The New Georgia Restrictive Covenant Act -- Does It Apply To Lawyers?

Something New, Something Blue

Georgia's business and legal community is abuzz with discussion about the new law on restrictive covenants passed by that very vaguely worded Constitutional Amendment the voters approved on election day in November.  The amendment's language was something along the lines of "Should Georgia reject socialism?"  Of course, the constitutional amendment was necessary due to Georgia cases that made it necessary to make a change to the Georgia Constitution to tighten the law on restrictive covenants.  The law now allows "blue penciling" of contracts, which means the judge can take out the part of the deal that is too broad and enforce the rest. 

A Very Tricky, Perhaps Lying, Ballot Proposal for the Amendment

When I read the amendment that was put on the ballot my first thought was "This cannot be legal, can it?"  After all, the amendment said nothing about restrictive covenants at all.  The actual language (I was slightly exaggerating above) was "Shall the Constitution of Georgia be amended so as to make Georgia more economically competitive by authorizing legislation to uphold reasonable competitive agreements?"   As set forth below, it is debatable whether the new law does make Georgia more or less competitive.  Moreover, "competitive agreements" does not exactly explain the issue.  People who say they know what they are talking about, however, tell me that apparently it is legal to put a misleading amendment on the ballot that is tied to a law that might actually do the opposite of what the amendment calls for. 

Is This Really A Good Thing?

Attached to that very vague amendment was a very long and detailed statute that had already been passed and was to become law upon the passage of the amendment in November (except that the legislature screwed up because the amendment did not become effective until January 1, 2011.  Get it?).  Georgia had become famous as being a very difficult state in which to make restrictions on employment enforceable.  Whether this was bad for business was debatable.  On the one hand, because it was hard to enforce noncompetes, it was hard to keep salespeople and other top workers from jumping ship for a better offer elsewhere.  The argument goes that companies would be hesitant to locate here because they might lose key people in Georgia's business environment.  On the other hand, it seems to be common sense that the salaries and income for these free agent salepeople and other key employees will go down as a result of the vastly easier ways to restrict employees from engaging in their field upon departure.  Also, it will be much more difficult for key employees to leave and start their own and perhaps better business.  The law clearly impedes start-up companies, because it is harder to leave and compete with your old company and is harder to come into town and hire salespeople and other key folks from existing competition. 

Have Lawyers Made Themselves Exempt from This Controversy

All of this, however, raises the question -- what about lawyers?  Does any of this affect this sacred profession?  According to at least one corporate lawyer, many of the partnership agreements for Atlanta's law firms contain  provisions that penalize departing partners in different ways for leaving and taking clients with them, even if these agreements do not expressly forbid competition.  The reason there are no straightforward noncompetes that prohibit practicing at all is because of Georgia Rule of Professional Conduct 5.6.  This Rule, which is quasi-statutory in nature (because the Georgia Supreme Court has the authority to govern the legal profession), states: 

Rule 5.6 -- A lawyer shall not participate in offering or making:

(a) a partnership or employment agreement that restricts the right of a lawyer to practice after termination of the relationship, except an agreement concerning benefits upon retirement;

Comment
[1] An agreement restricting the right of partners or associates to practice after leaving a firm not only limits their professional autonomy but also limits the freedom of clients to choose a lawyer. Paragraph (a) prohibits such agreements except for restrictions incident to provisions concerning retirement benefits for service with the firm.

This provision has been held in countless jurisdictions (most of them have the same language from the Model Code) to forbid noncompetes against lawyers, based on the public policy that clients must be allowed to choose their lawyer.  In arbitration when I argued that Rule 5.6 applied to a provision I was asked by the arbitrator "So are you saying we are special?"  I replied, "Well, I am not saying that, but the Supreme Court is saying that."  In fact, the courts say “[t]he history behind [Rule 5.6] and its precursors reveals that it's underlying purpose is to ensure the freedom of clients to select counsel of their choice, despite its wording in terms of the lawyer's right to practice. The RPC is thus designed to serve the public interest in maximum access to lawyers and to preclude commercial arrangements that interfere with that goal.”  Jacob v. Norris, 128 N.J. 10, 18 (N.J. 1992).  There is no case law in Georgia, and no Georgia Bar advisory opinion setting forth that Rule 5.6 prohibits such noncompetes in Georgia, however, every other state that has considered it has held that it does create such a prohibition, either in case law or through a bar opinion. 
 
