Letter to BMPI dated

February 23, 2004)). Boyd Flotation does not dispute that

succession or that Rectorseal is bound by the Settlement

Agreement. Boyd Flotation simply denies that it is itself bound

by the Settlement Agreement. Rectorseal argues, to the contrary,

that Boyd Flotation is also bound by the Settlement Agreement as

BMPI’s successor or assign.

Under California law, a person or entity may transfer

its property or contract rights to another by assignment. McGown

v. Spencer, 8 Cal. App. 3d 216, 219 (1970)(“To assign ordinarily

means to transfer title or ownership of property.”); Farmland

Irr. Co. v. Dopplmaier, 48 Cal. 2d 208, 222 (1957)(California

statutes “clearly manifest a policy in favor of free

transferability of all types of property, including rights under

contracts.”). The recipient of the assignment is deemed the

assignee. See, e.g., Farmland Irr. Co., 48 Cal. 2d at 214(using

this terminology). 

Boyd Flotation acquired its rights in the ‘014, ‘169

and ‘253 trademarks from LINC. (See Boyd Decl., Ex. A (Purchase

Agreement dated August 28, 2003); DRJN, Ex. N (“Def.’s Mot. to

Abstain”) at 3:3-7). LINC sold Boyd Flotation its interest in

the trademarks after foreclosing on the secured interest in them

that it purchased from Wells Fargo. (DRJN, Ex. N (Def.’s Mot. to

Abstain) at 3:4-7). Wells Fargo had acquired a secured interest

in the trademarks from BMPI in 1995 - roughly seven years before

BMPI and BMI entered into the Settlement Agreement. (See Boyd

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 9 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

7 Note that “assign” is an archaic term for an

“assignee.” See Webster’s Third New International Dictionary 132

(1976).

10

Decl. Ex. B (Continuing Security Agreement); Pl.’s Mot. to

Reopen, Ex. 1 (Settlement Agreement)). 

The question is whether this chain of ownership makes 

Boyd Flotation an assign[ee] of BMPI.7 Under California law, a

“‘[s]ecurity interest’ means an interest in personal property or

fixtures that secures payment or performance of an obligation.” 

Cal. Com. Code § 1201(36)(a). A security interest is not an

assignment. See In re Cybernetic Serv., Inc., 239 B.R. 917, 923

(9th Cir. 1999)(security interest under Cal. Com. Code §

1201(36)(a) did not constitute an assignment under the Patent

Act). Rather, it is a mere agreement to assign in the event of a

default by the debtor. In re Roman Cleanser Co., 43 B.R. 940,

944 (Bankr. E.D. Mich. 1984); See also Cal. Com. Code §

9601(a)(1)(secured party may foreclose or otherwise enforce the

security interest only after default). Therefore, the security

interest BMPI assigned to Wells Fargo, which Wells Fargo later

assigned to LINC, did not constitute an assignment of BMPI’s

rights in trademarks ‘014, ‘169, and ‘253. It was merely the

transfer of a right to foreclose on those trademarks in order to

secure payment on a debt. See Cal. Com. Code § 1201(36)(a). 

However, in the process of BMPI’s bankruptcy, LINC

foreclosed on its security interest in the ‘014, ‘169, and ‘253

trademarks, and the Trustee of BMPI’s bankruptcy estate assigned

LINC BMPI’s ownership interest in the trademarks. (See Baker

Decl. Exs. 14-16 (Trademark Assignment Abstracts of Title)). 

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 10 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

11

Thereafter, LINC assigned that ownership interest to Boyd

Flotation. (Id.). It is well established that “the assignee

‘stands in the shoes of the assignor.’” See, e.g., General Motors

Acceptance Corp. v. Kyle, 54 Cal. 2d 101, 114 (1960). Because

Boyd Flotation is LINC’s asignee, it stands in the shoes of LINC. 

