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Full Opinion
United States Court of Appeals for the Federal Circuit
2008-1216, -1246
BADEN SPORTS, INC.,
Plaintiff-Cross Appellant,
v.
MOLTEN USA, INC.
and KABUSHIKI KAISHA MOLTEN (doing business as Molten Corporation),
Defendants-Appellants.
Bruce A. Kaser, Vantage Law PLLC, of Issaquah, Washington, argued for plaintiff-
cross appellant. With him on the brief was James L. Phillips, Miller Nash LLP, of Seattle,
Washington.
Richard P. Bress, Latham & Watkins LLP, of Washington, DC, argued for
defendants-appellants. With him on the brief were Erica Goldberg; and Daiske Yoshida, of
Tokyo, Japan. Of counsel were Arthur S. Beeman, DLA Piper US LLP, of San Francisco,
California; and M. Elizabeth Day, DLA Piper LLP, of East Palo Alto, California.
Appealed from: United States District Court for the Western District of Washington
Judge Marsha J. Pechman
United States Court of Appeals for the Federal Circuit
2008-1216, -1246
BADEN SPORTS, INC.,
Plaintiff-Cross Appellant,
v.
MOLTEN USA, INC.
and KABUSHIKI KAISHA MOLTEN (doing business as Molten Corporation),
Defendants-Appellants.
Appeals from the United States District Court for the Western District of
Washington in Case No. 06-CV-210, Judge Marsha J. Pechman.
____________________
DECIDED: February 13, 2008
____________________
Before LOURIE, RADER, and LINN, Circuit Judges.
LOURIE, Circuit Judge.
Kabushiki Kaisha Molten and Molten USA, Inc. (collectively âMoltenâ) appeal from
a final judgment of the United States District Court for the Western District of
Washington denying Moltenâs motions for a new trial and judgment as a matter of law
(âJMOLâ) relating to a jury award of $8,054,579 for false advertising under Section 43 of
the Lanham Act. See Baden Sports, Inc. v. Kabushiki Kaisha Molten, 541 F. Supp. 2d
1151 (W.D. Wash. 2008). Baden Sports, Inc. (âBadenâ) cross-appeals from the courtâs
decision denying Badenâs motion for a modified injunction against Molten. Because the
court erred in denying Moltenâs JMOL motion, we reverse.
BACKGROUND
Baden manufactures inflatable sports balls, including high-end, game-quality
basketballs. In 1997, Baden obtained U.S. Patent 5,636,835 (âthe â835 patentâ), which
discloses a ball with âraised seamsâ and a âlayer of padding underneath the outer
covering.â â835 patent col.2 ll.8-9,18 (filed May 12, 1995). Baden sells basketballs
embodying the invention of the â835 patent and markets those balls as containing
âcushion control technology.â
Molten competes with Baden in the high-end basketball business. In 2002 or
2003, Molten began selling basketballs with an inner, padded layer. Molten advertised
its new basketballs as containing âdual-cushion technology.â According to Moltenâs
advertisements, dual-cushion technology combines two different cushioning layers: one
layer, made of foam, that surrounds the core of the ball, and a second layer of soft
rubber seams.
On February 13, 2006, Baden filed a complaint alleging that Moltenâs sales and
offers to sell basketballs in the United States constituted infringement of the â835 patent.
In March of that year, Baden filed a First Amended Complaint alleging that Moltenâs
advertising of its dual-cushion technology basketballs violated Section 43 of the Lanham
Act, 15 U.S.C. § 1125. Sometime in the summer of 2006, after settlement discussions
between the two companies failed, Molten ceased importing dual-cushion basketballs
into the United States.
On July 16, 2007, the district court ruled on Badenâs motion for summary
judgment of patent infringement. Baden Sports, Inc. v. Kabushiki Kaisha Molten, No.
