In this case, we are asked to consider whether the district court erroneously exceeded the scope of our mandate when it dismissed Procter & Gamble’s (“P & G” ’s) claims against defendant Amway Corporation. We reject P & G’s challenges and conclude that the district court properly complied with our mandate.
I. BACKGROUND
The relevant facts and proceedings are fully set out in the district court’s order of June 17, 2001,
Procter & Gamble Co. v. Haugen,
P & G alleges that in 1994, defendants Mr. Haugen and the other distributors (the “Distributor Defendants”), disseminated a voicemail message that identified P & G products and disparaged them as having “Satanic” qualities, as being somehow connected with the Church of Satan. P & G further contends that Amway, the supplier of products to the Distributor Defendants, is liable under the Lanham Act and various state torts.
The district court granted the defendants’ motion for summary judgment as to P & G’s Lanham Act claim, finding that the Satanic rumor did not contain false representations about the “qualities” or “characteristics” of P & G’s products. See 15 U.S.C. § 1125(a)(1)(B). P & G then filed a Motion for Reconsideration, arguing that the rumor was actionable under the Lanham Act’s “false advertising” provision as a misrepresentation concerning P & G’s “commercial activities.” The district court subsequently denied P & G’s motion because P & G had previously failed to make such an argument. The district court also (1) dismissed P & G’s state law claims of tortious interference with business relationships and unfair competition for failure to state a claim under Fed.R.Civ.P. 12(b)(6) and (2) granted summary judgment to the defendants on P & G’s state law claims of slander per se and vicarious liability. 2
On appeal, we reversed and remanded on P & G’s Lanham Act and tortious interferenсe claims. We affirmed the district court’s ruling in all other respects.
As to the Lanham Act claim, we noted that we would consider matters not raised in the trial court only in the most unusual circumstances, such as when the public interest is implicated or when manifest injustice would result.
P & G I,
As to the tortious interference prong, we determined that “the text of the subject message itself at least raisefd] an inference that the [Distributor Defendants] were attempting to interfere” with P & G’s business. Id.; id. at 1279. We thus reversed and remanded the district court’s grant of the defendants’ motion to dismiss as to P & G’s tortious interference claim.
On remand, the district court determined that, to the extent our holding affirmed the district court’s earlier ruling, none of P & G’s claims against defendant Amway Corporation could survive. Specifically, the court (1) determined that P & G could not establish Amway was vicariously liable under the Lanham Act for the actions of the Distributor Defendants; (2) rejected P & G’s assertion of contributory infringement under the Lanham Act; (3) concluded that P & G could not establish the elements of a tortious interference claim; (4) determined that P & G’s operative complaint was its Second Amended Complaint, and (5) rejected P & G’s product disparagement claim as outlined in P & G’s Third Amended Complaint. See Dist. Ct. Order, 158 F.Supp.2d. at 1292-95.
In this appeal, P & G disputes the district court’s application of our mandate in P & G I and raises five challenges. First, P & G contends that P & G I’s ruling that Amway is not vicariously liable for actions of the Distributor Defendants aрplies only to the Utah vicarious liability claim, not to the federal Lanham Act claim. Second, P & G maintains that when we reinstated its § 43(a) Lanham Act claims in P & G I, we also resurrected P & G’s purported claim for contributory infringement. Thus, asserts P & G, the district court erred when it determined this claim was waived, or in the alternative, when the court found that the claim failed on the merits. Third, P & G disputes the district court’s dismissal of its tortious interference with contract claims based on res judicata and on the merits. Fourth, P & G contends that the P & G I mandate revived its claims for product disparagement embodied in its previously rejected Third Amended Complaint. Finally, P & G urges that the district court should have allowed discovery before dismissing Amway as a party. For the reasons set forth below, we reject each of P & G’s arguments and affirm the district court.
II. DISCUSSION
A. Standard of Review
When reviewing the district court’s application of our mandate, we consider whether the court abused the limited discretion that our mandate left to it.
See United States v. Hicks,
B. Application of the Mandate Rule
Not surprisingly, “[t]o decide whether the district court violated [our] mandate, it is necessary to examine the mandate and then look at what the district court did.”
Id.; see Barber v. International Broth. of Boilermakers,
The mandate consists of our instructions to the district court at the conclusion of the opinion, and the entire opinion that preceded those instructions.
