Suntree Techs., Inc. v. Ecosense Int'l, Inc.

693 F.3d 1338

23 Fla. L. Weekly Fed. C 1497

SUNTREE TECHNOLOGIES, INC., a Florida corporation, Plaintiff–Appellant,

v. ECOSENSE INTERNATIONAL, INC., a Florida corporation, George Dussich, Defendants–Appellees,Derrico Construction Corporation, a Florida corporation, Defendant.

No. 11–13916.

United States Court of Appeals, Eleventh Circuit.

Sept. 5, 2012.

Stephen H. Luther, Ryan Santurri, Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA, Orlando, FL, Deborah R. O'Brien, Lowis & Gellen, LLP, Longwood, FL, for Plaintiff–Appellant.

Douglas B. Brown, Lauren Fackender Carmody, Kevin Richard Gowen, II, David Bryan Shelton, Rumberger, Kirk & Caldwell, PA, Amber N. Davis, Terry Marcus Sanks, Beusse, Wolter, Sanks, Mora & Maire, PA, Orlando, FL, for Defendants–Appellees.

Appeal from the United States District Court for the Middle District of Florida.

Before DUBINA, JORDAN and ALARCÓN,^* Circuit Judges.

ALARCÓN, Circuit Judge:

Suntree Technologies, Inc. (“Suntree”) appeals from the district court's order denying its motion for summary judgment and granting the motions for summary judgment filed by Ecosense International, Inc. (“Ecosense”) and George Dussich with regard to Suntree's claims of false designation of origin and false advertising under Section 43(a) of the Lanham Act, common law trademark infringement and unfair competition, and deceptive and unfair trade practices pursuant to the Florida Deceptive and Unfair Trade Practices Act (“FDUPTA”), codified at Fla. Stat. § 501.201 et seq. (2012). Suntree contends that the district court erred in concluding that Suntree failed to establish that Ecosense and Dussich directly or contributorily infringed on their trademark because it failed to present evidence of actual or of a likelihood of confusion. We disagree and affirm.

I

Suntree manufactures a product called baffle boxes, which were described by Thomas Happel, the president of Suntree, in his declaration as “stormwater treatment structures that remove organic debris, trash, oil and other pollutants from stormwater before the stormwater reaches lakes, rivers and streams.” Suntree is the most well-known storm filtration product supplier in Florida. Suntree's baffle boxes have been certified by New Jersey's Corporation for Advanced Technologies program (“NJCAT”), a certification that is required to sell baffle boxes in New Jersey and in a number of other states. Florida recognizes NJCAT pre-approval of products. In his declaration, Happel alleged that “Suntree uses its NJCAT certification as a selling point for its baffle boxes because relatively few stormwater equipment companies have such certifications.”

Ecosense also manufactures baffle boxes. It installed its first baffle box in 2008. George Dussich is the president and majority shareholder of Ecosense. Randy Burden is its vice-president and minority shareholder.

In the fall of 2008, the City of West Melbourne, Florida (“the City”), began soliciting bids for the City of West Melbourne Stormwater Quality Retrofit Project (“The CWM Project”). Contractors wishing to bid on the project obtained a packet of documents called the Bidding and Construction Contract Documents and Technical Specifications (“bidding documents”). The specifications in the bidding documents included the following requirement:

NUTRIENT SEPARATING BAFFLE BOXES TO BE PROVIDED BY SUNTREE TECHNOLOGIES, INC. OR APPROVED EQUAL. CONSTRUCTION DETAILS AND SPECS ARE IDENTIFIED BY SUNTREE TECHNOLOGIES, INC. APPROVED EQUAL SHALL MEET OR EXCEED SUNTREE TECHNOLOGIES, INC. SPECIFICATIONS.

The specifications listed Suntree baffle boxes as the “proposed baffle box manufacturer/model” for each of the nine baffle boxes to be installed. Lawrence Jarvis, an employee of Jones Edmunds, who was hired by the County as the project engineer for the CWM Project, declared in his deposition that the City was not permitted under Florida law to designate Suntree as the sole manufacturer of baffle boxes absent a showing of special circumstances.

The bid solicitation form included in the bidding documents required bidders to list the subcontractors and suppliers they relied upon in calculating their bids. It stated:

The Undersigned states that the following is a full and complete list of the proposed subcontractors and suppliers on this Project and the class of work to be performed by each and that such list will not be added to nor altered without written consent to the Owner through the Engineer.