2008-1216, -1246 2
2:06-cv-210, 2007 U.S. Dist. LEXIS 51186 (W.D. Wash. July 16, 2007). Finding that
Baden had âshown that every element in Claim 3 of the â835 patent is present in
Moltenâs basketball,â the district court granted summary judgment of infringement. Id. at
*14. The court denied Badenâs request for permanent and preliminary injunctions at
that time and denied Moltenâs motion for summary judgment of invalidity. Id. at *27-31.
In a separate opinion entered the same day, the district court granted in part and
denied in part Moltenâs motion for summary judgment on the false advertising claims.
Baden Sports, Inc. v. Kabushiki Kaisha Molten, No. 2:06-cv-210, 2007 U.S. Dist. LEXIS
51252 (W.D. Wash. July 16, 2007). In doing so, the court narrowed the scope of
Moltenâs marketing language to be presented to the jury. First, the court granted
Moltenâs motion for summary judgment on Badenâs false advertising claims based on
advertisements that used the terms âproprietaryâ and âexclusive.â The court found that
âproprietaryâ and âexclusiveâ were terms that conveyed the idea that âMolten invented
and owns the basketball technology.â Id. at *16. Those terms, the court held, were
precluded from Lanham Act liability by the Supreme Courtâs decision in Dastar Corp. v.
Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). Id. at *16-17. However, the
court denied Moltenâs motion for summary judgment on Badenâs false advertising claims
based on advertisements that used the word âinnovative.â The court reasoned that
âinnovativeâ does not necessarily connote the inventor of the technology, and can
describe âthe nature, characteristics, or qualities of the basketballs themselves.â Id. at
*17. Such claims of basketball characteristics, the court reasoned, were permissible in
light of Dastar. Thus, the court allowed Baden to proceed to trial with its false
advertising claim, but only insofar as that claim was based on Moltenâs allegedly false
2008-1216, -1246 3
use of âinnovative.â
In its opening statement at trial, Badenâs counsel told the jury that evidence
would be presented that Molten had falsely advertised that âdual cushion technology
[was] a Molten innovation.â Tr. of Oral Argument at 104, Baden Sports, 541 F. Supp. 2d
1151 (W.D. Wash. Aug. 6, 2007) (No. 363). Counsel further articulated that Molten
should be required to âgive up the financial benefit that they have received from falsely
advertising dual cushion technology as their innovation.â Id. at 127. After opening
statements, Molten moved, under Federal Rule of Civil Procedure 50(a), for judgment
as a matter of law on Badenâs false advertising claims, arguing that Dastar precluded
claims based on authorship of an idea. Tr. of Oral Argument at 192, Baden Sports, 541
F. Supp. 2d 1151 (W.D. Wash. Aug. 6, 2007) (No. 365). The court denied the motion.
Id. at 198.
During trial, the district court excluded some of Moltenâs proposed evidence. Of
relevance to this appeal, the court refused to permit testimony from a number of
witnesses regarding the differences between the companiesâ basketballs. The
testimony excluded by the district court included proposed cross-examinations of
Badenâs expert, Richard Yalch, and Badenâs CEO, Michael Schindler, as well as
proposed direct examination of Molten USAâs CEO, Kiyoaki Nishihara. The court
excluded that comparative testimonial evidence based on its prior ruling on
infringement. The court found that because summary judgment of infringement of the
â835 patent had already been granted, Molten was precluded from arguing that its
basketballs were different from Badenâs basketballs. Tr. of R. at 578-81, Baden Sports,
541 F. Supp. 2d 1151 (No. 367) (âIâve already made the determination . . . that Moltenâs
2008-1216, -1246 4
technology infringes on Baden.â).
After both parties rested at trial, the district court invited Molten to renew its Rule
50(a) motion. Molten declined to do so at that time. The jury then returned a verdict
awarding Baden $38,031 for patent infringement and $8,054,579 for intentional false
advertising under the Lanham Act.
