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Brand Coupon Network, L.L.C. v Catalina Marketing Corporation

Case No. 13-30756 (C.A. 5, Apr. 8, 2014)

Plaintiff-Appellant Brand Coupon Network, L.L.C. (“BCN”) appeals the district court’s dismissal of its claims pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. BCN sued Defendants-Appellees Catalina Marketing Corp. (“Catalina”) and three of its individual officers or employees, Pamela Samniego, Joe Henson, and L. Dick Buell (collectively, “Defendants”), alleging deceptive trade practices, trademark violations, and related fraud and tort claims, all stemming from Defendants’ creation of CouponNetwork.com, a website and business “remarkably similar” to BCN’s existing business, BrandCouponNetwork.com. The district court ruled that BCN failed to state a claim for trade secret violation and dismissed the remaining claims as time barred, basing its conclusion on use of the word “immediately” in BCN’s petition to describe its attempt to contact Defendants following their entry into the Internet coupon market. We affirm in part, vacate in part, and remand.

I. FACTS AND PROCEEDINGS



In July 2011, BCN filed a petition for damages and injunctive relief in state court alleging that it has sold printable coupons and other “coupon technology” over the Internet since 2004, and that Daniel Abraham, BCN’s founder and CEO, had contact with Defendants while serving on the board of the Association of Coupon Professionals (“ACP”). BCN alleged that, during an ACP conference on April 27, 2010, Abraham discussed with Defendants Samniego and Henson “confidential information relative to the internet coupon industry and [BCN’s] strategies and business plans.” At the time, Defendants “were engaged only in the print coupon business.” BCN also alleged that, around the same time as the ACP conference, or shortly thereafter, Defendants “entered the internet coupon business . . . under the remarkably similar name” of CouponNetwork.com (compare BrandCouponNetwork.com).

The parties dispute whether BCN became aware of Defendants’ entry into the market as early as April or May of 2010, or only later, in the fall of 2010. The parties further dispute whether BCN sustained the business injuries it alleges beginning that April or not until the fall of that year. The record includes a letter Abraham sent to Defendants in December 2010 seeking to discuss “collaborative options to avoid any confusion in the market place arising from Catalina’s adoption of a brand name that is confusingly similar to ours.” The record also includes Abraham’s December email resignation from the board of ACP, citing his having “recently discovered” that Defendants had acquired Invenda, BCN’s rival, and begun an online marketing program called CouponNetwork.com. The record contains Abraham’s affidavit stating that “[p]rior to October of 2010, I had no knowledge that defendants had engaged in the . . . actions complained of in the Petition for Damages and/or that their practices were detrimental to [BCN].” Finally, Abraham averred that the December 2010 letter was his first successful contact with Defendants after learning of their actions in October 2010, stating that they had failed to respond to his several phone calls placed between October and December.
 

 

Judge(s): Jaques Wiener, Jr.
Jurisdiction: U.S. Court of Appeals, Fifth Circuit
Related Categories: Business Organizations , Civil Procedure , Contracts , Damages , Employment , Torts , Trade Secret , Trademark
 
Circuit Court Judge(s)
Catharina Haynes
Stephen Higginson
Jaques Wiener, Jr.

 

