F I L E D
United States Court of Appeals
Tenth Circuit
PUBLISH
February 16, 2007
UNITED STATES COURT OF APPEALS Elisabeth A. Shumaker
Clerk of Court
TENTH CIRCUIT
PIMENTEL & SONS GUITAR
MAKERS, INC., a New Mexico
Corporation,
Plaintiff - Appellee,
v.
No. 05-2336
HECTOR PIMENTEL, individually,
DANETTE I.L. HINKLE PIMENTEL,
individually; DANETTE I.
LOVATO-PIMENTEL MUSIC
ENTERPRISES, INC., a New Mexico
corporation;
Defendants - Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW MEXICO
(District Court No. CIV-04-360 JB/RLP)
Submitted on the briefs:*
Kevin Lynn Wildenstein, SW Intellectual Property Services, LLC, Albuquerque, New
Mexico, and Jerry A. Walz and Andrew Knight, Walz & Associates, Cedar Crest, New
Mexico, for Defendants-Appellants.
*
After examining the briefs and the appellate record, this three-judge panel has
determined unanimously that oral argument would not be of material assistance in the
determination of this appeal. See Fed. R. App. P. 34(a)(2); 10th Cir. R. 34.1(G). The
case is therefore ordered submitted without oral argument.
Dennis F. Armijo, Esq., Dennis F. Armijo, P.C., Albuquerque, New Mexico, and Judd C.
West, Esq., Doughty & West, PA, Albuquerque, New Mexico, for Plaintiff-Appellee.
Before TACHA, Chief Circuit Judge, TYMKOVICH, and GORSUCH, Circuit Judges.
TACHA, Chief Circuit Judge.
The Defendants-Appellants seek to appeal an interlocutory order of the District
Court granting a request for an injunction. We dismiss for lack of jurisdiction.
I. BACKGROUND
Pimentel & Sons Guitar Makers, Inc. (“Guitar Makers”) is a family business that
produces and sells handcrafted instruments. Lorenzo Pimentel and his two sons, Roberto
and Ricardo Pimentel, operate the business. Guitar Makers has owned the federally
registered trademark “PIMENTEL” since 1963. Hector Pimentel, also the son of
Lorenzo Pimentel, is a professional guitarist and guitar instructor. In 1987, Hector began
to manufacture, sell, and repair guitars.
In 1988, Lorenzo Pimentel & Sons Limited Partnership (Guitar Makers’
predecessor) filed a complaint against Hector for use of the business name, trade name,
and trademark “PIMENTEL” (the “1988 litigation”). The parties to that litigation
entered into a settlement resulting in an injunctive order and judgment from the Federal
District Court for the District of New Mexico on September 26, 1989 (the “1989
injunction”). Among other things, the order required Hector to use a disclaimer in
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conjunction with his use of the name “Pimentel” in certain situations. The injunction is
still in place today.
In 1994, Danette Pimentel 1 began working with Hector to promote and sell his
goods and entertainment services. Danette registered the corporation “Danette I. Lovato-
Pimentel Music Enterprises, Inc.” with the State of New Mexico. Danette conducts
business on behalf of Hector, who contracts with her as a “musician and artist.” Danette
and her corporation used the name Pimentel in several ways to promote Hector.
In April 2004, Guitar Makers filed suit against Hector, Danette, and Danette I.
Lovato-Pimentel Music Enterprises, Inc. for alleged violations of the 1989 injunction, the
federal Lanham Act, and the New Mexico Unfair Practices Act. Guitar Makers filed a
motion for a preliminary injunction requesting that the District Court enjoin the alleged
violations. The District Court issued a preliminary injunction based solely on the 1989
injunction, finding that the injunction required Hector to use a disclaimer whenever he
used the word “Pimentel” in a business name and that Hector had used the name several
times in the preceding years without doing so. The District Court also enjoined Danette
and Danette I. Lovato-Pimentel Music Enterprises, Inc. from further violations of the
1989 injunction after finding that they promoted Hector’s goods and services under trade
names containing the word “Pimentel” without using the disclaimer. The Defendants
appealed. Subsequently, Hector and Guitar Makers entered into a settlement agreement,
1
Danette and Hector married in 1995 and divorced in 2003.
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and the District Court entered an order dismissing the suit against Hector with prejudice.
Neither Danette nor her company has settled with Guitar Makers, but the District Court
has dismissed all but the Lanham Act claim against them.
