imported_Timeless
05-22-2003, 02:58 PM
I found this on the web doing a search on P21S and S100
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
THIS SUMMARY ORDER WILL NOT BE PUBLISHED IN THE FEDERAL REPORTER AND MAY NOT BE CITED AS PRECEDENTIAL AUTHORITY TO THIS OR ANY OTHER COURT, BUT MAY BE CALLED TO THE ATTENTION OF THIS OR ANY OTHER COURT IN A SUBSEQUENT STAGE OF THIS CASE, IN A RELATED CASE, OR IN ANY CASE FOR PURPOSES OF COLLATERAL ESTOPPEL OR RES JUDICATA.
At a stated term of the United States Court of Appeals for the Second Circuit, held at the United States Courthouse, Foley Square, in the City of New York, on the 17th day of March , two thousand.
PRESENT:
HON. JAMES L. OAKES,
HON. GUIDO CALABRESI,
HON. FRED I. PARKER,
Circuit Judges.
DR. O.K. WACK CHEMIE, GmbH,
Plaintiff-Appellant,
S U M M A R Y O R D E R
v. # 99-7389
STEPHEN H. ``` and BROOKSIDE IMPORT SPECIALTIES, INC.,
Defendants-Appellees.
Dr. O.K. Wack Chemie GmbH v. ```
No. 99-7389
Page 2
For Appellant: MICHAEL A. GROW, Arent Fox Kintner Plotkin & Kahn, PLLC, Washington, D.C. (Peter N. Lalos, Susan B. Flohr, and Nicole M. Meyer, Lalos & Keegan; Nancy S. Appel and Rita M. Odin, Arent Fox Kintner Plotkin & Kahn PLLC, of counsel)
For Appellees: CHARLES L. HOWARD, Shipman & Goodwin LLP, Hartford, Conn. (Patrick M. Fahey, Shipman & Goodwin LLP; Mark D. Giarratana, Eric E. Grondahl, and Martha B. Allard, Cummings & Lockwood, of counsel)
Appeal from the United States District Court for the District of Connecticut (Alvin W. Thompson, Judge).
UPON DUE CONSIDERATION, it is ORDERED, ADJUDGED, AND DECREED that the judgment of the district court be and hereby is AFFIRMED.
Plaintiff-counter-defendant-appellant Dr. O.K. Wack Chemie GmbH ("Wack"), a German corporation, appeals from a final judgment of the district court in favor of defendants-counter-plaintiffs-appellees Brookside Import Specialties, Inc. ("Brookside"), a Connecticut corporation, and Stephen ``` ("```"), Brookside’s president and sole shareholder (collectively "BIS"). The judgment was on various counterclaims brought by BIS. On BIS’s counterclaim seeking confirmation of BIS’s ownership of disputed trademarks, the district court granted summary judgment to BIS. On BIS’s breach of contract counterclaim, a jury trial was held and the jury found for BIS and awarded both compensatory and punitive damages. Wack appeals from the grant of summary judgment and from the jury verdict and damage awards. We affirm.
BACKGROUND
Wack is a German corporation that develops, manufactures, and sells automobile and motorcycle cleaning products and industrial chemicals. In 1983, BIS contacted Wack to inquire about distributing Wack’s products in the United States. The parties entered into an oral agreement whereby BIS became the exclusive U.S. distributor for Wack. Up to that point, Wack had never distributed its products in this country. Wack began shipping its P21S and S100 wheel cleaners to BIS in February 1984.
Wack allowed BIS to exercise total control of the U.S. marketing of P21S and S100 and consented to simply "supply[ing] the product." BIS discussed product names with Wack, but BIS made the final decision to use the P21S and S100 marks for U.S. distribution. In July 1984 ``` discussed registering the two marks in the United States. On August 6, 1984, Dr. Oskar K. Wack ("Dr. Wack"), managing director of Wack, sent BIS a letter authorizing the latter to "file P 21-S as your own brand name for the USA and Canada." In a similar letter sent on September 5, 1985, Dr. Wack authorized BIS to "file S-100 as your own brand name for the USA and Canada." Both trademarks were eventually registered -- with Wack’s full knowledge and agreement -- in BIS’s name. On October 22, 1990, BIS filed documents with the Patent and Trademark Office ("PTO") to establish the incontestability of the P21S trademark, and on February 19, 1991 the PTO declared the mark incontestable. BIS filed similar papers covering the S100 trademark in 1991, which was declared incontestable by the PTO on March 9, 1992.