After trial, the district court enjoined Molten from further infringing the â835 patent
in the United States and from stating in its U.S. advertising that dual-cushion technology
is âinnovative.â Baden Sports, Inc. v. Kabushiki Kaisha Molten, No. 2:06-cv-210, 2007
U.S. Dist. LEXIS 70776 (W.D. Wash. Sept. 25, 2007). Molten then moved for judgment
as a matter of law under Fed. R. Civ. P. 50(b) and for a new trial under Fed. R. Civ. P.
Rule 59. The court denied both motions. Baden Sports, 541 F. Supp. 2d at 1160-63.
In denying Moltenâs Rule 50(b) JMOL motion, the court acknowledged that although
some of the testimony at trial conflated âinnovativeâ and âproprietary,â the court felt that
âother testimony ma[de] clear that the witnesses believed the advertising to be false
because Moltenâs product was not ânew.ââ Id. at 1159.
Molten timely appealed the district courtâs judgment, and Baden filed a timely
cross-appeal. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We apply our own law with respect to issues of substantive patent law and also
with respect to certain procedural issues pertaining to patent law. See Research Corp.
Techs. v. Microsoft Corp., 536 F.3d 1247, 1255 (Fed. Cir. 2008) (citations omitted). We
apply the law of the regional circuit on non-patent issues. Id. In this case, only Badenâs
cross-appeal implicates patent law. Other than that issue, we are left only to decide
2008-1216, -1246 5
whether the district court erred regarding the Lanham Act decision. âIn reviewing a trial
courtâs denial of a motion for judgment as a matter of law in Lanham Act cases, this
court applies the law of the relevant regional circuit. . . .â Syngenta Seeds, Inc. v. Delta
Cotton Coop., Inc., 457 F.3d 1269, 1273 (Fed. Cir. 2006) (footnote omitted). In this
case, the applicable regional circuit law is that of the Ninth Circuit. Under Ninth Circuit
law, the denial of a Rule 50(b) renewed motion for judgment as a matter of law is
reviewed de novo. White v. Ford Motor Co., 312 F.3d 998, 1010 (9th Cir. 2002)
(footnote omitted). The Ninth Circuit reviews evidentiary rulings under an abuse of
discretion standard. Janes v. Wal-Mart Stores Inc., 279 F.3d 883, 886 (9th Cir. 2002).
A motion for a new trial is also reviewed for abuse of discretion. Id.
Molten makes three primary arguments on appeal. First, it claims that the district
court erred by failing to dismiss Badenâs Lanham Act claim in light of the Supreme
Courtâs holding in Dastar. According to Molten, Dastar prohibits Lanham Act claims
based on advertisements that falsely claim authorship of an idea. Thus, Molten argues,
because Badenâs claims only allege false authorship of an idea, they are prohibited by
Dastar. Molten argues that, to the extent that the court characterized Badenâs claims as
concerning aspects other than idea origination, it did so in error. Moltenâs second
argument is that the district court erred in excluding evidence relevant to the element of
falsity regarding the âinnovationâ language in its advertisements. Finally, Molten claims
that the $8 million damages award is excessive and against the weight of the evidence
and should thus be remitted.
Baden counters that the present case does not revolve around claims of
authorship; thus, Dastar is irrelevant. According to Baden, Dastar only prohibits claims
2008-1216, -1246 6
brought under section 43(a)(1)(A) of the Lanham Act that are based on the failure to
properly credit an author. Baden argues that its claims were properly brought under
section 43(a)(1)(B) of the Lanham Act and therefore are not prohibited by Dastar.
Furthermore, Baden alleges that significant ânon-Dastarâ evidence independently
established Moltenâs Lanham Act liability. Baden also argues that the district court did
not err in denying Moltenâs request for a new trial based on the exclusion of evidence.
Finally, Baden urges this court to find, as the district court did, that the juryâs damages
award was not excessive and should be upheld.
A. Dastar and Section 43(a) of the Lanham Act
We agree with Molten that Dastar precludes Badenâs section 43(a) claim. The
Supreme Court stated in Dastar that section 43(a) of the Lanham Act does not have
boundless application as a remedy for unfair trade practices. Dastar, 539 U.S. at 29.