II. DISCUSSION
As a general rule, only final decisions of the district court are appealable. 28
U.S.C. § 1291. Section 1292(a)(1) sets forth an exception to the general rule for
interlocutory orders “granting, continuing, modifying, refusing or dissolving injunctions,
or refusing to dissolve or modify injunctions.” 28 U.S.C. § 1292(a)(1). We have noted
that “an interlocutory order expressly granting or denying injunctive relief fits squarely
within the plain language of section 1292(a)(1).” Tri-State Generation & Transmission
Assoc. v. Shoshone River Power, Inc., 874 F.2d 1346, 1351 (10th Cir. 1989); see also
MAI Basic Four, Inc. v. Basis, Inc., 962 F.2d 978, 981 (10th Cir. 1992) (“[B]y the plain
terms of § 1292(a)(1), interlocutory orders granting ‘injunctions’ are appealable.”). Here,
the District Court’s decision explicitly “granting” Guitar Makers’ motion for a
preliminary injunction would seem to give us jurisdiction over this interlocutory appeal
under the plain language of § 1292(a)(1). Such a superficial analysis of this Court’s
appellate jurisdiction, however, is insufficient. The purpose of § 1292(a)(1) counsels a
closer look at the District Court’s action and ultimately leads us to conclude that we do
not have jurisdiction over this appeal.
Section 1292(a) was intended to carve out only a limited exception to the final-
judgment rule of 28 U.S.C. § 1291 and the “long-established policy against piecemeal
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appeals.” Gardner v. Westinghouse Broad. Co., 437 U.S. 478, 480 (1978).
Consequently, the Supreme Court has cautioned that the statute should be narrowly
construed to “ensure that appeal as of right under § 1292(a)(1) will be available only in
[limited] circumstances.” Carson v. Am. Brands, Inc., 450 U.S. 79, 84 (1981); see also
Kershner v. Mazurkiewicz, 670 F.2d 440, 447 (3rd Cir. 1982) (“Because § 1292(a)(1) is
an exception to an otherwise fundamental rule of federal appellate jurisdiction, we must
construe the scope of the provision with great care and circumspection.”).
Due to this narrow construction mandate, courts of appeals insist on looking
beyond the captions and vocabulary attached to district court orders to determine the
actual, practical effect of an order before exercising appellate jurisdiction under
§ 1292(a)(1). See, e.g., Birmingham Fire Fighters Ass’n 117 v. Jefferson County, 280
F.3d 1289, 1292–93 (11th Cir. 2002); United States Fire Ins. Co. v. Asbestospray, Inc.,
182 F.3d 201, 207 (3d Cir. 1999); Mikel v. Gourley, 951 F.2d 166, 169 (8th Cir. 1991);
Motorola, Inc. v. Computer Displays Int’l, Inc., 739 F.2d 1149, 1155 (7th Cir. 1984);
Major v. Orthopedic Equip. Co., 561 F.2d 1112, 1115 (4th Cir. 1977). The cases cited
address district court orders purporting to “modify” a prior injunction or order. In
resolving their appellate jurisdiction, the circuit courts have looked behind the
terminology used by the parties and the district court to prevent litigants from
“circumvent[ing] by the filing of repetitive motions the time limitation for taking
appeals.” Buckhanon v. Percy, 708 F.2d 1209, 1212 (7th Cir. 1983); see also
Birmingham Fire Fighters Ass’n, 280 F.3d at 1293 (noting that Congress did not intend
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§ 1292(a)(1) to open the floodgates to litigation of injunctions). Although none of these
cases dealt with a district court expressly “granting” a new injunction, the courts’
reasoning is no less applicable to such a situation.
In short, in deciding whether a district court order “granting” an injunction is
appealable under § 1292(a)(1), we consider the substance rather than the form of the
motion and caption of the order. See Sierra Club v. Marsh, 907 F.2d 210, 213 (1st Cir.
1990) (the court looks “not to the form of the district court’s order but to its actual
effect”). In so holding, we join the Seventh Circuit’s well-reasoned approach in
Gautreaux v. Chicago Housing Authority, 178 F.3d 951 (7th Cir. 1999). In that case, a
party sought to compel compliance with an existing injunction, and in response, the
district court “enjoined” the respondent from taking certain action. Id. at 954. The
Seventh Circuit held that when a district court’s order, explicitly labeled an “injunction,”
does “nothing more than reassert the court’s prior orders,” it is not a “fresh injunction.”
Id. at 958. Relying on its own precedent, the court held that unless a district court order
addressing an existing injunction “substantially and obviously alters the parties’ pre-
existing legal relationship,” as set forth in the existing injunction, the order is an
unappealable interpretation or clarification of the prior order. Id.
Because the District Court’s order here was based solely on its interpretation of
the 1989 permanent injunction, the proper question is whether the court’s order actually
modified the existing injunction or instead, as in Gautreaux, merely clarified or
interpreted the prior injunction. Appellate courts do not have jurisdiction to review a
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district court order that merely interprets or clarifies, without modifying, an existing
injunction. See, e.g., Motorola, Inc., 739 F.2d at 1155; Major, 561 F.2d at 1115.
