Luv N Care Ltd v. Groupo Rimar
3:14-cv-02491
| W.D. La. | Mar 22, 2018Background
- LNC (Louisiana) and Suavinex (Spain) entered a 2009 distribution agreement; certain provisions (Paragraphs 15B and 19) survived a 2012 Termination Agreement and restrict use of product designs and confidential information.
- LNC alleges Suavinex sold pacifier and silicone soft-top sippy cup products that copy LNC’s protected designs, violating Paragraphs 15 and 19.
- LNC initially sued in Louisiana state court (June 2013) but voluntarily dismissed and refiled in federal court per the 2012 forum-selection clause; Suavinex counterclaimed for breach and declaratory relief.
- Judge James granted Suavinex partial summary judgment and awarded attorney’s fees; the Fifth Circuit reversed and remanded, holding the district court erred by requiring pre-existing intellectual property protection and that factual issues remained.
- On remand, Suavinex moved again for partial summary judgment; the district court denied the motion, concluding factual questions (e.g., whether Suavinex copied or independently designed the products and whether the accused products are colorable imitations) preclude summary judgment and that injunctive relief issues cannot be resolved at this stage.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Suavinex breached the 2009 Agreement/2012 Termination Agreement by selling products that copy LNC’s designs | LNC: Suavinex copied LNC’s combination hard/soft shield pacifier and soft-top spout design; those designs are protected by surviving contract provisions | Suavinex: Its products differ visually and were independently developed; overmolding and soft silicone spouts are industry practices predating the agreements; some designs were public before 2012 release | Denied summary judgment — factual disputes about copying and similarity defeat summary judgment |
| Whether the contract protects product designs not otherwise protected by IP law | LNC: Contract plain language protects product designs and confidences irrespective of other legal protection | Suavinex: Contract should not be read to grant indefinite, worldwide non-compete-like protection over general product features or industry techniques | Court follows Fifth Circuit remand: contract can protect designs even if not otherwise IP-protected; factual inquiry required; summary judgment inappropriate |
| Whether LNC is entitled to a worldwide permanent injunction prohibiting Suavinex’s sales | LNC: Entitled if breach is proven and irreparable harm exists | Suavinex: No irreparable harm shown; injunction would be overbroad and improper given independent development/industry prior art | Denied summary judgment on injunction claim pending factual determination of breach and irreparable harm |
| Whether LNC waived claims by releasing products already in public domain via the 2012 Termination Agreement | Suavinex: Designs commercially available before 2012 were released and cannot be the basis of claims | LNC: Disputes over whether Suavinex used LNC’s confidential design info vs. publicly available features; factual question | Court finds this is a factual issue not appropriate for summary judgment |
Key Cases Cited
- Luv n’ Care, Ltd. v. Groupo Rimar, aka Suavinex, S.A., 844 F.3d 442 (5th Cir. 2016) (reversed district court, held contract protection not limited to designs already protected by other IP and remanded for factual determination)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard; genuine issue requires reasonable jury could find for nonmoving party)
- Celotex Corp. v. Catrett, 477 U.S. 317 (movant need only show absence of evidence for essential element to shift burden)
- Little v. Liquid Air Corp., 37 F.3d 1069 (5th Cir. 1994) (conclusory allegations insufficient to defeat summary judgment)
- Topalian v. Ehrmann, 954 F.2d 1125 (5th Cir. 1992) (movant’s initial burden on summary judgment)