* Judge John R. Brown was on the panel that heard oral argument in this case, but passed away

before the decision was entered, and the case is accordingly decided by a quorum. See 28 U.S.C.

§ 46(d). United States Court of Appeals,

Fifth Circuit.

No. 91-4457.

MATRIX ESSENTIALS, INC., Plaintiff-Counter-Defendant, Appellant-Cross-Appellee,

v.

EMPORIUM DRUG MART, INC., OF LAFAYETTE, d/b/a Drug Emporium,

and

Emporium Drug Mart, Inc., of Shreveport, d/b/a Drug Emporium, Defendants-Counter

Claimants, Appellees-Cross-Appellants.

April 19, 1993.

Appeals from the United States District Court for the Western District of Louisiana.

Before GARWOOD and EMILIO M. GARZA, Circuit Judges. * *

GARWOOD, Circuit Judge:

................................................................................................................................................................................................................................................................ f-appellant Matrix Essentials, Inc

. (Matrix) appeals a summary judgment rendered agai nst it by the di stri ct court on

claims of trademark infringement and unfair competition stemming from the unauthorized sale of its

products by defendant-appellee-cross-ap pellant Emporium Drug Mart, Inc., (Emporium). 756

F.Supp. 280. Emporium cro ss-appeals the summary judgment rendered against it on its antitrust

claims against Matrix. Finding no error below, we affirm both judgments.

Facts and Proceedings Below

Matrix is a manufacturer of specialty hair-care pr o ducts that are normally sold only in

hair-cutting salons. The products are labeled with Matrix's registered trademark and are often (but

not always) marked with a label stating that they are intended to be sold only in professional salons.

Matrix distributes its products through wholesale distributors who are contractually bound to resell

Matrix products only to licensed cosmetologists.

Matrix intends that its products either be used by licensed cosmetologists on their clients in1 Matrix also sought relief for common law trademark infringement and unfair competition,

among other claims. These were dismissed under Rule 12(b)(6) and Matrix does not challenge or

appeal the dismissal of these claims. a salon, or be sold by a licensed cosmetologist to a consumer. Matrix also intends that such consumer

sales be accompanied by a consultation so that the consumer may be directed to the particular Matrix

product appropriate for the consumer's hair and scalp condition. To this end, Matrix spends several

millio ns of dollars per year training cosmetologists in the use and sale of Matrix products. Matrix

does not, however, monitor or otherwise act to attempt to insure that consumer sales of Matrix

products happen only after consultation.

Emporium is the owner of two independent, high-volume, low-m ark-up, over-the-counter

retail drug stores. In 1988 Emporium procured and stocked on its shelves a large quantity of Matrix

products with Matrix labeled instructions for home use. These products bore the Matrix trademarks

and were the same products available in salons. Many of the Matrix products stocked by Emporium

bore the labels "Sold Only in Prof essio nal Salons," or "Guaranteed Only When Purchased in

Professional Salons."

Upon learning of Emporium's sale of Matrix products to consumers, a group of local salons

complained to Matrix about competition from Emporium. Matrix's local wholesale distributor also

co mplained. In July 1989, Matrix authorized its local distributor to buy out Emporium's stock of

Matrix products at Matrix's expense. Emporium was able to restock its shelves with Matrix products,

however, and Matrix subsequently demanded that Emporium cease its unauthorized sales of Matrix

products.

When Emporium refused, Matrix on November 7, 1989, filed this suit in the United States

District Court for the Western District of Louisiana alleging trad emark infringement and unfair

competition under the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), and unfair competition under the

Louisiana Unfair Trade Practices and Consumer Protecti on Law, L.S.A. § 51:1401. 1 Emporium filed

a counterclaim alleging that Matrix and its distributors and salon retailers had engaged in an unlawful

conspiracy to restrain trade in violation of section 1 of the Sherman Act, 15 U.S.C. § 1.

Each party moved for dismissal or summary judgment of the other's claims. The district courtgranted Matrix's motion for dismissal or summary judgment as to Emporium 's antitrust claims on

December 13, 1990. Subsequently, Matrix presented evidence regarding its salon education program

and sales/distribution network, including the deposition tes t imo ny of Matrix's president and CEO.

The district court granted Emporium's motion for summary judgment on February 15, 1991. Both

parties filed timely notices of appeal.

