The Coca Cola Co v. Boston's Bar Supply ( 1999 )


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  •                    UNITED STATES COURT OF APPEALS
    For the Fifth Circuit
    No. 98-20420
    THE COCA-COLA COMPANY,
    Plaintiff - Counter Defendant - Appellee,
    VERSUS
    BOSTON’S BAR SUPPLY, ET AL.
    Defendants,
    NEVER SAY DIE, doing business as Bar Supplies Unlimited,
    Defendant - Appellant,
    BOSTON’S BAR SUPPLY; DONALD MANSFIELD,
    Defendants - Counter Claimants - Appellants.
    Appeals from the United States District Court
    for the Southern District of Texas
    (H-94-CV-3266)
    JULY 22, 1999
    Before EMILIO M. GARZA, DeMOSS, and PARKER, Circuit Judges.
    PER CURIAM:*
    The appellants-defendants, Boston’s Bar Supply, Never Say Die,
    Inc., and Donald Mansfield, appeal the district court’s judgment in
    favor of plaintiff-appellee, The Coca-Cola Company (“Coca Cola”),
    on Coca-Cola’s claims for trademark infringement and injunctive
    relief.   Having reviewed the briefs, heard the parties’ arguments,
    *
    Pursuant to 5TH CIR. R. 47.5, the Court has determined that
    this opinion should not be published and is not precedent except
    under the limited circumstances set forth in 5TH CIR. R. 47.5.4.
    and considered relevant portions of the record, we affirm the
    district court.
    I.
    Donald Mansfield began operating a bar and equipment supply
    company, Boston’s Bar Supply (“Boston’s”), in Houston, Texas in
    1987.       Boston’s was a full service supplier that provided all
    supplies and equipment necessary for running a tavern or bar,
    including     mixes,    juices,    and    sodas.       In    the    course    of   its
    operations, Boston’s opened an account with Houston’s Coca-Cola
    Bottling Company to distribute all Coca-Cola products except Coca-
    Cola fountain syrup.          To satisfy those customers who needed Coca-
    Cola    fountain     syrup,    Boston’s       purchased     the    syrup    from   two
    distributors, Sysco Food Services of Houston, Inc. (“Sysco”) and
    White Swan, Inc.
    In 1988, Boston’s applied to Coca-Cola to become an authorized
    distributor of Coca-Cola products, including Coca-Cola fountain
    syrup.      After inspecting Boston’s premises Coca-Cola denied the
    application.     Boston’s, however, continued to supply its customers
    with Coca-Cola fountain syrup it bought from Sysco and White Swan.
    In 1991, Boston’s again applied for authorization to distribute
    Coca-Cola fountain syrup.          Coca-Cola again denied the request.
    In    1993,    Coca-Cola     demanded      that      Boston’s       cease   the
    unauthorized distribution of its fountain syrup.                    In 1994, Coca-
    Cola repeated that demand and filed suit against Boston’s in
    district court alleging, among other things, federal trademark
    violations.          Coca-Cola    then   filed     a   motion      for   preliminary
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    injunction.     The district court, while denying the request for
    preliminary injunctive relief, concluded that Coca-Cola would be
    entitled to permanent injunctive relief unless Boston’s could
    successfully prove its defense that Coca-Cola had acquiesced to
    Boston’s use of the Coca-Cola fountain syrup.                   After granting
    summary    judgment    against      various     counterclaims        asserted     by
    Boston’s, the district court commenced a non-jury trial on Boston’s
    affirmative defense of acquiescence.            After Boston’s presented its
    evidence and rested its case, the district court granted Coca-
    Cola’s motion for judgment as a matter of law.               The district court
    then entered a permanent injunction against Boston’s use of Coca-
    Cola fountain syrup.     Boston’s then appealed.
    In an unpublished per curiam opinion, this Court reversed the
    district court’s ruling.         The Coca-Cola Company v. Boston’s Bar
    Supply, No. 96-21162 (August 12, 1997).               Although affirming the
    district court on other issues, we found that the district court
    had   applied   the   wrong   standard      for   deciding     the    defense    of
    acquiescence.    Specifically, the district court applied an active
    standard   developed    by    the   Eleventh      Circuit,    see    Coach   House
    Restaurant v. Coach & Six Restaurants, 
    934 F.2d 1551
    (11th Cir.