Article 11 of the instructions to bidders, included in the bidding documents, provided as follows:

The Contract, if awarded, will be on the basis of materials and equipment specified or described in the Bidding Documents without consideration of possible substitute or “or equal” items. Whenever it is specified or described in the Bidding Documents that a substitute or “or equal” item of material or equipment may be furnished or used by if acceptable to the Engineer, application for such acceptance will not be considered by the Engineer until after the Effective Date of the Agreement.

(emphasis added). Section 6.05 of the bidding documents provided that “[w]henever an item of material or equipment is specified or described in the Contract Documents by using the name of a proprietary item or the name of a particular Supplier, the specification or description is intended to establish the type, function, appearance and quality required.” Section 6.05 also set forth the process a contractor must go through in order to gain approval for an “or equal” item of material or equipment. Approval was in the sole discretion of Jarvis, as the project's engineer. Rather than incurring the expense of pre-approving an additional, less expensive supplier, the engineers for the City and County decided to use Suntree's name in the bidding specifications. If the contractor who was awarded the project found a less expensive baffle box that was approved to be of equal quality to Suntree's, the benefit of the reduction in cost would go to the contractor.

Derrico Construction Corp. (“Derrico”), a general contractor, submitted a bid for the CWM Project that was significantly lower than the other bidders. It was also approximately $85,000 less than the project engineer's estimate. Mark Cattey, the estimator for Derrico who assembled Derrico's bid, alleged in his deposition that, in conformity with the specifications in the bidding documents, Derrico's bid listed Suntree as the supplier for the baffle boxes because Derrico “did not know if an alternate would be accepted after award so [they] had to be covered to install [Suntree's] product” if necessary.

Carolina Alvarez, an engineer for the County, who worked on the CWM Project, reviewed Derrico's bid. Derrico's bid was accepted. At a pre-construction meeting in mid-January 2009, Derrico requested approval of Ecosense's baffle boxes as an “or equal” substitute as was permitted in the bidding documents distributed to potential bidders when the City was soliciting bids. Jarvis reviewed the specifications of the Ecosense baffle boxes and inspected an Ecosense baffle box installed in another municipality before approving it as a substitute for Suntree's product. Derrico installed Ecosense baffle boxes.

After the project was completed, Alvarez requested that Ecosense prepare a power point presentation to train the City's personnel on the proper cleaning and maintenance procedures for baffle boxes. The presentation showed baffle boxes being cleaned and maintained by municipal workers for the City of Rockledge, a city close to Ecosense's office. Ecosense had a good relationship with the City of Rockledge and their maintenance crew was capable and well-trained. Because both Ecosense and Suntree baffle boxes had been installed in the City of Rockledge, the presentation included photographs of both Ecosense and Suntree baffle boxes. Suntree's name was not included anywhere in the maintenance presentation. The power point presentation was given to the City of West Melbourne and the City of Titusville. Both were already customers of Ecosense at that time. A link to the presentation was on Ecosense's website for three months, but was taken down when Suntree complained about the photographs.

II

A

Suntree filed a complaint in this matter against Ecosense, Dussich, and Derrico on November 13, 2009. It subsequently filed an amended complaint on December 9, 2009. The amended complaint alleged that Derrico, Ecosense, and Dussich's use of Suntree's trademark in the submission of Derrico's bid for the CWM Project and in the maintenance presentation was likely to cause confusion as to the origin of the products to be installed, was false and misleading, and was likely to deceive consumers. Suntree also alleged that the conduct of Derrico, Ecosense, and Dussich in obtaining the contract constituted unfair competition, misleading and deceptive representations, and unfair practices under Florida state law.

B

On January 10, 2010, Suntree entered into a settlement agreement with Derrico. In the agreement, Derrico promised that in submitting future bids which provide “that it will use Suntree's products on the project, it will not seek to substitute or actually substitute any other products in place of Suntree's products on that stormwater filtration project.” Derrico also agreed to cooperate with Suntree in this litigation and to provide documents and witnesses, as well as a declaration from John Robertson, Derrico's president, setting forth the facts regarding his knowledge of the CWM Project. Robertson's declaration stated as follows:

From the beginning of our pre-bid analysis of the project with Ecosense and Mr. Dussich through it completion, we planned on using Ecosense's stormwater filtration products on the project and based the equipment costs in Section 5.01 of Derrico's bid on the cost of Ecosense's products, not Suntree's products.

However, Mr. Dussich and I decided we would have a much better chance of being the...