                       RECOMMENDED FOR FULL-TEXT PUBLICATION
                           Pursuant to Sixth Circuit I.O.P. 32.1(b)
                                   File Name: 12a0406p.06

                 UNITED STATES COURT OF APPEALS
                                FOR THE SIXTH CIRCUIT
                                  _________________


                                             X
                                              -
 GEORGIA-PACIFIC CONSUMER PRODUCTS LP

                      Plaintiffs-Appellants, --
 and GEORGIA-PACIFIC LLC,

                                              -
                                                            No. 11-4394

                                              ,
                                               >
                                              -
          v.

                                              -
                       Defendant-Appellee. N-
 FOUR-U-PACKAGING, INC.,


                      Appeal from the United States District Court
                       for the Northern District of Ohio at Toledo.
                    No. 3:09-cv-1071—James G. Carr, District Judge.
                        Decided and Filed: December 13, 2012
            Before: SILER and COOK, Circuit Judges; STEEH, District Judge.*

                                   _________________

                                        COUNSEL
ON BRIEF: James D. Curphey, Ryan P. Sherman, PORTER, WRIGHT, MORRIS &
ARTHUR LLP, Columbus, Ohio, W. Kyle Carpenter, WOOLF, McCLANE, BRIGHT,
ALLEN & CARPENTER PLLC, Knoxville, Tennessee, for Appellants. Richard F.
Ellenberger, Garrick O. White, ANSPACH MEEKS ELLENBERGER LLP, Toledo,
Ohio, Albert P. Allan, ALLAN LAW FIRM, PLLC, Charlotte, North Carolina, Michael
P. Thomas, PARICK HARPER & DIXON, LLP, Hickory, North Carolina, for Appellee.
                                   _________________

                                         OPINION
                                   _________________

        SILER, Circuit Judge.        Georgia-Pacific Consumer Products, LP asserted
numerous claims against Four-U-Packaging, Inc., (“Four-U”) alleging that Four-U’s
supply of off-brand paper towels for use in Georgia-Pacific paper-towel dispensers


        *
        The Honorable George C. Steeh, United States District Judge for the Eastern District of
Michigan, sitting by designation.


                                              1
No. 11-4394         Georgia-Pacific, et al. v. Four-U-Packaging                       Page 2


infringed on its trademarks. Four-U moved for summary judgment, arguing that the
claims were barred by the ruling in a similar case brought by Georgia-Pacific in
Arkansas against a different distributor of generic paper towels. The district court
granted summary judgment to Four-U. For the following reasons, we AFFIRM.

                                              I.

        Plaintiffs Georgia-Pacific Consumer Products LP and Georgia-Pacific LLC
(together, “Georgia-Pacific”) manufacture paper-towel dispensers and disposable paper
towels. In 2002, Georgia-Pacific introduced the enMotion system, which includes a
touchless paper-towel dispenser and disposable paper-towel rolls designed for use in the
dispenser. Both of these products are registered with the United States Patent and
Trademark Office.

        Georgia-Pacific leases enMotion dispensers to distributors who then sublease
them to end users such as restaurants and businesses. Under this arrangement, Georgia-
Pacific retains ownership of the dispensers, and end users are granted permission only
to use them. The usage agreements require that enMotion dispensers be stocked
exclusively with enMotion-brand paper towels.

        Four-U is a seller and distributor of janitorial supplies. It distributes paper towels
manufactured by the von Drehle Corporation to end users, such as restaurants and other
commercial establishments. One paper towel sold by von Drehle is the 810B towel,
which fits in enMotion dispensers.

