SME Steel Contractors et al v. Seismic Bracing et al
Filing
266
MEMORANDUM DECISION and Order. Defendants' First 161 Motion is GRANTED. Defendants' Second 195 Motion is GRANTED in part and DENIED in part. Plaintiffs' 196 Motion is DENIED. Signed by Judge Robert J. Shelby on 07/11/2023. (jl)
Case 2:17-cv-00702-RJS-DAO Document 266 Filed 07/11/23 PageID.7340 Page 1 of 70
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
SME STEEL CONTRACTORS, INC., a Utah
corporation; and CORE-BRACE, LLC, a
Utah limited liability company,
MEMORANDUM DECISION
AND ORDER
Plaintiffs,
Case No. 2:17-cv-00702-RJS-DAO
v.
Chief Judge Robert J. Shelby
SEISMIC BRACING COMPANY, LLC, a
Utah limited liability company; and
ANDREW J. HINCHMAN, an individual,
Magistrate Judge Daphne A. Oberg
Defendants.
Plaintiffs SME Steel Contractors, Inc. (SME) and Core-Brace, LLC (Core-Brace) are
business competitors with Defendants Seismic Bracing Company, LLC (SBC) and Andrew
Hinchman. All parties are involved in the design of buckling-restrained braces, which are
structural devices that help buildings withstand seismic activity. Plaintiffs filed suit against
Defendants, asserting claims for, among other things, false advertising, false association, patent
infringement, and copyright infringement. 1 Defendants counterclaimed. 2
Three motions are now before the court: (1) Defendants’ Motion for Partial Summary
Judgment on SME’s patent infringement claim (Defendants’ First Motion), 3 (2) Defendants’
Motion for Partial Summary Judgment on Plaintiffs’ other claims (Defendants’ Second Motion), 4
and (3) Plaintiffs’ Motion for Summary Judgment on Defendants’ Counterclaims (Plaintiffs’
1
Second Amended Complaint (ECF 63) at 9–20.
2
Defendants’ Answer, Affirmative Defenses, and Counterclaims (ECF 70) at 17–19.
3
Defendants’ Renewed Motion for Partial Summary Judgment (ECF 161).
4
Defendants’ Motion for Partial Summary Judgment (ECF 195).
1
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Motion). 5 For the reasons stated below, Defendants’ First Motion is GRANTED, Defendants’
Second Motion is GRANTED IN PART and DENIED IN PART, and Plaintiffs’ Motion is
DENIED.
BACKGROUND 6
Buckling-Restrained Braces
Buckling-restrained braces (BRBs) are “structural support members used in the
construction of large steel structures.” 7 The court previously summarized the purpose and
function of BRBs:
BRBs absorb seismic forces from earthquakes that would otherwise be exerted on
a structure through plastic deformation. When an earthquake occurs, the steel core
running through the middle of the BRB compresses or elongates without buckling.
To absorb the seismic forces without destroying the BRB, the steel core must be
free to move independently of the bracing element (i.e., the concrete-filled outer
steel frame). When manufacturing a BRB, the steel core must therefore be
prevented from bonding with the bracing element. This separation of steel core and
bracing element allows the steel core to absorb seismic energy from the ends of the
BRB without conveying that energy to the bracing element. 8
Plaintiffs’ Motion for Summary Judgment on Defendants’ Counterclaims (ECF 198 Sealed Version) (ECF 196
Public Version).
5
The following facts are material and unless otherwise indicated not in dispute. They are drawn from the parties’
summary judgment briefings and attached exhibits. Fed. R. Civ. P. 56(c)(1). When examining each motion for
summary judgment, the court views the evidence and draws all reasonable inferences in favor of the nonmoving
party. See United States v. Sup. Ct. of N.M., 839 F.3d 888, 906–07 (10th Cir. 2016) (“Where, as here, we are
presented with cross-motions for summary judgment, we must view each motion separately, in the light most
favorable to the non-moving party, and draw all reasonable inferences in that party’s favor.” (quotations omitted)).
Accordingly, the court recites the facts in the light most favorable to Defendants when discussing their
counterclaims, but otherwise recites the facts in the light most favorable to Plaintiffs.
6
Defendants’ Response to Plaintiffs’ Motion for Partial Summary Judgment (ECF 211 Sealed Version) (ECF 209
Public Version) ¶ 1.
7
8
Memorandum Decision and Order Construing Claims (ECF 126) at 3 (footnotes omitted).
2
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A BRB is depicted in Figure A, 9 which shows how the steel core fits within the buckling
restraining assembly. Both ends of the steel core can be seen protruding from either end of the
buckling restraining assembly. 10
Figure A
Although BRBs are increasingly being “used in new structural steel construction projects,
the BRB industry is still developing and might be considered a ‘niche product’ even within the
steel construction industry.” 11
The Parties
Core-Brace was founded in 2002 and has since designed, developed, manufactured,
tested, and marketed BRBs. 12 SME fabricates and erects structural steel, with fabrication
Figure A is reproduced from Figure 1 of the ’680 Patent. See Exhibit 1 to ECF 161: United States Patent No.
7,174,680 (ECF 161-2) at 4.
9
10
See id. at 12.
11
Declaration of Dieter Klohn in Support of Plaintiff Core-Brace, LLC’s Renewed Consolidated Motion for
Temporary Restraining Order and Preliminary Injunction (ECF 19) ¶ 13.
12
ECF 211 ¶ 3.
3
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facilities in Utah and Idaho. 13 SME is also the owner by assignment of U.S. Patent No.
7,174,680 (’680 Patent), which is a patent for an improved BRB. 14 Core-Brace and SME are
owned by the same parent company. 15
Hinchman worked for SME as a chief engineer until he resigned sometime in 2010 or
2011. 16 In 2016, Hinchman registered SBC as a limited liability company in Utah and through
SBC, “began marketing BRBs and bidding [on] structural steel design jobs incorporating BRB
technology.” 17
Both Core-Brace and SBC market and sell their BRBs by bidding on projects, and they
have submitted bids for the same projects. 18
SME’s BRB Testing & Design Manual
Hinchman asked the University of Utah to evaluate and test five of SME’s BRBs. 19 In
July 2016, the University issued a report concluding two of the five BRBs did not satisfy
American Institute of Steel Construction (AISC) 341-10 requirements. 20 The report stated,
“Further development is required for improving these two BRB types.” 21
13
Id. ¶ 4.
14
ECF 63 ¶ 13; see generally ECF 161-2.
15
ECF 211 ¶ 4.
16
Plaintiff SME Steel Contractors, Inc.’s Opposition to Defendants’ Renewed Motion for Partial Summary
Judgment (ECF 170 Sealed Version) (ECF 168 Public Version) at 4 (Plaintiffs acknowledging Hinchman was “chief
engineer at SME”). The parties dispute what year Hinchman resigned, but that fact is not material. Compare
Plaintiffs’ Opposition to [Defendants’] Motion for Summary Judgment (ECF 218 Sealed Version) (ECF 216 Public
Version) ¶ 10 (Plaintiffs alleging Hinchman resigned in 2011), with Declaration of Andrew Hinchman (ECF 27) ¶ 6
(Hinchman stating he resigned in 2010).
17
ECF 211 ¶¶ 12–13.
ECF 195 at 11; ECF 218 at 12–13, 31–32; Defendants’ Reply in Support of Defendants’ Motion for Partial
Summary Judgment (ECF 226) at 10.
18
19
ECF 211 ¶ 15.
20
Id. ¶¶ 16, 22; see also ECF 63 ¶ 11; Exhibit 12 to ECF 216: SBC Design Manual (ECF 216-11) at 27.
21
ECF 211 ¶ 22.
4
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In March 2017, SBC sent a ninety-page document titled “Design Manual” to at least six
prospective clients. 22 The Design Manual was part of SBC’s marketing and promotional efforts,
and it included sections on SBC’s engineering experience, projects, testing reports, and BRB
design. 23 Relevant to this case, the Design Manual included the following statements:
•
“These patented methods have now been tested and qualified for use on projects in
accordance with governing building codes (AISC 341).” 24
•
“Our team has over 16 years of experience in R&D, testing, designing, engineering
and manufacturing Buckling-Restrained Brace (BRB).” 25
•
“We have been [] trend setters in the industry, helping develop numerous methods for
connecting BRBs and streamlining production processes.” 26
•
“SBC’s team has been involved in projects world-wide including the following
highlights:
•
•
Intermountain Medical Center, Murray UT, 646 BRBs
•
Marriott Library Retrofit, Univ. of UT, 128 AESS BRBs
•
World market Center, Las Vegas, NV, 596 BRBs
•
West Emergency Wing, Univ. of UT Hospital, 200+ BRBs
•
Bioengineering Lab, UCSF, 101 BRBs
•
Los Angeles Police HQ, 182 BRBs.” 27
“Our team has experience in manufacturing over ten thousand BRBs for over 100
projects.” 28
22
ECF 27 ¶¶ 20–21; Exhibit 11 to ECF 218: Deposition of Andrew James Hinchman (ECF 218-2) at 82:10–83:15;
see also ECF 216-11.
23
See ECF 216-11 at 4, 26–68, 77–91.
Id. at 4. It is not clear what “patented methods” the Design Manual is referring to, as it mentions one patent
Hinchman co-invented and two patents he solely invented and owns. See id.
24
25
Id.
26
Id.
27
Id.
28
Id.
5
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•
SBC “[c]apabilities” include the “[p]roduce capacity of over 5000 BRBs per year.” 29
The Design Manual also included several technical drawings of BRBs. 30
Core-Brace’s Copyrighted Drawings
On June 27, 2017, Core-Brace filed three copyright registrations with the U.S. Copyright
Office. 31 Each registration claims a 2010 creation date and seeks to protect “technical
drawing[s]” associated with Core-Brace’s BRB designs. 32 The first drawing is titled “BRB &
Connection Layouts” and assigned number VAu001279857 (’857 Registration). 33 The second
drawing is titled “Typical Bolted BRB & Connection Layouts” and assigned number
VAu001279859 (’859 Registration). 34 Finally, the third drawing is titled “Typical Welded BRB
& Connection Layouts” and assigned number VAu001279862 (’862 Registration). 35
SBC’s Design Manual included “technical drawings that are either identical to or nearly
identical to the technical drawings found in the ’857 Registration, ’862 Registration, and/or the
’859 Registration.” 36
29
Id. at 6.
30
Id. at 78–83.
Copyright No. VAu001279857 (ECF 216-8) at 2; Copyright No. VAu001279859 (ECF 216-6) at 2; Copyright No.
VAu001279862 (ECF 216-2) at 2.
31
ECF 216-8 at 2; ECF 216-6 at 2; ECF 216-2 at 2. The parties purport to dispute what each drawing depicts.
Compare ECF 195 ¶¶ 1–3, with ECF 218 at 7–12. However, their disagreements amount to legal argument about
whether the drawings reflect creative and artistic choices, not genuine disputes about what the drawings depict. See
ECF 218 at 7–12. Accordingly, the court will recite the title of each drawing, rather than the parties’ descriptions.
32
33
ECF 216-8 at 2.
34
ECF 216-6 at 2.
35
ECF 216-2 at 2.
36
ECF 218 ¶ 12.
6
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Plaintiffs’ Complaint & TRO Motion
On June 28, 2017, Plaintiffs initiated this action against Defendants. 37 In their
Complaint, Plaintiffs asserted, among other things, Defendants infringed on SBC’s patents, the
Design Manual was false advertising, and the Design Manual improperly used Core-Brace’s
materials and intellectual property. 38
The following day, Core-Brace filed a Motion for Temporary Restraining Order and
Preliminary Injunction (TRO Motion). 39 In the TRO Motion, Core-Brace asked the court to
“temporarily and preliminarily enjoin[] SBC from further marketing or selling of BRBs” and to
enjoin SBC “from any future use of Core-Brace’s materials.” 40 Core-Brace also asked the court
to compel SBC to identify its customers and “distribute corrective information.” 41
Plaintiffs’ Letters
In July 2017, Plaintiffs sent identical letters to three different companies Defendants were
in contact with. 42 One of the companies was “a steel fabricator who had contracted with [] SBC
for the production of BRBs,” another “was a general contractor who presumably hired the steel
fabricator, and the third was the owner of the project.” 43
Complaint (ECF 2). On July 7, 2017, Plaintiffs filed an Amended Complaint. First Amended Complaint (ECF
16).
37
38
ECF 2 ¶¶ 48–101.
39
Plaintiff Core-Brace, LLC’s Consolidated Motion for Temporary Restraining Order and Preliminary Injunction
(ECF 6); see also Plaintiff Core-Brace, LLC’s Renewed Consolidated Motion for Temporary Restraining Order and
Preliminary Injunction (ECF 18).
40
ECF 6 at 5.
Id. The court ultimately denied Plaintiffs’ TRO Motion. July 25, 2017 Minute Entry (ECF 34). But per the
parties’ stipulation, the court ordered Defendants not to use certain images and to provide corrective notice to
individuals or organizations to whom it sent the images. Stipulation (ECF 38).
41
42
ECF 211 ¶ 30; see also Exhibit 12 to ECF 196: July 5, 2017 Letters (ECF 196-8).
43
ECF 70 ¶ 24; ECF 211 ¶ 30.
7
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The letters included the name and case number of the present lawsuit and listed the
claims Core-Brace asserted against Defendants. 44 The letter also explained there was a pending
TRO Motion. 45 To the letters, Plaintiffs attached a copy of the Complaint, the TRO Motion, and
a declaration filed in support of the TRO Motion. 46
Plaintiffs’ Second Amended Complaint
Also in July 2017, Defendants filed a Motion to Dismiss,47 which the court granted in
part and denied in part. 48 The dismissals were without prejudice, 49 and Plaintiffs filed their
Second Amended Complaint on May 10, 2018. 50 In the Complaint, Plaintiffs asserted the
following claims against Defendants:
•
“False Advertising Under 15 U.S.C. § 1125(a)(1)(B)” – asserted by Core-Brace 51
•
“False Association Under 15 U.S.C. § 1125(a)(1)(A)” – asserted by Core-Brace 52
•
“Utah Deceptive Trade Practice – U.C.A. § 13-11A-3” – asserted by Core-Brace 53
44
ECF 196-8 at 2.
45
Id.
46
Id.; ECF 218 at 17.
47
Defendants’ Motion to Dismiss Claims 1–8 for Failure to State a Claim Pursuant to FRCP 12(b)(6) and
Incorporated Memorandum (ECF 33).
48
Apr. 26, 2018 Minute Entry (ECF 58).
49
Id.
50
ECF 63. From now on, when the court refers to the Complaint, it is referring to the Second Amended Complaint
filed on May 10, 2018.
51
Id. ¶¶ 57–64.
52
Id. ¶¶ 65–76.
53
Id. ¶¶ 77–90.
