Iguana, LLC v. Lanham et al
Filing
249
ORDER denying 169 Motion for Summary Judgment; granting 175 Motion for Summary Judgment; granting 177 Motion for Summary Judgment; denying 181 Motion in Limine; denying 182 Motion in Limine; denying 244 Motion in Limine. Ordered by Judge Clay D. Land on 12/15/2011. (CGC)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF GEORGIA
VALDOSTA DIVISION
IGUANA, LLC,
*
Plaintiff,
*
vs.
*
PAUL E. LANHAM, et al.,
*
Defendants.
CASE NO. 7:08-CV-9 (CDL)
*
O R D E R
This action arises from a letter that Defendant Charles
Calkins (“Calkins”), a partner in the law firm of Defendant
Kilpatrick
Stockton,
LLP
(“Kilpatrick”),
wrote
to
Plaintiff
Iguana, LLC (“Iguana”) on behalf of his client, Defendant Paul
Lanham (“Paul Lanham”).
The letter accused Iguana of willfully
infringing U.S. Reissue Patent No. 35,571 (“U.S. Re. ‘571”).
Defendant
forwarded
H.
David
it
to
Cobb
obtained
Iguana’s
a
copy
of
suppliers,
Performance Materials (“Patriot”).
the
letter
including
and
Patriot
Iguana contends that it was
harmed as a result of the letter being sent to Patriot, and
Iguana
tortious
asserts
claims
interference
against
and
common
pending before the Court are
Defendants
law
for
conspiracy.
defamation,
Presently
the summary judgment motion of
Calkins and Kilpatrick (collectively, “Kilpatrick Defendants”)
(ECF No. 175) and the summary judgment motion of Paul Lanham
(ECF No. 177).
claims
for
Both of these motions seek dismissal of Iguana’s
tortious
interference,
defamation
and
conspiracy.
For the reasons set forth below, the motions are granted.
Also before the Court is the summary judgment motion of
Defendants H. David Cobb, Federal Marketing Service Corporation
and Montgomery Marketing, Inc. (collectively, “MMI Defendants”)
(ECF No. 169).
After that motion was filed, the Court struck
the MMI Defendants’ Answers and placed the MMI Defendants in
default as to liability.
(CDL),
2011
WL
Iguana, LLC v. Lanham, No. 7:08-CV-09
5154062,
at
*6
(M.D.
Ga.
Oct.
28,
2011).
Therefore, the MMI Defendants’ summary judgment motion is denied
as to the MMI Defendants’ liability on the claims against them.
The Court did state that the MMI Defendants “shall be permitted
to contest the amount of damages for which they should be held
liable.”
Id.
recently
filed
Defendants
In
their
motion
contend
that
summary
to
strike
Iguana
has
judgment
(ECF
not
motion
No.
244),
presented
and
in
the
a
MMI
sufficient
evidence to create a genuine fact dispute regarding damages.
As
discussed in more detail below, the Court disagrees, and the MMI
Defendants’
summary
judgment
motion
as
to
damages
and
their
motion to strike are denied.
In addition to the summary judgment motions, Iguana has
filed two motions to strike testimony of Defendants’ experts.
First, Iguana seeks to exclude the testimony of Samuel Hewitt,
2
Defendants’
accounting
and
government
contracting
expert.
Defendants intend to offer Hewitt’s opinions on (1) the reasons
for the drop in Iguana’s Automated Best Value System score, (2)
the reasons why Iguana lost a 2008 contract to MMI and (3) the
calculation
of
Iguana’s
lost
profits.
The
Court
has
fully
considered Iguana’s motion to exclude Hewitt’s testimony (ECF
No. 181) and finds that Hewitt is qualified to render an expert
opinion on these issues and that his opinion is sufficiently
reliable to satisfy Federal Rule of Evidence 702.
Therefore,
Iguana’s motion to exclude Hewitt’s testimony is denied.
Second, Iguana seeks to exclude the testimony of William
Needle.
Defendants
retained
Needle,
a
respected
patent
attorney, as an expert to opine as to how a reasonable patent
attorney would have acted under the circumstances facing Calkins
when he drafted and sent the Infringement Letter.
