United States Court of Appeals
For the First Circuit
No. 05-1307
CARROLL SHELBY ET AL.,
Plaintiffs, Appellants,
v.
SUPERFORMANCE INTERNATIONAL, INC.,
Defendant, Appellee.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Rya W. Zobel, U.S. District Judge]
Before
Selya, Lipez and Howard, Circuit Judges.
R. David Hosp, with whom R. Todd Cronan, Mark S. Puzella, and
Goodwin Procter LLP were on brief, for appellants.
Steven E. Snow, with whom Randall T. Weeks, Jr., Robert K.
Taylor, and Partridge Snow & Hahn LLP were on brief, for Shell
Valley Companies, Inc., International Automobile Enterprises, Inc.,
B & B Manufacturing, Inc., Backdraft Racing, Inc., and Unique
Motorcars, L.L.C., amici curiae.
January 18, 2006
SELYA, Circuit Judge. The appellants, Carroll Shelby,
Shelby American, Inc., and Carroll Shelby Licensing, Inc.
(collectively, Shelby), cloak this appeal in the raiment of trade-
dress law. That masquerade ignores the central question of
mootness (an issue that Shelby attempted to obscure in its
appellate filings). For the reasons that follow, we conclude that
Shelby's appeal must be dismissed and that vacation of the decision
below is unwarranted.
The predicate facts are straightforward. In the 1960s,
Shelby manufactured and sold the Shelby Cobra 427 S/C. After the
initial commercial production of the automobile had run its course,
a Cobra replica industry emerged. Defendant-appellee Superformance
International, Inc. is a player in that industry. It markets,
imports, and sells the Superformance 427 S/C — a rolling chassis
identical in design to the Shelby Cobra 427 S/C.1 Superformance
uses the same mark (427 S/C) and emblem badges (Cobra) on its
replicas as Shelby used on the originals.
In late 2000, Shelby commenced a civil action against
Superformance in the United States District Court for the District
of Massachusetts. Its complaint contained a host of trademark- and
trade-dress-based claims premised on theories of infringement,
1
A rolling chassis is essentially a car body without an engine
or a transmission.
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counterfeiting, dilution, unfair competition, and the like.2
Superformance answered the complaint and filed counterclaims.
After a great deal of skirmishing, not relevant here, the district
court granted Superformance's motion for partial summary judgment
on Shelby's trade-dress claims (comprising parts of five of the
seven counts contained in Shelby's amended complaint). Carroll
Shelby Licensing, Inc. v. Superformance Int'l, Inc., 251 F. Supp.
2d 983, 988 (D. Mass. 2002).
The court's decision focused on the issue of secondary
meaning — a showing necessary to Shelby's success on the trade-
dress-related claims. See id. at 986. Although Shelby submitted
survey evidence of secondary meaning, the district court deemed
that evidence "insufficient to support a reasonable jury finding in
Shelby's favor on the issue." Id. Since the court also determined
that the proffered circumstantial evidence was "equally unavailing"
to show secondary meaning, it entered summary judgment in favor of
Superformance. Id. at 987. That was not a final order, however,
as district court proceedings continued on the remaining trademark
claims and on Superformance's counterclaims.
On December 17, 2004, Shelby moved for final judgment by
consent, a permanent injunction, and vacation of the partial
2
Ford Motor Co., which had partnered with Shelby in the
original venture, later intervened as a plaintiff in this action,
alleging its own trademark claims against Superformance. Since
Ford is not a party to this appeal, the evolution of those claims
need not be traced here.
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summary judgment order. Shelby informed the district court that
the consent judgment was "an integral part of a global settlement
of all matters in dispute between the parties" and represented
that it had entered into a license agreement with Superformance for
the trade-dress rights associated with the Shelby Cobra 427 S/C.
Importuning the court to vacate its earlier decree, Shelby
explained that the consent judgment would "facilitate a new
business relationship between the parties, which now encompasses
the trade dress issues that [were] the subject of the [summary
judgment] order."
The district court entered the proffered consent judgment
and permanent injunction. At the same time, the court denied
Shelby's motion to vacate the summary judgment order. Shelby filed
a timely appeal "from the final judgment entered in this action."
