Theme Promotions v. News America ( 2008 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
THEME PROMOTIONS, INC., a 
California corporation, dba Theme
Co-op Promotions,
Plaintiff-counter-defendant- No. 06-16230
Appellee,
v.  D.C. No.
CV-97-04617-VRW
NEWS AMERICA MARKETING FSI, a
Delaware corporation,
Defendant-counter-claimant-
Appellant.

THEME PROMOTIONS, INC., a 
California corporation, dba Theme No. 06-16341
Co-op Promotions, D.C. No.
Plaintiff-counter-defendant- CV-97-04617-VRW
Appellant,
v.  ORDER
AMENDING
NEWS AMERICA MARKETING FSI, a OPINION AND
Delaware corporation, AMENDED
Defendant-counter-claimant- OPINION
Appellee.

Appeal from the United States District Court
for the Northern District of California
Vaughn R. Walker, District Judge, Presiding
Argued and Submitted
April 14, 2008—San Francisco, California
Filed August 20, 2008
Amended October 10, 2008
14423
14424 THEME PROMOTIONS v. NEWS AMERICA
Before: Stephen S. Trott, Sidney R. Thomas, and
Richard A. Paez, Circuit Judges.1
Opinion by Judge Thomas
1
Judge Paez was drawn to replace Judge Ferguson pursuant to General
Order 3.2 (g).
14428 THEME PROMOTIONS v. NEWS AMERICA
COUNSEL
Eugene Crew, Townsend and Townsend and Crew, LLP, San
Francisco, California; Theodore T. Herhold, Townsend and
Townsend and Crew, LLP, Palo Alto, California; Nancy L.
Tompkins, Townsend and Townsend and Crew, LLP, San
Francisco, California; Holly Gaudreau, Townsend and Town-
send and Crew, LLP, San Francisco, California, for the
plaintiff/appellee/cross-appellant.
Gary J. Malone, Constantine Cannon, New York, New York,
for the defendant/appellant.
ORDER
The opinion previously filed in this case is amended as fol-
lows.
On pp. 11074-75 of the slip opinion, the following sentence
is inserted before the sentence beginning “News argues that
the evidence actually shows . . . .”:
“Theme further presented evidence that, while the
right of first refusal agreements purported to lower
prices, prices could have been lower still if the mar-
ket were rid of such agreements.”
The following language is deleted:
“Although both parties are able to point to evidence
supporting their positions, the evidence of restricted
choice between market alternatives is sufficient to
establish that the injury suffered by Theme was the
type the antitrust laws were intended to prevent.”
In lieu of the deleted passage, the following language is
inserted:
THEME PROMOTIONS v. NEWS AMERICA 14429
“However, a jury could reasonably believe Theme’s
evidence that the right of first refusal agreements
were harmful to competition over News’ evidence
that they were procompetitive, and thereby conclude
that Theme suffered an injury of the type the anti-
trust laws were intended to prevent.”
The panel has voted to deny the petition for rehearing.
Judges Thomas and Paez voted to reject the suggestion for
rehearing en banc and Judge Trott so recommended.
The full court has been advised of the suggestion for
rehearing en banc, and no judge of the court has requested a
vote on the suggestion for rehearing en banc. Fed. R. App. P.
35(b).
With the amendments, the petition for rehearing is denied
and the suggestion for rehearing en banc is rejected.
No future petitions for rehearing will be entertained.
OPINION
THOMAS, Circuit Judge:
This appeal presents the question of whether right of first
refusal agreements between a publisher of advertising tools
and packaged goods companies violate California antitrust
and tort law. We conclude that the jury verdict in favor of
Plaintiff was supported by substantial evidence in the record,
and we affirm.
I
News America Marketing FSI, Inc. (“News”) is one of two
publishers of an advertising tool called a free-standing insert
14430 THEME PROMOTIONS v. NEWS AMERICA
(“insert”). An insert is a multi-colored advertising booklet
inserted into a Sunday newspaper that contains coupons pro-
moting products—like cereal and soft drinks—sold by pack-
aged goods companies. Although packaged goods companies
advertise and promote their products with a variety of adver-
tising tools, inserts are the primary tool that packaged goods
companies use to distribute coupons nationally. The other
major company that sells, publishes, and distributes inserts is
Valassis Communications (“Valassis”).
It is common for a packaged goods company to enter into
a right of first refusal agreement with either News or Valassis
to meet its insert needs. In an right of first refusal agreement
with News, a packaged goods company agrees to first offer all
(if the agreement is a “100% right of first refusal agreement”)
or a set percentage (if the agreement is a “share right of first
refusal agreement”) of its insert business to News. Under the
agreement, News must accept this business unless it cannot
accommodate the date requested by the packaged goods com-
pany. In return for the greater volume of sales promised by
the right of first refusal agreement, News discounts the insert
prices.
Theme Promotions, Inc. (“Theme”) is an advertising com-
pany that offers promotional programs to packaged goods
companies. Theme specializes in related-item merchandising,
or “tie-ins”, that involve the joint promotion of complemen-
tary products from two different packaged goods companies
(for example, a particular brand of popcorn with a particular
brand of cola). Theme often uses inserts in its related-item
promotions. Because Theme is contractually bound to two or
more packaged goods companies for each related-item pro-
motion, and because Theme is responsible for the execution
of the promotions, Theme—and not the packaged goods
companies—often purchases the inserts from either News or
Valassis.
Theme itself has entered into right of first refusal agree-
ments with News (before 1996) and Valassis (since 1996) to
THEME PROMOTIONS v. NEWS AMERICA 14431
get lower insert prices. In June 1995, Theme entered into a
right of first refusal agreement with News for its insert busi-
ness. When a dispute arose between the parties, the agreement
was voided, and Theme entered into a right of first refusal
agreement with Valassis. News subsequently sued Theme and
Valassis for intentional interference with contractual relations.
The lawsuit settled in 1997. Since 1996, Theme’s preferred
supplier of inserts has been Valassis, in part because Valassis
offers Theme “extras” like better page position for its cou-
pons, and rebates for promotional programs brought to Valas-
sis.