Because of its inherently limited wording, section 43(a) can never be a federal
codification of the overall law of unfair competition, but can only apply to certain unfair
trade practices prohibited by its text. Id. Section 43(a) of the Lanham Act does not
create liability from Moltenâs advertisements because those advertisements do not
concern the âorigin of goods,â to which section 43(a)(1)(A) is directed, nor do they
concern the ânature, characteristics, [or] qualitiesâ of the goods, which is what Ninth
Circuit law has interpreted Section 43(a)(1)(B) to address. See Sybersound Records,
Inc. v. UAV Corp., 517 F.3d 1137, 1144 (9th Cir. 2008).
Section 43(a)(1) of the Lanham Act reads as follows:
(1) Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false designation
of origin, false or misleading description of fact, or false or misleading
2008-1216, -1246 7
representation of fact, whichâ
(A) is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities
by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or
her or another personâs goods, services, or commercial
activities,
shall be liable in a civil action by any person who believes that he or
she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1).
Dastar involved a television series about World War II. The owners of the series
allowed its copyright to expire, thus placing the series in the public domain. Dastar, 539
U.S. at 26. Dastar Corporation copied and edited the series, added new narrations,
repackaged and renamed the series, and began selling the modified video as its own
product. Id. at 26-27. A number of media companies brought suit against Dastar
Corporation alleging that sales of the video violated section 43(a) of the Lanham Act,
the same section implicated by the present appeal. Id. at 25, 27.
Section 43(a)(1)(A) of the Lanham Act makes actionable any commercial
misrepresentation that is likely to cause confusion âas to the originâ of goods. 15 U.S.C.
§ 1125(a)(1)(A); see also Dastar, 539 U.S. at 29-30. The Supreme Court held that
âorigin of goods,â as that term is used in Section 43(a), does not refer to âthe person or
entity that originated the ideas or communications that âgoodsâ embody or contain.â
Dastar, 539 U.S. at 32. Instead, the Court read âorigin of goodsâ as referring âto the
producer of the tangible goods that are offered for sale, and not to the author of any
2008-1216, -1246 8
idea, concept, or communication embodied in those goods.â Id. at 37. Because Dastar
Corporation was the âorigin,â or producer, of the products it sold, the Court held that
Dastar was not liable for false advertising under the Lanham Act. Id. at 38.
Applying the Supreme Courtâs interpretation of section 43(a)(1)(A) to this case
entails an evaluation of whether Moltenâs advertising refers to the âproducer of the
tangible goods,â in which case a claim under section 43(a)(1)(A) would be proper, or
whether it refers to âthe author ofâ the idea or concept behind Moltenâs basketballs, in
which case the claim would be foreclosed by Dastar. Looking at the case in this light, it
is apparent that Dastar does not permit Baden to claim false advertising under
section 43(a)(1)(A). Baden has not argued that someone other than Molten produces
the infringing basketballs, and nothing in the record indicates that Molten is not in fact
the producer of the balls. Thus, Badenâs claims are not actionable under
section 43(a)(1)(A) because they do not âcause confusion . . . as to the originâ of the
basketballs.
While Baden agrees that Dastar precludes finding liability in this case under
section 43(a)(1)(A), it argues that its Lanham Act claims are permitted under
Section 43(a)(1)(B). That subsection creates liability for any commercial advertising
that âmisrepresents the nature, characteristics, qualities, or geographic originâ of goods.
15 U.S.C. § 1125(a)(1)(B). Baden argues that its claims survive Dastarâs holding by
pointing to dictum at the end of the Dastar opinion:
If, moreover, the producer of a video that substantially copied the Crusade
series were, in advertising or promotion, to give purchasers the impression
that the video was quite different from that series, then one or more of the
respondents might have a cause of actionânot . . . under the
âconfusion . . . as to the originâ provision of § 43(a)(1)(A), but for
misrepresentation under the âmisrepresents the nature, characteristics [or]
2008-1216, -1246 9
qualitiesâ provision of § 43(a)(1)(B).