        Georgia-Pacific filed the underlying suit alleging that Four-U’s distribution of
von Drehle paper towels for use in enMotion dispensers constitutes (1) false
representation and false designation of origin and dilution under the Lanham Act,
15 U.S.C. § 1125; (2) contributory trademark infringement under the Lanham Act,
15 U.S.C. § 1114; (3) counterfeiting under the Lanham Act, 15 U.S.C. § 1114(1)(a);
(4) common law unfair competition; (5) tortious interference with contractual
relationships; (6) tortious interference with business relationships; and (7) a violation of
the Ohio Deceptive Trade Practices Act, Ohio Rev. Code §§ 4165.01 et seq.
No. 11-4394           Georgia-Pacific, et al. v. Four-U-Packaging                                Page 3


         Four-U moved for summary judgment on all claims, arguing that the decision in
Georgia-Pacific v. Myers Supply, Inc., No. 6:08-CV-6086, 2009 WL 1850324 (W.D.
Ark. June 26, 2009), another case involving the distribution of off-brand paper towels
for use in enMotion dispensers, precluded Georgia-Pacific’s claims. The district court
granted the motion.

                                                  II.

         We review a grant of summary judgment de novo. Keck v. Graham Hotel Sys.,
Inc., 566 F.3d 634, 636 (6th Cir. 2009). We also review de novo a district court’s ruling
on issue preclusion. Stemler v. Florence, 350 F.3d 578, 585 (6th Cir. 2003).

                                                  III.

A. Georgia-Pacific v. Myers Supply, Inc.

         In the Arkansas case, Georgia-Pacific sued Myers Supply, a distributor of von
Drehle 810B paper towels.1 Georgia-Pacific v. Myers Supply, 2009 WL 1850324, at *1.
Georgia-Pacific alleged that Myers Supply’s distribution of 810B papers towels to
sublessees of enMotion dispensers constituted (1) false representation and false
designation of origin and dilution under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A);
(2) trademark infringement under the Lanham Act, 15 U.S.C. § 1114; (3) counterfeiting
in violation of 15 U.S.C. § 1114(1)(a); (4) common law unfair competition;
(5) conversion; (6) tortious interference with contractual relationships; (7) tortious
interference with business relationships; and (8) a violation of the Arkansas Deceptive
Trade Practices Act. The district court granted summary judgment in part to Myers
Supply and dismissed all of Georgia-Pacific’s claims, except contributory trademark
infringement. That claim, too, was later dismissed following a bench trial in which the




         1
           Georgia-Pacific has filed two additional, similar cases which are not relevant to this appeal.
Georgia-Pacific v. Superior Janitor Supply, No. 1:09-CV-323, in the Southern District of Ohio, and
Georgia-Pacific v. Inland Supply, No. 3:09-CV-00246, in the District of Nevada, are stayed pending
resolution of the appeal now before this court. A third case, Georgia-Pacific v. von Drehle Corporation,
is discussed in Part III., Section C of this opinion.
No. 11-4394           Georgia-Pacific, et al. v. Four-U-Packaging                                Page 4


district court found no likelihood of confusion between the two brands of paper towels.



         The case was affirmed on appeal. Georgia-Pacific Consumer Prods. LP v. Myers
Supply, Inc., 621 F.3d 771, 779 (8th Cir. 2010). The Eighth Circuit agreed with the
district court that the trademarks on enMotion towel dispensers were not “source
identifying” so as to create a likelihood that commercial purchasers of the paper towels
or the people using them would be confused into believing that the trademark on the
paper-towel dispensers indicated the source of towels inside. The Eighth Circuit, like
the district court, relied heavily upon general, pervasive industry practices of “stuffing”
paper towel dispensers with generic products to conclude that there was no likelihood
of confusion. Id. at 775. Absent a finding of confusion, the Eighth Circuit held that the
district court properly dismissed Georgia-Pacific’s trademark infringement claims. It
also affirmed the dismissal of Georgia-Pacific’s other claims.

