Glidden Company v. Jason Kinsella

NOT RECOMMENDED FOR FULL-TEXT PUBLICATION
File Name: 10a0432n.06
No. 09-3599 FILED
Jul 15, 2010
UNITED STATES COURT OF APPEALS LEONARD GREEN, Clerk
FOR THE SIXTH CIRCUIT
THE GLIDDEN COMPANY, )
)
Plaintiff-Appellee, ) ON APPEAL FROM THE UNITED
) STATES DISTRICT COURT FOR THE
v. ) NORTHERN DISTRICT OF OHIO
)
JASON KINSELLA, ) OPINION
)
Defendant-Appellant. )
)
Before: MOORE and GILMAN, Circuit Judges; and RUSSELL, Chief District Judge.*
THOMAS B. RUSSELL, Chief District Judge. On June 8, 2007, Plaintiff-Appellee The
Glidden Company (“Glidden”) filed a declaratory judgment action in the United States District Court
for the Northern District of Ohio against Defendant-Appellant Jason Kinsella, who asserted
counterclaims against Glidden. The parties settled the case on May 2, 2008, but were subsequently
unable to agree upon a written memorialization of their agreement. Ultimately, the magistrate judge
issued a report recommending the district court (1) find the May 2 settlement agreement enforceable
and (2) adopt and enforce Glidden’s proposed written memorialization, with minor modifications,
as the final settlement agreement between the parties. On March 13, 2009, the district court
overruled Kinsella’s objections and accepted the magistrate judge’s recommendation. The district
*
The Honorable Thomas B. Russell, United States Chief District Judge for the W estern District of Kentucky,
sitting by designation.
court, on April 21, 2009, also denied Kinsella’s motion to alter or amend the judgment. For the
reasons set forth below, we AFFIRM the judgment of the district court.
I. BACKGROUND
Glidden produces a family of multi-purpose adhesive, sealant and caulking products. Kinsella
sells “Rhino Glue” on the internet, as well as at fairs and tradeshows. In early 2006, Glidden
launched a new glue product named “Rhino Ultra.” On July 21, 2006, Kinsella emailed Glidden
regarding potential trademark infringement. Kinsella also filed trademark applications for Rhino-
component marks. Glidden opposed registration of Kinsella’s intent to use applications for the
“Rhino Ultra” and “Rhinoultra” marks.
On June 8, 2007, Glidden filed a declaratory judgment action against Kinsella in the United
States District Court for the Northern District of Ohio. Glidden asked the court to find that: (1)
Glidden’s “use of the term Rhino Ultra under its famous Liquid Nails house brand in connection
with ‘all purpose glue’ and ‘polyurethane glue for woodworking’” is non-infringing, (2) “Kinsella
has no common law trademark rights in Rhino Ultra Glue or Rhinoultra” and (3) Glidden’s “right
to use the term Rhino Ultra in connection with ‘all purpose household glue’ and ‘polyurethane glue
for woodworking’ is superior to Kinsella’s.” Kinsella asserted counterclaims against Glidden for:
(1) infringement of Kinsella’s trademark of Rhinofix, (2) false designation of origin and/or false
description of goods, (3) violation of Ohio’s Deceptive Trade Practices Act, and (4) violation of
California’s unfair competition law.
On May 2, 2008, the parties participated in a settlement conference before Magistrate Judge
Kenneth S. McHargh. After the parties reached an oral settlement, the magistrate judge summoned
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a court reporter to transcribe the essential terms of the agreement. The magistrate judge began the
recorded portion of the proceedings by stating:
[T]he Court understands that a settlement that is acceptable to both sides has been
reached. I’m going to ask my law clerk to articulate the outline of the settlement with
the understanding that the parties will prepare a written memorialization with greater
detail, but the essence of the settlement will be articulated by my law clerk, and I will
ask counsel and the parties to indicate their assent to the terms.
The terms of the agreement were stated as follows:
(1) “Glidden will pay [Kinsella] $150,000.”
(2) “Glidden will file a notice of abandonment of the Rhino Ultra mark.”
(3) “Glidden will remove objections to [Kinsella’s] efforts to register the Rhino
Ultra Glue mark and will not object in the future.”
(4) “Glidden will contact all entities of which it is aware that [have] the Rhino
Ultra web presence and ask them to remove the web presence and or
reference to Rhino Ultra.”