Dastar, 539 U.S. at 38 (alteration in original). This language, according to Baden,
permits Baden to bring its false advertising claim because Moltenâs âinnovationâ claims
misrepresent the ânature, characteristics, or qualitiesâ of its basketballs.
Indeed, in permitting Badenâs âinnovationâ claims to proceed to trial, the district
court relied on Dastar. Baden Sports, 2007 U.S. Dist. LEXIS 51252, at *17. The court
found that âinnovative,â in contrast to âproprietaryâ and âexclusive,â related to the nature,
characteristics, and quality of the basketballs themselves. Id. The court found that âany
advertising indicating that Moltenâs âDual Cushion Technologyâ is âinnovativeâ or new
relates, not to the inventor of Moltenâs basketball technology, but to the ânature,
characteristics, [or] qualitiesâ of the basketballs themselves. Dastar does not bar a false
advertising claim based on Moltenâs advertising that its product or technology is
innovative.â Id.
While the dictum in Dastar might suggest that the Supreme Court left open the
possibility of a claim arising from a misrepresentation concerning the qualities of certain
goods, it does not necessarily suggest that claims based on false designation of
authorship are actionable under Section 43(a)(1)(B). Such a holding could create
overlap between the Lanham and Patent Acts. See Sybersound Records, 517 F.3d at
1144 (excluding false authorship claims from the Lanham Act in order to avoid âoverlap
between the Lanham and Copyright Actsâ).
Moreover, the Ninth Circuit, whose law we follow in this Lanham Act case, held
that the ânature, characteristics, and qualitiesâ language of Section 43(a)(1)(B) did not
refer to the licensing status of a copyrighted good. Id. The court held that, to avoid
2008-1216, -1246 10
âoverlap between the Lanham and Copyright Acts,â Section 43(a)(1)(B) must refer to
âthe characteristics of the good itself.â Id. According to the court in Sybersound, the
ânature, characteristics, and qualitiesâ of the disputed karaoke recording referred to
such things as the âquality of its audio and visual effects,â not to its licensing status. Id.
Following Sybersoundâs reasoning, we conclude that authorship, like licensing status, is
not a nature, characteristic, or quality, as those terms are used in Section 43(a)(1)(B) of
the Lanham Act.
Having reached this determination, we now must examine whether Badenâs false
advertising claims otherwise implicate the nature, characteristics, or qualities of the
basketballs. Thus, we must determine whether Baden has alleged anything more than
false designation of authorship. We conclude that Baden has not. No physical or
functional attributes of the basketballs are implied by Moltenâs advertisements.
âInnovativeâ only indicates, at most, that its manufacturer created something new, or
that the product is new, irrespective of who created it. In essence, Badenâs arguments
in this case amount to an attempt to avoid the holding in Dastar by framing a claim
based on false attribution of authorship as a misrepresentation of the nature,
characteristics, and qualities of a good.
Baden has repeatedly alleged that Molten falsely claimed that Molten, not Baden,
created the innovation known as dual-cushion technology. Throughout the trial, Baden
steadfastly argued that Moltenâs advertisements were false precisely because Molten
was not the source of the innovation. See, e.g., Tr. of R. at 1045, Baden Sports, 541 F.
Supp. 2d 1151 (No. 369) (âThey took our technology and they began to advertise it as
their own invention.â); id. at 1051 (â[T]he representation that âdual cushion technologyâ is
2008-1216, -1246 11
a Molten innovation would have a tendency to deceive a substantial segment of his
audience.â).
The district court stated that â[a]lthough some of that testimony indicates that
witnesses believed Moltenâs advertising was false because Baden actually created the
patented design, not Molten, other testimony makes clear that witnesses believed the
advertising to be false because Moltenâs product was not ânew,ââ Baden Sports, 541 F.
