Larin Corporation v. Gwen Mueller , 364 F. App'x 380 ( 2010 )


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  •                                                                            FILED
    NOT FOR PUBLICATION                              FEB 05 2010
    MOLLY C. DWYER, CLERK
    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS
    FOR THE NINTH CIRCUIT
    LARIN CORPORATION, a California                  No. 08-55625
    Corporation,
    D.C. No. 2:08-cv-00135-ODW-OP
    Plaintiff - Appellant,
    v.                                             MEMORANDUM *
    GWEN MUELLER, an individual,
    Defendant - Appellee.
    LARIN CORPORATION, a California                  No. 08-55790
    Corporation,
    D.C. No. 5:06-cv-01394-ODW-OP
    Plaintiff - Appellant,
    v.
    ALLTRADE INC., a California
    corporation; ALLTRADE TOOLS LLC;
    ANDRE LIVIAN,
    Defendants - Appellees.
    *
    This disposition is not appropriate for publication and is not precedent
    except as provided by 9th Cir. R. 36-3.
    LARIN CORPORATION,                               No. 08-56191
    Plaintiff-counter-defendant -     D.C. No. 5:06-cv-01394-ODW-OP
    Appellant,
    v.
    ALLTRADE, INC., a California
    corporation; ALLTRADE TOOLS LLC, a
    California limited liability corporation;
    ANDRE LIVIAN,
    Defendants-counter-claimants
    - Appellees.
    Appeal from the United States District Court
    for the Central District of California
    Otis D. Wright, District Judge, Presiding
    Argued and Submitted December 9, 2009
    Pasadena, California
    Before: PREGERSON, McKEOWN and PAEZ, Circuit Judges.
    This trademark infringement suit between Larin Corp. (“Larin”) and
    Alltrade Inc., Alltrade LLC and Andre Livian (“Alltrade”) presents three issues on
    appeal. First, we consider whether the district court abused its discretion in
    granting Alltrade’s motion for summary judgment on judicial estoppel grounds.
    Second, we consider whether the district court erred in denying Larin’s motion to
    add a claim of false advertising to the pretrial order. Finally, we consider whether
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    the district court abused its discretion in dismissing as duplicative Larin’s separate
    suit against former Alltrade employee Gwen Mueller.
    We review de novo the district court’s grant of summary judgment, San
    Pedro Hotel Co. v. City of Los Angeles, 
    159 F.3d 470
    , 477 (9th Cir. 1998), but
    review the application of judicial estoppel to the facts of the case for abuse of
    discretion. Williams v. Boeing Co., 
    517 F.3d 1120
    , 1134 (9th Cir. 2008). We
    review the district court’s dismissal of the suit against Gwen Mueller for abuse of
    discretion. Adams v. Cal. Dep’t of Health Servs., 
    487 F.3d 684
    , 688 (9th Cir.
    2007).
    I. T RADE D RESS INFRINGEMENT
    Both parties sell hydraulic-lift stools styled like motorcycle seats. Larin
    claims that the photographs and coloring on the packaging in which Alltrade sells
    its stools is confusingly similar to the photographs and coloring on the packaging
    in which Larin sells its stools. Larin seeks relief under § 43(a) of the Lanham Act.
    
    15 U.S.C. § 1125
    (a). Alltrade claims that Larin should be judicially estopped from
    pursuing a claim for trade dress infringement because during discovery Larin
    shifted from a trade dress infringement claim to a false advertising claim (which
    may also be remedied under § 43(a)) and Alltrade was thus prejudiced in preparing
    its defense.
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    We do not opine as to whether the district court correctly concluded that
    Larin’s attorney attempted to mislead Alltrade’s counsel during discovery—and
    the district court’s frustration with said counsel’s lack of clarity is certainly
    understandable—but assuming there is error to be remedied here, judicial estoppel
    is the wrong tool for the job. We uphold a district court’s application of judicial
    estoppel when: “1) the party’s current position is ‘clearly inconsistent’ with its
    earlier position, 2) the party was successful in persuading a court to accept its
    earlier position, and 3) the party would ‘derive an unfair advantage or impose an
    unfair detriment on the opposing party if not estopped.’” Williams, 
    517 F.3d at 1134
     (quoting New Hampshire v. Maine, 
    532 U.S. 742
    , 750-51 (2001)). None of
    those elements are met in this case.
