General Steel Domestic Sales, LLC v. Chumley et al

Filing 265

ORDER. The Court's April 26, 2012 233 order for plaintiff to show cause is discharged. Plaintiff's 250 Motion to Reconsider is denied. By Judge Philip A. Brimmer on 5/18/12.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 10-cv-01398-PAB-KLM
GENERAL STEEL DOMESTIC SALES, LLC,
d/b/a General Steel Corporation, a Colorado limited liability company,
Plaintiff,
v.
ETHAN DANIEL CHUMLEY, individually, and
ATLANTIC BUILDING SYSTEMS, LLC, a Delaware corporation,
doing business as Armstrong Steel Corporation,
Defendants.

ORDER

This matter is before the Court on plaintiff’s response [Docket No. 251] to the
Court’s April 26, 2012 order to show cause and motion to reconsider [Docket No. 250]
the Court’s April 26, 2012 partial summary judgment order.
In an April 26, 2012 order [Docket No. 233], the Court, inter alia, granted in part,
denied in part, and held in abeyance in part defendants’ motion for summary judgment
[Docket No. 95]. The Court held in abeyance that aspect of defendants’ motion seeking
summary judgment on plaintiff’s trademark and unfair competition claims. The basis for
doing so was the uncertainty regarding the bases for plaintiff’s requests for relief on
those claims, as the parties had limited their summary judgment arguments to nondamages issues. See Docket No. 233 at 4-5. The Court noted that it did not appear
that plaintiff was seeking injunctive relief, that plaintiff had not identified any actual
damages, and that plaintiff had identified a theory of recovery, i.e., disgorgement of

profits, without explaining the basis for a potential award of such relief in this case. See
Docket No. 233 at 5 (“General Steel identifies a theory of recovery, i.e., disgorgement of
profits, but not a basis for its award”); cf. Harvey Barnett, Inc. v. Shidler, 338 F.3d 1125,
1135-36 (10th Cir. 2003). The parties also had not addressed whether statutory
damages might be available. Consequently, pursuant to Fed. R. Civ. P. 56(f)(3), the
Court ordered plaintiff to articulate the basis for awarding relief on its claims despite
there being no evidence of actual damages.
In response, plaintiff both responded to the order to show cause and sought
“reconsideration” of the “order” that actual damages must be proven in order to seek
disgorgement of profits under the Lanham Act. Contrary to plaintiff’s reading of the
April 26 order, the Court did not so find and it did not cite authority for such a
proposition.1 The Court held in abeyance that aspect of defendants’ summary
judgment motion addressed to the trademark and unfair competition claims and
reached no final conclusion on these claims. The Court also did not address a
disgorgement theory of recovery in regard to plaintiff’s false advertising claim. The

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For instance, plaintiff contends that the Court concluded, upon reliance on
rulings from other circuits, that actual damages must be demonstrated prior to
permitting disgorgement of profits under the Lanham Act. Plaintiff does not explain how
it reads those cases to be addressing the equitable bases for disgorging profits. The
Court cited them in reference to plaintiff’s failure to demonstrate any connection
between conduct by defendants and any actual damages that would support a money
damages award. That proposition does not conflict with the Tenth Circuit authority cited
by plaintiff for the proposition that the equitable award of lost profits can be granted
pursuant to the Lanham Act, under appropriate circumstances, in the absence of actual
damages. See Western Diversified Servs. Inc. v. Hyundai Motors Am., Inc., 427 F.3d
1269, 1273 (10th Cir. 2005). The order to show cause gave plaintiff the opportunity to
articulate what, if any, basis it had to seek any relief on its claims. The Court did not
issue any ruling foreclosing the possibility of any such award.
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Court granted defendants’ motion for summary judgment on the false advertising claim
only to the extent plaintiff sought to recover actual damages. In short, there is nothing
to “reconsider,” and the Court therefore will deny the motion.
However, the Court has considered plaintiff’s motion as part of plaintiff’s
response to the Court’s order to show cause and finds that plaintiff identifies genuine
issues of material fact regarding the nature and bases for potential relief on its
trademark and unfair competition claims. Therefore, the Court will resolve the stillpending portion of defendants’ motion for summary judgment in due course.
For the foregoing reasons, it is
ORDERED that the Court’s April 26, 2012 order for plaintiff to show cause is
DISCHARGED. It is further
ORDERED that plaintiff’s motion to reconsider [Docket No. 250] is DENIED.

DATED May 18, 2012.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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