author: FINE, J. BROWN, J.

text:
    Steven Thomas, a Minor, by his Guardian ad Litem, Susan M. Gramling, Plaintiff-Appellant, v. Clinton L. Mallett, Billie R. Mallett, and Germantown Mutual Insurance Co., Defendants, American Cyanamid Co., Atlantic Richfield Co., E.I. DuPont De Nemours and Co., NL Industries, Inc., SCM Chemicals, Inc., Sherwin-Williams Co., and ConAgra Grocery Products Co., Defendants-Respondents.
    Court of Appeals

      No. 03-1528.

      Submitted on briefs May 4, 2002.

    Decided June 15, 2004.

    2004 WI App 131
    (Also reported in 685 N.W.2d 791.)

      On behalf of the plaintiff-appellant, the cause was submitted on the briefs of Peter G. Earle and Ellen R. Brostrom of Earle & Brostrom, LLP, Milwaukee and Robert J. McConnell and Fidelma Fitzpatrick of Motley Rice, LLC, Providence, Rhode Island.
    On behalf of the defendants-respondents, the cause was submitted on the brief of Michael B. Apfeld and David G. Peterson of Godfrey & Kahn, S.C., Milwaukee and Philip H. Curtis and Bruce R. Kelly of Arnold & Porter, New York, New York.
    An amici curiae brief was filed on behalf of Service Employees International Union, Wisconsin Commission on Occupational Safety and Health, Repairers of the Breach, Wisconsin Citizen Action, Wisconsin Education Association Council and its affiliate, Milwaukee Education Association, and Wisconsin Federation of Nurses and Health Professionals by Lynn M. Novotnak of First, Blondis, Albrecht & Novotnak, S.C., Milwaukee.
    Before Wedemeyer, EJ., Fine and Brown, JJ.

       Petition to review granted 9-16-04.

   FINE, J.

¶ 1. Steven Thomas, a minor born in 1990, appeals by his guardian ad litem from the trial court's order granting summary judgment dismissing his case against American Cyanamid Co., Atlantic Richfield Co., E.I. DuPont De Nemours and Co., NL Industries, Inc., SCM Chemicals, Inc., Sherwin-Williams Co., and ConAgra Grocery Products Co. Thomas suffers from serious neurological disorders, which he claims were caused by his ingestion of paint pigmented with white lead carbonate. He blames the paint in two homes where he spent his early years: houses built in 1900 and 1905. Although he has recovered settlements from the houses' owners, he also seeks recovery from the defendant companies, which made white lead carbonate and, he contends, conspired over the years to obscure and conceal lead's dangers. He cannot, however, determine which of the defendant companiés, if any, made the white lead carbonate in the paint he took into his system. Accordingly, he has sued them all under the "risk contribution" theory of liability adopted by Collins v. Eli Lilly Co., 116 Wis. 2d 166, 191-195, 342 N.W.2d 37, 49-51 (1984), cert. denied sub nom. E.R. Squibb & Sons, Inc. v. Collins, 469 U.S. 826, for diethylstilbestrol claims. Alternatively, he contends that his claims against the defendant companies pass summary-judgment muster on "conspiracy" and "enterprise liability" theories. The trial court declined to extend Collins to this case, and also rejected Thomas's other theories of recovery. Our review is de novo. See Green Spring Farms v. Kersten, 136 Wis. 2d 304, 315-317, 401 N.W.2d 816, 820-821 (1987). We affirm.

1. Collins.

¶ 2. The plaintiff in Collins had vaginal cancer that was caused by her mother's taking diethylstilbestrol during her pregnancy. Collins, 116 Wis. 2d at 173-174, 342 N.W.2d at 41. Thus, the plaintiff in that case had a potential negligence claim against the drug's manufacturer and a potential strict-liability claim against the manufacturer and those who sold the drug to her mother. In order to successfully pursue these claims under traditional tort law, however, she had to first identify the manufacturer or seller of the specific pills her mother took, and this she was unable to do. Id., 116 Wis. 2d at 174, 180, 342 N.W.2d at 41, 44. Faced with the certainty that the woman injured by her mother's use of diethylstilbestrol would have no "remedy at law for her injuries" unless the traditional identification-rule was modified, id., 116 Wis. 2d at 182, 342 N.W.2d at 45, Collins relied on article I, section 9 of the Wisconsin Constitution ("Every person is entitled to a certain remedy in the laws for all injuries, or wrongs which he may receive in his person, property, or character."), and decided to "fashion[] a method of recovery for the [diethylstilbestrol] case which will deviate from traditional notions of tort law." Collins, 116 Wis. 2d at 181, 342 N.W.2d at 45.

¶ 3. As noted, the "deviation" was Collins's adoption of the "risk contribution" theory of liability for diethylstilbestrol cases. This relaxed the plaintiffs' burden in those cases to identify the manufacturer or seller responsible for the specific diethylstilbestrol pills their mothers took. Under this theory, the diethylstilbestrol plaintiff needed only to show that a "defendant drug company produced or marketed the type of [diethylstilbestrol] taken by [her] mother" in connection with her claims for both negligence and strict-liability. Id., 116 Wis. 2d at 195, 196, 342 N.W.2d at 51.

¶ 4. As Thomas points out in his extensive submissions, and, for the purposes of this appeal, assuming their verity, this case and Collins share, for many of the same reasons, the inability of the plaintiff to identify those who made and sold the specific substance alleged to have caused injury. Thus, in both Collins and here the substances produced or sold by one company are, as material to the possibility of tracing the manufacturer or seller, essentially the same as that produced or sold by the others. See id., 116 Wis. 2d at 180, 342 N.W.2d at 44. Additionally, both the diethylstilbestrol alleged to have caused the plaintiffs vaginal cancer in Collins, and the white lead carbonate alleged to have caused Thomas's neurological disorders were made and sold by many companies long before the injury, making it impossible to trace specific manufacturers or sellers to the particular injury-causing product. See id., 116 Wis. 2d at 179-181, 342 N.W.2d at 44.

¶ 5. The inability of an injured plaintiff to trace and identify the manufacturer or seller responsible for the specific substance causing injury, however, was not the ultimate reason Collins fashioned the "risk contribution" theory of liability for diethylstilbestrol cases, although that inability was a necessary predicate. As we have seen, the diethylstilbestrol plaintiff would have been without any remedy if the traditional rule was not modified. Collins explained:

We are faced with a choice of either fashioning a method of recovery for the [diethylstilbestrol] case which will deviate from traditional notions of tort law, or permitting possibly negligent defendants to escape liability to an innocent, injured plaintiff. In the interests of justice and fundamental fairness, we choose to follow the former alternative.

Id., 116 Wis. 2d at 181, 342 N.W.2d at 45. There is no such dilemma here.

¶ 6. As we have seen, article I, section 9 of the Wisconsin Constitution, as material here, preserves to "[ejvery person" "a certain remedy in the laws for all injuries, or wrongs which he may receive in his person." The clause, however, also conditions this guarantee to considerations of existing law. Thus, it reads in full:

Every person is entitled to a certain remedy in the laws for all injuries, or wrongs which he may receive in his person, property, or character; he ought to obtain justice freely, and without being obliged to purchase it, completely and without denial, promptly and without delay, conformably to the laws.

(Emphasis added.) Accordingly, article I, section 9, has never been interpreted to " 'entitle Wisconsin litigants to the exact remedy they desire.'" Wiener v. J.C. Penney Co., 65 Wis. 2d 139, 150, 222 N.W.2d 149, 155 (1974) (quoted source omitted). To the contrary, the clause preserves to aggrieved persons only " 'their day in court.'" Ibid, (quoted source omitted). Indeed, the clause "confers no legal rights." Aicher v. Wisconsin Patients Comp. Fund, 2000 WI 98, ¶ 43, 237 Wis. 2d 99, 122, 613 N.W.2d 849, 863. "Rather, art. I, § 9 applies only when a prospective litigant seeks a remedy for an already existing right." Ibid.

¶ 7. Here, unlike the situation in Collins, Thomas had "an already existing right" — a remedy for his injuries; as noted, he filed and then settled an action against the owner of one of the houses, and settled his claims against the other owner without filing suit. Indeed, an owner of a house "constructed prior to 1978 is under a common law duty to test for lead paint when the landlord knows or, in the use of ordinary care, should have known that the residence contained peeling or chipping paint." Antwaun A. v. Heritage Mut. Ins. Co., 228 Wis. 2d 44, 55, 596 N.W.2d 456, 461 (1999). Moreover, "by 1989, the dangers of lead paint in residential housing was [sic] ... extensively known." Id., 228 Wis. 2d at 62, 596 N.W.2d at 464. Although undoubtedly Thomas would like to have additional "deep pockets" to plumb, on top of the approximately $325,000 he received in settlement from both owners, he is not entitled " 'to the exact remedy1" he might prefer. See Wiener, 65 Wis. 2d at 150, 222 N.W.2d at 155 (quoted source omitted). Accordingly, expansion of Collins's "risk contribution" theory of liability to producers and sellers of white lead carbonate is neither necessary nor appropriate.

