United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND OPINION
Rosenthal Chief United States District Judge
Precast, Ltd. has sued Easi-Set Industries, Inc., alleging
that Easi-Set's registered trademark-a tapered top to
concrete traffic barriers-is invalid, must be cancelled, and
that Tricon has not infringed it. Tricon asserts that
Easi-Set has violated the Texas Antitrust Act and the Sherman
Act by “inducing and encouraging” the Texas
Department of Transportation to require the taper in design
specifications for concrete traffic barriers purchased by
Texas government entities. Easi-Set has moved to transfer to
the Eastern District of Virginia under a forum-selection
clause and to dismiss the antitrust claims under the
Noerr-Pennington doctrine. Tricon responded, and
Easi-Set replied. (Docket Entry Nos. 8, 11-13).
careful review of the pleadings, motion, response, and reply,
the properly considered submissions, and the applicable law,
the court denies the motion to transfer but grants the motion
to partially dismiss the amended complaint. The antitrust
claims against Easi-Set are dismissed, with prejudice and
without leave to amend, because amendment would be futile.
The reasons are explained in detail below.
is a Texas company based in Houston that manufactures and
sells “precast concrete and related products, ”
including traffic barriers, for the road-construction
industry. (Docket Entry No. 10 at 1, 3). Tricon sells traffic
barriers “throughout the State of Texas for
installation on roadways to divide traffic lanes.”
(Id. at 3). Easi-Set is a Virginia company
headquartered in Midland, Virginia; it licenses precast
concrete products. (Id. at 1).
March 2011, Easi-Set obtained Trademark Registration No. 3,
927, 357 from the United States Patent and Trademark Office
for “Concrete Highway Crash Barriers and Concrete
Construction Work Zone Barriers.” (Docket Entry No.
10-1 at 2 (emphasis omitted)). The ‘357 Trademark
the design of two facing angular end tapers of interconnected
concrete barriers, which are not part of the mark, such that
when the two concrete barriers are connected, the angular end
tapers comprising the mark form a “V” shape at
the point of connection. The broken lines on the drawing show
position of the mark on the goods.
(Id. (emphasis omitted)). The ‘357 Trademark
included the following picture:
Texas Department of Transportation, or “TxDOT, ”
requires traffic barriers to meet certain design
specifications. (Id. at 3-4). A “significant
percentage of TxDOT, county, and other municipality barriers
must include a ‘V-shape.'” (Id. at
4). Because of this, Tricon has put “‘V-
shape' tapered ends” on traffic barriers
manufactured for “TxDOT and other Texas county and
municipality projects, ” leading Easi-Set to accuse
Tricon of infringing the ‘357 Trademark.
(Id.). Tricon agrees that the
“‘V-shape' as described in the ‘357
[Trademark] . . . is the same design element required in a
significant percentage of TxDOT, county, and
municipal-compliant precast concrete barriers.”
(Id. at 5).
to Tricon, Easi-Set has improperly influenced Texas officials
to convince them to adopt the V-shape design requirement.
(Id.). Easi-Set employees allegedly provided Texas
officials with “design specifications, ” without
disclosing that Easi-Set had trademarked the V-shape.
(Id.). Tricon alleges that the V-shape has no
legitimate purpose, but admits that the V-shape requires
“less concrete” and costs less to manufacture.
(Id. at 5-7). Tricon alleges that:
[i]f Easi-Set and/or its licensees are the exclusive
suppliers of traffic barriers required by TxDOT, as well as
other Texas counties and municipalities, that include
Easi-Set's purported “V-shape” trade dress,
then such exclusivity would put Tricon and other competitors
at a disadvantage, as they would be foreclosed from supplying
such TxDOT, county, and municipal-mandated traffic barriers,
thereby resulting in an unreasonable restraint of trade and
unfair competition within the State of Texas.
(Id. at 6). Tricon alleges that “Easi-Set
seeks to willfully maintain its monopoly position through
improper means rather than through a superior product,
business acumen, or historical accident, ” requiring
Tricon to “pay unreasonably high royalties” to
use the ‘357 Trademark. (Id. at 7).
sued Easi-Set in the Southern District of Texas, seeking a
declaratory judgment that the ‘357 Trademark is invalid
and must be cancelled, and that Tricon has not infringed it.
(Id. at 8-9). Tricon asserts that Easi-Set has
violated the Texas Antitrust Act and the Sherman Act by
“induc[ing] and encourag[ing]” TxDOT “to
require the ‘V-[s]hape' embodied in the ‘357
[Trademark] in precast concrete barriers.”
(Id. at 11). Tricon alleges that Easi-Set has
succeeded in these lobbying efforts, making “Easi-Set
the sole supplier of precast concrete barrier[s], ” and
having “a staunch effect on competition.”
(Id. at 10).
moved to transfer to the Eastern District of Virginia and to
dismiss the antitrust claims. (Docket Entry No. 8). Easi-Set
argues that this case arises from a licensing agreement
between Easi-Set and Tricon with a valid and enforceable
forum-selection clause; the parties have related litigation
pending in the Eastern District of Virginia; and the public
and private factors favor transfer. (Id. at 3-8). As
to the antitrust claims, Easi-Set argued that the
“so-called Noerr-Pennington doctrine”
bars Tricon's claims as a matter of law. (Id. at
amended its complaint, making the pending motion to dismiss
moot, and responded to the motion to transfer. (Docket Entry
Nos. 10-11). Tricon argues that this litigation has nothing
to do with the Licensing Agreement; the Virginia litigation
concerns different patents and trademarks; the witnesses and
evidence are in Texas; and Texas has a strong interest in
antitrust claims that involve TxDOT and local governments.
(Docket Entry No. 11 at 15-22). Easi-Set replies that the
“V-shape” mark is “an integral part of the
product line specifically governed by the Licensing
Agreement” and that the forum-selection clause applies.
(Docket Entry No. 12 at 2-4).
has moved to dismiss the antitrust claims in the amended
complaint. (Docket Entry No. 13). Easi-Set “stridently
denies that it has done anything improper, ” but
“recogniz[es] that a Rule 12(b)(6) motion is not the
appropriate occasion to attack the factual basis of a
complaint.” (Docket Entry No. 13-1 at 5). Easi-Set
argues that “its alleged efforts to influence the State
of Texas . . . [are] protected from antitrust scrutiny under
the Noerr-Pennington doctrine.”
(Id.). Tricon responds that the Easi-Set cannot be
shielded “from antitrust liability by having a
regulatory body sign off on a requirement that results in
anticompetitive activity, ” and that the sham exception
to the Noerr-Pennington doctrine ...