(5) “There will be no rebranding of Rhino Ultra Glue,” which means that
“Glidden will not use the word” Rhino or a depiction of a rhinoceros in
connection with adhesives while Kinsella “is using the mark. This does not
mean that Glidden is precluded from the polyurethane glue market.”
(6) “All parts of the settlement agreement will remain confidential[.]”
(7) The parties “will have a mutual non disparagement agreement.”
After the parties expressed their assent to the articulated terms, the following exchange took place
between the court, Kinsella’s counsel Bruce Wilson and Glidden’s counsel Christina Moser:
THE COURT: And I’m not sure which counsel will volunteer to prepare the
initial draft. I assume– who wants to do that?
MS. MOSER: That will most likely be me.
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THE COURT: Thank you, Ms. Moser. I’ll ask you what is the anticipated
time table to exchange the pleading and ultimately as to when
the parties anticipate filing dismissal to the court.
MS. MOSER: Well, what we want to do is set it contingent upon–
MR. WILSON: I’d like putting it off until we do it. Do you have the details
about the applications, you know, applications and all the
numbers?
MS. MOSER: Yeah. I have all the information. It’s just a question of
drafting the settlement agreement.
MR. WILSON: We have no trouble communicating between working hours
and later. It’s a question of what you need to do.
The magistrate judge later determined that the first “it” in Mr. Wilson’s statement “I’d like putting
it off until we do it” referred to filing the dismissal and the second “it” referred to drafting the
settlement agreement. The minutes of the conference also reflect that the parties were to file a
consent of dismissal by June 6, 2008.
The parties, however, could not agree upon a final written memorialization of the May 2 oral
settlement agreement (“Agreement”). On July 25, 2008, the district court referred the case back to
the magistrate judge in order to address the parties’ dispute regarding memorializing the terms of the
May 2 settlement conference. The magistrate judge held multiple conferences, but on September
26, 2008, the parties advised him that they had been unsuccessful in finalizing the terms of the
settlement and requested the opportunity to brief the issue of the court’s ability to enforce the terms
of the Agreement. The magistrate judge granted the request and directed the parties to submit their
respective briefs on the issue of enforceability. The parties also appeared at a hearing on October
23, 2008, to address whether “there has been a settlement reached in this matter and essentially what
the terms of that settlement are.”
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Both parties argued that the Agreement was enforceable. Kinsella asserted that Glidden had
unreasonably delayed its performance pursuant to the terms of the Agreement, and had instead
proposed written agreements that incorporated additional material terms not discussed at the
conference. Kinsella did not believe that a written memorialization was an essential term of the
Agreement. Glidden, on the other hand, argued that the parties agreed to negotiate a written
memorialization with greater detail than the terms articulated on the record, and that Kinsella
breached this agreement. Glidden asked the court to enforce Glidden’s proposed written
memorialization of the parties’ Agreement, which it attached as an exhibit (“Memorialization”).
Kinsella, on the other hand, requested the court enforce the original Agreement and compel
Glidden’s performance.
On November 3, 2008, the magistrate judge found that the Agreement was enforceable. He
further found that the Memorialization, with minor modifications, fairly and accurately reflected the
parties’ Agreement. The magistrate judge did not make any recommendations regarding whether
either of the parties breached the Agreement.
Kinsella objected to the magistrate judge’s Report and Recommendation. He again argued
that a written memorialization was not an essential term of the Agreement and that Glidden was in
breach of that Agreement. He further argued that the modified Memorialization materially altered
the terms of the Agreement. Kinsella also moved the court to enforce the Agreement, as originally
stated on May 2, 2008.
On March 13, 2009, the district court accepted the magistrate judge’s recommendation. The
court found the parties’ Agreement enforceable as the modified Memorialization. Ten days later,
on March 23, 2009, Kinsella moved to alter or amend the court’s Memorandum of Opinion and
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Order. On April 21, 2009, the district court denied Kinsella’s motion but sua sponte amended its
order, making a further minor modification to the Memorialization. Kinsella filed his Notice of
Appeal on May 20, 2009.
II. ANALYSIS
A. Standard of Review
“This Court reviews for clear error the district court’s factual determination that the parties
had agreed to settlement terms.” Re/Max Int’l, Inc. v. Realty One, Inc., 271 F.3d 633, 645 (6th Cir.
