                                                                           FILED
                           NOT FOR PUBLICATION                              FEB 05 2010

                                                                        MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



LARIN CORPORATION, a California                  No. 08-55625
Corporation,
                                                 D.C. No. 2:08-cv-00135-ODW-OP
             Plaintiff - Appellant,

  v.                                             MEMORANDUM *

GWEN MUELLER, an individual,

             Defendant - Appellee.



LARIN CORPORATION, a California                  No. 08-55790
Corporation,
                                                 D.C. No. 5:06-cv-01394-ODW-OP
             Plaintiff - Appellant,

  v.

ALLTRADE INC., a California
corporation; ALLTRADE TOOLS LLC;
ANDRE LIVIAN,

             Defendants - Appellees.




        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
LARIN CORPORATION,                               No. 08-56191

               Plaintiff-counter-defendant -     D.C. No. 5:06-cv-01394-ODW-OP
Appellant,

  v.

ALLTRADE, INC., a California
corporation; ALLTRADE TOOLS LLC, a
California limited liability corporation;
ANDRE LIVIAN,

               Defendants-counter-claimants
- Appellees.



                     Appeal from the United States District Court
                        for the Central District of California
                      Otis D. Wright, District Judge, Presiding

                      Argued and Submitted December 9, 2009
                               Pasadena, California

Before: PREGERSON, McKEOWN and PAEZ, Circuit Judges.

       This trademark infringement suit between Larin Corp. (“Larin”) and

Alltrade Inc., Alltrade LLC and Andre Livian (“Alltrade”) presents three issues on

appeal. First, we consider whether the district court abused its discretion in

granting Alltrade’s motion for summary judgment on judicial estoppel grounds.

Second, we consider whether the district court erred in denying Larin’s motion to

add a claim of false advertising to the pretrial order. Finally, we consider whether


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the district court abused its discretion in dismissing as duplicative Larin’s separate

suit against former Alltrade employee Gwen Mueller.

         We review de novo the district court’s grant of summary judgment, San

Pedro Hotel Co. v. City of Los Angeles, 159 F.3d 470, 477 (9th Cir. 1998), but

review the application of judicial estoppel to the facts of the case for abuse of

discretion. Williams v. Boeing Co., 517 F.3d 1120, 1134 (9th Cir. 2008). We

review the district court’s dismissal of the suit against Gwen Mueller for abuse of

discretion. Adams v. Cal. Dep’t of Health Servs., 487 F.3d 684, 688 (9th Cir.

2007).

                            I. T RADE D RESS INFRINGEMENT

         Both parties sell hydraulic-lift stools styled like motorcycle seats. Larin

claims that the photographs and coloring on the packaging in which Alltrade sells

its stools is confusingly similar to the photographs and coloring on the packaging

in which Larin sells its stools. Larin seeks relief under § 43(a) of the Lanham Act.

15 U.S.C. § 1125(a). Alltrade claims that Larin should be judicially estopped from

pursuing a claim for trade dress infringement because during discovery Larin

shifted from a trade dress infringement claim to a false advertising claim (which

may also be remedied under § 43(a)) and Alltrade was thus prejudiced in preparing

its defense.


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      We do not opine as to whether the district court correctly concluded that

Larin’s attorney attempted to mislead Alltrade’s counsel during discovery—and

the district court’s frustration with said counsel’s lack of clarity is certainly

understandable—but assuming there is error to be remedied here, judicial estoppel

is the wrong tool for the job. We uphold a district court’s application of judicial

estoppel when: “1) the party’s current position is ‘clearly inconsistent’ with its

earlier position, 2) the party was successful in persuading a court to accept its

earlier position, and 3) the party would ‘derive an unfair advantage or impose an

unfair detriment on the opposing party if not estopped.’” Williams, 517 F.3d at

1134 (quoting New Hampshire v. Maine, 532 U.S. 742, 750-51 (2001)). None of

those elements are met in this case.

