AMENDED ORDER
This matter is before the Court on the parties’ cross motions for Summary Judg *535 ment as to the other’s claims. On March 29, 2008, the Court issued an Order denying Defendant’s Motion for Summary Judgment on Plaintiffs Claims. The Court has reconsidered the motion and now amends its March 29, 2008 Order. For the reasons stated below, the Court GRANTS Defendant’s Motion for Summary Judgment on Plaintiffs Claims, GRANTS Plaintiffs Motion for Summary Judgment as to Defendant’s counterclaims, and DENIES Defendant’s Motion for Summary Judgment as to its Fourth Counterclaim.
BACKGROUND
Plaintiff Georgia Pacific (“GP”) leases certain hands-free enMotion® paper towel dispensers to distributors. The distributors in turn sublease the dispensers to end users — baseball stadiums, restaurants, and other businesses — that install them in their restroom facilities. Through its lease and sub-lease agreements, GP conditions the use of its dispensers upon the exclusive installation of GP brand paper towels for use in the dispensers. Though it does not manufacture the dispensers, GP claims trademarks and other intellectual property rights in them. GP says that Defendant von Drehle Corporation (“von Drehle”) has repeatedly “stuffed” GP dispensers with von Drehle paper. That conduct, according to GP, not only interfered with GP’s exclusive leases and subleases, but also has created confusion that implicates GP’s trademark. GP claims that von Drehle’s paper is inferior, and that consumers utilizing a “stuffed” dispenser will likely associate the paper with GP’s brand, thereby diluting its value. GP thus sued von Drehle here, for trademark violations, counterfeiting, common law unfair competition, and tortious interference with a contractual relationship.
von Drehle answered and counterclaimed. After the Court denied von Drehle’s Motion to Dismiss, discovery opened. Thereafter, von Drehle twice sought and received leave amend its Complaint and Counterclaims, von Drehle’s Third Amended Answer and Counterclaims generally denies GP’s allegations. More importantly, von Drehle claims that GP: (1) has engaged in a “tying” arrangement, in contravention of the federal antitrust laws; (2) committed a second federal antitrust violation by entering into an anti-competitive settlement agreement with a third party, Kimberly-Clark [Corporation]; (3) similarly violated North Carolina antitrust statutes; and (4) violated North Carolina’s Unfair and Deceptive Trade Practices Act.
On May 31, 2007, the parties filed cross motions for summary judgment as to the other claims. On March 29, 2008, the Court issued an order denying von Drehle’s motion for summary judgment as to GP’s claims. The Court now reconsiders its March 29, 2008 Order as well as GP’s motion for summary judgment as to von Drehle’s counterclaims.
DISCUSSION
A motion for summary judgment cannot be granted unless there are no genuine issues of material fact for trial. Fed.R.Civ.P. 56;
Celotex Corp. v. Catrett,
I. Georgia Pacific’s claims against von Drehle
A. Trademark infringement claims and common law unfair competition claim
GP alleges that von Drehle has (1) made false representations and false designations of origin in violation of 15 U.S.C. § 1125(a)(1)(A); (2) directly or eontributorily infringed on GP’s trademark infringement rights in violation of 15 U.S.C. § 1114; and (3) violated GP’s trademark rights in violation of 15 U.S.C. § 1114(l)(a) by making a counterfeit (trade dress). GP’s common law unfair competition claim is based upon the same alleged conduct.
In order for GP to prevail on its Lanham Act claims and common law unfair competition claim, it must show that: (1) it possesses a mark, (2) von Drehle used the mark, (3) in commerce, (4) in connection with the sale, offering for sale, distribution or advertising of goods and services, and (5) in a manner likely to cause consumer confusion. 15 U.S.C. §§ 1114, 1125(a);
PETA v. Doughney,
Here, GP has failed to show that von Drehle’s sale of its 810-B paper towel roll to distributors for use in the enMotion® dispensers caused consumer confusion. GP contends visitors to restrooms where an enMotion® dispenser “stuffed” with von Drehle’s 810-B paper towel roll are confused to the extent that they expect a GP brand paper towel roll to come from a GP brand dispenser. In arguing its position, GP mistakenly analogizes the facts in this case to cases where gas distributors have been found guilty of trademark infringement when providing unbranded gas to gas stations that falsely sell the gas under a brand name.