2. Conspiracy.

¶ 8. A civil conspiracy in Wisconsin is " 'a combination of two or more persons by some concerted action to accomplish some unlawful purpose or to accomplish by unlawful means some purpose not in itself unlawful.' " Onderdonk v. Lamb, 79 Wis. 2d 241, 246, 255 N.W.2d 507, 509 (1977) (quoted source omitted). "To state a cause of action for civil conspiracy, the complaint must allege: (1) The formation and operation of the conspiracy; (2) the wrongful act or acts done pursuant thereto; and (3) the damage resulting from such act or acts." Id., 79 Wis. 2d at 247, 255 N.W.2d at 510.

¶ 9. Thomas has marshalled extensive documentation that supports his contentions that at least some of the defendant companies and their trade association (which was named by Thomas as a defendant but was dismissed following its seeking bankruptcy protection) acted in concert to at least minimize the perceived dangers of white lead carbonate. If this were all that was necessary to support a claim for civil conspiracy, we would have no hesitation in concluding that there were genuine issues of material fact precluding summary judgment dismissing that claim. See Wis. Stat. Rule 802.08(2); Edwardson v. American Family Mut. Ins. Co., 223 Wis. 2d 754, 762, 589 N.W.2d 436, 439 (Ct. App. 1998) ("An agreement or cooperation toward the attainment of the illegal objective is a necessary element of a conspiracy."). But, as noted, a successful claim for civil conspiracy also requires that the plaintiff be able to prove "damage resulting" from the acts alleged to comprise the conspiracy. Onderdonk, 79 Wis. 2d at 247, 255 N.W.2d at 510 (emphasis added). Thus, in order to survive summary judgment on his civil conspiracy claim, Thomas was required to establish that there was at least a genuine issue of fact on the "resulting damage" element by submitting evidentiary material "set[ting] forth specific facts," Wis. Stat. Rule 802.08(3), material to that element. Transportation Ins. Co. v. Hunzinger Constr. Co., 179 Wis. 2d 281, 290-292, 507 N.W.2d 136, 139-140 (Ct. App. 1993). This he did not do.

¶ 10. In order to sustain his summary-judgment burden in connection with the "resulting damage" element of a claim for civil conspiracy, Thomas had to show that there is at least a genuine issue of material fact that the alleged concerted action about which he complains was a "substantial factor" in producing his injuries. See Morden v. Continental AG, 2000 WI 51, ¶ 45, 235 Wis. 2d 325, 355, 611 N.W.2d 659, 673." 'The phrase 'substantial factor' denotes that the defendant's conduct has such an effect in producing the harm as to lead the trier of fact, as a reasonable person, to regard it as a cause, using that word in the popular sense.'" Zielinski v. A.P. Green Indus., Inc., 2003 WI App 85, ¶ 16, 263 Wis. 2d 294, 306, 661 N.W.2d 491, 496 (quoted source omitted). There may, of course, be more than one substantial factor causing injury. Morgan v. Pennsylvania Gen. Ins. Co., 87 Wis. 2d 723, 735, 275 N.W.2d 660, 666 (1979). But in order for something to be a "substantial factor" there must be more than " '[a] mere possibility' " that the claimed damages resulted from the acts under consideration. Zielinski, 2003 WI App 85, ¶ 16, 263 Wis. 2d at 306, 661 N.W.2d at 497 (quoted source omitted).

¶ 11. Unlike the situation in Collins, where dieth-ylstilbestrol was dangerous to the daughters of some of the women who took the drug during their pregnancy even though the drug was used precisely as it was intended to be used, Thomas points to nothing in the extensive summary judgment record that white lead carbonate was dangerous as a paint pigment if the paint was applied and maintained properly. Further, the defendant companies are being sued as producers of white lead carbonate and not the paint in which the substance was used as a pigment. Thus, the focus has to be on the white-lead-carbonate pigment they produced or sold, and not the paint base to which the pigment was added, perhaps in different formulations from one paint product to another. Significantly, Thomas's claimed injuries stem from what he admits was his ingestion of peeling and flaking paint chips and dust. The only persons whose acts he contends caused the white lead carbonate to become ingestible are the landlords with whom he has settled.

¶ 12. As we have seen, no one disputes that in the early 1990s, when the landlords did what Thomas says they did, lead was a known danger despite earlier attempts by the white-lead-carbonate industry to downplay those dangers. See Antwaun A., 228 Wis. 2d at 59-62, 596 N.W.2d at 463-464 ("by 1989, the dangers of lead paint in residential housing was [sic] .. . extensively known"). Indeed, Thomas's amended complaint recognizes that "the use of [lead in paint] was banned in the United States in 1978." It was banned in Wisconsin, effective April 30, 1980. Laws of 1979, ch. 221, § 657u. Moreover, as Thomas reminds us, the dangers of lead generally were known by the ancient Greeks. See Peace v. Northwestern Nat'l Ins. Co., 228 Wis. 2d 106, 138 n.19, 596 N.W.2d 429, 443 n.19 (1999).

¶ 13. Assuming for the purposes of this appeal that the defendant companies conspired as Thomas contends that they did (and that thus the dangers of lead-based paint were hidden for more years than they would have been absent the alleged conspiracy) Thomas has not presented any "specific facts" as required by Wis. Stat. Rule 802.08(3) that even tend to demonstrate that if there were no such conspiracy:

(1) white lead carbonate as a paint pigment would have been banned so that no one, from 1900 and 1905 respectively to 1978, would have used lead-based paint inside the two houses in which he lived; and
(2) his landlords and their predecessors would have properly maintained that paint.

Indeed, in connection with the latter aspect, the undisputed summary-judgment record shows that both landlords allowed the paint to remain in a deteriorated state and improperly attempted to remediate the resulting health risk even though the dangers of improperly maintained lead-based paint had then been known beyond doubt for more than a decade. Thus, Thomas has not presented a triable issue of whether he suffered any damages "resulting" from the alleged civil conspiracy. Simply put, he has not shown causal reliance by anyone on what the defendant companies may have done. Significantly, Thomas's amended complaint asserted claims against the defendant companies for negligence and intentional misrepresentation in connection with the various claims of safety that they are alleged to have made over the years. The trial court dismissed those claims because Thomas could not show reliance. He has not appealed from this aspect of the trial court's dismissal. Unlike the situation in Tanner v. Shoupe, 228 Wis. 2d 357, 596 N.W.2d 805 (Ct. App. 1999), upon which Thomas relies, where a warning to not pound on automobile-battery vent caps would have "alert[ed] a prior user of the battery not to pound on the vent caps," id., 228 Wis. 2d at 381, 596 N.W.2d at 818 (emphasis omitted), thus preventing injury to the subsequent-user plaintiff, there is nothing here beyond mere speculation that, given all the factors that comprise a governmental decision to either ban or discourage the use of a product in this country, the alleged concerted action by the defendant companies was a substantial factor that contributed to either the use of lead-based paint in the houses from 1900 and 1905 until 1978, or its faulty maintenance from 1900 and 1905 through when Thomas lived in the houses some ninety years later. The trial court did not err in dismissing Thomas's civil conspiracy claim.

3. Enterprise Liability.

¶ 14. Thomas also contends that the trial court erred in granting summary judgment dismissing his enterprise-liability claims against the defendant companies. Again, our review of the trial court's decision is de novo.

¶ 15. As explained by Collins, enterprise-liability is a theory that, like the "risk contribution" theory adopted by Collins, is designed to relieve an injured plaintiff of the burden of having to designate the entity or person who caused his or her injuries. "Under enterprise liability theory, it is the industry-wide standard that is the cause of injury, and each defendant that participates in perpetuating and using the inadequate standard has contributed to and is liable for the plaintiffs injury." Collins, 116 Wis. 2d at 186, 342 N.W.2d at 47. As Collins relates, the enterprise-liability theory "was first suggested in Hall v. E.I. Du Pont De Nemours & Co., Inc., 345 F. Supp. 353 (E.D.N.Y. 1972)." Collins, 116 Wis. 2d at 186, 342 N.W.2d at 47.