During the course of the litigation with Theme and Valas-
sis, News took the position that any right of first refusal
agreements applied not only to inserts purchased directly by
packaged goods companies for their own single product pro-
motions, but also to inserts purchased indirectly by third-party
suppliers of promotional services such as Theme. News com-
municated this position to packaged goods companies
(Benevia and Van de Kamp, in particular) that had been told
by Theme that they were free to place their orders with Valas-
sis as long as the orders were placed through Theme. News
advised these packaged goods companies that placing an
order with Valassis would be a breach of contract and could
embroil the packaged goods company in the lawsuit between
News and Theme. Theme characterizes this as News’ “ag-
gressive [right of first refusal] enforcement strategy.”
In 1997, News formalized its position that its right of first
refusal agreements with packaged goods companies applied to
inserts purchased by third-party suppliers such as Theme.
News added language to its right of first refusal contracts pro-
viding that the packaged goods company “agrees that it will
abide by terms and pay the rates set forth in this agreement
for all [inserts] placed with News America irrespective of
whether client places such advertisements directly through an
advertising agent or another third-party compiler.”
14432 THEME PROMOTIONS v. NEWS AMERICA
Between 1997 and 1999, Theme’s preference to purchase
inserts from Valassis, and News’ right of first refusal agree-
ments with packaged goods companies, clashed in at least 9
instances. In 1997, Theme put together an insert tie-in pro-
gram between Benevia’s sugar substitute Equal and Maxwell
House Coffee. Benevia had a 100% right of first refusal
agreement with News. Although Theme preferred to purchase
the inserts from Valassis, News told Benevia that under the
right of first refusal agreement, the inserts had to be pur-
chased from News. The insert program was ultimately placed
with News. Benevia did not participate in additional Theme
programs. Similar issues arose in tie-in programs with Van de
Kamp, Nabisco, Smuckers, Campbells, Hormel, and Interna-
tional Home Foods. In some cases, the insert order was ulti-
mately placed with News; in others, it was placed with
Valassis. In most cases, the packaged goods company did no
further business with Theme after the contested promotion.
On December 18, 1997, Theme brought an action against
News in the district court for the Northern District of Califor-
nia, for violations of, inter alia, federal antitrust laws, the
Cartwright Act, Cal. Bus. & Prof. Code § 16720, and the
Unfair Competition Act, Cal. Bus. & Prof. Code § 17200, and
for tortious interference with prospective economic advan-
tage. The district court dismissed Theme’s federal and state
antitrust claims with prejudice, and eventually granted sum-
mary judgment in favor of News. Theme appealed to this
Court, and we reversed the dismissal of the federal and state
antitrust and unfair competition claims, and the state law tor-
tious interference claim. See Theme Promotions, Inc. v. News
America FSI, 35 Fed. Appx. 463 (9th Cir. 2002).
On remand, Theme filed a motion for leave to amend, seek-
ing to substitute a declaratory judgment claim for its antitrust
claims. The district court denied the motion. Theme eventu-
ally withdrew all of its federal antitrust claims with prejudice.
The case went to trial in August, 2005 on claims of restraint
of trade and monopolization in violation of the Cartwright
THEME PROMOTIONS v. NEWS AMERICA 14433
Act, unlawful and unfair business practices in violation of the
Unfair Competition Act, negligent interference with prospec-
tive economic advantage, and intentional interference with
prospective economic advantage. During the trial, Theme
attempted to assert a boycott claim, but the district court
granted News’ motion for judgment as a matter of law
(“JMOL”) with respect to that claim.
After a three-week trial, the jury returned a verdict in favor
of Theme, finding that: (1) two provisions of News’ right of
first refusal agreements unreasonably restrained trade in vio-
lation of the Cartwright Act, and that Theme was entitled to
$1,000,000 in damages (before trebling); (2) News had
engaged in unlawful and unfair business practices in violation
of the Unfair Competition Act; (3) News had negligently
interfered with Theme’s prospective economic advantage
regarding relationships with Benevia, Van de Kamp, and
Campbells, and that Theme was entitled to damages in the
amounts of $154,111, $1, and $496,023; (4) News had inten-
tionally interfered with Theme’s prospective economic advan-
tage regarding relationships with Benevia and Van de Kamp,
and that Theme was entitled to damages in the amounts of
$132,992 and $800,353. The jury also assessed punitive dam-
ages totaling $2,500,000 against News for threats of litigation
against Van de Kamp and Benevia. The jury returned a ver-
dict against Theme on its combination to monopolize claim as
well as its intentional and negligent interference claims with
respect to Nabisco, Smuckers, Hormel, and International
Home Foods, and its intentional interference claims with
respect to Campbells.
Following trial, News renewed its motion for JMOL, or in
the alternative, for a new trial. Theme moved for a permanent
injunction prohibiting News’ further enforcement of its right
of first refusal agreements and for an award of restitution
under the Unfair Competition Act. The district court set aside
the jury verdict on the intentional interference claims and the
related punitive damages award, holding the alleged threats of
14434 THEME PROMOTIONS v. NEWS AMERICA
litigation were privileged. It also set aside the negligent inter-
ference claim relating to Benevia. The court denied JMOL on
the Cartwright Act claim and otherwise affirmed the jury ver-
dict. The court denied Theme’s post-trial motions.
The parties subsequently submitted a joint proposed form
of judgment, but disagreed about whether the remaining jury
award for negligent interference regarding Theme’s relation-
ship with Campbells was duplicative of the award for the
Cartwright Act violation. In an order dated May 25, 2006, the
district court ruled that the awards were not duplicative.
On June 1, 2006, final judgment was entered, awarding
Theme a total of $3,496,024 in damages. News appealed,
challenging the district court’s order denying in part News’
motion for JMOL or new trial and the order resolving the
issue of duplicative recovery. Theme cross-appealed, chal-
lenging the order granting in part News’ motion for JMOL,
the trial ruling granting News’ motion for JMOL on Theme’s
boycott claim, the order denying Theme’s motion for leave to
amend its complaint, and the order denying injunctive relief
and restitution. These issues are before us now.