B. Issue preclusion.

         We must determine whether the Eighth Circuit’s ruling in Myers Supply bars
Georgia-Pacific’s claims against Four-U. Issue preclusion, often referred to as collateral
estoppel, “precludes relitigation of issues of fact or law actually litigated and decided in
a prior action between the same parties and necessary to the judgment, even if decided
as part of a different claim or cause of action.” Gargallo v. Merrill Lynch, Pierce,
Fenner & Smith, Inc., 918 F.2d 658, 661 (6th Cir. 1990). Four requirements must be met
before issue preclusion applies:2

         (1) the precise issue must have been raised and actually litigated in the
         prior proceedings; (2) the determination of the issue must have been
         necessary to the outcome of the prior proceedings; (3) the prior
         proceedings must have resulted in a final judgment on the merits; and
         (4) the party against whom estoppel is sought must have had a full and
         fair opportunity to litigate the issue in the prior proceeding.




         2
            Our enumeration of these factors varies slightly from case to case. However, the substance of
the test, irrespective of its form, remains the same.
No. 11-4394          Georgia-Pacific, et al. v. Four-U-Packaging                      Page 5


Cobbins v. Tenn. Dep’t of Transp., 566 F.3d 582, 589-90 (6th Cir. 2009) (citing
N.A.A.C.P., Detroit Branch v. Detroit Police Officers Ass’n, 821 F.2d 328, 330 (6th Cir.
1987)).

          Georgia-Pacific disputes only the first factor. Therefore, the only issue on appeal
is whether the issues in Myers Supply and this case are identical and whether they were
actually litigated and decided.

          Georgia-Pacific argues that the district court improperly applied issue preclusion
because differences exist between this case and Myers Supply in (1) the facts presented;
(2) the governing law; and (3) the claims asserted. The “identity of issues” element
requires that “the key issue in both cases is the same . . . .” Nat’l Satellite Sports, Inc.
v. Eliadis, Inc., 253 F.3d 900, 908-09 (6th Cir. 2001). Where a litigant brings repeated
actions based upon the same operative facts, issue preclusion may still properly apply
despite a change in legal theory or the “cast of characters-defendants.” Randles v.
Gregart, 965 F.2d 90, 93 (6th Cir. 1992) (citing Hazzard v. Weinberger, 382 F. Supp.
225, 226-29 (S.D.N.Y. 1974), aff’d, 519 F.2d 1397 (2d Cir.1975)).

                 1. The facts presented here and in Myers Supply.

          Myers Supply and the case at bar involve (1) different defendants, each of which
had a different intent with respect to the issue of actual confusion; (2) different
geographic regions; and (3) different consumers. Georgia-Pacific argues that these
distinctions bar application of issue preclusion.

          The fact that two distinct defendants were sued in Myers Supply and this case has
no significant bearing on whether issue preclusion applies. Because the defendant in this
case is the party invoking issue preclusion, defensive collateral estoppel, rather than
offensive collateral estoppel, applies. Mutuality between the parties is not required in
defensive collateral estoppel cases so long as “the plaintiff has had a full and fair
opportunity to litigate the contested issue previously.” McAdoo v. Dallas Corp.,
932 F.2d 522, 523 (6th Cir. 1991). Georgia-Pacific was the plaintiff in Myers Supply,
so the difference in defendants does not render issue preclusion inapplicable.
No. 11-4394         Georgia-Pacific, et al. v. Four-U-Packaging                      Page 6


        The intent of defendants Four-U and Myers Supply, while arguably distinct, is
also inconsequential. Georgia-Pacific alleges that Four-U, unlike Myers Supply,
intended to confuse customers: it purchased 810B paper towels with a plan to sell them
to end-user customers leasing enMotion dispensers. Myers Supply, on the other hand,
was only vaguely aware that its purchasers would stuff enMotion dispensers with 810B
paper towels.

        Georgia-Pacific cites to Audi AG v. D’Amato, 469 F.3d 534, 544 (6th Cir. 2006),
for the proposition that intent may alone be sufficient to support likelihood of confusion.
In Audi AG, however, the intent in question was that of the defendant in adopting a mark
which bore the plaintiff’s mark and which was displayed on the defendant’s website. Id.
In contrast, Georgia-Pacific does not allege that Four-U uses or displays enMotion’s
mark in any way. The relevance of Audi AG in this case is therefore minimal.