This means that Boyd Flotation cannot seek to claim a greater

interest in the ‘014, ‘169, and ‘253 trademarks than LINC

possessed. Nor can Boyd Flotation escape the contractual

obligations imposed on its assignor. Cal. Packing Corp. v. SunMaid Raisin Growers of Cal., 81 F.2d 674, 677 (9th Cir. 1936)

(“The ordinary rules of construction apply to assignments and

contracts affecting trade-mark rights. Successors or assignees

are entitled to the same rights as the original proprietor, and

the assignee of a trade-mark is subject to the same defenses that

could be asserted against the assignor.”). Whatever rights and

obligations LINC had with respect to the ‘014, ‘169, and ‘253

trademarks have been transferred to Boyd Flotation, who now

stands in the shoes of LINC, as BMPI’s assignee.

LINC acquired its ownership rights to the ‘014, ‘169,

and ‘253 trademarks, as distinguished from a mere security

interest in them, in August of 2003, over a year after the

Settlement Agreement limited the use of those trademarks. BMPI’s

bankruptcy trustee could not assign LINC any greater interest in

the trademarks than BMPI had after the Settlement Agreement. 

See, e.g., In re Rigden, 795 F.2d 727, 732 (9th Cir. 1986)(“[T]he

only title that a [bankruptcy] trustee can sell is the trustee’s

own right, title, and interest in the property.”)(citing Hagan v.

Gardner, 283 F.2d 643, (9th Cir. 1960)). Therefore, LINC’s

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 11 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

12

ownership interest in the trademarks, which later became Boyd

Flotation’s ownership interest in them, was subject to the

limitations existing after the Settlement Agreement. Assuming

the Settlement Agreement is valid, any limitations it imposed on

the use of the trademarks would thus inure to Boyd Flotation. 

Boyd Flotation, however, argues that BMPI lacked the

authority to transfer any of its rights in the trademarks to BMI

during the Settlement Agreement, as Boyd Flotation claims BMPI

attempted to do, because BMPI had previously contracted in a

security agreement “not to sell, hypothecate, or otherwise

dispose of, nor permit the transfer by operation of law of . . .

any of [its] interest [in the trademarks], except sales of

inventory to buyers in the ordinary course of [its] business.” 

(Boyd Decl. Ex. B (Continuing Security Agreement) ¶ 6(b)(v)). In

response, Rectorseal argues that BPMI never transferred any

rights in its trademarks to BMI through the Settlement Agreement

but merely recognized the preexisting nature of those rights as

between the two signatory companies.

Nowhere in the Settlement Agreement can there be found

any reference to a sale, hypothecation, disposal, or transfer of

BMPI’s interests in the trademarks. At most, the Settlement

Agreement contains an arrangement whereby BMI agreed to pay BMPI

1% of its net sales on its vinyl, fabric and leather cleaners,

and protectants for a two-year period. (Pl.’s Mot. To Reopen,

Ex. 1 (Settlement Agreement) ¶ 1.C). This financial arrangement

falls under the “Payment” heading in the Settlement Agreement and

is not characterized, in any way, as a sale, hypothecation,

disposal, or transfer of any of BMPI’s trademark rights. (Id.).

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 12 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

13

Rather, the Settlement Agreement focuses on delineating the

respective industries to which BMPI and BMI agreed to market

their products. (See id. ¶ 2). Therefore, the Settlement

Agreement did not transfer any rights in the trademarks in

violation of BMPI’s security agreement. 

More importantly, however, even if the Settlement

Agreement could be read to transfer BMPI’s rights in the

trademarks, the nontransferability clause within the Continuing

Security Agreement would not void the subsequent transfer by BMPI

to BMI of any rights BMPI had in the trademarks at the time of

the Settlement Agreement. See Cal. Com. Code § 9401(b)(“An

agreement between the debtor and the secured party which

prohibits a transfer of the debtor’s rights in collateral or

makes the transfer a default does not prevent the transfer from

taking effect.”). Therefore, any transfer of rights that

occurred through the Settlement Agreement was valid, and any

interest in the ‘014, ‘169, and ‘253 trademarks Boyd Flotation

acquired from LINC was subject to the terms of the Settlement

Agreement. Thus, Rectorseal may enforce the Settlement Agreement

against Boyd Flotation. 

