Silverhorse Racing, LLC v. Ford Motor Company
Filing
41
ORDER granting #33 Motion for Partial Summary Judgment. Plaintiff Silverhorse Racing, LLC Complaint (Doc. No. #2) is dismissed. Signed by Judge Anne C. Conway on 1/30/2017. (copies mailed/emailed) (AKJ)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
SILVERHORSE RACING, LLC,
Plaintiff and Counterclaim,
Defendant,
v.
Case No: 6:16-cv-00053-ACC-KRS
FORD MOTOR COMPANY,
Defendant and Counterclaimant.
FORD MOTOR COMPANY,
Third-party Plaintiff,
v.
JOSEPH CANITANO
Third-party Defendant.
ORDER
This cause comes before the Court on Defendant Ford Motor Company’s Motion for Partial
Summary Judgment and Memorandum of Law (Doc. 33); Plaintiff, Silverhorse Racing, LLC’s
Response (Doc. 38); and Ford Motor’ Company’s Reply (Doc. 40). Upon review and
consideration, Ford’s motion will be granted.
I.
BACKGROUND1
A. Factual Background
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As discussed in Section II of this Order, SHR has failed to contest or even address the
“undisputed facts” set forth in Ford’s motion for summary judgment. Therefore, many of the facts
in the “Background” section of this Order are taken from Ford’s motion for summary judgment.
(See Doc. 33, pp. 3–8 (listing twenty-six “undisputed material facts”)).
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This action arises from a dispute between Silverhorse Racing, LLC (“SHR”) and Ford
Motor Company (“Ford”) regarding use of the marks “GT” and “5.0.” (Doc. 2). Ford manufactures
and sells automobiles, parts, accessories, and merchandise. (Doc. 30 ¶ 7). SHR, whose sole owner
is Joseph Marcello Canitano, produces aftermarket parts for the automotive industry.
(Doc. 2 ¶¶ 5–15; Doc. 39-1 ¶¶ 2, 4).
Ford introduced the Ford Mustang automobile in 1964, and began using GT® in connection
with the now iconic automobile in 1965. (Doc. 33, ¶ 2). In 1969, production of the Ford Mustang
ceased, but resumed in 1982, when Ford began selling Ford Mustang GT® automobiles. (Id.). “In
1978, Ford introduced its 5.0® performance engine, designed specifically for the Mustang GT®
models.” (Id. ¶ 4). Ford currently sells parts and accessories designed for Ford Mustang
automobiles under registered trademarks GT® and 5.0® and has used them continuously since the
“date of first use” shown in the table below. (Id. ¶¶ 1, 4).
U.S. Reg. No./
Image
Date of Reg./
Date of First Use
Goods and Services
3,968,489
Trademark
May 31, 2011/
Sep. 1, 2004
Automobiles; exterior
insignia badges for
automobiles
4,466,709
Jan. 14, 2014/
Jun. 8, 2012
Clothing and headwear,
namely, t-shirts, polo
shirts, caps, hats,
sweatshirts and jackets
GT
5.0
In 2006, well after Ford had begun using the marks GT® and 5.0®, SHR began advertising
and selling parts and accessories (rear medallions, cup holders, and shifter bezels) designed for
Ford Mustang automobiles bearing the letters GT and numbers 5.0. (Id. ¶ 5). Examples of the
engraved products at issue are depicted below.
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(See Doc. 35-1 & Doc. 35-2) (providing screenshots of SHR’s parts and accessories engraved with
the letters GT and numbers 5.0). SHR marketed these products to an identical class of consumers
and through similar channels of trade as Ford. (Doc. 33 ¶ 15–21). However, “SHR . . . has never
been licensed by Ford.” (Id. ¶ 14).
On April 3, 2013, Ford sent SHR a letter, demanding that it cease all unauthorized use of
trademarks belonging to Ford. (Doc. 33-9). Despite the exchange of communications between the
parties,
the
dispute
regarding
Ford’s
registered
trademarks
went
unresolved.
