Kabushiki Kaisha Molten and Molten USA, Inc. (collectively “Molten”) appeal from a final judgment of the United States District Court for the Western District of Washington denying Molten’s motions for a new trial and judgment as a matter of law (“JMOL”) 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,
BACKGROUND
Baden manufactures inflatable sports balls, including high-end, game-quality basketballs. In 1997, Baden obtained U.S. Patent 5,636,835 (“the '835 patent”), which discloses a ball with “raised seams” and a “layer of padding underneath the outer covering.” '835 patent col.2 11.8-9, 18 (filed May 12, 1995). Baden sells basketballs embodying the invention of the '835 patent and markets those balls as containing “cushion control technology.”
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 “dual-cushion technology.” According to Molten’s 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 Molten’s sales and offers to sell basketballs in the United States constituted infringement of the '835 patent. In March of that year, Baden filed a First Amended Complaint alleging that Molten’s 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 *1303 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 Baden’s motion for summary judgment of patent infringement.
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
No. 2:06-cv-210,
In a separate opinion entered the same day, the district court granted in part and denied in part Molten’s motion for summary judgment on the false advertising claims.
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
No. 2:06-cv-210,
In its opening statement at trial, Baden’s counsel told the jury that evidence would be presented that Molten had falsely advertised that “dual cushion technology [was] a Molten innovation.” Tr. of Oral Argument at 104,
Baden Sports v. Molten,
During trial, the district court excluded some of Molten’s proposed evidence. Of relevance to this appeal, the court refused to permit testimony from a number of witnesses regarding the differences between the companies’ basketballs. The testimony excluded by the district court included proposed cross-examinations of Baden’s expert, Richard Yalch, and Ba
*1304
den’s CEO, Michael Schindler, as well as proposed direct examination of Molten USA’s 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 '835 patent had already been granted, Molten was precluded from arguing that its basketballs were different from Baden’s basketballs. Tr. of R. at 578-81,
Baden Sports,
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 '835 patent in the United States and from stating in its U.S. advertising that dual-cushion technology is “innovative.”
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
No. 2:06-cv-210,
Molten timely appealed the district court’s 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.,
Molten makes three primary arguments on appeal. First, it claims that the district court erred by failing to dismiss Baden’s Lanham Act claim in light of the Supreme Court’s 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 Baden’s claims only allege false authorship of an idea, they are prohibited by Dastar. Molten argues that, *1305 to the extent that the court characterized Baden’s claims as concerning aspects other than idea origination, it did so in error. Molten’s second argument is that the district court erred in excluding evidence relevant to the element of falsity regarding the “innovation” 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 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 “non-Dastar ” evidence independently established Molten’s Lanham Act liability. Baden also argues that the district court did not err in denying Molten’s 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 jury’s damages award was not excessive and should be upheld.
A. Dastar and Section 43(a) of the Lan-ham Act
We agree with Molten that
Dastar
precludes Baden’s 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,
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 representation of fact, which—
(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 person’s 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,
Section 43(a)(1)(A) of the Lanham Act makes actionable any commercial misrepresentation that is likely to cause confusion “as to the origin” of goods. 15 U.S.C. § 1125(a)(1)(A);
see also
Dastar,
Applying the Supreme Court’s interpretation of section 43(a)(1)(A) to this case entails an evaluation of whether Molten’s advertising refers to the “producer of the tangible goods,” in which case a claim under section 43(a)(1)(A) would be proper, or whether it refers to “the author of’ the idea or concept behind Molten’s 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, Baden’s claims are not actionable under section 43(a)(1)(A) because they do not “cause confusion ... as to the origin” 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 “misrepresents the nature, characteristics, qualities, or geographic origin” of goods. 15 U.S.C. § 1125(a)(1)(B). Baden argues that its claims survive Dastaf s 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 action — not ... under the “confusion ... as to the origin” provision of § 43(a)(1)(A), but for misrepresentation under the “misrepresents the nature, characteristics [or] qualities” provision of § 43(a)(1)(B).
Dastar,
Indeed, in permitting Baden’s “innovation” claims to proceed to trial, the district court relied on
Dastar. Baden Sports,
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 4S(a)(l)(B). Such a holding could create overlap between the Lanham and Patent Acts.
See Sybersound Records,
Moreover, the Ninth Circuit, whose law we follow in this Lanham Act case, held that the “nature, characteristics, and qualities” 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 “overlap between the Lanham and Copyright Acts,” Section 43(a)(1)(B) must refer to “the characteristics of the good itself.” Id. According to the court in Sy-bersound, the “nature, characteristics, and qualities” of the disputed karaoke recording referred to such things as the “quality of its audio and visual effects,” not to its licensing status. Id. Following Syber-sound’s 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 Baden’s 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 Molten’s advertisements. “Innovative” only indicates, at most, that its manufacturer created something new, or that the product is new, irrespective of who created it. In essence, Baden’s 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 Molten’s advertisements were false precisely because Molten was not the source of the innovation.
See, e.g.,
Tr. of R. at 1045,
Baden Sports,
The district court stated that “[ajlthough some of that testimony indicates that witnesses believed Molten’s 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 Molten’s product was not ‘new,’ ”
Baden Sports,
The Court: “So the only thing you’re really saying they offended is by saying, ‘We, Molten, made these innovations’?”
Counsel for Baden: “That’s correct. What we’re saying is Baden developed this technology.”
Oral Argument at 20:45, http:// oralarguments.cafe.uscourts.gov/mp3/2008-1216.mp3. Baden has not argued on appeal that Molten’s innovation claims were false for any reason other than a false attribution of the authorship of that innovation.
Baden’s claims therefore do not go to the “nature, characteristics, [or] qualities” 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 Circuit’s interpretation of
Dastar. See Dastar,
B. Other False Advertising Claims
Baden argues that, even if Dastar precludes liability based on Molten’s “innovative” language, there was sufficient “non-Dastar” evidence at trial to independently support the jury’s Lanham Act award. The evidence that Baden points to includes Molten’s “switch” to a non-dual cushion design while still advertising their basketballs as containing dual-cushion technology, and Molten’s 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 Molten’s alleged “switch,” Baden failed to raise a consumer confusion argument in its complaint or the pre-trial order. Thus, Baden did not pursue its “switch” claims at trial and has therefore waived that argument on appeal.
See Eagle v. AT & T Co.,
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 “not an issue at trial.” Order Regarding Baden’s Req. for Entry of Final J. and Permanent Inj. and Defs.’ Req. for Remedies-Specific Evidentiary Hr’g at 4,
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
No. 2:06-cv-210,
C. Other Issues
Because we reverse the Lanham Act claims in light of Dastar, we need not address Molten’s further arguments requesting a new trial based on the exclusion of evidence. Similarly, we need not address Molten’s arguments regarding damages.
However, we must address Baden’s cross-appeal, which is based on patent law.
See
Baden’s Mot. for Entry of J. and Permanent Inj. at 2,
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
No. 2:06-cv-210,
Furthermore, the district court’s
sua sponte
amendment of the original permanent injunction moots the issue. The amended injunction requires Molten to “inform consumers that Molten basketballs employing ‘dual-cushion’ technology are not available in the United States.” Order Den. Mot. for Contempt but Amending Permanent Inj. at 5,
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
No. 2:06-cv-210,
CONCLUSION
Because Baden’s Lanham Act claims were not actionable under Ninth Circuit *1310 law, we reverse the district court’s denial of judgment as a matter of law and vacate the damages award based on those claims.
REVERSED
Notes
. We note that under the law of a different circuit, this case may well have a different result.
See Zyla v. Wadsworth,