Intellectual Property Law

Western District Ends Unfair Competition Case with Dismissal without Prejudice

By Michael Atkins

In CertainTeed Corp. v. Seattle Roof Brokers, shingle manufacturer CertainTeed brought suit against James Garcia, a “roof broker,” claiming he had engaged in unfair competition and violated the Washington Consumer Protection/Unfair Business Practices Act. As discussed here, on June 28, Western District Judge Richard Jones found for CertainTeed on summary judgment and imposed a permanent injunction against Mr. Garcia.

Following the order, CertainTeed moved to dismiss its remaining claims without prejudice, including its claim for damages. At the pretrial conference, the court suggested that CertainTeed dismiss its claims with prejudice, but CertainTeed declined.

On July 23, the court granted CertainTeed’s request, finding that Mr. Garcia would not suffer any legal prejudice — the sole basis on which a court can deny a motion for voluntary dismissal.

The court’s reasoning:

“The court finds no legal prejudice that would arise from CertainTeed’s voluntary dismissal of its remaining claims. Mr. Garcia would lose no legal right as a result of the dismissal, and there is no indication that the discovery from CertainTeed necessary to mount his defense would be more difficult to obtain later. Indeed, as discovery has closed in this action, Mr. Garcia has already had a complete opportunity to seek discovery in support of his defense.

“In an equitable sense, Mr. Garcia’s claim to prejudice is stronger. As Mr. Garcia made clear at the pretrial conference, this litigation has been a considerable strain on him for two years, and he would strongly prefer to put an end to it. CertainTeed, meanwhile, has shown little interest in moving beyond this dispute. Although the court cannot accurately forecast whether CertainTeed will attempt to resurrect the claims it now wishes to relinquish, CertainTeed refused at the pretrial conference to agree to a dismissal with prejudice. This suggests that it wishes to retain at least the threat of relitigation of these claims, a threat on which it might well make good.

“On the other hand, even a dismissal with prejudice would not immunize Mr. Garcia from the threat of future litigation. As the court has already discussed, the permanent injunction will remain in place. CertainTeed can pursue relief in this court if it feels that Mr. Garcia’s future conduct violates the injunction. Moreover, nothing prevents CertainTeed from filing another lawsuit if Mr. Garcia’s future conduct violates the law without violating the permanent injunction.”

The case cite is CertainTeed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. July 23, 2010) (Jones, J.).

Full post as published by Seattle Trademark Lawyer on July 25, 2010 (boomark / email).