Larin Corporation, a California Corporation v. Gwen Mueller, an individual

This disposition is not appropriate for publication and is not precedent*
except as provided by 9th Cir. R. 36-3.
NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
LARIN CORPORATION, a California
Corporation,
Plaintiff - Appellant,
v.
GWEN MUELLER, an individual,
Defendant - Appellee.
No. 08-55625
D.C. No. 2:08-cv-00135-ODW-OP
MEMORANDUM *
LARIN CORPORATION, a California
Corporation,
Plaintiff - Appellant,
v.
ALLTRADE INC., a California
corporation; ALLTRADE TOOLS LLC;
ANDRE LIVIAN,
Defendants - Appellees.
No. 08-55790
D.C. No. 5:06-cv-01394-ODW-OP
FILED
FEB 05 2010
MOLLY C. DWYER, CLERK
U .S. C OU R T OF APPE ALS

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LARIN CORPORATION,
Plaintiff-counter-defendant -
Appellant,
v.
ALLTRADE, INC., a California
corporation; ALLTRADE TOOLS LLC, a
California limited liability corporation;
ANDRE LIVIAN,
Defendants-counter-claimants
- Appellees.
No. 08-56191
D.C. No. 5:06-cv-01394-ODW-OP
Appeal from the United States District Court
for the Central District of California
Otis D. Wright, District Judge, Presiding
Argued and Submitted December 9, 2009
Pasadena, California
Before: PREGERSON, McKEOWN and PAEZ, Circuit Judges.
This trademark infringement suit between Larin Corp. (“Larin”) and
Alltrade Inc., Alltrade LLC and Andre Livian (“Alltrade”) presents three issues on
appeal. First, we consider whether the district court abused its discretion in
granting Alltrade’s motion for summary judgment on judicial estoppel grounds.
Second, we consider whether the district court erred in denying Larin’s motion to
add a claim of false advertising to the pretrial order. Finally, we consider whether

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the district court abused its discretion in dismissing as duplicative Larin’s separate
suit against former Alltrade employee Gwen Mueller.
We review de novo the district court’s grant of summary judgment, San
Pedro Hotel Co. v. City of Los Angeles, 159 F.3d 470, 477 (9th Cir. 1998), but
review the application of judicial estoppel to the facts of the case for abuse of
discretion. Williams v. Boeing Co., 517 F.3d 1120, 1134 (9th Cir. 2008). We
review the district court’s dismissal of the suit against Gwen Mueller for abuse of
discretion. Adams v. Cal. Dep’t of Health Servs., 487 F.3d 684, 688 (9th Cir.
2007).
I. TRADE DRESS INFRINGEMENT
Both parties sell hydraulic-lift stools styled like motorcycle seats. Larin
claims that the photographs and coloring on the packaging in which Alltrade sells
its stools is confusingly similar to the photographs and coloring on the packaging
in which Larin sells its stools. Larin seeks relief under § 43(a) of the Lanham Act.
15 U.S.C. § 1125(a). Alltrade claims that Larin should be judicially estopped from
pursuing a claim for trade dress infringement because during discovery Larin
shifted from a trade dress infringement claim to a false advertising claim (which
may also be remedied under § 43(a)) and Alltrade was thus prejudiced in preparing
its defense.

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We do not opine as to whether the district court correctly concluded that
Larin’s attorney attempted to mislead Alltrade’s counsel during discovery—and
the district court’s frustration with said counsel’s lack of clarity is certainly
understandable—but assuming there is error to be remedied here, judicial estoppel
is the wrong tool for the job. We uphold a district court’s application of judicial
estoppel when: “1) the party’s current position is ‘clearly inconsistent’ with its
earlier position, 2) the party was successful in persuading a court to accept its
earlier position, and 3) the party would ‘derive an unfair advantage or impose an
unfair detriment on the opposing party if not estopped.’” Williams, 517 F.3d at
1134 (quoting New Hampshire v. Maine, 532 U.S. 742, 750-51 (2001)). None of
those elements are met in this case.
Larin’s scattered references to false advertising during discovery do not
support the contention that Larin adopted disparate positions that were clearly
inconsistent with one another. Throughout the record, the essential nature of the
dispute is readily apparent. The record is replete with claims about and discovery
related to the similarities between the Larin and Alltrade boxes. Claims of false
advertising and trade dress infringement are not mutually exclusive, and plaintiffs
can and do advance both theories in a complaint. See, e.g., Cooper Indus. v.
Leatherman Tool Group, 532 U.S. 424, 428 (2001). Alltrade acknowledged during