See Barber,
Here, our opinion in
P & G I
instructed the district court to explicitly evaluate P & G’s commercial activities claim under § 43(a)(1)(B) of the Lanham Act and to also consider P & G’s tortious interference claim. Consequently, at this stage of this convoluted litigation we must consider whether the arguments that P & G now raises in this appeal were expressly or impliedly disposed of by P & G I.
See
Aplt’s Br. at 12;
Wyler Summit Partnership v. Turner Broadcasting Sys.,
C. P & G’s Challenges
1. Vicarious Liability
P & G argues that in P & G I, we limited our rejection of P & G’s claim that Amway was vicariously liable for the dissemination of the message from the Distributor Defendants to vicarious liability under Utah law. Thus, P & G asserts, the district court erred when it examined the balance of P & G’s claims and determined that, to the extent P & G’s federal claim under the Lanham Act rested upon vicarious liability, P & G’s claim against Amway could not survive. P & G urges us to apply a separate analysis to its federal Lanham Act claim.
In
P & G I,
a previous panel of this court held that the district court’s grant of summary judgment to Amway on the § 43(a) Lanham Act claim concerning “commercial activities” was “improvident becausе P & G show[ed] a genuine issue of material fact exists as to whether the subject message is actionable under the ‘commercial activities’ prong of § 43(a)(1)(B).”
On remand to the district court, P & G asserted that although the Tenth Circuit had rejected its vicarious liability claim under Utah law, P & G I had no bearing on P & G’s vicarious liability claim under the Lanham Act. P & G identifies no discrete distinctions between Utah’s vicarious liability stаndards and those of the Lan-ham Act — apart from its vague insistence that the Third Circuit’s holding in AT & T v. Winback and Conserve is evidence of a standard separate and apart from Utah common law. Although P & G has cited AT & T throughout this litigation, it was only after remand that P & G argued that there is a difference between the federal and Utah standards.
P & G’s inability to identify such a distinction likely emanates from Congress’s intention “for the Lanham Act’s infringement provisions to include those common-law principles of enterprise liability that would cover all defendants who used the mark, regardless of whether they made any direct sales to buyеrs.” John T. Cross, “Contributory Infringement and Related Theories of Secondary Liability For Trademark Infringement,” 80 Iowa L.Rev. 101, 119 n. 73 (1994) (noting that “courts have uniformly imposed vicarious liability in Lanham Act infringement cases” in a related context, and observing that the “same basic rationale” might apply in other infringement actions). A leading treatise characterizes AT & T as a case that “held that it is proper to import into § 43(a) common law concepts of agency, apparent authority, and vicarious liability.” McCarthy on Trademarks and Unfair Competition § 27:53 (4th ed.2002).
In
AT & T,
the Third Circuit noted its holding was “not expanding the category of affirmative conduct proscribed by [§ 43(a)],” but was merely expanding the class of persons upon “whose shoulders to place responsibility for conduct
indisputably proscribed
by [§ 43(a)].”
AT & T,
In P
&
G I, we held that the Distributor Defendants were “more analogous to independent contractors than to employees under Utah law.”
We hold that P & G’s contention that the district court flouted our mandate as to vicarious liаbility is completely unsupported. P & G has made an insufficient showing that vicarious liability under the Lanham Act is substantially different than under Utah law.
2. Contributory Infringement under the Lanham Act
P & G next challenges the district court’s refusal to entertain its § 43(a) Lanham Act contributory infringement claim, purportedly asserted in its complaint. Although the district court stated that P & G “has waived th[is] claim,” id. at 1293, the court also rejected the claim on the merits. Amway urges us to find such waiver. Alternatively, Amway argues that P & G has failed to establish the elements of the claim.
“The law of contributory infringement evolved from the recognition that parties other than the direct infringer often play roles in the infringement.” Cross, Contributory Infringement, supra, 80 Iowa L.Rev. at 104. Because the infringement test initially adopted under the Lanham Act is not well suited for targeting such secondary liability, an additional theory of liability was warranted. See id.
The Supreme Court outlined the contours of a contributory infringement claim in
Inwood Laboratories Inc. v. Ives Laboratories, Inc.,
[Liability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another. Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances. Thus, if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorally responsible for any harm done as a result of the deceit.
Id.
at 853-54,
The elements of a contributory liability claim are thus (1) supply of a product and (2) knowledge of direct infringement.
See Fonovisa, Inc. v. Cherry Auction, Inc.