2001). A factual determination is “‘clearly erroneous’ when although there is evidence to support
it, the reviewing court on the entire evidence is left with the definite and firm conviction that a
mistake has been committed.” United States v. Mabry, 518 F.3d 442, 449 (6th Cir. 2008) (citing
United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)).
“Contract interpretation questions, however, are ‘generally considered questions of law
subject to de novo review.’” Campbell v. Potash Corp. of Saskatchewan, Inc., 238 F.3d 792, 797
(6th Cir. 2001) (quoting Golden v. Kelsey-Hayes, Co., 73 F.3d 648, 653 (6th Cir. 1996)).
Specifically, as the standard applies to this case, the determination of whether a contract is
ambiguous is a question of law subject to de novo review. Id.; Potti v. Duramed Pharm., Inc., 938
F.2d 641, 647 (6th Cir. 1991).
Finally, the Court reviews the district court’s decision “to enforce the settlement based on
its preliminary factual finding for an abuse of discretion.” Re/Max, 271 F.3d at 645 (citing Therma-
Scan, Inc. v. Thermoscan, Inc., 217 F.3d 414, 418 (6th Cir. 2000)). The Court will find an abuse of
discretion “only when left with the ‘definite and firm conviction that the court . . . committed a clear
error of judgment in the conclusion it reached upon a weighing of the relevant factors’ or where it
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‘improperly applies the law or uses an erroneous legal standard.’” Id. (quoting Huey v. Stine, 230
F.3d 226, 228 (6th Cir. 2000)).
Kinsella argues that “[d]e novo review is appropriate in this case because the district court
decision was made in a summary fashion.” This assertion contradicts the standard articulated in
Re/Max International v. Realty One, Inc., in which this Court reviewed a district court’s summary
enforcement of a settlement agreement. 271 F.3d at 645-46. Kinsella does not attempt to distinguish
this case from Re/Max, nor does he address the standard of review in his reply brief. We find
Kinsella’s argument lacks merit.
B. Determination that Agreement was Reached
“Before enforcing a settlement, a district court must conclude that agreement has been
reached on all material terms.” Re/Max, 271 F.3d at 645-46 (citing Brock v. Scheuner Corp., 841
F.2d 151, 154 (6th Cir. 1988)). Here, to determine whether an agreement was reached on all material
terms, we must look to Ohio law. See Bamerilease Capital Corp. v. Nearburg, 958 F.2d 150, 152
(6th Cir. 1992) (explaining that settlement agreements are governed by contract law and that Ohio
law requires contracts be interpreted according to “the law of the place of the contract’s making”).
There is no question that the parties assented to the terms as reflected in the May 2, 2008
transcript. Neither party has ever disputed this fact. The magistrate judge noted that both parties
agreed that the transcript of the May 2 settlement conference proceedings accurately reflected the
Agreement’s material terms and that neither party disputed the fact of settlement. The district court
also noted that the parties did not dispute that the Agreement constituted an enforceable contract, nor
did they dispute that the Agreement contained the terms as articulated by the transcript.
Additionally, the May 2 transcript reflects that the parties assented to an outline of the “essence of
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the settlement.” Counsel for Kinsella stated that “[t]he terms written down by your law clerk and
expressed here are the terms that we understand are the essence of the settlement, and we accept
those terms.” Counsel for Glidden similarly stated that “the terms as set forth by the Court are the
terms acceptable to Glidden for settlement in this matter.”
Ohio law, however, also requires a “meeting of the minds” before a contract may be enforced.
Scotts Co. v. Cent. Garden & Pet Co., 403 F.3d 781, 788 (6th Cir. 2005). As this Court has
explained:
Ohio law does not require contracting parties to share a subjective meeting of the
minds to establish a valid contract; otherwise, no matter how clearly the parties wrote
their contract, one party could escape its requirements simply by contending that it
did not understand them at the time. What it does require is that the terms of the
agreement establish an objective meeting of the minds, which is to say that the
contract was clear and unambiguous.
216 Jamaica Ave., LLC v. S & R Playhouse Realty Co., 540 F.3d 433, 440 (6th Cir. 2008) (emphasis
added); see also Rulli v. Fan Co., 683 N.E.2d 337, 339 (Ohio 1997) (“To constitute a valid
settlement agreement, the terms of the agreement must be reasonably certain and clear.”).