(Doc. 39-1 ¶¶ 30; Doc. 35-3). Six months later, law enforcement raided a warehouse belonging to
SHR’s largest dealer, American Muscle. (Doc. 34 ¶ 16; Doc. 39-1; Doc. 35-3). The raid resulted
in the seizure of SHR products engraved with the letters GT. (Doc. 34 ¶ 16; Doc. 39-1).
Following the raid, Ford began sending demand letters (“Demand Letters”) to companies
with whom SHR had business relationships. In particular, Ford sent a demand letter to CJ Pony
Parts on February 27, 2014, requesting that it remove all unlicensed and infringing SHR products
from their website, turnover any inventory in its possession, and provide disclosures for the sales
of these products. (Doc. 35-4). On October 6, 2015, Ford also contacted Mustangs Unlimited and
requested that it remove unlicensed and infringing SHR products from its website. (Doc. 35-5;
Doc. 35-6). After receiving Ford’s Demand Letters, CJ Pony Parts and Mustangs Unlimited
stopped advertising and selling SHR’s engraved parts and accessories. (Doc. 39-1, ¶¶ 32, 34).
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B.
Procedural Background
On November 23, 2015, Plaintiff SHR initiated a lawsuit against Ford in state court,
asserting a claim for “tortious interference” premised on the Demand Letters Ford sent to SHR’s
distributors. (Doc. 2 (“Complaint”)). On January 13, 2016, Ford timely removed the suit to federal
court. (Id.). Ford subsequently moved to dismiss SHR’s Complaint, arguing that its Demand
Letters could not form the basis of a claim for tortious interference because it was immune from
liability under the longstanding Noerr-Pennington (“Noerr”) doctrine. (Doc. No. 9). SHR opposed
Ford’s motion (Doc. 12), and Ford replied (Doc. 17). The Court concluded that Ford may be
entitled to immunity, but ultimately denied Ford’s motion because SHR pled sufficient facts
creating a plausible inference that Ford’s Demand Letters were a sham unworthy of protection
under the Noerr doctrine. (Doc. 27, 7–10).
On May 11, 2016, Ford filed an answer to SHR’s Complaint, along with several
counterclaims and a third-party complaint against Canitano. (Doc. 28). Shortly thereafter, Ford
amended its counterclaims and third-party complaint, asserting that both SHR and Canitano were
liable for: (1) federal trademark counterfeiting and infringement under 15 U.S.C. ¶ 1114; (2) false
designation of origin and trade dress infringement under 15 U.S.C. § 1125(a); (3) trademark and
trade dress dilution under 15 U.S.C. ¶ 1125(c); and (4) trademark infringement under Florida law.
(Doc. 30). Ford now moves for partial summary judgment on SHR’s claim for tortious
interference. (See Doc. 33 (“Motion)). SHR responded (Doc. 38 (“Response”)), and Ford replied
(Doc. 40). This matter is therefore ripe for adjudication.
II.
LEGAL STANDARD
Summary judgment is appropriate where “the movant shows that there is no genuine
dispute as to any material fact and that [it] is entitled to judgment as a matter of law.” Fed. R. Civ.
4
P. 56(a). In determining whether the moving party has satisfied its burden, the court considers all
inferences drawn from the underlying facts in a light most favorable to the party opposing the
motion, and resolves all reasonable doubts against the moving party. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986). If a movant carries its burden the burden shifts to the non-moving
party, who must “go beyond the pleadings and by [its] own affidavits, or by the depositions,
answers to interrogatories, and admissions on file, designate specific facts showing that there is a
genuine issue for trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 324–25 (1986) (internal quotations
and citations omitted).
SHR has failed to comply with Rule 56 and the Court’s Case Management and Scheduling
Order.2 In its response, SHR does not specifically dispute or challenge the “statement of
undisputed
material
facts”
contained
in
Ford’s
motion
for
summary
judgment.