Iguana seeks
to exclude Needle’s testimony, contending that his opinions are
not reliable because they are not based on sufficient facts. The
Court has fully considered Iguana’s motion to exclude Needle’s
testimony (ECF No. 182) and finds that Needle is qualified to
render an expert opinion in this matter and that his opinion is
sufficiently reliable to satisfy Federal Rule of Evidence 702.
Accordingly, Iguana’s motion to exclude Needle’s testimony is
denied.
3
SUMMARY JUDGMENT STANDARD
Summary judgment may be granted only “if the movant shows
that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Civ. P.
56(a).
Fed. R.
In determining whether a genuine dispute of
material fact exists to defeat a motion for summary judgment,
the evidence is viewed in the light most favorable to the party
opposing summary judgment, drawing all justifiable inferences in
the opposing party=s favor.
U.S. 242, 255 (1986).
Anderson v. Liberty Lobby, Inc., 477
A fact is material if it is relevant or
necessary to the outcome of the suit.
Id. at 248.
A factual
dispute is genuine if the evidence would allow a reasonable jury
to return a verdict for the nonmoving party.
Id.
FACTUAL BACKGROUND
The record, viewed in the light most favorable to Iguana,
establishes the following.
Unless otherwise noted, the facts
are undisputed.
I.
The Patents at Issue in this Action
U.S. Re. ‘571 was issued to Eddie McLeese on July 29, 1997.
U.S. Re. ‘571 was based on U.S. Patent No. 4,858,634 (“‘634
Patent”).
executed
Following the issuance of the ‘634 Patent, McLeese
license
agreements
purporting
4
to
license
the
‘634
Patent to various individuals and entities.1
Defendants contend
that Paul Lanham ultimately obtained an exclusive license in the
‘634 Patent and U.S. Re. ‘571.
was
the
First,
exclusive
Iguana
licensee
contends,
Iguana disputes that Paul Lanham
of
based
the
on
patents
the
July
for
two
2011
reasons.
deposition
testimony of McLeese, that the license was not transferred to a
company called Natural Born Carvers.
It is undisputed that the
chain of title for the rights to the patents at issue in this
case depends in part on the Natural Born Carvers license.
The
Court previously concluded that there is a genuine fact dispute
as to whether McLeese entered into the license agreement with
Natural Born Carvers.
Iguana, LLC v. Lanham, No. 7:08-CV-09
(CDL), 2011 WL 6028404, at *1 (M.D. Ga. Dec. 5, 2011).
Second,
Iguana argues, based on the April 2010 deposition testimony of
Paul Lanham, that Paul Lanham did not sign certain agreements
relating to the patents at issue in this case, including the
1999
Worldwide
Exclusive
License
Agreement.
The
Court
previously concluded that there is a genuine fact dispute as to
whether Randall Lanham signed the documents on Paul Lanham’s
behalf and had the authority to do so.
1
Id. at *2.
For a detailed summary of the license agreements, see Iguana, LLC v.
Lanham, No. 7:08-CV-09 (CDL), 2010 WL 3394899 (M.D. Ga. Aug. 23,
2010).
5
II.
The Infringement Letter
Calkins is a member of the District of Columbia Bar, the
North
Carolina
Bar
and
the
Massachusetts
Bar.
He
is
a
registered patent attorney who practices law in North Carolina.
Calkins represents Paul Lanham.
Randall Lanham, Paul Lanham’s
son, is a California attorney who has acted as Paul Lanham’s
personal attorney.
Lanham
regarding
Most of Calkins’s communications to Paul
U.S.
Re.
‘571
were
through
Randall
Lanham.
Scott Bowen (“Bowen”), who lives in North Carolina, assisted
Paul Lanham in his efforts to license U.S. Re. ‘571, and he
shared
in
patent.
the
royalty
stream
from
licensing
rights
in
the
Montgomery Marketing, Inc. (“MMI”), an Alabama company,
sublicensed the rights to U.S. Re. ‘571 for military sales of
bednets.
David
Cobb
(“Cobb”)
is
MMI’s
president
and
chief
executive officer.
According
to
Defendants,
Paul
Lanham
and
his
business
associate Bowen believed that Iguana was infringing U.S. Re.
‘571 by making a product called a bednet and selling it to the
U.S.
military.
They
were
also
concerned
that
offering it for sale commercially on its website.
193:10-20, ECF 229-2.
Iguana
was
Bowen Dep.
