Mueller v. US Pipe & Foundry Co. CV-03-170-JD 01/10/05 P
UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEW HAMPSHIRE
Mueller Co.
and Mueller International, Inc.
v. Civil No. 03-170-JD
Opinion No. 2005 DNH 005
United States Pipe & Foundry Co.
O R D E R
The plaintiffs, Mueller Co. and Mueller International, Inc.
(collectively, "Mueller") object to the magistrate's order of
August 6, 2004. That order reconsidered the magistrate's earlier
denial of Mueller's motion to file a supplemental complaint but
nevertheless disallowed the filing on the basis of its futility.
The defendant. United States Pipe & Foundry Co. ("U.S. Pipe") has
filed a response to Mueller's objections.
Standard of Review
"Upon motion of a party the court may, on reasonable notice
and upon such terms as are just, permit the party to serve a
supplemental pleading setting forth transactions or occurrences
or events which have happened since the date of the pleading
sought to be supplemented." Fed. R. Civ. P. 15(d). Courts,
including this one, generally assess motions to supplement
pleadings under the same standard applicable to motions to amend.
Sheppard v. River Valley Fitness One, L.P., 2 0 02 DNH 20, 2 0 02 WL
197976, at *5 (D.N.H. Jan. 24, 2002); see also, e.g., Glatt v.
Chicago Park Dist., 87 F.3d 190, 194 (7th Cir. 1996); Quaratino
v . Tiffany C o .,
71 F.3d 58, 66 (2d Cir. 1995); Hassoun v.
Cimmino,
126 F. Supp. 2d 353, 360-61 (D.N.J. 2000); 3 James Wm.
Moore et a l ., Moore's Federal Practice § 15.30, at 15-109 (3d ed.
2004). The denial of a proposed supplement on the basis of
futility is therefore proper. See, e.g., Glatt,
87 F.3d at 194;
Sheppard,
2002 WL 197976, at *6. A magistrate's denial of a
motion to amend on futility grounds is subject to de novo review.
See HCC, Inc. v. R H & M Mach. Co.,
39 F. Supp. 2d 317, 321-22
(S.D.N.Y. 1999); 14 Moore, supra, § 72.02[8], at 72-16.
Discussion
Mueller's proposed supplemental complaint asserts claims of
trademark infringement and unfair competition based on U.S.
Pipe's alleged use of Mueller's mark to promote the fire hydrant
model which was the subject of Mueller's second amended complaint
in this action. Upon the parties' stipulation, the court entered
judgment for Mueller on count one of its second amended
complaint, dismissed the remaining counts without prejudice, and
dismissed U.S. Pipe's counterclaims with prejudice on October 14,
2004. The stipulation provided, however, that Mueller could
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continue to pursue its objection to the magistrate's denial of
its proposed supplemental complaint.
In its proposed supplemental complaint, Mueller alleges that
U.S. Pipe is marketing the hydrant "and its parts as
interchangeable with, for use with, and/or identical to Mueller
Hydrants and parts." Suppl. Compl. 5 11. Mueller asserts that
such claims are false because "while the U.S. Pipe parts may
appear to fit with the Mueller Hydrants, the failure to achieve
specifications and tolerances makes the U.S. Pipe parts
susceptible to failures." I d . 5 13. Mueller also complains that
U.S. Pipe's marketing strategy "enabl[es] and encourag[es]"
consumers to create "hybrid devices," i.e., hydrants bearing U.S.
Pipe's name on one part but Mueller's mark on another. I d . 5 12.
The result, according to Mueller, is confusion as to the source
of the hydrant and therefore actionable trademark infringement.
As the First Circuit has remarked, such a claim is
"difficult to take seriously." Elecs. Corp. of Am. v. Honeywell,
Inc., 428 F.2d 191, 194 (1st Cir. 1970). The defendant in
Honeywell manufactured a programmer for use as a replacement in
the plaintiff's safety control systems for power plants and
advertised the product through use of the plaintiff's trade name.
I d . at 193. The defendant's programmer, however, was
"conspicuously and permanently marked with its name, a name too
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well known to be thought a subsidiary trade name of the
plaintiff's." I d . at 193. Accordingly, the First Circuit
determined that the defendant's product suffered from "no deceit
as to its parentage." Id. The court also reasoned that,
following installation in a customer's facility, the programmer
is not likely to be resold to some further customer.
There are, conceivably, a few instances in which an
owner could subseguently be mistaken, or might blame
plaintiff if defendant's programmer failed to operate,
but some slight danger of confusion accompanies any
competition in the sale of replacement parts.
I d . at 193-94.