(See generally, Doc. 38). Moreover, SHR fails to cite to any evidence in the record. SHR merely
submits a thirty-two page Affidavit of Canitano (Doc. 39-1), which supposedly “establishes
genuine issues of material fact . . .” (Id. at 8). Notably, however, SHR neglects to cite to any
specific portions of Canitano’s lengthy Affidavit, leaving the Court to ponder which of Ford’s
asserted facts are actually in dispute.
A district court need not consider materials not cited by the parties, see Fed. R. Civ. P.
56(c)(3), and may decide a motion for summary judgment “without undertaking an independent
search of the record,” see Rule 56(c)(3) Advisory Committee’s Note 2010 Amendments. Because
SHR fails to properly address Ford’s assertions of fact, the Court considers those facts undisputed.
See Rule 56(e) (explaining that, “[i]f a party fails to properly support an assertion of fact or fails
2
(See Doc. 20, pp. 5–6 (explaining that the non-moving party must: (1) specifically
challenge those facts a moving party claims to be undisputed; and (2) “provide pinpoint citations
to the pages and lines of the record supporting each material fact”)).
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to properly address another party’s assertion of fact as required by Rule 56(c), the court may . . .
consider the fact undisputed for purposes of the motion).
III.
DISCUSSION
Ford argues that the conduct forming the basis of SHR’s claim is privileged under the First
Amendment. Specifically, Ford asserts that its act of sending Demand Letters to SHR’s distributors
constituted litigation activity immunized from civil liability under the Noerr doctrine. For the
reasons that follow, the Court agrees.
The Noerr doctrine derives from the First Amendment’s guarantee of “the right of the
people . . . to petition the Government for a redress of grievances.” U.S. Const. amend. I. The
doctrine applies to persons who petition all types of government entities, including legislatures,
administrative agencies, and courts, BE & K Constr. Co. v. NLRB, 536 U.S. 516, 525 (2002) (citing
Cal. Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508, 510–11 (1972)). Although the Noerr
doctrine initially arose in the antitrust context, see E. R. R. Presidents Conference v. Noerr Motor
Freight, Inc., 365 U.S. 127, 136–38 (1961), courts have extended the Noerr doctrine to protect
First Amendment “petitioning of the government from claims brought under federal and state laws
including . . . common-law tortious interference with contractual relations,” Video Int'l Prod., Inc.
v. Warner-Amex Cable Commc’ns, Inc., 858 F.2d 1075, 1084 (5th Cir. 1988); (see Doc. 27, p. 5)
(collecting cases).
Most pertinent here, the doctrine extends not only to petitioning of the judicial branch (i.e.,
filing a lawsuit), but also to acts reasonably attendant to litigation, such as demand letters. See
Primetime 24 Joint Venture v. Nat’l Broad. Co., 219 F.3d 92, 99-100 (2d Cir.2000) (collecting
cases). The Noerr doctrine, however, is not absolute. To receive immunity, the conduct at issue
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cannot fall within the “sham exception” to the Noerr doctrine. In other words, the litigation activity
must be genuine. BE & K Constr. Co., 536 U.S. at 525–26.
The burden falls on the party invoking the sham exception. First, the party must show that
the litigation activity was “objectively baseless, in the sense that no reasonable litigant could
realistically expect success on the merits.” Prof’l Real Estate Investors v. Columbia Pictures
Indus., Inc. (PRE), 508 U.S. 49, 60. If an objective litigant could conclude that the [litigation
activity] is reasonably calculated to elicit a favorable outcome, the [litigation activity] is
immunized under [the] Noerr [doctrine].” PRE, 508 U.S. at 60. If the “objectively baseless”
standard is met, the party must then show that the petitioning party had the subjective intent to
inhibit competition, rather than to seek government redress. Id. at 60–61 (citations and internal
quotations omitted).