Discussion

I. Trademark and Unfair Competition Claims.

There are no disputed issues of material fact here. Summary judgment is proper "against a

party who fails to make a showing sufficient to establish the existence of an element essential to that

party's case, and on which that party will bear the burden of proof at trial." C elotex Corp. v. Catrett,

477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). Matrix bears the burden of proof

here. Taking the evidence in the light most favorable to Matrix, the non-moving party, L avespere

v. Niagara Machine & Tool Works, Inc., 910 F.2d 167, 178 (5th Cir.1990), Emporium purchased

Matrix products and sold them without authorization by Matrix. Matrix has made no showing or

allegation that the products are counterfeit, or that Emporium has tampered with them in any way.

Matrix acknowledges that, at least physically, the products sold by Emporium are of the same origin

and quality as those sold by salons.

Matrix bases its claim

o n two theories. The first theory is that Emporium is not selling

"genuine" Matrix products, because it is selling them without the professional consultation that is

supposed to be available when a consumer chooses a Matrix product to purchase. Thus, according

to Matrix, Emporium is circumventing an important quality control function of Matrix's distribution

system. The product that an Emporium customer buys, without this potential assistance in selection,

is therefore not the full, complete, and genuine Matrix product.

Matrix's second theory is that by stocking Matrix products, Emporium is deceiving the public

into believing that Matrix has authorized Emporium to do so. This, according to Matrix, "is likely

to cause confusion, or to cause mistake, or to deceive as to the affiliat ion, connection, or association"

of Emporium with Matrix "or as to the origin, sponsorship, or approval" by Matrix of Emporium'ssale of Matrix products. 15 U.S.C. § 1125(a)(1).

Because liabilit

y under the Lanham Act is predicated on the use of a trademark in a way that

is "likely to cause confusion," Soweco, Inc. v. Shell Oil Co

., 617 F.2d 1178, 1185 (5th Cir.1980)

(quoting 15 U.S.C. § 1114( 1)(a), c ert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816

(1981)), consumer confusion must be the linchpin of our analysis in this case. As recognized by the

Fourth and Ninth Circuits (as well as various district courts), the general rule is that "trademark law

does not apply to the sale of genuine goods bearing a true mark, even if the sale is without the mark

owner's consent." S hell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 107 (4th Cir.1991)

(citing NEC Electronics v. CAL Circuit Abco, 810 F.2d 1506 (9th Cir.), cert. denied, 484 U.S. 851,

108 S.Ct. 152, 98 L.Ed.2d 108 (1987)).

In Shell, supra, t he defendant was prohibited from selling bulk oil under Shell trademarks

because the distributor did not observe the strict tank and line cleaning requirements t hat Shell

required of its authorized distributors. These requirements insured that pure Shell-trademarked oil

was not subjected to residue impurities in the tanks and lines of the distributors as it made its way to

customers. Shell, supra, 928 F.2d at 107.

In El Greco Leather Products Co., Inc. v. Shoe World, Inc., 806 F.2d 392 (2d Cir.1986), cert.

denied, 484 U.S. 817, 108 S.Ct. 71, 98 L.Ed.2d 34 (1987), the defendant, a discount shoe retailer,

bought shoes bearing the plaint iff's trademark from a Brazilian manufacturer that had manufactured

the shoes pursuant to the plaint iff's order. The manufacturer sold the shoes to the defendant after the

plaint iff cancelled the order because of late delivery. The Second Circuit held that, because the shoes

imported by the defendant had not undergone the careful quality inspection by the plaint iff's Brazilian

agent that was normally required by the plaint iff before it sold its shoes in the United States, the shoes

imported by the defendant were not "genuine."

Similarly, in Adolph Coors Co. v. A. Genderson & Sons, Inc., 486 F.Supp. 131

(D.Colo.1980), the court found that the Coors beer sold by the defendant distributor was not

"genuine" Coors beer (though it had been manufactured and labeled by Coors) because the defendant,

an unauthorized distributor, did not maintain the careful refrigeration requirements in transportingand storing the beer mandated by Coors. Coors beer contained no preservatives, and if allowed to

sit unrefrigerated for long periods of time could deteri orate. The district court therefore determined

that the beer sold by the defendant was therefore not "genuine" Coors beer. Id. at 134-137.

Not all value-added functions dictated by the manufacturer are required to insure a "genuine"

pr oduct, however. In H .L. Hayden Co. of N.Y., Inc. v. Siemens Medical Systems, Inc., 879 F.2d

1005 (2d Cir.1989), the defendant imported and sold thro ugh it s catalogue dental equipment

manufactured by the plaint iff and bearing the plaint iff's trademarks. The defendant did not install the

equipment sold, though the plaint iff required its authorized distributors to install the equipment they

sold. The plaintiff argued that because its "product" was not merely what it manufactured, but rather

what it manufactured and authorized its dealers to inst all, t he defendant was not selling a genuine

p roduct. The Second Circuit rejected this contention, ruling that so long as customers knew t hat

what they purchased from the defendant was only the plaint iff's manufactured product and did not

include installation, no one was deceived and the product was genuine. Id. at 1022-24.