P & G does not dispute that it never used the term “contributory infringement” in its previous pleadings. Nevеrtheless, P & G maintains that “its allegations were sufficient to state the elements of a Lan-ham Act contributory liability claim” under the notice pleading requirements of Fed. R.Civ.P. 8. Aplt’s Br. at 24-25. P & G points to language in its Second Amended Complaint 4 alleging that Amway (1) was informed about the Satanic rumors, (2) allowed the Distributor Defendants to make these statements, and (3) knew or should have known of Distributor Defendants’s conduct. See id.; Aplt’s App. vol. III, at 1041-2 (Second Amended Complaint).
We are reluctant to adopt P & G’s broad definition of notice pleading so as to include a claim for contributory infringement. Count Four of the Second Amended Complaint indicated the Distributor Defendants had the “[ijmplied aрproval of Amway” when they disseminated the statements. Id. at 1045. We do not believe these pleadings adequately alleged “a short and plain statement of the claim showing that the pleader is entitled to relief’ on a claim of contributory infringement. Fed.R.Civ.P. 8(a).
Nevertheless, we do acknowledge that when P & GI resuscitated P & G’s § 43(a) Lanham Act claim, that part of the mandate might plausibly be read to have restored a contributory infringement claim under § 43(a). In the interest of a comprehensive resolution of the § 43(a) claim, we, like the district court, shall also examine the contributory infringement сlaim on the merits.
On the merits, however, P & G fares no better than it did below. There is no dispute as to Amway’s supplying the product to the Distributor Defendants, thus satisfying the first element.
See Fonovisa,
In
Inwood,
the Supreme Court considered an action against a manufacturer of generic pharmaceuticals.
Similarly here, P & G cannot establish that Amway “continued to supply” any
3. Tortious Interference
P & G next contests the district сourt’s dismissal of its claim against Amway for tortious interference with business relations. In
P & G I,
we held that P & G presented sufficient factual allegations of injury resulting from the defendants’ conduct to state a claim for which relief could be granted.
See P & G I,
After remand to the district court, the defendants sought summary judgment on this claim. In reevaluating the claim under the summary judgment standard, the district court concluded that the Texas federal court’s dismissal of some of P
&
G’s tortious interference claims, which was based on the expiration of the relevant statute of limitations, was a judgment on the merits, and that “[i]t is ... clear that all of the elements of
res judicata
are satisfied.”
The district court also resolved the tortious interference claim against Amway on the merits. In order to establish a claim for tortious interference with business relations, the plaintiff must prove “(1) that the defendant intentionally interfered with the plaintiffs existing or potential economic relations; (2) for an improper purpose or by improper means, (3) causing injury to the plaintiff.”
Leigh Furniture & Carpet Co. v. Isom,
independent ground that, because this court was affirmed on the dismissal of its vicarious liability claim under Utah law, and because this court has now dismissed P & G’s vicarious liability claim under the Lanham Act (to the extent one was ever pleaded), Amway cannot be liable for tortious interference.
Dist. Ct. Order, 158 F.Supp.2d. at 1298. Given the complicated
res judicata
issues caused by P & G’s dual litigation strategy, we shall consider the issue on the merits.
See Smith v. Plati,
Like the district court, we note that P & G’s claim for tortious interference against Amway presupposed that Amway may be held vicariously hable for the actions of the Distributor Defendants. However, as we have held, the Distributor Defendants were not acting pursuant to either Amway’s actual, implied, or apparent authority. Accordingly, the district court properly dismissed P & G’s tortious interference claim against Amway.
This conclusion is not contrary to our previous determination. In P
& G I, we
noted that P & G’s claims against the Distributor Defendants “at least raised an inference that [the Distributоr Defendants] were attempting to interfere with P & G’s existing or potential economic relations.”
4. Operative Complaint
In connection with P & G I’s remand to the district court to reconsider the tortious interference claim, P & G argues that the mandate reinstated this claim as alleged not only under P & G’s Second Amended Complaint, but also in its Third Amended Complaint. Some procedural background is necessary to follow P & G’s argument. After Amway and the Distributor Defendants moved to dismiss P & G’s tortious interference count from the Second Amended Complaint for failure to state a claim, the district court granted the motion but also gave P & G fifteen days to amend only “that count of the second amended complaint.” Aplt’s App. at 1098-99.
Within the fifteen days, P & G served a Third Amended Complaint that did much more than simply amend “that count.” The Third Amended Complaint amended several of P & G’s claims. For example, P & G expanded the Lanham Act claim to include a claim for product disparagement. See Aplt’s App. at 189-212.
