Sme Steel Contractors Inc V Seismic Bracing Company Llc
Case: 23-2426 Document: 108 Page: 1 Filed: 07/23/2025
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SME STEEL CONTRACTORS, INC., CORE-BRACE,
LLC,
Plaintiffs-Appellants
v.
SEISMIC BRACING COMPANY, LLC, ANDREW
HINCHMAN,
Defendants-Appellees
______________________
2023-2426
______________________
Appeal from the United States District Court for the
District of Utah in No. 2:17-cv-00702-RJS, Judge Robert J.
Shelby.
______________________
Decided: July 23, 2025
______________________
MICHAEL EIXENBERGER, Kirton McConkie, Salt Lake
City, UT, argued for plaintiffs-appellants. Also repre-
sented by JAMES T. BURTON, JUSTIN W. STARR.
SCOTT DAVID SWANSON, Shaver & Swanson, LLP,
Boise, ID, argued for defendants-appellees.
______________________
Case: 23-2426 Document: 108 Page: 2 Filed: 07/23/2025
2 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
Before DYK, CUNNINGHAM, Circuit Judges, and HALL,
District Judge. 1
DYK, Circuit Judge.
SME Steel Contractors, Inc. and its sister company
Core-Brace, LLC (collectively, “SME Steel”) brought claims
of patent infringement, false advertising and false associa-
tion under the Lanham Act, unfair competition and certain
deceptive trade practices under Utah state law, and copy-
right infringement against Seismic Bracing Co., LLC and
Andrew Hinchman (collectively, “Seismic Bracing”). The
United States District Court for the District of Utah
granted summary judgment to Seismic Bracing. For the
following reasons, we affirm.
BACKGROUND
I – Patent Claims
A
SME Steel Contractors, Inc. owns U.S. Patent
No. 7,174,680 (the “’680 patent”). The patent is directed to
structural support members called buckling-restrained
braces (“BRBs”) that “minimize the impact of seismic
forces” on a building. ’680 patent, col. 1 ll. 32–36. BRBs
incorporate a steel core and a concrete-filled bracing ele-
ment:
1 Honorable Jennifer L. Hall, District Judge, United
States District Court for the District of Delaware, sitting
by designation.
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SEISMIC BRACING COMPANY, LLC
Appellants’ Br. 13 (annotations in original) (citing ’680 pa-
tent, Fig. 1). Although not visible in the figure shown
above, it is critical to the function of the BRBs that the steel
core “move independently of the bracing element,” ’680 pa-
tent, col. 1 ll. 56–58, such that the steel core may undergo
“plastic deformation when subjected to seismic magnitude
forces,” id. col. 1 ll. 39–41, while the bracing element main-
tains structural integrity, id. col. 1 ll. 45–49; id. col. 2
ll. 38–41.
To facilitate independent movement of the steel core
from the bracing element, the ’680 patent describes using
an “air gap” that prevents bonding between the core mem-
ber and one or more bearing members that are part of the
bracing element. In a cross-sectional view of a BRB as
shown below, this air gap is positioned between the core
member and the bearing member, separating the steel core
from the rest of the concrete bracing element:
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4 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
Appellants’ Br. 19 (alterations and annotations in original)
(citing ’680 patent, Fig. 3). According to the patent, this air
gap “minimizes the pressure exerted on the buckling re-
straining assembly during plastic deformation of the buck-
ling restraining apparatus, allowing the core member to
expand when the core member undergoes plastic defor-
mation.” ’680 patent, col. 2 ll. 48–52.
The independent claims of the ’680 patent all recite an
“air gap” that is “formed between” or “positioned between”
the core member and the bearing members. For example,
independent claim 1, which is representative of independ-
ent claims 9, 18, and 26, recites the following:
1. A brace apparatus comprising:
a core member having a first end, a second
end, and a middle portion;
a buckling restraining assembly surround-
ing at least the middle portion of the core
member, the buckling restraining assem-
bly comprising:
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SEISMIC BRACING COMPANY, LLC
a metal support positioned external
to the core member;
a rigid cementitious layer coupled
to the metal support and surround-
ing the core member; and
at least two separate bearing mem-
bers each of which is interposed be-
tween the rigid layer and the core
member so that one side of the
bearing member is in direct contact
with the rigid layer, and an oppo-
site side of the bearing member is
not in direct contact with the core
member such that an air gap is
formed between the core member
and the bearing members;
the core member is comprised of a
single piece of metal.
