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E.&J. Gallo Winery v. Proximo Spirits, Inc.

E.&J. Gallo Winery v. Proximo Spirits, Inc.

United States Court of Appeals for the Ninth Circuit

May 16, 2014, Argued and Submitted, San Francisco, California; July 14, 2014, Filed

No. 12-15905, No. 12-17117

Opinion

 [*633]  MEMORANDUM 2

E & J Gallo Winery, a large winemaker and distributer, recently entered the spirits market and contracted with non-party Tequila Supremo, a Mexican tequila producer, for the production and bottling of "Camarena Tequila," which Gallo planned to sell  [**4] in the United States. Agavera Camichines, S.A. de C.V., holds trademark and trade dress rights for the "1800 Tequila" brand in the United States. Non-party Ex Hacienda Los Caminchines, S.A. de C.V., holds those rights in Mexico. Proximo Spirits, Inc. imports and distributes 1800 Tequila in the United States.

In February of 2010, after production and shipment of roughly one million bottles of Camarena Tequila, and on the eve of that product's launch in American markets, Agavera sent Tequila Supremo a cease-and-desist letter claiming that the Camarena bottle was "similar to the point of causing confusion" with the 1800 bottle and threatening "pertinent legal action." The following month Gallo initiated suit against Agavera and Proximo (collectively, "Appellants") alleging they made a bad faith attempt to disrupt the launch of Camarena Tequila by sending Tequila Supremo  [*634]  a cease-and-desist letter "through one of their Mexican affiliates" and requested declaratory judgment under 28 U.S.C. § 2201 that Camarena Tequila's trade dress does not infringe on that of 1800 Tequila. Appellants promptly moved to dismiss for lack of subject matter jurisdiction and, after that motion was denied, asserted  [**5] counterclaims for trade dress infringement and unfair competition under the Lanham Act. The district court granted Gallo's motion for summary judgment against Appellants' counterclaims and entered judgment thereon. Neither Appellant moved for summary judgment against Gallo's original declaratory relief claim and, several months after prevailing against the Appellant's counterclaims, Gallo moved to "Certify Final Judgment on Counteraction and to Dismiss Remaining Claims." After Appellants filed a statement of non-opposition in response to that motion, the court dismissed the remaining claims and certified final judgment.

In case number 12-15905, Appellants challenge (i) denial of their motion to dismiss for lack of subject matter jurisdiction; (ii) grant of summary judgment against them on the merits of their Lanham Act claims; and (iii) entry of final judgment on their counterclaims, which they claim was done in absence of jurisdiction. In case number 12-17117, Gallo appeals denial of its motion for attorneys fees under 15 U.S.C. § 1117(a). We affirm in all respects.

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583 Fed. Appx. 632 *; 2014 U.S. App. LEXIS 13339 **; 2014 WL 3398241

E.&J. GALLO WINERY, a California corporation, Plaintiff-counter-defendant - Appellee, v. PROXIMO SPIRITS, INC., a Delaware corporation and AGAVERA CAMICHINES, S.A. DE C.V., a Mexican corporation, Defendants-counter-plaintiffs - Appellants,ECCO DOMANI USA, INC., Counter-defendant - Appellee, v. TEQUILA SUPREMO, S.A. DE C.V., Cross-defendant - Appellee.E.&J. GALLO WINERY, a California corporation, Plaintiff-counter-defendant - Appellant, v. PROXIMO SPIRITS, INC., a Delaware corporation and AGAVERA CAMICHINES, S.A. DE C.V., a Mexican corporation, Defendants-counter-plaintiffs - Appellees,ECCO DOMANI USA, INC., Counter-defendant - Appellant, v. TEQUILA SUPREMO, S.A. DE C.V., Cross-defendant - Appellant.

Notice: PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of California. D.C. No. 1:10-cv-00411-LJO-JLT, D.C. No. 1:10-cv-00411-LJO-JLT. Lawrence J. O'Neill, District Judge, Presiding.

Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 119890 (E.D. Cal., Aug. 23, 2012)Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 10669 (E.D. Cal., Jan. 27, 2012)E & J Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 47943 (E.D. Cal., Apr. 3, 2012)Gallo v. Proximo Spirits, Inc., 2012 U.S. Dist. LEXIS 10629 (E.D. Cal., Jan. 27, 2012)

CORE TERMS

Tequila, trade dress, bottle, counterclaims, infringement, declaratory, district court, cases

Civil Procedure, Declaratory Judgments, Federal Declaratory Judgments, General Overview, Appeals, Standards of Review, Clearly Erroneous Review, Jurisdiction, Subject Matter Jurisdiction, Business & Corporate Compliance, Trademark Counterfeiting Act, Civil Actions, Elements, Trademark Law, Remedies