Danette argues that the District Court modified the 1989 injunction because (1) it
grossly misinterpreted the injunction and (2) it extended its application to Danette and her
corporation, even though they were not parties to the 1988 litigation and were not named
in the 1989 injunction. We reject both arguments.
Whether an order interprets or modifies an injunction is determined by its actual,
practical effect. See Carson, 450 U.S. at 83; Motorola, 739 F.2d at 1155. An
interpretation or clarification does not alter the status of the parties, “but merely restates
that relationship in new terms,” Motorola, 739 F.2d at 1155, while a modification either
“alters the legal relationship between the parties or substantially changes the terms and
force of the injunction,” Mikel, 951 F.2d at 168–69 (internal quotation marks, citation,
and alteration omitted). To change the legal relationship of the parties, the order must
“change the command of the earlier injunction, relax its prohibitions, or release any
respondent from its grip.” Birmingham Fire Fighters Ass’n, 280 F.3d at 1293 (quotation
omitted). Although gross or blatant misinterpretations of the earlier injunction can
substantially alter the legal relationship of the parties, id., the practical effect of the
District Court’s order in this case was nothing more than an interpretation of the existing
1989 injunction against Hector and an explanation of its application to Danette within the
parameters of Rule 65 of the Federal Rules of Civil Procedure.
The District Court rejected Danette’s argument that Hector only has to use the
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disclaimer when “Pimentel” is used in conjunction with his guitar-making business.
Instead, the court concluded that the 1989 injunction requires Hector to use the
disclaimer every time he uses the name “Pimentel” in a business name. This conclusion
is a straightforward interpretation of the injunction’s plain language. As such, it does not
create appellate jurisdiction by modifying the underlying injunction. Danette’s
contention that the District Court disregarded the parties’ original intent behind the 1989
injunction and therefore misinterpreted the plain language of the injunction is beyond the
scope of this interlocutory appeal. As the Eleventh Circuit has explained, “[i]n
attempting to discern interpretation from modification, . . . we should not analyze the
injunction and the order in detail. To plunge into the details would collapse the
jurisdictional inquiry into a decision on the merits, thwarting the purpose of §
1292(a)(1).” Birmingham Fire Fighters Ass’n, 280 F.3d at 1293. Reviewing the
language of the injunction in light of the context in which it was drafted might reveal
“subtle rather than blatant misinterpretations,” but that “is too searching for a preliminary
jurisdictional inquiry.” Gautreaux, 178 F.3d at 957–58. Consistent with the purposes of
§ 1292(a)(1), we ask only whether the District Court’s conclusion is a gross or blatant
misinterpretation of the original injunction. See id.; Gautreaux, 178 F.3d at 956–57. It is
not.
Nor is the court’s application of the 1989 injunction to Danette a modification of
that injunction. Under Fed. R. Civ. P. 65, every order granting an injunction is binding
upon “the parties to the action, their officers, agents, servants, employees, and attorneys,
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and upon those persons in active concert or participation with them who receive actual
notice of the order by personal service or otherwise.” Fed. R. Civ. P. 65(d); see also Int’l
Bhd. of Teamsters, Local 523 v. Keystone Freight Lines, Inc., 123 F.2d 326, 329 (10th
Cir. 1941) (persons who are “not technically agents or employees may be specifically
enjoined from knowingly aiding a defendant in performing a prohibited act if their
relation is that of associate or confederate.” (quotation omitted)). Danette serves as an
agent for Hector, who has contracted with her as a musician and artist. The District
Court order explains that Danette is prohibited “from including the word ‘Pimentel’ in
her name, when promoting or in conjunction with Hector Pimentel’s business interests,
without printing a disclaimer of association.” District Court Memorandum Opinion and
Order at 23 (emphasis added). The District Court explicitly exempted Danette from the
preliminary injunction when she is “doing work in her own name and not in promotion of
or on behalf of Hector Pimentel.” Id. Thus, the District Court did not change the legal
relationship between the parties or impose new obligations on Danette, but instead
clarified that under the existing 1989 injunction and Rule 65, she is prohibited from
aiding Hector in violating the 1989 injunction. In other words, Danette is bound only in
her capacity as Hector’s agent and only to the extent of the original 1989 injunction.
The District Court did not therefore issue an “injunction” at all, but simply
interpreted or clarified the existing injunction. As a result, this action is not appealable
under § 1292(a)(1).
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III. CONCLUSION
For the foregoing reasons, we DISMISS the appeal for lack of jurisdiction. We
also DENY Guitar Makers’ motion for costs and attorneys’ fees associated with this
appeal. Both motions filed by counsel Jerry Walz and Henry Narvaez, to withdraw as
counsel and to substitute as counsel, are granted.
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