8
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•
“Infringement of United States Patent No. 7,174,680” – asserted by SME 54
•
“Unfair Competition – U.C.A. § 13-5a-103” – asserted by SME 55
•
“Intentional Interference with Economic Relations” – asserted by SME and CoreBrace 56
•
“Copyright Infringement Under 17 U.S.C. § 101 et seq.” – asserted by Core-Brace 57
•
“Defamation” – asserted by SME and Core-Brace 58
Defendants’ Counterclaims
Defendants filed their Answer on May 24, 2018, which included three counterclaims:
“Defamation per se,” “Utah Deceptive Trade Practice – U.C.A. § 13-11A-3(h),” and “Intentional
Interference with Economic Relations.” 59 Each counterclaim is based on the letters Plaintiffs
sent to the companies Defendants were in contact with. 60 More specifically, the counterclaims
are based on statements from the Complaint and TRO Motion, which were attached to the
letters. 61
Id. ¶¶ 91–98. Plaintiffs initially brought two patent infringement claims—one based on the ’680 Patent, and one
based on U.S. Patent No. 7,305,799 (’799 Patent). See id. at 14–16. But in its Final Infringement Contentions, SME
Steel noted it was no longer arguing Defendants infringed the ’799 Patent. Plaintiff SME Steel Contractor, Inc.’s
LPR 3.1 Final Infringement Contentions (ECF 78-1) at 3 n.2. And in their First Motion, Defendants assert that only
the claim based on the ’680 Patent remains. ECF 161 at 1. Plaintiffs do not challenge that assertion. See generally
ECF 170. Given SME’s footnote in the Final Infringement Contentions and lack of response to Defendants’
assertion, the court concludes SME consented to dismissal without prejudice of its claim based on the ’799 Patent.
See ECF 63 ¶¶ 99–106.
54
55
ECF 63 ¶¶107–11.
56
Id. ¶¶ 112–19.
57
Id. ¶¶ 120–34.
58
Id. ¶¶ 135–38.
59
ECF 70 ¶¶ 26–47.
60
Id.
61
See id.; see also ECF 211 ¶ 32 (listing the allegedly “false and actionable” statements from the Complaint and
TRO Motion).
9
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Claim Construction
Plaintiffs assert Defendants’ BRB design infringes on independent claims 1, 3, 4, 9, 11,
18, 26, and 27 of the ’680 Patent. 62 On March 15, 2019, both parties filed Cross-Motions for
Claim Construction.63 The parties asked the court to construe four disputed terms: “bearing
member,” “air gap,” “formed between,” and “positioned between.” 64 Except for Claim 27,
Claim 1 is representative of how the terms are used in the allegedly infringed claims:
at least two separate bearing members each of which is interposed between the rigid
layer and the core member so that one side of the bearing member is in direct
contact with the rigid layer, and an opposite side of the bearing member is not in
direct contact with the core member such that an air gap is formed between the core
member and the bearing members . . . . 65
Unlike the other claims, Claim 27 uses “positioned between” instead of “formed
between”:
a plurality of bearing members interposed between the rigid layer and the core
member wherein a first bearing member is positioned adjacent to a core member
first side and a second bearing member is positioned adjacent a core member second
side, such that an air gap is positioned between the first bearing member and the
core member first side and an air gap is positioned between the second bearing
member and the core member second side, one side of each bearing member is in
direct contact with the rigid layer. 66
The relative positioning of the bearing members, core member, and air gap as described in the
’680 Patent is depicted in Figure B 67:
62
ECF 170 at 6.
Plaintiff SME Steel Contractors, Inc.’s Opening Cross-Motion for Claim Construction (ECF 76); Defendants’
Motion for Claim Construction of U.S. Patent No. 7,174,680 Pursuant to DU LPR 4.2(a) (ECF 83).
63
64
ECF 76 at 19; ECF 83 at 1; Local Patent Rule 4.2(f) Joint Status Report Regarding Claim Construction Hearing
(ECF 98) at 2.
65
ECF 161-2 at 16–18 (emphasis added).
66
Id. at 18 (emphasis added).
67
Figure B is an annotated version of Figure 3 from the ’680 Patent. Id. at 6.
10
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Figure B
Defendants allege their BRBs have “corrugated cardboard positioned between a steel
core and the buckling restraining assembly.” 68 SME disputes this allegation and “contends that
the outmost layer of the corrugated cardboard used by [Defendants] is a bearing member . . . and,
therefore, is a part of the ‘buckling restraining assembly’ in the context of the ’680 Patent.” 69
But “SME does not dispute that all the BRBs that the Defendants have made to date use
corrugated cardboard that is positioned between the steel core and the concrete.” 70 Accordingly,
for summary judgment purposes, it is undisputed that Defendants’ BRBs have corrugated
cardboard positioned between the core member and the concrete. To the extent the parties’
disagreements go to whether Defendants’ BRBs infringe on the ’680 Patent, those are legal
arguments the court will address in its analysis.
68
ECF 161 ¶ 5.
69
ECF 170 ¶ 5.
70
Id. (emphasis omitted).
11
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On November 15, 2019, the court held a Markman hearing 71 to consider the parties’
Cross-Motions. 72 In March 2020, it issued a written order construing the four disputed terms as
follows:
•
“bearing member”: “an object or surface, constructed of a hard and durable material,
that supports” 73
•
“air gap”: “an empty or unfilled space or interval” 74
•
“positioned between” and “formed between”: “spans the distance between” 75
SME filed a Motion for Reconsideration, asking the court to reconsider its construction of
the terms “positioned between” and “formed between.” 76 The court denied the Motion for
Reconsideration. 77
Motions for Summary Judgment
Now before the court are three motions for summary judgment, two from Defendants and
one from Plaintiffs. Defendants’ First Motion seeks summary judgment on Plaintiffs’ patent
infringement claim. 78 Defendants’ Second Motion seeks summary judgment on Plaintiffs’ other
See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (“An infringement
analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be
infringed. The second step is comparing the properly construed claims to the device accused of infringing.”
(citations omitted)), aff’d, 517 U.S. 370 (1996); see also EMI Grp. N. Am., Inc. v. Intel Corp., 157 F.3d 887, 891–92
(Fed. Cir. 1998) (“Construction of the claims by the trial court is often conducted upon a preliminary evidentiary
hearing, called a Markman hearing . . . .”).
71
72
Nov. 15, 2019 Minute Entry (ECF 125).
73
ECF 126 at 9.
74
Id. at 9.
Id. at 16. The parties stipulated to the court’s definition of “bearing member,” and the court adopted Plaintiffs’
proposed definition of “air gap,” which Defendants did not object to at the Markman hearing. Id. at 9. The court
then engaged in a lengthy construction analysis to develop its construction of “formed between” and “positioned
between,” ultimately adopting Defendants’ proposed construction for the reasons stated in the Order. Id. at 9–16.
75
76
Motion for Reconsideration of Memorandum Decision and Order Construing Claims (ECF 128) at 1.
77
Memorandum Decision and Order Denying Plaintiff’s Motion for Reconsideration (ECF 139).
78
ECF 161.
12
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claims. 79 Similarly, Plaintiffs’ Motion seeks summary judgment on all Defendants’
counterclaims. 80
On March 10, 2022, and following full briefing, the court held a hearing on all three
summary judgment motions as well as three evidentiary motions. 81 At the hearing, the court
ordered the parties to submit supplemental briefing regarding Defendants’ counterclaims. 82 On
April 8, 2022, the court ordered additional supplemental briefing regarding Plaintiffs’ Lanham
Act claims. 83 After considering the parties’ arguments presented in the Motions, at oral
argument, and in the supplemental briefing, the court issues the following decision.
LEGAL STANDARDS
Summary judgment is appropriate when “there is no genuine dispute as to any material
fact” and the moving party is “entitled to judgment as a matter of law.” 84 A fact is material if it
“might affect the outcome of the suit under the governing law.” 85 A dispute is genuine “if the
evidence is such that a reasonable jury could return a verdict for the nonmoving party.” 86
“[T]he moving party carries the burden of showing beyond a reasonable doubt that it is
entitled to summary judgment.” 87 And even if it “does not have the ultimate burden of
persuasion at trial, it has both the initial burden of production . . . and the burden of establishing
that summary judgment is appropriate as a matter of law.” 88 The moving party may carry its
79
ECF 195.
80
ECF 196; ECF 198.
81
Mar. 10, 2022 Minute Order (ECF 242). The court ruled on the evidentiary motions at the hearing. Id.
82
Id.
83
Order for Supplemental Briefing (ECF 248).
84
Fed. R. Civ. P. 56(a).
85
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
86
Id.
87
Pelt v. Utah, 539 F.3d 1271, 1280 (10th Cir. 2008) (quotation simplified).
88
Trainor v. Apollo Metal Specialties, Inc., 318 F.3d 976, 979 (10th Cir. 2002).
13
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burden “either by producing affirmative evidence negating an essential element of the
nonmoving party’s claim, or by showing that the nonmoving party does not have enough
evidence to carry its burden of persuasion at trial.” 89
If the moving party carries its burden, then “the non-moving party [must] set forth
specific facts showing there is a genuine issue for trial.” 90 But if the moving party does not carry
its burden, “the nonmoving party has no obligation to produce anything, even if [it] would have
the ultimate burden of persuasion at trial.” 91
A court considering a motion for summary judgment must “view the evidence and make
all reasonable inferences in the light most favorable to the nonmoving party.” 92 In doing so, the
court’s “function is not [itself] to weigh the evidence and determine the truth of the matter but to
determine whether there is a genuine issue for trial.” 93 “Credibility determinations, the weighing
of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not
those of a judge.” 94 Nonetheless, the court “must view the evidence presented through the prism
of the substantive evidentiary burden.” 95
ANALYSIS
I.
Defendants’ First Motion
Defendants request summary judgment on SME’s patent infringement claim. 96 When a
defendant asserts noninfringement, as Defendants do here, summary judgment is proper “when
89
Id.
90
Id.
91
Id. (quoting Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102–03 (9th Cir. 2000)).
92
N. Nat. Gas Co. v. Nash Oil & Gas, Inc., 526 F.3d 626, 629 (10th Cir. 2008).
93
Liberty Lobby, 477 U.S. at 249.
94
Id. at 255.
95
Id. at 254.
96
See generally ECF 161.
14
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no reasonable jury could find that every limitation in a properly construed claim is found in the
accused device either literally or under the doctrine of equivalents.” 97 For the reasons explained
below, the court concludes SME has not sufficiently shown infringement either literally or under
the doctrine of equivalents.
A. SME has not shown literal infringement.
“To show literal infringement of a patent, a patentee must supply sufficient evidence to
prove that the accused product or process meets every element or limitation of a claim.” 98 The
accused product or process must match the claim limitations “exactly.” 99 SME has not shown
literal infringement because Defendants’ BRB does not literally include “an air gap” that “spans
the distance between” the core member and bearing member.
The patent claims include a limitation requiring there to be multiple bearing members
(the bearing member limitation). 100 The patent claims also include a limitation that there is “an
air gap” “formed between” or “positioned between” the core member and the bearing member
(the air gap limitation). 101 The court construed “air gap” to mean “an empty or unfilled space or
interval” and “formed between” and “positioned between” to both mean “spans the distance
between.” 102 Accordingly, “an empty or unfilled space or interval” must “span[] the distance
between” the bearing member and core member.
97
Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed. Cir. 2015).
Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Courts use “both the term ‘element’
and the term ‘limitation’ to refer to words in a claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234
F.3d 558, 563 n.1 (Fed. Cir. 2000), overruled on other grounds by 535 U.S. 722 (2002). The Federal Circuit noted it
is “preferable to use the term ‘limitation’ when referring to claim language and the term ‘element’ when referring to
the accused device.” Id. The court will follow that guidance, but it will not alter quoted material to comply.
Accordingly, this order uses both “limitation” and “element” to refer to words in the claims.
98
99
Advanced Steel Recovery, 808 F.3d at 1319 (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570,
1575 (Fed. Cir. 1995)).
100
ECF 161-2 at 16–18.
101
Id.
102
ECF 126 at 9, 16.
15
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Given these definitions, Defendants argue no reasonable jury could find literal
infringement because their BRB has corrugated cardboard and not “an empty or unfilled space or
interval.” 103 The court agrees. Even assuming the top layer of the cardboard is a bearing
member, there is still a corrugated middle layer and a bottom layer between the bearing member
and the core member. Accordingly, there is not “an empty or unfilled space or interval” that
“spans the distance between” the bearing member and core member, because that space contains
at least two layers of the cardboard.
In response, SME argues the corrugated cardboard creates “a plurality of empty
spaces” 104 and whether those spaces “span[] the distance between” the bearing member and core
member “is a factual question that cannot be resolved on summary judgment.” 105 SME is correct
that infringement is a question of fact, but that does not preclude summary judgment. 106 A
district court may resolve infringement on summary judgment if “no genuine factual issue
remains.” 107 Here, even assuming “a plurality of empty spaces” qualifies as “an air gap,” there
is no genuine factual issue because no reasonable jury could find that those empty spaces “span[]
the distance between” the bearing member and core member. At most, those empty spaces span
the distance between the bearing member and another layer of the cardboard.
For these reasons, the court concludes SME has not shown the accused product literally
meets the “air gap” limitation. And because literal infringement requires a showing that the
accused product meets every limitation, 108 SME has not shown literal infringement.
103
ECF 161 at 14.
104
ECF 170 at 29.
105
Id. at 31.
106
Electro Sci. Indus., Inc. v. Dynamic Details, Inc., 307 F.3d 1343, 1347 (Fed. Cir. 2002).
107
Id.
108
See Rohm & Haas Co., 127 F.3d at 1092.
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Accordingly, the court does not address the parties’ additional arguments about whether the
accused product literally meets the bearing member limitation.
B. SME has not shown infringement under the doctrine of equivalents.
Under the doctrine of equivalents, “a product or process that does not literally infringe
upon the express terms of a patent claim may nonetheless be found to infringe if there is
‘equivalence’ between the elements of the accused product or process and the claimed elements
of the patented invention.” 109 Equivalence exists “if two devices do the same work in
substantially the same way, and accomplish substantially the same result.” 110 Importantly, a
doctrine-of-equivalents analysis should be applied “on an element-by-element basis” 111 and “not
to the invention as a whole.” 112 This is because “[e]ach element contained in a patent claim is
deemed material to defining the scope of the patented invention.” 113
SME argues there is a genuine dispute of material fact concerning whether “air gaps”
created by the cardboard are equivalent to an air gap that spans the distance between the bearing
member and core member. 114 SME asserts they are equivalent because the air gaps “achieve
substantially the same function (e.g., preventing bonding), in substantially the same way (e.g., by
creating a physical void) to achieve substantially the same [result] (e.g., a properly sized air gap
that prevents bonding while maintaining the integrity of the BRB).” 115
109
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997).
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (quoting Union Paper-Bag Mach.
Co. v. Murphy, 97 U.S. 120, 125 (1877)).
110
111
Warner-Jenkinson, 520 U.S. at 40.
112
Id. at 29.
113
Id.
114
ECF 170 at 30–36.
115
Id. at 36.
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Defendants contend prosecution history estoppel bars SME from invoking these
equivalents. 116 Prosecution history estoppel “limits the broad application of the doctrine of
equivalents by barring an equivalents argument for subject matter relinquished when a patent is
narrowed during prosecution.” 117 There are two types of prosecution history estoppel:
amendment-based estoppel and argument-based estoppel. 118 Defendants argue both apply. 119
The court first addresses amendment-based estoppel and then argument-based estoppel.
The court limits its analysis to the air gap limitation and concludes both doctrines bar SME’s
equivalents arguments with respect to the air gap limitation. The court then explains that
Defendants are entitled to summary judgment on SME’s patent infringement claim and why it
need not resolve the parties’ arguments about the bearing member limitation.
1. Amendment-Based Estoppel
Under amendment-based estoppel, a “patentee who narrows a claim as a condition for
obtaining a patent disavows his claim to the broader subject matter.” 120 The patentee has the
burden of establishing the amendment “had a purpose unrelated to patentability.” 121 If the
patentee provides an explanation for the amendment, the court should consider it. 122 But if the
patentee gives no explanation, “the court should presume that the patent applicant had a
substantial reason related to patentability for including the limiting element added by
116
ECF 161 at 16–17.
