from the United States District Court for the Eastern
District of Louisiana
CLEMENT, OWEN, and HO, Circuit Judges.
BROWN CLEMENT, Circuit Judge.
attempt to simultaneously sell a restaurant and license
associated intellectual property has led to ten years of
litigation in state and federal court. Camellia Grill
Holdings, Inc. ("CGH") appeals the district
court's most recent attempt to adjudicate the dispute. We
affirm in part and reverse in part.
Shwartz and his family owned and operated the Camellia Grill
restaurant on Carrollton Avenue (the "Carrollton
restaurant") for decades. He operated the business-the
single restaurant-through a wholly owned corporation,
Camellia Grill, Inc. In 1999, Shwartz formed CGH for the sole
purpose of owning federally registered Camellia Grill
2006, Shwartz agreed to sell the Carrollton restaurant to
Hicham Khodr. On August 11, in the "Bill of
Sale," Shwartz sold to Uptown Grill, L.L.C. all his
"right, title and interest in and to the . . . tangible
property located within or upon" the Carrollton
restaurant, including "[a]ll furniture, fixtures and
equipment, cooking equipment, kitchen equipment, counters,
stools, tables, benches, appliances, recipes, trademarks,
names, logos, likenesses, etc., and all other personal and/or
movable property . . . located within or upon the
August 27, in the "License Agreement," CGH licensed
to The Grill Holdings, L.L.C. ("TGH") the right to
use certain defined "Marks." These
"Marks" included "[a]ll 'Camellia
Grill' marks on file with the United States Patent and
Trademark Office" and "[a]ll 'trade dress'
associated with the 'Camellia Grill'
Restaurant," as well as blueprints, menus, and recipes.
Section 5 of the License Agreement provides that the
"Licensee acknowledges and agrees that all of the
Licensor's right, title and interest in and to the Marks
shall remain the property of the Licensor." The License
Agreement also bound TGH's affiliates and related
2009, Khodr opened a Camellia Grill location in Destin,
Florida, which eventually failed. In 2010, Khodr opened a
location on Chartres Street in New Orleans (the
state court litigation that ended in the termination of the
License Agreement,  Khodr filed a declaratory action to
determine the parties' respective rights in the Camellia
Grill trademarks within or upon the Carrollton restaurant.
Shwartz filed a separate action asserting trademark and trade
dress infringement claims and breach of contract claims based
on the continued use of Camellia Grill-related intellectual
property following the termination of the License Agreement.
The cases were consolidated.
moved for, and the district court granted, summary judgment
on the question of ownership of trademarks within or upon the
Carrollton restaurant. The district court held that the Bill
of Sale transferred "ownership of the trademarks
associated with the operation of the Camellia Grill
restaurant on Carrollton Avenue to Uptown Grill."
Uptown Grill, LLC v. Shwartz, 116 F.Supp.3d 713, 723
(E.D. La. 2015). The court also held sua sponte that
the Bill of Sale transferred all Shwartz's
rights in the Camellia Grill trademarks to Uptown Grill and
entered judgment for Khodr on all claims. Id. at
appealed, and this court affirmed the district court's
first holding but reversed and remanded on its second.
Uptown Grill, L.L.C. v. Shwartz, 817 F.3d 251, 260
(5th Cir. 2016). The court held that the Bill of Sale
"clearly and unambiguously transfers to Uptown Grill the
trademarks within or upon the Carrollton Avenue
location." Id. at 258. However, because Khodr
had not asked the district court to make its second holding,
this court reversed and remanded for further proceedings.
Id. at 260.
remand, the parties filed multiple cross-motions for partial
summary judgment. The district court ultimately ruled that
the Bill of Sale assigned all Camellia Grill trademark rights
to Khodr, as well as trade dress rights associated with the
Carrollton restaurant. The court then found that Shwartz was
unable to sustain his trade dress infringement claim on the
merits. Alternatively, the court held that even if Shwartz
could sustain his trademark and trade dress infringement
claims, he was not entitled to monetary damages.
respect to the Shwartz's breach of contract claims, the
court found that the parties were still bound by the License
Agreement. The court stated in a footnote that because
"the parties have consistently treated the License
Agreement as valid and binding," it would "give
effect to their agreement to the extent permissible under the
law." The court held that the use of the trademarks at
the Chartres restaurant following the termination of the
License Agreement was a breach of that contract. However, the
court found that Shwartz could not prove breach of the
agreement as to any putative trade dress.
after a bench trial, the court found that the operation of
the Chartres restaurant during two discrete time periods
constituted a breach of the License Agreement. The court then
found that Shwartz had not proved any compensable damages, so
denied any such award. The court enjoined TGH, Uptown Grill,
and the company that owned the Chartres restaurant (Chartres
Grill, LLC) from employing the Camellia Grill trademarks
identified in the License Agreement "at any location
other than the Carrol[l]ton Location."
timely appealed the district court's various adverse
review a district court's grant of summary judgment de
novo. Bridges v. Empire Scaffold, L.L.C., 875 F.3d
222, 225 (5th Cir. 2017). "Summary judgment is
appropriate if 'there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law.'" Id. (quoting Fed.R.Civ.P.
56(a)). A court should enter summary judgment "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." Celotex Corp. v. Catrett, 477 U.S. 317,
district court's finding of fact at the bench trial are
reviewed for clear error and its legal conclusions de novo.
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