Even though neither party argued that the terms of the Agreement were unclear or
ambiguous, because the parties disputed what one of the terms of the Agreement meant both the
magistrate judge and the district court examined this issue. Specifically, the parties disputed the
meaning of the fourth term: “Glidden will contact all entities of which it is aware that has [sic] the
Rhino Ultra web presence and ask them to remove the web presence and or reference to Rhino
Ultra.” The magistrate judge found that the parties disagreed about the language regarding Glidden’s
awareness– the “is aware” language– and the language regarding “Rhino Ultra web presence.”
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In accordance with the fourth term, Glidden’s Memorialization provided “Glidden will
contact all entities, of which it was aware as of May 2, 2008, that offer Glidden’s Rhino Ultra
adhesive for sale on the internet to customers to recommend removal of all visual and digital
references to the Rhino Ultra Marks.” Kinsella objected to this wording. Before the magistrate
judge, Kinsella argued that the Agreement obligated Glidden to “clean up the internet” within days
after May 2 by contacting all entities of which it was aware, or of which it became aware, “that offer
for sale, discuss, link to, or reference in any way Glidden’s Rhino Ultra adhesive to recommend
removal of all visual and digital references to the Rhino Ultra marks, or any variation or derivation
thereof.”
First, interpreting the Agreement as imposing a future obligation on Glidden to contact all
entities of which it ever became aware is unreasonable. The parties’ use of future-tense language
elsewhere in the Agreement suggests that their omission of future-tense language with regard to
Glidden’s awareness was intentional. Also, as noted by the court below, the manager of Glidden’s
Liquid Nails division, Nestor Hernandez, submitted an affidavit stating that Glidden agreed on May
2 “to contact those internet sellers that we were aware of who were selling the Rhino Ultra product
online and request that they remove all visual and digital references to Glidden’s product.”1 The
1
Kinsella argues that the magistrate judge and district court impermissibly relied upon
extrinsic evidence when determining the ambiguity of the fourth term, specifically the “Rhino Ultra
web presence” portion. Ohio’s parol evidence rule prohibits extrinsic evidence from being used to
“alter, contradict, contest, or vary an integrated written agreement.” Glazer v. Lehaman Bros., Inc.,
394 F.3d 444, 455 (6th Cir. 2005) (citing Galmish v. Cicchini, 734 N.E.2d 782, 788 (Ohio 2000)).
Although this rule does not apply to the interpretation of the Agreement because it was an oral, not
written, contract, Kinsella argues that Ohio law also bars the admission of extrinsic evidence to
interpret the meaning of unambiguous oral contract terms. He cites the dissent in Rulli v. Fan
Company to support his position. 683 N.E.2d at 341. In that case, the dissenting judge stated that
when two parties “have orally expressed their intentions to contract in identical words, using the
words that each of them consciously intends to use” the agreement cannot be voided by the parties
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magistrate found that this statement accurately reflected his own memory of the discussions and the
nature of the Agreement with regard to the term at issue.
Second, we agree that the parties intended “entities” that have “the Rhino Ultra web
presence” to encompass only “entities . . . that offer Glidden’s Rhino Ultra adhesive for sale on the
internet.” The magistrate judge found that Hernandez’s recollection that, on May 2, “Kinsella raised
concerns about the presence of competitors selling Glidden’s Rhino Ultra product on the internet,”
and that Glidden had “agreed to contact those internet sellers that we were aware of who were selling
the Rhino Ultra product online,” corresponded with his own memory of the parties’ discussion.
Kinsella’s contention that “web presence” is not limited to internet sellers is not reasonable. The
district court noted the impracticability of Glidden finding any and all web sites that even reference
Rhino Ultra and advising them to remove such references. As also noted by the district court,
Kinsella’s interpretation is unreasonable in light of the fact that both parties’ claims are based on the
commercial use of the Rhino trademarks.
An ambiguity exists under Ohio law “where contract language is susceptible to two or more
reasonable interpretations.” Potti, 938 F.2d at 647 (emphasis added). A term is not ambiguous
merely because two parties offer substantially different interpretations. See 216 Jamaica Ave., LLC,
asserting different meanings to the language so long as there is only one reasonable interpretation.