A similar result was reached in NEC Electronics, supra, where the Ninth Circuit found that

computer chips manufactured by NEC in Japan and imported b y t he defendant were genuine

products, though NEC's American subsidiary owned the trademark on the computer chips. The court

found that "the mark "NEC' on [defendant's] products truly designates the chips as having been

manufactured under the control of NEC-Japan ..." and that "because NEC-Japan and NEC-USA are

commonly controlled, there is no danger to the latter in bei n g unable to control the quality of the

former's products." NEC Electronics, supra, 810 F.2d at 1510.

Here, Matrix claims that the products sold by Emporium, without the potential for concurrent

consultation or supervision by a licensed cosmetologist, were not "genuine" products. Matrix argues

that absent such a consultation, an unwary customer is likely to choose a Matrix product that is not

formulated for his or her hair or scalp condition and thereby obtain unsatisfactory results, thus

damaging Matrix's goodwill.

The critical element that is missing from Matrix's argument and from the facts of this case,

however, is the element of consumer conf usio n. The common thread in all the above cited cases2 Nor do we consider Polymer Technology Corp. v. Mimran, 975 F.2d 58 (2d Cir.1992),

recently cited to us by Matrix, as persuasive authority for a contrary result here. There two

distinct lines of contact lens care products were involved. One line was packaged for retail sale, where trademark infringement was found is that each involved some defect (or potential defect) in

the product itself that the customer would not be readily able to detect. The oil, shoes, and beer from

Shell, El Greco, and Coors all contained or could potentially contain a latent product defect due to

the unauthorized distributor's failure to observe the manufacturer and mark owner's ri gorous quality

control standards. Most importantly, a consumer would not necessarily be aware of the defective

condition of the product and would thereby be confused or deceived.

Such was not the case with the medical equipment in Siemens, the computer chips in NEC,

or the hair-care products here. No customer who went to Emporium to buy Matrix products was

confused or deceived as to whether they were getting a cosmetologist's consultation with their

purchase. Though Matrix claims that an uninformed customer could mist akenly have bought the

wrong product for his or her hair or scalp conditions and that this could potentially have damaged

Matrix's consumer goodwill, we will not find a cause of action under the Lanham Act where, as here,

there is no evidence of consume r co nfusion or deception. We decline to expand the reach of the

Lanham Act in a way that makes Matrix's complaint actionable thereunder.

We further note that Matrix's claim that having its products sold through Emporium would

erode its goodwill does not even rest on a sound factual base. The evidence before the district court

clearly est ablishes that, although Matrix spends a great deal of time and money educating

cosmetologists in the use and sale of its products, it does not require, monitor, or otherwise attempt

to insure that consumers who purchase Matrix products in salons are assisted by a cosmetologist in

selecting the proper Matrix product. Mat rix products may be purchased in a salon either with or

without a cosmeto lo gist 's advice. We cannot ignore the fact that if a pre-sale consultation is a

necessary part, in Matrix's opinion, of a "genuine" Matrix product, then many of the sales that occur

in salons are not sales of "genuine" Matrix products either. Thus, Matrix's use of professional hair

care salons as its exclusive distribution channel seems more marketing-related than quality-related.

This fact makes this case even more analogous to Siemens than to Coors, El Greco, or Shell. 2and contained Food and Drug Administration (FDA) required consumer labeling, warnings, and

tamper-evident seals. The other line was distributed to professionals such as ophthalmologists

and optometrists; the FDA regulations did not apply to this line and its packaging had not been

submitted to the FDA for approval; it was frequently distributed in bulk, with individual items not

having the labeling or warnings, and sometimes not the tamper-evident seals, required by the FDA

for items sold at retail. Id. at 60-61. The manufacturer and trademark owner, Polymer, claimed

that the defendant sold professional kits at retail, and also broke them down and sold separately at

retail the individual bottles of professional solutions. The district court denied a temporary

injunction. On appeal, a divided Second Circuit panel remanded for reconsideration because the

district court had apparently not considered evidence that the defendant broke the packaging on

the professional kits and sold the individual items separately at retail. The majority noted

Polymer's claim "that distribution of professional solutions in the retail market subjects it to

criminal penalties, and creates a public hazard." Id. at 62. The majority also stated, however, that

on remand "Polymer must show more than its quality control efforts." Id. at 63. Here there is no

repackaging and no alteration of the contents labeling, use instructions, or warnings; nor is there

any claim of FDA violation. We further note in respect to the claim of unauthorized distribution,

the Mimran majority, citing Hayden, stated that "[t]he element of consumer confusion must also

be present." Mimran at 63. There is no such showing here. The second theory under which Matrix argues its case is that by stocking Matrix products,

Emporium is violating 15 U.S.C. § 1125(a) by misleading consumers into believi ng that it is an

authorized retailer of Matrix products and that Matrix condones the sale of i ts products through

ordinary retail drugstores. As with trademark infringement, the touchsto ne o f a section 1125(a)

unfair competition claim is whether the defendant's actions are "likely to cause confusion."