117
Conoco, Inc. v. Energy & Env’t Int’l, L.C., 460 F.3d 1349, 1363 (Fed. Cir. 2006).
118
Id.
119
ECF 161 at 16.
120
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 737 (2002).
Warner-Jenkinson, 520 U.S. at 40; see also id. at 33 (placing “the burden on the patent holder to establish the
reason for an amendment required during patent prosecution”).
121
122
See id. at 33.
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amendment.” 123 “In those circumstances, prosecution history estoppel would bar the application
of the doctrine of equivalents as to that element.” 124
But even if amendment-based estoppel applies, the court should still consider “what
equivalents were surrendered.” 125 An equivalent may not have been surrendered if the
equivalent was “unforeseeable at the time of application,” the rationale underlying the
amendment bears “no more than a tangential relation to the equivalent in question,” or some
other reason suggests “that the patentee could not reasonably be expected to have described the
insubstantial substitute in question.” 126 Importantly, the patentee bears “the burden of showing
that the amendment does not surrender the particular equivalent in question.” 127
SME argues the air gaps created by Defendants’ cardboard are the equivalent of an air
gap that spans the distance between the bearing member and core member. 128 Defendants
contend SME is estopped from making this argument because in August 2006, SME amended its
claims to include the limitations “such that an air gap is formed between the rigid layer and the
bearing member” and “such that an air gap is formed between the core member and the bearing
member.” 129 Defendants argue that when SME made the amendment, it “surrendered subject
matter that does not include an air gap that spans the distance between the core member and the
bearing member.” 130
123
Id.
124
Id.
125
Festo Corp., 535 U.S. at 738.
126
Id. at 740–41.
127
Id. at 740.
128
ECF 170 at 30–36.
129
ECF 161 at 16 (quoting Claim Construction Joint Appendix (ECF 79-1) at 65–70).
130
Id.
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SME does not respond to this estoppel argument. 131 Accordingly, SME has not shown
that the amendment was unrelated to patentability. 132 SME also does not counter Defendants’
contention that its amendment surrendered the equivalent it asserts. So SME has not shown that
the amendment does “not surrender the particular equivalent in question.” 133 SME’s amendment
thus bars any argument that the air gap need not span the distance between the bearing member
and core member.
2. Argument-Based Estoppel
A patentee’s arguments to the patent examiner may also surrender equivalents. 134 “To
invoke argument-based estoppel, however, ‘the prosecution history must evince a clear and
unmistakable surrender of subject matter.’” 135 Consequently, courts do not “presume a
patentee’s arguments to surrender an entire field of equivalents through simple arguments and
explanations to the patent examiner.” 136 And the relevant inquiry is “whether a competitor
would reasonably believe that the applicant had surrendered the relevant subject matter.” 137
Defendants contend SME’s arguments to the patent examiner estop it from now arguing
the air gaps created by cardboard are equivalent to the air gap in SME’s BRBs. 138 They point
131
See ECF 170 at 29–36.
132
See Warner-Jenkinson, 520 U.S. at 33; see also ECF 79-1 at 72 (“[I]t was agreed that the claims would be
amended as set forth above and that such amendments would overcome the prior art of reference.”).
133
See Festo Corp., 535 U.S. at 740.
134
Conoco, 460 F.3d at 1363.
135
Id. at 1364 (quoting Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1326
(Fed. Cir. 2003)).
136
Id.
Id. (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed. Cir. 1998) (en banc), abrogated on other
grounds by Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015)).
137
138
ECF 161 at 16–17.
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out that the examiner initially rejected SME’s claims because prior art, 139 Takeuchi, taught “the
use of an adhesion-preventive film placed between the concrete and the steel center member.” 140
In response to Takeuchi, SME successfully argued the following:
Takeuchi fails to teach or suggest the use of an air gap between the core member
and the buckling restraining assembly to prevent bonding of the assembly to one or
more portions of the core member. . . . Takeuchi teaches the use of an adhesionpreventive film to serve the purpose of preventing the steel center member from
adhering to the concrete. Therefore, there is no motivation to incorporate an air gap
into Takeuchi in order to accomplish the same purpose. Indeed, the use of an air
gap would defeat the purpose of the adhesion-preventive film. 141
Defendants assert this argument clearly and unmistakably surrendered “any subject matter
between the core member and the buckling restraining assembly beyond air.” 142
The court has already given credence to a similar assertion, recognizing in its Claim
Construction Order that “[f]or the air gap to serve the distinguishing function [SME] describes,
that gap must span from the bearing member to the core member. Were it not so, some other
intervening material would then serve to separate the bearing member and core member (and
thus prevent bonding), which—as [SME] argued to the examiner—would ‘defeat the purpose’ of
the air gap.” 143 In view of the arguments SME made to the examiner, SME clearly and
unmistakably surrendered material other than “an empty or unfilled space or interval” serving as
an air gap.
Prior art is the documents or references used to determine whether a person of ordinary skill could make the
invention. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (“Although published subject matter is ‘prior art’
for all that it discloses, in order to render an invention unpatentable for obviousness, the prior art must enable a
person of ordinary skill to make and use the invention.”).
139
140
ECF 161 at 16–17; Exhibit 7 to ECF 168: Amendment and Response to Office Action (168-6) at 11.
141
ECF 161 at 16–17 (quoting ECF 168-6 at 12).
142
Id. at 17.
143
ECF 126 at 15; see also ECF 139 at 15.
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SME does not directly respond to this contention, but it argues the ’680 Patent teaches
using an air gap that does not span the entire distance “between the ‘bearing member’ retaining
the cementious material . . . and the core member.” 144 In support, it cites Figure 4 from the ’680
Patent, 145 which depicts a BRB with multiple bearing members and air gaps:
Figure 4 from the ’680 Patent
Annotated Figure 4 from the
’680 Patent
SME’s argument is unpersuasive because Figure 4 still depicts an air gap that spans the distance
between the bearing member and core member, as required by the limitation. So even if the ’680
Patent teaches of an embodiment where the air gap does not span the entire distance from the
core member to the bearing member retaining the cementious material, it does not teach of an
embodiment where the air gap does not span the entire distance between the bearing member and
core member.
For this additional reason, SME is estopped from using the doctrine of equivalents to
argue Defendants’ BRBs infringe on the air gap limitation.
144
ECF 170 at 35.
145
Id.
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3. The Bearing Member Limitation
Defendants also argue no reasonable jury could conclude their BRBs contain the
equivalent of “bearing members.” 146 SME disagrees. 147 But it is unnecessary to resolve this
disagreement because even if there is a genuine dispute of material fact concerning the bearing
member limitation, there is no genuine dispute concerning the air gap limitation. As explained,
summary judgment on an infringement claim is proper “when no reasonable jury could find that
every limitation in a properly construed claim is found in the accused device either literally or
under the doctrine of equivalents.” 148 Because no reasonable jury could find that the air gap
limitation is found in Defendants’ BRBs—either literally or under the doctrine of equivalents—
the court need not address the bearing member limitation and concludes Defendants are entitled
to summary judgment on SME’s patent infringement claim. 149
II.
Defendants’ Second Motion
In their Second Motion, Defendants move for summary judgment on all Plaintiffs’ nonpatent claims. 150 The court addresses each claim in turn.
A. False Advertising and False Association Claims
Core-Brace asserts two causes of action under the Lanham Act: false advertising under
15 U.S.C. § 1125(a)(1)(B) and false association under 15 U.S.C. § 1125(a)(1)(A). 151 These
claims are based on alleged misrepresentations in SBC’s Design Manual and proposal
ECF 161 at 10–14; see also Defendants’ Reply to Plaintiff’s Response to Defendants’ Partial Motion for
Summary Judgment (ECF 175) at 8–12.
146
147
ECF 170 at 27–29.
148
Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed. Cir. 2015) (emphasis added).
In their Second Motion, Defendants argue SME has no evidence to support a damages assessment for its patent
infringement claim. ECF 195 at 27–30. Because Defendants are entitled to summary judgment on the patent claim,
the court does not address the damages argument.
149
150
See generally id.
151
ECF 63 ¶¶ 57–76.
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documents, which Defendants sent to potential customers. 152 The parties submitted arguments
on the merits, 153 as well as supplemental briefing on whether Core-Brace has standing to sue
under the Lanham Act. 154 To have standing, “a plaintiff suing under § 1125(a) ordinarily must
show economic or reputational injury flowing directly from the deception wrought by the
defendant’s advertising; and that occurs when deception of consumers causes them to withhold
trade from the plaintiff.” 155
Core-Brace asserts two standing arguments. First, it argues there is sufficient evidence to
show injury flowing directly from the alleged misrepresentations. 156 Second, it argues the court
should presume injury because Core-Brace and Defendants are direct competitors in a sparsely
populated market. 157 The court considers and rejects each argument below and concludes CoreBrace does not have standing. It accordingly does not address the merits of Core-Brace’s
Lanham Act claims.
1. Direct Evidence of Injury
First, Core-Brace contends “there is ample evidence supporting the causal link between
Defendants’ conduct and the specific harm to Core-Brace.” 158 The evidence Core-Brace cites is
that “the recipients of Defendants’ materials were instrumental in the Defendants being awarded
ECF 195 at 5–13; ECF 218 at 13, 21–33; Plaintiffs’ Supplemental Brief Re: Defendants’ Motion for Summary
Judgment on Non-Patent Claims (ECF 257 Sealed Version) (ECF 255 Public Version) at 8–9; see generally ECF
216-11.
152
153
ECF 195 at 5–13; ECF 218 at 21–33; ECF 226 at 2–11.
154
ECF 257; Defendants’ Reply Brief Pursuant to April 8, 2022 Order (ECF 260).
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 133 (2014); see also id. at 132 (“Second,
we generally presume that a statutory cause of action is limited to plaintiffs who injuries are proximately caused by
violations of the statute.”); Intermountain Stroke Ctr., Inc. v. Intermountain Health Care, Inc., 638 F. App’x 778,
792 (10th Cir. 2016) (identifying “Lexmark’s obvious focus on the threshold issue of standing, a matter that must be
addressed before proceeding to the merits” (quotation simplified)).
155
156
ECF 257 at 8–10.
157
Id. at 6–8.
158
Id. at 3.
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the projects to the detriment of Core-Brace.” 159 Even assuming that is true, 160 it does not say
anything about to what extent—if at all—the recipients considered or relied on the alleged
misrepresentations. Without such evidence, it is equally possible the recipients relied on other
statements in the Design Manual or other aspects of Defendants’ bids. Accordingly, Core-Brace
has not presented evidence suggesting the alleged misrepresentations were the proximate cause
of its injury.
Nevertheless, Core-Brace argues it is not required to make “a definitive showing that
only the conduct at issue caused the harm ‘as opposed to a myriad of other reasons.’” 161 But the
court is not requiring Core-Brace to show that only the Defendants’ alleged misrepresentations
caused the harm. Rather, the court is concluding Core-Brace has not shown proximate cause
because it has not identified evidence demonstrating a nexus between the alleged
misrepresentations and its injury.
Core-Brace relatedly contends “the ‘potential difficulty in ascertaining and apportioning
damages is not . . . an independent basis for denying standing where it is adequately alleged that
a defendant’s conduct has proximately injured’ the plaintiff.” 162 It further explains that even if
“a plaintiff cannot quantify its losses with sufficient certainty to recover damages, it may still be
159
Id.; see also id. at 8–9.
In their supplemental briefing, Defendants argue they “sent the Design Manual to a handful of structural
engineering firms as marketing material independent of any bids or projects.” ECF 260 at 2. They further argue
that “structural steel fabricators select who wins the bid to supply braces” and “do not consult with the structural
engineering firm regarding the bid.” Id. Defendants’ argument appears to be that those responsible for selecting
winning bids did not receive the alleged misrepresentations. See id. at 2–3. However, Core-Brace included letters
sent by Hinchman to steel fabricators indicating Defendants had included some of the allegedly misleading drawings
in their proposals. See Exhibit F to ECF 257: SBC Letters (ECF 257-4) [SEALED]; see also ECF 257 at 8
(identifying the misrepresentations as “the SBC Design Manual” and “proposal drawings”). Because the court must
consider the evidence in the light most favorable to Core-Brace, see Lance v. Morris, 985 F.3d 787, 793 (10th Cir.
2021), it assumes those responsible for selecting the winning bids received the alleged misrepresentations.
160
161
ECF 257 at 10 (quoting ECF 248 at 3).
162
Id. (emphasis omitted) (quoting Lexmark, 572 U.S. at 135).
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entitled to injunctive relief . . . or disgorgement.” 163 That may be so, but the court’s conclusion
is not based on a “potential difficulty in ascertaining and apportioning damages.” As explained,
the court’s conclusion is based on Core-Brace’s failure to show proximate cause. 164
2. Presumption of Injury
Core-Brace next argues the court should presume injury because it and Defendants are
direct competitors in a sparsely populated market. 165 In Vitamins Online, Inc. v. Heartwise, Inc.,
the Tenth Circuit held courts may presume injury “once a plaintiff has proven that the defendant
has falsely and materially inflated the value of its product (or deflated the value of the plaintiff’s
product), and that the plaintiff and defendant are the only two significant participants in a market
or submarket.” 166
“To demonstrate that a representation was false or misleading, a plaintiff must show that
it was either ‘literally false, either on its face or by necessary implication’ or that it was ‘literally
true but likely to mislead or confuse customers.’” 167 Ambiguous statements cannot be literally
163
Id. (quoting Lexmark, 572 U.S. at 135).
Core-Brace’s failure to show proximate cause also thwarts its claim for injunctive relief. For injunctive relief, a
plaintiff must “prove a likelihood of future injury.” Lexmark, 572 U.S. at 135. For the same reasons Core-Brace has
not shown proximate cause, it has not shown a “likelihood of future injury.” See Am. Soc’y of Home Inspectors, Inc.
v. Int’l Ass’n of Certified Home Inspectors, 36 F.4th 1238, 1244 n.5 (10th Cir. 2022) (“The lack of evidence of
injury also dooms InterNACHI’s injunctive relief claim.”). Regarding disgorgement, Core-Brace argues “the
standard of proof required when a plaintiff is seeking disgorgement is somewhere between the standards for money
damages and injunctive relief.” ECF 257 at 10 (quoting Vitamins Online, Inc. v. HeartWise, Inc., No. 2:13-cv00982-DAK, 2020 WL 6581050, at *20 (D. Utah Nov. 10, 2020), affirmed and remanded, Nos. 20-4126, 21-4152,
2023 WL 4189604 (10th Cir. June 27, 2023)). Even assuming that is the correct view when evaluating standing,
Core-Brace cannot make this showing because it cannot make the purportedly lower showing necessary for
injunctive relief.
164
165
ECF 257 at 6–8.
166
Nos. 20-4126, 21-4152, 2023 WL 4189604, at *9 (10th Cir. June 27, 2023). It appears uncertain whether a
plaintiff may rely on the presumption to demonstrate standing. See id. at *8 n.5; see also Hutchinson v. Pfeil, 211
F.3d 515, 522 (10th Cir. 2000). For purposes of this Motion, the court assumes without deciding that the
presumption may apply in the standing context.
167
Vitamins Online, 2023 WL 4189604, at *6 (quoting Zoller Lab’ys, LLC. v. NBTY, Inc., 111 F. App’x 978, 982
(10th Cir. 2004) (unpublished)).