      Larin’s scattered references to false advertising during discovery do not

support the contention that Larin adopted disparate positions that were clearly

inconsistent with one another. Throughout the record, the essential nature of the

dispute is readily apparent. The record is replete with claims about and discovery

related to the similarities between the Larin and Alltrade boxes. Claims of false

advertising and trade dress infringement are not mutually exclusive, and plaintiffs

can and do advance both theories in a complaint. See, e.g., Cooper Indus. v.

Leatherman Tool Group, 532 U.S. 424, 428 (2001). Alltrade acknowledged during


                                            4
the pretrial conference that the elements of false advertising and trade dress

infringement overlap to some degree. Larin’s self-definition of “trade dress”

during discovery muddied the waters, but in the end did not change the essential

nature of its claims.

      We have also “restricted the application of judicial estoppel to cases where

the court relied on, or ‘accepted,’ the party’s previous inconsistent position.”

Hamilton v. State Farm Fire & Cas. Co., 270 F.3d 778, 782-83 (9th Cir. 2001); see

also United National Insurance Co. v. Spectrum Worldwide, Inc., 555 F.3d 772,

779 (9th Cir. 2009). Nothing in the record demonstrates that Larin succeeded in

persuading the district or magistrate judges to accept the position that Larin had

abandoned its trade dress infringement claim.

      Finally, there is insufficient evidence to support the claim that Alltrade was

prejudiced by Larin’s behavior. Despite the district court’s determination that

Larin’s counsel was playing “bait-and-switch” with its theories of liability,

Alltrade was able to obtain evidence relevant to both false advertising and trade

dress infringement defenses. Indeed, while Alltrade asserted on appeal that it had

not conducted sufficient discovery on trade dress infringement elements like

secondary meaning, its final pretrial disclosure tells a different story. There,

Alltrade asserted, among other things, that its expert was ready to testify regarding


                                           5
secondary meaning in the Larin and Alltrade packaging.

      Judicial estoppel is not applicable in this case because none of the elements

are met. We therefore reverse the grant of summary judgment with regard to

Larin’s trade dress infringement claim against Alltrade and remand.

                          II. F ALSE A DVERTISING C LAIM

      The district court denied Larin’s motion for reconsideration of its finding

that Larin abandoned any claim for false advertising, because the false advertising

claim was not part of the pretrial order. We affirm that ruling. In any event, this

issue is moot because Larin’s argument on appeal was predicated on affirmance of

dismissal of the trade dress infringement claim, which we reverse.

                             III. M UELLER C OMPLAINT

      We affirm the district court’s dismissal of Larin’s claims against Gwen

Mueller. The claims against Mueller were identical to those pled against Alltrade,

and Alltrade identified Mueller as an employee involved with the creation of the

Alltrade trade dress prior to the scheduling order’s deadline to add new parties.

The district court did not abuse its discretion in dismissing the duplicative

complaint against Mueller.




                                           6
                              IV. W AIVER OF C LAIMS

      Larin asserted in the Statement of Issues in its opening brief that the district

court erred in granting attorneys’ fees to Alltrade pursuant to 28 U.S.C. § 1927.

Larin did not, however, offer any argument or authority on this issue and the

argument is therefore waived. Kohler v. Inter-tel Technologies, 244 F.3d 1167,

1182 (9th Cir. 2001). We affirm the grant of attorneys’ fees.

      Larin also failed to develop its passing assertion that the district court

demonstrated prejudice against Larin’s counsel, and that we should therefore direct

the case to a different district judge. This argument is waived, and we are

confident that the assigned district judge can give a fair hearing to Larin’s trade

dress infringement claim.

      We AFFIRM the dismissal of the Mueller complaint, the dismissal of the

false advertising claim, and the grant of attorneys’ fees pursuant to 28 U.S.C.

§ 1927, and REVERSE the grant of Alltrade’s motion for summary judgment on

the trade dress infringement claim. Each side shall bear its own costs on appeal.




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