See Getty Petroleum Corp. v. Aris Getty, Inc.,
In this case, the end-users of the paper towel rolls produced by von Drehle and GP are those business owners who purchase paper towel rolls from distributors for the enMotion® dispensers installed in their premises. The end-users know exactly from which company they are purchasing the paper towel rolls and associate the nature and quality of such paper towels rolls with that company. GP’s trademark claims and related unfair competition claim are premised upon von Drehle’s manufacturing and selling of the 810-B paper towel roll causing confusion for restroom visitors. GP wrongly casts restroom visitors to whom business owners provide paper towels as the end-users. GP provides empirical evidence regarding whether restroom visitors expect the brand of the paper towel dispensed from a paper towel dispenser to be the same as the brand of the dispenser itself. Their expectations regarding the quality and nature of the paper towel rolls, however, are irrelevant. The visitors to the restroom have made no choices regarding the paper towel roll dispensed from the enMotion® dispenser. No evidence exists to indicate that restroom visitors play any meaningful role in deciding which paper towel roll a business owner purchases from a distributor. Similarly, no evidence exists to indicate that restroom visitors choose certain business establishments based upon the paper towel brand present in the restroom. In order for GP’s trademark claims and unfair competition claim to survive, von Drehle’s sale of the 810-B paper towel rolls must cause confusion for the consumers — the business owners and/or distributors who actually purchase the paper towel rolls. No such allegations have been made by GP. Accordingly, the Court finds von Drehle is entitled to summary judgment in its favor as to GP’s trademark infringement claims and unfair competition claim.
B. Tortious interference claims
GP also alleges von Drehle tortiously interfered with its actual and prospective contractual relationships. In order to prevail on these claims, GP must show that: (1) a valid contract between GP and a third person existed, conferring upon GP a contractual right against a third person; (2) von Drehle had knowledge of the contract; (3) von Drehle intentionally induced the third person not to perform the contract; (4) in doing so acted without justification, (5) resulting in actual damage to GP.
United Laboratories, Inc. v. Kuykendall,
Assuming
arguendo,
that (1) GP entered into valid contracts with the distributors and business owners, requiring the latter to purchase paper towel rolls for the enMotion® dispenser from GP, and (2) von Drehle’s marketing of the 810-B paper towel roll for use in enMotion® dispenser should be considered as evidence of an intent on its part to induce distributors and business owners not to perform their contracts with GP, such action would still be justified as taken in furtherance of legitimate competition.
Carolina Water Serv. v. Town of Atl. Beach,
Here, it is undisputed that GP and von Drehle are competitors in the paper manufacturing industry. GP has failed to provide any evidence that von Drehle’s motive in marketing and selling the 810-B paper towel roll for use in the enMotion® dispenser was malicious, wrongful or without justification. To the contrary, the evidence supports a finding that von Drehle acted solely for a legitimate business purpose. The marketing of paper towel rolls for use in a competitor’s dispenser is common practice within the industry. So much so that, at one point in time, GP, itself, marketed paper towel rolls for use in a von Drehle dispenser. Without any showing by GP of malice on von Drehle’s part, the Court must find that von Drehle’s marketing of its 810-B paper towel roll for use in the enMotion® dispenser amounts to justifiable interference.
See Peoples Sec. Life Ins. Co.,
In rejecting GP’s claims for tortious interference with contractual rights, the Court does not leave GP without recourse. The Court’s order does not prevent GP from instituting breach of contract claims against the distributors or business owners with which its entered into such contracts.
The Court finds that von Drehle is entitled to summary judgment in its favor as to GP’s claim of tortious interference with its actual and prospective contractual relationships.
C. Unfair and deceptive trade practices claim
In addition, GP alleges von Drehle violated the North Carolina Unfair and Deceptive Trade Practices Act (the “UDT-PA”) when von Drehle allegedly infringed GP’s trademark by marketing and selling the 810-B paper towel roll for use in the enMotion® dispenser. Under North Carolina law, trademark infringement may support a claim under the UDTPA. N.C. Gen.Stat. § 75-1.1,
et seq. See Yellowbrix Inc.,
Here, the Court finds that von Drehle did not infringe GP’s trademark rights because there was no likelihood of consumer confusion between GP’s and von Drehle’s marks. This conclusion is based on the fact that the end-users, those business owners who purchase paper towel rolls from distributors for the enMotion® dispensers installed in their premises, know exactly from which company they are purchasing the paper towel rolls. Because von Drehle did not act deceptively and unfairly in adopting GP’s mark, GP’s UDTPA claim cannot survive.
The Court finds von Drehle is entitled to summary judgment in its favor as to GP’s UDTPA claim.
D. Trespass to chattels and conversion claim
GP also alleges conversion and, in the alternative, trespass to chattels. Conversion is defined as: (1) the unauthorized assumption and exercise of the right of ownership; (2) over the goods or personal property; (3) of another; (4) to the exclusion of the rights of the true owner.
