Vittoria North America v. Euro-Asia Imports

Decision Date12 December 2001
Docket NumberNo. 00-6277.,00-6277.
Citation278 F.3d 1076
PartiesVITTORIA NORTH AMERICA, L.L.C., an Oklahoma limited liability company, Plaintiff-Appellee, v. EURO-ASIA IMPORTS INC., a California sole proprietorship; Beverly A. Hansing, Deborah H. Leto, Dennis R. Hansing, and Deanne Marie Hansing, in their capacity as Trustees of the Hansing Family Trust Dated November 15, 1990, Defendants-Appellants.
CourtU.S. Court of Appeals — Tenth Circuit

Frances E. Patton (Ted R. Rossier, Brandy K. Isom, and Susan A. Doke with her on the briefs), of Pierce, Couch, Hendrickson, Baysinger & Green, L.L.P., Oklahoma City, OK, for Defendants-Appellants.

George H. Brown of Klingenberg & Associates, P.C., Oklahoma City, OK (Kenneth W. Klingenberg of Klingenberg & Associates P.C., Oklahoma City, OK, and Stanley W. Ward with him on the brief), for Plaintiff-Appellee.

Before EBEL and McKAY, Circuit Judges, and CUDAHY,* Senior Circuit Judge.

EBEL, Circuit Judge.

In this case we are called upon to interpret provisions of the Tariff Act of 1930 designed to protect domestic owners of trademarks affixed to goods produced overseas by foreign manufacturers. Plaintiff-Appellee Vittoria North America, L.L.C., ("VNA"), an Oklahoma limited liability company, alleges that it is the U.S. owner of the trademark Vittoria, which designates a well-known brand of bicycle tires. VNA alleges that Defendant-Appellant Euro-Asia Imports, a California sole proprietorship, has purchased Vittoria-branded tires overseas and imported them into the United States in violation of VNA's trademark rights. VNA sued Euro-Asia Imports and its sole proprietor Robert Hansing1 (collectively "EAI") under § 526 of the Tariff Act (codified at 19 U.S.C. § 1526) ("the Act") seeking damages as well as an injunction to prevent EAI from continuing to import Vittoria bicycle tires into the United States. The Act states:

Except as provided in subsection (d) of this section, it shall be unlawful to import into the United States any merchandise of foreign manufacture if such merchandise, or the label, sign, print, package, wrapper, or receptacle, bears a trademark owned by a citizen of, or by a corporation or association created or organized within, the United States, and registered in the Patent and Trademark Office by a person domiciled in the United States, under the provisions of sections 81 to 109 of Title 15, and if a copy of the certificate of registration of such trademark is filed with the Secretary of the Treasury, in the manner provided in section 106 of said Title 15, unless written consent of the owner of such trademark is produced at the time of making entry.

19 U.S.C. § 1526. In other words, the Act provides so-called "gray market"2 protection to U.S. owners of trademarks associated with goods of foreign manufacture, prohibiting any other person or entity from importing goods bearing that trademark into the United States without the consent of the trademark owner. See, e.g., K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 288-89, 108 S.Ct. 1811, 100 L.Ed.2d 313 (1988). "The prototypical gray market victim ... is a domestic firm that purchases from an independent foreign firm the rights to register and use the latter's trademark as a United States trademark and to sell its foreign manufactured products here." Id. at 286, 108 S.Ct. 1811.

The district court granted VNA partial summary judgment, holding that the evidence showed that VNA owns and has properly registered the Vittoria trademark in the United States, that Vittoria-branded bicycle tires are manufactured overseas, and that EAI has imported Vittoria tires into the United States without VNA's consent. EAI now appeals, arguing that the evidence was insufficient to support summary judgment on the issue of whether VNA is the U.S. owner of the Vittoria trademark. EAI further argues that VNA is not entitled to protection under the Act because VNA is controlled by the foreign manufacturer of Vittoria tires. In addition, EAI argues we should reverse because the district court improperly denied it an opportunity to file a surrebuttal to VNA's reply brief on its motion for summary judgment. We AFFIRM.