In the court's view, Honeywell is sguarely on point here.
Although U.S. Pipe allegedly markets its hydrants as
interchangeable with Mueller's, the U.S. Pipe products, by
Mueller's own account, bear U.S. Pipe's trademark rather than
that of Mueller. This important fact distinguishes this case
from the cases on which Mueller relies. C f . Rolex Watch USA,
Inc. v. Meece, 158 F.3d 816, 826-27 (5th Cir. 1998) (remanding
for consideration of whether defendant's sale of watches bearing
plaintiff's mark amounted to counterfeiting); Westinghouse Elec.
Corp. v. Gen. Circuit Breaker & Elec. Supply, Inc.,
106 F.3d 894,
900 (9th Cir. 1997) (noting that defendants' sale of
reconditioned circuit breakers bearing plaintiff's mark
constituted infringement); Taylor Made Golf Co. v. MJT Consulting
4
Group, LLC, 265 F. Supp. 2d 732, 741-42 (N.D. Tex. 2003) (ruling
that defendants' sale of golf clubs bearing plaintiff's mark
amounted to counterfeiting).
Similarly, apart from U.S. Pipe's marketing of its hydrants
as interchangeable, Mueller does not allege any conduct by its
competitor that would confuse consumers into believing that U.S.
Pipe products actually came from Mueller. C f . New Kayak Pool
Corp. v. R & P Pools, Inc., 246 F.3d 183, 184-86 (2d Cir. 2001)
(vacating denial of injunction against defendant's statements in
catalog "implying that [it] sold [plaintiff's] parts and
supplies"); Hypertherm, Inc. v. Precision Prods., Inc.,
832 F.2d
697, 699-700 (1st Cir. 1987) (upholding injunction against sale
of replacement parts which looked the same to the naked eye and
closely emulated plaintiff's packaging and parts numbering
system) .1 "It is not unfair to use the name of a well-known
article and label a repair part if it be used in a fair way and
simply to indicate that the part is made to fit the article."
Elec. Auto-Lite Co. v. P. & D. Mfg. Co.,
78 F.2d 700, 703 (2d
Cir. 1935); see also Hypertherm,
832 F.2d at 700; Bijur
1Although the proposed supplemental complaint alleges that
U.S. Pipe "has used a part number system for ordering parts of
[its hydrant] that is virtually identical to the part number
system used for the Mueller . . . hydrants," Suppl. Compl. 5 13,
Mueller did not rely on this allegation in its motion for
reconsideration and does not mention it in its objection.
5
Lubricating Corp. v. Devco Corp., 332 F. Supp. 2d 1 22 , 730
(D.N.J. 2004); Porter v. Farmers Supply Serv.,
617 F. Supp. 1175,
1187-88 (D. Del. 1985), aff'd,
790 F.2d 882 (Fed. Cir. 1986);
4 Rudolf Callman, Callman on Unfair Competition, Trademarks &
Monopolies § 22:27 (4th ed. 1983); 4 J. Thomas McCarthy, McCarthy
on Trademarks & Unfair Competition § 25:51 (4th ed. 2003). The
insufficiency of Mueller's proposed supplemental complaint
proceeds from its failure to accuse U.S. Pipe of anything more.
Furthermore, as in Honeywell, Mueller does not allege that
the U.S. Pipe name is sufficiently obscure so that consumers will
be led to believe its products are associated with Mueller in
some way. Although Mueller suggests that a malfunction in one of
U.S. Pipe's parts installed in a Mueller hydrant would be blamed
on Mueller, Honeywell makes clear that any such "slight danger of
confusion" is an acceptable consequence of legitimate
competition. See also Hypertherm, 832 F.2d at 700 ("Even if the
parts are substandard, the rule holds--so long as their origin is
not obscured.")
Mueller attempts to distinguish Honeywell on the ground that
it "involved a discrete, commonly replaced part within the
plaintiff's machine; in the case at bar, multiple sources are
prominently displayed on the exterior of the same hybrid
hydrant." O b j . at 12 n.7. Yet neither Honeywell nor any of its
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progeny suggests that the legality of using a competitor's mark
to sell replacement parts for its goods depends on whether the
parts end up on the inside or the outside of the mark holder's
product, and Mueller provides no other support for its novel
"hybridity" theory. Indeed, in Honeywell, the result of the
defendant's actions would have been the installation of its
programmer, "conspicuously and permanently marked with its name,"
among the other components of the plaintiff's control system.
428 F.2d at 193. There is thus no meaningful distinction between
the facts alleged in this case and those of Honeywell, other than
those alleged in support of Mueller's misrepresentation theory.