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false. 168 Similarly, “[c]ommercial claims that are implicit, attenuated, or merely suggestive
cannot fairly be characterized as literally false.” 169 If an advertisement is literally false, a
Lanham Act violation “may be established without evidence of consumer deception.” 170 But if
“a plaintiff’s theory of recovery is premised upon a claim of implied falsehood, a plaintiff must
demonstrate, by extrinsic evidence, that the challenged advertisements tend to mislead or confuse
consumers.” 171 Extrinsic evidence typically includes consumer surveys or statistical evidence
indicating confusion. 172
Core-Brace identifies three alleged misrepresentations. 173 As explained below, it has not
shown a genuine dispute of material fact supporting a conclusion that these statements are
literally false. The court will then explain that Core-Brace has failed to provide extrinsic
evidence of actual consumer confusion.
First, Core-Brace argues it was literally false 174 for Defendants to state “SBC[’s]
Capabilities” include the ability to “[p]roduce capacity of over 5000 BRBs per year.” 175
Defendants contend this statement is not literally false because “SBC has manufacturing
See Gen. Steel Domestic Sales, LLC v. Chumley, 627 F. App’x 682, 684 (10th Cir. 2015) (unpublished); see also
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co., 290 F.3d 578, 587 (3d Cir.
2002) (“Regardless, only an unambiguous message can be literally false.”).
168
Zoller Lab’ys, 111 F. App’x at 983 (quoting United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1181 (8th Cir.
1998)).
169
170
Id. at 982 (quoting Scotts Co. v. United Indus. Corp., 315 F.3d 264, 273 (4th Cir. 2002)).
171
Id. (quoting Scotts Co., 315 F.3d at 273).
See id. (stating the plaintiff had “presented no consumer survey data or other extrinsic evidence”); see also
Vincent v. Utah Plastic Surgery Soc’y, 621 F. App’x 546, 550 (10th Cir. 2015) (unpublished) (“Plaintiffs can make
this showing by presenting extrinsic evidence that demonstrates a statistically significant part of the commercial
audience holds the false belief allegedly communicated by the challenged advertisement.” (quotation simplified)).
172
173
ECF 218 at 22–25.
Core-Brace argues the first and second statements are literally false but does not argue they are literally false by
necessary implication. See id. The court thus construes Core-Brace’s argument to be that the statements are literally
false on their faces. See Vitamins Online, 2023 WL 4189604, at *6 (quoting Zoller Lab’ys, 111 F. App’x at 982).
174
175
ECF 218 at 22–23 (quoting ECF 216-11 at 6).
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capabilities through the use of third party manufacturers.” 176 Viewing the evidence in the light
most favorable to Core-Brace, the statement is ambiguous, so a reasonable jury could not
conclude it is literally false. General Steel Domestic Sales, LLC v. Chumley 177 illustrates this
point. There, an employee left General Steel and founded a competing company. 178 The former
employee advertised his company by stating it “fabricated its own steel.” 179 The Tenth Circuit
concluded this statement was literally false because the advertisement “conveyed not only that
the company supplies steel buildings or assembles pieces of steel made by others, but that it
fabricates the steel pieces itself.” 180 Here, Defendants used the word “produce,” which, unlike
“fabricate,” is ambiguous and thus cannot support a finding of literally falsity. 181
Relatedly, Core-Brace argues it was literally false for SBC to state it could produce 5,000
BRBs because it had actually produced less than nine. 182 Defendants counter this statement is
not literally false because stating what it can produce is not the same as stating what it has
produced. 183 The court agrees—at most, the statement merely suggests Defendants have
produced 5,000 BRBs, but that suggestion is insufficient to support a finding of literal falsity. 184
Second, Core-Brace argues it was literally false for Defendants to claim their “patented
methods have now been tested and qualified for use on projects in accordance with governing
176
ECF 195 at 8; see also ECF 226 at 3.
177
627 F. App’x 682 (10th Cir. 2015) (unpublished).
178
Id. at 683.
179
Id.
180
Id. at 684.
181
See Produce, Merriam-Webster.com, https://www.merriam-webster.com/dictionary/produce (last visited July 10,
2023) (providing one definition as “to make available for public exhibition or dissemination: such as [a]: to provide
funding for [b]: to oversee the making of”).
182
ECF 218 at 23.
183
ECF 226 at 3.
184
See Zoller Lab’ys, 111 F. App’x at 983.
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building codes (AISC 341).” 185 Core-Brace contends this is literally false because when the
University of Utah tested Defendants’ BRBs, two did not satisfy the AISC requirements. 186
Defendants counter this statement is not literally false because SBC offers only BRBs that have
satisfied the testing requirements. 187 Viewing the facts in the light most favorable to Core-Brace,
the challenged statement is ambiguous about which BRBs qualified. The phrase “patented
methods” makes it unclear what BRBs Defendants are referencing, although it may imply
Defendants are referring to all their BRBs. While this ambiguity may demonstrate implied
falsity, it cannot support a finding of literal falsity. 188
Third, Core-Brace argues the Design Manual is misleading because it “greatly
overstate[s] [Defendants’] experience and qualifications.” 189 It then identifies several potentially
misleading statements, although it does not argue any of them are literally false. 190 As explained
below, the failure to demonstrate literal falsity is decisive.
Core-Brace has not presented sufficient evidence from which a reasonable jury could
conclude the statements are literally false. Accordingly, it must provide extrinsic evidence
demonstrating the challenged statements “tend to mislead or confuse consumers.” 191 Core-Brace
has not presented such evidence. For example, it has not provided consumer surveys indicating
confusion or any examples of actual confusion. But Core-Brace contends it has provided such
evidence because it showed SBC was awarded projects after it distributed the Design Manual. 192
185
ECF 218 at 23–24 (quoting ECF 216-11 at 4).
186
Id.
187
ECF 195 at 7.
188
See Zoller Lab’ys, 111 F. App’x at 983.
189
ECF 218 at 24.
190
Id. at 24–25; see also id. at 26 (arguing the first two statements are literally false).
191
See Zoller Lab’ys, 111 F. App’x at 982 (quoting Scotts Co., 315 F.3d at 273).
192
ECF 218 at 27.
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As explained, this is not evidence of consumer confusion because there is no evidence indicating
why SBC was awarded those projects over Core-Brace.
Nevertheless, Core-Brace argues it is entitled to a presumption of consumer deception
because Defendants “acted with the intent to deceive consumers.” 193 In the case Core-Brace
cites to support this presumption, the plaintiff presented evidence that the defendant’s
“employees discussed contracting with individuals in the Philippines to use a rotating IP service
and multiple accounts to reduce the effect of their competitor’s attempts to lower their market
share.” 194 Core-Brace does not present comparable evidence. Indeed, Core-Brace’s only
evidence to support this presumption is that Hinchman would have known what potential clients
were looking for and that Core-Brace “was the only other major competitor in the
marketplace.” 195 These facts are insufficient to show a genuine dispute of material fact regarding
Defendants’ intent or consumer confusion.
In short, Core-Brace has not presented sufficient evidence to create a genuine dispute of
material fact concerning falsity. Accordingly, it has not shown it is entitled to the presumption
of injury, and it thus does not have standing to sue under the Lanham Act. The Defendants are
entitled to summary judgment on both Lanham Act claims.
B. Utah Truth in Advertising Act Claim
Defendants also seek summary judgment on Core-Brace’s claim that Defendants
deceptively advertised their BRBs in violation of the Utah Truth in Advertising Act (UTAA). 196
The purpose of the UTAA “is to prevent deceptive, misleading, and false advertising practices
193
Id. (quoting Vitamins Online, Inc. v. Heartwise, Inc., No. 2:13-cv-00982-DAK, 2019 WL 6682313, at *9 (D.
Utah Sept. 24, 2019)).
194
Vitamins Online, 2019 WL 6682313, at *10 (internal quotation marks omitted).
195
ECF 218 at 28.
196
ECF 195 at 13; ECF 63 ¶¶ 77–90.
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and forms in Utah.” 197 Section 13-11a-3 of the UTAA lists the possible types of deceptive trade
practice. 198 In the Complaint, Core-Brace asserts Defendants’ conduct constitutes deceptive
trade practice under subsections (b), (c), (e), and (g). 199
For the reasons explained below, the court concludes Defendants are not entitled to
summary judgment on the claims based on subsections (e) and (g). But the court concludes
summary judgment is appropriate on the claims based on subsections (b) and (c).
1. Subsections (e) and (g)
Defendants argue they are entitled to summary judgment because Core-Brace has not
shown a likelihood of confusion. 200 But subsections (e) and (g) do not require a showing of
likelihood of confusion, so the court concludes summary judgment is not appropriate with
respect to these subsections.
Subsection (e) states that a deceptive trade practice occurs when a person “represents that
goods or services have sponsorship, approval, characteristics, ingredients, uses, benefits, or
qualities that they do not have or that a person has a sponsorship, approval, status, affiliation, or
connection that the person does not have.” 201 Subsection (g) states that a deceptive trade practice
occurs when a person “represents that goods or services are of a particular standard, quality, or
grade, or that goods are of a particular style or model, if they are of another.” 202
The parties did not cite, and the court was unable to find, any Utah cases explaining what
a plaintiff is required to prove to prevail under subsections (e) and (g). But the plain language of
197
Utah Code § 13-11a-1.
198
See id. § 13-11a-3(1).
199
ECF 63 ¶ 86.
200
ECF 195 at 13.
201
Utah Code § 13-11a-3(1)(e).
202
Id. § 13-11a-3(1)(g).
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those subsections does not require a likelihood of confusion. Moreover, in their Reply,
Defendants “agree that a likelihood of confusion is not necessarily required under subsections (e)
or (g).” 203 Accordingly, the court concludes Core-Brace was not required to present evidence of
a likelihood of confusion to prevent summary judgment on subsections (e) and (g).
Nevertheless, Defendants presented in their Reply new arguments why summary
judgment is appropriate on the UTAA claims. 204 But the court declines to consider those
arguments as they were raised for the first time in the Reply, meaning Core-Brace had no
opportunity to respond to them. 205
Defendants have not carried their burden of showing that Core-Brace does not have
sufficient evidence to succeed at trial. The court therefore declines to grant summary judgment
on Core-Brace’s UTAA claims, insofar as they are based on subsections (e) and (g).
2. Subsections (b) and (c)
The Complaint also asserts Defendants’ conduct constitutes deceptive trade practices
under subsections (b) and (c). 206 Unlike subsections (e) and (g), subsections (b) and (c) include
the phrase “likelihood of confusion.” Subsection (b) states a deceptive trade practice occurs
when a person “causes likelihood of confusion or of misunderstanding as to the source,
sponsorship, approval, or certification of goods and services.” 207 And subsection (c) states a
deceptive trade practice occurs when a person “causes likelihood of confusion or of
203
ECF 226 at 11.
204
Id. at 11–12.
See In re Motor Fuel Temperature Sales Pracs. Litig., 872 F.3d 1094, 1112 n.5 (10th Cir. 2017) (“[A]rguments
raised for the first time in a reply brief are waived.”).
205
206
ECF 63 ¶ 86.
207
Utah Code § 13-11a-3(1)(b).
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misunderstanding as to affiliation, connection, association with, or certification by another.” 208
Given the plain language of the statute, a showing of likelihood of confusion is required. 209
The next question is how the court should assess likelihood of confusion. Defendants
argue the King of the Mountain factors—used to determine likelihood of confusion in trademark
infringement cases—are most appropriate. 210 Because Core-Brace did not offer an alternative
and because the parties addressed the King of the Mountain factors elsewhere, the court agrees
those factors are the most appropriate for this analysis. 211
The King of the Mountain factors are as follows:
1. “the degree of similarity between the marks;”
2. “the intent of the alleged infringer in adopting its mark;”
3. “evidence of actual confusion;”
4. “the relation in use and the manner of marketing between the goods or
services marketed by the competing parties;”
5. “the degree of care likely to be exercised by purchasers;” and
6. “the strength or weakness of the marks.” 212
No factor is dispositive, and each factor’s weight may vary depending on the context. 213
The court addresses each factor separately. It then weighs the factors and concludes a
reasonable jury could not find a likelihood of confusion.
208
Id. § 13-11a-3(1)(c).
209
See Robert J. DeBry & Assocs., P.C. v. Qwest Dex, Inc., 2006 UT 41, ¶ 21, 144 P.3d 1079 (holding a defendant’s
“publications did not cause a likelihood of misunderstanding or confusion as to the source, sponsorship, approval, or
certification of goods or services as required by Utah Code section 13-11a-3(1)(b)”).
ECF 195 at 13 (citing King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089–90 (10th Cir.
1999)).
210
See SanMedica Int’l, LLC v. Amazon.com, Inc., No. 2:13-cv-0169-DN, 2015 U.S. Dist. LEXIS 50470, at *36 (D.
Utah Mar. 27, 2015) (concluding the King of the Mountain factors were “most appropriate” for assessing likelihood
of confusion under the UTAA).
211
212
King of the Mountain, 185 F.3d at 1089–90.
213
Id. at 1090.
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i.
Factor 1: Degree of Similarity Between the Marks
The parties disagree about whether this factor applies. Defendants assert that because
this is not a trademark case, there are no marks to compare. 214 But Core-Brace explains that
“[i]n cases involving confusion over endorsement by a celebrity plaintiff, ‘mark’ means the
celebrity’s persona.” 215 It then argues that because “the Lanham Act defines a ‘person’ as both a
‘natural person’ and a ‘juristic person’ (e.g., a ‘corporation’), this line of cases is instructive.” 216
The court concludes this factor is not applicable to this case and considers it neutral.
Core-Brace does not cite a case applying the celebrity-persona approach to a
corporation. 217 Moreover, in the celebrity-persona cases Core-Brace cites, the court was
comparing the celebrity’s persona to an image used by the defendant. In White v. Samsung
Electronics America, Inc., for example, the court was comparing Vanna White’s persona to an
advertisement that depicted a robot dressed like White posing next to a Wheel of Fortune game
show set. 218 And in Longoria v. Kodiak Concepts LLC, the court was comparing the celebrities
to their own photographs. 219
Here, Core-Brace asks the court to compare its persona to the ninety-page Design
Manual, with specific attention to the drawings, project list, logo, and statements regarding
testing. 220 Although the court can compare the drawings, logo, and project list, it is unclear how
to compare statements about testing, particularly because the Design Manual includes SBC’s
214
ECF 195 at 10; ECF 226 at 7–8.
215
ECF 218 at 29 (quoting White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1400 (9th Cir. 1992)).
216
Id. (quoting 15 U.S.C. § 1127).
217
See id.
218
971 F.2d 1395, 1396 (9th Cir. 1992).
219
527 F. Supp. 3d 1085, 1108 (D. Ariz. 2021).
220
ECF 218 at 29.
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testing report from the University of Utah. 221 It is also unclear how to weigh those aspects
against the remainder of the Design Manual—including the fact that the Design Manual is
repeatedly labeled as property of SBC and does not mention Core-Brace. 222
Core-Brace is asking the court to compare its self-described persona to the ninety-page
Design Manual. That is a different task than courts undertake when they compare a single image
to a celebrity’s persona. For that reason, the court concludes this factor is not relevant to the
analysis and is neutral.
ii.