¶ 16. In Hall, children in various parts of the country were injured by defective blasting caps that were alleged to have been "designed and manufactured jointly or severally by the six corporate defendants or by other unnamed manufacturers, and by their trade association." Hall, 345 F. Supp. at 359. Hall posited three considerations that might support joint and several liability of those in an industry, when a plaintiff is unable to identify who caused his or her injuries:

First, plaintiffs can prove the existence of an explicit agreement and joint action among the defendants with regard to warnings and other safety features-the classic "concert of action." Second, plaintiffs can submit evidence of defendants' parallel behavior sufficient to support an inference of tacit agreement or cooperation. Such cooperation has the same effects as overt joint action, and is subject to joint liability for the same reasons. Third, plaintiffs can submit evidence that defendants, acting independently, adhered to an industry-wide standard or custom with regard to the safety features of blasting caps. Regardless of whether such evidence is sufficient to support an inference of tacit agreement, it is still relevant to the question of joint control of risk. The dynamics of market competition frequently result in explicit or implicit safety standards, codes, and practices which are widely adhered to in an entire industry.

Id., 345 F. Supp. at 373-374 (citations and paragraphing omitted). Collins rejected the Hall approach because unlike the blasting-cap industry in Hall, "perhaps hundreds of potential defendant drug companies" made or sold diethylstilbestrol. Collins, 116 Wis. 2d at 186, 342 N.W.2d at 47. As Thomas points out, the situation here is different — the white-lead-carbonate industry was smaller and more cohesive than was the diethylstil-bestrol industry discussed in Collins. Thus, Collins's reason for not adopting the enterprise-liability theory in an attempt to give some remedy for the vaginal-cancer wrong suffered by women whose mothers took diethylstilbestrol does not apply here. There are, however, two other reasons why the enterprise-liability theory does not save Thomas's claims against the defendant companies.

¶ 17. First, as we have seen, unlike the blasting caps in Hall, there is no evidence in the record to which Thomas has pointed that indicates that white lead carbonate either was negligently made, or was dangerously defective if the paint it pigmented was applied and maintained appropriately. Additionally, as we have already discussed in ¶ 13 of this opinion, Thomas's contention that the white-lead-carbonate industry obscured and concealed the dangers of misapplied or poorly maintained lead-based paint falters on his inability to show resulting causation.

¶ 18. Second, unlike the situation in Collins where, as already discussed, there was a need under article I, section 9 of the Wisconsin Constitution to find some theory that would permit the "innocent, injured plaintiff1 to recover against "possibly negligent defendants," Collins, 116 Wis. 2d at 181, 342 N.W.2d at 45, Thomas had, and used, "a remedy at law for [his] injuries." Id., 116 Wis. 2d at 182, 342 N.W.2d at 45. That it might not be the remedy he wants does not alter the calculus. See Wiener, 65 Wis. 2d at 150, 222 N.W.2d at 155 (Article I, section 9 does not " 'entitle Wisconsin litigants to the exact remedy they desire.'") (quoted source omitted). Adoption of the "enterprise liability" theory in this case is not warranted.

¶ 19. The trial court did not err in granting summary judgment to the defendant companies dismissing Thomas's claims against them. Accordingly, we affirm.

By the Court. — Order affirmed.

BROWN, J.

¶ 20. (concurring). The issue before us is whether Wisconsin's courts should extend the risk contribution theory of market share liability announced in Collins v. Eli Lilly Co., 116 Wis. 2d 166, 342 N.W.2d 37 (1984), to litigation against lead paint pigment manufacturers. In my view, the only court that may extend the law in this fashion is our supreme court. Because the court of appeals is mainly an error-correcting court, we are duty-bound to apply the law as it presently exists. And presently, the acceptance of risk contribution theory in Wisconsin is limited to cases involving the use by pregnant women of a drug known as DES. For this reason, I concur in the result.

¶ 21. I do not concur with the reasoning employed by the majority. Distilled to its essence, the majority's rationale is that because plaintiffs lead poisoning injury was addressed in a suit against the landlords, he received the benefit of a remedy for his injury and is not entitled to anything more. The majority apparently interprets article 1, § 9 of our state constitution to ask two things: Was there an injury? If so, did the plaintiff obtain redress in the courts for that injury. If so, the plaintiff has had his day in court and is not entitled to "plumb" for deep pockets against any other alleged wrongdoers.

¶ 22. I disagree with this interpretation as it overlooks the unambiguous wording of article 1, § 9. The plain meaning of this section is that every person is entitled to a certain remedy for "all injuries or wrongs which he may receive in his person." [Emphasis added.] Notice that the wording is in the disjunctive. The way I read this clause, it means that even assuming only one injury, if that injury was brought about by separate wrongs against the person, that person is entitled to a remedy for each "wrong."

¶ 23. Take, for example, Anwaun A. ex rel. Muwonge v. Heritage Mutual Insurance, Co., 228 Wis. 2d 44, 55, 596 N.W.2d 456 (1999). There, our supreme court ruled that "a landlord of a house constructed prior to 1978 is under a common law duty to test for lead paint when the landlord knows, or in the use of ordinary care, should have known that the residence contained peeling or chipping paint." This duty was based on the belief that, by the late 1980's, information about the dangers of lead-based paint was so widely available that landlords should be presumed to be aware of the risks. A landlord who ignores this foreseeable risk and allowed peeling or chipping paint which a small child could ingest, has committed a "wrong" against that child.

¶ 24. But who sold the idea of putting lead paint into our nation's homes and apartments in the first place? The plaintiff has presented a panoply of evidence that the lead paint industry knew since the early 1800's that lead paint could seriously harm young children. Yet, it not only continued to sell lead based paint, it allegedly, blatantly lied and claimed in advertisements that the paint was "healthful" to people. The allegation is that it committed a wrong. As I read our constitution, there is a remedy for every wrong and that presupposes that there is a wrongdoer behind that wrong. I have never seen a case that insulates a wrongdoer from being exposed to lawsuit just because there exists a remedy against another wrongdoer.

¶ 25. The majority relies on Wiener v. J.C. Penney Co., 65 Wis. 2d 139, 150, 222 N.W.2d 149 (1974) as support. But Wiener is inapposite. There, the legislature had promulgated a statute fashioning exclusive out-of-court procedures to remedy excess interest rates charged by retail sellers. The plaintiffs in that case claimed that the procedures were inadequate and sued. The supreme court logically determined that just because the kind of remedy, an administrative procedure, was not to the plaintiffs liking, that did not mean that the plaintiffs were without a remedy. Wiener never touched upon the question of whether, if a plaintiff has a remedy against one party for a wrong committed by that party, he or she has a viable remedy against another party for a different wrong.

¶ 26. I submit that our constitution speaks to the right of our citizenry to pursue wrongdoers if the action exists at common law. This suit is an action for intentional, ordinary and gross negligence. It is certainly recognizable in our common law. I conclude that article 1, § 9 does not avail to the paint manufacturing industry.

¶ 27. I take no stand on whether there are other grounds upon which the paint industry might avoid lawsuit. They have listed many different theories. It is unnecessary for me to go into them here. Suffice it to say, the lead paint industry has not argued that simply because the plaintiff already has a remedy against the landlords, there is no right to a remedy against them. The industry does claim other reasons why landlords are properly subject to exposure to lawsuit but it should not be similarly exposed. As I earlier stated, whether to adopt one or more of the paint manufacturers' theories is for the supreme court to decide.

       We thank Service Employees International Union, Wisconsin Commission on Occupational Safety and Health, Repairers of the Breach, Wisconsin Citizen Action, Wisconsin Education Association Council and its affiliate, Milwaukee Education Association, and Wisconsin Federation of Nurses and Health Professionals for their combined Amici Curiae brief.

       "A negligence action requires the proof of four elements: '(1) A duty of care on the part of the defendant; (2) a breach of that duty; (3) a causal connection between the conduct and the injury; and (4) an actual loss or damage as a result of the injury.'" Morden v. Continental AG, 2000 WI 51, ¶ 45, 235 Wis. 2d 325, 355, 611 N.W.2d 659, 673 (quoted source omitted). A plaintiff asserting a strict-liability claim "must prove (1) that the product was iri defective condition when it left the possession or control of the seller, (2) that it was unreasonably dangerous to the user or consumer, (3) that the defect was a cause (a substantial factor) of the plaintiffs injuries or damages, (4) that the seller engaged in the business of selling such product or, put negatively, that this is not an isolated or infrequent transaction not related to the principal business of the seller, and (5) that the product was one which the seller expected to and did reach the user or consumer without substantial change in the condition it was when he sold it." Dippel v. Sciano, 37 Wis. 2d 443, 460, 155 N.W.2d 55, 63 (1967).


source: Caselaw Access Project

author: ANDERSON, PJ.

license: Public Domain

text:
    Koepsell's Olde Popcorn Wagons, Inc. and Dennis Koepsell, Plaintiffs-Appellants, v. Koepsell's Festival Popcorn Wagons, Ltd. and James Kocovsky, Defendants-Respondents.
    Court of Appeals

      No. 03-0773.

      Oral argument March 25, 2004.

    Decided June 16, 2004.

