Australian Therapeutic Supplies Pty. Ltd. v. Naked TM LLC

UNITED STATES DISTRICT COURT FOR THE

SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

Case Number: 22-20493-CIV-MARTINEZ

AUSTRALIAN THERAPEUTIC

SUPPLIES PTY LTD,

Plaintiff,

NAKED TM, LLC,

Defendant.

/

ORDER GRANTING MOTION TO CERTIFY INTERLOCUTORY APPEAL

THIS MATTER comes before the Court on Plaintiffs Motion to Certify Summary

Judgment Order for Interlocutory Review (“Motion”), (ECF No. 109). The Court has carefully

considered the Motion, Defendant’s Response in Opposition, (ECF No. 110), Plaintiff's Reply,

(ECF No. 111), the record, and applicable law. For the reasons set for below, Plaintiff's Motion is

GRANTED.

Plaintiff requests certification of this Court’s Order Denying Plaintiff's Motion for

Summary Judgment and Granting Defendant’s Motion for Partial Summary Judgment (“Order”),

(ECF No. 103), for interlocutory review under 28 U.S.C. § 1292(b). Plaintiff would like the Court

to certify to the Eleventh Circuit the following question: what the applicable standard of review is

afforded to district court appeals of Trademark Trial and Appeal Board (“Board”) decisions under

15 U.S.C. § 1071(b) following the Supreme Court’s decisions in Kappos v. Hyatt, 566 U.S. 431

(2012) and B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015).

Section 1292(b) states that an appeal of a non-final order may be permitted should a district

court certify in writing that the order “involves a controlling question of law as to which there is

substantial ground for difference of opinion and that an immediate appeal from the order may

materially advance the ultimate termination of the litigation.” 28 U.S.C. § 1292(b). Thus, to

qualify for leave to file an interlocutory appeal under § 1292(b), Plaintiffs have the burden of

establishing three elements: (1) that a “controlling question of law” exists, (2) over which there is

a “substantial ground for difference of opinion” among courts; and (3) the immediate resolution of

the issue would “materially advance the ultimate termination of the litigation.” Jd; see McFarlin

v. Conseco Servs.,, LLC, 381 F.3d 1251, 1264 (11th Cir. 2004) (noting that the burden of

establishing the § 1292(b) requirements is on the petitioning party). “This standard is conjunctive,

meaning that if any elements are not satisfied, the Court must deny interlocutory review.” Havana

Docks Corp. v. Norwegian Cruise Line Holdings, Ltd., No. 19-cv-23591, 2020 WL 3433147, at

*2 (S.D. Fla. June 23, 2020) (quoting Jn re Yormak, No. 2:17-cv-73-FtM-38, 2017 WL 2645601,

at *2 (M.D. Fla. June 19, 2017)).

“The proper division of labor between the district courts and the court of appeals and the

efficiency of judicial resolution of cases are protected by the final judgment rule, and are threatened

by too expansive use of the § 1292(b) exception to it.” McFarlin, 381 F.3d at 1259. The Supreme

Court has therefore recognized that an interlocutory appeal under 28 U.S.C. § 1292(b) is reserved

for “exceptional cases.” Caterpillar Inc. v. Lewis, 519 U.S. 61, 74 (1996). Ultimately, there is a

“strong presumption against interlocutory appeals,” and both the district and circuit courts are

afforded substantial discretion in certifying issues for this purpose. OFS Fitel, LLC y. Epstein,

Becker & Green, P.C., 549 F.3d 1344, 1359 (11th Cir. 2008).

The Court considers whether Plaintiff satisfies its high burden under section 1292(b),

addressing the three statutory elements for certifying an interlocutory appeal. First, Plaintiff has

framed an issue which presents a controlling question of law. A “controlling question of law” is

one that “has reference to a question of the meaning of a statutory or constitutional provision,

regulation, or common law doctrine[.]” McFarlin, 381 F.3d at 1258. It should be an “abstract legal

issue” of “‘pure’ law” the circuit can answer “quickly and cleanly” without having to “delve

beyond the surface of the record in order to determine the facts.” Jd. at 1258-59. “The antithesis

of a proper § 1292(b) appeal is one that turns on . . . whether the district court properly applied

settled law to the facts or evidence of a particular case.” Jd. at 1259. In its Order, this Court applied

the “thorough conviction” standard of review instead of de novo, which Plaintiff argues barred its

new void ab initio causes of action and evidence, thus resulting in the denial of Plaintiff's motion

for summary judgment. The Court agrees with Plaintiff that the question sought to be certified is

a controlling question of law.

The next element, whether a substantial ground for difference of opinion exists, requires

there be a legal issue that is “(1) difficult and of first impression, (2) the district courts of the

controlling circuit are split as to the issue, or (3) the circuits are split on the issue.” Flaum v.

Doctor’s Assocs., Inc., No. 16-61198-CIV, 2016 WL 8677304, at *2 (S.D. Fla. Oct. 27, 2016)

(internal quotation marks and citation omitted). In its Motion, Plaintiff highlights how both district

courts in this circuit and other circuits are split in regard to which standard of review to apply. (See

Mot. at 13-18). Plaintiff also notes that the Eleventh Circuit is among the minority regarding this

issue. This Court agrees that the second element is satisfied.

Lastly, the third factor, that an immediate appeal from the Order will materially advance

the ultimate termination of this litigation, asks whether “resolution of a controlling legal question

would serve to avoid a trial or otherwise substantially shorten the litigation.” McFarlin, 381 F.3d

at 1259 (citations omitted). The Court notes that trial is set to commence soon to determine

Defendant’s damages because this Court granted its motion for partial summary judgment.

Plaintiff argues that certification of the Court’s summary judgment order “will advance judicial

economy by substantially shortening this litigation and avoid a premature trial on Defendant’s

breach of contract counterclaim damages, only to have the case appealed following entry of final

judgment.” (Mot. at 18-19). Alternatively, if the Eleventh Circuit were to affirm the thorough

conviction standard, Plaintiff argues that it would “likely to solidify the parties’ bargaining

positions and promote settlement.” (/d. at 19) (citation omitted). The Court agrees that resolution

of the question presented by Plaintiff would shorten this litigation.

Accordingly, it is hereby ORDERED AND ADJUDGED that Plaintiff's Motion, (ECF

No. 109), is GRANTED. The following question is certified under section 1292(b): what the

applicable standard of review is afforded to district court appeals of Trademark Trial and Appeal

Board (“Board”) decisions under 15 U.S.C. § 1071(b) following the Supreme Court’s decisions in

Kappos v. Hyatt, 566 U.S. 431 (2012) and B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138

(2015).

DONE AND ORDERED in Chambers at Miami, Florida this 23 day of February 2024.

6p

UNITED STATES DISTRICT JUDGE

Copies provided to:

All Counsel of Record