II
We review the district court’s grant or denial of a renewed
motion for JMOL de novo. See Josephs v. Pac. Bell, 443 F.3d
1050, 1062 (9th Cir. 2006); Johnson v. Paradise Valley Uni-
fied Sch. Dist., 251 F.3d 1222, 1226 (9th Cir. 2001). We must
decide whether the evidence, construed in the light most
favorable to the nonmoving party, permits only one reason-
able conclusion, and that conclusion is contrary to the jury’s
verdict. See Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir.
2002). Antitrust standing is a question of law we review de
novo. Glen Holly Entm’t Inc. v. Tektronix Inc., 343 F.3d
1000, 1005 (9th Cir. 2003).
We review the district court’s denial of a motion to amend
a complaint, evidentiary rulings, award of damages, and rul-
THEME PROMOTIONS v. NEWS AMERICA 14435
ing on a motion for new trial for abuse of discretion. See
Chappel v. Lab. Corp., 232 F.3d 719, 725 (9th Cir. 2000)
(motion to amend); Obrey v. Johnson, 400 F.3d 691, 694 (9th
Cir. 2005) (evidentiary rulings); McLean v. Runyon, 222 F.3d
1150, 1155 (9th Cir. 2000) (award of damages); Dorn v. Bur-
lington N. Santa Fe R.R. Co., 397 F.3d 1183, 1189 (9th Cir.
2005) (injunctive relief).
Likewise, we review the district court’s choice of remedies,
decision to deny equitable relief, and decision to deny perma-
nent injunctive relief for abuse of discretion. See United
States v. Alisal Water Corp., 431 F.3d 643, 654 (9th Cir.
2005) (choice of remedies); Rabkin v. Oregon Health Scis.
Univ., 350 F.3d 967, 977 (9th Cir. 2003) (equitable relief);
Cummings v. Connell, 316 F.3d 886, 897 (9th Cir. 2003).
III
The district court did not err in declining to grant JMOL in
favor of News on Theme’s Cartwright Act restraint of trade
claim, or on Theme’s negligent interference with prospective
economic advantage claim. The district court also did not err
in refusing to grant News’ alternative motion for a new trial.
Nor did the district court err in holding that the jury’s awards
of antitrust and tort damages were not duplicative.
A
The district court did not err in denying News’ motion for
JMOL on Theme’s Cartwright Act restraint of trade claim. In
reviewing the district court’s denial of the motion, our role is
to evaluate whether the evidence of a Cartwright Act viola-
tion, construed in the light most favorable to Theme, permits
only one reasonable conclusion: that News did not violate the
Cartwright Act. See Pavao, 307 F.3d at 918. In order to bene-
fit from the favorable inferences available to the nonmoving
party under a motion for JMOL, Theme must have presented
“substantial evidence”—defined as “such relevant evidence as
14436 THEME PROMOTIONS v. NEWS AMERICA
a reasonable mind might accept as adequate to support a
conclusion”—that News violated the Cartwright Act. See
Syufy Enter. v. Am. Multicinema, Inc., 793 F.2d 990, 992 (9th
Cir. 1986).
[1] The Cartwright Act makes unlawful a “trust,” defined
as a combination of capital, skill, or acts by two or more per-
sons or businesses to restrict trade, limit production, increase
or fix prices, or prevent competition. Cal. Bus. & Prof. Code
§§ 16702, 16720 et seq. The California Supreme Court has
stated that the purpose of the Cartwright Act is to prevent any
action which “has as its Purpose or Effect an unreasonable
restraint of trade.” Corwin v. Los Angeles Newspaper Serv.
Bureau, Inc., 583 P.2d 777, 784 (Cal. 1978).
California courts have determined that vertical restraints of
trade, including exclusive dealing contracts, are not per se
unreasonable but instead are subject to a “rule of reason” analy-
sis.2 See Fisherman’s Wharf Bay Cruise Corp. v. Superior Ct.,
7 Cal. Rptr. 3d 628, 649 (Cal. Ct. App. 2004). The rule of rea-
son analysis “measures whether the anticompetitive aspect of
a vertical restraint outweighs its procompetitive effects.”
Exxon Corp. v. Superior Ct., 60 Cal. Rptr. 2d 195, 200 (Cal.
Ct. App. 1997). This approach recognizes that exclusive deal-
ing contracts may harm competition, but may also have the
effect of enhancing competition. See Omega Envtl., Inc. v.
Gilbarco, Inc., 127 F.3d 1157, 1162 (9th Cir. 1997).3 Under
2
Theme argues that even if News’ actions were legal under a rule of rea-
son analysis, they were illegal per se as a secondary boycott under section
16721.5 of the Cartwright Act. Because there is no evidence in the record
that News required packaged goods companies to refuse to do business
with Theme if Theme purchased Inserts from Valassis, the district court
was correct in concluding that this argument fails. See Cal. Bus. & Prof.
Code § 16721.5.
3
Because California’s Cartwright Act is patterned after federal antitrust
acts like the Sherman Antitrust Act, California courts often cite federal
antitrust cases when interpreting the Cartwright Act. See Roth v. Rhodes,
30 Cal. Rptr. 2d 706, 712 (Cal. Ct. App. 1994).
THEME PROMOTIONS v. NEWS AMERICA 14437
the rule of reason analysis, an exclusive dealing contract is
“proscribed when it is probable that performance of the con-
tract will foreclose competition in a substantial share of the
affected line of commerce.” Fisherman’s Wharf, 7 Cal. Rptr.
3d at 649.
A rule of reason analysis requires a threshold inquiry into
the defendant’s market power. Roth, 30 Cal. Rptr. at 712. Evi-
dence of restricted output and supracompetitive prices is
direct evidence of market power. Forsyth v. Humana, Inc.,
114 F.3d 1467, 1475 (9th Cir. 1997). To establish circumstan-
tial evidence of market power, a plaintiff must first define the
relevant market and then show that the defendant plays
enough of a role in the market to impair competition signifi-
cantly. Exxon, 60 Cal. Rptr. 2d at 201.
