Shelby v. Superformance Intern., Inc.

• Decision Date: 18 January 2006
• Docket Number: No. 05-1307.,05-1307.
• Citation: 435 F.3d 42
• Parties: Carroll SHELBY et al., Plaintiffs, Appellants, v. SUPERFORMANCE INTERNATIONAL, INC., Defendant, Appellee.
• Court: U.S. Court of Appeals — First Circuit

435 F.3d 42

Carroll SHELBY et al., Plaintiffs, Appellants, v. SUPERFORMANCE INTERNATIONAL, INC., Defendant, Appellee.

No. 05-1307.

United States Court of Appeals, First Circuit.

Heard December 7, 2005.

Decided January 18, 2006.

R. David Hosp, with whom R. Todd Cronan, Mark S. Puzella, and Goodwin Procter LLP were on brief, for appellants.

Steven E. Snow, with whom Randall T. Weeks, Jr., Robert K. Taylor, and Partridge Snow & Hahn LLP were on brief, for Shell Valley Companies, Inc., International Automobile Enterprises, Inc., B & B Manufacturing, Inc., Backdraft Racing, Inc., and Unique Motorcars, L.L.C., amici curiae.

Before SELYA, LIPEZ and HOWARD, Circuit Judges.

SELYA, Circuit Judge.

The appellants, Carroll Shelby, Shelby American, Inc., and Carroll Shelby Licensing, Inc. (collectively, Shelby), cloak this appeal in the raiment of trade-dress law. That masquerade ignores the central question of mootness (an issue that Shelby attempted to obscure in its appellate filings). For the reasons that follow, we conclude that Shelby's appeal must be dismissed and that vacation of the decision below is unwarranted.

The predicate facts are straightforward. In the 1960s, Shelby manufactured and sold the Shelby Cobra 427 S/C. After the initial commercial production of the automobile had run its course, a Cobra replica industry emerged. Defendant-appellee Superformance International, Inc. is a player in that industry. It markets, imports and sells the Superformance 427 S/C — a rolling chassis identical in design to the Shelby Cobra 427 S/C.¹ Superformance uses the same mark (427 S/C) and emblem badges (Cobra) on its replicas as Shelby used on the originals.

In late 2000, Shelby commenced a civil action against Superformance in the United States District Court for the District of Massachusetts. Its complaint contained a host of trademark — and trade-dress-based claims premised on theories of infringement, counterfeiting, dilution, unfair competition, and the like.² Superformance answered the complaint and filed counterclaims. After a great deal of skirmishing, not relevant here, the district court granted Superformance's motion for partial summary judgment on Shelby's trade-dress claims (comprising parts of five of the seven counts contained in Shelby's amended complaint). Carroll Shelby Licensing, Inc. v. Superformance Int'l, Inc., 251 F.Supp.2d 983, 988 (D.Mass.2002).

The court's decision focused on the issue of secondary meaning — a showing necessary to Shelby's success on the trade-dress-related claims. See id. at 986. Although Shelby submitted survey evidence of secondary meaning, the district court deemed that evidence "insufficient to support a reasonable jury finding in Shelby's favor on the issue." Id. Since the court also determined that the proffered circumstantial evidence was "equally unavailing" to show secondary meaning, it entered summary judgment in favor of Superformance. Id. at 987. That was not a final order, however, as district court proceedings continued on the remaining trademark claims and on Superformance's counterclaims.

On December 17, 2004, Shelby moved for final judgment by consent, a permanent injunction, and vacation of the partial summary judgment order. Shelby informed the district court that the consent judgment was "an integral part of a global settlement of all matters in dispute between the parties" and represented that it had entered into a license agreement with Superformance for the trade-dress rights associated with the Shelby Cobra 427 S/C. Importuning the court to vacate its earlier decree, Shelby explained that the consent judgment would "facilitate a new business relationship between the parties, which now encompasses the trade dress issues that [were] the subject of the [summary judgment] order."

The district court entered the proffered consent judgment and permanent injunction. At the same time, the court denied Shelby's motion to vacate the summary judgment order. Shelby filed a timely appeal "from the final judgment entered in this action." Its notice of appeal singled out the summary judgment order, but did not mention the denial of the motion to vacate.