    Larin’s scattered references to false advertising during discovery do not
    support the contention that Larin adopted disparate positions that were clearly
    inconsistent with one another. Throughout the record, the essential nature of the
    dispute is readily apparent. The record is replete with claims about and discovery
    related to the similarities between the Larin and Alltrade boxes. Claims of false
    advertising and trade dress infringement are not mutually exclusive, and plaintiffs
    can and do advance both theories in a complaint. See, e.g., Cooper Indus. v.
    Leatherman Tool Group, 
    532 U.S. 424
    , 428 (2001). Alltrade acknowledged during
    4
    the pretrial conference that the elements of false advertising and trade dress
    infringement overlap to some degree. Larin’s self-definition of “trade dress”
    during discovery muddied the waters, but in the end did not change the essential
    nature of its claims.
    We have also “restricted the application of judicial estoppel to cases where
    the court relied on, or ‘accepted,’ the party’s previous inconsistent position.”
    Hamilton v. State Farm Fire & Cas. Co., 
    270 F.3d 778
    , 782-83 (9th Cir. 2001); see
    also United National Insurance Co. v. Spectrum Worldwide, Inc., 
    555 F.3d 772
    ,
    779 (9th Cir. 2009). Nothing in the record demonstrates that Larin succeeded in
    persuading the district or magistrate judges to accept the position that Larin had
    abandoned its trade dress infringement claim.
    Finally, there is insufficient evidence to support the claim that Alltrade was
    prejudiced by Larin’s behavior. Despite the district court’s determination that
    Larin’s counsel was playing “bait-and-switch” with its theories of liability,
    Alltrade was able to obtain evidence relevant to both false advertising and trade
    dress infringement defenses. Indeed, while Alltrade asserted on appeal that it had
    not conducted sufficient discovery on trade dress infringement elements like
    secondary meaning, its final pretrial disclosure tells a different story. There,
    Alltrade asserted, among other things, that its expert was ready to testify regarding
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    secondary meaning in the Larin and Alltrade packaging.
    Judicial estoppel is not applicable in this case because none of the elements
    are met. We therefore reverse the grant of summary judgment with regard to
    Larin’s trade dress infringement claim against Alltrade and remand.
    II. F ALSE A DVERTISING C LAIM
    The district court denied Larin’s motion for reconsideration of its finding
    that Larin abandoned any claim for false advertising, because the false advertising
    claim was not part of the pretrial order. We affirm that ruling. In any event, this
    issue is moot because Larin’s argument on appeal was predicated on affirmance of
    dismissal of the trade dress infringement claim, which we reverse.
    III. M UELLER C OMPLAINT
    We affirm the district court’s dismissal of Larin’s claims against Gwen
    Mueller. The claims against Mueller were identical to those pled against Alltrade,
    and Alltrade identified Mueller as an employee involved with the creation of the
    Alltrade trade dress prior to the scheduling order’s deadline to add new parties.
    The district court did not abuse its discretion in dismissing the duplicative
    complaint against Mueller.
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    IV. W AIVER OF C LAIMS
    Larin asserted in the Statement of Issues in its opening brief that the district
    court erred in granting attorneys’ fees to Alltrade pursuant to 
    28 U.S.C. § 1927
    .
    Larin did not, however, offer any argument or authority on this issue and the
    argument is therefore waived. Kohler v. Inter-tel Technologies, 
    244 F.3d 1167
    ,
    1182 (9th Cir. 2001). We affirm the grant of attorneys’ fees.
    Larin also failed to develop its passing assertion that the district court
    demonstrated prejudice against Larin’s counsel, and that we should therefore direct
    the case to a different district judge. This argument is waived, and we are
    confident that the assigned district judge can give a fair hearing to Larin’s trade
    dress infringement claim.
    We AFFIRM the dismissal of the Mueller complaint, the dismissal of the
    false advertising claim, and the grant of attorneys’ fees pursuant to 
    28 U.S.C. § 1927
    , and REVERSE the grant of Alltrade’s motion for summary judgment on
    the trade dress infringement claim. Each side shall bear its own costs on appeal.
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