The district court instructed the jury that for Theme to pre-
vail on its Cartwright Act restraint of trade claim, it would
have to prove by a preponderance of the evidence that: (1)
News agreed to provisions constituting an unreasonable
restraint of trade;4 (2) the purpose and effect of these provi-
sions was to restrain competition; (3) the anticompetitive
effect of the provisions outweighed any beneficial effect on
competition; (4) Theme was harmed; and (5) News’ conduct
was a substantial factor in causing Theme’s harm. The court
instructed the jury on how it should identify the relevant mar-
ket and how it should determine whether News’ right of first
4
The specific contractual provisions identified by the district court were:
(1) “News America FSI, Inc (‘News’) and Client agree that in
consideration for News’ offering the rates set forth below Client
shall give News a right of first refusal to contract all free standing
insert programs (Co-op or Solo) of Client for [time period]” and
(2) “Client agrees that it will abide by the terms and pay the rates
set forth in this Agreement for all free standing insert advertise-
ments placed with News, irrespective of whether Client places
such advertisements directly, through an advertising agent or
another third party compiler.”
14438 THEME PROMOTIONS v. NEWS AMERICA
refusal agreements foreclosed competition in a substantial
share of that market.
News now argues that Theme failed to provide sufficient
evidence to support the jury’s relevant market definition and
the jury’s conclusion that News foreclosed competition in a
substantial share of that market. News also argues that there
is insufficient evidence in the record of an antitrust injury, a
standing requirement, and of causation. Because antitrust
injury and proximate cause are closely related concepts, we
address both issues together. The record includes sufficient
evidence that News foreclosed competition in the relevant
market, and that Theme suffered an antitrust injury as the
result of News’ anticompetitive actions.
1
[2] The district court instructed the jury that for Theme to
succeed on its Cartwright Act claim, it had to prove by a pre-
ponderance of the evidence that the relevant market is the sale
of inserts to packaged goods companies. The definition of the
relevant market is a question of fact for the jury. Forsyth, 114
F.3d at 1476. A relevant market is identified by considering
“commodities reasonably interchangeable by consumers for
the same purposes.” Exxon, 60 Cal. Rptr. 2d at 201 (quoting
United States v. E.I. duPont de Nemours & Co., 351 U.S. 377,
395 (1956)). Put another way, the relevant market includes all
sellers or producers who have actual or potential ability to
deprive each other of significant levels of business. Forsyth,
114 F.3d at 1476 (citing Thurman Indus., Inc. v. Pay ‘N Pak
Stores, Inc., 875 F.2d 1369, 1374 (9th Cir. 1989)).
[3] Determining the relevant market can involve a compli-
cated economic analysis, including concepts like cross-
elasticity of demand, and “small but significant nontransitory
increase in price” (“SSNIP”) analysis. See United States v.
Oracle Corp., 331 F. Supp. 2d 1098 (N.D. Cal. 2004)
(Walker, C.J.). Cross-elasticity of demand measures the per-
THEME PROMOTIONS v. NEWS AMERICA 14439
centage change in quantity that consumers will demand of one
product in response to a percentage change in the price of
another. Forsyth, 114 F.3d at 1483 (Wallace, J., concurring).
When demand for the commodity of one producer shows no
relation to the price for the commodity of another producer,
it supports the claim that the two commodities are not in the
same relevant market. Forsyth, 114 F.3d at 1477.
Similarly, a SSNIP analysis asks whether a monopolist in
the proposed market could profitably impose a small but sig-
nificant and nontransitory price increase. Oracle, 331 F. Supp.
2d at 1112. If a significant number of customers would
respond to a SSNIP by purchasing substitute products, the
SSNIP would not be profitable for the hypothetical monopo-
list. Id. If a monopolist could not profitably impose a SSNIP,
the market definition should be expanded to include those
substitute products that constrain the monopolist’s pricing. Id.
[4] The evidence of the relevant market for Theme’s Cart-
wright Act claim is substantial enough that we cannot hold
that the jury reached an unreasonable conclusion. To support
the jury’s finding, Theme highlights record testimony that
inserts are the single most important promotional vehicle used
to distribute coupons, and that inserts have unique benefits
including reaching a large national audience. Theme also
emphasizes that in 1994, when the price of inserts rose from
approximately $4.00 per thousand to around $7.00 per thou-
sand, the percentage of inserts in the coupon market also rose.
This evidence—when viewed in the light most favorable to
Theme—supports the jury’s finding. We conclude that a rea-
sonable jury could infer that the relevant market is the sale of
inserts to packaged goods companies.
2
[5] The district court also instructed the jury that for Theme
to succeed on its Cartwright Act claim, it had to prove by a
preponderance of the evidence that News’ right of first refusal
14440 THEME PROMOTIONS v. NEWS AMERICA
agreements “foreclose competition in a substantial share of
that relevant market.” California courts have instructed that “a
market share of 16 percent fails ‘conspicuously to pass the
threshold test establishing the defendant’s market power.’ ”
Roth, 30 Cal. Rptr. 2d at 713 (quoting Redwood Theatres, Inc.
v. Festival Enter., Inc., 248 Cal. Rptr. 189, 199 (Cal. Ct. App.
1988)). We have determined that a 45-70% market share may
be enough to establish a substantial share of the relevant mar-
ket where it is accompanied by other factors like fragmenta-
tion of competition and high entry barriers. Syufy, 793 F.2d at
995. Whether an exclusive dealing arrangement substantially
forecloses competition cannot be determined by a rigid math-
ematical analysis alone; the analysis must take into account
other factors. Fisherman’s Wharf, 7 Cal. Rptr. 3d at 650-51.
[6] The best evidence supporting the jury’s conclusion that
News foreclosed competition in a substantial share of the
market is testimony by expert witnesses, News executives,
and Theme’s president, that News held 40-60% of the
national insert publishing market between the late 1990s and
2004. Theme also points to evidence—primarily the testi-
mony of its own president about Theme’s decision not to
enter the insert publishing business—that there were signifi-
cant barriers to entrance into the insert market. This testimony
suggests that the large capital investments and high econo-
mies of scale necessary to reach an efficient level of output,
coupled with the existence of current right of first refusal con-
tracts, would prohibit new entrants into the market. Theme
also submitted evidence that when a third insert supplier
briefly entered the market in the 1990s, it was marginalized
by News and Valassis and eventually purchased by News.