’680 patent, col. 12 l. 56–col. 13 l. 5 (emphasis added). In-
dependent claim 27 recites in relevant part that “an air gap
is positioned between the first bearing member and the
core member first side and an air gap is positioned between
the second bearing member and the core member second
side, one side of each bearing member is in direct contact
with the rigid layer.” Id. col. 15 l. 30–col. 16 l. 3 (emphasis
added).
B
Seismic Bracing, founded by SME Steel’s former chief
engineer Andrew Hinchman, competes with SME Steel in
the sale of BRBs. In Seismic Bracing’s design, corrugated
carboard is affixed to the steel core of the BRB. The steel
core and cardboard are then positioned in a metal tube and
concrete is poured into the metal tube to fill the tube
around the cardboard, whereby the corrugated cardboard
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6 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
separates the concrete of the buckling restraining assem-
bly from the steel core.
In 2017, SME Steel sued Seismic Bracing, alleging that
Seismic Bracing’s BRBs infringed claims 1, 3, 4, 9, 11, 18,
26, and 27 of the ’680 patent. During claim construction,
the district court construed the claimed “air gap” as “an
empty or unfilled space or interval,” and “positioned be-
tween” and “formed between” as “spans the distance be-
tween,” the core member and bearing member. SME Steel
Contractors v. Seismic Bracing Co., No. 2:17-cv-00702,
2020 WL 1434147, at *4, *6–7 (D. Utah Mar. 24, 2020)
(“Claim Construction Order”).
Seismic Bracing sought summary judgment on SME
Steel’s patent infringement claim and related unfair com-
petition claim under Utah’s Unfair Competition Act, Utah
Code § 13-5a-103. The parties agreed that the state law
unfair competition claim rose and fell with the patent in-
fringement claim. Relevant here, the district court con-
cluded that no reasonable jury could find that Seismic
Bracing infringed the asserted claims of the ’680 patent be-
cause Seismic Bracing’s BRBs did not have an air gap that
“spans the distance between the bearing member and the
core member.” SME Steel Contractors, Inc. v. Seismic
Bracing Co., 681 F. Supp. 3d 1181, 1201–02 (D. Utah 2023)
(“Decision”) (citations and quotation marks omitted). 2
2 The district court also granted summary judgment
to Seismic Bracing of no infringement under the doctrine
of equivalents, Decision at 1202–06, which SME Steel does
not challenge on appeal.
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SME STEEL CONTRACTORS, INC. v. 7
SEISMIC BRACING COMPANY, LLC
II – Lanham Act Claims
In addition to patent infringement claims, SME Steel 3
also sued Seismic Bracing on claims of false association and
false advertising under the Lanham Act, codified in rele-
vant part at 15 U.S.C. § 1125(a)(1)(A), (B), and on related
claims of deceptive trade practice under § 13-11a-3(b), (c)
of the Utah Truth in Advertising Act (“UTAA”). These
claims all related to representations made by Seismic Brac-
ing in a Design Manual that Seismic Bracing sent to pro-
spective BRB clients in March 2017.
Amidst ninety pages of information, the Manual in-
cluded the following statements:
• “Produce capacity of over 5000 BRBs per
year.” J.A. 606.
• “These patented methods have now been
tested and qualified for use on projects in ac-
cordance with governing building codes
(AISC 341).” J.A. 604.
The Design Manual further included a report from the Uni-
versity of Utah, testing five of Seismic Bracing’s BRBs and
concluding that three of those BRBs satisfied AISC 341-10
requirements and two did not. SME Steel argued that the
statements made by Seismic Bracing in the Manual were
false 4 and that Seismic Bracing used SME Steel’s persona,
including SME Steel’s proprietary technical drawings and
3 SME Steel Contractors, Inc. sued Seismic Bracing
on some of the claims while Core-Brace, LLC sued Seismic
Bracing on the other claims. For simplicity, we refer to
both SME Steel Contractors, Inc. and Core-Brace, LLC, col-
lectively as SME Steel.