In July 1987, while the two parties were discussing the possibility of producing P21S and S100 products in the United States, a dispute arose between them concerning the ownership of the two trademarks. In a July 27, 1987 fax to ```, Dr. Wack stated that "you [```] assume that these [trademarks] belong to [BIS]." Despite this apparent disagreement concerning trademark ownership, Wack continued to do business with BIS under the 1983 oral agreement until June 25, 1991, when Dr. Wack faxed ``` a letter stating Wack’s intention to rescind the oral agreement on December 31, 1991 and to replace it with a written contract. At least in part because of an inability to agree over trademark rights, the parties failed to consummate a new contract by the December 31 deadline. Nevertheless, they continued to negotiate and to do business after the beginning of 1992. Finally, on April 8, 1992, Dr. Wack broke off negotiations (again, over the trademark issue) and refused to ship any further products.
BIS thereafter found a new supplier of cleaning products and chemicals, which it continued to sell under the P21S and S100 marks. Wack then filed suit seeking a declaration that it owned the trademarks (count one) and a cancellation of the registrations of the two trademarks pursuant to 15 U.S.C. Ă‚§ 1115(b) (count two). In addition, Wack alleged false designation of origin, fraud, and unclean hands by BIS (count three), common law trademark infringement (count four), and state law unfair trade practices (count five). BIS counterclaimed, seeking a declaratory judgment vesting title to the disputed trademarks in BIS (counterclaim one). BIS also alleged Lanham Act trademark infringement (counterclaim two), Lanham Act unfair competition (counterclaim three), common law trademark infringement (counterclaim four), tortious interference with contract (counterclaim five), state law unfair trade practices (counterclaim six), and breach of contract (counterclaim seven).
Cross-motions for summary judgment were referred to a magistrate judge. The magistrate recommended that the district court grant summary judgment in favor of BIS on all of Wack’s claims and grant summary judgment in favor of Wack on BIS’s counterclaims two (Lanham Act infringement), three (Lanham Act unfair competition), four (common law infringement) and six (state law unfair trade practices). Finally, the magistrate recommended that the district court grant summary judgment for BIS on counterclaim one (seeking a declaration vesting title in the trademarks in BIS) and deny Wack’s motion for summary judgment on counterclaims five (tortious interference with contract) and seven (breach of contract). The district court followed each of these recommendations.
A jury trial was held on BIS’s breach of contract counterclaim, in which the primary issue was whether Wack had given BIS sufficient notice prior to terminating its contractual relationship in April 1992. The jury found in favor of BIS and awarded $100,460.90 in compensatory damages. It also found that BIS was entitled to punitive damages, which the district court subsequently set at $ 91,341.00. Wack now appeals. He argues, first, that the district court erred in granting summary judgment for BIS on the issue of trademark ownership, second, that the jury trial on the breach of contract claim was unfairly tainted by the district court’s determination of the trademark ownership issue, third, that the jury’s award of compensatory damages was not supported by the evidence, and, finally, that the district court erred in allowing the jury to consider an award of punitive damages and in giving confusing punitive damages instructions.
We affirm substantially for the reasons given by the district court. To the extent that Wack seeks to argue issues not raised below (e.g., that it held common law rights in the marks and hence that their registration by BIS had not become incontestable, and that punitive damages are not available for breach of contract under Connecticut law or that the district court’s instructions on punitive damages were unduly confusing) we deem these contentions waived and express no view as to their merits.
CONCLUSION
We have considered all of Wack’s contentions and find them to be without merit. The judgment of the district court is therefore AFFIRMED.
