                 REVISED MARCH 16, 2009
        IN THE UNITED STATES COURT OF APPEALS
                 FOR THE FIFTH CIRCUIT
                                                               United States Court of Appeals
                                                                        Fifth Circuit

                                                                    FILED
                                                               February 23, 2009
                                No. 08-30804
                              Summary Calendar               Charles R. Fulbruge III
                                                                     Clerk

ORECK DIRECT LLC

                                            Plaintiff - Appellant
v.

DYSON INC.

                                            Defendant - Appellee



                Appeal from the United States District Court
                    for the Eastern District of Louisiana


Before JOLLY, BENAVIDES, and HAYNES, Circuit Judges.
HAYNES, Circuit Judge:
      Oreck Direct, LLC (“Oreck”) appeals from the district court’s grant of
summary judgment in favor of Dyson, Inc. (“Dyson”). We AFFIRM.
                                       I.
      On February 10, 2005, Oreck filed a false advertising claim under § 43(a)
of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B) (2006), and the Louisiana Unfair
Trade Practices Act ( the “LUTPA”), LA. REV. STAT. ANN. § 51:1405 (2008), in the
Eastern District of Louisiana against Dyson, one of its major competitors in the
vacuum cleaner industry. In this first suit (“Oreck I”), Oreck alleged that Dyson
falsely advertised that its vacuum cleaners do not lose suction; by supplemental
                                     No. 08-30804

complaint, additional claims of false advertising were raised. Oreck did not limit
its claims to representations about specific Dyson vacuum cleaner models or to
specific modes of advertising or promotion. Oreck and Dyson eventually decided
to settle Oreck I. They signed a binding term sheet,1 which ultimately was to be
replaced by a complete written settlement agreement, and they entered a joint
motion to dismiss that advised the district court that they had settled their
dispute.   On January 10, 2007, the district court dismissed Oreck I with
prejudice. The court’s order did not incorporate by reference the parties’ term
sheet, and it did not include any language limiting its scope. The parties
negotiated and executed a Settlement Agreement and Mutual Release
(“Settlement Agreement”) on February 28, 2007.
      On May 1, 2007, Oreck filed another false advertising complaint against
Dyson in the Eastern District of Louisiana alleging that Dyson’s “no loss of
suction” and “most powerful lightweight” representations regarding its DC18
model were false and deceptive in violation of § 43(a) of the Lanham Act and
LUTPA. Dyson moved to dismiss, or alternatively, for summary judgment. The
district court granted summary judgment in favor of Dyson, finding that the
claims in Oreck’s present action were part of the same series of transactions at
issue in Oreck I and therefore barred by res judicata.
      Oreck sought reconsideration from the district court on March 3, 2008,
arguing that the district court failed to consider in its res judicata analysis the
parties’ subjective intent as reflected in the Settlement Agreement. The district
court denied Oreck’s motion to reconsider, finding no manifest error in its
decision to apply traditional res judicata analysis. The district court noted that




      1
         In the term sheet, the parties agreed to (1) “dismiss their respective claims with
prejudice, and without costs” and (2) “provide full and complete releases for all
advertising . . . claims arising out of, and related to, the claims in the litigation.”