[7] News did not effectively counter this evidence. There-
fore, we conclude that a reasonable jury could determine that
News’ actions affected a substantial share of the relevant mar-
ket.
THEME PROMOTIONS v. NEWS AMERICA 14441
3
News argues that Theme failed to produce substantial evi-
dence of antitrust injury and causation, which are closely
related concepts. See Kolling v. Dow Jones & Co., 187 Cal.
Rptr. 797, 807 (Cal. Ct. App. 1982); Morales-Villalobos v.
Garcia-Llorens, 316 F.3d 51, 55 (1st Cir. 2003). Several fac-
tors are relevant in considering whether a plaintiff has estab-
lished antitrust standing. The most important is whether the
plaintiff has established an antitrust injury. Amarel v. Connell,
102 F.3d 1494, 1507 (9th Cir. 1997).
“Antitrust injury is defined not merely as injury caused by
an antitrust violation, but more restrictively as injury of the
type the antitrust laws were intended to prevent and that flows
from that which makes defendants’ acts unlawful.” Glen
Holly, 343 F.3d at 1007-08 (internal quotation marks omit-
ted). In order to find that an antitrust injury exists, we must
examine both the nature of the injury and whether the injury
is causally related to the antitrust violation. Datagate, Inc. v.
Hewlett-Packard Co., 941 F.2d 864, 867 (9th Cir. 1991).
[8] An injury will not qualify as an antitrust injury unless
it is attributable to an anti-competitive aspect of the practice
under scrutiny, “since it is inimical to [the antitrust laws] to
award damages for losses stemming from continued competi-
tion.” Amarel, 102 F.3d at 1508 (quoting Atl. Richfield Co. v.
USA Petroleum Co., 495 U.S. 328, 334 (1990)). If the injury
flows from aspects of a defendant’s conduct that are benefi-
cial or neutral to competition, there is no antitrust injury, even
if the defendant’s conduct is illegal. Glen Holly, 343 F.3d at
1008. Coercive activity that prevents choice between market
alternatives, including agreements to restrain trade, is one
form of antitrust injury. Id., 343 at 1011; Amarel, 102 F.3d at
1509.
[9] To support its claim that it suffered an antitrust injury,
Theme points to evidence that News’ right of first refusal
14442 THEME PROMOTIONS v. NEWS AMERICA
agreements forced Theme to purchase inserts from News
instead of from Valassis (to which it would have paid lower
prices). Theme argues that this restriction of choice between
market alternatives resulted in financial harm. Theme also
argues that it was harmed by a general increase in insert
prices caused by the reduction of Theme’s own competitive
presence in the market. Specifically, Theme points to testi-
mony that its programs increased insert output while reducing
insert costs, and that News’ conduct resulted in fewer pack-
aged goods companies running programs with Theme. Theme
further presented evidence that, while the right of first refusal
agreements purported to lower prices, prices could have been
lower still if the market were rid of such agreements. News
argues that the evidence actually shows that the reduction in
Theme’s business was caused by Theme’s own poor business
practices, and that Theme was harmed by News’ procompeti-
tive actions. However, a jury could reasonably believe
Theme’s evidence that the right of first refusal agreements
were harmful to competition over News’ evidence that they
were procompetitive, and thereby conclude that Theme suf-
fered an injury of the type the antitrust laws were intended to
prevent.
[10] For an injury to be an antitrust injury, it must also be
causally related to the antitrust violation. The harm may not
be “derivative and indirect” or “secondary, consequential, or
remote.” Amarel, 102 F.3d at 1511-12; Kolling, 187 Cal. Rptr.
at 808 (internal quotation marks omitted). Here, the evidence
establishes that Theme would have placed all of its insert
orders with Valassis were it not for News’ right of first refusal
agreements with the packaged goods companies. The antitrust
injury suffered by Theme—the reduction in choice of market
alternatives causing reduced output of inserts and higher
prices—was the direct result of News’ antitrust violation.5 As
5
Theme presents alternative causation theories, which we need not
address.
THEME PROMOTIONS v. NEWS AMERICA 14443
a result, we affirm the district court’s denial of JMOL in favor
of News on Theme’s Cartwright Act claim.
B
[11] The district court did not err in denying News’ motion
for JMOL on Theme’s negligent interference with prospective
economic advantage claim. The district court instructed the
jury that to establish negligent interference with prospective
economic advantage, Theme would have to prove by a pre-
ponderance of the evidence that: (1) Theme and a particular
packaged goods company were in an economic relationship
that probably would have resulted in an economic benefit to
Theme; (2) News knew of the relationship; (3) News knew or
should have known that the relationship would be disrupted
if it failed to act with reasonable care; (4) News failed to act
with reasonable care; (5) News engaged in independent
wrongful conduct apart from the interference itself; (6) the
relationship was actually disrupted; (7) Theme was harmed;
and (8) News’ wrongful conduct was a substantial factor in
causing Theme’s harm. See Korea Supply Co. v. Lockheed
Martin Corp., 63 P.3d 937, 950 (Cal. 2003) (identifying ele-
ments of the tort of intentional interference with prospective
economic advantage). News argues that there is insufficient
evidence in the record to establish that News engaged in inde-
pendent wrongful conduct.
[12] A plaintiff seeking to recover damages for interference
with prospective economic advantage must plead and prove
that the defendant’s conduct was “wrongful by some legal
measure other than the fact of interference itself.” Id. at 950
(quoting Della Penna v. Toyota Motor Sales, U.S.A., Inc., 45
Cal. Rptr. 2d 436, 438, 442 (Cal. Ct. App. 1995)). The district
court instructed the jury that conduct is wrongful “if it is pro-
scribed by some constitutional, statutory, regulatory, common
law, or other determinable legal standard.” Because the jury’s
14444 THEME PROMOTIONS v. NEWS AMERICA
verdict on Theme’s Cartwright Act claim was supported by
substantial evidence in the record, this element is satisfied.6
C
News argues that regardless of whether the jury’s verdict
was supported by substantial evidence in the record, a new
trial is required because its substantial rights were affected by
an evidentiary error. Specifically, News argues that the testi-
mony of Theme’s president as to the internal decisions of
packaged goods companies regarding whether to do repeat
business with Theme lacked foundation and was speculative.