I. BACKGROUND

On November 25, 1992, VNA's predecessor Hibdon Tire Center entered into an agreement ("the 1992 Agreement") with Vittoria S.p.A. ("Vittoria Italy"), a company organized under the laws of Italy and with headquarters in Bergamo, Italy. Hibdon Tire Center agreed to form VNA as a North American distributor of Vittoria tires, and Vittoria Italy agreed to designate VNA as its exclusive distributor in the United States, Canada, and Mexico. VNA distributed Vittoria-branded bicycle tires in the United States from that time forward. In February 1999, Vittoria Italy entered into an agreement ("Assignment Agreement") with VNA purporting to assign VNA "all right, title and interest in and to the United States Trademark `VITTORIA' and the registration therefore ..., together with the goodwill of the business connected with the use of and symbolized by said Trademark, as well as the right to sue for infringement of the Trademark or injury to said goodwill." The Assignment Agreement stated that "[t]he purpose of this Agreement is to permit Assignee [VNA] to act against infringers and unauthorized importers of Vittoria trademarked products into the United States." Vittoria Italy retained the right to retake title to the Trademark and its associated goodwill upon giving thirty days' written notice to VNA.

Shortly thereafter, VNA filed suit against EAI alleging that it infringed on VNA's trademark rights by importing Vittoria tires into the United States without first gaining VNA's consent. EAI concedes that it has been purchasing Vittoria-branded tires overseas and importing the tires into the United States since the early 1980s. VNA's suit seeks damages, an injunction to prevent further importation by EAI, and confiscation of EAI's inventory of Vittoria-branded products.

The district court granted VNA's motion for partial summary judgment, holding that undisputed facts in the case established VNA's right to protection under 19 U.S.C. § 1526. Vittoria N. Am., L.L.C. v. Euro Asia Imports, No. CIV-99-1357 A, slip op. at 1 (W.D.Okla. July 12, 2000). Specifically, the district court found that "Vittoria" is a registered United States Trademark, id. at 3, that Vittoria Italy assigned all of its rights, title and interest in the mark to VNA, and that the Assignment Agreement was recorded in the U.S. Patent and Trademark Office, id. The district court also found that VNA is not a subsidiary of Vittoria Italy, and has no common officers or directors with Vittoria, id. Finally, the district court found that the evidence showed EAI had imported and sold Vittoria-branded products in the United States. Id. The district court therefore enjoined EAI from further importation of Vittoria-branded products into the United States, although it did not address the issue of damages in its order. Id. at 12.

EAI now appeals the district court's injunction. EAI contends that the evidence relied upon by the district court was insufficient to prove VNA's ownership of the Vittoria trademark in the United States. Further, EAI argues that VNA is not entitled to protection under the Act because it falls under a regulatory exception denying gray market protection to U.S. companies if they are owned by or subject to common control with a foreign manufacturer of the trademarked goods. See 19 C.F.R. § 133.23(d)(1). Finally, EAI argues that the district court erred by failing to grant it leave to file a surrebuttal.

II. DISCUSSION

The district court had jurisdiction pursuant to 28 U.S.C. § 1331, and we exercise jurisdiction pursuant to 28 U.S.C § 1292(a)(1). "In reviewing [an] injunction, we may also address the summary judgment order that served as the district court's principal legal basis for granting the injunction because the district court's ruling on summary judgment was inextricably intertwined with its ruling granting a permanent injunction." Law v. Nat'l Collegiate Athletic Ass'n, 134 F.3d 1010, 1015 (10th Cir.1998) (citations omitted).

We review de novo a district court's grant of summary judgment, and affirm only if the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); see also, e.g., Simms v. Okla. ex rel. Dep't of Mental Health & Substance Abuse Servs., 165 F.3d 1321, 1326 (10th Cir.1999). We draw all inferences and construe the evidence in the light most favorable to the non-moving party. E.g., Kingsford v. Salt Lake City Sch. Dist., 247 F.3d 1123, 1128 (10th Cir. 2001).

A. Local Rule 56.1(c)

Before reaching the merits of the arguments before us, we must briefly consider a threshold issue raised by VNA. VNA contends that a statement of facts appended to VNA's summary judgment motion should be construed as true for the purposes of this appeal because EAI violated Rule 56.1(c) of the Local Court Rules for the Western District of Oklahoma in crafting its answer brief to the summary judgment motion. Rule 56.1(c) reads:

The brief in opposition to a motion for summary judgment (or partial summary judgment) shall begin with a section which contains a concise statement of material facts to which the party asserts genuine issues of fact exist. Each fact in dispute shall be numbered, shall refer with particularity to those portions of the record upon which the opposing party relies, and, if applicable, shall state the number of the movant's facts that is disputed. All material facts set forth in the statement of the material facts of the movant shall be deemed admitted for the purpose of summary judgment unless specifically controverted by the statement of material facts of the opposing party.

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