After P & G submitted the Third Amended Complaint, the district court again dismissed the tortious interference claim. The court also rejected P & G’s attempt to add an additional product disparagement claim. In so doing, the district court stated that “[P & G’s] suits and claims for ... violation of Section 43(a) of the Lanham Act, negligent supervision, and vicarious liability, may proceed as outlined in the second amended complaint.” Id. at 1110. The district court also notified P & G that “any further amendments to the second amended complaint must be sought through a motion to amend.” Id. at 1110-11. P & G sought neither to further amend its complaint, nor to appeal this ruling.
Curiously, P
&
G insists that when, in
P & G I,
we reversed the district court’s dismissal for failure to state a claim for tortious interference, we revived the tor-tious interference claim as pled in P & G’s far-reaching Third Amended Complaint, also revitalizing P & G’s attendant product disparagement claims. We disagree. By amending its Third Amended Complaint, P
&
G attempted to evade the clear instruction of the district court to amend only one particular count of its complaint (the tor-tious interference claim). P & G has not appealed the district court’s limited grant of leave to amend, and we cannot condone its attempt to avoid the implication of that
5. Failure to allow further discovery
Lastly, P & G contends that the district court erred when it failed to give P & G the requisite noticе that it should present evidence on the factual issue of whether Amway knew or had reason to know that the Defendant Distributors were making false statements about P & G’s commercial activities. P & G maintains that the district court erred in sua sponte converting the issue of Amway’s status as a party into a summary judgment motion. P & G purports to have been “blindsided by the district court’s unwarranted rush to judgment.” Aplt’s Br. at 38. This argument is unsubstantiated by the record.
After remand, and at P & G’s request, the district court set a briefing schedule and heard further argument on this issue. Both parties submitted supplemental briefs as to the legal issue of whеther any claim against Amway might survive the remand. P & G now insists that it should have been able to present further evidence at this time, evidence that was relevant to previously asserted and unsuccessfully litigated issues.
“While the practice of granting summary judgment sua sponte is not favored,” we hold that any alleged lack of notice was not prejudicial to P
&
G.
Scull v. New Mexico,
issues we have already decided.
Cf. Hand v. Matchett,
III. CONCLUSION
In dismissing all of P & G’s claims against Amway, the district court did not deviate from our mandate.
See Barber,
We remind P & G that the mandate rule is an “important corollary” of the law of the case doctrine in seeking to preserve the finality of judgments, to prevent “continued re-argument of issues already decided, ... and to preserve scarcе court resources.”
Huffman v. Saul Holdings Ltd. Partnership,
Accordingly, we conclude that the district court appropriately examined and applied our mandate when it determined that P & G’s claims against Amway did not survive. The district court carefully examined the pleadings and the elements of each claim, and in the interest of preserving judicial resources and avoiding duplica-tive arguments, the court properly rejected P & G’s contentions that: (1) a federal vicarious liability claim survived P & G I; (2) its belated contributory infringement claim against Amway could survive summary judgment; (3) its tortious interference claim raised a material disputed issue of fact as to Amway’s liability; (4) its operative complaint was its Third Amended Complaint; and (5) it was blindsided by the district court’s refusal to permit further discovery. We therefore AFFIRM the ruling of the district court.
Notes
. In July 1997, while this action was proceeding in the district court, P & G filed a similar case against Amway and some of the Distributor Defendants in the United States District Court for the Southern District of Texas.
See Procter & Gamble v. Amway Corp.,
After we reversed and remanded in P & G I, the Fifth Circuit affirmed in part, reversed in part, and remanded the Texas case to the Texаs district court, rejecting the district court’s application of res judicata or in the alternative, collateral estoppel. See id. at 546, 567.
. P & G's Lanham Act claim arises from § 43(a)(1)(B), which provides:
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 — in commercial advertisingor 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 beliеves that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1)(B) (emphasis added).
. *P & G also points to language in its Third Amended Complaint. See Aplt's Br. at 25 (citing Aplt's App. at 2021 (Third Amended Complaint)). Because we hold that the Third Amended Complaint is not the operative complaint, see infra, we need not address this rejected pleading. Even were we to examine the Third Amended Complaint, our conclusion that P & G has not sufficiently asserted a contributory infringement claim would not change.
. For the limited purpose of our examination of the merits of this claim against Amway, we assume that the actions of the Distributor Defendants in disseminating the Satanic message constitutes an infringing activity under the Lanham Act.
. As we have noted, the Fifth Circuit held that the Texas district court erred in applying
res judicata
principles to bar P & G’s claim.
See P & G v. Amway,