Factor 2: Defendants’ Intent
The focus of this factor is whether Defendants “had the intent to derive benefit from the
reputation or goodwill” of Core-Brace. 223 Defendants argue this factor should be neutral because
“Seismic Bracing Company” and “SBC” are “not confusing with Core-Brace.” 224 But this
argument does not address intent. And as Core-Brace points out, Hinchman was a Core-Brace
employee and was thus familiar with Core-Brace’s operations. 225 Weighing the evidence in the
light most favorable to Core-Brace, a reasonable jury could infer that Defendants intended to
capitalize on Core-Brace’s reputation or goodwill. But without more specific evidence of
Hinchman’s or SBC’s intent, 226 this factor weighs only moderately in Core-Brace’s favor.
221
ECF 216-11 at 27–34.
222
See generally id.
King of the Mountain, 185 F.3d at 1091 (quoting Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485
(10th Cir. 1987)).
223
224
ECF 195 at 11.
225
ECF 218 at 30; cf. King of the Mountain, 185 F.3d at 1091–92 (holding this factor weighed against a likelihood
of confusion when there was “no evidence to suggest that the defendants were even aware of plaintiff’s existence”
(quotation simplified)).
See Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 974–75 (10th Cir. 2002) (holding this factor weighed in
favor of a likelihood of confusion because, among other evidence, the defendant’s supplier sent a fax stating the
defendant wanted to create a “knock-off” of the plaintiff’s product).
226
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iii.
Factor 3: Evidence of Actual Confusion
Evidence of actual confusion is not necessary, 227 but it “is often considered the best
evidence of likelihood of confusion.” 228 Core-Brace acknowledges “direct evidence of actual
confusion is limited in this case,” but argues the court should presume confusion because
Defendants intended to capitalize on Core-Brace’s reputation and won bids that Core-Brace
lost. 229 The court is unpersuaded by Core-Brace’s arguments and concludes this factor weighs in
Defendants’ favor.
There is no evidence of actual confusion. Core-Brace has not, for example, cited
instances where a customer was actually confused, 230 nor has it cited surveys indicating
customers are likely to be confused. 231 Moreover, the court will not presume actual confusion
simply because it concluded there was a genuine issue of material fact regarding Defendants’
intent and because Core-Brace lost bids Defendants won. Core-Brace has presented no evidence
suggesting why Defendants won those bids, and the court is not inclined to assume actual
confusion with no evidence.
Because Core-Brace has presented no evidence from which a reasonable jury could infer
actual confusion, this factor weighs strongly in Defendants’ favor.
227
Id. at 974.
King of the Mountain, 185 F.3d at 1092 (quoting Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d
1527, 1534 (10th Cir. 1994)).
228
229
ECF 218 at 30–31.
See King of the Mountain, 185 F.3d at 1092–93 (holding “seven examples of actual confusion” was “de
minimis”).
230
See Sally Beauty Co., 304 F.3d at 974 (holding this factor was neutral when a survey indicated 6.7 percent of the
survey sample were confused).
231
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iv.
Factor 4: Similarity of Products and Manner of Marketing
When the parties’ products and manner of marketing are similar, there is a greater
likelihood of confusion. 232 Core-Brace argues this factor weighs in its favor because “[b]oth
parties sell BRBs, advertise the same way, and submit bids for the same projects.” 233 Defendants
acknowledge the products and marketing are similar, but argue this factor should remain neutral
“when considering all the factors together.” 234
The court agrees with the parties that the products and manner of marketing are similar.
But the court disagrees with Defendants’ assertion that the court should consider this factor
neutral because of other factors. At this point, the court is not weighing the factors against each
other, and it concludes this factor weighs in Core-Brace’s favor.
v.
Factor 5: Degree of Care Exercised by Purchasers
“A consumer exercising a high degree of care in selecting a product reduces the
likelihood of confusion.” 235 Buyers usually exercise little care when buying inexpensive items,
especially if they are likely to buy those items on impulse. 236 Conversely, buyers are likely to
exercise a high degree of care when buying expensive items. 237
BRBs are expensive, specialized items used in a relatively narrow market. Accordingly,
the court is persuaded by Defendants’ argument that buyers are likely to exercise a high degree
of care when buying BRBs. 238 This is especially true where the buyers, as in this case, are
232
Id. at 974.
233
ECF 218 at 31.
234
ECF 195 at 11.
235
Sally Beauty Co., 304 F.3d at 975.
236
Id.
237
Id.
238
See ECF 195 at 11–12.
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sophisticated parties who solicit bids (i.e., they are not buying on impulse). Nevertheless, CoreBrace argues this conclusion is “not supported by any admissible evidence.” 239 But there is no
dispute that BRBs are expensive and sold through a bidding process. 240 Core-Brace further
suggests this factor should be neutral because Core-Brace and Defendants do not always bid on
the same projects. 241 While that may be true, it does not change the conclusion that buyers are
likely exercising significant care when purchasing BRBs. This factor thus weighs strongly in
Defendants’ favor.
vi.
Factor 6: Strength of the Mark
The parties again disagree over whether this factor is applicable. Core-Brace argues the
court should consider “the level of recognition [it] enjoys among members of society,” 242 but
Defendants argue this factor is inapplicable because there is no mark. 243
Unlike with the first factor—where the court perceived little benefit in trying to compare
a corporate persona to a ninety-page document—the court can evaluate Core-Brace’s level of
recognition among the intended audience. 244 Accordingly, the court will evaluate the “strength
of the mark” by assessing Core-Brace’s level of recognition among those buying BRBs.
239
ECF 218 at 32.
240
See, e.g., ECF 19 ¶ 13 (stating “the BRB industry is still developing and might be considered a ‘niche product’”);
id. ¶ 30 (discussing bidding).
241
ECF 218 at 32.
242
Id. at 32–33 (quoting White, 971 F.2d at 1400).
243
ECF 195 at 10.
See White, 971 F.2d at 1400. Although White refers to the level of recognition a “celebrity” has among
“members of society,” courts seem to inquire whether the plaintiff is a celebrity among the intended audience. See,
e.g., Amazon Inc. v. Cannondale Inc., No. 99 N 571, 2000 WL 1800639, at *8 (D. Colo. July 24, 2000) (concluding
mountain biker was a celebrity “among mountain bike enthusiasts,” which is who the advertising was directed
towards).
244
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Core-Brace argues its level of recognition is strong because it is an “industry leader and
innovator in the BRB industry.” 245 It further argues, “The record is replete with testimony and
documents regarding the strength of Core-Brace’s reputation in the industry and the significance
of the various projects that it has worked on.” 246 In support, Core-Brace cites only the
declaration of its president. 247 But viewing the evidence in the light most favorable to CoreBrace, the court concludes there is at least some evidence from which a jury could conclude
Core-Brace enjoys a strong level of recognition among those buying BRBs. For example, CoreBrace was founded in 2002, 248 “was the first company located within the United States to expand
into the then-experimental BRB industry,” 249 and has worked on major projects. 250 From this, a
jury could infer Core-Brace has a strong “mark.” This factor weighs in Core-Brace’s favor.
vii.
Weighing the Factors
In sum, factor 1 is neutral; factors 2, 4, and 6 weigh in Core-Brace’s favor; and factors 3
and 5 weigh in Defendants’ favor. From a purely quantitative standpoint, it appears the factors
collectively weigh in Core-Brace’s favor. But when considered together and weighed in
accordance with the relative strength of each factor described above, the factors weigh in
Defendants’ favor such that a reasonable jury could not find there was a likelihood of confusion.
As explained, factor 2 (Defendants’ intent) weighs only slightly in Core-Brace’s favor.
And while factor 4 (similarity of products and marketing) and factor 6 (strength of mark) weigh
in Core-Brace’s favor, the court concludes the weight of those factors is outweighed by the fact
245
ECF 218 at 33 (quoting ECF 19 ¶ 7).
246
Id.
247
See id.
248
ECF 19 ¶ 4.
249
Id. ¶ 6.
250
Exhibit 17 to ECF 218: Plaintiffs’ Awards and Letters (ECF 218-6) at 4, 8–9.
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that BRBs are an expensive, niche product sold to sophisticated parties through a bidding
process. Put differently, the uniqueness of the product and industry make it unlikely there would
be confusion, despite the similarity of the products and Core-Brace’s level of recognition. CoreBrace’s failure to cite any evidence of actual confusion further strengthens the court’s conclusion
on this point.
Considering the factors together, no reasonable jury could find a likelihood of confusion.
There is thus no genuine dispute of material fact concerning likelihood of confusion, and
Defendants are entitled to summary judgment on Core-Brace’s UTAA claims, insofar as they are
based on subsections (b) and (c).
C. Unfair Competition
The sixth cause of action, asserted by SME only, is for unfair competition under Utah
Code § 13-5a-103. 251 Both parties agree this claim requires “infringement of a patent,” 252
meaning it rises or falls with SME’s patent claim. 253 Given the parties agreement, the court
assumes the same. As explained in detail above, Defendants are entitled to summary judgment
on SME’s patent claim 254 and are thus entitled to summary judgment on SME’s unfair
competition claim.
D. Intentional Interference with Economic Relations
Plaintiffs’ seventh cause of action is for intentional interference with economic
relations. 255 “Under Utah law, the elements of tortious interference are: (1) intentional
251
ECF 63 ¶¶ 107–11.
See Utah Code § 13-5a-102(4)(a)(ii)(B) (stating “unfair competition” means “infringement of a patent,” among
other things).
252
253
ECF 195 at 21–22; ECF 218 at 39–40.
254
Supra Section I.
255
ECF 63 ¶¶ 112–19.
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interference with plaintiff’s existing or potential business relationships, (2) the interference is
accomplished by improper means, and (3) injury suffered by plaintiff.” 256 Defendants argue
Plaintiffs have not presented sufficient evidence to establish the first and second elements. 257
For the reasons explained below, the court disagrees and concludes Defendants are not entitled to
summary judgment on this claim.
Regarding the first element, Defendants contend they merely attempted “to enter an
industry dominated by Plaintiffs” and “there is no evidence [they] have intentionally interfered
with any potential or existing economic relation of Plaintiffs.” 258 Plaintiffs counter that
interference is intentional even if a defendant does not act with a purpose of interfering, but
knows “interference is substantially certain to occur as a result.” 259 Defendants do not challenge
the applicability of this principle, but rather assert Plaintiffs’ argument essentially creates a “de
facto noncompete that is enforceable in perpetuity against any former employee.” 260 Defendants
also contend it is relevant that Hinchman signed a non-compete clause that expired six months
after his resignation. 261
Defendants’ contention is essentially a policy argument, which the court is not inclined to
entertain. 262 Moreover, Defendants do not adequately address Plaintiffs’ argument that drawing
all inferences in their favor, a jury could conclude Defendants knew interference was
256
SCO Grp., Inc. v. Int’l Bus. Machs. Corp., 879 F.3d 1062, 1081 (10th Cir. 2018) (emphasis omitted) (citing
Eldridge v. Johndrow, 2015 UT 21, ¶¶ 13–14, 345 P.3d 553).
257
ECF 195 at 25–26; ECF 226 at 17–18.
258
ECF 195 at 25.
259
ECF 218 at 40 (quoting Mumford v. ITT Com. Fin. Corp., 858 P.2d 1041, 1044 (Utah Ct. App. 1993)).
260
ECF 226 at 17.
261
Id. at 18.
262
Cf. Belnap v. Iasis Healthcare, 844 F.3d 1272, 1295 (10th Cir. 2017) (“Further, we are generally reticent to
expand state law without clear guidance from its highest court.” (quotation simplified)).
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“substantially certain to occur.” 263 Defendants have accordingly failed to show no genuine
dispute of material fact concerning the first element.
Regarding the second element, Defendants point out that “improper means” includes
“only those actions that are contrary to law, such as violations of statutes, regulations, or
recognized common-law rules, or actions that violate an established standard of a trade or
profession.” 264 They then argue that because they are entitled to summary judgment on all
Plaintiffs’ claims, Plaintiffs have no evidence of improper means. 265 Plaintiffs respond that
genuine disputes remain on their claims, meaning there is at least a genuine dispute of material
fact regarding whether Defendants used improper means. 266
Because the court has not concluded Defendants are entitled to summary judgment on all
Plaintiffs’ claims, there is a genuine dispute of material fact concerning the improper means
element. Defendants are thus not entitled to summary judgment on this claim.
E. Copyright Infringement
Core-Brace asserts Defendants improperly used its copyrighted drawings in the Design
Manual. 267 To succeed, Core-Brace “must show: (1) ownership of a valid copyright, and
(2) copying by [Defendants] of protected components of the copyrighted material.” 268 The
parties disagree on both elements. 269 For purposes of this Motion, the court assumes Core-Brace
has established a genuine dispute of material fact regarding infringement. Nevertheless, the
263
See ECF 218 at 41 (quoting Mumford, 858 P.2d at 1044).
ECF 195 at 26 (quoting John Bean Techs. Corp. v. B GSE Grp., LLC, 480 F. Supp. 3d 1274, 1328 (D. Utah
2020)); accord C.R. England v. Swift Transp. Co., 2019 UT 8, ¶ 42, 437 P.3d 343.
264
265
Id. at 26.
266
ECF 218 at 41–42.
267
ECF 63 ¶¶ 120–34.
268
Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 831 (10th Cir. 1993).
269
ECF 195 at 14–18; ECF 218 at 34–36; ECF 226 at 12–14.
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court grants summary judgment in Defendants’ favor because Core-Brace has not presented
sufficient evidence of damages.
“[A]n infringer of copyright is liable for either—(1) the copyright owner’s actual
damages and any additional profits of the infringer . . . or (2) statutory damages.” 270 Below, the
court addresses statutory damages, and then actual damages and Defendants’ profits. It
concludes Core-Brace has not shown a genuine dispute of material fact with respect to either.
1. Statutory Damages
Instead of actual damages and profits, a copyright owner may elect to receive statutory
damages. 271 But statutory damages are not available for “any infringement of copyright in an
unpublished work commenced before the effective date of its registration” or “any infringement
of copyright commenced after first publication of the work and before the effective date of its
registration, unless such registration is made within three months after the first publication of the
work.” 272
Defendants assert they circulated the Design Manual in March 2017. 273 The relevant
works were registered on June 27, 2017. 274 Accordingly, Defendants argue statutory damages
are unavailable because any infringement commenced before the effective date of registration
270
17 U.S.C. § 504(a).
271
Id.; see also id. § 504(c)(1).
17 U.S.C. § 412; see also S. Credentialing Support Servs., L.L.C. v. Hammond Surgical Hosp., L.L.C., 946 F.3d
780, 782 (5th Cir. 2020) (“A plaintiff cannot recover statutory damages, and sometimes more importantly, attorney’s
fees, for ‘any infringement’ a defendant commences before the plaintiff registered the copyright.”). There are
exceptions, see 17 U.S.C. § 412, but neither party has argued they are applicable.
272
273
ECF 195 at 20 (citing ECF 27 ¶ 21).
274
See ECF 216-2; ECF 216-6; ECF 216-8.
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and because registration occurred after the three-month window. 275 Core-Brace does not
challenge this conclusion. 276
Assuming the Design Manual is a published work, it is not entirely clear how long the
three-month window extends because the parties have not included the specific date of
publication. 277 But given Core-Brace’s concession, the court concludes the timing of the
infringement precludes Core-Brace from collecting statutory damages.
2. Actual Damages and Profits
Because statutory damages are unavailable, Core-Brace is left arguing for actual damages
and profits. 278 Actual damages are damages suffered by the copyright owner “as a result of the
infringement.” 279 Profits can be direct or indirect. “Generally, direct profits are those derived
from the infringer’s sales of the infringed work, while indirect profits represent the benefit
derived by the infringing party as a result of the infringement.” 280 To recover indirect profits, a
copyright owner must show a “causal link between the infringement and the indirect profits.” 281
The parties’ arguments focus on whether there is sufficient evidence to establish a causal
link between the infringement and Defendants’ profits. 282 The court also limits its analysis to
indirect profits, and as explained below, it concludes Core-Brace has not shown a causal
connection.