        Even if intent alone could determine confusion, the intent of Myers Supply and
Four-U are similar. Myers Supply “admitted with ninety-nine percent certainty” that the
810B paper towels it supplied to end users “would be placed in a Georgia-Pacific
dispenser.” Georgia-Pacific v. Myers Supply, No. 6:08-CV-6086, 2009 WL 2192721,
at *4 (W.D. Ark. July 23, 2009). Evidence presented at trial further illustrated that
Myers Supply knew its customers stuffed enMotion machines with 810B paper towels.
Id. Finally, Myers Supply distributed 810B paper towels to sublessees of enMotion
dispensers with knowledge that these customers were bound by exclusive-use contracts
with Georgia-Pacific. Id. It is apparent that intent, although not an explicit factor within
the Eighth Circuit’s analysis, was in fact considered in Myers Supply. Georgia-Pacific’s
insistence that Four-U’s intent distinguishes this case from Myers Supply is
unconvincing.

        The difference in geographic regions between this case and Myers Supply is also
immaterial. Georgia-Pacific argues that the difference in location speaks directly to the
question of confusion because it implicates different levels of market penetration and
consumer awareness. In Myers Supply, Georgia-Pacific relied upon a survey focused
solely on two discrete markets in Arkansas (the “Seggev” survey). Here, Georgia-
No. 11-4394         Georgia-Pacific, et al. v. Four-U-Packaging                       Page 7


Pacific presents a new survey (the “Ford” survey), which focuses on different geographic
locations. The surveys employ different methodologies, and Georgia-Pacific argues that
the Ford Survey presents a new question of fact regarding actual confusion among a new
group of consumers.

        In support of its argument, Georgia-Pacific relies on our decision more than
ninety years ago in Auto Acetylene Light Co. v. Prest-O-Lite Co., 264 F. 810 (6th Cir.
1920). There, a manufacturer and distributor of acetylene gas brought suit to restrain
alleged unfair competition by a rival corporation. Id. at 811. Auto Acetylene alleged
that Prest-O-Lite recharged its containers with Auto-Acetylene gas, yet passed the
products off as its own. Id. at 812. Nine years prior, Auto Acetylene’s corporate
predecessor brought identical claims against Prest-O-Lite, but the district court, having
found no deception or injury to the plaintiff, dismissed the claims. Id. at 815. This
court, adjudicating the same issue nine years later, refused to apply issue preclusion
because of “materially changed conditions.” Id. We explained that “[c]onditions not
existing during the period covered by the earlier suit were not and could not have been
litigated,” and, therefore, “[t]he cause of action in the second suit was, in a proper sense,
a new right of action.” Id. (emphasis added).

        While it is true that changed conditions may create a new cause of action,
conditions in this case have not so dramatically changed as to trigger application of this
principle. First, Georgia-Pacific’s new survey does not include consumers in Ohio or
Indiana, which is the region where Four-U operates. Therefore, acceptance of Georgia-
Pacific’s argument on this point would allow plaintiffs to avoid issue preclusion simply
by conducting new customer surveys for every case brought on identical facts and issues,
even where the new surveys do not represent facts unique to a new case. Parties may not
create new sets of facts in such a way where the heart of their legal claims, based upon
the same core facts, has already been decided.