In addition, News argues that the testimony of Theme’s presi-
dent was the only evidence Theme supplied on the element of
causation, and that therefore its admission could not have
been harmless error.
To succeed on this issue, News must establish that the dis-
trict court abused its discretion by allowing the contested tes-
timony. Obrey, 400 F.3d at 693. This it cannot do. While
Theme’s president testified repeatedly that he was under the
impression that Theme had a good relationship with the pack-
aged goods companies, and that he could think of no reason
the packaged goods companies would not continue to do busi-
ness with Theme, he did not actually comment on the internal
decisions of packaged goods companies or their executives.
This testimony was neither lacking in foundation nor specula-
tive.
[13] Had the district court’s decision to admit the testimony
of Theme’s president been error, a new trial would have been
6
Because the independent wrongful conduct element is satisfied by the
Cartwright Act violation, we need not address Theme’s argument that
News made an actionable misrepresentation to the packaged goods com-
panies, and that the actionable misrepresentation is independent wrongful
conduct. We therefore do not address News’ argument that Theme was not
harmed by any misrepresentation.
THEME PROMOTIONS v. NEWS AMERICA 14445
appropriate only if the verdict was more probably than not
tainted by the error. Id. at 699-700. While Theme did rely
heavily on its president’s testimony to establish the causation
element of its antitrust claim, other evidence—including the
“before and after” picture of Theme’s business provided by
Theme’s damages expert—also helped to establish causation.
News has not shown that any error more probably than not
tainted the jury’s verdict. As a result, we affirm the district
court’s denial of the motion for a new trial.
D
Finally, News argues that the district court erred by ruling
that the jury’s awards of antitrust damages and tort damages
were not duplicative. The jury awarded Theme $1,000,000 in
compensatory damages under the Cartwright Act, and
$496,023 in compensatory damages on its negligent interfer-
ence with prospective economic advantage claim regarding
Campbells. News argues that these awards were impermiss-
ibly duplicative because both were based on the loss of future
profits with respect to the relationship with Campbells.
The general rule of compensatory damages bars double
recovery for the same wrong. Krusi v. Bear, Stearns, & Co.,
192 Cal. Rptr. 793, 798 (Cal. Ct. App. 1983). The California
Supreme Court has held that a plaintiff is not entitled to more
than a single recovery for each distinct item of compensable
damage supported by the evidence. Tavaglione v. Billings,
847 P.2d 574, 580 (Cal. 1993). We have held that one act by
a defendant may create two legal harms; where the statutes
forbidding the act were enacted for different purposes, and
where they prescribe different types of damages, there is no
double recovery. Nintendo of Am., Inc. v. Dragon Pac. Int’l,
40 F.3d 1007, 1011 (9th Cir. 1994).
The $1,000,000 damages figure and the $496,023 damages
figure are for separate legal harms: an antitrust violation and
a tort. The two injuries did not arise from the same act: one
14446 THEME PROMOTIONS v. NEWS AMERICA
was the result of anticompetitive right of first refusal agree-
ments; the other was the result of intentional misrepresenta-
tions. The laws proscribing these acts serve different
purposes. News argues, however, that both awards were
intended to compensate for the same economic harm: loss of
future profits from the interruption of business relationships.
The record, however, does not establish that the two awards
were intended to compensate for the same economic harm. To
reach that conclusion would require speculation about the jury
verdict.
[14] Theme’s damages expert provided the court with one
analysis of the profits Theme would have earned from its rela-
tionships with Nabisco, Benevia, Van de Kamp, Smuckers,
Campbells, Hormel, and International Home Foods, “but for
the conduct complained of:” $2,797,600. The particular num-
ber attributed to the relationship with Campbells was
$496,000. The jury returned a verdict of $496,023 specifically
relating to the tort of interference with the Campbells relation-
ship, and a verdict of $1,000,000 for the harm arising from
anticompetitive behavior. Given these separate awards, the
district court did not commit reversible error in denying
News’ motion.
IV
We next address the issues raised in Theme’s cross-appeal.
Theme argues that the district court erred in vacating the
jury’s verdict on Theme’s intentional interference with pro-
spective economic advantage claims on privilege grounds.
Theme also argues that the district court erred in denying
Theme’s motion for restitution and its motion for an injunc-
tion. Finally, Theme argues that the district court erred in
denying Theme’s motion to amend its complaint to add an
action for declaratory relief, and in terminating the related
motion for summary judgment. We affirm the district court on
each issue.
THEME PROMOTIONS v. NEWS AMERICA 14447
A
The jury rendered a verdict in favor of Theme on its inten-
tional interference with prospective economic advantage
claims with respect to its relationships with Benevia and Van
de Kamp, and awarded damages of $700,353 and $132,992
respectively, as well as punitive damages of $1,250,000 on
each claim. The district court dismissed these claims and
damage awards on the grounds that News’ conduct—
threatening litigation against Benevia and Van de Kamp—
was privileged under the Noerr-Pennington doctrine. Theme
argues that the district court erred in applying the Noerr-
Pennington doctrine instead of California privilege law.
Theme also argues that News’ conduct was not privileged
under either doctrine. We disagree.
[15] The essence of the Noerr-Pennington doctrine is that
those who petition any department of the government for
redress are immune from statutory liability for their petition-
ing conduct. Sosa v. DIRECTV, Inc., 437 F.3d 923, 929 (9th
Cir. 2006). The doctrine derives from two Supreme Court
cases holding that the First Amendment Petition Clause
immunizes acts of petitioning the legislature from antitrust
liability. Id. (citing Eastern R.R. Presidents Conference v.
Noerr Motor Freight, Inc., 365 U.S. 127 (1961) and United
Mine Workers v. Pennington, 381 U.S. 657 (1965)). The doc-
trine has since been applied to actions petitioning each of the
three branches of government, and has been expanded beyond
its original antitrust context. Id. at 930; Amarel, 102 F.3d at
1518.
