Silverhorse Racing, LLC v. Ford Motor Co.
232 F. Supp. 3d 1206
M.D. Fla.2017Background
- Silverhorse Racing, LLC (SHR) manufactured and sold aftermarket Ford Mustang parts engraved with "GT" and "5.0" without a license; Ford owned registered GT® and 5.0® marks and used them on Mustang parts and accessories for decades.
- Ford sent pre-suit demand letters to SHR and to SHR’s distributors (e.g., CJ Pony Parts, Mustangs Unlimited) requesting removal of unlicensed SHR products; distributors ceased sales after receipt of letters.
- SHR sued Ford in state court for tortious interference based on those demand letters; Ford removed the action to federal court and moved to dismiss asserting Noerr–Pennington immunity; the court denied dismissal at the pleading stage because SHR alleged facts suggesting a possible sham.
- Ford later moved for partial summary judgment on SHR’s tortious interference claim, invoking Noerr immunity for its demand-letter activity; SHR failed to properly dispute many of Ford’s asserted facts and submitted a lengthy affidavit without pinpoint citations.
- The district court concluded Ford’s demand letters were litigation-adjacent petitioning activity protected by the Noerr doctrine and that SHR did not show the letters were a "sham" (objectively baseless and motivated by anticompetitive intent), so Ford was immune and SHR’s complaint was dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Ford’s demand letters are protected petitioning under Noerr–Pennington | SHR: Letters were a sham and thus not protected because Ford’s trademark counterclaims are barred by affirmative defenses | Ford: Demand letters are litigation-related petitioning to enforce valid trademarks and therefore immune | Court: Ford’s letters are protected; SHR failed to show they were objectively baseless or subjectively intended to restrain competition |
| Whether SHR created a genuine dispute of material fact to overcome summary judgment | SHR: Reliance on affirmative defenses and Canitano affidavit creates disputes | Ford: SHR failed to comply with Rule 56 and did not cite the record to dispute Ford’s facts | Court: SHR’s response insufficient; many facts deemed undisputed |
| Whether objective baselessness standard is met | SHR: Implicitly argues defenses render claims baseless | Ford: Owner of registered marks and evidence of SHR’s infringing sales make letters objectively reasonable | Court: Objective prong not met; an objective litigant could expect success |
| Whether the court must examine subjective intent after objective prong | SHR: Argues bad faith/anticompetitive intent existed | Ford: No evidence of improper motive; letters aimed to protect marks | Court: No need to reach subjective prong because objective prong failed; SHR offered no evidence of bad faith |
Key Cases Cited
- BE & K Constr. Co. v. NLRB, 536 U.S. 516 (2002) (Noerr doctrine protects petitioning of government and related conduct unless sham)
- Prof’l Real Estate Investors v. Columbia Pictures Indus., Inc., 508 U.S. 49 (1993) (establishes two-part sham exception: objectively baseless then subjective intent)
- Cal. Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508 (1972) (First Amendment right to petition extends broadly)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (summary judgment standards regarding genuine disputes)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment burden-shifting principles)
- Primetime 21 Joint Venture v. Nat’l Broad. Co., 219 F.3d 92 (2d Cir. 2000) (demand letters are litigation-attendant activity covered by Noerr)
- Video Int’l Prod., Inc. v. Warner-Amex Cable Commc’ns, Inc., 858 F.2d 1075 (5th Cir. 1988) (Noerr applied to common-law tortious interference)