                                            2
                                  No. 08-30804

even if it had considered the terms of the Settlement Agreement, the outcome of
the case would have been the same. Oreck appeals.
                                        II.
      We review a district court’s grant of summary judgment de novo. Whitt
v. Stephens County, 529 F.3d 278, 282 (5th Cir. 2008). “Summary judgment is
appropriate where ‘the pleadings, the discovery and disclosure materials on file,
and any affidavits show that there is no genuine issue as to any material fact
and that the movant is entitled to judgment as a matter of law.’” Id. (quoting
FED. R. CIV. P. 56(c) (as amended eff. Dec. 1, 2007)). “The res judicata effect of
a prior judgment is a question of law that we review de novo.” Davis v. Dallas
Area Rapid Transit, 383 F.3d 309, 313 (5th Cir. 2004).
                                       III.
      “Under res judicata, a final judgment on the merits of an action precludes
the parties or their privies from relitigating issues that were or could have been
raised in that action.” Allen v. McCurry, 449 U.S. 90, 94 (1980). Res judicata
“insures the finality of judgments and thereby conserves judicial resources and
protects litigants from multiple lawsuits.” United States v. Shanbaum, 10 F.3d
305, 310 (5th Cir. 1994). Res judicata prevents a later suit, such as this one,
from collaterally attacking a prior judgment by a court of competent jurisdiction.
See In the Matter of Williams, 298 F.3d 458, 461 (5th Cir. 2002) (prior final order
cannot be collaterally attacked). Four elements must be met for a claim to be
barred by res judicata: “(1) the parties must be identical in the two actions; (2)
the prior judgment must have been rendered by a court of competent
jurisdiction; (3) there must be a final judgment on the merits; and (4) the same
claim or cause of action must be involved in both cases.” In re Ark-La-Tex
Timber Co., 482 F.3d 319, 330 (5th Cir. 2007).
      In the present case, the first three elements of res judicata are not in
dispute: the parties in Oreck I and the present case are identical, the judgment

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in Oreck I was rendered by a court of competent jurisdiction, and the district
court’s dismissal of the case with prejudice was a final judgment on the merits.
See Fernandez-Montes v. Allies Pilots Ass’n, 987 F.2d 278, 284 n.8 (5th Cir. 1993)
(“A dismissal which is designated ‘with prejudice’ is ‘normally an adjudication
on the merits for purposes of res judicata.’” (citation omitted)); see also In re W.
Tex. Mktg. Corp., 12 F.3d 497, 500 (5th Cir. 1994) (“[T]his [C]ourt has long
recognized that a consent judgment is a judgment on the merits, and is normally
given the finality accorded under the rules of claim preclusion.” (internal
quotation marks and citations omitted)).2 The parties only dispute whether the
fourth element is satisfied.
       In determining whether the fourth element was satisfied, the district court
applied the “transactional test,” which “requires that the two actions be based
on the same ‘nucleus of operative facts.’” Ark-La-Tex, 482 F.3d at 330 (quoting
Eubanks v. FDIC, 977 F.2d 166, 171 (5th Cir. 1992)). “[A] prior judgment’s
preclusive effect extends to all rights of the plaintiff ‘with respect to all or any
part of the transaction, or series of connected transactions, out of which the
[original] transaction arose.’” Davis, 383 F.3d at 313 (quoting Petro-Hunt, LLC
v. United States, 365 F.3d 385, 395-96 (5th Cir. 2004)). What constitutes a
“transaction” or a “series of transactions” is determined by weighing various
factors such as “‘whether the facts are related in time, space, origin, or
motivation[;] whether they form a convenient trial unit[;] and whether their
treatment as a unit conforms to the parties’ expectations or business


       2
          An exception to this general rule exists for jurisdictional dismissals, which are
“insufficient to serve as final judgments on the merits for res judicata purposes.” Miller v.
Nationwide Life Ins. Co., No. 06-31178, 2008 WL 3086783, at *5 (5th Cir. Aug. 6, 2008) (citing
Darlak v. Bobear, 814 F.2d 1055, 1064 (5th Cir. 1987) (holding that a dismissal under the
Eleventh Amendment is not “on the merits” for res judicata purposes); Nilsen v. City of Moss
Point, 701 F.2d 556, 562 (5th Cir. 1983) (en banc) (holding, in a res judicata context, that
“[d]ismissals for want of jurisdiction are not decisions on the merits . . . .”)). This exception
does not apply to the present case.