In light of the rulings that Rule 5.6 prohibits "pure" noncompetes, law firms around the country have tried to chip away at the law by coming up with certain forfeitures that are incurred by departing partners rather than  total noncompetition clauses.  The most common term of these agreements calls for the departing partner to forfeit their capital contribution if she leaves and takes clients, or states that the departing partner loses compensation that would otherwise be due as a percentage of collections for time billed before the departure.  Almost every state has also ruled that these types of forfeiture provisions are illegal because they provide a financial disincentive against a departing partner from keeping clients when he leaves, which hampers the public policy of free choice of lawyers. 
 
The rationale behind the majority view is clear. "The purpose of [Rule 5.6] is to protect the public's right to select the attorney of their choice.” Lampert, Hausler & Rodman, P.C. v. Gallant, 19 Mass. L. Rep. 283 (Mass. Super. Ct. 2005), citing Anderson, 461 N.W.2d at 601; Jacob, 607 A.2d at 148; Cohen, 550 N.E.2d at 411; Spiegel, 811 S.W.2d at 530; see 2 Geoffrey C. Hazard, Jr. & W. William Hodes, The Law of Lawyering § 5.6:101 (1990). "Indirect financial disincentives may interfere with this right just as much as direct covenants not to compete. A provision offering financial disincentives may force lawyers to give up their clients, thereby interfering with the client's freedom of choice." Anderson, 461 N.W.2d at 601;  Jacob, 607 A.2d at 148; Cohen, 550 N.E.2d at 411; Spiegel, 811 S.W.2d at 530; Hillman, supra, § 2.3.3.2, at 32. This violates both the language and spirit of [5.6] by restricting the practice of law." Id.
 
What If Anything Does the New Restrictive Covenant Act Do for Law Firms Against Departing Partners?
 
Has anything in the new law addressed lawyers at all?  Not expressly.  Nothing in the law talks about lawyers specifically.  One could argue therefore, that the new law has no intent regarding lawyers because the law before it never mentioned lawyers, and Rule 5.6 has existed all along.  Nothing in the new law purports to amend, withdraw, or otherwise change Rule 5.6, so perhaps the law has remained exactly the same with respect to lawyers.  Of course, partnerships for doctors and accountants have been subject to restrictive covenants for a long time, falling into a "middle tier" of scrutiny between an employment contract and a contract for the sale of a business.  On the other hand, no case law exists construing Rule 5.6 and its interplay with other law on restrictive covenants.
 
Simply looking at the plain language in a vacuum, there is some language in the new law that changes the old law that arguably could apply to some lawyers.  For example, in the definitions related to limits on a sale of business, "Affiliate" is defined to include a "partner" of an entity that owns a controlling interest of an entity, defined as (1) 25% or more of that entity or (2) an interest being bought for $500,000 or more.  Thus, one could argue that the new law permits reasonable restraints on departing partners of a law firm if the partner owns at least 25% of the firm or is getting $500,000 or more for his or her shares.  This assumes that a departing partner is "selling" shares, however "sale" is very broadly defined.   
 
More ominous, the section related to post-employment nonsolicitation clauses defines "Employer" to include a partnership.  It defines "employee" to include any person "in possession of selective or specialized skills, learning, or abiliteis or customer contacts, customer information, or confidential information who ... has obtained such skills, learning, abilities, contacts or information by reason of having worked for an employer."  The law also applies to "key employees" which defines employees using similar language, among other things.  The law goes on to make nonsolicitations far more enforceable than the case law developed in Georgia, and allows the court to blue pencil away problematic terms of nonsolicitation clauses.  However, it does not explicitly define as an "employee" a partner of a partnership.  Therefore, a strong argument can be made that an equity partner of a law firm is not an employee.  On the other hand, non-equity partners, counsel, associates and other non-equity workers would clearly be employees of the partnership, and based on its language alone, subject to the law. 
 
