Tai Matlin v. Spin Master Corp. ( 2020 )

In the
United States Court of Appeals
For the Seventh Circuit
____________________
Nos. 20-1039 & 20-1049
TAI MATLIN and JAMES WARING,
Plaintiffs-Appellants,
v.
SPIN MASTER CORP., SPIN MASTER LTD.,
and SWIMWAYS CORPORATION,
Defendants-Appellees,
and
APPEAL OF: STOLTMANN LAW OFFICES.
____________________
Appeals from the United States District Court for the
Northern District of Illinois, Eastern Division.
No. 17-cv-7706 — Virginia M. Kendall, Judge.
____________________
ARGUED SEPTEMBER 24, 2020 — DECIDED NOVEMBER 10, 2020
____________________
Before EASTERBROOK, MANION, and KANNE, Circuit Judges.
KANNE, Circuit Judge. Plaintiffs Tai Matlin and James War-
ing have spent seventeen years embroiled in disputes related
to the intellectual property claims at issue in this case. In that
2 Nos. 20-1039 & 20-1049
time, arbitrators have sorted out many aspects of this IP ker-
fuffle, including that a company called Gray Matter is on the
hook alone for paying certain royalties to Matlin and Waring.
So, in 2017, when Matlin and Waring filed the suit now on
appeal seeking those royalties from companies other than
Gray Matter, they knew—or should have known—that they
had a loser on their hands. And the district court recognized
as much by sanctioning Matlin and Waring and ordering
them and their former counsel, Stoltmann Law Offices, to pay
certain costs and fees expended by Defendants Swimways
and Spin Master.1
Accordingly, we affirm the district court’s decision grant-
ing costs and fees to Swimways and Spin Master in the
amount of $271,926.92. We also deny Appellees’ motion for
sanctions under Federal Rule of Appellate Procedure 38.
I. BACKGROUND
In 1997, Matlin and Waring co-founded Gray Matter Hold-
ings, LLC.2 In 1999, they entered into a Withdrawal Agree-
ment with Gray Matter. This Withdrawal Agreement entitled
Matlin and Waring to royalties on the sales of certain “Key
Products.” In 2003, Gray Matter sold some of its assets to De-
fendant Swimways Corp.
Since this asset sale, Matlin and Waring have hauled Gray
Matter into arbitration four times over their royalty rights.
The third and fourth arbitrations are relevant to this appeal.
1 For ease, this opinion refers to Spin Master Corp. and Spin Master
Ltd. collectively as “Spin Master.”
2 Gray Matter later changed its name to 180s LLC. The court will use
the name Gray Matter to refer to this entity.
Nos. 20-1039 & 20-1049 3
The third arbitration determined that Gray Matter did not
transfer its royalty obligations under the Withdrawal Agree-
ment to Swimways. Gray Matter only transferred its intellec-
tual property rights. As a result, Gray Matter, not Swimways,
remained responsible for any royalty compensation owed to
Matlin and Waring under the Withdrawal Agreement.
The fourth arbitration dealt with a claim by Matlin and
Waring that Swimways tendered fraudulent filings to the
United States Patent and Trademark Office (“USPTO”) re-
garding the intellectual property rights in the Key Products.
The arbitrator found no evidence supporting this claim.
Moreover, even assuming the fraud allegations were true, the
arbitrator determined that Matlin and Waring would not be
entitled to relief because all intellectual property rights in the
Key Products at issue had been transferred to Swimways;
Matlin and Waring had no rights left in them to assert.
In 2016, Defendant Spin Master acquired Swimways. The
next year, Matlin and Waring filed this suit against Swimways
and Spin Master. Matlin and Waring’s complaint alleged that
they were entitled to royalties from Swimways and Spin Mas-
ter for the Key Products and that Swimways tendered the al-
leged fraudulent filings discussed above to the USPTO. The
district court dismissed the complaint for lack of personal ju-
risdiction. This court affirmed. Swimways and Spin Master
then sought sanctions.