275
ECF 195 at 20.
276
See ECF 218 at 34–38.
277
See ECF 195 at 20.
278
See 17 U.S.C. § 504(a).
279
Id. § 504(b).
Rocking Chair Enters., L.L.C. v. Macerich SCG Ltd. P’ship, 407 F. Supp. 2d 1263, 1271 (W.D. Okla. Dec. 27,
2005); see also Andreas v. Volkswagen of Am., Inc., 336 F.3d 789, 796 (8th Cir. 2003) (discussing direct and
indirect profits); Mackie v. Rieser, 296 F.3d 909, 914 (9th Cir. 2002) (same).
280
281
See Rocking Chair Enters., 407 F. Supp. 2d at 1271; Andreas, 336 F.3d at 796; Mackie, 296 F.3d at 914.
282
ECF 195 at 18–19; ECF 218 at 36–38.
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Core-Brace argues it has shown a causal connection because companies that received the
Design Manual later purchased BRBs from Defendants. 283 Even assuming that is true, CoreBrace has not presented evidence that the companies’ decisions to purchase Defendants’ BRBs
were in any way related to the copyrighted works. 284 This is particularly true because the Design
Manual is ninety pages. Even assuming the recipients were influenced by the Design Manual, it
is not clear which parts of the Design Manual were influential to any given decision maker.
A helpful comparison is the Ninth Circuit’s Mackie v. Rieser case. 285 There, a symphony
created a “twenty-four page promotional brochure.” 286 One page in the brochure featured a
collage, which included pictures of a local artist’s work. 287 The artist sued for copyright
infringement, but the court concluded the artist had not shown a causal connection between the
infringement and the symphony’s profits. 288 Specifically, the court explained there was no
evidence people subscribed to the symphony because of the artwork—they could have
subscribed “because of the Symphony’s reputation, or the conductor, or a specific musician, or
the dates of the concerts, or the new symphony hall, or the program, or the featured composers,
or community boosterism, or simply a love of music, or . . . ?” 289 Like the artist in Mackie,
Core-Brace has presented no evidence establishing the copyrighted drawings—as opposed to
other factors—influenced the recipients.
283
ECF 218 at 37.
284
See id. at 36–38.
285
296 F.3d 909 (9th Cir. 2002).
286
Id. at 912.
287
Id.
288
Id. at 916.
Id.; see also Rocking Chair Enters., 407 F. Supp. 2d at 1271–74 (concluding the connection between increased
mall profits and a song used in a commercial was “too attenuated to create the nexus required to show causation”);
Andreas, 336 F.3d at 797–98 (concluding there was causal evidence when the copyrighted work was the
“centerpiece” of an Audi commercial and Audi gave the advertising agency that created the commercial a bonus
because of the commercial’s success).
289
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Nevertheless, Core-Brace faults Defendants for not apportioning their damages. 290 To be
sure, the “infringer is required to prove his or her deductible expenses and the elements of profit
attributable to factors other than the copyrighted work.” 291 But this apportionment occurs after
the copyright owner has presented evidence of a causal connection between the infringement and
the infringer’s profits. 292 Because Core-Brace has not presented sufficient evidence of a causal
connection, the court need not consider apportionment.
For these reasons, the court concludes Defendants are entitled to summary judgment on
Core-Brace’s copyright claim.
F. Defamation
Plaintiffs’ final cause of action is for defamation, including defamation per se. 293 This
claim is based on emails Defendants sent to third parties discussing the present litigation.294 For
the reasons explained below, the court concludes Defendants have not met their burden of
showing they are entitled to summary judgment on this claim.
“Under Utah law, a statement is defamatory if it impeaches an individual’s honesty,
integrity, virtue, or reputation and thereby exposes the individual to public hatred, contempt, or
ridicule.” 295 Some categories of statements qualify as defamation per se, meaning “injury can be
presumed from the words alone.” 296 Those categories are “(1) charge of criminal conduct,
290
ECF 218 at 37–38.
291
17 U.S.C. § 504(b).
292
Mackie, 296 F.3d at 915 (holding courts should inquire into the causal connection before considering
apportionment); see also Andreas, 336 F.3d at 796 (“The burden of establishing that profits are attributable to the
infringed work often gets confused with the burden of apportioning profits between various factors contributing to
the profits.”).
293
ECF 63 ¶¶ 135–38; ECF 218 at 39 (arguing Defendants’ statements “constitute not only defamation, but
defamation per se”).
294
See ECF 63 ¶¶ 52–56.
295
West v. Thompson Newspapers, 872 P.2d 999, 1008 (Utah 1994).
296
Allred v. Cook, 590 P.2d 318, 321 (Utah 1979).
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(2) charge of a loathsome disease, (3) charge of conduct that is incompatible with the exercise of
a lawful business, trade, profession, or office; and (4) charge of the unchastity of a woman.” 297
Defendants argue they are entitled to summary judgment because the statements “are by
definition not defamatory” and because they were “merely [trying] to defend themselves and
their positions to third parties.” 298 Additionally, they argue the statements are “rhetorical
hyperbole vaguely accusing a business of wrongdoing,” which “does not rise to the level of
defamation per se.” 299 But in their Motion, Defendants do not identify the allegedly defamatory
statements or assess their content. 300 Plaintiffs argue this “lack of specificity alone warrants the
denial of the Motion.” 301
The court agrees with Plaintiffs. As the movants, Defendants bear the initial burden of
“presenting evidence to show the absence of a genuine issue of material fact.” 302 Merely
asserting the statements are hyperbole and not defamatory—without even identifying the
statements—is not sufficient to carry this burden.
Nevertheless, Defendants present additional arguments in their Reply. 303 For example,
they argue the statements are true and protected by the litigation privilege. 304 While those are
297
Id. at 320.
298
ECF 195 at 20–21.
299
Id. at 21 (quoting John Bean Techs. Corp., 480 F. Supp. 3d at 1323).
See id. at 20–21. In response to interrogatories, Plaintiffs identified the emails this claim is based on, meaning
Defendants could have identified the statements. See id. at 21.
300
301
ECF 218 at 38.
302
Trainor v. Apollo Metal Specialties, Inc., 318 F.3d 976, 979 (10th Cir. 2002).
303
See ECF 226 at 16–17.
304
Id. at 16.
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defenses to a defamation claim, Defendants failed to raise them in their Motion. Accordingly,
Plaintiffs had no opportunity to respond, and the court declines to consider them now. 305
For these reasons, Defendants have not shown they are entitled to summary judgment on
Plaintiffs’ defamation claim.
III.
Plaintiffs’ Motion
Defendants assert three counterclaims: defamation per se, deceptive trade practices, and
intentional interference with economic relations. 306 These claims are based on letters Plaintiffs
sent to third parties regarding their lawsuit against Defendants. 307 Plaintiffs moved for summary
judgment, arguing they are entitled to judgment as a matter of law on all the claims. 308
The court addresses each claim in turn. For the reasons explained below, it concludes
Plaintiffs are not entitled to summary judgment on any of the claims.
A. Defamation Per Se
Shortly after filing the Complaint and TRO Motion, Plaintiffs’ counsel sent a letter to
three companies. 309 The letter explained Plaintiffs had sued Defendants, identified the claims
asserted and the case number, and attached the Complaint and TRO Motion. 310
Defendants do not argue the letter itself is defamatory. 311 Rather, Defendants argue the
following statements from the Complaint and TRO Motion are defamatory:
See In re: Motor Fuel Temperature Sales Pracs. Litig., 872 F.3d 1094, 1112 n.5 (10th Cir. 2017) (“[A]rguments
raised for the first time in a reply brief are waived.”).
305
306
ECF 70 ¶¶ 26–47.
307
See id.
308
ECF 198.
309
ECF 196-8.
310
Id.
311
See ECF 211 at 13–14, 18–19 (identifying the allegedly defamatory statements).
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•
“SBC lacks sufficient expertise, experience, and facilities to develop, design, and
manufacture industry-standard BRBs.” 312
•
“[Upon information and belief,] Defendants have not instituted the necessary quality
control measures to ensure the safety and functionality of the BRBs.” 313
•
“[Upon information and belief,] Defendants lack the fundamental and necessary
experience in BRB fabrication to ensure a safe or industry-standard product.” 314
•
“Defendants’ lack of quality control and experience in BRB fabrication creates a
tremendous risk to the public as the failure of a BRB could have catastrophic
consequences and endanger human lives.” 315
•
“Defendants have further misrepresented the nature, characteristics, and qualities of
their products in a manner that is confusing and misleading to the consuming public,
including by claiming that their alleged BRBs have been appropriately tested when,
in fact, they failed certain portions of such testing.” 316
To establish a prima facie case of defamation, Defendants must show (1) Plaintiffs
“published the statements,” (2) “the statements were false,” (3) “the statements were not subject
to a privilege,” (4) “the statements were published with the requisite degree of fault,” and
(5) “the statements resulted in damages.” 317 “The guiding principle in determining whether a
statement is defamatory is the statement’s tendency to injure a reputation in the eyes of its
audience.” 318 Notably, a showing of actual damages is not required if the claim is for defamation
per se, as in this case. 319
312
ECF 211 ¶ 32 (quoting ECF 18 ¶ 54; ECF 19 ¶ 65).
313
Id. (alteration in original) (quoting ECF 63 ¶ 47).
314
Id. (alteration in original) (quoting ECF 63 ¶ 48).
315
Id. (quoting ECF 63 ¶ 50).
316
Id. (quoting ECF 63 ¶ 62).
Jacob v. Bezzant, 2009 UT 37, ¶ 21, 212 P.3d 535 (quoting Oman v. Davis Sch. Dist., 2008 UT 70, ¶ 68, 194
P.3d 956).
317
318
Spencer v. Glover, 2017 UT App 69, ¶ 7, 397 P.3d 780 (quoting West v. Thompson Newspapers, 872 P.2d 999,
1008 (Utah 1994)).
See Eskamani v. Auto-Owners Ins. Co., 2020 UT App 137, ¶ 28, 476 P.3d 542. As explained, “[i]n order to
constitute defamation per se, the defamatory words must charge criminal conduct, loathsome disease, conduct that is
incompatible with the exercise of a lawful business, trade, profession, or office, or the unchastity of a woman.”
Baum v. Gillman, 667 P.2d 41, 43 (Utah 1983).
319
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Plaintiffs argue they are entitled to summary judgment because the allegedly defamatory
statements are true, are protected opinion, and are privileged. 320 They also argue Defendants
have not sufficiently shown damages. 321 The court addresses each argument below.
1. Truth
Plaintiffs argue the statements are true and thus not defamatory. 322 They address each
statement individually, but their arguments for each statement are largely similar—namely, that
the statements are true because “Defendants do not have their own manufacturing facility and
instead rely on third parties” 323 and because two of Defendants’ five BRBs did “not satisfy the
AISC 341-10 requirements” when tested by the University of Utah. 324
Viewing the evidence and making all reasonable inferences in the light most favorable to
Defendants, 325 the court concludes a reasonable jury could find Plaintiffs’ statements are not
true. For example, a reasonable jury could find that although Defendants do not directly
manufacture their BRBs, that does not mean they “lack[] sufficient expertise, experience, and
facilities to develop, design, and manufacture industry-standard BRBs.” 326 In other words, the
320
ECF 198 at 16–27.
321
Id. at 28–29.
Id. at 17–22; see also Brehany v. Nordstrom, Inc., 812 P.2d 49, 57 (Utah 1991) (“In [Utah], truth is an absolute
defense to an action for defamation.”).
322
323
ECF 198 at 20.
324
Id. at 19.
See N. Nat. Gas Co. v. Nash Oil & Gas Co., 526 F.3d 626, 629 (10th Cir. 2008). In defamation cases, the Utah
Supreme Court has held that “the First Amendment’s presence merits altering [the] customary rules of review by
denying a nonmoving party the benefit of a favorable interpretation of factual inferences.” Jacob, 2009 UT 37, ¶ 18
(quoting O’Connor v. Burningham, 2007 UT 58, ¶ 27, 165 P.3d 1214). The court does not alter the standard here
because neither party asked it to, but the court notes its conclusion would be the same under either standard. See
Hogan v. Winder, 762 F.3d 1096, 1104 n.3 (10th Cir. 2014) (declining to decide whether the state standard applied
because the defendants prevailed under either standard).
325
326
ECF 211 ¶ 32 (quoting ECF 18 ¶ 54; ECF 19 ¶ 65).
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jury could agree with Defendants that “SBC manufactures BRBs through the use of third party
fabricators and thus has manufacturing capabilities.” 327
A reasonable jury could also find that although some of Defendants’ BRBs did not
qualify under AISC 341-10, it is not true that “Defendants lack the fundamental and necessary
experience in BRB fabrication to ensure a safe or industry-standard product” 328 and “have not
instituted the necessary quality control measures.” 329 The jury could determine that a less-thanperfect testing record does not necessarily indicate inadequate experience and quality control.
A jury could also find that Defendants do not lack “experience in BRB fabrication,” 330
particularly given Hinchman’s experience in the field. 331 And because “SBC only provides
qualified BRBs that have been approved for use,” 332 a jury could find it was not misleading for
Defendants to say their BRBs have been “appropriately tested,” 333 even though two BRBs did
not qualify.
But Plaintiffs argue the truth of these statements is evident when read in context of the
Complaint and TRO Motion. 334 In support, they highlight several phrases from the filings that
clarify only two BRBs did not qualify. 335 A jury might agree with that reasoning, but the court is
unpersuaded that a reasonable jury could only see it Plaintiffs’ way. A reasonable jury could
327
Id. at 22.
328
Id. ¶ 32 (quoting ECF 63 ¶ 48).
329
Id. (quoting ECF 63 ¶ 47).
330
Id. (quoting ECF 63 ¶ 50).
331
See ECF 27 ¶ 5 (Hinchman stating he has “been working in the field of BRBs since at least as early as 1998”).
332
ECF 211 at 22.
333
Id. ¶ 32 (quoting ECF 63 ¶ 62).
Plaintiffs’ Reply in Support of Their Motion for Summary Judgment on Defendants’ Counterclaims (ECF 227) at
12–13.
334
335
Id.
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find the allegedly defamatory statements are not true, even when read in context of the
Complaint and TRO Motion.
The court is not concluding these statements are defamatory. But viewing the evidence
and all reasonable inferences in Defendants’ favor, a reasonable jury could find the statements
are not true. Accordingly, Plaintiffs are not entitled to summary judgment based on a truth
defense.
2. Opinion
Plaintiffs also argue the statements are not defamatory because they are opinion
statements. 336 The court disagrees because, as articulated below, a reasonable jury could
conclude the statements are assertions of fact. 337
Separating fact from opinion can be difficult. This is because “authors typically describe
the perceived factual bases for opinions, seeking to demonstrate that the author’s opinions are
grounded in common sense.” 338 Accordingly, the Utah Supreme Court has articulated four
factors to help distinguish between fact and opinion:
(i) the common usage or meaning of the words used; (ii) whether the statement is
capable of being objectively verified as true or false; (iii) the full context of the
statement—for example, the entire article or column—in which the defamatory
statement is made; and (iv) the broader setting in which the statement appears. 339
The court addresses each factor below and then weighs them. It concludes a reasonable
jury could find these factors weigh in favor of the statements being assertions of fact, not
opinion.