Its notice of appeal singled out the summary judgment order, but
did not mention the denial of the motion to vacate.
In its appellate brief, Shelby followed the same path.
It frontally challenged the merits of the summary judgment order,
arguing that the district court erred by (i) not conducting an
analysis of indirect evidence of secondary meaning (which, if
properly evaluated, would have raised a genuine issue of material
fact as to secondary meaning) and (ii) rejecting the survey
evidence (which, if properly evaluated, also would have sufficed to
raise a genuine issue of material fact as to secondary meaning).
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Shelby made a passing reference to the consent judgment in its
jurisdictional statement but did not mention its settlement with
Superformance in either its statement of facts or in the argument
section of its brief. It made no allusion whatever to the denial
of its motion to vacate the partial summary judgment order.
Superformance elected not to file a brief. Fortunately,
however, several manufacturers and sellers of kit cars sought leave
to file an amicus brief. We allowed their motion on August 26,
2005, and subsequently granted them permission to argue orally.
The amicus brief brought the parties' settlement and the
denial of the motion to vacate to the forefront for the first time.
The amici suggested that we should dismiss the appeal as moot and
that, notwithstanding the dismissal, the summary judgment order
should remain intact. Despite the fact that the amicus brief was
filed well in advance of oral argument, Shelby eschewed the filing
of a reply brief and did not address the issue of mootness until
the panel began asking questions about it at oral argument. As we
explain below, that was too little and too late.
At the risk of belaboring the obvious, we begin our
discussion of the issues by noting that all of Shelby's arguments
concerning mootness and its effects seem to have been waived. A
notice of appeal must specify the order appealed from. See Fed. R.
App. P. 3(c)(1)(B) (requiring that a notice of appeal "designate
the judgment, order, or part thereof being appealed"). Here, even
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though the district court explicitly denied a motion to vacate the
partial summary judgment, Shelby did not frame its appeal as a
challenge, in whole or in part, to that order. A party's failure
to designate a particular order for appeal ordinarily defeats a
later attempt to dispute that order in the court of appeals. See,
e.g., Smith v. Barry, 502 U.S. 244, 248 (1992); Lehman v.
Revolution Portfolio, LLC, 166 F.3d 389, 395 (1st Cir. 1999).
Shelby offers no plausible reason why we should not apply that
principle here.3
Even had Shelby forthrightly addressed the point, we
nevertheless would dismiss this appeal as moot and decline to
direct the lower court to vacate its summary judgment order. We
explain briefly.
A federal court's jurisdiction is constitutionally
restricted to the resolution of actual cases or controversies. See
U.S. Const. art. III, § 2, cl. 1; see also Lewis v. Cont'l Bank
Corp., 494 U.S. 472, 477 (1990); Cruz v. Farquharson, 252 F.3d 530,
533 (1st Cir. 2001). "A case generally becomes moot when the
controversy is no longer 'live' or the parties 'lack a legal[ly]
3
Shelby's appellate brief contains nary a syllable about the
district court's denial of the motion to vacate, nor does it
confront the issue of mootness. It took direct questioning by this
court to elicit Shelby's views about mootness and the related issue
of vacatur. That will not do: on appeal, "a litigant has an
obligation to spell out its arguments squarely and distinctly, or
else forever hold its peace." United States v. Zannino, 895 F.2d
1, 17 (1st Cir. 1990) (citations and internal quotation marks
omitted).
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cognizable interest in the outcome.'" Ortiz-Gonzalez v. Fonovisa,
277 F.3d 59, 64 (1st Cir. 2002) (quoting Murphy v. Hunt, 455 U.S.
478, 481 (1982) (per curiam)). It is, therefore, clear beyond hope
of contradiction that a global settlement moots an action between
the settling parties arising out of the same subject matter. See,
e.g., Lake Coal Co. v. Roberts & Schaefer Co., 474 U.S. 120, 120
(1985) (per curiam); Horizon Bank & Trust Co. v. Massachusetts, 391
F.3d 48, 53 (1st Cir. 2004).
Shelby contests the applicability of this abecedarian
tenet on the ground that its settlement with Superformance
addressed only trademark issues and, thus, left extant a live
controversy as to trade dress. Shelby's representations to the
district court belie that contention.