Conclusion:  Lawyers Are Probably Still Immune to Restrictive Covenants
 
Overall, standing alone, the plain language of the new statute would clearly apply to partners who own more than 25% of the firm that are departing and thus transferring back to their old firm the regarding nonsolicitation agreements applies to any nonequity lawyers, and does not explicitly exclude equity partners.  Nevertheless, the statute does not expressly overturn Georgia Rule of Professional Conduct 5.6.  Moreover, the governance of the legal profession has traditionally been deemed to have been "turned over" to the Georgia Supreme Court, which raises the argument that the legislature would have to "take back" regulation of the legal profession in order to be able to modify, amend or overturn the Rule 5.6 that the Supreme Court has promulgated.  Nonetheless, although commentatore refer to the Rules of Conduct as a species of quasi-legislation, I could not find in a brief search anything that clearly gave this legislative authority away to the Supreme CourtFinally, if the legislature could repeal or amend Rule 5.6 and intended to do so, it could have made that clear by addressing it head on.  It did not attempt to do that.  Thus, a strong argument can be made that the new law does not apply to lawyers at all and that the law regarding restrictive covenants on lawyers in Georgia, such as it is, without any case law or bar opinions, remains the same as it was prior to the passage of the amendment and the statute.  On the other hand, no case law exists construing Rule 5.6 before or after the new law went into effect.  Firms seeking to enforce restrictive covenants will no doubt point to the new law in attempts to enforce these provisions in their partnership agreements.   

Insurer Had Duty to Defend Lawsuit Notwithstanding Exclusion for Trade Secret Claims Where Other Claims Were Brought That Were Non-Trade Secret Claims

Judge Story granted summary judgment in favor of the insured in a lawsuit to determine whether an insurance company should have defended a lawsuit against a provider of health care consulting services.  Medassets, Inc. v. Federal Insur. Co., 2010 U.S.Dist. LEXIS 31186, Decided March 31, 2010. Medassets works with health care providers to help them get good deals on purchases of medical devices.  As part of this, Medassets may obtain historical purchasing information from hospitals.  Two medical device providers sued Medassets, claiming that Medassets had illegally induced providers into giving them confidential and trade secret pricing information.  There were four counts, (1) tortious interference by inducing breaches of confidentiality agreements; (2) tortious interference with contracts; (3) tortious interference with prospective contracts; and (4) misappropriation of trade secrets.  Medassets had two insurance policies with Federal, (1) an Errors and Omissions policy (E&O); and (2) a D&O Policy.  Medassets submitted claims under both policies and federal denied coverage under both policies and refused to defend the lawsuit.  The court upheld Federal's decision on the E&O policy but held the opposite under the D&O policy, finding as a matter of law that Federal had a duty to defend.

The letter denying coverage to Medassets under the D&O policy stated in pertinent part that the coverage and thus the defense of the claim were denied under an exclusion providing that coverage would not be provided for claims "based upon, arising from, or in consequence of any actual or alleged infringement of copyright, patent, trademark, trade name, trade dress, service mark or misappropriation of ideas or trade secrets."  The question of the duty to defend was a matter of Georgia law.  Under Georgia law, the duty to defend is a different question than the duty to indemnify, in other words, to pay damages awards.  In Georgia, like other states, courts look to the allegations of the complaint to determine whether a claim of liability is asserted.  Even if allegations are incomplete or ambiguous as to coverage an insurer is obligated to defend.  Thus, the question whether there is a duty to defend favors the insured.  To excuse the duty to defend, the complaint must unambiguously exclude coverage under the policy, and doubt as to duty to defend is resolved in favor of the insured.  If any one claim must be defended, then all of them must be defended. 

In refusing to defend the court held that Federal had engaged in a strained interpretation of paragraph 8 of the complaint which alleged:  '[Plaintiff] does not have a uniform price for CRM devices and other products, but rather tailors its pricing based on the mix of goods and services that Guidant Sales provides to its customers.  Generally, Guidant Sales will submit proposed prices to medical centers that state an access price and then offer discounts if the medical center will commit to a certain percentage maket share for [plaintiffs] produts.  The pricing information contained in [Planitiff's] proposals and contracts is confidential between [Plaintiff] and the customer.  [Plaintiff's] pricing information is a trade secret, which [Plaintiff] takes reasonable measures to protect."  Pargraph 8 was incorporated into all of the claims by reference.  Thus, Federal deemed that all of the claims were claiming a trade secret violation, which excluded coverage. 

The court noted, however, that before claiming a trade secret in the last sentence of paragraph 8, the plaintiff also claimed that the information was confidential.  The court found that the difference between confidential information and trade secrets was significant, because information can be confidential without rising to a trade secret.  Plaintiff pled in the alternative that the pricing information was either confidential or a trade secret.  Thus, found the court, the first three counts of the complaint did not rely on the information being a trade secret.  Because of this the court found that the exclusion of trade secret claims from the D&O policy did not extinguish the duty to defend Medassets in the case.

Federal also moved that the court find that, in the event of the duty to defend, the liability of Federal be limited to the limit of the policy, $3 million.  The record showed that Federal spent a whopping $7 million on its defense of the underlying lawsuit.  Medassets argued that it might be eligible for consequential damages as a result of the breach of Federal, notwithstanding a lack of bad faith by Federal.  The court opined that this question was for the jury.  Whether an insurer is liable for damages in excess of the policy limit is a question of fact according to the court.  Thus, the court refused to grant Federal summary judgment on the liability limit.