    2004 WI App 129
    (Also reported in 685 N.W.2d 853.)

      On behalf of the plaintiffs-appellants, the cause was submitted on the briefs of Robert B. Moodie and Lori J. Fabian of Hippenmeyer, Reilly, Moodie & Blum, S.C., Waukesha. There was oral argument by Robert B. Moodie and Lori J. Fabian.

    On behalf of the defendants-respondents, the cause was submitted on the brief of Nicholas C. Zales oí Zales Law Office, Milwaukee. There was oral argument by Nicholas C. Zales.

    Before Anderson, PJ., Brown and Nettesheim, JJ.
   ANDERSON, PJ.

¶ 1. Koepsell's Olde Popcorn Wagons, Inc. and Dennis Koepsell (collectively "Koeps-ell") appeal from a decision granting summary judgment to Koepsell's Festival Popcorn Wagons, Ltd. and James Kocovsky (collectively "Kocovsky"), dismissing Koepsell's breach of contract claim, declaring that Ko-covsky is the owner of the trademark, and finding that the breach of contract action was frivolous. We affirm the trial court's dismissal of the breach of contract claim. However, because there are material issues of fact -with regard to ownership of the Koepsell trademark, we reverse and remand the trademark issue to the trial court. In addition, we reverse the trial court's finding that the breach of contract claim was frivolous, and direct the court on remand to clarify which statutory criteria were present for its finding. If this is done, the frivolous finding shall be reinstated.

Standards of Review

¶ 2. This court reviews summary judgment decisions de novo, applying the same method employed by the trial court. Brownelli v. McCaughtry, 182 Wis. 2d 367, 372, 514 N.W.2d 48 (Ct. App. 1994). That method is well established and need not be repeated here. See, e.g., id. at 372-73.

¶ 3. A claim is frivolous if there is no reasonable basis in law or equity or if it is commenced solely for the purposes of harassing or maliciously injuring another. Wis. Stat. § 814.025(3) (2001-02). A determination that a claim was frivolous presents a mixed question of fact and law. Stern v. Thompson & Coates, Ltd., 185 Wis. 2d 220, 236, 517 N.W.2d 658 (1994). We will review the trial court's factual findings regarding what occurred under the clearly erroneous standard but will independently consider whether those facts fulfill the legal standard. Id.

¶ 4. Under Wis. Stat. § 814.025(3), the trial judge is not allowed to conclude frivolousness or lack of it without findings stating which statutory criteria were present, harassment, intent to maliciously injure, or knowledge or imputed knowledge that there was not any reasonable basis in law or equity for the position taken. Sommer v. Carr, 99 Wis. 2d 789, 792, 299 N.W.2d 856 (1981).

¶ 5. The inquiry under Wis. Stat. § 814.025(3)(b) is an objective one, focusing on what a reasonable attorney or party should have known. Stern, 185 Wis. 2d at 241. Even though a party may have conducted a reasonable inquiry into the law or facts before filing an action given the time limits or other constraints, under § 814.025 there is a continuing obligation to ensure the action is well grounded in fact and law. Jandrt v. Jerome Foods, Inc., 227 Wis. 2d 531, 563, 597 N.W.2d 744 (1999). Once a party or attorney knows or should have known that a claim is not supported by fact or law, it must dismiss or risk sanctions. See id.

¶ 6. We review a trial court's decision on a motion for reconsideration under the erroneous exercise of discretion standard. State v. Alonzo R., 230 Wis. 2d 17, 21, 601 N.W.2d 328 (Ct. App. 1999).

DISCUSSION

¶ 7. Koepsell owns Koepsell's Olde Popcorn Wagons, Inc. and Kocovsky owns Koepsell's Festival Popcorn Wagons, Ltd. Since 1993, Koepsell and Kocovsky have entered into multiple asset purchase agreements. The first agreement, in 1993, stated that Koepsell (the seller) owned five popcorn wagons, which, by agreement with Summerfest/Milwaukee World Festival Inc., were located on the Summerfest grounds in Milwaukee, Wisconsin, and Kocovsky (the buyer) would purchase from the seller the five wagons for $100,000. It declared that buyer agreed to pay seller a total of $61,500 in periodic payments, which would constitute an ordinary business expense to buyer and be taxable income to seller. The agreement contained a provision stating: "Quality Of Popcorn: Buyer will sell only the best quality white popcorn, the specifications of which shall be determined by Seller."

¶ 8. The April 1997 and June 1997 agreements were virtually identical except for the purchase price that was listed on the agreement. They both stated that seller (Koepsell) agreed to allow buyer (Kocovsky) the ability to maintain and continue contracts with the following festivals in the Milwaukee metropolitan area: Riversplash, Lakefront Festival of the Arts, Circus Parade grounds, Riverfest, Maritime, and Harvest Fair. The "Purchase Price" clause in each stated: "The purchase price for the goodwill as developed from past years of maintaining contracts of these festivals shall be [$42,000 for the April 1997 agreement and $40,000 for the June 1997 agreement]." Both agreements contained a provision stating: "Quality of Popcorn. Buyer will sell only the best quality white popcorn, the specifications of which shall be determined by Seller."

¶ 9. The 1999 agreement stated that, in exchange for paying Koepsell $8000 per year, Kocovsky could manage and operate "the Wisconsin State Fair operation" during the 2000 and 2001 state fair. The agreement contained a provision stating: "Dennis Koepsell has the right to specify the type and brand of popcorn to be used during this time period."

¶ 10. On July 11, 2001, Koepsell brought two causes of action against Kocovsky: a breach of contract claim and, in the alternative, a request that the trial court issue a declaratory judgment to clarify the rights of the parties in using the name "Koepsell" and any "logo or other trademark associated therewith as it relates to the sale of popcorn and popcorn related products in the greater Milwaukee area."

¶ 11. Breach of Contract. Koepsell's breach of contract claim alleged that Kocovsky breached their asset purchase agreements by using an inferior product, which affected product quality, by not selling the best quality white popcorn product available and by not complying with the specifications, type and brand of popcorn required to be used by Koepsell.

¶ 12. Although the language in the asset purchase agreements differs slightly, the parties agree that their contract included an agreement between the parties that Kocovsky would "sell only the best quality white popcorn, the specifications of which shall be determined by [Koepsell]."

¶ 13. In response to Koepsell's breach of contract claim, Kocovsky submitted a motion for summary judgment on May 5, 2002. His brief in support of his motion complained that, despite discovery requests and interrogatories, Koepsell did not provide a description of what constitutes an "inferior product" or what standard was used to judge the popcorn quality; Koepsell did not provide evidence of complaints about the quality of popcorn Kocovsky used; Koepsell did not invoke his right to specify the type or brand of popcorn that was acceptable and, Koepsell had no evidence that Kocovsky's popcorn was of inferior quality. Kocovsky also asked the trial court to find Koepsell's claim to be frivolous under Wis. Stat. § 814.025.

¶ 14. In Koepsell's brief in opposition to Kocovsky's motion for summary judgment, he argued that his own opinion and testimony was all that was required on the quality of popcorn issue to make a prima facie case that Kocovsky breached the agreements by not selling "quality white popcorn."

¶ 15. After this briefing by the parties to the trial court, the court granted Kocovsky's summary judgment motion, reasoning "there has been nothing shown that there was ever a denial by the defendant of the plaintiffs ability to designate or denominate popcorn that was to be used." The trial court went on to say:

Clearly, under the agreements that were entered into ... [Kocovsky] agreed to sell only, you know, first quality popcorn through the wagons at the various festivals that they had the right to do and that, essentially, the determination of the quality was to be under the — at the discretion, if you will, of Mr. Koepsell, the plaintiff.
The problem we have here, as I've indicated, there's never — there was never any showing through affidavits or the depositions that were part of — that were made a part of the Summary Judgment Motions that Koepsell, one, denominated specific popcorn to be used and it wasn't being used by [Kocovsky]; that [Koepsell] requested the ability to use specific popcorn — that specific popcorn should be used and that was denied. In fact, there isn't any showing that [Koepsell] at any point in time even requested or made any reference to the kind of popcorn to be used. It simply didn't happen, though certainly that ability — and the right was there as related to [Koepsell], [Koepsell] never exercised it, so on that basis there can be no breach by the defendant under those circumstances.
I would note that [Koepsell] as well has never designated what popcorn should be used, even in answer to interrogatories or deposition, has not designated specifically the kind or type of popcorn to be used.
On that basis I'm satisfied there simply is no breach under those circumstances and will grant [Kocovsky's] motion and dismiss that cause of action.

Koepsell appeals the court's dismissal of his breach of contract claim.

¶ 16. On appeal, Koepsell seems to suggest that the trial court blindsided him by deciding the breach of contract claim "primarily on the basis that nothing had been shown that there was ever a denial by Kocovsky of Koepsell's ability to designate, denominate or request what type of popcorn products should be used as it related to the quality of popcorn issue."

