                           NOT FOR PUBLICATION                           FILED
                    UNITED STATES COURT OF APPEALS                        OCT 3 2019
                                                                      MOLLY C. DWYER, CLERK
                                                                       U.S. COURT OF APPEALS
                           FOR THE NINTH CIRCUIT

SAZERAC COMPANY, INC., a Louisiana              Nos. 17-16916
Corporation; SAZERAC BRANDS, LLC, a                  17-17511
Delaware Limited Liability Company,
                                                D.C. No. 3:15-cv-04618-WHO
                Plaintiffs-Appellants,

 v.                                             MEMORANDUM*

FETZER VINEYARDS, INC., a California
Corporation,

                Defendant-Appellee.

                  Appeal from the United States District Court
                       for the Northern District of California
                 William Horsley Orrick, District Judge, Presiding

                    Argued and Submitted September 10, 2019
                            San Francisco, California

Before: WALLACE, BEA, and FRIEDLAND, Circuit Judges.

      Sazerac Company, Inc. and Sazerac Brands, LLC (collectively, “Sazerac”)

sued Fetzer Vineyards, Inc. (“Fetzer”), alleging that Fetzer’s 1000 Stories wine

infringes the trademark and trade dress of Sazerac’s Buffalo Trace bourbon.

Although the district court largely denied Fetzer’s motion for summary judgment,


      *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
it precluded Sazerac from introducing evidence at trial of monetary damages,

which Sazerac had proposed to prove through calculation of hypothetical

reasonable royalty payments. The district court then conducted a bench trial on

liability and injunctive relief, after which it ruled in Fetzer’s favor on all remaining

claims. After judgment was entered, the district court granted Fetzer’s motion for

attorney’s fees under 15 U.S.C. § 1117, but limited the award to the fees incurred

after summary judgment.

      Sazerac appeals from the district court’s judgment, including from the

district court’s summary judgment on Sazerac’s damages claims and the judgment

in Fetzer’s favor on Sazerac’s remaining claims after the bench trial, as well as

from the district court’s attorney’s fees order. We affirm.

      1. We review discovery rulings, including the imposition of discovery

sanctions, for abuse of discretion. See R & R Sails, Inc. v. Ins. Co. of Pa., 673 F.3d

1240, 1245 (9th Cir. 2012). Federal Rule of Civil Procedure 26(a) includes

requirements regarding disclosures for damages computations, and Federal Rule of

Civil Procedure 26(e) includes requirements regarding supplementing disclosures

when a prior disclosure is incomplete or incorrect. Federal Rule of Civil Procedure

37(c) “gives teeth to these requirements by forbidding the use at trial of any

information required to be disclosed [under these rules] that is not properly

disclosed.” Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106


                                           2
(9th Cir. 2001).

      Here, the district court held that Sazerac had violated its obligations under

Rule 26(a) by failing to disclose adequately its method of calculating damages or

to identify the documents on which it planned to rely. The district court held that if

Sazerac “planned to prove damages by some other means, it should have

supplemented its disclosures” under Federal Rule of Civil Procedure 26(e). The

district court concluded that Fetzer would be prejudiced were Sazerac permitted to

seek damages in a manner not previously disclosed, and on this basis precluded

Sazerac from seeking damages.

      The crux of Sazerac’s argument on appeal is that the district court failed to

make findings that Sazerac contends were required before such a sanction could be

imposed. But Sazerac never argued in the district court that such findings were a

prerequisite to precluding it from recovering damages, despite having had the

opportunity to do so. “Generally, we do not ‘entertain[] arguments on appeal that

were not presented or developed before the district court.’” Tibble v. Edison Int’l,

843 F.3d 1187, 1193 (9th Cir. 2016) (en banc) (alteration in original) (quoting

Visendi v. Bank of Am., N.A., 733 F.3d 863, 869 (9th Cir. 2013)). In this case, our

review is not “necessary to prevent a miscarriage of justice or to preserve the

integrity of the judicial process,” nor is the issue Sazerac now presents “purely one

of law” that does not require further factual development, so we decline to exercise


                                          3
our discretion to reach this forfeited issue. In re Mercury Interactive Corp. Sec.

Litig., 618 F.3d 988, 992 (9th Cir. 2010) (quoting Bolker v. Comm’r, 760 F.2d

1039, 1042 (9th Cir. 1985)).

      2. Following a bench trial, “[w]e accept the district court’s findings of fact

unless they are clearly erroneous,” La Quinta Worldwide LLC v. Q.R.T.M., S.A. de

C.V., 762 F.3d 867, 874 n.2 (9th Cir. 2014), and “review the district court’s

conclusions of law de novo,” F.T.C. v. BurnLounge, Inc., 753 F.3d 878, 883

(9th Cir. 2014). Likelihood of confusion is among the elements that a plaintiff

must prove to establish either a trademark or trade dress claim. See Int’l Jensen,

Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 823 (9th Cir. 1993). It is assessed by

applying the eight Sleekcraft factors: (1) the strength of the mark; (2) proximity or

relatedness of the goods; (3) similarity of the marks; (4) evidence of actual

confusion; (5) marketing channels used; (6) type of goods and the degree of care

likely to be exercised by the purchaser; (7) the defendant’s intent in selecting the

mark; and (8) the likelihood of expansion of the product lines. See JL Beverage

Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1106 (9th Cir. 2016) (citing

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)). A district

court’s likelihood of confusion analysis—including both its application of the

Sleekcraft factors to the facts of the case and its overall conclusion as to likelihood

of confusion—is treated as a factual finding and is therefore reviewed for clear


                                           4
error. See La Quinta Worldwide LLC, 762 F.3d at 874 n.2.