Di Frega v. Pugliese,
Assuming arguendo, that GP can prove its ownership over the dispensers in question through valid and enforceable sublease agreements, the conversion and trespass claims still fail unless GP can prove von Drehle exercised or assumed a right of ownership over the enMotion® dispensers. Here, GP has failed to provide any evidence that supports such a finding. The end-users, those business owners who purchase paper towel rolls from distributors for the enMotion® dispensers installed in their premises, exercise or assume a right of ownership over the enMotion® dispensers, not von Drehle. Accordingly, given von Drehle has not exercised or assumed any right of ownership over enMotion® dispensers using its paper towel rolls, the Court cannot find in GP’s favor on its claims for conversion and, in the alternative, trespass to chattels.
The Court finds von Drehle is entitled to summary judgment in its favor as to GP’s conversion and trespass to chattels claims.
E. Concerted action claim
GP also alleges a claim for concerted action based on an alleged agreement between von Drehle and former co-defendant to tortiously interfere with GP’s contracts and infringe GP’s trademark rights. As discussed above, the Court finds von Drehle is entitled to summary judgment in its favor as to GP’s trademark infringement claims and tortious interference claim. As a result, GP’s claim for concerted action cannot survive.
The Court finds von Drehle is entitled to summary judgment in its favor as to GP’s concerted action claim.
II. von Drehle’s counterclaims against Georgia Pacific
A. “Tying” claim
In response to GP’s claims, von Drehle alleges a “tying” claim against GP.
*540
GP moves the Court to find summary-judgment in its favor as to this counterclaim. In order to prevail its tying claim, von Drehle must demonstrate: (1) a tying and a tied product; (2) evidence of actual coercion by the seller that forced the buyer to accept the tied product; (3) sufficient economic power in the tying product market to coerce purchaser acceptance of the tied product; (4) anticompetitive effects in the tied market; and (5) the involvement of a “not insubstantial” amount of interstate commerce in the “tied” market.
Gonzalez v. St. Margaret’s House Hous. Dev. Fund Corp.,
Without addressing the other elements of von Drehle’s tying claim, its clear that no genuine issue of material fact remains as to whether end-users are actually coerced by GP to accept the tied product. The essence of coercion is the “seller’s exploitation of its control over the tying product to force the buyer into the purchase of a tied product that the buyer either did not want at all, or might have preferred to purchase elsewhere on different terms.”
Jefferson Parish v. Hyde,
The Court finds GP is entitled to Summary Judgment in its favor as to von Drehle’s tying claim.
B. Conspiracy claim
von Drehle also alleges GP conspired with the Kimberly-Clark Corporation (“Kimberly-Clark”) to violate § 1 of the Sherman Act when it entered into an agreement providing that neither GP or Kimberly-Clark would compete in the sale of paper towels for each other’s “proprietary” dispensers. This allegedly anti-competitive agreement covered the GP’s en-Motion® dispenser. Without reaching the merits of this conspiracy claim, however, the Court must grant summary judgment in GP’s favor because von Drehle lacks standing to assert the claim. It is true that the antitrust statutes do not “confine [their] protection to consumers, or to purchasers,” and “[are] comprehensive in [their] terms and coverage, protecting all who are made victims of the forbidden practices by whomever they may be perpetrated.”
Associated General Contractors v. Cal. State Council of Carpenters,
The Court finds GP is entitled to Summary Judgment in its favor as to von Drehle’s conspiracy claim.
C. State law antitrust claims
In addition to its federal antitrust claims, von Drehle also asserts state law antitrust claims against GP. In light of the Court’s findings regarding von Drehle’s federal antitrust claims, its state law antitrust claims cannot survive.
Madison Cablevision v. Morganton,
The Court finds GP is entitled to Summary Judgment in its favor as to von Drehle’s state law antitrust claims.
D. Unfair trade practices claim
von Drehle alleges GP violated North Carolina’s Unfair and Deceptive Trade Practices Act, N.C.G.S. § 75-1.1. von Drehle alleges that GP engaged in an unfair and deceptive practices by attempting to enforce invalid and unenforceable leases and subleases. In order to prevail on its claim, von Drehle must show (1) an unfair or deceptive act or practice, or an unfair method of competition, (2) in or affecting commerce, (3) which proximately caused actual injury to the plaintiff or to his business.
Walker v. Fleetwood Homes of N.C., Inc.,
CONCLUSION
The Court GRANTS von Drehle’s Motion for Summary Judgment on GP’s Claims, GRANTS GP’s Motion for Summary Judgment on von Drehle’s counterclaims, and DENIES von Drehle’s Motion for Summary Judgment as to its Fourth Counterclaim.
SO ORDERED.