The Settlement Agreement specifically forbids BMPI and

its assigns from using “the Mark ‘BLUE MAGIC’ in any form or

combination on any product it markets or sells or may market or

sell that relates or pertains to the automotive industry,”

including any products marketed on a website. (See Pl.’s Mot. to

Reopen, Ex. 1 (Settlement Agreement) ¶¶ 2.A-C, 15). Rectorseal

has submitted evidence in the form of a printout dated March 26,

2004 of a posting on a website (http://www.bluemagic.com/

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 13 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

8 The BMPI website had not changed as of April 20, 2005. 

See http://www.bluemagic.com/automarine.html(last visited on Apr.

20, 2005). Nor does Boyd Flotation deny responsibility for the

website. 

14

automarine.html) demonstrating that Boyd Flotation, as BMPI’s

assignee, is using the “BLUE MAGIC” mark to market products to

the automotive industry. (See Baker Decl. Ex. 10 (Attachments to

Letter to Boyd Flotation’s Counsel Dated April 8, 2004)).8

Rectorseal now seeks an order requiring Boyd Flotation to take

down that website and any current website displaying the BLUE

MAGIC trademark in a manner prohibited by the Settlement

Agreement. However, the terms of the Settlement Agreement would

allow Boyd Flotation to simply modify the website to conform with

the Settlement Agreement without taking it down. Therefore, the

court will leave this decision to Boyd Flotation’s discretion.

C. Attorney’s Fees, Expenses, and Costs

Rectorseal seeks to recover its reasonable 

attorney’s fees, expenses and costs incurred in these cases. 

Paragraph 16 of the Settlement Agreement provides:

[T]hat in the event litigation . . . is brought

concerning the interpretation or enforcement of this

Agreement, or because of an alleged dispute . . . or

breach in connection with any of the provisions of this

Agreement, the successful or prevailing [p]arty shall

be entitled to recover reasonable attorney’s fees,

expenses and costs actually incurred in connection

therewith, in addition to any other relief to which it

may be entitled. 

(Pl.’s Mot. to Reopen Ex. 1 (Settlement Agreement)). Boyd

Flotation’s violation of the Settlement Agreement and dispute

regarding its applicability compelled Rectorseal to file a motion

to enforce the Settlement Agreement against Boyd Flotation and to

oppose Boyd Flotation’s request for declaratory relief. Because

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 14 of 15
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

15

Rectorseal has prevailed on both matters, it may recover its

reasonable attorney’s fees, expenses and costs actually incurred

in connection with both matters. Rectorseal must first, however,

file a postjudgment motion for attorney’s fees and a separate

bill of costs with this court in compliance with Local Rules 54-

292 and 54-293. 

IT IS THEREFORE ORDERED that:

(1) Rectorseal’s motion to enforce the Settlement

Agreement against Boyd Flotation in case No. 00-1155 be, and the

same hereby is, GRANTED;

(2) Boyd Flotation’s motion for declaratory relief in

case No. 04-2398 be, and the same hereby is, DENIED;

(3) Boyd Flotation be, and it hereby is, enjoined from

using the BLUE MAGIC trademark except as provided in the

Settlement Agreement; 

(4) Boyd Flotation shall either take down any current

website displaying the BLUE MAGIC trademark in a manner

prohibited by the Settlement Agreement or modify such website to

make it conform with the Settlement Agreement; and

(5) Rectorseal may recover its reasonable attorney’s

fees, expenses and costs incurred in cases No. 00-1155 and 04-

2398 by proper motion pursuant to Local Rules 54-292 and 54-293. 

DATED: May 13, 2005

Case 2:04-cv-02398-WBS -JFM Document 25 Filed 05/13/05 Page 15 of 15