Brown Bark's Trademark Claims Have No Bite

Judge Thomas Thrash recently granted motions for summary judgment for several defendants sued by Brown Bark, LLC, an investment group that had purchased certain marks and was attempting to claim their infringement.  Brown Bark II, L.P. v. Dixie Mills, LLC, Civil Action No. 1:08-CV-1303-TWT, 2010 U.S. Dist. Lexis 79867 (N.D.GA), Decided August 6, 2010.  The case involved a defunct marketer of food stuffs such as Alabama King Corn Meal, pictured at right.  The company was Southern Specialty Brands ("SSB") and it went out of business in 2007.   There were two different groups of defendants worth mentioning, both arising out of the ashes of the SSB business.  Several of the defendants were former
 shareholders and managers of SSB. 

The first issue involved Adams Foods, Inc. and others ("Adams") who sold food products under the Adams mark until 1999, at which time it sold the mark to SSB.  SSB gave a note to Adams secured by the trademark and its goodwill.  In 2006 SSB defaulted on the note and Adams obtained a judgment against SSB giving it back full rights to the Adams mark.

At about the same time in 2006, SSB defaulted on its debts with Regions Bank.  In 2007, Regions sold the SSB loans to Brown Bark II, the plaintiff.  Shortly after that, one of the defendants locked SSB out of the SSB plant forcing a shutdown of the production and marketing of its products.  SSB could not pay the loans Brown Bark had purchased so Brown Bark obtained a judgment that led to its acquisition of the SSB marks at a public sale.  

Meanwhile the former SSB folks started a new company, Dixie Mills, LLC.  They offered Brown Bark $300,000 for the old SSB trademarks and Brown Bark declined the offer.  Dixie Mills then went ahead and started marketing products with similar names and packaging as the old SSB products (The SSB products were Dixie Lily, Alabama King, Arnett's and Pine Mountain; the new Dixie Mills products were Dixie Mills, Alabama, Donald Arnett, and Stone Mountain).  Then Adams started selling products under the Adams mark again.  Brown Bark sued  the SSB group and the Adams group for trademark and trade dress infringement. 

The court found that the Adams group owned the Adams mark due to the judgment in Alabama, because even though Brown Bark was not a party to the judgment, it got the trademark from Regions Bank who was in privity with SSB, against whom the judgment was made.  However, the court also ruled that Brown Bark could not enforce the Adams mark because it had acquired the mark through an assignment in gross.  An assignment in gross occurs when a trademark is transferred without the accompanying goodwill.  Thus, a trademark cannot be sold separately from the business assets used to make the product or service that the trademark identifies.  The theory is that if the trademark is traded but the assets underlying it are not, the public is misled about the origin of the product associated with the mark. 

As for the former SSB group, the court made short work of the claims against them, finding that the old SSB marks were descriptive and therefore had to have secondary meaning.  The court held that even though these marks, one of which dated back to 1933, might well have secondary meaning, there was no evidence that the mark had secondary meaning identifying Brown Bark as the source of any products.  The court cited no authority for this proposition.  However, all of the defendants won summary judgment on the case.  Thus, it appears that Brown Bark made a big mistake when it refused to sell the marks for $300,000 because it turns out that, absent reversal on appeal, the marks were worth nothing. 

Eleventh Circuit Refuses to Pacify Baby Buddies in Copyright Claims Against Babies "R" Us

The Eleventh Circuit affirmed summary judgment in favor of Toys R Us  where Baby buddies claimed that Toys R Us had infringed on its copyrighted design for Bear-shaped pacifier holders.  Baby Buddies, Inc. v Toys "R" Us - Delaware, Inc., 2010 U.S.App. Lexis 15081 (11th Cir. 2010), Decided July 22, 2010.  The case came from the Middle District of Florida

In this case, the facts revealed that Baby Buddies started business in 1987 after a woman designed her own pacifier holder because she could not find a good one on the market.  Her design was registered in 1987.  A design firm was hired to make a new design and that was registered in 1991.  In 1997, Toys R Us, aka Babies R Us, began selling the Baby Buddies pacifier holder.  Sales were excellent.  In 1999, Toys R Us decided to produce and maket its own pacifier holder.  Initially, Toys R Us attempted to buy the Baby Buddies pacifier holder design on the open market.  That effort failed, after which Toys R Us hired a consultant to design several holders including a teddy bear holder.  The consultant hired a subcontractor.  At some point, the consultant sent the subcontractor a copy of the Baby Buddies pacifier holder and a note saying in part, "I need a new animal design.  The buyer likes this bear but I do not want to produce the same exact thing.  Can you work on a similar design?"  The subcontractor designed pacifier holders of many kinds, including an angel, a duck, a rabbit, and a teddy bear.  Toys R Us sold both pacifiers for a while but discontinued selling the Baby Buddies holder in 2003.  Baby Buddies sued shortly after that.