Iguana maintains that Paul Lanham and
Calkins, along with Randall Lanham and others, conspired with
Cobb to harm Iguana’s relationships with its suppliers, causing
harm to Iguana’s business and benefitting MMI’s business.
6
As
discussed in more detail below, Iguana has not pointed to any
evidence that Calkins and/or Paul Lanham were involved in any
such conspiracy.
In November 2007, Bowen contacted Calkins about sending an
infringement
letter
supplier, Patriot.
(“Infringement
Letter”)
to
Iguana’s
Kilpatrick Defs.’ Mot. for Summ. J. Attach.
10, Email from S. Bowen to C. Calkins (Nov. 23, 2007), ECF No.
175-10.
In the email, Bowen stated that MMI had requested the
letter to “deter [Patriot] from supplying Iguana.”2
advised
Bowen
and
Randall
Lanham
that
it
Id.
would
Calkins
not
be
appropriate to send a cease and desist letter to Iguana based on
the
military
regarding
Calkins
sales
Iguana’s
explicitly
but
that
commercial
such
advised
a
letter
could
Bowen
Dep.
sales.
against
sending
an
be
sent
193:5-20.
infringement
letter to Iguana’s suppliers and told Bowen and Randall Lanham
that such a letter could constitute tortious interference with
Iguana’s business relationships.
Id. at 191:9-193:4.
After he was retained by Bowen and Paul Lanham, Calkins
obtained
Agreement
a
copy
and
of
reviewed
the
it.
1999
Worldwide
Kilpatrick
2
Exclusive
Defs.’
License
Statement
of
See also, e.g., Pl.’s Traverse to Kilpatrick Defs.’ Statement of
Material Facts Ex. 5, Email chain between R. Lanham & D. Cobb (Nov.
17, 2007), ECF No. 188-6 (Cobb stating that if Randall Lanham sent
Patriot an infringement letter “they will drop [the Iguana contract]
like a hot rock”); Pl.’s Traverse to Kilpatrick Defs.’ Statement of
Material Facts Ex. 9, Email from D. Cobb to S. Bowen (Nov. 20, 2007),
ECF No. 188-10 (Cobb asking Bowen how he was coming “with the letter
to Patriot”).
7
Undisputed Material Facts Attach. 6, Calkins Decl. ¶ 7, ECF No.
175-6.
Calkins also reviewed the past licenses relating to the
patents at issue in this case, and he had Randall Lanham explain
the transactions to him.
Id. ¶ 10.
Calkins also reviewed the
prosecution histories for the ‘634 Patent and U.S. Re. ‘571 and
the acquisition and contract data relating to bednets.
Id. ¶ 8.
He also reviewed bibliographic data from the U.S. Patent and
Trademark Office regarding U.S. Re. ‘571, which showed that the
patent was in good standing and that maintenance fees had been
paid.3
Id. ¶ 8.
In addition, Calkins analyzed a bednet sample
that had been manufactured by MMI but which Bowen represented
was structurally the same as the bednets Iguana was selling to
the U.S. military.
Id. ¶ 9.
Calkins
the
that
Paul
drafted
Lanham
had
Infringement
the
right
to
Letter,
enforce
which
U.S.
asserted
Re.
‘571,
Iguana’s “bednet” product infringed U.S. Re. ‘571 and that the
infringement was willful.
Kilpatrick Defs.’ Mot. for Summ. J.
Attach. 5, Letter from C. Calkins to E. Stewart (Dec. 17, 2007),
ECF No. 175-5 [hereinafter Infringement Letter].
As discussed
above, Calkins had explicitly advised Bowen, Paul Lanham and
Randall
Lanham
against
sending
3
an
infringement
letter
to
The Court previously concluded that a genuine fact dispute exists on
the issue of whether U.S. Re. ‘571 is unenforceable because McLeese
and his counsel allegedly misled the Patent and Trademark Office
intentionally by paying “small entity” fees instead of “large entity”
fees. Iguana, LLC v. Lanham, No. 7:08-CV-09 (CDL), 2011 WL 6028404,
at *2 (M.D. Ga. Dec. 5, 2011).
8
Iguana’s
suppliers
tortious
interference
Bowen
Dep.
because
such
with
a
letter
Iguana’s
191:9-193:4.
