Volvo Trademark Holding Aktiebolaget v. Clm Equip.
| Decision Date | 13 December 2002 |
| Docket Number | No. CIV. 1:01CV232.,No. CIV. 1:00CV238.,No. CIV. 1:01CV122.,CIV. 1:00CV238.,CIV. 1:01CV122.,CIV. 1:01CV232. |
| Citation | 236 F.Supp.2d 536 |
| Court | U.S. District Court — Western District of North Carolina |
| Parties | VOLVO TRADEMARK HOLDING AKTIEBOLAGET, a Swedish corporation; Volvo Construction Equipment North America, Inc., a Delaware corporation; and Champion Road Machinery Limited, a Canadian corporation, Plaintiffs, v. CLM EQUIPMENT COMPANY, INC., a Texas corporation; Future Equipment Company, Inc., a Texas corporation; and Clark Machinery Company, an Arkansas corporation, Defendants. Volvo Trademark Holding Aktiebolaget, a Swedish corporation, Plaintiff, v. Nueces Farm Center, Inc., d/b/a Nueces Power Equipment, a Delaware corporation, Defendant. CLM Equipment Co., Inc., a Louisiana corporation; Future Equipment Co., a Texas corporation; and Clark Machinery Co., an Arkansas corporation, Plaintiffs, v. Volvo Construction Equipment North America, Inc., a Delaware corporation; and Champion Road Machinery, Ltd., a Canadian corporation, Defendants. |
Carolyn A. Dubay, Hunton & Williams, Raleigh, NC, Michael J. Lockerby, Stephen P. Demm, John Gary Maynard, Kimberley A. Isbell, Hunton & Williams, Richmond, VA, Albert Diaz, Nash E. Long, III, T. Thomas Cottingham, III, Hunton & Williams, Charlotte, NC, for Plaintiffs.
Edward L. Bleynat, Jr., Ferikes & Bleynat, Asheville, NC, J. Michael Dady, Ronald K. Gardner, Scott E. Korzenowski, Dady & Gardner, P.A., Minneapolis, MN, John D. Holland, Dady & Gardner, P.A., Minneapolis, MN, for Defendants.
THESE MATTERS are before the Court on motions for partial judgment on the pleadings.
In the first action filed in this Court, Civil Action No. 1:00cv238, Plaintiffs Volvo Trademark Holding Aktiebolaget (Volvo Trademark), Volvo Construction Equipment North America, Inc. (Volvo CE)1 and Champion Road Machinery Limited (Champion Road) brought a declaratory judgment action on October 10, 2000. Complaint, filed October 10, 2000. On March 19, 2001, the Second Amended Complaint was filed seeking the following relief: (1) a declaration pursuant to the Lanham Act of trademark infringement, unfair competition and dilution; (2) a declaration that the Lanham Act preempts state law claims which are inconsistent therewith; (3) a declaration that there has been no breach of contract by the Plaintiffs; (4) a declaration that there are no ancillary tort law claims against the Plaintiffs; and (5) a declaration that the Plaintiffs have not violated any statutes. Injunctive relief against Lanham Act violations was also sought.
By Answer filed September 14, 2001, Defendants AIS Construction Equipment (AIS), CLM Equipment Company, Inc. (CLM), Future Equipment Company (Future), and Clark Machinery Company (Clark) jointly counterclaimed against the Plaintiffs asserting the following claims: (1) violations of the Arkansas Franchise Practices Act, Ark.Code § 4-72-202, et seq.; (2) violations of the Texas Farm, Industrial and Outdoor Power Equipment Dealer Act, Tex. Bus. & Com.Code § 19.01, et seq.; (3) violations of the Texas Deceptive Trade Practices and Consumer Protection Act, Tex. Bus. & Com.Code, § 17.41, et seq.; (4) violations of the Michigan Motor Vehicle Act, Mich.Comp. Laws Ann., Ch. 445.1561, et seq.; (5) violations of the Louisiana Dealer Act, La.Rev.Stat. § 51.481, et seq.; (6) violations of Ontario's Arthur Wishart Act; (7) violations of the South Carolina Fair Practices of Farm, Construction, Industrial and Outdoor Power Equipment Manufacturers, Distributors, Wholesalers and Dealers Act, S.C.Code Ann. § 39-6-10, et seq.; (8) breach of contract and the covenant of good faith and fair dealing; (9) tortious interference with contractual relations and prospective economic advantage; (10) unjust enrichment; (11) estoppel; and (12) recoupment. AIS has entered into a settlement agreement with the Plaintiffs and has been dismissed by stipulation from the action. The caption has been amended to reflect this dismissal.
On March 20, 2001, AIS, CLM, Future and Clark sued Volvo CE and Champion Road in the United States District Court for the Eastern District of Arkansas asserting the same causes of action as have been asserted in these actions as counterclaims.2 On August 30, 2001, the Arkansas District Court transferred that action to this District and the case was assigned Civil Case No. 1:01cv232. This Court consolidated the two actions. AIS has also been dismissed from this action and the caption has been amended to reflect this dismissal.