In its appellate brief, Shelby followed the same path. It frontally challenged the merits of the summary judgment order, arguing that the district court erred by (i) not conducting an analysis of indirect evidence of secondary meaning (which, if properly evaluated, would have raised a genuine issue of material fact as to secondary meaning) and (ii) rejecting the survey evidence (which, if properly evaluated, also would have sufficed to raise a genuine issue of material fact as to secondary meaning). Shelby made a passing reference to the consent judgment in its jurisdictional statement but did not mention its settlement with Superformance in either its statement of facts or in the argument section of its brief. It made no allusion whatever to the denial of its motion to vacate the partial summary judgment order.

Superformance elected not to file a brief. Fortunately, however, several manufacturers and sellers of kit cars sought leave to file an amicus brief. We allowed their motion on August 26, 2005, and subsequently granted them permission to argue orally.

The amicus brief brought the parties' settlement and the denial of the motion to vacate to the forefront for the first time. The amici suggested that we should dismiss the appeal as moot and that, notwithstanding the dismissal, the summary judgment order should remain intact. Despite the fact that the amicus brief was filed well in advance of oral argument, Shelby eschewed the filing of a reply brief and did not address the issue of mootness until the panel began asking questions about it at oral argument. As we explain below, that was too little and too late.

At the risk of belaboring the obvious, we begin our discussion of the issues by noting that all of Shelby's arguments concerning mootness and its effects seem to have been waived. A notice of appeal must specify the order appealed from. See Fed. R.App. P. 3(c)(1)(B) (requiring that a notice of appeal "designate the judgment, order, or part thereof being appealed"). Here, even though the district court explicitly denied a motion to vacate the partial summary judgment, Shelby did not frame its appeal as a challenge, in whole or in part, to that order. A party's failure to designate a particular order for appeal ordinarily defeats a later attempt to dispute that order in the court of appeals. See, e.g., Smith v. Barry, 502 U.S. 244, 248, 112 S.Ct. 678, 116 L.Ed.2d 678 (1992); Lehman v. Revolution Portfolio, LLC, 166 F.3d 389, 395 (1st Cir.1999). Shelby offers no plausible reason why we should not apply that principle here.³

Even had Shelby forthrightly addressed the point, we nevertheless would dismiss this appeal as moot and decline to direct the lower court to vacate its summary judgment order. We explain briefly.

A federal court's jurisdiction is constitutionally restricted to the resolution of actual cases or controversies. See U.S. Const. art. III, § 2, cl. 1; see also Lewis v. Cont'l Bank Corp., 494 U.S. 472, 477, 110 S.Ct. 1249, 108 L.Ed.2d 400 (1990); Cruz v. Farquharson, 252 F.3d 530, 533 (1st Cir.2001). "A case generally becomes moot when the controversy is no longer `live' or the parties `lack a legal[ly] cognizable interest in the outcome.'" Ortiz-Gonzalez v. Fonovisa, 277 F.3d 59, 64 (1st Cir.2002) (quoting Murphy v. Hunt, 455 U.S. 478, 481, 102 S.Ct. 1181, 71 L.Ed.2d 353 (1982) (per curiam)). It is, therefore, clear beyond hope of contradiction that a global settlement moots an action between the settling parties arising out of the same subject matter. See, e.g., Lake Coal Co. v. Roberts & Schaefer Co., 474 U.S. 120, 120, 106 S.Ct. 553, 88 L.Ed.2d 418 (1985) (per curiam); Horizon Bank & Trust Co. v. Massachusetts, 391 F.3d 48, 53 (1st Cir.2004).

Shelby contests the applicability of this abecedarian tenet on the ground that its settlement with Superformance addressed only trademark issues and, thus, left extant a live controversy as to trade dress. Shelby's representations to the district court belie that contention.

In its motion for entry of judgment by consent, Shelby described a "global settlement of all matters in dispute" and acknowledged that it had granted a license to Superformance that "include[d] the trade dress rights in the Shelby Cobra 427 S/C automobile." Based on these unequivocal statements — the settlement agreement itself is not part of the record — we have no reason to doubt that there has been a resolution of all the controverted issues between the parties. Not only...