Rulli, 983 N.E.2d at 341 (citation omitted). The judge contended that the Rulli court should not
admit extrinsic evidence to establish the meaning of an unambiguous contract term, such as the oral
term at issue. Id. at 342. The judge cited Shifrin v. Forest City Enter., Inc., 597 N.E.2d 499, 501
(Ohio 1992), as the authority for this contention. Shifrin, however, does not discuss oral contracts.
We find Kinsella’s argument unpersuasive. Rulli does not bar the court from considering
what was said during settlement negotiations beyond what was transcribed. See, e.g., Kostelnik v.
Helper, 770 N.E.2d 58, 61 (Ohio 2002) (“Terms of an oral contract may be determined from ‘words,
deeds, acts, and silence of the parties.’”); see also Re/Max, 271 F.3d at 648 (considering the record
of post-settlement correspondence in determining meaning of term).
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540 F.3d at 440. We find Kinsella’s interpretation of the Agreement’s fourth term unreasonable.
Consequently, the term is not ambiguous. Because the Agreement was clear and unambiguous, there
was an objective meeting of the minds between the parties. An agreement was therefore reached on
all material terms, and the settlement may be enforced.
C. Memorialization of the Agreement
After the May 2 conference, the parties could not agree upon a written memorialization of
the agreement. The record reflects that this was due in large part to Kinsella’s general refusal to
cooperate. Kinsella responded to Glidden’s initial draft memorialization by stating that he would
“not accept the notion that we should approve another settlement agreement.” Kinsella also argued
before both the magistrate judge and the district court that a written memorialization was not an
essential term of the May 2 settlement Agreement. He continues to insist, without citing to any law,
that “[s]ince the essential terms of the May 2nd Agreement were read into the record by the
magistrate’s law clerk, the record constitutes the parties understanding of the plain language of the
Agreement.”
The magistrate judge and district judge both found that the parties agreed to prepare a written
memorialization of the Agreement. This determination was not erroneous. The May 2 transcript
reflects the parties’ agreement to prepare and execute a written memorialization. Before the “outline
of the settlement” was read into the record, the magistrate judge stated that “the parties will prepare
a written memorialization with greater detail.” After the parties assented to the terms articulated by
the magistrate’s law clerk, Glidden’s counsel volunteered to “prepare the initial draft.” The
magistrate judge determined that the remainder of the exchange between the parties, detailed supra,
evidenced Kinsella’s counsel’s implicit understanding of the parties’ agreement to prepare a written
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memorialization, and, at the very least, his failure to object to such a memorialization. The district
court also found that the transcript supported the magistrate judge’s determination.
These facts are similar in many ways to the facts before the Court in Re/Max. 271 F.3d 633.
In that case, Re/Max and Realty One reached an oral settlement agreement, the general terms of
which were stated on the record, and agreed to complete a written settlement agreement within forty-
five days. Id. at 637-38. The parties, however, failed to prepare a draft of the final agreement. Id.
at 638. Realty One insisted “that it was ‘not necessary to prepare any additional documentation
concerning the settlement’ because ‘the transcript dictated by [the judge] and agreed to by counsel
and the parties in court on July 13, 2000, is the complete settlement of the parties.’” Id. at 638-39.
Based on the plain language of the transcript, the Court found that Realty One was obligated to help
prepare a memorialized written expression of the settlement terms and handle the details of the
agreement within forty-five days. Id. at 646. Because Realty One “stubbornly refused to cooperate,”
this Court affirmed the district court’s determination that Realty One breached the settlement
agreement. Id. at 647.
Similarly, here, Kinsella agreed to help prepare a written memorialization of the Agreement.
Kinsella cannot rely, just as Realty One could not, on the transcript outlining the essential terms of
the Agreement to excuse his obligation to execute a written memorialization. Thus, because an
agreement was reached on all material terms, and because the parties agreed to memorialize that
agreement in writing, we must examine whether the proposed Memorialization is materially different
than the oral Agreement. Id. at 647-49.
D. Language of the Memorialization
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“The existence of a valid agreement is not diminished by the fact that the parties have yet to
memorialize the agreement.” Re/Max, 271 F.3d at 646. “When parties have agreed on the essential
terms of a settlement, and all that remains is to memorialize the agreement in writing, the parties are
bound by the terms of the oral agreement.” Id. (citing Brock, 841 F.2d at 154; Kukla v. Nat’l
Distillers Prods. Co., 483 F.2d 619, 621 (6th Cir. 1973)). Furthermore, “[t]he court must enforce
the settlement as agreed to by the parties and is not permitted to alter the terms of the agreement.”