Iguana
could
business
constitute
relationships.
nonetheless
contends
that
Calkins determined that “the letter could be supplied to Cobb
who would surreptitiously provide it to the suppliers.”
Statement of Material Facts ¶ 48, ECF No. 191.
this
contention,
deposition.
Iguana
cites
two
Pl.’s
In support of
portions
of
Bowen’s
First, he cites the following exchange:
Q: So was
letter?
Charles
[Calkins]
refusing
to
write
any
A: No. We go on.
The next note I make is maybe as
simple as looking up at the product on the web on
Iguana’s website.
Bowen Dep. 193:5-9.
testimony,
Bowen’s
Read in the context of the surrounding
testimony
suggests
that
Calkins
said
that
mailing the letter to the suppliers could constitute tortious
interference and should therefore not be done but that a cease
and desist letter could be sent to Iguana if there was some
evidence of commercial sales.
Id. at 191:24-193:20.
Iguana
also cites another portion of Bowen’s deposition where Bowen
testified
that
he
assumed
the
Infringement
Letter
would
provided to MMI and that MMI would send it to Patriot.
213:21-215:8.
be
Id. at
Iguana also argues that Calkins determined that
“the letter could be supplied to Cobb who would surreptitiously
provide it to the suppliers.”
Pl.’s Statement of Material Facts
9
¶ 48, ECF No. 191.
There is, however, no evidence that Calkins
made any such determination.
either
Calkins
Infringement
or
Letter
provided to MMI.
Paul
to
MMI
There is also no evidence that
Lanham
or
intended
that
they
to
knew
provide
it
the
would
be
See Bowen Dep. 267:16-24 (stating that Bowen
never told Calkins that MMI might send the Infringement Letter
to Iguana’s suppliers).
Calkins sent the Infringement Letter to Iguana on behalf of
Bowen
and
Paul
Lanham.
Kilpatrick
Defs.’
Statement
of
Undisputed Material Facts Attach. 6, Calkins Decl. ¶¶ 20-22, ECF
No. 175-6.
It is undisputed that Calkins also forwarded copies
of the Infringement Letter to Bowen and to Paul Lanham through
Randall Lanham.
Iguana contends that “Bowen and Calkins engaged
in communications relating that Calkins was to supply a ‘.pdf’
version of the Infringement Letter to Bowen and [Randall] Lanham
who would then supply it to . . . MMI.”
Material
Facts
¶ 50,
ECF
No.
191.
Pl.’s Statement of
In
support
of
this
contention, Iguana cites an email from Calkins to Bowen and
Randall Lanham that states:
Scott/Randall
Attached please find a copy of our letter to Iguana
from this past December. My assistant is out today and
we [are] in the process of relocating our file room.
Thus, I could not locate the signed version to PDF. I
will forward it tomorrow morning.
To date, we have
not received a reply.
Charles
10
Pl.’s Statement of Material Facts Ex. 21, Email from C. Calkins
to S. Bowen (Jan. 7, 2008), ECF No. 191-22.
Nowhere in this
communication does Calkins state that he is supplying the letter
to his clients so that they may forward the letter to MMI.
Again, as discussed above, Calkins expressly advised Bowen and
Randall Lanham that it would not be appropriate to forward the
letter.
It is undisputed that after Bowen received a copy of the
Infringement
Letter
individuals.4
It
from
is
Calkins,
also
he
undisputed
forwarded
that
it
to
Randall
two
Lanham
forwarded the Infringement Letter to Cobb and that Cobb sent a
copy
of
the
suppliers.
Infringement
workers.
Infringement
Letter
to
Patriot
and
to
other
There is evidence that when Patriot received the
Letter,
it
halted
production
and
Powell Dep. 165:9-14, 169:25-170:11.
laid
off
some
ECF No. 218-1.
III. The Conspiracy Allegations
Iguana asserts that there was a conspiracy between Bowen,
Calkins,
Cobb,
Paul
Lanham,
Randall
Lanham
and
George
Smith
(“Smith”) of MMI to damage Iguana’s Automated Best Value System
(“ABVS”) score, which would harm Iguana’s business.
In support
of this assertion, Iguana points to a number of emails between
Cobb,
Smith
and
others
regarding
4
a
“Berry
Amendment”
fight
There is no evidence that either of these individuals—George Smith
and Barry Burge—forwarded the letter to Patriot.