4 SME Steel asserted that the two statements above
were literally false, and other statements in the Design
Manual, while not literally false, were misleading.
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8 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
a similar logo, in the Design Manual. In turn, SME Steel
contended that Seismic Bracing was awarded bids, to SME
Steel’s detriment, on the bases of the alleged misrepresen-
tations and false association.
Seismic Bracing sought summary judgment on the
Lanham Act and related state law UTAA claims. The dis-
trict court determined SME Steel lacked standing for its
false advertising and false association claims, concluding
that SME Steel did not show that the alleged misrepresen-
tations in the Design Manual were the proximate cause of
its injury. Rejecting SME Steel’s contention that injury
should be presumed, the district court determined that
SME Steel failed to show that there was a genuine issue of
material fact as to whether Seismic Bracing made literally
false statements, and it also rejected SME Steel’s argu-
ment that Seismic Bracing acted with an intent to deceive
consumers. The district court considered related UTAA
§ 13-11a-3 claims on the merits, including, relevant to this
appeal, claims under § 13-11a-3(b), (c). 5 Because it con-
cluded that there was no genuine issue of material fact as
to likelihood of confusion, which is a required element un-
der § 13-11-a-3(b) and (c), it granted summary judgment to
Seismic Bracing on those claims.
III – Copyright Claims
SME Steel further claimed that Seismic Bracing en-
gaged in copyright infringement, alleging that Seismic
Bracing used several of SME Steel’s copyrighted technical
5 The district court also considered claims under
UTAA § 13-11-a-3(e), (g), and it denied Seismic Bracing’s
motion for summary judgment on those claims. See Deci-
sion at 1211.
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SME STEEL CONTRACTORS, INC. v. 9
SEISMIC BRACING COMPANY, LLC
drawings of BRB designs in the Design Manual. 6 Seismic
Bracing did not dispute that there are drawings in the De-
sign Manual that are identical to drawings found in SME
Steel’s copyright registrations. SME Steel argued that
Seismic Bracing’s use of these drawings infringed its copy-
right and that it was entitled to damages, particularly the
profits derived by Seismic Bracing from infringement. As
to these claims, the district court granted summary judg-
ment to Seismic Bracing, concluding SME Steel had “not
presented sufficient evidence of a causal connection” be-
tween the alleged copyright infringement and alleged Seis-
mic Bracing profits. Decision at 1220.
The district court entered final judgment on August 29,
2023. SME Steel appeals the district court’s grant of sum-
mary judgment on the claims of patent non-infringement
and related unfair trade practices under § 13-5a-103; false
association and false advertising under the Lanham Act
and related claims under UTAA § 13-11a-3(b), (c); and cop-
yright infringement. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review the district court’s grant of summary judg-
ment de novo. Crocs, Inc. v. Effervescent, Inc., 119 F.4th 1,
3 (Fed. Cir. 2024); Savant Homes, Inc. v. Collins, 809 F.3d
1133, 1137 (10th Cir. 2016). We apply our own law on is-
sues unique to patent law, and we apply the law of the
6 SME Steel’s sister company, Core-Brace, LLC,
owns U.S. Copyright Registration No. VAu001279857, ti-
tled “BRB & Connection Layouts” (“’857 Registration”);
U.S. Copyright Registration No. VAu001279862, titled
“Typical Welded BRB & Connection Layouts” (“’862 Regis-
tration”); and U.S. Copyright Registration
No. VAu001279859, titled “Typical Bolted BRB & Connec-
tion Layouts” (“’859 Registration”).
