Digital Satellite Connections, LLC v. Dish Network Corp.
| Decision Date | 10 August 2018 |
| Docket Number | No. 15-1373,No. 17-1110,15-1373,17-1110 |
| Parties | DIGITAL SATELLITE CONNECTIONS, LLC; KATHY KING, Plaintiffs - Appellants, v. DISH NETWORK CORPORATION; DISH NETWORK, LLC; DISHNET SATELLITE BROADBAND, LLC, Defendants - Appellees. |
| Court | U.S. Court of Appeals — Tenth Circuit |
(D. Colo.)
ORDER AND JUDGMENT*Before TYMKOVICH, Chief Judge, BACHARACH and MORITZ, Circuit Judges.
Digital Satellite Connections, LLC (DSC) and Kathy King (collectively, the plaintiffs) appeal the district court's orders granting summary judgment to defendants Dish Network Corporation, Dish Network, LLC, and Dishnet Satellite Broadband, LLC (collectively, Dish) on, inter alia, Dish's breach-of-contract counterclaim. The plaintiffs also challenge the district court's order requiring specific performance from DSC as a remedy for that breach. In doing so, the plaintiffs primarily attempt to demonstrate the unreliability of certain summary-judgment evidence. But as the plaintiffs repeatedly conceded below, the district court didn't actually rely on this evidence to begin with. And to the extent the plaintiffs instead address the summary-judgment evidence the district court did rely on, their arguments fail. So too do the plaintiffs' arguments that the district court erred in requiring specific performance from DSC. Accordingly, we affirm.
Doing business under the name "Digital Satellite Connections," Donald King began providing internet services and selling and installing satellite dishes in the 1990s.2 App. vol. 2, 25. According to Donald's sister, plaintiff Kathy King,3 Donald thought it would be a good idea to combine the words "DISH" ("a generic, shorthandterm for a satellite dish") and "NET" ("a shorthand term for the [i]nternet") into a single name for his business: "DISHNET." Id. Donald conducted business under that name and "operated a website at dishnet.com." Id. At some point, Donald became a retailer for Dish's predecessor, EchoStar Satellite LLC (EchoStar).
Donald died in October 2000. At that point, King took over his business and continued to use the DISHNET name. Four years later, an EchoStar representative contacted King and asked whether she "would be willing to sign the dishnet.com domain over to Echo[S]tar." Id. at 29. King declined to sign over the domain name, and instead "continued to increase [her] promotion of the DISHNET mark." Id.
In 2010, King signed an agreement with Dish (the Retailer Agreement) that authorized King to market Dish's programming services. Under the terms of the Retailer Agreement, which covered the period between December 31, 2010, and December 31, 2012, Dish agreed that any notices it gave King pursuant to the agreement would be made in writing and mailed to King at the physical address listed on the Retailer Agreement's first page. The Retailer Agreement also incorporated by reference a separate agreement (the Trademark License Agreement) that governed King's use of Dish's trademarks. Under the Trademark License Agreement, Digital Satellite Connections agreed (1) not to hold itself out as Dish or to obtain, register, use, acquire, or submit an application for any name, trademark, or service mark that Dish deemed to be confusingly similar to any of its marks; and (2) to immediately transfer to Dish, upon Dish's request, any such mark. Finally, the Trademark License Agreement contained a clause (the Survival Clause) stating that these obligationswould survive indefinitely—even after the expiration or termination of the Retailer Agreement.
In 2012, Dish launched an internet service called dishNET. According to a declaration from Dish employee Bruce Werner (the Werner Declaration), Dish employees telephoned King in 2012 in conjunction with the launch of dishNET and demanded—in what we refer to as the 2012 Demand—that King transfer the dishnet.com domain name to Dish.4
But King didn't transfer the DISHNET mark or the dishnet.com domain name to Dish. Instead, on the day the Retailer Agreement expired, she filed incorporation papers for DSC and then assigned to DSC all of Digital Satellite Connections' trademarks, service marks, trade names, and domain names. The plaintiffs then brought the underlying suit against Dish, seeking to enjoin it from using the DISHNET mark and alleging various claims, including trademark infringement and breach of contract.
Two days later, on January 31, 2013, Dish sent an email to King's attorney and—in what we refer to as the 2013 Demand—stated that King must immediately transfer to Dish "any and all [t]rademarks and/or [i]dentifying [c]ommunications [i]nformation, owned[,] reserved, filed, registered, etc." by King, Digital Satellite Connections, or any of Digital Satellite Connections' affiliates. App. vol. 2, 113.Unlike the existence of the 2012 Demand (which King disputed below and continues to dispute on appeal), King has never disputed the existence of the 2013 Demand.