For the Court,
ROSEANN B. MACKECHNIE
Court Clerk
by: _____________________
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
THIS SUMMARY ORDER WILL NOT BE PUBLISHED IN THE FEDERAL REPORTER AND MAY NOT BE CITED AS PRECEDENTIAL AUTHORITY TO THIS OR ANY OTHER COURT, BUT MAY BE CALLED TO THE ATTENTION OF THIS OR ANY OTHER COURT IN A SUBSEQUENT STAGE OF THIS CASE, IN A RELATED CASE, OR IN ANY CASE FOR PURPOSES OF COLLATERAL ESTOPPEL OR RES JUDICATA.
At a stated term of the United States Court of Appeals for the Second Circuit, held at the United States Courthouse, Foley Square, in the City of New York, on the 17th day of March , two thousand.
PRESENT:
HON. JAMES L. OAKES,
HON. GUIDO CALABRESI,
HON. FRED I. PARKER,
Circuit Judges.
DR. O.K. WACK CHEMIE, GmbH,
Plaintiff-Appellant,
S U M M A R Y O R D E R
v. # 99-7389
STEPHEN H. ``` and BROOKSIDE IMPORT SPECIALTIES, INC.,
Defendants-Appellees.
Dr. O.K. Wack Chemie GmbH v. ```
No. 99-7389
Page 2
For Appellant: MICHAEL A. GROW, Arent Fox Kintner Plotkin & Kahn, PLLC, Washington, D.C. (Peter N. Lalos, Susan B. Flohr, and Nicole M. Meyer, Lalos & Keegan; Nancy S. Appel and Rita M. Odin, Arent Fox Kintner Plotkin & Kahn PLLC, of counsel)
For Appellees: CHARLES L. HOWARD, Shipman & Goodwin LLP, Hartford, Conn. (Patrick M. Fahey, Shipman & Goodwin LLP; Mark D. Giarratana, Eric E. Grondahl, and Martha B. Allard, Cummings & Lockwood, of counsel)
Appeal from the United States District Court for the District of Connecticut (Alvin W. Thompson, Judge).
UPON DUE CONSIDERATION, it is ORDERED, ADJUDGED, AND DECREED that the judgment of the district court be and hereby is AFFIRMED.
Plaintiff-counter-defendant-appellant Dr. O.K. Wack Chemie GmbH ("Wack"), a German corporation, appeals from a final judgment of the district court in favor of defendants-counter-plaintiffs-appellees Brookside Import Specialties, Inc. ("Brookside"), a Connecticut corporation, and Stephen ``` ("```"), Brookside’s president and sole shareholder (collectively "BIS"). The judgment was on various counterclaims brought by BIS. On BIS’s counterclaim seeking confirmation of BIS’s ownership of disputed trademarks, the district court granted summary judgment to BIS. On BIS’s breach of contract counterclaim, a jury trial was held and the jury found for BIS and awarded both compensatory and punitive damages. Wack appeals from the grant of summary judgment and from the jury verdict and damage awards. We affirm.
BACKGROUND
Wack is a German corporation that develops, manufactures, and sells automobile and motorcycle cleaning products and industrial chemicals. In 1983, BIS contacted Wack to inquire about distributing Wack’s products in the United States. The parties entered into an oral agreement whereby BIS became the exclusive U.S. distributor for Wack. Up to that point, Wack had never distributed its products in this country. Wack began shipping its P21S and S100 wheel cleaners to BIS in February 1984.
Wack allowed BIS to exercise total control of the U.S. marketing of P21S and S100 and consented to simply "supply[ing] the product." BIS discussed product names with Wack, but BIS made the final decision to use the P21S and S100 marks for U.S. distribution. In July 1984 ``` discussed registering the two marks in the United States. On August 6, 1984, Dr. Oskar K. Wack ("Dr. Wack"), managing director of Wack, sent BIS a letter authorizing the latter to "file P 21-S as your own brand name for the USA and Canada." In a similar letter sent on September 5, 1985, Dr. Wack authorized BIS to "file S-100 as your own brand name for the USA and Canada." Both trademarks were eventually registered -- with Wack’s full knowledge and agreement -- in BIS’s name. On October 22, 1990, BIS filed documents with the Patent and Trademark Office ("PTO") to establish the incontestability of the P21S trademark, and on February 19, 1991 the PTO declared the mark incontestable. BIS filed similar papers covering the S100 trademark in 1991, which was declared incontestable by the PTO on March 9, 1992.