11
concerning a 2005 military bednet contract awarded to Iguana,
emails
to
Iguana’s
suppliers
and
potential
suppliers
discouraging them from selling to Iguana, and emails from Cobb
to
various
third
parties
attaching
the
Infringement
Letter.
Pl.’s Statement of Material Facts Ex. 15, ECF No. 191-16.
The
emails do show that Cobb wanted to gain a competitive advantage
over Iguana by interfering with Iguana’s suppliers, and they
show that Smith and Randall Lanham were aware of Cobb’s plans
and goals.
Notably, however, neither Calkins nor Paul Lanham
was copied on any of these emails, and the emails do not support
the assertion that Calkins and Paul Lanham were engaged in any
conspiracy.
Iguana
also
contends
that
Bowen,
Calkins,
Cobb,
Paul
Lanham, Randall Lanham and Smith determined that an infringement
letter to Patriot—Iguana’s “cut and sew” supplier for bednets—
would
cause
Patriot
to
stop
production
and
therefore
cause
Iguana to delay shipping its products, thus damaging its ABVS
score and its business.
cites
a
number
of
In support of this contention, Iguana
emails,
some
of
which
lawyers contacting Patriot about Iguana.”
reference
“patent
Pl.’s Statement of
Material Facts Ex. 19 at MMI-DISC000509, ECF No. 191-19 at 5
(email between Cobb and Jeff Moody asking the status of patent
lawyers
“contacting
Patriot
about
Iguana”);
id.
at
MMI-
DISC000538, ECF No. 191-19 at 8 (email between Cobb, Bowen,
12
Smith
and
Randall
Lanham
suggesting
that
infringement
letter
should come from Charles Calkins); id. at MMI-DISC000702, ECF
No. 191-19 at 15 (same); id. at MMI-DISC000839, ECF No. 191-19
at 21 (email between Cobb and Smith discussing plans to “stomp
the
lizard”
and
forward
the
Infringement
Letter
to
Iguana’s
suppliers); id. at MMI-DISC000859, ECF No. 191-19 at 25 (email
from
Cobb
to
“Steve”
requesting
that
Steve
forward
the
Infringement Letter to Patriot but remove Cobb’s information).
Again, while the emails support the assertion that Bowen, Cobb,
Randall Lanham and Smith were engaged in a conspiracy to send an
Infringement Letter to Iguana’s suppliers, neither Calkins nor
Paul Lanham was copied on any of these emails, and the emails do
not support the assertion that Calkins and Paul Lanham were
engaged in any conspiracy.5
DISCUSSION
I.
Claims Against Paul Lanham and the Kilpatrick Defendants
Paul Lanham and the Kilpatrick Defendants contend that they
are entitled to summary judgment because: (1) Paul Lanham and
Calkins were privileged to send the Infringement Letter and (2)
neither Paul Lanham nor Charles Calkins “published” the letter,
5
As further evidence of the alleged conspiracy, Iguana pointed to
evidence that Calkins said he was going to contact a supplier called
Buzz Off.
Bowen Dep. 198:20-199:6.
Calkins did not say he would
contact Buzz Off regarding Iguana, however; he said he would contact
Buzz Off regarding MMI.
Id.
Thus, the evidence regarding Buzz Off
does not show that Calkins was part of a conspiracy to notify Iguana’s
suppliers of the alleged infringement.
13
and
their
actions
did
not
cause
Iguana
damages.
The
Court
addresses each issue in turn.
A.
Was the Infringement Letter Privileged?
Federal patent law “preempts state-law tort liability when
a
patentee
in
good
faith
infringement of its patent.”
communicates
allegations
of
Dominant Semiconductors Sdn. Bhd.
v. OSRAM GmbH, 524 F.3d 1254, 1260 & n.5 (Fed. Cir. 2008).
This
preemption also applies when an exclusive licensee of a patent
in good faith attempts to enforce its patent rights.
Zenith
Elecs. Corp. v. Exzec, Inc., 182 F.3d 1340, 1343 (Fed. Cir.
1999).
Therefore, if Paul Lanham is the exclusive licensee of
U.S. Re. ‘571 and Calkins in good faith communicated allegations
of infringement of that patent, then Iguana’s claims against
Calkins and Paul Lanham are preempted.
This preemption does not apply if the patent holder acted
in bad faith in the enforcement of its patent.
