United States District Court, D. Colorado
Brooke Jackson United States District Judge.
matter is before the Court on Plaintiff Mionix, LLC's
(“Mionix”) motion for summary judgment as to its
affirmative claims, ECF No. 63, and its motion for summary
judgment regarding the counterclaims asserted against it by
defendants ACS Technology and Walter Larry L'Hotta. ECF
No. 70. After reviewing the briefing and relevant law, the
Court DENIES both motions.
is a biotechnology firm that invents and sells chemical
technologies to a wide array of industries, including the
agribusiness and food safety industries. ECF No. 39 at 2.
Larry L'Hotta worked as a sales manager for Mionix from
approximately 2005-2007. Id. at 4. In January 2007
Mionix informed its employees that it was closing down
operations and would be laying off its workforce. ECF No. 55
at 14. In an effort to help Mionix stay in business or
alternatively sell its assets, Mr. L'Hotta stayed on with
Mionix for an additional six months. Id. By the time
Mr. L'Hotta's employment ended in 2007, Mionix owed
him $3, 500 in back pay that Mionix claimed that it lacked
funds to pay. Id. at 15. Mr. L'Hotta proposed
that in lieu of Mionix paying him the $3, 500, Mionix could
instead treat the $3, 500 as Mr. L'Hotta's payment to
obtain a licensing agreement whereby he would independently
continue his sales and marketing efforts of Mionix products.
Id. Under the terms of this two-year agreement, Mr.
L'Hotta had the right to market, manufacture, and sell
Mionix's various chemical products; was to pay Mionix a
percentage of his sales; and could only solicit clients with
whom Mionix did not have a prior business relationship.
Id.; ECF No. 79 at 1-2. To effectuate this
agreement, Mr. L'Hotta formed a company called ACS
Technology. Id. ACS Technology and Mionix formalized
the licensing agreement in October 2007. ECF No. 55 at 15.
the two years covered by this licensing agreement, Mionix
entered into another licensing agreement with a company
called Ivesco to sell Mionix's product FreshFlo 100.
Id. at 16. Around this same time, Mionix requested
that ACS Technology voluntarily cease its sale of FreshFlo
100. Id. ACS Technology rejected this request but
countered with a proposal that Mionix buy out ACS
Technology's license, which Mionix allegedly ignored.
Id. Then, ACS Technology was informed by its
FreshFlo 100 supplier, Hydrite, that Mionix had purchased all
remaining inventory of FreshFlo 100, leaving no FreshFlo 100
product for ACS Technology to sell to its customers.
Id. at 17. Later, Mionix switched suppliers of
FreshFlo 100 and provided the product to Ivesco but not to
ACS Technology. Id. When ACS Technology demanded
that Mionix allow it to purchase some of the FreshFlo 100
made by this new supplier, Mionix quoted ACS Technology a
price approximately twice market price, which effectively
prevented ACS Technology from obtaining any FreshFlo 100.
ACS Technology was unable to consistently obtain FreshFlo 100
to sell, Mr. L'Hotta approached Hydrite-the original
supplier of FreshFlo 100-about developing a new process to
make a product similar to FreshFlo 100. Id. The
products would be similar in that they would both be made
using acidified calcium sulfate (“ACS”) and would
both be sold for use in animal drinking water. Id.
Hydrite agreed, and in 2008 ACS Technology began selling its
new ACS product. Id. Initially ACS Technology sold
the new product under the FreshFlo 100 brand that it had
licensed from Mionix. Id. However, in April 2009,
months before the licensing agreement ended, ACS Technology
began selling the product under a new name, LpH 100.
Id. at 17-18.
the two-year licensing agreement between Mionix and ACS
Technology ended in October 2009, ACS Technology continued to
market and sell its LpH 100 product. Id. at 18.
Defendants admit that at certain times since October 2009
they have “inadvertently and erroneously”
referred to Mionix's products in their communications or
invoices. Id. Mionix asserts that this wrongful use
of Mionix intellectual property occurred on the ACS
Technology website and in its business documents where ACS
Technology featured Mionix research studies, patent
information, and an industry standards identification code
without attributing this information to Mionix. Mionix
asserts that this was done to give the appearance that ACS
Technology was in some way still associated with Mionix. ECF
No. 39 at 10-14.
Mionix's attorney sent Mr. L'Hotta a letter
threatening legal action for these alleged misuses of its
property. ECF No. 55 at 20-21. Mr. L'Hotta complied, and
he sent a letter back seeking confirmation that the issue
between the two companies had been resolved. Id. In
June 2016 Mionix again complained to Mr. L'Hotta through
its lawyer about his use of its property, as well as about
Mr. L'Hotta's use of the company name “ACS
Technology” which it believed infringed on its
trademark to the acronym “ACS.” Id. In
response, Mr. L'Hotta agreed to stop using the name ACS
Technology and dissolved that company. Id. He then
formed a new company named SAFE-pHix that is still in
August 2016 Mionix filed the instant lawsuit against Mr.
L'Hotta, ACS Technology, and SAFE-pHix and asserted eight
claims for relief. ECF No. 39. Defendants answered and
asserted three counterclaims against Mionix. ECF No. 55.
Defendants' counterclaims arise from Mionix's
behavior in 2010-2014, during which time Mionix apparently
contacted several of ACS Technology's customers,
potential customers, and its supplier Hydrite and told them
that ACS Technology's product was illegal or
unauthorized. Id. at 19-20. Mionix filed motions for
summary judgment with regard to both its claims against
defendants and defendants' counterclaims against it. ECF
Nos. 63, 70. Both motions have been fully briefed and are
ripe for this Court's review.
Court may grant summary judgment if “there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a). The moving party has the burden to show that there is
an absence of evidence to support the nonmoving party's
case. Celotex Corp. v. Catrett, 477 U.S. 317, 325
(1986). The nonmoving party must “designate specific
facts showing that there is a genuine issue for trial.”
Id. at 324. A dispute about a fact is material
“if under the substantive law it is essential to the
proper disposition of the claim.” Adler v. Wal-Mart
Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998) (citing
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986)). A material fact is genuine if “the evidence is
such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson, 477 U.S. at 248.
The Court will examine the factual record and make reasonable
inferences therefrom in the light most favorable to the party
opposing summary judgment. Concrete Works of Colo.,
Inc. v. City & Cnty. of Denver, 36 F.3d
1513, 1517 (10th Cir. 1994).
Mionix's Motion for Summary Judgment on Its
asserts eight claims against defendants: (1) Unfair
Competition under the Lanham Act; (2) False Designation of
Origin; (3) Federal Trademark Infringement; (4) Trade Dress
Infringement; (5) Unfair Competition under Colorado law; (6)
Trademark Infringement under Colorado law; (7) Violation of
the Colorado Consumer Protection Act; and (8) Civil
Conspiracy. ECF No. 39. Mionix seeks summary judgment
regarding defendants' liability on all eight of these
claims. ECF No. 63.
argue that summary judgment regarding their liability is
improper for two reasons. First, defendants argue that each
of Mionix's claims is barred by laches, the applicable
statute of limitations, and/or Mionix's
acquiescence. ECF No. 79 at 10. Second, Defendants argue
that Mionix cannot show that their conduct created a
“likelihood of confusion” as required to find
liability for six of the eight claims, and that Mionix has
not met its burden on the other two ...