511 F.Supp.3d 1158
W.D. Wash.2021Background
- PBTM (formerly Volume 12) created and used “VOLUME 12” / stylized “12” marks beginning in 2009 and later obtained USPTO registrations for some VOLUME 12 marks in 2017.
- In 2011 PBTM licensed limited stadium/publicity uses to Football Northwest LLC (the Seahawks). In 2014 PBTM sold the "LEGION OF BOOM" mark under an agreement that included paragraph 22, which requires PBTM to obtain Seahawks’ written consent before producing or selling any product incorporating “12.”
- PBTM alleges it expected paragraph 22 to be non‑mandatory (Seahawks’ counsel allegedly promised to revise it), but the final contract retained mandatory consent; PBTM alleges unilateral mistake and inequitable conduct.
- Seahawks and NFL Properties (NFLP) opposed multiple PBTM applications at the TTAB and sent letters asserting PBTM’s use would violate the Legion of Boom agreement; PBTM alleges these enforcement actions and refusals to consent have harmed its ability to market and register 12‑related products.
- PBTM filed suit in December 2019 asserting declaratory/injunctive relief, contract claims (reformation, breach, breach of implied good faith), antitrust claims (Sections 1 & 2 and state analogues), and tying. Defendants moved to dismiss; the court granted dismissal in part and denied in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Reformation of 2014 agreement (Count 3a) — statute of limitations | PBTM says it signed due to unilateral mistake and inequitable conduct; seeks reformation to remove mandatory consent | Seahawks argue reformation claim is time‑barred | Dismissed with prejudice: reformation governed by 3‑year fraud/inequitable‑conduct rule and claim untimely (agreement signed 2014) |
| Breach of implied duty of good faith (Count 3b) — limitations | PBTM ties many acts to bad‑faith enforcement; argues six‑year rule applies because tied to contract | Seahawks argue three‑year rule applies | Partial: claims arising before Dec 23, 2016 dismissed with prejudice (3‑yr rule); claims after that date survive |
| Breach of Legion of Boom contract (Count 3c) — failure to state a claim | PBTM contends Seahawks breached paragraph 22 by refusing consent/use and by other conduct | Seahawks argue paragraph 22 imposes no duty on Seahawks to permit PBTM use; contract language limits PBTM’s conduct | Dismissed without prejudice as implausible to the extent it alleges Seahawks had contractual duty to grant consent; some breach‑of‑contract theories fail on face of contract |
| Effect of 2014 agreement on 2011 license (Count 4) — supersession | PBTM contends the agreements governed different subject matter and both stand | Seahawks contend later (2014) contract supersedes inconsistent earlier (2011) contract | Dismissed with prejudice: later agreement (paragraph 22) controls inconsistent earlier provisions; Count 4 fails as a matter of law |
| Antitrust claims (Counts 5–8) — relevant market and timeliness | PBTM defines market as Seahawks products bearing the number 12 and alleges continuing enforcement inflicts new injury | Seahawks argue market definition is facially unsustainable and claims are time‑barred | Antitrust counts dismissed without prejudice for failure to plead a plausible relevant product market; court held continuing‑violation doctrine tolled timeliness but market pleading deficient |
| Noerr‑Pennington immunity (defense to antitrust claims) | PBTM alleges Seahawks/NFLP TTAB oppositions are sham litigation—objectively baseless and intended to interfere | Seahawks claim TTAB oppositions and related petitioning are protected petitioning activity | Court declined to dismiss on Noerr ground at pleading stage—PBTM alleged facts sufficient to plead sham exception |
| Tying (Count 9) | PBTM alleges Seahawks tied purchase of Legion of Boom to paragraph 22 (tying of V12 marks) | Seahawks argue tying claim accrued at agreement execution (2014) and is time‑barred; also no coercion alleged | Dismissed with prejudice: claim time‑barred and fails on merits because PBTM alleges at most sales pressure/cursory review, not coercion |
Key Cases Cited
- Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83 (jurisdictional dismissal principle)
- Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375 (party asserting jurisdiction bears burden)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility standard for complaints)
- Ashcroft v. Iqbal, 556 U.S. 662 (legal conclusions not assumed true on 12(b)(6))
- Columbia Steel Casting Co. v. Portland Gen. Elec. Co., 111 F.3d 1427 (continuing violation analysis in antitrust context)
- Hennegan v. Pacifico Creative Serv., Inc., 787 F.2d 1299 (continuing violations where later acts inflicted new injury)
- In re Multidistrict Vehicle Air Pollution, 591 F.2d 68 (no continuing violation where original act permanently excluded plaintiff)
- Brown Shoe Co. v. United States, 370 U.S. 294 (definition of relevant product market and submarkets)
- Newcal Indus., Inc. v. Ikon Office Sol., 513 F.3d 1038 (pleading standard for relevant market)
- E.R.R. Presidents Conf. v. Noerr Motor Freight, 365 U.S. 127 (Noerr immunity for petitioning activity)