[16] We have previously declined to reach the question of
whether the Noerr-Pennington doctrine applies to state law
tort claims. Lexicon, Inc. v. Milberg Weiss Bershad Hynes &
Lerach, 102 F.3d 1524, 1538 n.15 (9th Cir. 1996) (“The time
may come when this circuit must speak directly on the ques-
tion.”). Other circuits, however, have been more decisive. See,
e.g., Video Int’l Prod., Inc. v. Warner-Amex Cable Commc’ns,
14448 THEME PROMOTIONS v. NEWS AMERICA
Inc., 858 F.2d 1075, 1084 (5th Cir. 1988). In explaining its
decision to extend Noerr-Pennington to tortious interference
with contracts, the Fifth Circuit stated, “There is simply no
reason that a common-law tort doctrine can any more permis-
sibly abridge or chill the constitutional right of petition than
can a statutory claim such as antitrust.” Id. at 1084. We agree,
and we hold that the Noerr-Pennington doctrine applies to
Theme’s state law tortious interference with prospective eco-
nomic advantage claims.
[17] Theme argues that Noerr-Pennington cannot appropri-
ately be applied here because choice of law principles set
forth in Federal Rule of Evidence 501 establish that state priv-
ilege law must be applied in a diversity action where sate law
provides the rule of decision. See Star Editorial, Inc. v. U.S.
Dist. Ct., 7 F.3d 856, 859 (9th Cir. 1993) (stating that in a
civil action in which state law provides the rule of decision,
the privilege of a witness shall be determined in accordance
with state law). Although Theme is correct, it misses the
point. The Noerr-Pennington doctrine has been articulated as
a principle of statutory construction rather than as a privilege.
See Sosa, 437 F.3d at 930-32. More importantly, because
Noerr-Pennington protects federal constitutional rights, it
applies in all contexts, even where a state law doctrine
advances a similar goal. See Video Int’l, 858 F.2d at 1084.
There is no reason that Noerr-Pennington and California priv-
ilege law cannot both apply to Theme’s intentional interfer-
ence claims, and we hold that the district court properly
considered both doctrines.
[18] Conduct incidental to a lawsuit, including a pre-suit
demand letter, falls within the protection of the Noerr-
Pennington doctrine. Sosa, 437 F.3d at 936-38. Pre-suit letters
threatening legal action may nevertheless be restricted by law
where they include representations so baseless that the threat-
ened litigation would fall into the “sham litigation” exception.
Id. at 940-41. The Supreme Court has endorsed a two-part test
for sham litigation. First, the lawsuit must be objectively
THEME PROMOTIONS v. NEWS AMERICA 14449
baseless in the sense that no reasonable litigant could reason-
ably expect success on the merits. Liberty Lake Invs., Inc. v.
Magnuson, 12 F.3d 155, 157 (9th Cir. 1993) (citing Prof’l
Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc.,
508 U.S. 49 (1993)). Only if the challenged litigation is objec-
tively baseless may we consider the litigant’s subjective moti-
vation. Id. The question then is “whether the baseless lawsuit
conceals an attempt to interfere directly with the business
relationships of a competitor, through the use of the govern-
mental process—as opposed to the outcome of that process—
as an anticompetitive weapon.” Id.
In rendering its verdict for Theme on the intentional inter-
ference claims, the jury based its determination solely on a
finding that News had threatened litigation against Benevia
and Van de Kamp. The only evidence in the record supporting
this aspect of the jury’s verdict is the letters from News to the
packaged goods companies indicating that if the packaged
goods companies failed to place their insert orders with News,
they could become embroiled in then-ongoing litigation
between News and Theme. The question then is whether these
pre-suit letters threatened “sham litigation.”
[19] We begin by analyzing whether the underlying litiga-
tion was objectively baseless. The letters from News to the
packaged goods companies can be understood as threatening
litigation in two ways. First, the letters can be interpreted as
threats to include the packaged goods companies in the ongo-
ing litigation between News and Theme. The fact that this
ongoing litigation settled suggests that the original suit was
not objectively baseless. Second, the letters can be interpreted
as threats of some contemplated future lawsuit against the
packaged goods companies for breach of contract. We agree
with the district court that a suit by News to enforce its right
of first refusal agreements was potentially meritorious.
Because the threatened litigation was not objectively baseless,
we do not analyze News’ subjective motivation. See id. at
157. As a result, we affirm the district court’s conclusion that
14450 THEME PROMOTIONS v. NEWS AMERICA
Noerr-Pennington bars Theme’s intentional interference
claims.7
B
In rendering its verdict for Theme, the jury found that
News had engaged in an unfair competitive practice under
California’s Unfair Competition Law (“UCL”).8 Cal. Bus. &
Prof. Code § 17200 et seq. Theme subsequently moved for an
award of “restitution” under section 17203 of the UCL. The
district court denied the motion for restitution, finding that the
requested amount—News’ insert profits from nine transac-
tions in which Theme was forced to purchase inserts from
News as a result of News’ right of first refusal agreements
with packaged goods companies—was not “restitutionary in
nature.” We agree.
[20] The UCL prohibits unlawful and unfair business prac-
tices. Cal. Bus. & Prof. Code § 17200 et seq. Section 17200
“borrows” violations of other laws and makes them indepen-
dently actionable as unfair competitive practices. Korea Sup-
ply Co., 63 P.3d at 943. In addition, a practice may be
proscribed under section 17200 as “unfair” even if it is not
specifically proscribed by some other law. Id. While the scope
of conduct covered by the UCL is broad, the remedies are
limited. Id. Section 17203, in part, allows courts to make
orders or judgments “to restore to any person in interest any
money or property, real or personal, which may have been
acquired by means of such unfair competition.” The Califor-
nia Supreme Court has determined that this phrase allows
7
California Civil Code section 47(b), which creates an absolute privi-
lege for statements made in a judicial proceeding regardless of malice,
might also apply here. See Laffer v. Levinson, Miller, Jacobs, & Phillips,
40 Cal. Rptr. 2d 233, 237 (Cal. Ct. App. 1995). Because we hold that the
Noerr-Pennington doctrine bars Theme’s intentional interference claim,
we need not address this question.
8
News does not challenge this verdict.
THEME PROMOTIONS v. NEWS AMERICA 14451
awards of restitution, but not awards of non-restitutionary dis-
gorgement. Id. at 949.