Baby Buddies argued that summary judgment is usually inappropriate in copyright cases because the ultimate issue of infringement turns on a jury's comparison of the works in question.  However, the court noted that Eleventh Circuit law holds that summary judgment in a copyright case is appropriate in two instances, (1) where the similarity between the two works concerns only non-copyrightable elements of the work, or (2) because no reasonable jury could find the two works to be substantially similar.  In making its determination the court focused on a comparison of the two plastic teddy bears.  In doing so it held that the copyright protection only would apply to the particularized expression of the bear, not the the general idea of including certain features on a bear, such as a head, paws, torso and the like.  In its opinion, the expressive elements of the two bears were not substantially similar as a matter of law.  It held that "Baby Buddies is trying to invoke the protection of the copyright laws to prevent a competitor from using the idea of putting a sculpted teddy bear and a color-coordinated bow on a ribbon tether to create an aesthetically pleasing pacifier holder." The court stated that this type of creative competition does not violate copyright law.  "Baby Buddies has the right to prevent others from copying its creative expression, but not from expressing similar ideas differently."  Thus, the summary judgment against Baby Buddies was affirmed. 

Dantanna's Wins Trademark Dispute Against Legendary L.A. Eatery Dan Tana's

The Eleventh Circuit affirmed summary judgment in favor of local eatery Dantanna's against claims that its name infringed on the common law mark of Los Angeles restaurant Dan Tana's.  Dan Tana v. Dantanna's, 2010 U.S. App. Lexis 14514 (11th Cir.), Decided July 15, 2010.  The court agreed with the district court that there was no material evidence to support of likelihood of confusion such that trial was appropriate.  The similarities between the two businesses are that the marks are nearly spelled the same, and are pronounced the same, and the two restaurants have the same distribution channel in that they are both upscale retail restaurants.  However, the court noted that the Dan Tana's mark was weak and had no secondary meaning outside Los Angeles, which is the limits of its territorial right in the mark because it had not registered its trademark, which would afford national rights of use.  The court emphasized the distant geographical markets of the two restaurants and found that distance highly relevant to a lack of likelihood of confusion.  The court also noted that there was no evidence that the owner of Dantanna's intended to take his name from the L.A. restaurant, instead he testified that he got the name from his two kids' names, Dan and Anna.  Morever, the court noted that although the two companies are both restaurants, they are very different in their theme and style -- Dan Tana's is a cozy, romantic Italian place, while Dantanna's features a surf and turf menu and ubiquitous flat screen TV's playing sporting events. 

Slash It! Eleventh Circuit Reverses Summary Judgment in Trademark Case Involving Auto Dealer Promotions

 The Eleventh Circuit reversed summary judgment in a recent trademark infringement action involving service marks related to advertising promotions for car dealerships. Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep Dodge, LLC, 605 F. 3d 931 (11th Cir. 2010).

Caliber Automotive Liquidators, Inc. provides advertising promotions to car dealerships and owns service marks on "Slash-It! Sales Event" and "Slasher Sale." Its services are designed to quickly reduce a dealer's existing inventory at dealerships around the country.  Caliber swoops in to the market and starts two weeks before a sale assisting with a market saturation advertising campaign.  Days before the sale a team arrives to prepare the dealership, putting up marketing paraphernalia and motivating the staff.  During the sale prices are visibly "slashed" by the dealer.  Successful campaigns shrink dealer inventory over weekend "blow-outs." 

Premier Automotive Group uses its own marketing - an infomercial called the "Slasher Show" - to sell cars. The advertisements market drastically reduced prices.  Along with the Slasher theme the show included a Slasher Countdown, a Slasher Man, voices screaming "slash-it" and on camera use of the term "slash-it."  After the infomercials ran, the evidence showed that several Caliber customers were confused about the source of the show.  For example, Caliber had done exclusive campaigns for Bill Heard Dealerships and two dealership general managers saw the show and became angry thinking that Caliber had breached an exclusive use of slasher sales in Georgia.  One of them actually canceled a Caliber Slash-It! event.  Caliber sued Premier in the Northern District of Georgia under both federal and state law, claiming infringement.