Here, Emporium's sale of Matrix products can no t cause confusion as to manufacture or

sponsorship be cause the goods were manufactured and labeled by Matrix. Rather, the underlying

assumption relied upon by Matrix to support this second theory is that consumers assume when they

see a product on a store shelf that the manufacturer meant for it to be there. The alleged harm is that

a customer seeing a Matrix product on an Emporium shelf will assume that Matrix has decided that

salon consultation on the customer's choice of the appropriate Matrix product is unnecessary, since

Matrix is allowing its products to be sold to the public in an environment where such consultation is

not concurrently available.

Section 1125(a) states:

"Any person who, on or in connection with any goods or services, or any container for goods,

uses in commerce any word, term, name, symbol, or device, or any combination thereof, or

any false designation of origin, false or misleading description of fact, or false or misleading

representation of fact, which—

"(1) is likely to cause confusion, or to cause mistake, or to deceive as to th e affiliation,3 Because section 1125(a) was substantially amended in 1988, the amendment taking effect

after this action was filed, a threshold issue with regard to this second theory is whether to apply

the pre- or post-amendment version of section 1125(a). Fortunately, the answer does not matter.

Congress, in amending section 1125(a), intended merely "to codify the interpretation

[pre-amendment section 1125(a) ] has been given by the courts." S.Rep. No. 515, 100th Cong.,

2d Sess. 40, reprinted in 1988 U.S.Code Cong. & Admin.News 5577, 5603. See

McNeil—P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1548 n. 1 (2d Cir.1991);

ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 963-64 n. 6 (D.C.Cir.1990). We refer

to the post-amendment text of section 1125(a) in this decision. connection, or association of such pers on wit h another person, or as to the origin,

sponsorship, or a pproval of his or her goods, services, or commercial activities by another

person....

"shall be liable in a civil action...." 3

Though, as Matrix claims, a customer might well be confused as to whether Matrix believes

a salon consultation is necessary in selecting its products, it is difficult to say that Emporium has made

a "misleading representation of fact," which is the only language in the text of section 1125(a) that

could possibly cover Emporium's acquisition and stocking of Matrix products. The parties have not

directed this Court to any cases that have addressed this particular question.

The Ninth Circuit appears to have spoken to this issue in NEC, supra, when it said, "[o]nce

a trademark owner sells his product, the buyer ordinarily may resell the product under the original

mark without incurring any trademark law liability. " N EC, supra, 810 F. 2d at 1509 (emphasis

added). This language would seem to exclude liability fo r mere reselling under all sections of the

Lanham Act, including section 1125(a), for infringement and unfair competition.

Affirmat ive misrepresentation, such as placing a plaint iff's tradem ark on the defendant's

advertisements, is clearly a violation of section 1125(a), see Trail Chevrolet, Inc. v. General Motors

Corp., 381 F.2d 353 (5th Cir.1967). However, Matrix is not able to point to any authority holding

that the unauthorized stocking of a trademark owner's products, without more, rises to the level of

a "misleading representation of fact."

For example, Matrix cites S tormor, A Division of Fuqua Industries, Inc. v. Johnson, 587

F.Supp. 275 (W.D.Mich.1984), for the proposition that the unauthorized sale of trademarked

prod uct s co nstitutes a violation of section 1125. However, in S tormor, the defendant not only

engaged in unauthorized selling of the plaint iff's trademarked products, but also used pla int iff's4 Cf. WCVB-TV v. Boston Athletic Ass'n, 926 F.2d 42 (1st Cir.1991) (television station did not

violate 15 U.S.C. §§ 1114 or 1125(a) in televising Boston Marathon using plaintiff's "Boston

Marathon" trademark).

5 Though nominally appealing a claim under the Louisiana Unfair Trade Practices and

Consumer Protection Law, LSA-RS § 51:1401, Matrix makes no separate argument nor cites any

cases construing that statute in its briefs to this Court. Further, the district court considered

Matrix's section 51:1401 state law claims together with the Lanham Act claims. For these reasons

we affirm, without separate discussion, the district court's grant of summary judgment with regard

to Matrix's Louisiana law claims.