The district court granted the motion and sanctioned Mat-
lin and Waring for “[o]pting to undertake this groundless
lawsuit [that] was objectively unreasonable.” To support this
conclusion, the court noted that Matlin and Waring’s claims
were clearly barred by (1) “principles of res judicata”—i.e., the
4 Nos. 20-1039 & 20-1049
holdings of the third and fourth arbitrations—and (2) “the
plain language of the governing contracts in dispute.”
Regarding preclusion, the court found that the arbitrations
were “binding and final” because the Withdrawal Agreement
stated that “any dispute or controversy arising under or in
connection with this Agreement … shall … be submitted to
binding arbitration.” And the third and fourth arbitrations
precluded Matlin and Waring’s claims because the complaint
was “premised on the same foundational issues[, royalties
and fraud,] previously decided in arbitration.” The court thus
ordered that Matlin and Waring, along with their former
counsel, Stoltmann Law Offices (“SLO”), were jointly and
severally liable for the costs and fees that Swimways and Spin
Master expended preparing their motion to dismiss and mo-
tion for sanctions.
SLO then filed a motion to reconsider the sanctions order.
SLO first argued that the court’s order imposing sanctions on
the basis of “principles of res judicata” was an improper advi-
sory opinion because it reached the merits of the case after the
case had already been dismissed without prejudice for lack of
personal jurisdiction. The court disagreed with this “novel le-
gal theory with no support in this circuit—or elsewhere.”
And, the court stated that “the Seventh Circuit has upheld a
district court’s ‘impos[ition] [of] Rule 11 sanctions on bases
different from those on which the case was dismissed.’”
SLO next took issue with the sanction amount. After con-
sidering SLO’s argument, the court did set aside a sizeable
portion of the $408,471.51 that Swimways and Spin Master in-
itially sought but still awarded them $271,926.92 on the basis
of their detailed accounting, and payment, of those costs and
fees. The accounting showed that attorneys and staff for
Nos. 20-1039 & 20-1049 5
Swimways and Spin Master spent 273.1 hours, charging an
average rate of about $1,000 per hour, preparing the motion
to dismiss and motion for sanctions, which consisted of five
total filings. Matlin, Waring, and SLO (“Appellants”) now ap-
peal the district court’s sanctions order and reassert the argu-
ments from their motion to reconsider.
II. ANALYSIS
We review de novo whether the court’s sanction award was
an unconstitutional advisory opinion. Lopez Ramos v. Barr, 942
F.3d 376, 380 (7th Cir. 2019). We review the court’s imposition
of sanctions for abuse of discretion. Cooter & Gell v. Hartmarx
Corp., 496 U.S. 384, 405 (1990).
A. The Sanctions Order Was Not an Advisory Opinion.
Article III’s “case or controversy” requirement prohibits
federal courts from issuing advisory opinions that do not af-
fect the rights of the parties before the court. Preiser v. Newkirk,
422 U.S. 395, 401 (1975). This proscription has never con-
cerned us where a district court imposes Rule 11 sanctions on
grounds different from those on which a case was dismissed.
See, e.g., Pollution Control Indus. of Am., Inc. v. Van Gundy, 21
F.3d 152, 156 (7th Cir. 1994) (affirming the propriety of sanc-
tions for filing a case in which subject-matter jurisdiction did
not exist even though the case had been dismissed for lack of
personal jurisdiction); Ghosh v. Lindley, Nos. 92-1237 & 92-
1899, 1993 WL 311958, at *2 (7th Cir. Aug. 17, 1993) (affirming
a sanctions order for pursuing frivolous litigation even after
the district court found it lacked subject-matter jurisdiction).
And this is for good reason—a sanctions order always affects
the parties’ rights concerning the sanctions themselves. In-
deed, the sanctions order in this case affected the rights of
6 Nos. 20-1039 & 20-1049
Swimways and Spin Master to costs and fees and thus was not
an advisory opinion.