The district court applied the familiar seven factor test for likelihood of confusion in the Eleventh Circuit.  The court decided that (1) similarity of marks and (2) "slight" actual confusion weighed in favor of likelihood of
 confusion, (3) similarity in advertising was neutral, and (4) strength of mark, (5) similarity of events (6) similarity of sales method and (7) intent, all weighed against likelihood of confusion.  According to the  appellate court, the district judge, after "tallying the score," found that no reasonable jury could find likelihood of confusion.  Persuaded that the district court erred in (1) its measure of confusion of Caliber's customers by Premier's advertising and (2) in the weight it gave an incontestible mark, the Eleventh Circuit reversed and remanded for trial. 

Regarding the measure of customer confusion, there were two groups considered:  (1) Caliber's car dealer customers and (2) retail car buying consumers.  The appellate court found that the district court had focused too much on the fact that the slasher show did not confuse Premier's retail customers, and not enough on the fact that there was evidence that the relevant customer population for Caliber, car dealerships, was actually confused.  Noting that of all the seven factors, actual confusion is the best evidence, the court stated that the mark holders customers "turn the key" in the confusion analysis.  In the court's eyes the people confused, Caliber customers, were precisely those whose confusion is most significant.  Thus it was erroneous to only find "slight" confusion. 

Second, the district court found that Caliber's marks were relatively weak, descriptive with no secondary meaning. Thus, it held that this factor weighed against likelihood of confusion.  First, there are four types of marks from weakest to strongest, generic, descriptive, suggestive and arbitrary.  Caliber's marks are basically descriptive, a weaker strength of mark.  A descriptive mark is protected only when secondary meaning is shown, in other words, when the public associates the services with a particular provider.  A descriptive mark must be shown to have secondary meaning to be registered as a trademark.  Once registered, however, after five years the holder can file an affidavit and have the mark declared incontestible.  In this case, Caliber's marks were incontestible.  Under Eleventh Circuit precedent, incontestible status is a factor to be considered in likelihood of confusion analysis, and an incontestible mark is presumed to be at least descriptive with secondary meaning.  Thus, it is automatically a relatively strong mark.  In failing to properly weigh the incontestible mark as having secondary meaning, the district court made an error.

Because the two elements that are the most important are the strength of the mark and actual confusion, the court found these two errors highly significant.  Nonetheless, taking a shot at the district court, the appellate court noted that the seven factor test entails more than the mechanistic summation of the number of factors on each side.  Given the earlier comment of the court that the district court had tallied the score of the factors on each side, this was clearly a rebuke directed at the district court against such a mechanical use of the factors.  Because of the sufficiency of the evidence of the strength of its marks and actual confusion, Caliber had done enough to avoid summary judgment.  The case was sent back for trial. 

Mystique Wins Appeal of Lanham Act Award for Trademark Infringement

Mystique, Inc. a maker of sandals such as those shown in the photo, won a judgment in the Southern District of Florida of $2.95 million against 138 International, Inc., which was upheld on appeal by the Eleventh Circuit US Court of Appeals.  Mystique, Inc. v. 138 International, Inc., 2010 U.S. App. Lexis 8528 (11th Cir. 2010).   Both companies marketed sandals under the name Mystique.  The District Court found that, although 138 International registered the Mystique mark, Mystique, Inc. had used the Mystique mark in commerce before 138 International registered and used it, that 138 International knowingly infringed Mystique's mark, and that the 138 International registered Mystique mark must be cancelled.

On appeal, 138 International argued that there were genuine issues of fact regarding whether 138 International used the Mystique mark before Mystique, Inc. did so.  The Court  disagreed, finding that even if all of the evidence 138 international cited were taken into account, it was only evidence of 138 international's communications with its suppliers.  The Court explained that not every transport of a good is sufficient to establish ownership rights in a mark, and that while use of a mark need not have gained wide public attention, secret, undisclosed internal shipments are generally inadequate.  Therefore, evidence of communications with suppliers about the mark was insufficient to create an issue as to who used the mark first.  138 International also argued that Mystique should not be awarded damages because it had not registered the trademark.  The Court rejected this, noting that damages may be awarded under section 43(a) of the Lanham Act, and that registration of the mark is not required.  Accordingly, summary judgment was awarded to Mystique, Inc.