In the instant case, SHR does not dispute that the Noerr doctrine extends to Ford’s Demand
Letters. Instead, SHR argues that Ford’s conduct falls within the “sham exception” to the Noerr
doctrine. In support of its assertion, SHR relies solely upon its first four affirmative defenses
(laches, acquiescence, estoppel, unclean hands) to Ford’s counterclaims (trademark infringement,
false designation of origin, and dilution). From what the Court can decipher, SHR essentially
argues that because its affirmative defenses will bar Ford’s counterclaims, Ford’s Demand Letters
were a sham. The Court is unpersuaded.
First, the subjective strength of SHR’s affirmative defenses are not determinative of
whether Ford’s Demand Letters were a sham. See Select Comfort Corp. v. Sleep Better Store, LLC,
838 F. Supp. 2d 889, 899 (D. Minn. 2012) (explaining that “whether [a] demand letter is a “sham”
does not depend on [the litigants] ultimate success . . . in pursuing its trademark infringement
claims”) (citing BE & K Constr. Co., 536 U.S. 516 at 531–32 (2002). Second, Ford is not moving
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for summary judgment on its counterclaims. Ford is moving for summary judgment on SHR’s
claim for tortious interference on grounds that it is entitled to immunity under the Noerr doctrine.
Thus, SHR must “demonstrate[e] both the objective and the subjective components of a sham.”
PRE, 508 U.S. 49, 61. Here, SHR fails to do so.
SHR has not raised a disputed issue of material fact as to whether Ford’s Demand Letters
were a sham. Based on the undisputed evidence, at the time Ford sent Demand Letters to SHR’s
distributors, it owned registered trademarks 5.0s® and GT®. (Doc. 33 ¶ 4). Ford used these marks
in connection with parts and accessories designed for Ford Mustang autos. (Id. ¶ 5). Despite Ford’s
ownership of registered trademarks 5.0s® and GT®, SHR advertised and sold parts and
accessories designed for Ford Mustang automobiles bearing the letters GT in stylized form and the
numbers 5.0. (Id. ¶ 5). SHR marketed its parts and accessories to the same consumers as Ford. (Id.
¶¶ 15–24). An objective litigant could therefore conclude that Ford’s Demand Letters were
reasonably calculated to elicit a favorable outcome—i.e. the cessation of what Ford believed to be
infringing SHR products. Presuit demand letters are customarily used as the first formal step in the
process of enforcing the law of intellectual property and vindicating economic interests in
intellectual property. Accordingly, the Court does not find that Ford’s Demand Letters were
objectively baseless.
Having found no evidence that Ford’s Demand Letters were objectively baseless, the Court
need not examine Ford’s subjective intent. See PRE, 508 U.S. at 50 (explaining that a court may
examine the litigant’s subjective motivation “[o]nly if challenged litigation is objectively meritless
may motivation”). However, the Court notes that SHR has failed to proffer any evidence
demonstrating that Ford sent Demand Letters to SHR’s distributors in bad faith or with
anticompetitive intent. Moreover, the evidentiary record, particularly Ford’s Demand Letters
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(Docs. 33-9, 35- 4, & 35-5), suggests that Ford contacted SHR and its distributors simply to protect
Ford’s registered GT® and 5.0® marks from confusion and dilution.
Absent evidence that Ford’s Demand Letters were a sham, the Noerr Pennington doctrine
immunizes Ford from SHR’s tortious interference claim. Ford’s motion for partial summary
judgment is therefore due to be granted, and SHR’s Complaint, which asserts a single claim for
tortious interference, is due to be dismissed.
IV.
CONCLUSION
Based on the foregoing, it is ordered as follows:
1.
Ford Motor Company’s Motion for Partial Summary Judgment and Memorandum
of Law (Doc. 33) filed December 5, 2016, is GRANTED.
2.
Plaintiff, Silverhorse Racing, LLC’s Complaint (Doc. 2) filed January 13, 2016, is
DISMISSED.
DONE and ORDERED in Orlando, Florida on January 30, 2015.
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Copies furnished to:
Counsel of Record
Unrepresented Parties
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