ECF 198 at 22–25; see also West, 872 P.2d at 1015 (“Because expressions of pure opinion fuel the marketplace
of ideas and because such expressions are incapable of being verified, they cannot serve as the basis for defamation
liability.”).
336
See West, 872 P.2d at 1015 (stating the Utah Constitution “protect[s] expressions of opinion, and this protection
is ‘abused’ when the opinion states or implies facts that are false and defamatory”).
337
338
Id.
339
Id. at 1018.
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i.
Factors 1 & 2: Common Usage and Objective Verifiability
Because the first two factors assess similar aspects of the statements, the court considers
them together. 340 Plaintiffs argue at least two of the statements are not “capable of being
objectively verified as true or false” because they include the phrase “upon information and
belief.” 341 Plaintiffs further argue the phrase “upon information and belief” “transforms the
assertion from a bare statement of fact to the subjective belief of the declarant.” 342
A jury might agree with Plaintiffs that “upon information and belief” was sufficient to
make the statements opinion. But a reasonable jury could also disagree. Specifically, a
reasonable jury could conclude the phrase was not sufficient hedging to turn a “bare statement of
fact” into an opinion. Indeed, the Utah Court of Appeals has recently noted that “[p]hrases like
‘we think’ ‘in and of themselves do not save the statements in issue from being defamatory.’” 343
Moreover, a jury could conclude “upon information and belief” is intended to signal that the
subsequent statement is grounded in fact and thus factual.
Finally, even if the court agreed with Plaintiffs, this argument does not account for the
other three statements, which do not include any hedging. Accordingly, this factor weighs in
Defendants’ favor.
340
See RainFocus Inc. v. Cvent Inc., 2023 UT App 32, ¶¶ 24–28, 528 P.3d 1221 (considering these factors together).
341
ECF 227 at 14.
342
Id.
343
RainFocus, 2023 UT App 32, ¶ 30 n.9 (quoting ZAGG, Inc. v. Catanach, No. 12-4399, 2012 WL 4462813, at *3
(E.D. Pa. Sept. 27, 2012)).
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ii.
Factor 3: Full Context
Plaintiffs argue this factor weighs in their favor because the recipients “would
undoubtedly understand that Plaintiffs’ legal document would be presenting Plaintiffs’ case in
the most favorable light.” 344
A jury could agree with Plaintiffs’ reasoning, but it could also find the recipients would
be more likely to trust statements because they were from Plaintiffs’ legal filings. In RainFocus
v. Cvent, for example, the Utah Court of Appeals assessed a similar fact pattern—Cvent’s CEO
and general counsel emailed RainFocus’s clients and potential clients and asserted RainFocus
had “misappropriated its trade secrets and copyrights.” 345 Rainfocus counterclaimed for
defamation, and Cvent argued the statements were opinion. 346 The Utah Court of Appeals held
they were not statements of opinion, and in doing so concluded the “full context” factor weighed
against Cvent. 347 Specifically, the court reasoned RainFocus’s “clients or prospective clients
might reasonably expect [Cvent’s] CEO and General Counsel to have inside information they
could rely on as truth.” 348 So too here—the jury could find the recipients would be likely to trust
the statements as fact since they came from Plaintiffs, a party likely to have relevant knowledge.
Moreover, as Defendants point out, the statements come from the Complaint’s “Factual
Background” 349 and the TRO Motion’s “Statement of Relevant Facts.” 350 This placement could
indicate to readers that the statements were fact, not opinion. Additionally, while “exaggerated
344
ECF 227 at 15.
345
2023 UT App 32, ¶ 1.
346
Id. ¶¶ 2, 22.
347
Id. ¶¶ 29–32, 40.
348
Id. ¶ 29.
349
See ECF 63 at 3.
350
See ECF 18 at 6.
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or hyperbolic” language is a “a signal of opinion,” 351 the statements here are largely nonexaggerated and non-hyperbolic. The fourth statement is borderline exaggeration because it
warns about “a tremendous risk to the public as the failure of a BRB could have catastrophic
consequences and endanger human lives.” 352 But the other statements all have a “serious and
professional” tone, suggesting they are statements of fact. 353
For these reasons, this factor weighs in Defendants’ favor.
iii.
Factor 4: Broader Setting
Plaintiffs again argue the recipients would read the statements as opinion because they
came from Plaintiffs’ court filings. 354 But the court concludes the broader setting weighs in
Defendants’ favor.
RainFocus v. Cvent is again a useful comparison. There, the Utah Court of Appeals
defined the broader context as “Cvent reaching out to RainFocus’s clients or prospective clients
to discourage them from doing business with RainFocus by sharing allegations” from the
lawsuit. 355 The court stated that while the readers might have some skepticism about Cvent’s
motives, “in the context of intentional, private, and targeted undercutting of a competitor’s
business by sharing alleged facts, . . . the broader setting strongly favors an interpretation of the
alleged communications as factual in nature.” 356 And the court noted that holding otherwise
“would give companies license to freely tarnish a competitor’s reputation in private, targeted
351
RainFocus, 2023 UT App 32, ¶ 31.
352
ECF 211 ¶ 32 (quoting ECF 63 ¶ 50).
353
See RainFocus, 2023 UT App 32, ¶ 31 (“What’s more, the tone in all four communications is serious and
professional, supporting an interpretation that Cvent is conveying factual information.”).
354
ECF 227 at 15.
355
RainFocus, 2023 UT App 32, ¶ 36.
356
Id. ¶ 38.
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communications undercutting their business so long as recipients are on notice that a lawsuit is
pending.” 357
Similarly, it is evident Plaintiffs contacted the third parties in an “intentional, private, and
targeted” manner. With that setting in mind, a reasonable jury could conclude the recipients
would read the statements as fact, not opinion. 358 Furthermore, Plaintiffs’ targeted messaging
distinguishes this case from Dreamstone Entertainment Ltd. v. Maysalward Inc., 359 a case
Plaintiffs cite. In Dreamstone, an attorney discussed a lawsuit in a press release, which he
republished on his firm’s website, along with a link to the complaint. 360 Based on this context,
the district court concluded viewers would “be unlikely to read the press release as a neutral
statement of facts.” 361 But here, Plaintiffs did simply issue a press release—they targeted
specific companies. That could indicate an assertion of fact, not opinion. 362
iv.
Weighing the Factors
A reasonable jury could find all four factors weigh in Defendants’ favor. Accordingly, a
reasonable jury could find the statements are not protected opinion. Plaintiffs are thus not
entitled to summary judgment on this ground.
3. Privilege
Plaintiffs argue the statements are conditionally privileged because they made them to
protect a legitimate interest. 363 In Utah, statements are conditionally privileged if they are “made
357
Id. ¶ 36.
See id. ¶ 37 (stating it would be “illogical” to conclude Cvent’s statements “were mere opinion” given the
broader setting).
358
359
No. 2:14-cv-02063-CAS(SSx), 2014 WL 4181026 (C.D. Cal. Aug. 18, 2014).
360
Id. at *2.
361
Id. at *6.
362
See RainFocus, 2023 UT App 32, ¶¶ 36–39.
363
ECF 198 at 25–27.
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to protect (1) a legitimate interest of the publisher of the communication; (2) a legitimate interest
of the recipient of the communication or of a third person; or (3) a legitimate common interest
between the publisher and the recipient of the communication.” 364 But the privilege is lost if the
allegedly defamed party proves the publisher “acted with malice or that the publication of the
defamatory material extended beyond those who had a legally justified reason for receiving
it.” 365
Plaintiffs argue the legitimate interest is their concern that Defendants’ BRBs will fail,
causing the BRB industry to fail and significant loss of human life. 366 Defendants counter that
this concern is too speculative to qualify as legitimate interest, but regardless, Plaintiffs abused
the privilege by publishing the statements with malice. 367 The court concludes Plaintiffs have
not shown the privilege applies and thus does not address Defendants’ alternative malice
argument.
To support their argument, Plaintiffs cite three cases where the court held there was a
legitimate interest. The court first reviews those cases and then explains why Plaintiffs’ asserted
interest is not comparable.
Plaintiffs first cite Brehany v. Nordstrom, Inc., where a store employee was fired for
allegedly selling drugs to other employees. 368 At a meeting, the store’s manager told other
employees that the employee’s firing was drug related and that “drug use would not be
364
Agee v. Morton Thiokol, Inc., No. 91-4066, 1992 WL 232473, at *2 (10th Cir. Aug. 31, 1992) (unpublished table
decision); see also Brehany v. Nordstrom, 812 P.2d 49, 58 (Utah 1991) (explaining when the privilege is
applicable).
365
Brehany, 812 P.2d at 58. The publisher also abuses the privilege by making “a defamatory statement knowing it
to be false” or acting “in reckless disregard as to its falsity.” Ferguson v. Williams & Hunt, Inc., 2009 UT 49, ¶ 28,
221 P.3d 205.
366
ECF 198 at 27.
367
ECF 211 at 27–34.
368
812 P.2d at 52.
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tolerated.” 369 The Utah Supreme Court held these statements were conditionally privileged
because “[k]knowledge that Nordstrom intended to enforce its policy against the use of narcotics
was important information for those employees because of its deterrent effect both upon them
and the employees they managed, especially in view of the fact that drug usage may have been
widespread.” 370
Second, Plaintiffs cite Agee v. Morton Thiokol, Inc. 371 In Agee, the plaintiff’s former
supervisor told the plaintiff’s prospective employer that the plaintiff was terminated for
“unacceptable work” and would “probably not be allowed back on the premises.” 372 The Tenth
Circuit held this statement was privileged because the prospective employer “had a legitimate
interest in learning the employment background of an individual being consider[ed] for an
important oversight position.” 373 Additionally, the prospective employer was considering the
plaintiff for a position that would require him to oversee his former employer. 374 Both
employers thus had an interest in discussing why the plaintiff was terminated so they could
determine if he could be “an effective liaison.” 375
Finally, Plaintiffs cite Mitan v. BRCSLC, Inc., which involved a letter that “warned
potential business investors of fraudulent investment activities by” the plaintiff and his family. 376
A business broker posted an article about the fraud on his website and included a link to the
369
Id.
370
Id. at 59.
371
1992 WL 232473.
372
Id. at *1.
373
Id. at *2.
374
Id. at *1.
375
Id. at *2.
376
No. 2:09-cv-363, 2010 WL 4024938, at *1 (D. Utah Oct. 13, 2010).
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letter. 377 The district court concluded the article was privileged because “[t]hose who view the
website are likely interested in various business dealings” and “[t]he article warned of possible
fraudulent business dealings.” 378 Accordingly, the business broker and website viewers both had
“a legitimate interest in avoiding fraudulent investment schemes.” 379
Brehany, Agee, and Mitan share a common trait: a direct, nonspeculative connection
between the alleged defamation and the asserted interest. In Brehany, for example, there was a
direct connection between a manager saying an employee was fired for drug use and the store’s
interest in deterring employee drug use. 380 Likewise, in Agee, the employers’ interest in hiring
an effective liaison connected directly to the statements about why the employee was fired. 381
And in Mitan, there was a direct connection between a broker sharing a letter about fraud and the
interest in preventing fraud. 382
Here, no similar connection exists. Plaintiffs shared their Complaint and TRO Motion,
which focus on Plaintiffs’ legal claims, including those for false advertising, false association,
patent infringement, copyright infringement, and defamation. 383 The court is not persuaded that
there is a direct connection between these legal claims and Plaintiffs’ asserted interest in
protecting the BRB industry and human lives. Moreover, those asserted interests are speculative
because they assume Defendants BRBs are deficient and will fail in such a way that destroys the
BRB industry and results in death. While the court is not concluding an asserted interest must be
377
Id. at *1–2.
378
Id. at *4.
379
Id.
380
812 P.2d at 59.
381
1992 WL 232473, at *2.
382
2010 WL 4024938, at *4.
383
ECF 63 at 9–19.
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a certainty, it is not convinced that the privilege is meant to cover interests as attenuated and
uncertain as Plaintiffs’. Indeed, if Plaintiffs’ asserted interests were sufficient to invoke the
privilege, the court is concerned any plaintiff could use the same speculative reasoning to justify
disseminating its complaint without limit.
In short, Plaintiffs have not shown their asserted interests are of the type that qualify for
the legitimate interest privilege. They are thus not entitled to summary judgment on this ground.
4. Damages
Finally, Plaintiffs argue Defendants’ defamation claim must fail because they do not have
admissible evidence of damages and have not hired an expert to testify about damages. 384
Plaintiffs counter they are not required to show actual damages because their claim is for
defamation per se. 385 They also argue Hinchman’s testimony will provide sufficient evidence of
damages. 386
“When words are defamatory per se, no showing of special damages is required because
damages are implied.” 387 Defendants are thus not required to show actual damages for their
defamation per se claim. Plaintiffs tacitly concede this point in their Reply, but they argue the
court “must summarily dismiss any claim to damages beyond nominal damages” because
Defendants failed to timely disclose damages information. 388 As explained in more detail below,
the court concludes that although Defendants failed to meet Rule 26’s disclosure requirements,
the damages evidence should not be excluded. Accordingly, Defendants are not entitled to
summary judgment on this ground.
384
ECF 198 at 28–29.
385
ECF 211 at 34.
386
Id.
387
Auto W., Inc. v. Baggs, 678 P.2d 286, 290 (1983).
388
ECF 227 at 22–23.
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B. Deceptive Trade Practices
Defendants’ second counterclaim is for deceptive trade practices under the Utah Truth in
Advertising Act. 389 They assert Plaintiffs disparaged their “goods, services, and/or business . . .
by false and/or misleading representation of fact.” 390 Defendants identify the false or misleading
representations of fact as the same statements from the Complaint and TRO Motion they argue
are defamatory. 391 Plaintiffs argue they are entitled to summary judgment because the
statements are true. 392
As explained above, a reasonable jury could conclude the statements are not true. 393
Accordingly, there is a genuine dispute of material fact concerning whether the statements are
false or misleading, and Plaintiffs are thus not entitled to summary judgment on this claim. 394
C. Intentional Interference with Economic Relations
Defendants’ final counterclaim is for intentional interference with economic relations. 395
This claim is also based on the letters Plaintiffs sent to third parties regarding their lawsuit
against Defendants. 396 To succeed on this claim at trial, Defendants must show (1) Plaintiffs
“intentionally interfered with [Defendants’] existing or potential economic relations, (2) . . . by
improper means, (3) causing injury to [Defendants].” 397 Plaintiffs argue they are entitled to
389
ECF 70 ¶¶ 35–40.
390
Id. ¶ 37; see also Utah Code § 13-11a-3(1)(h).
391
Id. ¶¶ 37–38.
392
ECF 198 at 29.
393
See supra Section III.A.1.
394
See ECF 229 at 23 (“The Opposition concedes that Defendants’ deceptive trade practices counterclaim rises or
falls with their defamation counterclaim.”).
395
ECF 70 ¶¶ 41–47.
396
Id. ¶ 44.
See Eldridge, 2015 UT 21, ¶ 70 (alteration in original) (quoting Leigh Furniture & Carpet Co. v. Isom, 657 P.2d
293, 304 (Utah 1982)).
397
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summary judgment because Defendants cannot establish improper means or injury. 398 For the
reasons explained below, the court disagrees and concludes summary judgment on this claim is
inappropriate.