        Morever, Georgia-Pacific’s reliance on Auto Acetylene is misplaced because the
differences between Myers Supply and this case are subtle and do not rise to the level of
constituting a new right of action. Georgia-Pacific’s claims rest upon Four-U’s
No. 11-4394         Georgia-Pacific, et al. v. Four-U-Packaging                      Page 8


distribution of 810B paper towels for use in enMotion dispensers; this was the exact set
of facts litigated in Myers Supply. Additional facts, such as geographic location, and for
that matter, Four-U’s intent, the growth of enMotion’s recognition, and Ford’s survey
which reflects a new consumer pool, do not rise to the level of materially changed
conditions which support a new cause of action. Georgia-Pacific purports to argue that
because this case concerns customer confusion in northern Ohio and northeastern
Indiana, the Seggev survey, which gauged confusion in Arkansas, is irrelevant.
However, the new Ford survey is equally as irrelevant to this case as the Seggev survey.
The Ford survey does not analyze consumer data from Ohio and Indiana, but rather
analyzes consumer data samples from Arizona, California, Florida, Illinois,
Massachusetts, Minnesota, New York, and Texas.

        Georgia-Pacific finally contends that as “circumstances evolve over time, issue
preclusion should not be invoked to deny a party its day in court,” suggesting that the
passage of time between Myers Supply and this case has automatically produced factual
differences sufficient to justify reevaluation of the question of confusion. Less than one
year passed between the filings of this case and Myers Supply, and Georgia-Pacific’s
argument that the facts changed so dramatically within this short period of time is
unpersuasive. As such, the factual differences in defendants, surveys, geographic
regions, and mark recognition are not sufficient to bar application of issue preclusion in
this case.

                2. The governing law.

        Georgia-Pacific argues that the law applicable in this case is distinct from the law
applied in Myers Supply. We resolve trademark infringement claims and unfair
competition claims “on the central issue of likelihood of confusion.” Gen. Motors Corp.
v. Keystone Auto. Indus., Inc., 453 F.3d 351, 354 (6th Cir. 2006). We employ an eight-
factor test to determine the likelihood of confusion:

                1. strength of the plaintiff’s mark;
                2. relatedness of the goods;
                3. similarity of the marks;
                4. evidence of actual confusion;
No. 11-4394          Georgia-Pacific, et al. v. Four-U-Packaging                    Page 9


               5. marketing channels used;
               6. likely degree of purchaser care;
               7. defendant’s intent in selecting the mark; [and]
               8. likelihood of expansion of the product lines.

Id. (citing Tumblebus Inc. v. Cranmer, 399 F.3d 754, 764 (6th Cir. 2005)) (brackets in
original). Even though we “balance these factors . . . not all of them are necessarily
helpful in any given case.” Id. (citing Daddy’s Junky Music Stores, Inc. v. Big Daddy’s
Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997)). The test functions “generally
[as] the predominate focus of analysis,” yet it “is not exhaustive, and other variables may
come into play depending on the particular facts presented.” Id. (quoting AMF Inc. v.
Sleekcraft Boats, 599 F.2d 341, 348 n.11 (9th Cir. 1979)) (internal quotation marks and
brackets omitted).

       The Eighth Circuit, on the other hand, considers six factors when determining the
likelihood of confusion:

       1) the strength of the plaintiff’s mark; 2) the similarity between the
       plaintiff’s and defendant’s marks; 3) the degree to which the allegedly
       infringing product competes with the plaintiff’s goods; 4) the alleged
       infringer’s intent to confuse the public; 5) the degree of care reasonably
       expected of potential customers; and 6) evidence of actual confusion.

Davis v. Walt Disney Co., 430 F.3d 901, 903 (8th Cir. 2005) (citing SquirtCo v. Seven-
Up Co., 628 F.2d 1086, 1091 (8th Cir. 1990)). The Eighth Circuit does not regard any
one factor as dispositive and instead employs the factors “as a guide to determine
whether a reasonable jury could find a likelihood of confusion.” Id. (quoting Duluth
News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 1096 (8th Cir 1996)).