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10 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
regional circuit—in this case Tenth Circuit law—to issues
unrelated to patent law. Atlas IP, LLC v. Medtronic, Inc.,
809 F.3d 599, 604 (Fed. Cir. 2015).
I – Patent Infringement
We begin with SME Steel’s challenge to the district
court’s summary judgment determination that Seismic
Bracing does not infringe the asserted claims of the
’680 patent. SME Steel challenges the district court’s con-
struction of the claimed “positioned between” or “formed
between” as requiring that the claimed air gap “spans the
distance between” the core member and bearing members. 7
There is some ambiguity as to whether the district
court’s claim construction requires the air gap to “span[]
the distance between” the core member and bearing mem-
ber (which we call the transverse distance), whether the air
gap must also extend along the entire length of the core
member (which we call the longitudinal direction), or
whether the air gap must span both the transverse and lon-
gitudinal direction.
As to the transverse direction, SME Steel argues that
the air gap may be “formed between” or “positioned be-
tween” the core member and bearing members even if “it
does not fill the entire space,” Appellants’ Br. 44–45; see
also id. at 48, and that the steel core would still be pre-
vented from bonding to the concrete even if the air gap
spanned less than the entire distance, see id. at 49.
SME Steel’s proposed construction, however, is fore-
closed by the prosecution history of the ’680 patent. Per-
sonalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d
1336, 1340 (Fed. Cir. 2020); Tempo Lighting, Inc. v. Tivoli,
7 The parties do not dispute on appeal that “formed
between,” as used in claims 1, 9, 18, and 26, and “positioned
between,” as used in claim 27, have the same meaning.
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SME STEEL CONTRACTORS, INC. v. 11
SEISMIC BRACING COMPANY, LLC
LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). During prosecu-
tion, the patent examiner rejected claims in the application
for the ’680 patent as obvious over U.S. Patent
No. 6,826,874 (“Takeuchi”) in view of U.S. Patent
No. 6,530,182 (“Fanucci”). Takeuchi does not recite an air
gap, but the examiner argued that it would have been ob-
vious to modify Takeuchi “to show an air gap between the
core and the bearing member because having an air gap . . .
would significantly increase the failure load of the support-
ing structure as taught by Fanucci.” J.A. 430. SME Steel
responded that Takeuchi “teaches away from an air gap”
as it uses an “adhesion-preventive film to serve the purpose
of preventing the steel center member from adhering to the
concrete” and “the use of an air gap would defeat the pur-
pose” of this film. J.A. 425, 433. After a telephone inter-
view with the examiner, SME Steel amended its claims to
recite an air gap positioned between or formed between the
core member and bearing members, and the examiner al-
lowed the claims because the “prior art d[id] not show an
air gap being formed between the core member and the
bearing members . . . .” J.A. 401. SME Steel thus made
clear that the claims do not cover an air gap spanning less
than the entire transverse direction and do not permit
other material in the transverse direction partitioning the
air gap. Any ambiguity created by Figure 4 of the specifi-
cation cannot support a contrary construction. See Person-
alized Media, 952 F.3d at 1346 (determining prosecution
history statements and amendments were decisive even
where specification was ambiguous). There is no dispute
that, under the district court’s construction, Seismic Brac-
ing’s BRBs do not infringe the claims. See Appellants’
Br. 63 (arguing only that Seismic Bracing’s cardboard de-
sign infringes under SME Steel’s proposed construction).
As to the longitudinal direction, SME Steel itself con-
cedes that the claimed invention must have an air gap that
“extend[s] the entire length of the steel core,” Appellants’
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12 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
Br. 49 n.1. SME Steel has failed to raise a genuine issue of
material fact as to whether Seismic Bracing’s BRBs in-
fringe the asserted claims because it has not provided any
evidence showing that there is an air gap extending along
the length of the steel core member of Seismic Bracing’s
BRBs.
The accused products have corrugated cardboard
wrapped around the steel core member. See Appel-
lants’ Br. 15; Appellees’ Br. 33. SME Steel itself describes
the cardboard of the accused products as having “a top
layer, a bottom layer, an internal corrugated layer, and
multiple air pockets between the top and bottom layer.”
Appellants’ Br. 24 (citing J.A. 497); see also Appellants’
Br. 26 (“[Seismic Bracing]’s BRBs have multiple unfilled
spaces . . . .”). There is no evidence in the record of any air
gap that extends along the length of the steel core, and
SME Steel, who bears the burden on infringement, has not
identified any such evidence. Accordingly, we affirm the
district court’s grant of summary judgment on patent non-
infringement to Seismic Bracing.
