                           NOT FOR PUBLICATION                           FILED
                    UNITED STATES COURT OF APPEALS                       MAR 12 2019
                                                                      MOLLY C. DWYER, CLERK
                                                                       U.S. COURT OF APPEALS
                           FOR THE NINTH CIRCUIT

GLOBEFILL INCORPORATED, a                       No.    17-56574
Canadian corporation,
                                                D.C. No.
                Plaintiff-Appellant,            2:10-cv-02034-CBM-PLA

 v.
                                                MEMORANDUM*
ELEMENTS SPIRITS, INC., a California
corporation and KIM BRANDI, an
individual,

                Defendants-Appellees.

                   Appeal from the United States District Court
                       for the Central District of California
                  Consuelo B. Marshall, District Judge, Presiding

                            Submitted March 8, 2019**
                              Pasadena, California

Before: SCHROEDER and OWENS, Circuit Judges, and CHRISTENSEN,***
Chief District Judge.



      *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
      **
             The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
      ***
             The Honorable Dana L. Christensen, Chief United States District
Judge for the District of Montana, sitting by designation.
      Following a jury verdict finding Defendants Kim Brandi and Elements

Spirits, Inc., liable for willful or intentional trade dress infringement, Plaintiff

Globefill Inc. appeals from the district court’s order (1) awarding Globefill

disgorgement of profits in an amount less than Globefill requested; (2) denying

Globefill’s request to add non-party tequila manufacturer Finos as an additional

judgment debtor; and (3) denying Globefill’s motion for attorneys’ fees. As the

parties are familiar with the facts, we do not recount them here. We affirm.

      1. The Lanham Act allows a prevailing plaintiff to disgorge profits that are

earned by the defendant and attributable to the infringement. 15 U.S.C. § 1117(a).

The district court did not “commit[] a clear error of judgment” in concluding that

Elements earned—and therefore must disgorge—$871,536.86 attributable to the

infringement. Fifty-Six Hope Road Music, Ltd. v. AVELA, Inc., 778 F.3d 1059,

1076 (9th Cir. 2015) (citation omitted). The district court properly concluded that

Elements’ earnings equaled 8% of gross sales of KAH Tequila (or $871,536.86)

based on a 2010 Trademark Assignment and Royalty Agreement (TARA) between

Elements and non-party Finos.

      None of Globefill’s arguments to the contrary is persuasive. First, Globefill

failed to establish that the TARA “was not an arms’ length transaction.” Fifty-Six

Hope Road Music, Ltd., 778 F.3d at 1076; see also In re The Vill. at Lakeridge,

LLC, 814 F.3d 993, 1001 n.11 (9th Cir. 2016) (defining arms’ length transaction as


                                            2
one “between two parties, however closely related they may be, conducted as if the

parties were strangers, so that no conflict of interest arises”) (citing Black’s Law

Dictionary (10th ed. 2014)). Second, Globefill waived its argument that the TARA

was a fraudulent conveyance by failing to raise it in the district court. See In re

Mercury Interactive Corp. Sec. Litig., 618 F.3d 988, 992 (9th Cir. 2010). Finally,

Globefill waived its argument of judicial estoppel by raising it for the first time in

its reply brief. Eberle v. City of Anaheim, 901 F.2d 814, 818 (9th Cir. 1990) (“The

general rule is that appellants cannot raise a new issue for the first time in their

reply briefs.”) (citations and internal quotations marks omitted).

      2. The district court did not abuse its discretion in denying Globefill’s

request to add non-party Finos as an additional judgment creditor. Federal Rule of

Civil Procedure 69(a) authorizes federal courts to rely on California Code of Civil

Procedure section 187 to “amend a judgment to add additional judgment debtors.”

In re Levander, 180 F.3d 1114, 1121 (9th Cir. 1999) (quoting Issa v. Alzammar, 38

Cal. App. 4th Supp. 1, 4 (1995)). Such an amendment requires: “(1) that the new

party be the alter ego of the old party and (2) that the new party had controlled the

litigation, thereby having the opportunity to litigate, in order to satisfy due process

concerns.” Katzir’s Floor and Home Design, Inc., v. M-MLS.com, 394 F.3d 1143,

1148 (9th Cir. 2004) (emphasis in original) (quoting In re Levander, 180 F.3d

1114, 1121 (9th Cir. 1999)). Here, the district court did not abuse its discretion in


                                           3
denying Globefill’s request because Globefill failed to identify evidence that Finos

(1) is the alter ego of Elements, or (2) that Finos controlled the litigation. Even on

appeal, Globefill fails to identify any evidence in the extensive record showing that

Finos controlled the litigation.

      3. The Lanham Act permits a district court to award attorneys’ fees to a

prevailing party in “exceptional” cases. 15 U.S.C. § 1117(a). The district court

did not abuse its discretion in concluding that this case was not “exceptional.” See

SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F. 3d 1179, 1181 (9th Cir. 2016)

(clarifying the standard of review). In so concluding, the district court did not err

in giving substantial weight to Brandi and Elements’ reasonable litigation

positions, while still considering the totality of the circumstances, including their

intentional or willful infringement. See Kirtsaeng v. John Wiley & Sons, Inc., 136

S. Ct. 1979, 1989 (2016); see also SunEarth, Inc., 839 F. 3d at 1181.

      AFFIRMED.




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