E.g., 800 Adept,
Inc. v. Murex Sec., LTD., 539 F.3d 1354, 1369 (Fed. Cir. 2008).
“This
‘bad
faith’
components.”
showing
Id. at 1370.
that
baseless.’”
standard
the
has
“The
and
subjective
“The objective component requires a
infringement
Id.
objective
allegations
subjective
are
component
‘objectively
relates
to
a
showing that the patentee in enforcing the patent demonstrated
subjective bad faith.”
subjective
component
Id.
unless
It is not necessary to reach the
there
14
is
showing
that
the
infringement
allegations
“Infringement
are
baseless.
are
allegations
objectively
objectively
baseless
Id.
if
‘no
reasonable litigant could realistically expect success on the
merits.’” Id. (quoting Prof'l Real Estate Investors, Inc. v.
Columbia Pictures Indus., Inc., 508 U.S. 49, 60 (1993)).
The Court finds that Iguana has not presented sufficient
evidence
to
create
a
genuine
fact
dispute
on
whether
the
infringement allegations in this case were objectively baseless.
First, there is no evidence that it was objectively baseless for
Calkins to conclude that Paul Lanham had the right to enforce
U.S.
Re.
‘571.
Calkins
reviewed
the
license
agreements
regarding the applicable patents, and he discussed them with
Paul
Lanham’s
personal
attorney.
Even
though
deposition
testimony taken years after Calkins sent the Infringement Letter
creates a genuine fact dispute as to whether the chain of title
reflected in the records Calkins reviewed was correct, Calkins
was not unreasonable in relying on those documents and on his
interview of Randall Lanham.
Based on that information, Calkins
was not unreasonable in concluding that Paul Lanham was the
exclusive
licensee
of
U.S.
Re.
‘571.
Second,
it
was
not
objectively baseless for Calkins to conclude that the correct
maintenance fees had been paid on the patents.
There is no
evidence that he knew of any license that was in effect and
would have required large entity fees, and there is no evidence
15
that he knew of any intentional misrepresentation on the part of
McLeese or the attorneys who prosecuted the patents.
Third, it
was not objectively baseless for Calkins to conclude that U.S.
Re.
‘571
could
be
construed
to
claim
a
self-erecting
structure made with one rod rather than two.6
tent
Furthermore, it
was not objectively baseless for Calkins to conclude, based on
his analysis of a bednet he believed to be structurally the same
as Iguana’s bednet, that Iguana’s bednet infringed U.S. ‘571.
Finally, it was not objectively baseless for Calkins to conclude
that the infringement was willful.7
For all of these reasons, the Court concludes that the
infringement
allegations
objectively baseless.
whether
faith.
Calkins
or
in
the
Infringement
Letter
were
not
Therefore, the Court need not determine
Paul
Lanham
demonstrated
subjective
bad
Because Calkins and Paul Lanham did not act in bad faith
in the enforcement of U.S. Re. ‘571, Iguana’s state law tort
claims against them are preempted, and Calkins and Paul Lanham
are entitled to summary judgment on these claims.
6
The Court is not suggesting that it will construe the claims of U.S.
Re. ‘571 as covering a structure comprised of loops made out of one
piece of wire.
The Court merely finds that it was not objectively
baseless for Calkins to make such a conclusion.
7
Given that it was not objectively baseless for Calkins to conclude
that the infringement was willful, the Court rejects Iguana’s argument
that the content of the Infringement Letter demonstrates as a matter
of law that it was intended only for Iguana’s suppliers, not Iguana,
so there “must have been” some ulterior motive.
16
B.
Did the Actions of Calkins and Paul Lanham Cause Harm?
Even if Calkins and Paul Lanham were not privileged to send
the
Infringement
judgment
because
“published” the
Letter,
they
there
still
entitled
insufficient
is
are
evidence
to
summary
that
they
letter, that they acted with malice or that
their actions caused Iguana harm.
To prevail on its defamation
claim,
Defendants
Iguana
must
prove
Infringement Letter.
that
“published”
the
This means that Iguana must prove that
there was an “unprivileged communication [of the Infringement
Letter] to a third party.”
Chaney v. Harrison & Lynam, LLC, 308
Ga. App. 808, 811, 708 S.E.2d 672, 676 (2011).
