Hope Road Merchandising Llc, a Florida limited liability company v. Jammin Java Corporation, a Nevada corporation

NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
HOPE ROAD MERCHANDISING LLC, a
Florida limited liability company; FIFTY-
SIX HOPE ROAD MUSIC LIMITED, a
Bahamian corporation,
Plaintiffs-counter-
defendants-Appellees,
v.
JAMMIN JAVA CORPORATION, a
Nevada corporation,
Defendant-counter-claimant-
Appellant.
No. 17-56245
D.C. No.
2:16-cv-05810-SVW-MRW
MEMORANDUM*
Appeal from the United States District Court
for the Central District of California
Stephen V. Wilson, District Judge, Presiding
Argued and Submitted December 6, 2018
Pasadena, California
Before: TASHIMA and WARDLAW, Circuit Judges, and PRATT,** District
Judge.
* This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
** The Honorable Robert W. Pratt, United States District Judge for the
Southern District of Iowa, sitting by designation.
FILED
JAN 9 2019
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS

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Jammin Java Corporation (Jammin Java) appeals the district court’s grant of
partial summary judgment in favor of Hope Road Merchandising LLC and Fifty-
Six Hope Road Music Limited (56 HR) (collectively Hope Road) and damages
award of $2,458,835.20 for trademark infringement. We have jurisdiction under
28 U.S.C. § 1291. We affirm.
1. Jammin Java asserts that the district court erred as a matter of law in
concluding that the written provisions of the Long Term License Agreement
(Agreement) precluded its defenses of oral modification, waiver, and equitable
estoppel. Jammin Java is correct that under California contract law oral
modification, waiver, and equitable estoppel defenses may be asserted despite
contractual provisions prohibiting oral waiver or oral modifications. See, e.g., Cal.
Civ. Code § 1698(d) (addressing oral modification, waiver, and estoppel);
MacIsaac & Menke Co. v. Cardox Corp., 14 Cal. Rptr. 523, 528 (Dist. Ct. App.
1961) (addressing oral modification); Golden Gate Motor Transp. Co. v. Great
Am. Indem. Co., 6 Cal. 2d 439, 447–48 (1936) (addressing waiver). However, we
may affirm the district court’s grant of partial summary judgment on any basis
properly supported by the record, DeNardo v. Murphy, 781 F.2d 1345, 1347 (9th
Cir. 1986).
Here, the record demonstrates that Jammin Java breached the Agreement.
Both the adverse action taken by the Securities and Exchange Commission against

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Jammin Java and Jammin Java’s failure to provide “Quarterly Statements” and
“Annual Statements” to 56 HR as required by the Agreement constitute material
breaches. 56 HR provided written notice of these breaches, which went uncured,
satisfying the Agreement’s procedural requirements for termination. Because
these breaches of the Agreement are unaffected by Jammin Java’s claims of
waiver, oral modification, and estoppel,1 the district court properly granted
summary judgment in favor of Hope Road on its breach of contract claim.
2. Jammin Java also contends that the district court erred by enforcing
the Agreement’s requirement of written notice of breach, as that provision is a
disfavored forfeiture clause under California contract law. However, even
assuming that the written notice provision is a forfeiture clause under California
contract law, such a clause will be upheld where it is unambiguous and its intent is
clear. Div. of Labor Standards Enf’t v. Dick Bullis, Inc., 140 Cal. Rptr. 267, 270
(App. Dep’t Super. Ct. 1977); ABI, Inc. v. City of L.A., 200 Cal. Rptr. 563, 570–71
(Ct. App. 1984). Here, the written notice provision unambiguously sets out the
procedure through which Jammin Java could terminate the Agreement.2 Moreover,
1 Jammin Java alleges that the parties waived and orally modified the royalty fee
payment schedule outlined in the Agreement. Jammin Java does not allege that the
parties waived or orally modified any other term of the Agreement.
2 In particular, the Agreement stated that Jammin Java could suspend its
performance or terminate the Agreement if it provided written notice to 56 HR of

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the intent of the provision is clear: to give the party allegedly in breach notice and
an opportunity to cure the breach without terminating the Agreement. Because the
language of the written notice provision is unambiguous, and its intent is clear, the
district court properly enforced this provision against Jammin Java.
3. Finally, Jammin Java argues that the district court erred in awarding
profits during the infringing period to Hope Road as a measure of Hope Road’s
damages under 15 U.S.C. § 1117(a). In particular, Jammin Java contends that the
district court erred in awarding its profits without first finding willful infringement
of Hope Road’s trademarks. But a finding of willful trademark infringement is not
necessary where a “plaintiff seeks the defendant’s profits as a measure of [its] own
damage[s].” Adray v. Adry-Mart, Inc., 76 F.3d 984, 988 (9th Cir. 1995). Here, the
record demonstrates, and the district court correctly found, that Jammin Java’s
unauthorized use of the Marley Coffee trademarks precluded Hope Road’s use of
the same marks during the infringing period. Moreover, Jammin Java failed to
submit any evidence of costs or deductions associated with the trademarks, as it
was required to do if it sought an offset against the amount of profits awarded. 15
U.S.C. § 1117(a); Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1408 (9th Cir.
1993), abrogated on other grounds by SunEarth, Inc. v. Sun Earth Solar Power
breach, and such a breach was not cured within thirty business days of 56 HR’s
receipt of written notice.

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Co., 839 F.3d 1179 (9th Cir. 2016). Because Jammin Java’s profits during the
infringing period were a reasonable measure of Hope Road’s damages, the district
court did not err in awarding damages in the amount of $2,458,835.20 to Hope
Road. See Lindy Pen, 982 F.2d at 1407–08.
AFFIRMED.

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