Brock, 841 F.2d at 154.
Like the defendant in Re/Max, Kinsella claims that the terms in the Memorialization are
different than those to which he assented on May 2, 2008. The magistrate judge and the district
judge both analyzed the Memorialization and found, with minor modification, it was a fair and
accurate reflection of the Agreement.
Kinsella, in his briefs before the magistrate judge, did not identify what terms he objected
to in Glidden’s proposed Memorialization. At the hearing on October 23, 2008, when asked by the
magistrate judge what specific additional material terms were contained in the Memorialization,
Kinsella complained of the language regarding Glidden’s internet obligations and the
Memorialization’s territorial limitation. In his objection to the magistrate judge’s report, Kinsella
objected to several additional terms. Before this Court, Kinsella repeatedly asserts that the
Memorialization contains additional material terms, but only specifically addresses the time-for-
performance requirements. He seems to imply that anything beyond the words recorded on the
transcript are additional terms that materially alter the Agreement.
1. Time-for-Performance Requirements
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The only additional terms that Kinsella specifically addresses before this Court are the time-
for-performance requirements in the Memorialization. Essentially, he argues that it is not reasonable
to condition time of performance on the execution of the modified Memorialization. He did not raise
this issue before the magistrate judge, but argued before the district court that the time requirements
contained in the Memorialization were new terms to which the parties did not agree. The relevant
paragraphs provide as follows:
1(d) “Within three (3) business days after the Execution Date of this Agreement,
Glidden will file a Notice of Express Abandonment . . . .”
1(e) “Within three (3) business days after the Execution Date of this Agreement,
Glidden will file a Surrender of Registration . . . .”
2(a) “Within three (3) business days after the Execution Date of this Agreement,
Glidden will withdraw the Oppositions.”
3(a) “Within three (3) business days after the Execution Date of this Agreement,
Glidden shall pay Kinsella one hundred fifty thousand dollars ($150,000).”
3(b) “Within three (3) business days after the Execution Date of this Agreement, each
party shall file a dismissal of their respective claims in the litigation.”
Kinsella argued that because time for performance was not included in the Agreement, a “reasonable
time” controls, and that the “reasonable time” clock started ticking on May 2, 2008. The district
court found that Kinsella could not “object to the inclusion of performance deadlines” because he
did not present any evidence before the magistrate judge that the dates were essential terms not
agreed upon by the parties, or that they were unreasonable, and because the magistrate judge “did
not consider this argument.”2
2
In their briefs, neither party addresses the district court’s refusal to consider the time-for-
performance-requirements issue. This Court has not squarely addressed whether a party may raise
new arguments before a district judge that were not presented to the magistrate judge. In Murr v.
United States, however, the Court indicated that a party’s failure to raise an argument before the
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This Court’s review is limited to issues “presented to and considered by the district court,
unless review of an issue is necessary in order to prevent manifest injustice, promote procedural
efficiency, or correct clear errors or omissions.” United States v. Markwood, 48 F.3d 969, 974 (6th
Cir. 1995). Because Kinsella failed to raise his argument regarding performance deadlines before
the magistrate judge and the district judge declined to consider the argument on that basis, it is not
properly before us.3
2. “Is Aware” and “Rhino Ultra Web Presence”
magistrate judge constitutes a waiver. 200 F.3d 895, 902 n.1 (6th Cir. 2000). Other circuits are split
regarding this issue. See Patterson-Leitch Co. v. Mass. Mun. Wholesale Elec. Co., 840 F.2d 985 (1st
Cir. 1988) (party is not entitled to review of an argument not raised before the magistrate judge);
United States v. George, 971 F.2d 1113 (4th Cir. 1992) (district court must address all arguments
regardless of whether they were raised before the magistrate judge); Cupit v. Whitley, 28 F.3d 532(5th Cir. 1994) (district court may not consider new arguments absent compelling reasons); Madol
v. Dan Nelson Auto. Group, 372 F.3d 997 (8th Cir. 2004) (party must present all claims to the
magistrate judge to preserve them for review); United States v. Howell, 231 F.3d 615 (9th Cir. 2000)
(district court has discretion to not consider an argument not presented to the magistrate judge);
Marshall v. Chater, 75 F.3d 1421 (10th Cir. 1996) (issues not raised before the magistrate judge are
deemed waived); Williams v. McNeil, 557 F.3d 1287 (11th Cir. 2009) (district court has discretion
to not consider an argument not presented to the magistrate judge), cert. denied, 129 S.Ct. 2747(June 1, 2009) (No. 08-1290).