A third action, Volvo Trademark v. Nueces Farm Center, Inc. (Neuces), Civil Case No. 1:01cv122, has been consolidated with the two above; however, Nueces is not involved in the pending motions.
Volvo Trademark, Volvo CE and Champion Road have moved for judgment on the pleadings as such relates to the counterclaims asserted in Civil Case No. 1:00cv238 and the affirmative claims asserted in Civil Case No. 1:01cv232.3 Because the claims are identical, they will be addressed simultaneously. CLM, Future and Clark are referred to collectively as the Dealers.
The motions for judgment on the pleadings are brought pursuant to Federal Rule of Civil Procedure 12(c) which provides that "[a]fter the pleadings are closed but within such time as not to delay the trial, any party may move for judgment on the pleadings." The same standard is applied to Rule 12(c) motions as to those brought pursuant to Rule 12(b)(6). Burbach Broadcasting Co. of Delaware v. Elkins Radio, 278 F.3d 401, 405 (4th Cir.2002). A motion pursuant to Rule 12(c)
does not resolve contests surrounding the facts, the merits of a claim or the applicability of defenses. Accordingly, a Rule 12[c] motion should only be granted if, after accepting all well pleaded allegations in the plaintiff's complaint as true and drawing all reasonable factual inferences from those facts in the plaintiff's favor, it appears certain that the plaintiff cannot prove any set of facts in support of [its] claim entitling [it] to relief.... [H]owever, [] for the purposes of Rule 12[c], [the Court is] not required to accept as true the legal conclusions set forth in a plaintiff's complaint.
Edwards v. City of Goldsboro, 178 F.3d 231, 243 (4th Cir.1999).
With these proscriptions in mind, a summary of the pertinent facts is provided. In 1999, Ford Motor Company purchased Volvo's worldwide passenger car business. Second Amended Complaint, at 13. Aktiebolaget Volvo (AB Volvo) retained the rights to Volvo's commercial vehicle business. Id. In order to ensure that the proper trademark allocations were maintained between the two businesses, Volvo Trademark was formed to protect and enforce those rights. Id.
Champion Road was a Canadian corporation which, until recently, manufactured and sold motor graders. Id., at 14. In March 1997, Volvo CE, a wholly-owned subsidiary of AB Volvo, acquired 100 percent of the stock of Champion Road. Id. Volvo CE directs the manufacturing and sales activities of Champion Road. Id., at 15. Prior to this acquisition, Champion Road had entered into dealership agreements with CLM, Future and Clark for the sale of motor graders manufactured by Champion Road. Defendants' Joint Answer and Counterclaim to the Second Amended Complaint, filed September 14, 2001, at 27. CLM, a Louisiana corporation, had been a Champion Road dealer since June 1984. Id., at 28. Future, a Texas corporation, had been a dealer since 1996 when it acquired 100 percent of the stock of a predecessor Champion Road dealership. Id., at 28-29. Clark, an Arkansas corporation, had been a dealer since 1971, with its most recent agreement signed in 1984. Id. Each of the "Distributor Sales Agreements" or "Dealer Agreements" entered into between Champion Road and these corporations contained a provision that "Champion may terminate this Agreement at any time without cause by written notice of termination delivered to Distributor, such termination to be effective not less than sixty (60) days after receipt or deemed receipt by Distributor of such notice." Exhibits D, ¶ 24.4; E, ¶ 24.4; and F, ¶ 24.4, contained in Index of Exhibits to Second Amended Complaint, filed March 19, 2001. Other pertinent provisions were as follows:
18. Trademarks: Dealer acknowledges Champion's exclusive right, title and interest in and to the trademark "Champion" and all other trademarks or trade names of Champion ... and will not, at any time, do or cause to be done any act or thing, directly or indirectly, contesting, or in any way impairing ... [the same].... Upon any termination of this Agreement, Dealer shall immediately cease using any and all trademarks and trade names of Champion and its affiliates.
. . . . .
24.6. Neither Champion nor Dealer shall, by reason of any termination or non-renewal of this Agreement, be liable to the other for compensation, reimbursement or damages on account of the loss of prospective profits or anticipated sales, or on account of expenditures, investments, leases, property improvement, or commitments in connection with the business or good will of Champion, of the Dealer, or otherwise. IN NO EVENT SHALL CHAMPION BE LIABLE FOR CONSEQUENTIAL OR SPECIAL DAMAGES DUE TO ANY CAUSE WHATSOEVER.
. . . . .
27. CHANGES IN CHAMPION PRODUCTS: Champion reserves the right at any time to change models, classification of models and specifications, or add to or discontinue any products or product lines without notice to Dealer and without incurring any obligation to incorporate such changes in any other products.
. . . . .
33.1. This Agreement and any accompanying Exhibits contain the entire and only agreement between the parties ... and any representations, terms or conditions in connection therewith not incorporated herein shall not be binding upon either party....
33.2. This Agreement, and any modification, renewal, waiver,...
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