Supp. 2d at 1159. On appeal, Baden has waived any such argument about novelty or
newness, as Baden has limited its arguments to Moltenâs claims to be the innovator of
dual-cushion technology. For example, Baden states in its reply brief that â[t]his is not a
case that involves any single consistent use of âinnovativeâ or âinnovationâ in Moltenâs
advertising. Instead, there are multiple variations that collectively convert Moltenâs
advertising from a general statement that it is merely selling an âinnovativeâ product to
communicating [that] âthis particular innovation is Moltenâs.ââ Badenâs Reply Br. at 49;
see also id. at 45 (âBaden did contend that it wanted Molten to stop falsely advertising
that Molten is the creator of the design.â); id. at 50 (arguing that Moltenâs
advertisements are not puffery because they do not merely claim an innovation, but
rather âa Molten innovationâ (emphasis in original)). Furthermore, at oral argument
before this court, Badenâs counsel confirmed that Baden was alleging false advertising
based exclusively on Moltenâs claim to have been the innovator of the technology.
The Court: âSo the only thing youâre really saying they offended is by
saying, âWe, Molten, made these innovationsâ?â
Counsel for Baden: âThatâs correct. What weâre saying is Baden
developed this technology.â
Oral Argument at 20:45, http://oralarguments.cafc.uscourts.gov/mp3/2008-1216.mp3.
2008-1216, -1246 12
Baden has not argued on appeal that Moltenâs innovation claims were false for any
reason other than a false attribution of the authorship of that innovation.
Badenâs claims therefore do not go to the ânature, characteristics, [or] qualitiesâ
of the goods, and are therefore not actionable under section 43 (a)(1)(B). To find
otherwise, i.e., to allow Baden to proceed with a false advertising claim that is
fundamentally about the origin of an idea, is contrary to the Ninth Circuitâs interpretation
of Dastar. See Dastar, 539 U.S. at 37; Sybersound, 517 F.3d at 1144. Thus, we
reverse the district courtâs denial of judgment as a matter of law on Badenâs Lanham Act
claims. 1
B. Other False Advertising Claims
Baden argues that, even if Dastar precludes liability based on Moltenâs
âinnovativeâ language, there was sufficient ânon-Dastarâ evidence at trial to
independently support the juryâs Lanham Act award. The evidence that Baden points to
includes Moltenâs âswitchâ to a non-dual cushion design while still advertising their
basketballs as containing dual-cushion technology, and Moltenâs false claims that its
basketballs were designed by a prominent Italian designer.
We find that Baden did not pursue those false advertising arguments at trial.
Regarding Moltenâs alleged âswitch,â Baden failed to raise a consumer confusion
1
We note that under the law of a different circuit, this case may well have a
different result. See Zyla v. Wadsworth, 360 F.3d 243, 252 n.8 (1st Cir. 2004) (âThe
court in Dastar left open the possibility that some false authorship claims could be
vindicated under the auspices of § 43(a)(1)(B)âs prohibition on false advertising.â);
Clauson v. Eslinger, 455 F. Supp. 2d 256, 261 (S.D.N.Y. 2006) (âThe Dastar court
explicitly left open the possibility that some false authorship claims could be vindicated
under the auspices of this sectionâs prohibition on false advertising.â). But see Antidote
Intâl Films, Inc. v. Bloomsbury Publâg, PLC, 467 F. Supp. 2d 394, 400 (S.D.N.Y. 2006).
However, as we are bound by the law of the Ninth Circuit, we adopt Sybersoundâs
holding precluding false authorship claims from being brought under section 43(a)(1)(B).
2008-1216, -1246 13
argument in its complaint or the pre-trial order. Thus, Baden did not pursue its âswitchâ
claims at trial and has therefore waived that argument on appeal. See Eagle v. AT&T
Co., 769 F.2d 541, 548 (9th Cir 1985) (â[A] theory will be barred if not at least implicitly
included in the [pretrial] order.â). Furthermore, Baden did not object to the district
courtâs jury instruction, which referred only to the âinnovationâ claims. See Final Jury
Instructions at 16, Baden Sports, Inc. v. Kabushiki Kaisha Molten, No. 2:06-cv-210,
2007 U.S. Dist. LEXIS 70776 (W.D. Wash. Sep. 25, 2007) (No. 312) (instructing the jury
that Molten claimed ââdual cushionâ basketballs as a Molten innovation and they were
notâ). That failure undermines Badenâs argument that it pursued the âswitchâ claim at
trial. Lastly, Baden argues that the âswitchâ became a âsignificantâ issue at trial.