Both parties also agree that SME Steel’s related alle-
gations under Utah’s Unfair Competition Act “rise or fall
with the [c]ourt’s determination of the alleged patent in-
fringement claims.” Appellants’ Br. 63–64 (citing
J.A. 555); see also Appellees’ Br. 62–63. We thus also af-
firm the district court’s grant of summary judgment in
Seismic Bracing’s favor on SME Steel’s unfair competition
claims under Utah Code § 13-5a-103.
II – Lanham Act Claims
We next turn to SME Steel’s Lanham Act claims. SME
Steel argues that the district court erred in granting sum-
mary judgment to Seismic Bracing on SME Steel’s false ad-
vertising and false association claims under
15 U.S.C. § 1125(a)(1)(A) and (B) as well as on SME Steel’s
related UTAA § 13-11a-3(b),(c) claims.
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SME STEEL CONTRACTORS, INC. v. 13
SEISMIC BRACING COMPANY, LLC
A – Standing
Citing the Supreme Court’s framework in Lexmark In-
ternational, Inc. v. Static Control Components, Inc.,
572 U.S. 118 (2014), the district court determined that
SME Steel did not have statutory standing to sue under the
Lanham Act. See Decision at 1207–11.
SME Steel contends that the district court miscon-
strued Tenth Circuit law on standing. We need not address
the district court’s statutory standing determination, how-
ever, because SME Steel has failed to show a genuine issue
of material fact on the merits of its Lanham Act claims,
particularly with respect to a showing of injury. Carolina
Cas. Ins. Co. v. Pinnacol Assur., 425 F.3d 921, 926
(10th Cir. 2005) (“[S]tatutory standing need not be ad-
dressed if the court determines that the plaintiff loses on
the merits anyway.”); see also Wise v. DeJoy, 71 F.4th 744,
751 (10th Cir. 2023) (explaining, on review of summary
judgment, that the appellate court “ha[s] discretion to af-
firm on any ground adequately supported by the record”). 8
8 The district court determined SME Steel lacked
standing to sue under the Lanham Act for both the false
association and false advertising claims because it did not
show injury flowing from Seismic Bracing’s alleged misrep-
resentations nor did it show it was entitled to a presump-
tion of injury. See Decision at 1207–11. There appears to
be a question under Tenth Circuit law whether standing
may be established by a presumption of injury. See Vita-
mins Online, Inc. v. Heartwise, Inc., 71 F.4th 1222, 1239
n.5 (10th Cir. 2023) (explaining that the court has, in the
past, “reject[ed] plaintiff’s argument that standing could be
proven by resorting to the presumption of injury” (citing
Hutchinson v. Pfeil, 211 F.3d 515, 522 (10th Cir. 2000))).
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14 SME STEEL CONTRACTORS, INC. v.
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B – False Advertising
SME Steel’s allegations for false advertising fail be-
cause no reasonable jury could find that SME Steel has
shown a causal connection between misrepresentations by
Seismic Bracing and SME Steel’s injuries. For a false ad-
vertising claim under 15 U.S.C. § 1125(a)(1)(B), “a plaintiff
must . . . prove[] an injury to a commercial interest in sales
or business reputation proximately caused by the defend-
ant’s misrepresentations.” Am. Soc. of Home Inspectors,
Inc. v. Int’l Ass’n of Certified Home Inspectors, 36 F.4th
1238, 1242 (10th Cir. 2022) (quoting Lexmark, 572 U.S. at
140). To this end, a plaintiff “must prove a ‘causal connec-
tion’ between the defendant’s false advertising and the
plaintiff’s injuries,” Vitamins, 71 F.4th at 1238 (citation
omitted), and “cannot obtain relief without evidence of in-
jury,” Am. Soc. of Home Inspectors, 36 F.4th at 1242 (quot-
ing Lexmark, 572 U.S. at 140).
