3:15-cv-00866-SB 

Page 1 

Defendant’s Response to Plaintiff’s Objections to

Magistrate Judge Beckerman’s Findings & Recommendation 

David H. Madden 

Mersenne Law 

9600 S.W. Oak Street 

Suite 500 

Tigard, Oregon 97223 

(503)679-1671 

ecf@mersenne.com 

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

COBBLER NEVADA, LLC, 

Plaintiff 

v. 

Thomas GONZALES, 

Defendant 

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Civil Action No.: ........... 3:15-cv-00866-SB 

DEFENDANT’S RESPONSE TO 

PLAINTIFF’S OBJECTIONS TO 

MAGISTRATE’S FINDINGS & 

RECOMMENDATION 

DEFENDANT’S RESPONSE TO OBJECTION TO

FINDINGS & RECOMMENDATION

Defendant GONZALES submits this Response to Plaintiff COBBLER NEVADA, LLC’s 

(“COBBLER’s”) Objections (doc. 53) to Magistrate Judge Beckerman’s Findings and 

Recommendation (“F&R,” doc. 51) awarding substantially all of the relief Defendant 

sought in his Motion for Award of Costs and Attorney Fees (doc. 47). For the reasons 

discussed below, the Court should ADOPT the magistrate’s recommendations in their 

entirety. 

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3:15-cv-00866-SB 

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Defendant’s Response to Plaintiff’s Objections to

Magistrate Judge Beckerman’s Findings & Recommendation 

INTRODUCTION

Magistrate Judge Beckerman’s Findings & Recommendation (“F&R,” doc. 51) advocates 

that this Court take two actions: (1) dismiss all of Plaintiff’s unfounded claims against 

Defendant with prejudice; and (2) award GONZALES some of the attorney fees and 

costs he suffered as a direct result of Plaintiff’s “objectively unreasonable” litigation 

activities. Both recommended actions and the supporting findings and reasoning 

should be adopted. 

1. ENTRY OF FINAL JUDGMENT

Judge Brown previously adopted Magistrate Judge Beckerman’s first Findings & 

Recommendations in this case, dismissing Plaintiff’s indirect-infringement claim with 

prejudice, and its direct-infringement claim with leave to amend (docs 39, 35). 

Nevertheless, Plaintiff has continued to assert that it could file a new indirect 

infringement claim against GONZALES based on the same conduct complained of 

before. The magistrate’s reasoned assessment of that position is simple and concise: 

“Plaintiff is wrong.” (F&R at p. 5.) 

As to the direct-infringement claim, the magistrate correctly points out that 

Plaintiff’s claim against GONZALES was dismissed by the Court1

 with leave to amend, 

but Plaintiff failed to avail itself of the opportunity to do so. (Instead, COBBLER 

attempted to rewind its case to claims against an unknown Doe defendant, and then 

voluntarily dismissed those claims against the Doe.) And although Plaintiff now 

insinuates that “facts and developments of this case” would allow it to charge 

GONZALES anew with both direct and indirect infringement, it is wrong again: that ship 

 

1

 Such a dismissal is, of course, against Plaintiff’s wishes, which is to say, involuntary. 

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3:15-cv-00866-SB 

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Defendant’s Response to Plaintiff’s Objections to

Magistrate Judge Beckerman’s Findings & Recommendation 

has sailed. 

Res judicata prevents Plaintiff from relitigating issues that were or could have 

been raised in the indirect-infringement claim, and collateral estoppel prevents it from 

imposing further cost and vexation upon Defendant (and from further burdening the 

courts) relitigating issues that it had a full and fair opportunity2 to litigate in this case. 

In its Objections, Plaintiff makes no attempt to distinguish Allen v. Curry, 449 U.S. 90 

(1980), cited by the magistrate, which discusses and endorses the use of res judicata

and collateral estoppel by the federal courts, and there is no reason to leave Plaintiff 

with even a glimmer of its false hope of future legal action against Mr. GONZALES. 

Magistrate Judge Beckerman is correct: the Court should enter final judgment 

against Plaintiff COBBLER NEVADA and in favor of Defendant GONZALES. 

2. AWARD OF PREVAILING-PARTY FEES

Plaintiff appears to believe that “precedent” requires a court to exercise its discretion in 

the same manner in every case. Once again, Plaintiff is wrong. 

Precedent supports a court’s decision on a legal question. The court should give 

the same legal effect to a particular set of undisputed facts that was given in an earlier 

case, or identify other facts that justify a different outcome. For example, in this case, 

precedent supported the determination that an Internet subscriber who does not use or 

control the service, but who merely pays the bill for it, is not liable for contributory 

copyright infringement. The undisputed facts compelled the legal conclusion under 

established precedent. 

Discretion, on the other hand, may be exercised by a court to influence the 

 

2

 including the aforementioned opportunity to amend its complaint. 