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Click the maroon box above for a formatted PDF of the decision.
6 iqbal, 556 u.s. at 678. discovery and amended or additional pleadings. in that regard we note that summary judgment. moreover, when viewed in light of the record before us, a to rule 12(b)(6), it dismissed bcn’s claims as time barred, and remand for a citation to page 6 of bcn’s opposition memorandum. the cited page does about april 2010. defendants also urged that bcn had failed to state claims genuine issue of material fact appears to exist, which would preclude summary for the fifth circuit and inquiry necessary for a showing of constructive notice. indeed, brandcouponnetwork.com. the district court ruled that bcn failed to state couponnetwork.com. the record contains abraham’s affidavit stating that 9 collins v. morgan stanley dean witter, 224 f.3d 496, 498 (5th cir. 1 the district court dismissed bcn’s trade secret claim as insufficiently the district court granted the dismissal motion, holding that the barred, basing its conclusion on use of the word “immediately” in bcn’s motions on june 18, 2013, and this timely appeal followed. i. facts and proceedings president and ceo mr. richard buell demanding that catalina parties must be given a reasonable opportunity to present all the material that defendants correctly note that bcn did not make this contention before facts indicating to a reasonable person that he or she is the victim of a tort,”8 central to a plaintiff’s claims.10 matters outside the pleadings are presented to and not excluded by the court, 6 case: 13-30756 document: 00512589225 page: 1 date filed: 04/08/2014 no. 13-30756 no. 13-30756 order that “plaintiff’s memorandum in opposition to the present motion between opposing parties between their april 27 meeting at the acp 2 defendants-appellees is pertinent to the motion.” follows, with original punctuation: litig., 495 f.3d 191, 205 (5th cir. 2007) (“but because the defendants attached abraham’s affidavit and its attachments: not only does the cited opposition claims, all stemming from defendants’ creation of couponnetwork.com, a to discuss “collaborative options to avoid any confusion in the market place order and reasons summarizes bcn’s contention this way: “[a]lthough mr. (2) unjust enrichment; (3) unfair trade practices; (4) trade secret violation; (5) samniego and henson “confidential information relative to the internet coupon knew or should have known of the defendants’ entry into the market in or v. the individual defendants, pamela samniego, joe henson, and l. dick buell. april or may 2010, as defendants argue, or not until october 2010, as bcn iii. analysis corporate officer or employee may be liable under lutpa for acts taken within most favorable to the plaintiffs.”3 rule 8 does not require “detailed factual trademark infringement; (6) breach of the duty of good faith and fair dealing; 9 unreturned. abraham’s affidavit contains his clear statement that he had no code.1 defendants removed the case to the middle district of louisiana, and because bcn filed its petition in july 2011, the timeliness of its claims new allegations,” but thereby implicitly concede that the district court did against the individual defendants in their personal capacities. bcn’s 2010. the parties further dispute whether bcn sustained the business dismiss, and weeks after the filing of the petition. we conclude that the district into the market as early as april or may of 2010, or only later, in the fall of consider the terms of the contracts in assessing the motions to dismiss.”) (citing regarding the timeliness of bcn’s claims, possibly including additional to reach and was subsequently forced to write to catalina’s “were engaged only in the print coupon business.” bcn also alleged that, on remand, the district court must conduct such proceedings as it 13 industrias magromer cueros y pieles s.a. v. la. bayou furs inc., 293 circumstances support the extraordinary remedy of piercing the corporate district court’s dismissal of its claims pursuant to rule 12(b)(6) of the federal not explicitly exclude this evidence as improper. ii. standard of review memorandum]. to that motion when the documents are referred to in the pleadings and are record includes a letter abraham sent to defendants in december 2010 seeking apply here. randall d. wolcott, m.d., p.a. v. sebelius, 635 f.3d 757, 763 (5th cir. 2011)). appeal from the united states district court of the petition, nor could it have been: the affidavit was signed on september propositions: bcn became aware in april or may of (1) “coupon network’s memorandum contain no such statement, but even defendants do not contend existence of defendants’ website before october. the district court’s “although” existence”; and (2) “defendants’ entrance into the internet coupon business.” dismissal of the individual defendants pamela samniego, joe henson, and l. vacated in part, affirmed in part, and remanded. “immediate” cause for contact with defendants following the april 3 clerk understood to indicate that bcn became aware of the injury at that time.2 the clause is unsupported, and it mischaracterizes bcn’s proffered timeline. 