In July 1987, while the two parties were discussing the possibility of producing P21S and S100 products in the United States, a dispute arose between them concerning the ownership of the two trademarks. In a July 27, 1987 fax to ```, Dr. Wack stated that "you [```] assume that these [trademarks] belong to [BIS]." Despite this apparent disagreement concerning trademark ownership, Wack continued to do business with BIS under the 1983 oral agreement until June 25, 1991, when Dr. Wack faxed ``` a letter stating Wack’s intention to rescind the oral agreement on December 31, 1991 and to replace it with a written contract. At least in part because of an inability to agree over trademark rights, the parties failed to consummate a new contract by the December 31 deadline. Nevertheless, they continued to negotiate and to do business after the beginning of 1992. Finally, on April 8, 1992, Dr. Wack broke off negotiations (again, over the trademark issue) and refused to ship any further products.
BIS thereafter found a new supplier of cleaning products and chemicals, which it continued to sell under the P21S and S100 marks. Wack then filed suit seeking a declaration that it owned the trademarks (count one) and a cancellation of the registrations of the two trademarks pursuant to 15 U.S.C. Ă‚§ 1115(b) (count two). In addition, Wack alleged false designation of origin, fraud, and unclean hands by BIS (count three), common law trademark infringement (count four), and state law unfair trade practices (count five). BIS counterclaimed, seeking a declaratory judgment vesting title to the disputed trademarks in BIS (counterclaim one). BIS also alleged Lanham Act trademark infringement (counterclaim two), Lanham Act unfair competition (counterclaim three), common law trademark infringement (counterclaim four), tortious interference with contract (counterclaim five), state law unfair trade practices (counterclaim six), and breach of contract (counterclaim seven).
Cross-motions for summary judgment were referred to a magistrate judge. The magistrate recommended that the district court grant summary judgment in favor of BIS on all of Wack’s claims and grant summary judgment in favor of Wack on BIS’s counterclaims two (Lanham Act infringement), three (Lanham Act unfair competition), four (common law infringement) and six (state law unfair trade practices). Finally, the magistrate recommended that the district court grant summary judgment for BIS on counterclaim one (seeking a declaration vesting title in the trademarks in BIS) and deny Wack’s motion for summary judgment on counterclaims five (tortious interference with contract) and seven (breach of contract). The district court followed each of these recommendations.
A jury trial was held on BIS’s breach of contract counterclaim, in which the primary issue was whether Wack had given BIS sufficient notice prior to terminating its contractual relationship in April 1992. The jury found in favor of BIS and awarded $100,460.90 in compensatory damages. It also found that BIS was entitled to punitive damages, which the district court subsequently set at $ 91,341.00. Wack now appeals. He argues, first, that the district court erred in granting summary judgment for BIS on the issue of trademark ownership, second, that the jury trial on the breach of contract claim was unfairly tainted by the district court’s determination of the trademark ownership issue, third, that the jury’s award of compensatory damages was not supported by the evidence, and, finally, that the district court erred in allowing the jury to consider an award of punitive damages and in giving confusing punitive damages instructions.
We affirm substantially for the reasons given by the district court. To the extent that Wack seeks to argue issues not raised below (e.g., that it held common law rights in the marks and hence that their registration by BIS had not become incontestable, and that punitive damages are not available for breach of contract under Connecticut law or that the district court’s instructions on punitive damages were unduly confusing) we deem these contentions waived and express no view as to their merits.
CONCLUSION
We have considered all of Wack’s contentions and find them to be without merit. The judgment of the district court is therefore AFFIRMED.
For the Court,
ROSEANN B. MACKECHNIE
Court Clerk
by: _____________________