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the pretrial conference that the elements of false advertising and trade dress
infringement overlap to some degree. Larin’s self-definition of “trade dress”
during discovery muddied the waters, but in the end did not change the essential
nature of its claims.
We have also “restricted the application of judicial estoppel to cases where
the court relied on, or ‘accepted,’ the party’s previous inconsistent position.”
Hamilton v. State Farm Fire & Cas. Co., 270 F.3d 778, 782-83 (9th Cir. 2001); see
also United National Insurance Co. v. Spectrum Worldwide, Inc., 555 F.3d 772,
779 (9th Cir. 2009). Nothing in the record demonstrates that Larin succeeded in
persuading the district or magistrate judges to accept the position that Larin had
abandoned its trade dress infringement claim.
Finally, there is insufficient evidence to support the claim that Alltrade was
prejudiced by Larin’s behavior. Despite the district court’s determination that
Larin’s counsel was playing “bait-and-switch” with its theories of liability,
Alltrade was able to obtain evidence relevant to both false advertising and trade
dress infringement defenses. Indeed, while Alltrade asserted on appeal that it had
not conducted sufficient discovery on trade dress infringement elements like
secondary meaning, its final pretrial disclosure tells a different story. There,
Alltrade asserted, among other things, that its expert was ready to testify regarding

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secondary meaning in the Larin and Alltrade packaging.
Judicial estoppel is not applicable in this case because none of the elements
are met. We therefore reverse the grant of summary judgment with regard to
Larin’s trade dress infringement claim against Alltrade and remand.
II. FALSE ADVERTISING CLAIM
The district court denied Larin’s motion for reconsideration of its finding
that Larin abandoned any claim for false advertising, because the false advertising
claim was not part of the pretrial order. We affirm that ruling. In any event, this
issue is moot because Larin’s argument on appeal was predicated on affirmance of
dismissal of the trade dress infringement claim, which we reverse.
III. MUELLER COMPLAINT
We affirm the district court’s dismissal of Larin’s claims against Gwen
Mueller. The claims against Mueller were identical to those pled against Alltrade,
and Alltrade identified Mueller as an employee involved with the creation of the
Alltrade trade dress prior to the scheduling order’s deadline to add new parties.
The district court did not abuse its discretion in dismissing the duplicative
complaint against Mueller.

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IV. WAIVER OF CLAIMS
Larin asserted in the Statement of Issues in its opening brief that the district
court erred in granting attorneys’ fees to Alltrade pursuant to 28 U.S.C. § 1927.
Larin did not, however, offer any argument or authority on this issue and the
argument is therefore waived. Kohler v. Inter-tel Technologies, 244 F.3d 1167,
1182 (9th Cir. 2001). We affirm the grant of attorneys’ fees.
Larin also failed to develop its passing assertion that the district court
demonstrated prejudice against Larin’s counsel, and that we should therefore direct
the case to a different district judge. This argument is waived, and we are
confident that the assigned district judge can give a fair hearing to Larin’s trade
dress infringement claim.
We AFFIRM the dismissal of the Mueller complaint, the dismissal of the
false advertising claim, and the grant of attorneys’ fees pursuant to 28 U.S.C.
§ 1927, and REVERSE the grant of Alltrade’s motion for summary judgment on
the trade dress infringement claim. Each side shall bear its own costs on appeal.

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