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                                        No. 08-30804

understanding or usage.’” Davis, 383 F.3d at 313 (quoting Petro-Hunt, 365 F.3d
at 395-96).
       Oreck challenges the district court’s analysis of the fourth element as
error. Oreck contends that the district court should have abandoned the
transactional test entirely and determined the scope of res judicata by the
parties’ actual intentions as reflected in the Settlement Agreement. There is no
authority from this circuit supporting Oreck’s position,3 especially since the final
judgment in Oreck I simply dismissed the case with prejudice without
incorporating the Settlement Agreement , the terms of which were finalized after
the consent judgment was entered, or any express reservations. See Hospitality
House, Inc. v. Gilbert, 298 F.3d 424, 430 (5th Cir. 2002) (explaining that a
district court may make a settlement agreement part of its dismissal order
“‘either by separate provision (such as a provision retaining jurisdiction over the
settlement agreement) or by incorporating the terms of the settlement
agreement in the order.’” (quoting Kokkonen v. Guardian Life Ins. Co., 511 U.S.
375, 380-81 (1994)). “The judge’s mere awareness and approval of the terms of
the settlement agreement do not suffice to make them part of his order.”
Kokkonen, 511 U.S. at 381.




       3
          Oreck misapplies precedent from this circuit in its brief. For example, Kaspar Wire
Works, Inc. v. Leco Eng’g & Machine, Inc., 575 F.2d 530, 532 (5th Cir. 1978), addresses the
question of the res judicata effect of a dismissal with prejudice in a declaratory judgment action
(not the case here) and the question of collateral estoppel, or issue preclusion, following a
consent decree. Similarly, Fin. Acquisition Partners, LP v. Blackwell, 440 F.3d 278, 284 (5th
Cir. 2006), and Hughes v. Santa Fe Int’l Corp., 847 F.2d 239, 241 (5th Cir. 1988), address
issue, not claim, preclusion. In Liberto v. D.F. Stauffer Biscuit Co., 441 F.3d 318, 327 (5th Cir.
2006), the consent judgment expressly incorporated a vague and inconclusive settlement
agreement. Thus, of necessity, the court had to look at the settlement agreement and
concluded: “the language of the Settlement Agreement is, at best, inconclusive, offering little
support for finding that incorporating it into an agreed judgment gave it any preclusive teeth.”
Id. FDIC v. Brants, 2 F.3d 147, 149 (5th Cir. 1993), is a case specifically about a settlement
agreement, not the preclusive effect of a judgment.

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                                         No. 08-30804

       Cases Oreck cites from other circuits are not contrary. See Norfolk S.
Corp. v. Chevron USA, Inc., 371 F.3d 1285, 1291 (11th Cir. 2004) (parties can
waive later res judicata defense by using an “exclusive list” of claims subject to
release in their settlement agreement);4 Keith v. Aldridge, 900 F.2d 736, 740
(4th Cir. 1990) (“The law does recognize an exception to the normal application
of claim preclusion principles when the parties have agreed to the splitting of a
single claim. ‘Express agreement’ between the parties that litigation of one part
of a claim will not preclude a second suit on another part of the same claim is
normally honored by the courts.”).5 Thus, the district court did not err by
applying the transactional test in determining whether the fourth element of res
judicata was satisfied.
       Oreck argues that even if the transaction test is the proper test, the
district court should not have granted summary judgment for Dyson because a
genuine issue of material fact existed as to whether the false advertising claims
in the present case concerning the DC18 are the same as those involved in Oreck
I. We disagree. In Oreck I, Oreck alleged the same causes of action (false
advertising under § 43(a) of the Lanham Act and violation of the LUTPA) as it
alleges here and launched a broad attack against false advertisements used to
promote “Dyson vacuum cleaners.” Oreck did not limit its claims to particular
Dyson models. Furthermore, Dyson was advertising the DC18 to retailers
during the pendency of Oreck I and using the “no loss of suction” representations
Oreck then alleged to be false. On November 29, 2006, Target agreed to

       4
          It is unnecessary in this case for us to determine whether we agree with the reasoning
in Norfolk. Even if we applied its holding to this case, it would not change the outcome.
Unlike the parties in Norfolk, the parties here did not make an “exclusive list” of matters
settled thus carving out other claims for another day. Instead, Oreck expressly gave Dyson
a “full and complete release[] from all advertising and patent claims arising out of, and related
to, the claims in the Action.” Such a broad release cannot be read as an “exclusive list.” See also
infra note 8.
       5
           We find no such “express agreement” to split a claim in this case.