      The district court’s likelihood of confusion analysis was not clearly

erroneous. The district court properly recognized that Sazerac and Fetzer have

overlapping marketing channels and that Buffalo Trace is a conceptually strong

mark, but found that these considerations were outweighed by the lack of similarity

between the parties’ marks, the lack of commercial strength of Buffalo Trace,

Sazerac’s failure to show that Fetzer’s mark was adopted with the intent to

infringe, the absence of evidence of actual confusion or likelihood of expansion,

and the degree of care likely to be exercised by purchasers. Sazerac’s scattershot

challenges to the district court’s findings regarding all eight Sleekcraft factors are

unpersuasive. Moreover, any possible errors were too inconsequential to change

the overall outcome that the factors, taken as a whole, weigh strongly against a

finding that consumers are likely to be confused. See One Indus., LLC v. Jim

O’Neal Distrib., Inc., 578 F.3d 1154, 1162 (9th Cir. 2009) (stating that this court

“ha[s] long cautioned that applying the Sleekcraft test is not like counting beans.”).

      Sazerac argues that the district court erred by resolving the trademark claim

without also stating that it was relying on the Sleekcraft factors, as the court had

done for the trade dress claim. But even if the district court were required to

conduct an independent likelihood of consumer confusion analysis for the

trademark infringement claims, any error was harmless because its likelihood of


                                           5
consumer confusion analysis for Sazerac’s trade dress claim materially captured

the analysis for trademark infringement. For example, with respect to strength, the

district court found the “Buffalo Trace marks” to be conceptually strong. But it

also found their commercial strength “questionable” because Sazerac had “offered

little evidence demonstrating that its Buffalo Trace trade dress or marks have

actual marketplace recognition.” More generally, assessment of Sazerac’s

trademarks “in their entirety and as they appear in the marketplace,” GoTo.com,

Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000), turns on the same

inquiry as Sazerac’s trade dress claim. See Vision Sports, Inc. v. Melville Corp.,

888 F.2d 609, 616 (9th Cir. 1989) (“Apart from the fact that the focus of the

trademark claim is the registered mark alone, the analysis of this claim tracks

closely the trade dress analysis.”).

      Because we affirm the district court’s findings regarding likelihood of

confusion, we need not address Sazerac’s position that its trade dress was

inherently distinctive and, even if not, had acquired secondary meaning.1



1
  The district court also concluded that, even if Sazerac had prevailed on the merits
of its infringement claims, it would not be entitled to injunctive relief because it
had offered no evidence of irreparable harm. We review that finding indirectly
below, in connection with our review of the fee award. Although a failure to show
irreparable harm could present an independent alternative basis for affirming the
result following the bench trial, we need not reach that issue to affirm the post-
bench trial judgment because we affirm based on our review of the merits of
Sazerac’s trademark and trade dress claims.

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      3. “[D]istrict courts analyzing a request for fees under the Lanham Act

should examine the ‘totality of the circumstances’ to determine if the case was

exceptional, exercising equitable discretion in light of the nonexclusive factors

identified” by the Supreme Court “and using a preponderance of the evidence

standard.” SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179, 1181

(9th Cir. 2016) (en banc) (quoting Octane Fitness, LLC v. ICON Health & Fitness,

Inc., 572 U.S. 545, 554 (2014)). Those nonexclusive factors are “frivolousness,

motivation, objective unreasonableness (both in the factual and legal components

of the case) and the need in particular circumstances to advance considerations of

compensation and deterrence.” Octane Fitness, 572 U.S. at 554 n.6 (quoting

Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). A district court’s fee

award is reviewed for abuse of discretion. See SunEarth, 839 F.3d at 1181.

      The district court did not abuse its discretion by awarding Fetzer the fees it

incurred following summary judgment. The court found both that the case had

“exceptionally low merit” and that it was objectively unreasonable for Sazerac to

proceed to a trial where only injunctive relief would be available “without

evidence of irreparable harm.” Sazerac’s focus on the latter finding overlooks that

the district court properly considered the totality of the circumstances. As to

irreparable harm, we are mindful that Fetzer did not challenge the adequacy of

Sazerac’s evidence of irreparable harm through any pretrial motion. But the


                                          7
complete dearth of independent evidence of harm adequately supports the district

court’s conclusion that Sazerac’s manner of litigation, including its decision to

proceed to a trial in which it would seek only injunctive relief without such

evidence, was objectively unreasonable.2 And the district court was correct that

irreparable harm cannot be presumed. See Herb Reed Enters., LLC v. Fla. Entm’t

Mgmt., Inc., 736 F.3d 1239, 1249 (9th Cir. 2013) (“[A]ctual irreparable harm must

be demonstrated to obtain a permanent injunction in a trademark infringement

action.”). The combination of Sazerac’s failure to offer evidence of irreparable

harm and the weakness of the case on the merits persuades us that the district court

did not abuse its discretion by deeming this case exceptional.

AFFIRMED.




2
  Sazerac’s decision to proceed to trial on injunctive relief may be somewhat more
reasonable than the district court thought because, absent litigation to final
judgment, Sazerac might have been unable to appeal the discovery sanction
precluding it from recovering money damages. We need not decide whether the
possibility of reinstating damages following an appeal presented a reasonable basis
for proceeding to trial without evidence of irreparable harm, however, because
Sazerac did not raise this argument either in the district court or on appeal. See
Tibble, 843 F.3d at 1193; Smith v. Marsh, 194 F.3d 1045, 1052 (9th Cir. 1999)
(“[O]n appeal, arguments not raised by a party in its opening brief are deemed
waived.”).

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