However, much of the testimony that Baden points to supporting that argument makes
clear that the purpose of the testimony was to demonstrate that Molten had falsely
claimed to be the innovator. See, e.g., Tr. of R. at 254, Baden Sports, Inc. v. Kabushiki
Kaisha Molten, 541 F. Supp. 2d 1151 (No. 365) (witness stating that the significance of
the âswitchâ was that it demonstrated that âitâs not their innovationâ).
Baden similarly failed to pursue its claims based on misrepresentation of the
basketball designer. In fact, the district court found that the design issue was ânot an
issue at trial.â Order Regarding Badenâs Req. for Entry of Final J. and Permanent Inj.
and Defs.â Req. for Remedies-Specific Evidentiary Hrâg at 4, Baden Sports, Inc. v.
Kabushiki Kaisha Molten, No. 2:06-cv-210, 2007 U.S. Dist. LEXIS 70776 (W.D. Wash.
Sept. 25, 2007) (No. 348). Thus, it is evident that Baden pursued only its claim of false
designation of authorship at trial. Because that claim is barred by Dastar, we reverse
the district courtâs denial of judgment as a matter of law.
2008-1216, -1246 14
C. Other Issues
Because we reverse the Lanham Act claims in light of Dastar, we need not
address Moltenâs further arguments requesting a new trial based on the exclusion of
evidence. Similarly, we need not address Moltenâs arguments regarding damages.
However, we must address Badenâs cross-appeal, which is based on patent law.
See Badenâs Mot. for Entry of J. and Permanent Inj. at 2, Baden Sports, Inc. v.
Kabushiki Kaisha Molten, No. 2:06-cv-210, 2007 WL 5043097 (W.D. Wash. Aug. 20,
2007) (No. 323). Baden requested that the district court enjoin Molten from using the
model numbers GL7, GG7, GL6, GG6, B7GX, and B6GX in the United States. Those
model numbers are used by Molten on its dual-cushion basketballs sold outside of the
United States, and are also used on basketballs sold in the United States which do not
contain dual-cushion technology. Baden argues that, absent the requested relief, there
is a substantial likelihood of consumer confusion; i.e., consumers attempting to
purchase basketballs with Badenâs patented technology in the United States will instead
buy Moltenâs basketballs. However, Badenâs request that the district court enjoin the
use of Moltenâs numbering system was brought under the Patent Act, and Baden is now
arguing that the district court erred by not applying the Lanham Act standard to its
injunction ruling. Badenâs Br. at 69-70. Baden cannot argue a new statutory basis for
its injunction on appeal.
Furthermore, the district courtâs sua sponte amendment of the original permanent
injunction moots the issue. The amended injunction requires Molten to âinform
consumers that Molten basketballs employing âdual-cushionâ technology are not
available in the United States.â Order Den. Mot. for Contempt but Amending Permanent
2008-1216, -1246 15
Inj. at 5, Baden Sports, Inc. v. Kabushiki Kaisha Molten, No. 2:06-cv-210, 2008 WL
356558 (W.D. Wash. Jan. 29, 2008) (No. 388). That amendment would appear to
remove any potential consumer confusion. We therefore hold that the district court did
not abuse its discretion in rejecting Badenâs motion to enjoin Moltenâs use of basketball
model numbers.
CONCLUSION
Because Badenâs Lanham Act claims were not actionable under Ninth Circuit
law, we reverse the district courtâs denial of judgment as a matter of law and vacate the
damages award based on those claims.
REVERSED
2008-1216, -1246 16