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Defendant’s Response to Plaintiff’s Objections to

Magistrate Judge Beckerman’s Findings & Recommendation 

behavior of the parties before it (or conversely, in response to the behavior of those 

parties). Discretion cannot change a legal outcome; it can only select a particular 

consequence from a range of permissible consequences flowing from the legal 

outcome. A court might abuse its discretion by selecting a consequence outside the 

permissible range or by ignoring guidance from reviewing courts on the exercise of 

discretion in similar situations. It might also select a facially-reasonable consequence 

but fail to clearly explain why. Magistrate Judge Beckerman has made none of these 

errors. 

Plaintiff pursued Defendant on claims that were objectively unreasonable under 

facts known to Plaintiff at the time the claims were made, including an indirect 

infringement claim that lacked legal as well as factual basis. Magistrate Judge 

Beckerman’s analysis of Defendant’s limited request for only the fees and costs 

associated with his successful challenge to Plaintiff’s indirect-infringement claim 

carefully follows applicable Supreme Court and Ninth Circuit guidance on the exercise 

of discretion in awarding fees and costs, and reaches a conclusion that is within the 

statutorily-permissible range. Apart from Plaintiff’s incorrect understanding of 

“precedent” and “discretion,” its only dispute with the Recommendation appears to be 

that the magistrate’s equally careful exercise of discretion in a different case came out 

against a different plaintiff (which happened to be represented by the same counsel, 

Mr. Crowell). But that is not an example of treating prevailing plaintiffs and defendants 

differently, as Plaintiff would have it; it is merely treating a misbehaving party 

consistently, whether the misbehavior is the unreasonable pursuit of invalid claims (in 

the present case), or the unreasonable inflation of costs and fees to coerce an 

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Defendant’s Response to Plaintiff’s Objections to

Magistrate Judge Beckerman’s Findings & Recommendation 

overreaching settlement (in the earlier case, now on appeal as Glacier Films (USA) Inc. 

et al. v. Turchin, 16-35688 (3:15-cv-1817-SB)). 

The exercise of the court’s discretion here, which resulted in an outcome within 

statutorily permissible bounds, according to relevant guidance, and in view of the 

parties’ conduct before the court, is more than just acceptable – it is essential to protect 

both the perceived and actual fairness of the system. 

CONCLUSION

For the foregoing reasons, Defendant GONZALES urges the Court to ADOPT Magistrate 

Judge Beckerman’s Findings and Recommendation, and (1) enter judgment dismissing 

Plaintiff’s claims against GONZALES with prejudice, and (2) grant GONZALES’s 

requested fees and costs (as adjusted, F&R p. 14). Further, the Court should require 

Plaintiff to post a bond securing the awarded fees in the event that it appeals the 

decision to the Ninth Circuit. 

29 December 2017 /David H. Madden/ 

Date David H. Madden, SBN OR080396 

Attorney for Defendant Thomas GONZALES 

Mersenne Law 

9600 S.W. Oak Street 

Suite 500 

Tigard, Oregon 97223 

dhm@mersenne.com 

(503)679-1671 

Case 3:15-cv-00866-SB Document 54 Filed 12/29/16 Page 5 of 6
 

3:15-cv-00866-SB Certificate of Service

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the document entitled: 

DEFENDANT’S RESPONSE TO PLAINTIFF’S OBJECTIONS TO MAGISTRATE’S 

FINDINGS & RECOMMENDATION

was served upon the parties listed below on the date indicated, 

 by following state law for serving a summons in an action brought in courts of 

general jurisdiction where the district court is located or where service is made: 

 by delivery of a true copy of the document to the party to be served; 

 by delivering a true copy of the document to the dwelling house or usual place 

of abode of the person to be served, to any person 14 years of age or older 

residing in the dwelling house or usual place of abode of the person to be 

served; 

 by leaving a true copy of the document during working hours at an office 

maintained by the party to be served for the conduct of business, with the person 

who is apparently in charge; 

 by mailing a true copy of the document to the party by first class mail and by any 

of the following: certified, registered, or express mail with return receipt 

requested; 

 by delivering a copy of the document to the individual personally; 

 by leaving a copy of the document at the individual’s dwelling or usual place of 

abode with someone of suitable age and discretion who resides there; 

 by delivering a copy of the document to an agent authorized by appointment or by 

law to receive service of process; 

 by electronic filing notification (PACER); or

 other: courtesy copy by electronic mail to crowell@crowell-law.com 

Carl D. Crowell, Esq. 

Crowell Law 

943 Liberty Street S.E. 

P.O. Box 923 

Salem, Oregon 97308-0923 

Attorney for Plaintiff COBBLER NEVADA, LLC 

29 December 2016 

Date David H. Madden 

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