Iguana must also
prove
the
that
it
suffered
“actual
injury
from
statement.”8
Gettner v. Fitzgerald, 297 Ga. App. 258, 260, 677 S.E.2d 149,
153 (2009).
To prevail on its tortious interference claim,
Iguana must establish that Defendants took “improper action or
wrongful conduct . . . without privilege [and] . . . acted
purposely and with malice with the intent to injure” and that
the
tortious
conduct
“induced
a
breach
of
contractual
obligations” and “proximately caused damage” to Iguana.
Gordon
Document Prods., Inc. v. Serv. Techs., Inc., 308 Ga. App. 445,
449, 708 S.E.2d 48, 54 (2011).
8
Iguana must also prove that the Infringement Letter contained a false
defamatory statement and that Defendants were at least negligent in
making the publication.
Chaney, 308 Ga. App. at 811, 708 S.E.2d at
676.
17
As discussed above, the evidence establishes that Calkins
sent the Infringement Letter only to two clients: (1) Bowen, who
was Paul Lanham’s business associate, and (2) Paul Lanham via
his attorney Randall Lanham.
Without some evidence that Calkins
sent the letter to someone other than his client or reasonably
should
have
known
illegitimate
that
purpose,
the
no
letter
basis
would
exists
be
for
used
for
holding
some
Calkins
legally responsible simply because his letter was later used—
against his advice—for an illegitimate purpose.
Iguana
incredibly
suggests
that
it
was
unreasonable
for
Calkins to send his own client a copy of a letter that he had
written
on
behalf
of
that
client.
Iguana
speculates
that
Calkins provided the letter to MMI through Randall Lanham and
that he knew that the purpose of the letter was to frighten
Iguana’s suppliers.
The record, however, does not establish a
genuine fact dispute on this issue.
sent
the
letter
The mere fact that Calkins
his
clients
does
There
inference.
to
is
simply
no
not
create
evidence
an
that
adverse
Calkins
participated in sending the letter to Iguana’s suppliers.
the
contrary,
the
evidence
shows
that
Calkins
advised
To
his
clients not to send the letter to Iguana’s suppliers because
such
an
action
Nonetheless,
could
Iguana
asks
constitute
the
Court
tortious
to
interference.
find—without
any
supporting evidence—that a reasonable jury could conclude that
18
Calkins surreptitiously sent the letter to his client, knowing
that
it
would
be
forwarded
to
Iguana’s
suppliers,
and
fraudulently gave his client legal advice, which at the time he
knew would not be followed, for the sole purpose of creating an
alibi should his conduct ever be questioned.
While Calkins did
know that Bowen and Randall Lanham were initially interested in
sending the letter to Iguana’s suppliers, he also knew that he
had advised them that such a course would be inappropriate and
could result in a tortious interference claim.
Inferring from
these circumstances that Calkins conspired to send the letter to
Iguana’s suppliers requires a speculative leap that the law does
not permit.
Without some evidence that Calkins intended for the
Infringement
Letter
to
be
sent
to
Iguana’s
competitors,
the
Court cannot find that his actions—which consisted of drafting
the
letter
“publication”
and
of
sending
the
a
letter
copy
or
to
that
his
his
clients—constitute
actions
malice sufficient to impose liability upon him.
demonstrate
The Court also
finds no evidence that Calkins’s actions proximately caused any
harm to Iguana.
While the receipt of the letter by Iguana’s
supplier may have caused harm to Iguana, the sending of the
letter by Calkins to his client with instructions that it should
not be forwarded is too remotely connected to the ultimate harm
to be a legal cause of it.
For all of these reasons, the
19
Kilpatrick
Defendants
are
entitled
to
summary
judgment
on
Iguana’s state law tort claims.
Likewise,
There
is
no
Paul
Lanham
evidence
is
that
entitled
Paul
to
Lanham
summary
himself
judgment.
received
the
Infringement Letter, and there is no evidence that Paul Lanham
himself sent the Infringement Letter to anyone.
evidence
shows
that
his
attorney,
Randall
Rather, the
Lanham,
sent
letter to Cobb, who forwarded it to Iguana’s suppliers.
the
There
is no evidence that Paul Lanham expressly directed or authorized
Randall Lanham to send the Infringement Letter to MMI or to any
of Iguana’s suppliers.
Udofia,
223
Ga.