In its motion for entry of judgment by consent, Shelby
described a "global settlement of all matters in dispute" and
acknowledged that it had granted a license to Superformance that
"include[d] the trade dress rights in the Shelby Cobra 427 S/C
automobile." Based on these unequivocal statements — the
settlement agreement itself is not part of the record — we have no
reason to doubt that there has been a resolution of all the
controverted issues between the parties. Not only are the parties
no longer adversaries in this case, but their interests are now
fully aligned: Superformance, as the licensee of Shelby's trade-
dress rights, has as much interest in protecting those rights as
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does Shelby itself. It comes as no surprise, therefore, that
Superformance elected not to defend the summary judgment order
before this court. By any measure, this appeal is moot. See Aqua
Marine Supply v. AIM Machining, Inc., 247 F.3d 1216, 1219-20 (Fed.
Cir. 2001) (concluding that in a patent infringement action an
appeal is moot when the appellee no longer has an interest in
defending the judgment of invalidity that it obtained below).
That is not the end of the matter. Shelby seeks vacation
of the partial summary judgment order and, even though we must
dismiss this appeal as moot, we retain jurisdiction to decide the
question of vacatur. U.S. Bancorp Mortg. Co. v. Bonner Mall
P'ship, 513 U.S. 18, 21 (1994). We turn to that question.
The "principal condition" to which courts look when
engaging the vacatur calculus is "whether the party seeking relief
from the judgment below caused the mootness by voluntary action."
Id. at 24. Vacatur is ordinarily appropriate when mootness results
from vagarious circumstance or the unilateral act of the prevailing
party. Id. at 25. When mootness stems from a settlement, however,
the presumption is different. In that situation, "the losing party
has . . . surrender[ed its] claim to the equitable remedy of
vacatur. The judgment is not unreviewable, but simply unreviewed
by [the losing party's] own choice." Id. The presumption,
therefore, is that the judgment previously obtained should remain
intact. See id.
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That presumption comes into play here. By entering a
global settlement with Superformance, Shelby (the summary judgment
loser) relinquished any claim to vacatur as of right.
Of course, the U.S. Bancorp presumptions are not
ironclad, and exceptional circumstances may justify different
results. See id. at 29. In this instance, Shelby maintains that
the presumption against vacatur is rebutted by the equities. In
elaboration, it first contends that allowing the summary judgment
to stand will have an institutionally detrimental impact because
the district court's holding is in conflict with trade-dress law.
That is resupinate reasoning. It invites us to reach the
merits of the order in question and adopt the settling party's
unopposed view of them. That disingenuous invitation seriously
distorts the U.S. Bancorp standard, and we decline to accept it.
See Aqua Marine, 247 F.3d at 1221.
Shelby also argues that the terms of the settlement
agreement preserve its right to appeal from the district court's
summary judgment order. Because Shelby has not produced the
settlement agreement, that argument asks us to take on faith a
matter dehors the record. In all events, even if Shelby's
depiction of the settlement is accurate, the reservation of a right
of appeal does not constitute an exceptional circumstance
sufficient to justify vacation of an underlying judgment. After
all, if the "fact that the settlement agreement provides for
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vacatur" does not constitute an exceptional circumstance, U.S.
Bancorp, 513 U.S. at 29, the fact that the agreement includes a
right of appeal cannot conceivably be entitled to greater
deference.
If more were needed — and we are confident that it is not
— we emphasize that vacatur is an equitable remedy. See, e.g., id.
at 25. In constructing that balance, Shelby's actions weigh
heavily against it. As recounted above, Shelby omitted any mention
of its unsuccessful motion to vacate the summary judgment order in
its appellate filings, effectively obscured the import of the
settlement agreement in those filings, and never acknowledged that
the issue of mootness hovered like a dark cloud over this appeal.
Courts ought not to reward a party's evasiveness by granting it
relief that it does not deserve. We will not do so here.
We need go no further.4 For the reasons elucidated
above, we dismiss this appeal as moot and leave intact the district
court's partial summary judgment order.
Dismissed.
4
We wish to thank the amici and their counsel for their
helpful participation in these proceedings.
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