In support of that theory, Mueller relies on Honeywell for
the proposition that U.S. Pipe's alleged marketing of its hydrant
and parts as interchangeable with Mueller's, despite the fact
that U.S. Pipe's components do not meet the same specifications
as Mueller's, states a claim for unfair competition. Honeywell
noted the First Circuit's obedience to "the 'traditional'
doctrine that competitors' actions for false advertising are
limited to instances of trademark infringement, passing off, and
product disparagement," adopting the reasoning that:
"In an open market, it is generally impossible to prove
that a customer, whom the defendant has secured by
falsely describing his goods, would have bought of the
plaintiff, if the defendant had been truthful. Without
that, the plaintiff . . . cannot show any ascertainable
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loss . . . . The law does not allow him to sue as a
vicarious avenger of the defendant's customers."
428 F.2d at 194 (quoting Ely-Norris Safe Co. v. Hosier Safe Co.,
7 F.2d 603, 604 (2d Cir. 1925) (L. Hand, J.), rev'd on other
grounds,
273 U.S. 12 (192 7)); see also B. H. Bunn Co. v. AAA
Replacement Parts Co.,
451 F.2d 1254, 1266 (5th Cir. 1971) ("If
one says that his parts 'will fit' another machine and they do
not, then remedy would lie only with the purchaser of the part,
absent unusual circumstances.")
In the "very special circumstances" of Honeywell, however,
the First Circuit found this reasoning inapplicable, because the
litigants comprised a "two-firm market" for the product at issue,
giving consumers "nowhere to turn except to the plaintiff or the
defendant." 428 F.2d at 194 & n.3. As a result, any sale the
defendant won through its misrepresentations necessarily amounted
to a sale lost by the plaintiff. Here, in contrast, Mueller has
not alleged that it and U.S. Pipe are the only two manufacturers
of municipal fire hydrants.2 Thus, Mueller cannot recover for
U.S. Pipe's alleged misrepresentations that its hydrants are
2Mueller argues in its objection that "[u]nlike a crowded
market . . . there can be no legitimate dispute that U.S. Pipe's
misrepresentations will take sales away from Mueller." Obj. at
12. Honeywell, however, did not recognize a rule applicable
outside of a crowded market. It recognized an exception
inapplicable outside of a two-firm market. See B . H . Bunn C o .,
451 F .2d at 1266-67.
interchangeable under the theory recognized in Honeywell.3 See
B. H. Bunn, 451 F.2d at 1266-67 (finding the absence of two-firm
market fatal to plaintiff's Honeywell theory based on defendant's
false statement that its parts would fit plaintiff's machines).
Mueller's proposed supplemental complaint fails to state a
claim against U.S. Pipe on which relief can be granted.4 The
magistrate properly denied the supplemental complaint as futile.
3Count X of the amended complaint asserts a claim for
violation of 15 U.S.C. § 1125(a), the Lanham Act's prohibition on
false advertising, based on U.S. Pipe's alleged misrepresenta
tions of the compatibility of its products with those of Mueller.
Neither Mueller's objection nor its motion for reconsideration,
however, mentioned this claim (aside from a parenthetical
reference to the holding of a district court case which
apparently discussed such a theory), arguing instead that the
alleged misrepresentations give rise to a common-law claim under
Honeywell. This omission is particularly glaring given the split
of authority on whether
15 U.S.C. § 1125(a) permits relief in the
absence of actual harm to confer standing on the plaintiff, which
Mueller has not sufficiently alleged. See generally 4 McCarthy,
supra, § 27:31. The court therefore will not consider any claim
Mueller might have intended to assert pursuant to
15 U.S.C. §
1125(a). See Fed. R. Civ. P. 72(b) (reguiring "specific"
objections to magistrate's order); see also Higgins v. New
Balance Athletic Shoe, Inc.,
194 F.3d 252, 260 (1st Cir. 1999) .
Accordingly, the court need not consider Mueller's charge
that the magistrate erred by relying on materials outside of the
proposed supplemental complaint itself in deeming it futile.
Conclusion
For the foregoing reasons, the court approves the
magistrate's order denying Mueller's motion for reconsideration,
over Mueller's objection (document no. 82). Because judgment or
dismissal has already been entered on Mueller's second amended
complaint in its entirety through the court's approval of the
parties' stipulation, the clerk shall close the case.
SO ORDERED.
Joseph A. DiClerico, Jr.
United States District Judge
January 10, 2005
cc: William M. Atkinson, Esguire
Brian L. Michaelis, Esguire
Brian E. Moran, Esguire
David B. Wilson, Esguire
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