       Although the two tests are enumerated differently, their substance is largely
identical. Both tests consider the strength of the plaintiff’s mark, the similarity of the
marks, the evidence of actual confusion, the degree of purchaser care, the defendant’s
intent, and the relatedness (or competition) between the goods. Only two factors from
our test are unique from those of the Eighth Circuit: the marketing channels used and the
likelihood of expansion of the product lines.
No. 11-4394        Georgia-Pacific, et al. v. Four-U-Packaging                   Page 10


       Even assuming that Four-U and Georgia-Pacific use identical marketing
channels, the similarity is unlikely to prove that market confusion exists. Georgia-
Pacific contends that “this factor alone could persuade a jury that market confusion
exists,” but this assertion goes too far because we weigh all the factors combined and no
one factor alone is determinative of whether confusion exists. Since no single factor
trumps another, the Eighth Circuit’s omission of marketing channels from its analysis
should not render the governing laws in Myers Supply and this case so different that
issue preclusion cannot be applied.

       Likewise, the expansion of product lines does not significantly increase the
likelihood of confusion. Georgia-Pacific asserts that the expansion of enMotion’s brand
since its introduction in 2002 creates a new body of facts which warrants additional
analysis. A “strong possibility that either party will expand his business to compete with
the other or be marketed to the same consumers will weigh in favor of finding that the
present use is infringing.” Daddy’s Junky Music, 109 F.3d at 287 (internal quotation
marks and citation omitted). Contrary to Georgia-Pacific’s argument, this factor focuses
not on whether one party’s market-penetration efforts entitle them to protection, but
whether “there is a strong possibility that the actor and the other may become
competitors by the expansion of the other’s business . . . .” Restatement (First) of Torts
§ 731 cmt. c (1938). Viewed in this regard, Georgia-Pacific’s argument misses the
mark: Four-U distributes paper and janitorial supplies; it does not manufacturer
commercial paper systems. Georgia-Pacific’s market penetration, no matter how
aggressive and successful, would not result in direct competition between the parties.

               3. The claims asserted by Georgia-Pacific against Four-U and Myers
                  Supply.

       Georgia-Pacific argues that because it asserts Ohio state law claims and a
trademark-dilution claim against Four-U, which were either not filed against Myers
Supply or not analyzed by the Western District of Arkansas, the Eighth Circuit ruling
cannot preclude these claims now.
No. 11-4394        Georgia-Pacific, et al. v. Four-U-Packaging                   Page 11


       Georgia-Pacific contends that two Ohio state law claims asserted here– tortious
interference with contractual relationships and tortious interference with business
relationships–“are patently different than the Arkansas state law claims asserted against
Myers Supply.” Georgia-Pacific fails to support this conclusion with any explanation of
how the claims differ.

       In order to prove a claim of tortious interference with contractual relationships
under Ohio law, one must show “(1) the existence of a contract, (2) the wrongdoer’s
knowledge of the contract, (3) the wrongdoer’s intentional procurement of the contract’s
breach, (4) the lack of justification, and (5) resulting damages.” Miami Valley Mobile
Health Servs., Inc. v. ExamOne Worldwide, Inc., 852 F. Supp. 2d 925, 942 (S.D. Ohio
2012) (quoting Kenty v. Transamerica Premium Ins. Co., 650 N.E.2d 863, 866 (Ohio
1995)) (internal quotation marks omitted). The elements of a claim for tortious
interference with business relationships are almost identical, the main distinction being
“that interference with a business relationship includes intentional interference with
prospective contractual relations, not yet reduced to a contract.” Id. (quoting Diamond
Wine & Spirits, Inc. v. Dayton Heidelberg Distrib. Co., 774 N.E.2d 775, 780-81 (Ohio
Ct. App. 2002)) (internal quotation marks omitted).

       In comparison, a claim under Arkansas state law for tortious interference with
contractual relationships must satisfy four elements: “(1) the existence of a valid
contractual relationship or a business expectancy; (2) knowledge of the relationship or
expectancy on the part of the interfering party; (3) intentional interference inducing or
causing a breach or termination of the relationship or expectancy; and (4) resultant
damage . . . .” Vowell v. Fairfield Bay Cmty. Club, Inc., 58 S.W.3d 324, 329
(Ark. 2001).

