Georgia-Pacific Consumer Products LP v. Four-U-Packaging, Inc.
701 F.3d 1093
| 6th Cir. | 2012Background
- Georgia-Pacific owns enMotion dispensers and licenses exclusive use of enMotion-brand towels.
- Four-U distributes von Drehle 810B towels for use in enMotion dispensers, allegedly infringing Georgia-Pacific’s marks.
- Georgia-Pacific sued Four-U in the district court asserting Lanham Act, common-law unfair competition, tortious interference, and Ohio Deceptive Trade Practices Act claims.
- Four-U moved for summary judgment relying on issue preclusion from Georgia-Pacific v. Myers Supply (Arkansas case).
- The district court granted summary judgment to Four-U, and the question on appeal is whether Myers Supply bars Georgia-Pacific’s claims for Four-U.
- The panel held that issue preclusion applies, barring all Georgia-Pacific claims against Four-U.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Myers Supply precludes Georgia-Pacific’s claims against Four-U | Georgia-Pacific argues differences do not defeat preclusion; essential issue was actually litigated. | Four-U contends Myers Supply controls because same issue of confusion and same core facts exist. | Yes; issue preclusion applies and bars Georgia-Pacific’s claims. |
Key Cases Cited
- Georgia-Pacific Consumer Prods. LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir. 2010) (affirmed district court’s ruling that no likelihood of confusion; preclusion applied to related claims)
- Gen. Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351 (6th Cir. 2006) (likelihood-of-confusion analysis framework for trademark/ unfair competition claims)
- Randles v. Gregart, 965 F.2d 90 (6th Cir. 1992) (identity of issues required for collateral estoppel; prior related actions)
- McAdoo v. Dallas Corp., 932 F.2d 522 (6th Cir. 1991) (mutuality not required in defensive collateral estoppel when full and fair opportunity to litigate)
- Auto Acetylene Light Co. v. Prest-O-Lite Co., 264 F.810 (6th Cir. 1920) (changed conditions doctrine; new right of action not created by mere passage of time)
- Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006) (intent alone not always determinative for likelihood of confusion)
- Montana v. United States, 440 U.S. 147 (Supreme Court 1979) (federal policy favoring consistent application of collateral estoppel)