5 unlawfully-harmed-me accusation.”4 a plaintiff’s claim must contain “enough 10 collins, 224 f.3d at 498; see walch v. adjutant general’s dep’t of tex., the parties dispute whether bcn became aware of defendants’ entry catalina’s officers or employees, in their individual capacities, for violations of april 8, 2014 internet coupon business obviously incited the requisite curiosity injuries it alleges beginning that april or not until the fall of that year. the henson; l. dick buell, no. 13-30756 own allegations in the original complaint.” yet the evidence was not a referent 8 campo v. correa, 828 so. 2d 502, 510 (la. 2002). holding that bcn’s allegations of a “personal duty” owed by those defendants practices were detrimental to [bcn].” finally, abraham averred that the based this conclusion on its reading of bcn’s petition, which the court of 2010.” an “id.” citation follows this statement, which indicates yet another 7 wiener, circuit judge: no. 13-30756 this standard when it contains “factual content that allows the court to draw further consistent action. magromer cueros y pieles s.a. v. louisiana bayou furs inc., in which we noted brand coupon network, l.l.c., 12, 2011, a day before bcn filed its opposition to defendants’ motion to a motion for leave to file an amended complaint. the district court denied both having made telephone calls beginning in october notes that they went bcn’s petition recites seven causes of action: (1) detrimental reliance; determines to be necessary to ascertain whether a triable issue of fact exists opposition to the motion to dismiss asserted that the injury did not occur until consider the new allegations to some extent. in any event, the district court did asserting jurisdiction based on diversity of citizenship. defendants then filed dick buell; and we remand for further proceedings consistent with this in the . . . actions complained of in the petition for damages and/or that their 12 la. rev. stat. § 51:1409(a). of couponnetwork.com (compare brandcouponnetwork.com). depends on whether it became aware of defendants’ entry into the market in filed petition to describe its attempt to contact defendants following their entry into 14 miller v. nationwide life ins. co., 391 f.3d 698, 701 (5th cir. 2004). new argument, bcn cites no authority for the proposition that an individual alleged.”6 case: 13-30756 document: 00512589225 page: 6 date filed: 04/08/2014 and that a district court cannot have erred as to arguments not presented to “entered the internet coupon business . . . under the remarkably similar name” not until october 2010 that plaintiff had actual knowledge of any injury,” with limitations period, whether prescriptive or peremptive.7 because prescription the district court might have misappreheded bcn’s argument. the court’s procedure, insisting that bcn’s claims were facially prescribed or perempted the board of acp, citing his having “recently discovered” that defendants had present it to the district court, only conclusionally stating that the individual rules of civil procedure. bcn sued defendants-appellees catalina marketing the district court. we have stated repeatedly “that we are a court of errors, court erred when it considered evidence outside the pleadings—and not [bcn’s discovery] of coupon network’s presence in the december 2010 letter was his first successful contact with defendants after a claim for trade secret violation and dismissed the remaining claims as time technology” over the internet since 2004, and that daniel abraham, bcn’s no. 13-30756 deceptive trade practices, trademark violations, and related fraud and tort the board of acp. respond to his several phone calls placed between october and december. we review a district court’s dismissal under rule 12(b)(6) de novo, suddenly entered the internet coupon business and did so under 27, 2010 meeting [citation to page 6 of bcn’s opposition 2 the full text of the critical paragraph of bcn’s petition reads as samniego, joe henson, and l. dick buell (collectively, “defendants”), alleging the motion must be treated as one for summary judgment under rule 56. all referred to therein—without converting the motion to dismiss into a motion for arising from catalina’s adoption of a brand name that is confusingly similar to acquired invenda, bcn’s rival, and begun an online marketing program called attached to bcn’s opposition to defendants’ motion to dismiss, noting in its citations to the same page of bcn’s opposition, page 6, for the following not, however, contain any statement to the effect that abraham knew of the the scope of his employment. defendants highlight our opinion in industrias amend the judgment pursuant to rule 59(e), and on november 13, 2012, filed knowledge of defendants’ actions, and no knowledge of the damage to his that bcn contacted them in april. the record does not reflect any contact allegations, but it demands more than an unadorned, the-defendant- abraham knew of the existence of defendants’ website in april 2010, it was facts to state a claim to relief that is plausible on its face.”5 a petition meets in july 2011, bcn filed a petition for damages and injunctive relief in catalina marketing corporation; pamela samniego; joe the internet coupon market. we affirm in part, vacate in part, and remand. judgment. we vacate the district court’s judgment to the extent that, pursuant on a rule 12(b)(6) motion, a district court generally “must limit itself to iv. conclusion case: 13-30756 document: 00512589225 page: 7 date filed: 04/08/2014 4 no. 13-30756 because its petition was not filed until july 2011, more than a year after bcn 5 bell atl. corp. v. twombly, 550 u.s. 544, 570 (2007). for the middle district of louisiana 533 f.3d 289, 293-94 (5th cir. 2008) (considering exhibits attached to an brand coupon network.com) abraham immediately attempted and (7) tortious conduct in violation of article 2315 of the louisiana civil 7 bcn also concedes that the doctrine of contra non valentem does not of duty of good faith; and (6) tortious conduct; we affirm the district court’s overtly confusing name coupon network.com. buell and/or enrichment; (3) unfair trade practices; (4) trademark infringement; (5) breach case: 13-30756 document: 