1
To the extent SME Steel alleges there is sufficient evi-
dence showing a causal link between its harm and the al-
leged misrepresentations in the Design Manual, we
disagree. SME Steel only established that the Design Man-
ual was sent to several potential customers and that Seis-
mic Bracing successfully bid on projects that involved those
customers while SME Steel also (unsuccessfully) submit-
ted competing bids on most of those projects. SME Steel
did not present any evidence that the Design Manual—let
alone the handful of representations alleged to be
We need not address this question, however, because we
otherwise affirm the grant of summary judgment on the
merits of SME Steel’s Lanham Act claims.
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misleading within this ninety-page document—played any
role in SME Steel’s loss of bids.
2
Alternatively, SME Steel argues that it is entitled to a
presumption of injury because SME Steel and Seismic
Bracing are competitors in a sparsely populated market.
Under Tenth Circuit law, where “the plaintiff and defend-
ant are the only two significant participants” in a two-
player market, injury may be presumed if the plaintiff
shows the defendant made literally false statements or
made statements that were literally true but were likely to
mislead or confuse customers. Vitamins, 71 F.4th at 1235,
1240; Zoller Lab’ys, LLC v. NBTY, Inc., 111 F. App’x 978,
982 (10th Cir. 2004) (non-precedential).
i
SME Steel argues that two of Seismic Bracing’s state-
ments in the Design Manual are literally false. First, it
contends that Seismic Bracing misrepresented its “[p]ro-
duce capacity of over 5000 BRBs per year.” J.A. 606. On
its face, the statement, which appears under the heading
“[Seismic Bracing] Capabilities,” id., refers to future capac-
ity. SME Steel asserts that the statement is literally false
because Seismic Bracing uses third-party fabrication shops
and did not have such a manufacturing capacity itself. The
district court did not err in concluding that “produce”—
which can have multiple definitions and may be defined as
“to make available for public exhibition or dissemination:
such as . . . to oversee the making of,” Decision
at 1210 n.181—is ambiguous, precluding literal falsity.
See I Dig Texas, LLC v. Creager, 98 F.4th 998, 1009
(10th Cir. 2024) (“A statement can be literally false only if
it is unambiguous.”). SME Steel does not dispute the mul-
tiple dictionary definitions of “produce,” and instead argues
a jury could conclude the word means the same thing as
fabricate. This merely demonstrates that the term might
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16 SME STEEL CONTRACTORS, INC. v.
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have another meaning and is thus ambiguous. SME Steel
also does not dispute that Seismic Bracing had production
capabilities through its manufacturers. A reasonable jury
could not conclude the statement is literally false.
Second, SME Steel argues that Seismic Bracing’s state-
ment that its “patented methods have now been tested and
qualified for use on projects in accordance with governing
building codes (AISC 341),” J.A. 604, is literally false be-
cause Seismic Bracing “made th[e] claim right after two of
the five tested BRBs failed testing” under the AISC re-
quirements. Appellants’ Br. 66. Again, we see no error in
the district court’s determination that this statement was
ambiguous, as the statement could have referred to the
BRBs that satisfied the testing requirements, not all of
Seismic Bracing’s BRBs.
ii
SME Steel further contends that, even if the state-
ments are not literally false, the statements were impliedly
false, Seismic Bracing acted with intent to deceive consum-
ers, and SME Steel is thus entitled to a presumption of con-
sumer deception. Appellants’ Br. 68–69. In some circuits,
a party’s “intent to deceive is an independent basis for trig-
gering a presumption of consumer deception.” See Cash-
mere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d
302, 315 n.31 (1st Cir. 2002); see also id. at 316; Merck
Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 260–61 (2d. Cir.
2014)). While at least one other district court in the Tenth
Circuit has endorsed the use of this intent-to-deceive-based
presumption, Vitamins Online, Inc. v. HeartWise, Inc.,
No. 2:13-cv-009820-DAK, 2019 WL 6682313, at *9
(D. Utah Sept. 24, 2019), it is not well-settled whether the
Tenth Circuit has adopted this test.