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purchase a significant number of DC18 vacuums, and throughout late November
and early December 2006, Sears, Bed Bath & Beyond, and Circuit City all
forecasted purchasing thousands of DC18 vacuums.6
       No evidence was presented that fraud or misrepresentation by Dyson
prevented Oreck from challenging the DC18 in Oreck I; indeed Dyson produced
information concerning the DC18 (then labeled as the “N70”) during discovery.
See RESTATEMENT (SECOND)              OF   JUDGMENTS, § 26, cmt. j (articulating an
exception to the general rule of res judicata in cases of fraud or
misrepresentation by defendant). Because Oreck’s claims concerning the DC18
“‘could have been advanced in support of the cause[s] of action [in Oreck I,]’” res
judicata bars Oreck’s present suit. Davis, 383 F.3d at 314 (quoting Nilsen, 701
F.2d at 560) (emphasis in original)).
       Like the district court, we find no merit in Oreck’s contention that the
same claims are not involved because, at the time of Oreck I, the DC18 was only
being promoted to retailers, not advertised and sold to individual consumers.
See Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1385 (5th Cir. 1996)
(“[N]othing in the language of §43(a) [of the Lanham Act] specifically requires
a false representation be intended to influence the ultimate consumer, whoever
that might be.” (emphasis in original) (internal quotation marks and citation
omitted)). Also, we find no merit in Oreck’s contention that the instant claims
were not the same as those in Oreck I because Oreck now challenges Dyson’s “no
loss of suction” representations and its “most powerful lightweight”


       6
         Oreck submits that, at the time of Oreck I, it would have lacked standing to challenge
Dyson’s advertising of the DC18 to retailers because its injury would have been too speculative.
However, as the district court correctly noted in its opinion, the record indicates overlap in the
retailers used by Oreck and Dyson to market and sell their vacuum cleaners (Bed Bath &
Beyond, for example). To the extent Oreck and Dyson are direct competitors for shelf space,
any false advertising claims by Dyson would have likely influenced retailers to place Dyson’s
product in the marketplace rather than Oreck’s. Thus, we agree with the district court that
this argument is without merit.

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representations. Both advertisements were being used by Dyson during Oreck
I to promote the DC18 to national retailers. Had Oreck properly included the
DC18 in its first suit, Dyson’s “most powerful lightweight” representations would
have likewise been included.7
       At bottom, Oreck’s false advertising claims concerning the DC18 – both the
“no loss of suction” claim and the “most powerful lightweight” claim – arise from
the same series of transactions from which Oreck I arose. Consequently, we
agree with the district court’s holding that these claims are barred by res
judicata.8
       AFFIRMED.




       7
         Indeed, Oreck did exactly this during Oreck I, supplementing its Complaint as Dyson
made new advertising claims related to its vacuum cleaner models. Specifically, Oreck added
claims that Dyson had engaged in more false advertising by making statements that:
“Vacuums don’t work effectively. Dyson does.”; and that Dyson’s vacuums have “no extra
costs” and “no maintenance costs.”
       8
         We likewise agree with the district court’s analysis in its order denying Oreck’s request
for reconsideration that even if the terms of the Settlement Agreement had dictated the scope
of the res judicata analysis, Dyson would still prevail. The Settlement Agreement released
Dyson from all advertising claims arising out of, and related to, the claims in Oreck I;
consented to the dismissal of Oreck’s claims with prejudice; and allowed Dyson to use the
contested advertising claims for all products existing in the United States marketplace as of
January 5, 2007. The DC18 was being advertised to numerous United States retailers as of
January 5, 2007, and as stated in our opinion, this constituted “exist[ing] in the United States
marketplace.” All false advertising claims pertaining to the DC18 and arising out of or related
to the claims in Oreck I were thereby released. We disagree with Oreck’s suggestion that its
second lawsuit involves something that was a “future claim” at the time of the Settlement
Agreement. Instead, it was an existing claim.

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