App.
See, e.g., First United Chuch, Inc. v.
849,
852,
479
S.E.2d
146,
150
(1996)
(noting that respondeat superior does not apply to utterences of
agents acting within scope of employment unless it affirmatively
appears that the agent was expressly directed or authorized to
slander the plaintiff).
Lanham
acted
with
There is also no evidence that Paul
malice.
Furthermore,
even
if
there
were
evidence that Paul Lanham authorized sending the letter to MMI
(which
there
is
not),
there
is
still
no
evidence
that
Paul
Lanham authorized or directed that the Infringement Letter be
sent to Patriot.
For all of these reasons, the Court cannot
find that Paul Lanham’s actions constitute “publication” of the
Infringement
Letter,
that
he
acted
20
with
malice
or
that
his
actions caused Iguana harm.
He is therefore entitled to summary
judgment on Iguana’s state law tort claims.
II.
Claims Against MMI Defendants
As discussed above, the MMI Defendants have been placed in
default as to the defamation and tortious interference claims
against
them.
They
shall
only
be
permitted
to
contest
the
amount of damages caused by the Infringement Letter being sent
to Iguana’s suppliers.
Iguana seeks the following elements of
damage:
incurred
(1)
penalties
due
to
Patriot’s
production
delays following Patriot’s receipt of the Infringement Letter,
(2) profits lost as a result of a 2008 contract for bednets
being
awarded
to
MMI
instead
of
Iguana,
(3)
damages
to
reputation and (4) punitive damages.
The MMI Defendants contend that Iguana is not entitled to
reputation damages or punitive damages on its defamation claim
because Iguana never sought a retraction of the Infringement
Letter
under
defamation
O.C.G.A. §
occurred
in
51-5-11.9
North
Iguana
Carolina,
and
responds
that
therefore,
the
North
Carolina law, which has no retraction requirement similar to
Georgia’s,
applies.
Pretermitting
whether
Georgia
or
North
Carolina law applies, the Court finds that the MMI Defendants
9
The retraction statute does not apply to Iguana’s tortious
interference claim, and Iguana’s failure to request a retraction does
not bar punitive damages on the tortious interference claim.
E.g.,
U.S. Micro Corp. v. Atlantix Global Sys., LLC, 278 Ga. App. 599, 60405, 630 S.E.2d 416, 421 (2006).
21
have waived their right to rely upon any requirement that is a
condition
them.
precedent
While the
for
the
Georgia
imposition
of
liability
against
retraction statute, if it applied,
could provide a defense to Iguana’s entitlement to reputation
damages and punitive damages if the MMI Defendants were not in
default, the Court has found that due to the MMI Defendants’
sanctionable conduct, they are in default and can only contest
the amount of damages.
To allow the MMI Defendants to avoid any
amount of damages for the defamation claim upon which they have
defaulted would eviscerate the substance of the sanction.
The
Court therefore finds that the MMI Defendants have waived any
right to rely upon the Georgia retraction requirement if it were
otherwise found to apply.
Accordingly, the Court denies the MMI
Defendants’ summary judgment motion and motion to strike as to
the
reputation
damages
and
punitive
also
contend
damages
on
Iguana’s
defamation claim.
The
MMI
Defendants
that
Iguana’s
special
damages claims are barred because Iguana did not make adequate
disclosures during discovery regarding the penalties or the lost
profits.
Iguana has until the pretrial conference on January 5,
2012 to establish that it made the required disclosures during
discovery.
At trial, Iguana will not be permitted to rely on
any evidence that it did not
adequately
discovery period.
22
disclose during the
CONCLUSION
For the reasons set forth above, the Kilpatrick Defendants’
summary judgment motion (ECF No. 175) is granted, as is Paul
Lanham’s
summary
judgment
motion
(ECF
No.
177).
The
MMI
Defendants’ summary judgment motion (ECF No. 169) and motion to
strike (ECF No. 244) are denied.
testimony
of
Samuel
Hewitt
(ECF
Iguana’s motion to exclude the
No.
181)
is
denied,
as
is
Iguana’s motion to exclude the testimony of William Needle (ECF
No. 182).
IT IS SO ORDERED, this 15th day of December, 2011.
S/Clay D. Land
CLAY D. LAND
UNITED STATES DISTRICT JUDGE
23
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