The California Supreme Court has explained that restitution
orders are “orders compelling a UCL defendant to return
money obtained through an unfair business practice to those
persons in interest from whom the property was taken, that is,
to persons who had an ownership interest in the property or
those claiming through that person.” Kraus v. Trinity Mgmt.
Servs., Inc., 999 P.2d 718, 725 (Cal. 2000). While disgorge-
ment orders may include a restitutionary component, they
may be impermissibly broad because they require the “surren-
der of all profits earned as a result of an unfair business prac-
tice regardless of whether those profits represent money taken
directly from persons who were victims of the unfair prac-
tice.” Id. The California Supreme Court has held that nonres-
titutionary disgorgement is akin to a damages remedy: relief
that is not allowed under the UCL. Korea Supply Co., 63 P.3d
at 948.
Theme requested “restitution” in the amount of $929,187:
the amount by which its damages expert determined that
News had profited on nine insert orders that Theme placed
with News because of News’ right of first refusal agreements
with packaged goods companies. The district court deter-
mined that an award of this amount would not be restitution-
ary in nature because had Theme not purchased the inserts
from News, it would have had to purchase them from Valas-
sis, and Valassis presumably would have profited from the
sales as well. Because the profits would have gone to either
News or Valassis, the district court concluded that Theme
could not claim an ownership interest in the profits.
[21] We agree with the district court, to an extent. We
agree that the “restitution” amount identified by Theme is not
entirely restitutionary in nature. However, the more salient
question is whether News’ profits were property taken from
Theme, or—as News argues—property taken from the pack-
14452 THEME PROMOTIONS v. NEWS AMERICA
aged goods companies. Evidence in the record suggests that,
on some occasions, the packaged goods companies paid News
directly; on other occasions, Theme paid News for the pack-
aged goods companies. The evidence is insufficient to support
a finding that Theme had a property interest in all of News’
profits from the nine disputed insert orders. For this reason,
we hold that the district court did not abuse its discretion in
denying Theme’s motion for restitution.
C
Following trial, Theme moved for a permanent injunction
against News based on both its Cartwright Act and UCL
claims. Theme’s requested injunction would have prevented
News from enforcing its right of first refusal agreements. The
district court denied the motion. Theme again moved for an
injunction pending appeal; the district court again denied the
injunction.
[22] California law provides for injunctive relief under both
the Cartwright Act and the UCL. The United States Supreme
Court has stated that courts faced with an antitrust violation
are required to take action to restore competition in the mar-
ket. See, e.g., United States v. E.I. du Pont de Nemours & Co.,
366 U.S. 316, 326 (1961). The Supreme Court has also recog-
nized that the purpose of antitrust laws “is not to protect busi-
nesses from the working of the market; it is to protect the
public from the failure of the market.” Spectrum Sports, Inc.
v. McQuillan, 506 U.S. 447, 458 (1993). Thus, we have rec-
ognized that a district court might appropriately deny a
motion for injunctive relief where the injunction would hin-
der, rather that promote, competition in the market. Pac.
Coast Agric. Export Ass’n v. Sunkist Growers, Inc., 526 F.2d
1196, 1209 (9th Cir. 1975).
[23] In denying Theme’s motions, the district court noted
that the record “was sufficiently ambiguous with respect to
the market definition [and] sufficiently ambiguous with
THEME PROMOTIONS v. NEWS AMERICA 14453
respect to the antitrust injury, that it would not reasonably
support an injunction going forward.” The court was not con-
vinced that allowing News to enforce its right of first refusal
agreements in the future would injure competition, or that an
injunction would protect competition. The record supports the
district court’s conclusions. News supplied evidence that right
of first refusal agreements result from competition between
News and Valassis, and that an injunction would only serve
to put News at a competitive disadvantage. The district court
therefore did not abuse its discretion in denying Theme’s
motions for permanent injunction.
D
After we reversed the initial dismissal of Theme’s claims
and remanded to the district court, Theme filed a motion for
leave to amend its complaint (for the second time) to replace
its antitrust claims with a cause of action for declaratory
relief, seeking a judicial statement that Theme is not bound by
News’ right of first refusal agreements with packaged goods
companies. Simultaneously, Theme filed a motion for sum-
mary judgment, arguing that the issue was a pure question of
contract law. The district court denied the motion for leave to
amend, holding that the amendment would be futile, and ter-
minated the related motion for summary judgment as moot.
[24] A party may amend its complaint with the court’s
leave, and leave shall be freely given where “justice so
requires.” Fed. R. Civ. P. 15. We apply this policy liberally,
but leave to amend will not be granted where an amendment
would be futile. DCD Programs, Ltd. v. Leighton, 833 F.2d
183, 186 (9th Cir. 1987). A court may only grant a declaratory
judgment where there is an “actual controversy within its
jurisdiction.” 28 U.S.C. § 2201(a). In addition, the Supreme
Court has stated that a declaratory judgment is only appropri-
ate where it would completely resolve the concrete contro-
versy. Calderon v. Ashmus, 523 U.S. 740, 749 (1998).
14454 THEME PROMOTIONS v. NEWS AMERICA
[25] Theme’s motion for leave to amend made plain that
there was no actual case or controversy. As the district court
noted, Theme admitted that there was no controversy over
whether Theme was contractually bound by right of first
refusal agreements to which it was not a party. Moreover, a
declaration that Theme was not contractually bound by any of
News’ right of first refusal agreements with the packaged
goods companies would not have completely resolved the
controversy between News and Theme. Because declaratory
relief was not available, Theme’s amendment would have
been futile. As a result, the district court did not abuse its dis-
cretion in denying the motion for leave to amend or in termi-
nating the related motion for summary judgment.
V
We affirm the judgment of the district court in its entirety.
The district court appropriately rejected News’ motions for
JMOL, new trial, and damage reduction. The district court
correctly set aside the jury verdict in favor of Theme on its
claim of intentional interference with prospective economic
advantage because that claim was barred by the Noerr-
Pennington doctrine. The district court properly denied
Theme’s request for restitution and injunctive relief. It appro-
priately denied as futile Theme’s motion to amend its com-
plaint to include a claim for declaratory relief.
AFFIRMED.