STEPHEN F. EVANS, ROOF N BOX, INC., Plaintiffs-Appellees
BUILDING MATERIALS CORPORATION OF AMERICA, DBA GAF-ELK CORPORATION, Defendant-Appellant
from the United States District Court for the Eastern
District of Virginia in No. 1:16-cv-00282-GBL-IDD, Judge
Gerald Bruce Lee.
Gregory N. Stillman, Hunton & Williams LLP, Norfolk, VA,
argued for plaintiffs-appellees. Also represented by Wendy
Dennis Murnane, Fitzpatrick, Cella, Harper & Scinto, New
York, NY, argued for defendant-appellant. Also represented by
Robert Scott Pickens; Justin J. Oliver, Washington, DC.
Reyna, Linn, and Taranto, Circuit Judges.
TARANTO, CIRCUIT JUDGE.
September 2009, Roof N Box, Inc. (RNB) and Building Materials
Corp. of America d/b/a GAF-ELK Corp. (GAF) entered into an
agreement under which GAF would promote RNB's "Roof
N Box" product, a three-dimensional roofing model, to
building-construction contractors affiliated with GAF. The
agreement contains a provision that requires the parties to
submit disputes "arising under" the agreement to
arbitration. GAF terminated the agreement after about a year,
and the validity of that termination is not at issue.
March 2016, RNB, together with its founder and president,
Stephen Evans, brought the present suit against GAF based on
GAF's activities in marketing its own product that
competes with the Roof N Box product. The complaint alleges
design-patent infringement under federal law as well as
trade-dress infringement and unfair competition under federal
and state law. GAF moved to dismiss or stay the action
pending arbitration based on the 2009 agreement's
arbitration provision. The district court denied that motion.
GAF appeals. Because GAF's assertion that the arbitration
provision covers the claims stated in the complaint is
"wholly groundless, " a standard that GAF accepts
as applicable in this case, we affirm.
Evans is the inventor of the "Roof N Box" product,
a three-dimensional roofing model designed to be used by a
seller of roofing products and services to display roofing
components when making a sales pitch to a homeowner.
According to Mr. Evans and RNB, the Roof N Box product allows
a salesperson to remove or replace the layers of roofing on
the model while explaining the roofing layers, their
functions, and their terminologies. In June 2007, Mr. Evans
filed a design patent application for the model, which issued
as U.S. Design Patent No. D575, 509.
September 2009, RNB entered into a promotional agreement with
GAF. GAF agreed to promote the Roof N Box product to
GAF's network of certified contractors who installed
roofing on residential and commercial structures. RNB agreed
to sell the Roof N Box product at discounted prices to the
GAF contractors and to pay GAF five percent of the total
amount that RNB received from those sales. RNB also agreed to
maintain the confidentiality of GAF's proprietary
information. Unless terminated, the agreement was to remain
in effect until September 1, 2016, and would thereafter
automatically renew for additional two-year renewal periods.
2009 agreement contains an arbitration provision, which
states: "If any dispute or disagreement arises under
this Agreement, " and the "dispute or disagreement
cannot be settled[, ] . . . then such dispute or disagreement
shall be submitted to final and binding arbitration in
accordance with the rules of American Arbitration Association
. . . unless otherwise agreed to, in writing, by both
Parties." J.A. 84. The agreement also contains what GAF
characterizes as a survival clause, which states:
"[T]ermination for default . . . [shall not] constitute
a waiver of any rights or remedies of the non-defaulting
Party including, without limitation, the right of the
non-breaching Party to seek damages for breaches occurring
during the Initial Term or any Renewing Term." J.A. 80.
GAF terminated the agreement in 2010.
March 2016, Mr. Evans and RNB sued GAF in the Eastern
District of Virginia. See Complaint, Evans v.
Bldg. Materials Corp. of Am., No. 1:16-cv-282-GBL-IDD
(E.D. Va. Mar. 14, 2016), ECF No. 1. The complaint states the
following claims: Counts I and II for, respectively, direct
and induced patent infringement under 35 U.S.C. § 271(a)
and (b); Count III for unfair competition and trade-dress
infringement under 15 U.S.C. § 1125(a); Count IV for
unfair competition and trade-dress infringement under state
common law; and Count V for unfair competition under N.J.
Stat. § 56:8-2. The complaint alleges that, after the
termination of the 2009 agreement, GAF manufactured and sold
an infringing roofing model that competed with the Roof N Box
product. GAF does not dispute that it developed and sold a
promotional roofing product.
2016, GAF moved to dismiss or stay the action pending
arbitration, invoking the 2009 agreement's arbitration
provision. See Defendant's Motion to Dismiss or,
in the Alternative, To Compel Arbitration and Stay
Proceedings, Evans, No. 1:16-cv-282-GBL-IDD (E.D.
Va. May 13, 2016), ECF No. 13. The district court denied the
motion. See Memorandum Opinion & Order,
Evans, No. 1:16-cv-282-GBL-IDD (E.D. Va. July 6,
2016), ECF No. 32. The court held that the arbitration
provision did not cover the claims in the complaint because
GAF terminated the agreement before the parties' dispute
arose. Id. at 5-8. In the alternative, the court
held that the claims were outside the scope of the
arbitration provision. Id. at 8-10.
appeals. We have jurisdiction under 28 U.S.C. §
1292(c)(1). See Microchip Tech. Inc. v. U.S. Philips