    1991) (defining acquiescence as an active representation), instead
    of the more passive standard utilized by the Fifth Circuit.                     That
    standard   defines     acquiescence        as   any   implicit       or   explicit
    assurances which induce reliance, Conan Properties, Inc. v. Conans
    Pizza, Inc., 
    752 F.2d 145
    , 153 (5th Cir. 1985).                Accordingly, we
    vacated the district court’s judgment and remanded the action to
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    allow the court to reconsider the facts under the appropriate
    standard.
    In June 1996, while that appeal was pending, Coca-Cola filed
    a motion with the district court to add Never Say Die, Inc., as a
    party defendant pursuant to Rule 25(c) of the Federal Rules of
    Civil Procedure.   See Fed. R. Civ. P. 25(c).    Coca-Cola filed the
    motion because Boston’s had transferred all of its assets to Never
    Say Die,2 and Coca-Cola suspected that the transaction was a
    fraudulent attempt to dodge creditors.   On April 21, 1997, before
    the district court could rule on the motion, Never Say Die filed
    for bankruptcy.    On April 30, 1997, unaware of the bankruptcy
    filing, the district court added Never Say Die as a defendant.    On
    November 12, 1997, the bankruptcy court dismissed Never Say Die’s
    bankruptcy petition with prejudice.
    On remand, the district court held a hearing and ordered the
    parties to file “motions for judgment” accompanied by supplemental
    briefing. On April 7, 1998, the district court granted judgment in
    favor of Coca-Cola, finding that the facts of the case did not
    support the defendants’ acquiescence defense under Conan.        The
    district court then entered final judgment, and reinstituted its
    permanent injunction in favor of Coca-Cola.     Boston’s Bar Supply,
    Never Say Die, Inc., and Donald Mansfield filed the instant appeal
    (“appellants”).
    2
    Never Say Die, which was formed on the eve of the transfer,
    was owned by Janice Mansfield, the wife of Donald Mansfield.
    4
    II.
    We review the district court’s decision to grant judgment as
    a matter of law de novo, applying the same legal standards as the
    district court.     Omnitech Int’l Inc. v. Clorox Co., 
    11 F.3d 1316
    ,
    1322-23 (5th Cir. 1994).     Judgment as a matter of law is proper
    after a party has been fully heard on a given issue and “there is
    no legally sufficient evidentiary basis for a reasonable jury to
    find for that party on that issue."      Fed. R. Civ. P. 50(a).    In
    evaluating the motion for judgment as a matter of law, the court
    must consider all of the evidence in the light most favorable to
    the nonmovant, drawing all factual inferences in favor of the
    non-moving party.    Nero v. Industrial Molding Corp., 
    167 F.3d 921
    ,
    925 (5th Cir. 1999).
    III.
    The appellants’ contentions can be grouped into three separate
    categories.   First, the appellants assert that the district court
    erred by applying federal trademark law to this action.           This
    claim, however, was expressly raised in the prior appeal and
    squarely rejected by this Court. Boston’s Bar Supply, No. 96-21162
    at 2-3.   Accordingly, under the law of the case doctrine we need
    not reconsider the argument as there is no indication that (1)
    evidence at a subsequent trial was substantially different, (2)
    controlling authority has since made a contrary decision of law
    applicable, and (3) the decision was clearly erroneous and a
    manifest injustice.     White v. Murtha, 
    377 F.2d 428
    , 431-32 (5th
    Cir. 1967).
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    Second, the appellants maintain that the district court erred
    in finding that Coca-Cola did not acquiesce to Boston’s use of its
    fountain syrup. In order to establish the defense of acquiescence,
    a defendant must prove that:    (1) the plaintiff knew or should have
    known of the defendant’s use of the trademark; (2) the plaintiff
    made implicit or explicit assurances to the defendant; and (3) the
    defendant relied on the assurances.        
    Conan, 752 F.2d at 152
    n.3.
    We have reviewed the relevant portions of the record and find no
    reversible error in the district court’s determination.
    Finally, the appellants insist that the district court erred
    by adding Never Say Die as a party defendant when it had filed for
    bankruptcy   and   triggered   the    automatic   stay.   However,   the
    appellants have not cited even a single case for the proposition
    that a bankruptcy stay voids a subsequent joinder.        In the absence
    of such authority, we decline to accept that argument.
    IV.
    For the foregoing reasons we affirm the district courts
    judgment.
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