¶ 17. We disagree. After hearing oral argument on appeal and reviewing the record before us, we hold that the quality of popcorn issue was fully litigated. Koepsell claims "the court made its determination based on an issue that was not raised by the parties." However, the parties both exercised their opportunity to brief the trial court and, as discussed above, their briefs do, in fact, contain arguments on the quality of popcorn issue. Koepsell claims that there is a material issue of fact as to the specification of the popcorn that can be sold; however, he did not file any evidentiary affidavits in opposition to the summary judgment motion to flag a material issue of fact. Furthermore, we perceive no material issue of fact upon our review of the entire record. We are satisfied that Koepsell has failed to state a claim upon which relief can be granted with regard to the breach of contract issue.

¶ 18. Trademark. Koepsell's claim in the alternative was a request that the trial court issue a declaratory judgment to clarify the rights of the parties in using the name "Koepsell" in selling popcorn and popcorn related products in the greater Milwaukee area. Attached to Koepsell's complaint were three asset purchase agreement contracts dated 04/02/97, 06/16/97, 10/26/99. Contained in the 04/02/97 and 06/16/97 agreements under the subheading "Purchase Price" is the accord that: "The purchase price for the goodwill as developed from past years of maintaining contracts of these festivals shall be [$42,000 in the 04/02/97 Agreement and $40,000 in the 06/16/97 Agreement]." Also attached to the complaint was a trademark registration certificate from the Wisconsin Secretary of State, dated February 7, 2001.

¶ 19. Kocovsky counterclaimed, requesting a declaratory judgment to state that he, not Koepsell, owned the Koepsell trademark. Attached to his counterclaim was the original 04/22/93 asset purchase agreement.

¶ 20. Then, on May 20, 2002, Kocovsky filed a motion for summary judgment on all issues. Kocovsky argued "goodwill and a trademark/name are the two sides of the same coin. They cannot be separated because as the [Seventh] Circuit ruled in Green River [Bottling Co. v. Green River Corp., 997 F.2d 359, 362 (7th Cir. 1993)], 'the discontinuity would be too great.'" Kocovsky provided several citations which all stand for the general proposition that "[a] trademark cannot be sold 'in gross,' that is, separately from the essential assets used to make the product or service that the trademark identifies." See, e.g., id. at 362.

¶ 21. After briefing on the trademark issue, the trial court initially determined that there were material issues of fact and set the matter for a jury trial based on the following reasoning:

I agree with the case law that, essentially, trademarks . and goodwill go hand in hand and you cannot separate them under the circumstances. So if indeed a trademark exists it goes along with the sale of the business and goodwill attributable to that as part of the sale.
1 just don't have the information based upon what's been presented as to whether or not — If the trademark existed at the time, then it goes to [Kocovsky], and [Kocovsky] was the one who should hold the trademark and have the right to its renewal, not [Koepsell].
If it didn't exist until [the February 7, 2001 trademark registration certificate was issued from the Wisconsin Secretary of State], [Koepsell] may have the ability to hold the trademark but can do nothing to enforce or prohibit and preclude the defendant from use of the name as part of their operation as long as they're otherwise in compliance with the contractual agreements.

¶ 22. The court at this time also issued an oral ruling limiting Koepsell "to [his] responses to interrogatories and the information that [he] had already provided as part of the discovery process."

¶ 23. Thereafter, Kocovsky's attorney drew up a proposed order on the motion for summary judgment. In response, Koepsell's attorney wrote a letter to the court expressing his concern regarding the trademark section of the proposed order. He took issue with the part that indicated: if the Koepsell trademark was a renewal or existed prior to 1993 and 1997, then the Koepsell trademark would belong to Kocovsky. Koepsell did not believe the court indicated that the actual trademark would be transferred to Kocovsky, because if that were the case, then Koepsell himself would not have the right or ability to continue to sell product under the "Koepsell" name. Koepsell informed the court that he "would be happy to provide documentation to the court reflecting that the trademark did, in fact, exist prior to 1993."

¶ 24. Kocovsky's attorney responded with a letter to the court stating that the proposed order accurately summarized the court's decision. In addition, he objected to Koepsell's "attempt to introduce new evidence with respect to the trademark." Kocovsky referred to the court's September 3, 2002 oral ruling limiting Koepsell "to [his] responses to interrogatories and the information that [he] had already provided as part of the discovery process." He argued that if Koepsell and his attorney had documents relating to the trademark, it was their obligation to provide them in discovery— before he moved for summary judgment.

¶ 25. The court signed the proposed order over Koepsell's objection. The order was entered on October 22, 2002, and stated that Kocovsky's motion for summary judgment was granted in part and denied in part. The court dismissed, as already mentioned, the breach of contract claim, limited Koepsell's submission of evidence to the evidence he provided in discovery and on summary judgment, and held:

If the Koepsell trademark attached to the complaint was a renewal or existed prior to the 1993 and 1997 sales of goodwill from [Koepsell] to [Kocovsky], because the sale of trademarks and goodwill go hand in hand and cannot he separated, the Koepsell trademark would then belong to [Kocovsky],

The court also reserved the right to address the issue of whether all or part of Koepsell's claims are frivolous under Wis. Stat. § 814.025.

¶ 26. Thereafter, on November 27, 2002, Kocov-sky filed a motion for judgment on the trademark claim. Kocovsky claimed "[I]t is undisputed the 'Koepsells' popcorn trademark existed before 1993. Accordingly, pursuant to ¶ 5 of the Court's October 2[2], 2002 Order, [Kocovsky] own[s] the trademark."

¶ 27. In reply to Kocovsky's motion for judgment on the trademark claim, Koepsell's attorney sent a letter to the court stating although he disagrees with the court's October 22, 2002 order, "I agree that Judgment can be entered in this case." He then explained his reasoning:

[I]f the Court agrees and finds [it's statement that] "the Koepsell trademark would then belong to [Kocovsky]" (Court's Order dated October 2 [2], 2002) is synonymous with [Kocovsky] being declared the owner[] of the "Koepsells" popcorn trademark, then the Court can enter Judgment as requested [by Kocovsky].

¶ 28. On December 18, 2002, a hearing was held on Kocovsky's motion for summary judgment on the trademark claim. At the hearing, Koepsell's attorney reiterated the position taken in his letter: that he disagreed with the court's findings and orders but, notwithstanding this, he believed entry of judgment was appropriate.

¶ 29. The trial court granted Kocovsky's motion for a declaratory judgment on the trademark counterclaim on February 3, 2003, in its order for final judgment. It held that Kocovsky is the exclusive owner of the "Koepsell" trademark as registered and dated February 7, 2001. Koepsell appeals this ruling.

¶ 30. On appeal, Koepsell contends that "The Court's decision in regard to naming Kocovsky exclusive owner of the 'Koepsell' Trademark was erroneous as a review of the contracts between the parties does not contemplate such a result, nor was it the intent of the parties." Koepsell claims that he had other aspects of his business, which continued to operate following the original asset purchase agreement in 1993 and the two subsequent asset agreements as entered into with Kocovsky in 1997. "Therefore," he argues, "although the asset agreements in 1997 use the word 'goodwill,' it is not being used in the sense that Kocovsky was purchasing the entire business of Koepsell and the goodwill that the Koepsell business had generated over many, many years." He further argues:

The "goodwill" referred to in the Asset Agreements in 1997 refers simply to the goodwill Koepsell had developed from previous years in maintaining and continuing the contracts at the designated festivals. Goodwill was for a very limited and specific purpose in the Asset Agreements, and did not include the entire goodwill associated with and generated by the "Koepsell" name, which conducted business in a variety of ways throughout the greater Milwaukee area.

¶ 31. Koepsell does not cite any law in his appellate brief to support his trademark argument.

¶ 32. Kocovsky counters Koepsell's argument, contending "[t]he trial court correctly ruled that a trademark and goodwill go hand-in-hand, and cannot be separated and that the sale of goodwill for $82,000 in the two Asset Purchase Agreements constituted the sale of the Koepsell Trademark." Like Koepsell, Kocov-sky does not cite to any law.

¶ 33. In our notice of oral argument, we asked each party to provide a list of authorities relevant to the issue as we defined it: "One of the issues is whether it is the law (or should be the law) in Wisconsin that when goodwill is transferred, ownership of the trademark is also transferred.... Here, the issue is whether the trademark was transferred when the goodwill was transferred."

¶ 34. Trademark law in Wisconsin pertaining to this specific issue appears to be undeveloped. Therefore, the parties, like the trial court and this court, look to federal law for guidance. However, the law provided by the parties, while good law, is only part of the law that exists on this particular issue.

¶ 35. And, having examined a more complete representation of the law, we hold that there are material issues of fact regarding ownership of the trademark. For this reason we reverse the trial court's grant of summary judgment declaring Kocovsky the owner of the "Koepsell" trademark and we remand for a trial on whether Koepsell and/or Kovosky hold the rights to the mark. The trial court order limiting Koepsell's submission of evidence to the evidence he provided in discovery and on summary judgment is upheld.