       Contrary to Georgia-Pacific’s position, claims for tortious interference with
contractual relationships and business relationships are nearly identical under Arkansas
and Ohio state laws. The only distinction appears to be that Ohio law requires plaintiffs
to show a lack of justification for the interference. Because Arkansas state law does not
require this element be satisfied, Ohio arguably places a higher burden of proof on
No. 11-4394        Georgia-Pacific, et al. v. Four-U-Packaging                    Page 12


plaintiffs. Georgia-Pacific unsuccessfully litigated these claims against Myers Supply
in Arkansas, so its claims against Four-U under Ohio’s heightened standard would
certainly fail. For these reasons, the difference in state claims asserted against Four-U
and Myers Supply does not prevent the application of issue preclusion.

       Georgia-Pacific also insists that the Myers Supply court failed to address its
trademark-dilution claim, thereby entitling it to litigate that claim against Four-U. The
question we must answer is whether the trademark-dilution claim presented the same
issue and, if so, whether that issue was actually decided. The record from Myers Supply
answers both of these questions in the affirmative.

       The issue presented in Myers Supply was whether the distribution of off-brand,
unmarked paper towels for use in enMotion dispensers diluted Georgia-Pacific’s mark.
The district court dismissed this claim on summary judgment. Although the district
court did not appear to have independently analyzed this claim, its dismissal was proper
because it resolved the issues central to this claim. Trademark-dilution claims require
comparing two marks for, among other things, distinctiveness, similarity, and actual
confusion. Victoria’s Secret Stores v. Artco Equip. Co., Inc., 194 F. Supp. 2d 704, 729
(S.D. Ohio 2002). The focus of this analysis is whether a junior mark dilutes the
distinctive quality of a senior mark. Id. The district court in Myers Supply analyzed this
issue extensively in the context of Georgia-Pacific’s other claims and determined that
the marks bore no similarities. More importantly, the district court explained that “after
the end-user places the towels in the dispenser, no Von Drehle marks remain visible.”
Georgia-Pacific v. Myers Supply, 2009 WL 2192721, at *5. Because it was apparent
that Georgia-Pacific’s trademark-dilution claim had no basis in the facts or law, it is
understandable that the Myers Supply court did not analyze the claim separately.
Nonetheless, this claim was litigated and actually decided, so its preclusive effect
applies.
No. 11-4394        Georgia-Pacific, et al. v. Four-U-Packaging                    Page 13


C. Whether application of issue preclusion will result in inconsistent rulings.

       As a final matter, Georgia-Pacific argues that application of issue preclusion in
this case would directly contradict a ruling by the Eastern District of North Carolina in
Georgia-Pacific v. von Drehle Corporation. One of our primary goals in applying issue
preclusion is to “foster[] reliance on judicial action by minimizing the possibility of
inconsistent decisions.” Montana v. United States, 440 U.S. 147, 153-54 (1979).

       In von Drehle, Georgia-Pacific obtained a judgment against von Drehle.
Georgia-Pacific Consumer Prods. LP v. von Drehle Corp., 856 F. Supp. 2d 750, 753
(E.D.N.C. 2012). Therefore, Georgia-Pacific argues in its submitted brief that issue
preclusion should not apply, since it would directly contradict the von Drehle judgment.

       In the time that this appeal has been pending, however, the von Drehle ruling in
Georgia-Pacific’s favor has been vacated. Id. at 757. The district court set aside the jury
verdict and dismissed all of Georgia-Pacific’s claims based upon issue preclusion. Id.
Because judgment in Georgia-Pacific’s favor was set aside, application of issue
preclusion in this case poses no risk of creating inconsistent rulings.

       Because all of the elements of issue preclusion are met, and because applying the
doctrine poses no risk of creating inconsistent rulings, Georgia-Pacific is barred from
asserting its claims against Four-U.

       AFFIRMED.