Even assuming this test is proper under Tenth Circuit
law, the district court correctly concluded that no reasona-
ble jury could conclude that Seismic Bracing acted with
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SME STEEL CONTRACTORS, INC. v. 17
SEISMIC BRACING COMPANY, LLC
intent to deceive. As evidence of intent to deceive, SME
Steel only identified testimony from Mr. Hinchman as to
his awareness of what factors a potential customer might
consider important in buying a BRB. See Appellants’
Br. 69–71. This is insufficient to show a genuine dispute of
material fact as to intent. See Res. Developers, Inc. v.
Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134,
141 (2d. Cir. 1991) (affirming no deliberate deception
where proof proffered “rests only upon speculation and con-
jecture”).
In sum, no reasonable jury could conclude that SME
Steel has demonstrated injury in this case, and the district
court did not err in granting summary judgment in Seismic
Bracing’s favor on false advertising.
C – False Association
SME Steel further challenges the district court’s grant
of summary judgment to Seismic Bracing on its claims of
false association under the Lanham Act as codified at
15 U.S.C. § 1125(a)(1)(A). Under § 1125(a)(1)(A), a person
may be liable for using, “in connection with any goods and
services,” “any word, term, name, symbol . . . or any false
designation of origin,” which “is likely to cause confu-
sion . . . as to the affiliation, connection, or association of
such person with another person, or as to the origin, spon-
sorship, or approval of his or her goods, services, or com-
mercial activities by another person.”
As a threshold matter, it is not clear what the basis for
SME Steel’s false association claim is. SME Steel concedes
that “this case does not involve a mark,” Appellants’ Br. 72,
but instead, it appears to contend that it has a particular
corporate persona, akin to an individual celebrity, and
Seismic Bracing appropriated that persona in its Design
Manual. Whether an alleged misappropriation of a corpo-
rate persona under the Lanham Act can support a false as-
sociation claim under Tenth Circuit law is unclear, but in
Case: 23-2426 Document: 108 Page: 18 Filed: 07/23/2025
18 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
any event, SME Steel agrees that it must establish likeli-
hood of confusion.
To analyze the likelihood of confusion under
§ 1125(a)(1)(A), the Tenth Circuit has used six factors,
which the parties argue should be applied here. These fac-
tors, known as the King of the Mountain factors, are (1) the
degree of similarity between the marks; (2) the intent of
the alleged infringer in adopting its mark; (3) evidence of
actual confusion; (4) the relation in use and the manner of
marketing between the goods or services marketed by the
competing parties; (5) the degree of care likely to be exer-
cised by purchasers; and (6) the strength or weakness of
the marks. 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d
1229, 1239 (Fed. Cir. 2013) (citing King of the Mountain
Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089–90
(10th Cir. 1999)). These factors are non-exhaustive, and
depending on the context of a particular case, “certain facts
[may be] more probative . . . and dominate the analysis. Id.
at 1243.
The district court considered the King of the Mountain
factors individually and as a whole, and it determined
there was no genuine issue of material fact as to likelihood
of confusion. We do not see any error in the district court’s
conclusion. There is no dispute that customers are sophis-
ticated and select BRBs through a bidding process. Given
the admitted care that customers will exercise in reviewing
materials related to the bids and selecting BRBs, as well as
the absence of evidence of actual confusion, we agree that
no reasonable jury could conclude that there was a likeli-
hood of confusion. Accordingly, we affirm the district
Case: 23-2426 Document: 108 Page: 19 Filed: 07/23/2025
SME STEEL CONTRACTORS, INC. v. 19
SEISMIC BRACING COMPANY, LLC
court’s grant of summary judgment to SME Steel on SME
Steel’s claims of false association. 9
III – Copyright Damages
Finally, SME Steel challenges the district court’s grant
of summary judgment to Seismic Bracing on SME Steel’s
copyright claim. The district court determined that SME
Steel had not presented sufficient evidence of actual dam-
ages because it had not shown a causal connection between
the alleged infringement and any subsequent purchases of
Seismic Bracing’s BRBs. Decision at 1219. Under
17 U.S.C. § 504, “an infringer of copyright is liable for ei-
ther—(1) the copyright owner’s actual damages and any
additional profits of the infringer . . . or (2) statutory dam-
ages.” For copyright damages, “the plaintiff can recover ei-
ther on its own damages or on the infringer’s profits.” I Dig
Texas, 98 F.4th at 1007.