¶ 36. Under federal law, it is a well-established rule that sale of a trade name or mark apart from its goodwill constitutes an invalid "assignment in gross." See Marshak v. Green, 746 F.2d 927, 929 (2nd Cir. 1984) (holding that a trade name or mark is merely a symbol of goodwill and has no significance apart from its goodwill); see, e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 956 (7th Cir. 1992); Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 1350 (E.D.N.Y. 1994).

¶ 37. However, the federal courts established a different standard for evaluating sale of goodwill without transfer of trademark. This issue is addressed at length in Berni v. International Gourmet Restaurants, 838 F.2d 642 (2nd Cir. 1988). Berni involved a dispute over ownership and use of an Italian trademark. Id. at 644. The Berni court reaffirmed Marshak, noting that the mark means nothing without its accompanying goodwill. Berni, 838 F.2d at 646. The court also noted that although a trademark may not be sold independent of its goodwill, a mark or name's owner might retain the mark despite the sale of the business that underlies the mark or name. Id. To retain such ownership after sale of a business' assets, the mark or name's owner must (1) demonstrate intent to resume making the substantially same product, (2) retain some portion of the goodwill, and (3) resume operations within a reasonable time. Id. at 647. Retention of the mark without evidence of the aforementioned elements will constitute retention of an invalid "mark in gross." Id.

¶, 38. Thus, if a business sale contemplates retention of some assets, the Berni test is applied to determine whether the seller intended to resume using the mark in a new enterprise. See id. Under this test, the plaintiff would have to meet the Berni requirements to demonstrate a protectable interest in the trademark or name.

¶ 39. We are persuaded that the law of Berni is appropriately applicable to the case at bar. Under the Berni test, there exist material issues of fact , as to whether Koepsell had a protectable interest in the trademark or name "Koepsell."

¶ 40. On remand, in order to prove a protectable interest, Koepsell must (1) demonstrate intent to resume making the substantially same product, (2) retain some portion of the goodwill, and (3) resume operations within a reasonable time. See id. If Koepsell claims retention of the mark and cannot provide the evidence of the aforementioned elements, this will constitute retention of an invalid "mark in gross." See id.

¶ 41. Motion for Reconsideration. Koepsell filed a motion for reconsideration or, in the alternative, for vacating the judgment. With regard to the breach of contract claim, he argued:

The basis of the determination to dismiss [Koepsell's] claim as found by the Court was not presented to the Court in [Kocovsky's] Motion for Summary Judgment. The Court concluded on its own that because [Koepsell] had never requested, denominated or designated the type of popcorn that should be used by [Kocovsky], that [Kocovsky] could not breach the contract with [Koepsell] under those circumstances ....
Based on the misunderstanding of the facts and the further fact that the parties had not addressed this issue as part of [Kocovsky's] Motion for Summary Judgment, the breach of contract claim should be reinstated to allow [Koepsell] to provide testimony as to what occurred in conversations between [Koepsell] and [Kocovsky] on this issue.

¶ 42. The trial court was not persuaded to reconsider the breach of contract claim. It was not error for the trial court to deny this part of the motion based on its determination that the quality of popcorn issue was, in fact, fully addressed.

¶ 43. With regard to reconsideration of the trademark issue, Koepsell argued:

[T]he trademark registration did not exist at the time of the execution of the Agreements between the parties, so no trademark registration was sold to [Kocovsky]; that there existed two (2) trademark registrations or certifications, which was unknown by the parties or the Court at the time the Court entered its ruling; that the Court failed to consider language as contained in the Agreements and the subsequent actions of the parties, which reflected that [Kocovsky] knew [he] had not purchased the exclusive rights to the name "Koepsell" in conducting business in the greater Milwaukee area; and finally, that [Kocovsky] had held [Koepsell] harmless from any claim as brought by [Kocovsky], thereby preventing [Kocovsky] from asserting any rights and/or interest in and to the "Koepsell" name.

¶ 44. Even though we are remanding the trademark issue, we agree with the trial court's decision to deny Koepsell's request for reconsideration on this issue. To prevail on a motion for reconsideration, the movant must present either newly discovered evidence or establish a manifest error of law or fact. Oto v. Metro. Life Ins. Co., 224 F.3d 601, 606 (7th Cir. 2000). A "manifest error" is not demonstrated by the disappointment of the losing party. Id. It is the "wholesale disregard, misapplication, or failure to recognize controlling precedent." Id. (citation omitted). Contrary to this standard, Koepsell's motion merely took umbrage with the court's ruling and rehashed old arguments. It did not demonstrate that there was a disregard, misapplication or failure to recognize controlling precedent. As such, the trial court properly rejected the motion. Further, we disagree with Koepsell's claim that the trial court erred by failing to consider certain language in the Agreements. This bald assertion is without support and we glean none in the record. From our review, it is clear that Koepsell's motion was a thinly veiled attempt to introduce evidence that should have been introduced at the original summary judgment phase.

¶ 45. Koepsell, in addition to contending that the court was wrong to deny his motion, contends that the court abused its discretion in refusing to consider additional evidence attached to his motion. This additional evidence was a certification of the "Koepsell" trademark and an affidavit from Koepsell stating, among other things, that he "received a certification from the State of Wisconsin's Secretary of State's Office that the trademark application was valid for a period of twenty (20) years from December 11, 1980." His motion for reconsideration asserted that this information was "unknown by the parties or the Court at the time the Court entered its ruling."

¶ 46. A party may not use a motion for reconsideration to introduce new evidence that could have been introduced at the original summary judgment phase. See id. at 606 ("A party may not use a motion for reconsideration to introduce new evidence that could have been presented earlier."). Neither Koepsell nor his attorney explain in their affidavits why this information was "unknown" at the time the court entered its final judgment.

¶ 47. At a hearing on June 13, 2003, the court rejected this motion stating:

[The evidence] cannot in any way be construed as newly discovered evidence. It's evidence if it existed would have been in the knowledge or under the control of [Koepsell] for a very long period of time. For whatever reason [Koepsell] chose not to pursue it or provide it to the court or to the defense prior to this point in time, and I'm satisfied it just simply is not going to be considered by the court under these circumstances.

¶ 48. We affirm the trial court's decision to deny the reconsideration motion with regard to the trademark as well. Koepsell made no showing why, through reasonable diligence, he could not have located this information earlier. Therefore, the trial court did not abuse its discretion in refusing to receive new evidence at this late stage. Koepsell is not entitled to relief from the judgment on the grounds of mistake or "newly discovered" evidence because he has shown neither. See Wis. Stat. § 806.07(l)(a) and (b).

¶ 49. Frivolousness. Lastly, Koepsell appeals the trial court's frivolousness determination with regard to the breach of contract claim. In response, Kocovsky asks that we uphold the trial court's frivolousness determination and further requests that we hold Koepsell's appeal to be frivolous. See Wis. Stat. § 809.25(3).

¶ 50. At the previously mentioned June 13, 2003 hearing, the court also addressed Kocovsky's motion for frivolous claims and for reasonable attorney's fees. Kocovsky's motion argued that Koepsell's breach of contract claim was frivolous "because there was never any evidence to support the allegations, and because it was brought in bad faith solely to harass the Kocovsky defendants." The trial court agreed that there was no evidence that was presented through hearings or as part of the summary judgment that would in any way support the breach of contract claim. The court then granted the motion and awarded costs and fees.

¶ 51. Under Wis. Stat. § 814.025(3), the trial court is not allowed to conclude frivolousness without findings stating which statutory criteria were present —harassment, intent to maliciously injure, or knowledge or imputed knowledge that there was not any reasonable basis in law or equity for the position taken. Sommer, 99 Wis. 2d at 792. The trial court did not do so here. We therefore reverse and remand the frivolous issue as it pertains to the breach of contract claim with direction for the trial court to state on the record which statutory criteria were present. If the court is able to clarify on the record which statutory criteria were present to support it's finding of frivolousness, it's finding that Koepsell's breach of contract claim was frivolous shall be reinstated.

¶ 52. Koepsell's appeal of the summary judgment dismissing his trademark claim and granting Kocovsky's counterclaim declaring Kocovsky the exclusive owner of the "Koepsell" trademark is not frivolous: Koepsell has prevailed on this portion of his appeal. On the other hand, Koepsell's appeal of the breach of contract claim may very well be frivolous, especially if his breach of contract claim is frivolous. Regardless, we may not award appellate fees under Wis. Stat. § 809.25(3)(a) unless the entire appeal is frivolous. See Manor Enters., Inc. v. Vivid, Inc., 228 Wis. 2d 382, 402-03, 596 N.W.2d 828 (Ct. App. 1999). Thus, we do not award fees and costs for a frivolous appeal. See id.