B. Sanctions Were Proper.
Under Federal Rule of Civil Procedure 11, courts may
sanction parties who file frivolous pleadings. For example,
“[b]ringing a claim that is barred by res judicata is sanctiona-
ble.” Singh v. Curry, Nos. 88-2981 & 89-1619, 1995 WL 632464,
at *3 (7th Cir. Oct. 25, 1995) (citing Cannon v. Loyola Univ. of
Chi., 784 F.2d 777, 782 (7th Cir. 1986)). The district court in this
case sanctioned Appellants because Matlin and Waring’s
claims were clearly (1) precluded by “principles of res judi-
cata” and (2) groundless based on “the plain language of the
governing contracts.” We will address both bases in turn.
First, Illinois law controls the preclusion issue in this case.
Taylor v. Sturgell, 553 U.S. 880, 891 n.4 (2008) (citing Semtek
Intʹl Inc. v. Lockheed Martin Corp., 531 U.S. 497, 508 (2001)).
And both federal district courts and the Illinois Appellate
Court have held that Illinois affords preclusive effect to bind-
ing arbitration awards, even if unconfirmed, unless preclu-
sion impinges on a party’s federal rights. See, e.g., Plastic Re-
covery Techs., Co. v. Samson, No. 11 C 2641, 2011 WL 3205349,
at *3 (N.D. Ill. July 28, 2011) (citing Stulberg v. Intermedics Or-
thopedics, Inc., 997 F. Supp. 1060, 1066–67 (N.D. Ill. 1998); Mon-
mouth Pub. Sch., Dist. No. 38 v. Pullen, 489 N.E.2d 1100, 1105
(Ill. App. Ct. 1985)).3 In short, “[i]f [an] arbitration award is
binding on the parties, any inquiry into the matters originally
3 Appellants argue that, because some jurisdictions hold otherwise, it
is not clear whether unconfirmed arbitration awards can be preclusive in
Illinois. But they do not cite any authority showing that Illinois law is un-
settled on this point.
Nos. 20-1039 & 20-1049 7
controverted is forever closed.” Monmouth, 489 N.E.2d at
1106.
Here, Matlin and Waring’s suit did not seek to vindicate
federal rights. And there is little question that the third and
fourth arbitrations were binding—the Withdrawal Agree-
ment specified that “any dispute or controversy arising under
or in connection with this Agreement … shall … be submitted
to binding arbitration.” So the only issue is whether the third
and fourth arbitrations disposed of the underlying suit’s
claims. Upon considering those claims and the rulings of the
arbitrators, it quickly becomes apparent that they did.
The third arbitration resolved Matlin and Waring’s allega-
tion that Swimways and Spin Master owed them royalties
from the Withdrawal Agreement by finding that “[w]hile cer-
tain assets of [Gray Matter] were transferred in conjunction in
the Asset Sale, the Withdrawal Agreement was not one of
them.” In fact, we have previously stated that the third arbi-
tration “determined that Gray Matter did not assign the With-
drawal Agreement to Swimways upon sale of the products
and that [Matlin and Waring] were owed no further royal-
ties.” Matlin v. Spin Master Corp., 921 F.3d 701, 703–04 (7th Cir.
2019).
The fourth arbitration similarly resolved Matlin and War-
ing’s fraud claims by finding that they retained no ownership
interest in the intellectual property associated with those alle-
gations.
Second, Appellants make little argument regarding the
“plain language of the governing contracts.” But this second
basis for sanctions is compelling. Once again, Appellants’ first
claim hinged on the presumption that Swimways assumed
8 Nos. 20-1039 & 20-1049
royalty obligations under the Withdrawal Agreement in its
2003 asset purchase. The purchase agreement unambiguously
provided, however, that Swimways only assumed liabilities
from Gray Matter under specific “Assumed Contracts,” and
the Withdrawal Agreement was not one of those contracts.
In sum, because preclusion and the language of the con-
tracts rendered Matlin and Warring’s suit frivolous, the dis-
trict court did not abuse its discretion in finding that “[o]pting
to undertake this groundless lawsuit was objectively unrea-
sonable and necessitate[d] sanctions.”