In addition to making the 2013 Demand, Dish also asserted several counterclaims against the plaintiffs, including counterclaims for breach of contract and trademark infringement. Both sides then moved for summary judgment. In response, the district court granted summary judgment to Dish on all of the plaintiffs' claims. It also granted summary judgment to Dish "on the first three elements of" Dish's counterclaim for breach of contract (Counterclaim 1) and "the first two elements of [Dish's] trademark claims" (Counterclaims 2 and 3). App. vol. 1, 207. The district court denied the plaintiffs' motion for summary judgment in its entirety and also denied the balance of Dish's motion for summary judgment.
In ruling on the parties' motions for summary judgment, the district court first noted that "[n]early all of the claims and counterclaims hinge[d] on a determination of which party ha[d] the legal right to own and use the trademark DISHNET and the domain name dishnet.com." Id. at 201. And in concluding that Dish owned those rights, the district court (1) ruled that the Trademark License Agreement required King to transfer to Dish the DISHNET trademark and dishnet.com domain name upon Dish's request; (2) cited the Werner Declaration, which described the alleged 2012 Demand; (3) acknowledged that the plaintiffs challenged the evidentiary value of the Werner Declaration;5 and then (4) noted that the plaintiffs did not deny theexistence of the 2013 Demand. Finally, after citing the Survival Clause, the district court ruled that the Trademark License Agreement's requirements remained in effect at the time of the 2013 Demand. Thus, the district court concluded, Dish was entitled to summary judgment on the first three elements of Counterclaim 1: "(1) the existence of a contract; (2) performance by the party claiming breach; [and] (3) failure to perform by the other party." App. vol. 1, 203. But the district court ruled that "the undisputed facts in the record" didn't establish the fourth element of Counterclaim 1: "what damages, if any, Dish suffered as a result of the breach." Id.
Dish then filed a second motion for summary judgment on Counterclaim 1. In that motion, Dish relinquished any request for actual damages. Instead, it asked the district court to award Dish specific performance from the plaintiffs by ordering them to cease their "use of the DISHNET trademark and transfer[] dishnet.com, dishnetworks.com, and any other 'dish' domain names to [Dish]." Id. at 222.
The district court granted Dish summary judgment on Counterclaim 1. And it ordered specific performance from King. But the district court refused to order specific performance from DSC. Dish then moved to reconsider, asking the district court to expand its award of specific performance to apply to DSC.
The district court granted Dish's motion to reconsider. In doing so, it recognized that DSC wasn't a party to the Retailer Agreement or the Trademark License Agreement. But, the district court explained, it could nevertheless grant an award of specific performance against DSC because DSC wasn't a "bona fidepurchaser for value" of the DISHNET trademark and the dishnet.com domain name. App. vol. 2, 103.
The district court then entered judgment on March 24, 2017, and later certified its judgment as final. See Fed. R. Civ. P. 54(b) (). The plaintiffs appeal.6
In general, we review de novo the district court's orders granting summary judgment to Dish. See Eisenhour v. Weber Cty., 744 F.3d 1220, 1226 (10th Cir. 2014). But to the extent the plaintiffs challenge the district court's underlying evidentiary rulings, we review only for abuse of discretion. See Jones v. Barnhart, 349 F.3d 1260, 1270 (10th Cir. 2003).
The plaintiffs' primary argument on appeal is that the district court abused its discretion in relying on evidence of the alleged 2012 Demand. In particular, the plaintiffs argue that (1) "[n]othing in the Werner Declaration" demonstrates that Werner based his statements about the alleged 2012 Demand on his own personal knowledge, Aplt. Br. 17-1110, 42; (2) the Werner Declaration contains inadmissible hearsay; (3) the Werner Declaration is contradicted by representations that Dish made in other filings; (4) the plaintiffs controverted the Werner Declaration with evidence of their own; and (5) the Werner Declaration doesn't allege that the 2012 Demand was made in writing and sent to the address listed on the first page of the Retailer Agreement. Based on these assertions, the plaintiffs argue that the Werner Declaration wasn't "proper summary judgment evidence." Aplt. Br. 17-1110, 33.
But even if we assume the truth of the five assertions listed above, this assumption merely demonstrates that if the district court relied on evidence of the 2012 Demand, then ...
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