6 On appeal, Emporium raises only conspiracy claims under section 1 of the Sherman Act. promotional literature stamped with defendant's name, and used the plaint iff's trade marks at

defendant's trade show booth. I d. at 279. 4 Thus, there was evidence, apart from simply offering the

plaint iff's products for sale, that the defe ndant actively misled its customers into believing that

defendant was part of the plaintiff's authorized sales network. Such is not the case here.

We are not persuaded by Matr ix's arguments to expand the reach of section 1125(a) to

provide a cause of action merely for the unauthorized stocking and sale of a manufacturer's products.

Absent more culpable conduct on the part of the seller, we are unwilling to find misrepresentation in

the mere act of putting a manufacturer's product on one's shelf and offering it for sale. We therefore

affirm the dist rict court's grant of summary judgment in favor of Emporium on the trademark and

unfair competition claims. 5

II. Antitrust Counterclaim.

The district court's decision to grant summary judgment o n Empo rium's cross-claim is

well-supported by existing antitrust law as articulated both by the Supreme Court and this Circuit.

This issue is controlled by this Court's analysis in Culberson, Inc. v. Interstate Elec. Co., Inc., 821

F.2d 1092 (5th Cir.1987), a case factually similar to th is one. In C ulberson this Court affirmed a

district court's summary

judgment ruling that a defendant-manufacturer's decision to prevent its

distributors from selling to an unauthorized distributor was not a violation of section 1 of the

Sherman Act. The manufacturer in C u lberson had adopted a policy against subdistribution and

transshipme nt after many dealer and distributor complaints that such practices were hurting their

businesses. Id. at 1093. 6Vertical restraints that do not deal specifically with price fixing are not per se illegal under

the antitrust laws and are instead subject to the rule of reason. B usiness Electronics Corp. v. Sharp

Electronics Corp., 485 U.S. 717, 108 S.Ct. 1515, 99 L.Ed.2d 808 (1988); C ontinental T.V., Inc. v.

GTE Sylvania, Inc., 433 U.S. 36, 97 S.Ct. 2549, 53 L.Ed.2d 568 (1977). Here, there is no evidence

of price fixing and we therefore subject Matrix's conduct to rule of reason review. Under the rule of

reason, in order for Emporium's claim to survive a summary judgment motion, the evidence must tend

to exclude the possibility that Matrix acted independently in restricting the distribution of its products.

See Culberson, supra, 821 F.2d at 1093.

It is undisputed that ever since a time long before the events at issue Matrix had a consistent

policy of selling its products only through salons because this assured the concurrent availabilit y of

cosmetologist consultation, either, as Matrix has asserted, to enhance appropriate product selection,

or to enhance product public image. That this policy is not enforceable against Emporium under the

Lanham Act does not mean that i t fails to believably explain Matrix's having independently both

refused to sell its products to Emporium and attempted to insure that its distributors and retailers did

no t do so eit her. The fact that Matrix had such a policy long before it received complaints from

salons and distributors about Emporium's selling its products makes the case for affirming summary

judgment here even stronger than it was in Culberson.

Emporium bases its claim on the fact that a group of salons and distributors first noticed that

Emporium was stocking Matrix products and that they notified and requested action from Matrix.

We held in Culberson, however, that distributor complaints are to be expected in a situation such as

this one and are not by themselves indicative of an illegal horizontal conspiracy. Id.

Emporium's final complaint, that Matrix violated the antitrust laws by filing this lawsuit, is

similarly unfounded. This Court stated in C oastal States Marketing, Inc. v. Hunt, 694 F.2d 1358 (5th

Cir.1983), that:

"A litigant should enjoy petitioning immunit y from the antitrust l aws so long as a genuine

desire for judicial relief is a significant motivating factor underlying the suit. This criterion

takes account of the mixed motives that usually actuate human conduct, yet requires that

good faith in seeking the protection of the court be a substantial factor." Id. at 1372.

T here is no evidence that Matrix filed its suit solely as a "sham." Matri x i s therefore entitled toprotection from antitrust liability for filing its action against Emporium.

Conclusion

Matrix's trademark infringement and unfair competition claims stretch existing legal principles

in this area too far, and fail to show an actionable claim under the law as it exists today. Furthermore,

we decline to expand existing law to accommodate Matrix's perceived injuries. Emporium's antitrust

claim is foreclosed by this Court's precedent. The present appeals demonstrate no reversible error

in the district court's granting of both motions for summary judgment. The district court's judgment

is therefore

AFFIRMED.