1. Improper Means
“Improper means include violence, threats or other intimidation, deceit or
misrepresentation, bribery, unfounded litigation, defamation, or disparaging falsehood.” 399 As
explained, there are genuine disputes of material fact regarding Defendants’ defamation and
deceptive trade practices claims. 400 Because those claims could satisfy the improper means
element, Plaintiffs have not shown they are entitled to summary judgment on this ground.
2. Injury
Defendants argue they were injured by the alleged defamation because Hinchman had to
spend “upwards of forty (40) hours” convincing the recipients to keep SBC on a project. 401
Defendants further assert Hinchman is seeking $300 per hour, bringing the total damages to
$12,000. 402
Plaintiffs contend Defendants failed to timely disclose their damages computation and
thus cannot show injury. 403 After oral argument on Plaintiffs’ Motion, the court ordered
supplemental briefing on whether Defendants violated Federal Rule of Civil Procedure 26 by not
398
ECF 198 at 31–32.
Overstock.com, Inc. v. SmartBargains, Inc., 2008 UT 55, ¶ 18, 192 P.3d 858 (quoting St. Benedict’s Dev. Co. v.
St. Benedict’s Hosp., 811 P.2d 194, 201 (Utah 1991)).
399
400
See supra Sections III.A & B.
ECF 211 at 36; see also Declaration of Andy Hinchman (ECF 209-6) ¶ 6; Defendants’ Supplement Pursuant to
Mar. 11, 2002 Court Order (ECF 243) at 2.
401
402
ECF 243 at 5 (“The defendants have been made aware that Mr. Hinchman is seeking $300/hr for mitigating the
damages Plaintiffs attempted to inflict . . . and that the amount of time Mr. Hinchman spent earning back his client’s
trust to be forty hours.”).
ECF 198 at 32; see also Plaintiffs’ Supplemental Brief In Support of Their Motion for Summary Judgment on
Defendants’ Counterclaims (ECF 246 Sealed Version) (ECF 244 Public Version); Plaintiffs’ Response to
Defendants’ Supplement Pursuant to Mar. 11, 2022 Court Order (ECF 253).
403
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timely disclosing their damages computation and if so, whether that failure was harmless under
the Woodworker’s factors. 404 In their supplemental briefing, the parties disagree on both points.
As explained below, the court concludes Defendants violated Rule 26 but that the violation is
harmless because it can be cured.
i.
Rule 26
Rule 26(a) requires parties to disclose “a computation of each category of damages
claimed.” 405 The disclosing party “must also make available for inspection and copying as under
Rule 34 the documents or other evidentiary material, unless privileged or protected from
disclosure, on which each computation is based, including materials bearing on the nature and
extent of injuries suffered.” 406 And under Rule 26(e), a party must supplement or correct its
Rule 26(a) disclosures upon learning they are incomplete or incorrect. 407
In their initial disclosures, Defendants stated their “computation of each category of
damages claimed” as “[r]eimbursement for all attorneys fees and costs in defending the case,
interest on all sums awarded, and all such other further relief deemed just and proper.” 408 But it
was not until their Opposition to Plaintiffs’ Motion that Defendants explained their damages
included forty hours Hinchman spent working with the letter recipients. 409
Plaintiffs argue Defendants violated Rule 26 because they did not initially disclose their
damages computation and failed to supplement their disclosures. 410 The court agrees—
404
ECF 242; see also Woodworker’s Supply, Inc. v. Principal Mut. Life Ins. Co., 170 F.3d 985, 993 (10th Cir. 1999).
405
Fed. R. Civ. P. 26(a)(1)(A)(iii).
406
Id.
407
Id. R. 26(e)(1)(A).
408
Exhibit A to ECF 244-1: Defendants’ Initial Disclosures (ECF 244-1) at 3.
See ECF 211 ¶ 49; see also ECF 243 at 6 (Defendants stating Plaintiffs “were made aware in the summary
judgment proceedings of the forty hours that Mr. Hinchman spent earning back clients due to the actions of the
Plaintiffs”).
409
410
ECF 246 at 7–8.
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Defendants violated Rule 26 by waiting until summary judgment proceedings to provide a
damages computation.
However, Defendants argue they “substantially complied” with Rule 26(a) because
“Plaintiffs know the theory for the damages, the amount Hinchman charges per hour, and they
have documentation that details the steps Hinchman took to restore client relationships.” 411 Even
assuming that is true, Defendants waited until summary judgment to explain their damages were
based on forty hours of work by Hinchman. 412 Without that amount, the computation of
damages was incomplete, and Defendants should have supplemented their disclosures.
ii.
Woodworker’s Factors
“If a party fails to provide information . . . as required by Rule 26(a) or (e), the party is
not allowed to use that information . . . unless the failure was substantially justified or is
harmless.” 413 The Tenth Circuit has articulated four factors—the Woodworker’s factors—that
courts use when evaluating whether a Rule 26 violation is justified or harmless. 414 The factors
are “(1) the prejudice or surprise to the party against whom the testimony is offered; (2) the
ability of the party to cure the prejudice; (3) the extent to which introducing such testimony
would disrupt the trial; and (4) the moving party’s bad faith or willfulness.” 415 Below, the court
evaluates the factors and concludes they collectively weigh against exclusion.
411
Defendants’ Reply Brief Pursuant to Mar. 11, 2022 Court Order (ECF 250) at 3.
412
See id. (“Defendants substantially complied with this requirement, but for disclosing the forty hours.”).
413
Fed. R. Civ. P. 37(c)(1).
414
See Woodworker’s Supply, 170 F.3d at 993.
415
Id.
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Prejudice or surprise. Plaintiffs argue this factor weighs in their favor because
Defendants did not provide the computation until summary judgment and because Defendants
repeatedly represented they were going to use an expert. 416
Defendants assert there was no prejudice or surprise because Plaintiffs were “given ample
opportunity to depose Mr. Hinchman regarding damages.” 417 In support, they cite Gillum v.
United States, where the United States argued it was prejudiced by a Rule 26(a) violation
because it could not adequately prepare for a deposition. 418 The Tenth Circuit did “not contest
that the United States’s attorney was hampered in preparing for [the] deposition,” but it
concluded the violation was harmless because “any prejudice . . . was capable of being cured.” 419
Accordingly, Gillum does not support Defendants’ argument because Gillum’s holding was
based on the ability to cure, not a lack of prejudice. 420
Furthermore, Hinchman’s deposition testimony did not clarify Defendants’ claimed
damages. 421 For example, when asked what costs he had incurred, he identified “lawyer fees,”
“travel business expenses, meals, loss of projected business revenue,” and his “time.” 422 He also
suggested an hourly rate of $300 because that is how much “professional witnesses” are paid. 423
But he never stated he spent forty hours working to rectify relationships. 424 Moreover,
Hinchman identified $100,000 as his likely damages, but his counsel objected and clarified they
416
ECF 246 at 9.
417
ECF 243 at 4.
418
309 F. App’x 267, 269 (10th Cir. 2009) (unpublished).
419
Id. at 270.
420
Id.
421
Exhibit C to ECF 246: Andrew J. Hinchman Deposition (ECF 246-1) at 169:7–170:12; 171:8–172:6.
422
Id. at 169:7–170:9.
Id. at 170:6–9 (“I know we paid those professional witnesses 300 bucks an hour. So maybe I could go and log all
– get all my hours for what I spent on this and times that by 300 bucks.”).
423
424
See id. at 169:7–172:24.
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were going to “hire an expert” because Hinchman “isn’t qualified . . . to speculate on some of the
damages.” 425 And when Defendants’ counsel later asked Hinchman what his “other damages”
were, Hinchman identified $5 million in financial losses. 426 So although Plaintiffs deposed
Hinchman, his testimony was uncertain and did not establish the claimed damages.
In short, Plaintiffs were prejudiced because Defendants delayed disclosing their claimed
damages until summary judgment proceedings. For that reason, this factor weighs in Plaintiffs’
favor.
Curability. Plaintiffs argue the prejudice cannot be cured because fact discovery is
closed, “deadlines to serve expert reports regarding damages have expired, and summary
judgment motions have been filed and are currently pending.” 427 However, any prejudice can be
cured by ordering Defendants to supplement their damages disclosure and allowing Plaintiffs to
depose Hinchman about the claimed damages.
First, Defendants argue any disclosure inadequacies can be cured if the court orders them
to supplement their disclosures. 428 The court agrees—requiring Defendants to supplement their
disclosures will help cure the inadequacies.
Second, in similar scenarios, courts have concluded prejudice can be cured by allowing
the prejudiced party to depose the relevant witness. 429 Defendants’ damages computation is not
complex (40 hours at a rate of $300 per hour) and is thus unlikely to require significant time and
425
Id. at 171:15–25.
426
Id. at 172:20–24.
427
ECF 246 at 9.
428
ECF 243 at 7.
See Woodworker’s Supply, 170 F.3d at 993 (holding “the district court gave [the prejudiced party] a significant
opportunity to cure any resulting prejudice by cross-examining [the witness] outside the presence of the jury”);
Ngatuvai v. Lifetime Fitness, No. 2:16-cv-39-JNP-DBP, 2020 WL 5441442, at *19 (D. Utah Sept. 10, 2020)
(concluding “any possible prejudice” could be cured by allowing the prejudiced party to depose the relevant
witnesses “about their supplemental disclosures”).
429
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resources to investigate. And although Plaintiffs reference prejudice regarding their summary
judgment motion,430 that argument is too speculative to show incurable prejudice. Accordingly,
the court is persuaded that any prejudice to Plaintiffs can be cured by allowing Plaintiffs to
depose Hinchman about the claimed damages.
For the stated reasons, this factor weighs against exclusion.
Disruption. Defendants argue this factor weighs in their favor because a trial date has
not been set. 431 Plaintiffs contend this factor weighs in their favor because allowing additional
discovery “will kick trial even further down the road for a case that has been pending since
2017.” 432 The court agrees with Defendants—where no trial date has been set, the court is
unconvinced that allowing additional limited discovery would cause a significant enough delay
to disrupt the trial. This factor thus weighs against exclusion.
Bad faith or willfulness. Plaintiffs concede there is no evidence of bad faith, but argue
the untimely disclosure was willful because Defendants responded to their discovery requests
and deposition questions with “uncertainty, evasiveness, and promises of expert testimony.” 433
Defendants counter their failure to supplement the disclosures was an “unintentional
oversight.” 434 The court agrees with Plaintiffs.
The Tenth Circuit has “defined a willful failure as ‘any intentional failure as
distinguished from involuntary noncompliance.’” 435 Defendants did not initially disclose their
damages computation, nor have they supplemented their initial disclosures with the relevant
430
See ECF 246 at 9.
431
ECF 243 at 6–7.
432
ECF 246 at 10.
433
Id. at 10.
434
ECF 243 at 7.
In re Standard Metals Corp., 817 F.2d 625, 628–29 (10th Cir. 1987) (quoting Patterson v. C.I.T. Corp., 352 F.2d
333, 336 (10th Cir. 1965)) (discussing willfulness when a party disobeys a discovery order).
435
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information. Moreover, during Hinchman’s deposition and in response to Plaintiffs’
interrogatories, Defendants stated they planned to hire an expert. 436 Defendants later decided
against hiring an expert and did not file an expert report, 437 yet they still did not supplement their
disclosures. It was not until summary judgment proceedings that Defendants clarified they were
seeking damages based on 40 hours of work by Hinchman at a rate of $300 per hour.
Defendants have not provided an adequate explanation for their failure to disclose their
damages computation. This is particularly true because the computation they eventually
provided is not complex and consists solely of information that would have been available to
them from the beginning. And although Defendants claim this was an “unintentional oversight,”
the court concludes the repeated failures are sufficient to show intentional behavior and thus
willfulness.
Weighing the Factors. In sum, prejudice and willfulness weigh in favor of exclusion,
but curability and disruption to trial weigh against exclusion. The court concludes the latter two
factors carry more weight in this case. The question under Rule 37 is whether the failure was
substantially justified or harmless. 438 Because a trial date is not set and any harm can be cured
by requiring Defendants to supplement their disclosures and allowing Plaintiffs to depose
Hinchman, exclusion is not justified under Rule 37. 439 And because the court declines to
436
ECF 246-1 at 171:15–25; ECF 246-2 at 5 (Response to Interrogatory No. 24).
437
See ECF 243 at 7.
438
Fed. R. Civ. P. 37(c)(1).
See HCG Platinum, LLC v. Preferred Prod. Placement Corp., 873 F.3d 1191, 1205 (10th Cir. 2017) (stating
“district courts should consider the efficacy of lesser sanctions, where the exclusion of evidence has the necessary
force and effect of a dismissal”).
439
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exclude this evidence, Plaintiffs are not entitled to summary judgment based on Defendants’
failure to timely disclose their damages computation. 440
Furthermore, the court orders Defendants to supplement their damages disclosure within
fourteen days of this order. Plaintiffs may depose Hinchman about these supplemental
disclosures. And because Defendants’ disclosure failures necessitated the additional discovery,
the court orders that Defendants must pay the reasonable attorney fees and costs incurred by
Plaintiffs in deposing Hinchman again. 441
CONCLUSION
Defendants’ First Motion 442 is GRANTED.
Defendants’ Second Motion 443 is GRANTED in part and DENIED in part. Defendants
are entitled to summary judgment on the following claims:
•
Core-Brace’s false advertising 444 and false association 445 claims;
•
Core-Brace’s UTAA claim, 446 insofar as it is based on subsections (b) and (c);
440
At times, Defendants suggested their claimed damages included attorney fees. See ECF 211 ¶ 48; ECF 246-1 at
169:7–10. Plaintiffs argue these “are not permissible” damages because “damages in a tort action do not ordinarily
include compensation for attorney fees or other expenses of litigation.” ECF 246 at 2 (quoting Restatement
(Second) of Torts § 914 (1979)). Defendants do not respond to this contention, but from their arguments, it seems
apparent their claimed damages are limited to the forty hours Hinchman spent trying to rectify relationships and thus
do not include attorney fees. See ECF 211 at 36 (“The third parties finally acquiesced to using SBC’s BRBs on the
project after Hinchman spent upwards of forty (40) hours going back and forth with the third parties.”).
Accordingly, the court need not address whether attorney fees are recoverable with respect to this claim.
See Ngatuvai, 2020 WL 5441442, at *20 (ordering the party that failed to disclose to pay “reasonable attorney’s
fees and costs” associated with supplemental depositions and reports); see also Gillum, 309 F. App’x at 270
(“Further, to the extent that the second deposition was required because of the inadequate report, the court could
order that [the party at fault] bear the costs of the second deposition.”).
441
442
ECF 161.
443
ECF 195.
444
ECF 63 ¶¶ 57–64.
445
Id. ¶¶ 65–76.
446
Id. ¶¶ 77–90.
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•
SME’s unfair competition claim; 447 and
•
Core-Brace’s copyright infringement claim. 448
Defendants are not entitled to summary judgment on the following claims:
•
Core-Brace’s UTAA claim, 449 insofar as it is based on subsections (e) and (g);
•
Plaintiffs’ intentional interference with economic relations claim; 450 and
•
Plaintiffs’ defamation claim. 451
Plaintiffs’ Motion 452 is DENIED.
SO ORDERED this 11th day of July 2023.
BY THE COURT:
________________________________________
ROBERT J. SHELBY
United States Chief District Judge
447
Id. ¶¶ 107–11.
448
Id. ¶¶ 120–34.
449
Id. ¶¶ 77–90.
450
Id. ¶¶ 112–19.
451
Id. ¶¶ 135–38.
452
ECF 196; ECF 198.
70
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