3
Even if we did review this issue, the May 2, 2008, transcript and the transcript of the
October 23, 3008, proceedings before the magistrate judge both support conditioning time of
performance on the execution of a written agreement. On May 2, Kinsella’s counsel stated that he
wanted to finalize a settlement agreement before filing the dismissal. At the hearing to address the
terms of settlement, however, Kinsella’s counsel argued that Glidden’s “obligations were
immediate” and not “contingent upon the memorialization of some further agreement of non-
essential terms.” The magistrate judge responded to this argument by stating that the only reasonable
way to interpret the May 2 transcript was that the parties agreed to prepare a written memorialization
that would clearly indicate each parties’ responsibilities and “when the respective responsibilities
were to be accomplished.” This memorialization “would effectuate and complete the resolution”
prior to filing for dismissal. The magistrate judge reasonably understood that the parties’ agreement
to “prepare a written memorialization with greater detail” meant that details of how and when the
parties would perform their remaining obligations would be determined before performance on those
obligations was due.
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As explained supra, the Memorialization’s provision that “Glidden will contact all entities,
of which it was aware as of May 2, 2008, that offer Glidden’s Rhino Ultra adhesive for sale on the
internet to customers to recommend removal of all visual and digital references to the Rhino Ultra
Marks,” does not materially differ from the Agreement.
3. Territorial Scope
The parties disputed the territorial scope of the Agreement; Glidden believed it was limited
to the United States and Kinsella believed it extended worldwide. The magistrate judge found (1)
the parties did not have an agreement as to the territorial scope, (2) territorial scope was not a
necessary material term, and (3) the Memorialization should be modified to exclude any language
regarding territorial scope. Glidden did not object to this modification. Accordingly, the district
court struck the words “to customers in the United States” from paragraph 1(C) of the
Memorialization. Later, the district court sua sponte determined that the words “in the United
States” should also be redacted from paragraph 1(a) of the Memorialization. Neither party has
objected to these modifications of the Memorialization.
4. June 30 Deadline
Before the district court, Kinsella objected to the deadline provided by the following term
in the Memorialization: “Glidden will cease shipment of all products distributed by Glidden for sale
. . . under the Rhino Ultra Marks on or before June 30, 2008.” He argued that a reasonable time
should control because no specific date was agreed to by the parties on May 2, 2008. Even though
the magistrate judge did not consider this issue, the district court addressed it. The district court
referenced Hernandez’s affidavit, which stated that at the settlement Glidden informed Kinsella that
it planned to cease manufacturing its product and had already told its main customers that it should
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stop shipping the product on June 30, 2008. Hernandez further stated that Glidden did stop
manufacturing and shipping the Rhino Ultra product on June 30, 3008. The district court also noted
that Kinsella did not offer any evidence to the magistrate judge to dispute whether the parties agreed
to the June 30 deadline. Based on Hernandez’s testimony, the magistrate judge’s findings and the
absence of evidence presented by Kinsella, the district court essentially found that the June 30
deadline was part of the Agreement.
We also find that the deadline does not materially alter the Agreement. Kinsella has not
articulated any material differences between the Agreement and the June 30, 2008, deadline imposed
by the modified Memorialization. In fact, Kinsella does not specifically address this issue in his
briefs.
5. Supercedes and Replaces
Although he did not complain about paragraph five of the Memorialization before the
magistrate judge, Kinsella objected to its inclusion before the district court. Paragraph five provides:
Entire Understanding. This Agreement and the Exhibit hereto represent the entire
agreement and understanding between the Parties regarding the Oppositions and the
Litigation, and supercede and replace any and all prior agreements and
understandings relating to these matters.
Kinsella argued that he did not agree that any written agreement would replace the oral Agreement.
The district court found that “paragraph five simply states Ohio law and does not add an essential
term.” We agree. Kinsella does not specifically address this issue in his briefs before this Court, nor
does he articulate how paragraph five materially differs from the Agreement.
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III. CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s decision adopting the modified
Memorialization.
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