Conclusion

¶ 53. The trial court properly dismissed Koepsell's breach of contract claim because the complaint does not state a claim for relief against Kocovsky.

¶ 54. However, we reverse the trial court's grant of summary judgment in Kocovsky's favor and its holding that Kocovsky is the exclusive owner of the "Koepsell" trademark. As to that claim, there are material facts in dispute and Koepsell is entitled to trial on the matter. Finally, we reverse the trial court's finding that the breach of contract claim was frivolous and direct the court on remand to clarify which statutory criteria were present for its finding; if this is done, the frivolous finding shall be reinstated.

By the Court. — Order affirmed in part; reversed in part and cause remanded with directions.

       Wisconsin Stat. § 814.025(1) provides: "If an action or special proceeding commenced or continued by a plaintiff... is found, at any time during the proceedings or upon judgment, to be frivolous by the court, the court shall award to the successful party costs determined under s. 814.04 and reasonable attorney fees."
      All references to the Wisconsin Statutes are to the 2001-02 version unless otherwise noted.

       The record also alludes to a "loss of reputation" claim. This is a claim not mentioned on appeal because later in the record it is revealed that no such claim was made: In a letter to the court, plaintiffs attorney stated he "[did] not believe the Plaintiff ever brought a loss of reputation cause of action against [Kocovsky]."


author: BROWN, J.

text:
    In re the Commitment of Dennis R. Thiel: State of Wisconsin, Petitioner-Respondent, v. Dennis R. Thiel, Respondent-Appellant.

    Court of Appeals

      No. 03-2098.

      Submitted on briefs May 17, 2004.

    Decided June 16, 2004.

    2004 WI App 140
    (Also reported in 685 N.W.2d 890.)

      On behalf of the respondent-appellant, the cause was submitted on the briefs of Suzanne L. Hagopian, assistant state public defender of Madison.
    On behalf of the petitioner-respondent, the cause was submitted on the brief of Peggy A. Lautenschlager, attorney general, and Sally Wellman, assistant attorney general.

      Before Anderson, EJ., Brown and Snyder, JJ.

       Petition to review denied 9-1-04.

   BROWN, J.

¶ 1. Dennis R. Thiel appeals from an order denying his petition for discharge from involuntary commitment pursuant to Wis. Stat. § 980.09(2) (2001-02) . Thiel contends that because he submitted an examiner's report recommending that the court grant him supervised release at his § 980.09(2) probable cause hearing, he established probable cause to believe that he is no longer a "sexually violent person" and a full evidentiary hearing on the issue is warranted. We hold that the question of whether an individual continues to be a "sexually violent person" is answered without reference to any specific restrictions, supervision or time frame and, therefore, probable cause to believe a person is no longer a "sexually violent person" is not satisfied by a recommendation of supervised release. We further conclude that the facts presented at the probable cause hearing do not otherwise establish that Thiel is no longer a "sexually violent person." We also hold that Wis. Stat. § 808.08(3), which places the duty on the parties to initiate further proceedings in the circuit court after remand, did not violate Thiel's due process right to a timely probable cause hearing. We affirm.

¶ 2. In 1998, the circuit court adjudged Thiel a sexually violent person and ordered him committed pursuant to Wis. Stat. ch. 980. Thiel’s condition was reexamined six months later, as required by Wis. Stat. § 980.07(1). Thiel's examiners concluded that he remained a sexually violent person and recommended continued confinement in a secure mental health facility. Thiel did not affirmatively waive the right to petition the court for discharge without the approval of the secretary of the Department of Health and Human Services. Consequently, the circuit court, pursuant to Wis. Stat. § 980.09(2), held a probable cause hearing to determine if the facts warranted a full evidentiary hearing on whether Thiel was still a sexually violent person. After considering the report submitted by Thiel's examiners, the court concluded that there were insufficient facts to warrant a full evidentiary hearing. The court also denied Thiel's request for a second, independent examination pursuant to § 980.07. Thiel appealed.

¶ 3. On appeal, we held that Thiel was entitled to the appointment of an expert to conduct a second, independent examination pursuant to Wis. Stat. § 980.07 and that the circuit court failed to conduct a proper waiver of counsel colloquy. State v. Thiel, 2001 WI App 32, ¶ 1, 241 Wis. 2d 465, 626 N.W.2d 26. We reversed the circuit court's order denying Thiel's petition for discharge and remanded the matter to the circuit court. Id., ¶ 1.

¶ 4. The remittitur was issued on February 28, 2001, and filed in the circuit court, along with the appeal record, on March 2. On December 27, 2001, Thiel, who was unrepresented in the matter, wrote to the circuit court inquiring about the status of the discharge hearing. Thiel noted that neither an attorney nor an independent examiner had been appointed. Thiel acknowledged that he was being represented by counsel on a petition for supervised release, an action that the circuit court had stayed pending appeal. Thiel asked the court to appoint counsel for the discharge hearing, stated that he did not want it consolidated with the supervised release petition and noted that he would seek appointment of an examiner once counsel was appointed.

¶ 5. In the circuit court's response dated February 5, 2002, the court confirmed Thiel's understanding of the status of his petition for supervised release, but expressed confusion about the discharge hearing:

I have further reviewed the court file regarding this issue. The file shows that on October 19, 1999, the Court entered an Order denying petition for review regarding the discharge issue .... Thus, I write seeking clarification of what you mean when you wrote that you were "looking to proceed with the Discharge hearing hence the ruling of the Appeals Court."
No further court action will be taken until further correspondence or request is made from you.

On February 7, 2002, Thiel sent a copy of our decision to the circuit court, noting that the case was remanded "to your court for a determination of the validity of my waiver of the right to counsel and my request for appointment of an expert" and again asking for the court to appoint counsel.

¶ 6. The court and parties exchanged several more letters concerning the appointment of counsel. On March 10, 2002, Thiel asked that the court suspend action for thirty days because of discussions between the parties regarding his petition for supervised release. On May 21, 2002, Thiel asked the court to continue the appointment process. Shortly thereafter, the court appointed an attorney to represent Thiel at the probable cause hearing. Subsequently, the court appointed Dr. Michael Kotkin to serve as the independent examiner. Dr. Kotkin filed his report on February 21, 2003. With the parties' agreement, the court set the probable cause hearing for May 13.

¶ 7. Three periodic reexaminations had been completed since the original probable cause hearing: two reports by Dr. Donald Hands dated February 15, 2001, and March 23, 2002, and a report by Dr. Susan Sach-senmaier dated March 20, 2003. The State asked the court to consider all three of those reports at the probable cause hearing held following the remand. Thiel asked the court to consider the two reports of Dr. Hands and the report of Dr. Kotkin.

¶ 8. In his February 15, 2001 reexamination report, Dr. Hands concluded that Thiel continued to have diagnosis of Pedophilia and Antisocial Personality Disorder, both of which are mental disorders acquired or congenital that affected his emotional or volitional capacity and that predisposed him to commit sexually violent acts. Dr. Hands noted that, according to certain research, Thiel's score on the Hare Psychopathy Checklist-Revised placed him in a category showing significant psychopathy. Dr. Hands also concluded that, at that time, Thiel "continue[d] to show substantial probability that he will commit another sexually violent offense. He [was] much more likely than not to engage in future sexually violent behavior.... [He] remained] a sexually violent person as defined by Chapter 980." Dr. Hands recommended that the court continue Thiel's commitment and confinement.

¶ 9. In his March 26, 2002 reexamination report, Dr. Hands concluded that Thiel continued to have a diagnosis of Pedophilia and Antisocial Personality Disorder, mental disorders within the definition of Wis. Stat. ch. 980, he continued to show substantial probability he would commit another sexually violent offense, he was much more likely than not to engage in future acts of sexually violent behavior, and he remained a sexually violent person as defined by ch. 980. Accordingly, Dr. Hands recommended that "the court not consider Mr. Thiel for supervised release or discharge at this time."

¶ 10. Dr. Kotkin's February 21, 2003 examination report included details of his interview with Thiel, as well a discussion of Thiel's treatment progress and risk factors. Dr. Kotkin reported that Thiel was enrolled in the Core Program at the treatment center and Thiel was "making adequate and satisfactory progress" in the program. Dr. Kotkin stated that Thiel continued to have Pedophilia and Antisocial Personality Disorder. Dr. Kot-kin concluded, in light of Thiel's mental condition and history, in spite of progress in treatment, "it would not be prudent, in the opinion of this evaluator, to support a total discharge for Dennis Thiel from status as a committed individual under Chapter 980." Dr. Kotkin, however, wrote:

However, this evaluator believes that Dennis Thiel, especially over the last few years, has demonstrated consistent motivation and intention to participate in and profit from the sexual offender treatment programming offered to him and has been evaluated during this time, generally, as quite positive in terms of his participation and progress in such treatments. In addition, the appended Relapse Prevention Plan (requested by this evaluator) recently completed by Mr. Thiel, demonstrates a self-understanding, thoughtfulness, and anticipation of problems which support the judgment of substantially lowered risk for re-offense. It is thus recommended that Dennis Thiel be granted a supervised release status and, with help and preparation from the Department of Health and Human Services, begin to effect a plan for a return to community living, including supervision and ongoing treatment therein.