00512589225 page: 9 date filed: 04/08/2014 dismissing bcn’s claims. on october 9, 2012, bcn filed a motion seeking to acp conference on april 27, 2010, abraham discussed with defendants no. 13-30756 pleaded, and bcn does not challenge this ruling on appeal. alleged harm following the discovery of the implicated website in april or may 11 defendants contend that the district court “hardly considered these documents and both were sufficiently referenced in the complaint to permit the remarkably similar name of coupon network.com (compare when defendants entered the internet coupon market. the district court business, before october 2010. thereafter, on or about april 2010, catalina who had the district court entered final judgment on september 10, 2012, that bcn has failed to preserve this issue for appeal because bcn did not opinion. insists. following bcn claims as time barred: (1) detrimental reliance; (2) unjust begins to run “when a plaintiff obtains actual or constructive knowledge of case: 13-30756 document: 00512589225 page: 4 date filed: 04/08/2014 “according to the original petition, plaintiff had actual knowledge of the b. claims against individual defendants case: 13-30756 document: 00512589225 page: 3 date filed: 04/08/2014 the association of coupon professionals (“acp”). bcn alleged that, during an the contents of the pleadings, including attachments thereto.”9 the court may conference and bcn’s december 15 letter. even abraham’s reference to their consideration on a motion to dismiss”); in re katrina canal breaches when interpreting bcn’s petition, the district court considered exhibits case: 13-30756 document: 00512589225 page: 8 date filed: 04/08/2014 in the united states court of appeals united states court of appeals learning of their actions in october 2010, stating that they had failed to opposition because “[n]o party questions the authenticity of these two plaintiff-appellant brand coupon network, l.l.c. (“bcn”) appeals the abraham’s december 2010 letter, and (3) abraham’s emailed resignation from intended to refer to the petition itself. but, neither document supports the catalina refused. “[p]rior to october of 2010, i had no knowledge that defendants had engaged 3 morris v. livingston, 739 f.3d 740, 745 (5th cir. 2014) (quoting cease and desist from further use of the nearly identical and 8 that status as an agent protects an individual from lutpa liability unless the that its discovery gave it constructive notice—and, in fact, actual notice—of industry and [bcn’s] strategies and business plans.” at the time, defendants complaints, and the contracts are central to the plaintiffs’ claims, we may fifth circuit f.3d 912, 920 (5th cir. 2002). veil.13 ours.” the record also includes abraham’s december email resignation from the reasonable inference that the defendant is liable for the misconduct founder and ceo, had contact with defendants while serving on the board of appears to factually augment the complaint timeline.”11 the district court “accepting all well-pleaded facts as true and viewing those facts in the light case: 13-30756 document: 00512589225 page: 2 date filed: 04/08/2014 the fall of 2010; it included as attachments (1) abraham’s affidavit, (2) this knowledge was apparently a substantial impetus to compel an assertion of the court, which goes on to state: similar errors appear in the following paragraph, in the form of two additional case: 13-30756 document: 00512589225 page: 5 date filed: 04/08/2014 bcn maintains that it properly preserved for appeal a second issue, viz., it.”14 accordingly, we affirm the district court’s dismissal of the claims against before wiener, haynes, and higginson, circuit judges. took place. the second sentence misconstrues the evidence presented in the district court’s paragraph concludes with the following assertion: bcn does not appear to dispute that its claims are subject to a one-year for the foregoing reasons, we vacate the district court’s dismissal of the previously been engaged only in the print coupon business, plaintiff-appellant no. 13-30756 2000). rule 12(d) provides: “if, on a motion under rule 12(b)(6) or 12(c), applicable prescriptive and peremptive periods began to run in april 2010 reference to page 6 of bcn’s opposition, but which the district court may have state court alleging that it has sold printable coupons and other “coupon website and business “remarkably similar” to bcn’s existing business, no. 13-30756 causey v. sewell cadillac-chevrolet, inc., 394 f.3d 285, 288 (5th cir. 2004)). claims against defendants. rather, the dispute is over when that discovery around the same time as the acp conference, or shortly thereafter, defendants the louisiana unfair trade practices act (“lutpa”).12 defendants counter 4 ashcroft v. iqbal, 556 u.s. 662, 678 (2009) (internal quotation marks lyle w. cayce the propriety of the district court’s dismissal of its claims against three of were conclusional and that they acted solely within their roles as agents and also consider documents attached to either a motion to dismiss or an opposition employees of catalina. a. timeliness of bcn’s claims a motion to dismiss pursuant to rule 12(b)(6) of the federal rules of civil defendants owed it a personal duty. defendants also note that, in making this the contracts to their motions to dismiss, the contracts were referred to in the further found the evidence to be “largely diminished and defeated by [bcn’s] corp. (“catalina”) and three of its individual officers or employees, pamela district court also dismissed bcn’s claims against the individual defendants, omitted). the first sentence does not contain an error; bcn would have to agree


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