C. The Sanctions Award Was Reasonable.
Federal Rule of Civil Procedure 11 authorizes district
courts to award “reasonable” attorney fees to a prevailing
party as a sanction against the losing party. Dubisky v. Owens,
849 F.2d 1034, 1037 (7th Cir. 1988).
In arriving at its decision regarding sanctions, the district
court noted that Swimways and Spin Master submitted a de-
tailed accounting of their work pertaining to their successful
motions to dismiss and for sanctions.
The district court limited the award of monetary sanctions
to the fees and costs relating only to the preparation and filing
of Swimways and Spin Master’s motion to dismiss and mo-
tion for sanctions. The sanctions award did not include costs
associated with the initial review of Matlin and Warring’s
complaint and appeal. As a result, the court reduced the sanc-
tions award sought of $408,471.51 to an amount actually
awarded of $271,926.92.
Based on the findings set forth by the district court in its
order of December 10, 2019, we believe the sanctions amount
of $271,926.92 to be reasonable.
Nos. 20-1039 & 20-1049 9
As to the reasonableness of the attorney fees charged by
counsel for Swimways and Spin Master, the district court
pointed out the following:
Jonathan Graves, lead counsel for Defendants in this matter,
has 28 years of litigation experience, primarily in the intel-
lectual property sector. (Dkt. 74-1, ¶ 5). Mr. Graves’ effective
hourly billable rate ranged from $973 to $1,092 during this
matter. (Id. at ¶ 7). Though Mr. Graves’ rate, and that of his
co-counsel, are above the median rate of comparable intel-
lectual property attorneys (Dkt. 74-2), it is nonetheless rea-
sonable. The best evidence of this is that Defendants have in
fact paid these rates (Dkt. 74-1, ¶ 21). Cintas Corp. v. Perry,
517 F.3d 459, 469–70 (7th Cir. 2008) (“The court concluded,
in the same vein and consistent with circuit precedent, that
the best evidence of whether attorney’s fees are reasonable
is whether a party has paid them.”).
Turning now to the reasonableness of the time expended
on the preparation and filing of Swimways and Spin Master’s
motion to dismiss and motion for sanctions, the district court
observed:
Plaintiffs take issue with the amount of time that Defend-
ants expended in defending the lawsuit. This argument is
specious. Plaintiffs filed a federal lawsuit containing serious
charges and seeking significant damages. That Defendants
responded forcefully should be of little surprise. See Brandt
v. Schal Assocs., Inc., 960 F.2d 640, 648 (7th Cir. 1992) (“We
have little sympathy for the litigant who fires a big gun, and
when the adversary returns fire, complains because he was
only firing blanks.”). Plaintiffs and SLO have failed to carry
their burden to overcome the presumption of reasonability
here. Robinson, 489 F.3d at 872.
10 Nos. 20-1039 & 20-1049
The district court further explained:
Defendants, and their counsel, were faced with persistent
litigants who were undeterred by prior defeats. As such, De-
fendants attempt to put the final metaphorical nail in the
coffin by disposing of this federal lawsuit and seeking sanc-
tions was entirely reasonable.
As the district court stated, “the best evidence of whether
attorney’s fees are reasonable is whether a party has paid
them.” Cintas Corp. v. Perry, 517 F.3d 459, 469–70 (7th Cir.
2008). And in this case, Swimways and Spin Master in fact
paid their attorneys $271.926.92 to prepare the motions to dis-
miss and for sanctions. We thus hold that the district court’s
findings were reasonable, especially under our deferential
abuse of discretion standard of review. Pickett v. Sheridan
Health Care Ctr., 664 F.3d 632, 639 (7th Cir. 2011) (explaining
that a district court’s fee award receives wide latitude under
a “highly deferential abuse of discretion standard” (quoting
Estate of Borst v. OʹBrien, 979 F.2d 511, 514 (7th Cir. 1992))).
III. CONCLUSION
We AFFIRM the decision of the district court to impose
sanctions in the amount of $271,926.92.
We DENY Appellees’ motion for sanctions under Federal
Rule of Appellate Procedure 38.4
4Sanctions against Appellants under Federal Rule of Appellate Pro-
cedure 38 are not appropriate because Appellants made a reasonable—
although unsuccessful—argument regarding the excessiveness of the
sanctions imposed against them.