Here, SME Steel admits that it only sought actual dam-
ages, not statutory damages, and that it was entitled to in-
direct profits representing the benefit derived by Seismic
Bracing as a result of infringement. See Appellants’
Br. 87–88. To show indirect profits, the copyright holder
bears “the initial burden to show a nexus between [the al-
leged] infringement and making of a profit,” and [t]hat
showing must go beyond speculation.” I Dig Texas,
98 F.4th at 1007–08 (citations omitted).
9 SME Steel also challenges the district court’s grant
of summary judgment under § 13-11a-3(b), (c) of the UTAA.
The parties agree these claims rise and fall with our deter-
mination on the Lanham Act claims. See Appellants’
Br. 81; Appellees’ Br. 71. Because we affirm the district
court’s grant of summary judgment on the Lanham Act
claims, we also affirm the district court’s grant of summary
judgment on the UTAA claims.
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20 SME STEEL CONTRACTORS, INC. v.
SEISMIC BRACING COMPANY, LLC
The district court properly concluded that Seismic
Bracing was entitled to summary judgment on SME Steel’s
copyright claim. SME Steel’s copyright damages conten-
tion, on which SME Steel bears the ultimate burden, was
based only on speculation, which is insufficient. See I Dig
Texas, 98 F.4th at 1008 (affirming summary judgment of
no infringement where holder had not shown a nexus be-
tween profits and infringement where it only showed that
copyrighted photographs were included in alleged in-
fringer’s advertisements, but did not present any evidence
that infringer sold any more products because of the use of
copyrighted photographs). While SME Steel argued that
some of the companies who received the Design Manual
later purchased BRBs from Seismic Bracing, SME Steel
does not dispute that it failed to present any evidence that
the companies’ purchase decisions were related to the use
of SME Steel’s copyrighted material.
IV – Evidence of Damages
Finally, SME Steel argues that summary judgment
was inappropriate for its Lanham Act and Copyright
claims because the district court refused to allow SME
Steel to gather evidence of damages through third-party
subpoenas. During discovery, the magistrate judge issued
an order on a motion to quash, which prohibited the parties
“from serving document discovery or deposition subpoenas
upon any third party pertaining to any open bid,” J.A. 104,
in situations where SME Steel and Seismic Bracing were
submitting competing bids.
SME Steel failed to preserve its argument for appeal.
SME Steel did not appeal the magistrate judge’s order to
the district court as required under the prevailing protec-
tive order and Rule 72(a) of the Federal Rules of Civil Pro-
cedure, nor did it argue at summary judgment that
relevant facts were unavailable under Rule 56(d). SME
Steel accordingly forfeited its argument on third-party
Case: 23-2426 Document: 108 Page: 21 Filed: 07/23/2025
SME STEEL CONTRACTORS, INC. v. 21
SEISMIC BRACING COMPANY, LLC
subpoenas. See Sinclair Wyoming Refining Co. v. A & B
Builders, 989 F.3d 747, 782–83 (10th Cir. 2021) (summa-
rizing cases holding that forfeiture applies when a party
fails to object to a magistrate judge’s non-dispositive order);
Helget v. City of Hays, Kansas, 844 F.3d 1216, 1226
(10th Cir. 2017) (“A nonmovant failing to raise the eviden-
tiary impediments preventing it from meeting its summary
judgment burden acts at its own peril.”). Moreover, con-
trary to SME Steel’s argument that it was “prevented from
discovering evidence of damages,” Appellants’ Br. 90, dis-
covery was not prohibited for closed bids, and the order per-
mitted a party to approach the court for a variance if bids
were still open near the approach of the close of discovery.
See J.A. 104–05. The restrictions on disclosure did not con-
stitute an abuse of discretion.
CONCLUSION
We have considered SME Steel’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the district court’s grant of summary judgment.
AFFIRMED