¶ 11. Dr. Sachsenmaier's March 20, 2003 reexamination report included details of her interview with Thiel as well as a summary of his treatment progress and risk factors. Dr Sachsenmaier concluded that Thiel had Pedophilia and Antisocial Personality Disorder and Thiel currently continued to show substantial probability that he would commit another sexually violent offense should he be discharged or placed on supervised release.

¶ 12. At the May 13 probable cause hearing, Thiel argued that Dr. Kotkin's report provided the basis for the court to find probable cause to believe that Thiel is no longer a sexually violent person and, therefore, that a full evidentiary hearing was warranted. After considering all the reports, the court denied Thiel's request for a full evidentiary hearing, concluding that none of the reports contained facts that would establish probable cause to believe that Thiel was no longer a sexually violent person. The court dismissed Thiel's reliance on Dr. Kotkin's report, commenting that Dr. Kotkin had never directly stated his opinion as to whether Thiel is still a sexually violent person and did not recommend a total discharge. This appeal follows.

¶ 13. On appeal, Thiel focuses on Dr. Kotkin's determination that he was a candidate for supervised release. Thiel argues that Dr. Kotkin's recommendation of supervised release supplies the probable cause necessary to warrant a Wis. Stat. § 980.09(2) (b) full eviden-tiary hearing on whether he remains a sexually violent person, as that term is defined in Wis. Stat. § 980.01(7). He contends that the court should draw the "reasonable inference" from Dr. Kotkin's recommendation of supervised release that Dr. Kotkin "believed [he] is not substantially probable to reoffend if placed on supervised release." Thiel also seems to argue that if a recommendation of supervised release does not satisfy probable cause and entitle him to a full evidentiary hearing, then § 980.09 violates his due process right to a reassessment of "whether his level of dangerousness had sufficiently decreased to the point where lesser restriction is appropriate."

¶ 14. The circuit court's findings of fact are binding on an appellate court, unless those findings are clearly erroneous. State v. Schiller, 2003 WI App 195, ¶ 8, 266 Wis. 2d 992, 669 N.W.2d 747. Whether the facts establish probable cause to believe the individual is no longer a sexually violent person is a question of law that the appellate court determines independently of the circuit court. See id. In addition, we are called upon to engage in statutory interpretation. The interpretation of a statute is a question of law that we review without deference to the circuit court. DeMars v. LaPour, 123 Wis. 2d 366, 370, 366 N.W.2d 891 (1985). Our goal in interpreting statutes is to discern and give effect to the intent of the legislature. State v. Morford, 2004 WI 5, ¶ 21, 268 Wis. 2d 300, 674 N.W.2d 349. A court must ascertain the legislative intent from the language of the statute in relation to its context, history, scope, and objective, including the consequences of alternative interpretations. Id. Finally, our review of Thiel's due process claim is de novo. See State v. Littrup, 164 Wis. 2d 120, 126, 473 N.W.2d 164 (Ct. App. 1991).

¶ 15. Thiel's claim falls under Wis. Stat. § 980.09(2), which sets forth the procedural posture for a committed individual's petition for discharge without the approval of the secretary of the Department of Health and Human Services. Pursuant to § 980.09(2)(a), a probable cause hearing is triggered when, following a periodic reexamination, the individual does not affirmatively waive his or her right to petition for discharge without the secretary's approval. If a circuit court finds that the facts do not establish probable cause to believe that the person is no longer a sexually violent person,- as that term is defined in Wis. Stat. § 980.01(7), he or she is denied a full evidentiary hearing on that issue. Sec. 980.09(2) (a) and (b). However, if the facts do establish probable cause to believe that the individual is no longer a sexually violent person, he or she is entitled to a full evidentiary hearing, where the State bears the burden of proving by clear and convincing evidence that the "committed person is still a sexually violent person." Sec. 980.09(2) (b).

¶ 16. The question before the circuit court at a Wis. Stat. § 980.09(2)(a) probable cause hearing is whether probable cause exists to establish that the individual seeking discharge is no longer a sexually violent person. See Schiller, 266 Wis. 2d 992, ¶ 9 (holding that an individual was not entitled to a full hearing when probable cause to believe the individual was no longer a sexually violent person did not exist). A sexually violent person is defined by statute as:

"Sexually violent person" means a person who has been convicted of a sexually violent offense, has been adjudicated delinquent for a sexually violent offense, or has been found not guilty of or not responsible for a sexually violent offense by reason of insanity or mental disease, defect or illness, and who is dangerous because he or she suffers from a mental disorder that makes it substantially probable that the person will engage in acts of sexual violence.

Wis. Stat. § 980.01(7). Accordingly, there is probable cause to believe the petitioner is no longer a sexually violent person if facts exist establishing probable cause to believe the individual is no longer dangerous because, although he or she has the mental disorder, the mental disorder no longer makes it substantially probable that he or she will engage in acts of sexual violence. See §§ 980.01(7), 980.09(2)(a).

¶ 17. By the plain language of the statute, the question at the probable cause hearing is not whether the individual is substantially probable to engage in acts of sexual violence if placed on supervised release or even if discharged from commitment; the statute draws no such distinction. Rather, the question at the probable cause stage is simply whether it is substantially probable that the person will engage in acts of sexual violence without regard to any specific restrictions, supervision or time frame. It is a black-and-white determination — it is either substantially probable that the person will engage in acts of sexual violence or it is not.

¶ 18. Thiel submits that both Wis. Stat. § 980.09(2)(c) and State v. Williams, 2001 WI App 263, ¶ 8, 249 Wis. 2d 1, 637 N.W.2d 791, review denied, 2002 WI 111, 256 Wis. 2d 63, 650 N.W.2d 840 (Wis. Jul. 26, 2002) (No. 00-2899), supply the court with the authority to consider whether the individual's existing commitment should be modified to authorize supervised release rather than institutional care at the probable cause hearing. Thiel's reliance on both para, (c) and Williams is misplaced.

¶ 19. First, under Wis. Stat. § 980.09(2)(c), the court can only consider whether the individual's existing commitment should be modified to authorize supervised release rather than institutional care if: (1) the circuit court first finds probable cause exists to believe that the individual is no longer a sexually violent person under par. (a), a determination divorced from the petitioner's potential commitment status and (2) the State subsequently proves at a full evidentiary hearing that the committed individual is still a sexually violent person. Thus, the custody options are not relevant to the circuit court's probable cause determination under par. (a) and only become available to the court after the full evidentiary hearing. It is only at that point in the process of petitioning for discharge that a recommendation of supervised release would become relevant.

¶ 20. Futhermore, while the Williams court did state "the committing court can always consider supervised release whenever the committed person seeks discharge," in doing so, the court specifically relied on Wis. Stat. § 980.09(1)(c) and (2)(c). See Williams, 249 Wis. 2d 1, ¶ 8. As discussed above, § 980.09(2)(c) permits the court to consider supervised release if, and only if, a full hearing was warranted and, at the hearing, the State has carried its burden of proving by clear and convincing evidence that the individual is still a sexually violent person. Nothing in Williams suggests that, at the probable cause stage under § 980.09(2)(a), the circuit court can or should consider an option of supervised release.

¶ 21. Thus, contrary to Thiel's assertions, prohable cause to believe a person is no longer a "sexually violent person" is not satisfied by a recommendation of supervised release without more. Accordingly, while Thiel may be correct that Dr. Kotkin's recommendation of supervised release gives rise to the reasonable inference that Dr. Kotkin believed Thiel was not substantially probable to reoffend if placed on supervised release, Dr. Kotkin's recommendation was not relevant to the question before the court and does not, standing alone, supply the probable cause necessary to warrant a full evidentiary hearing on the matter.

¶ 22. Having established that probable cause is not satisfied by a recommendation of supervised release, we turn to Thiel's argument that Wis. Stat. § 980.09 violates his due process right to a reassessment of whether he is appropriate for less restrictive custody. When a constitutional challenge is presented, there exists a strong presumption of constitutionality for legislative enactments. See Castellani v. Bailey, 218 Wis. 2d 245, 261, 578 N.W.2d 166 (1998). Every presumption favoring the validity of the law must be allowed. Id. In addition, a party challenging a statute has the burden of proving the law unconstitutional beyond a reasonable doubt. Id.

¶ 23. As Thiel points out, our supreme court has tied the constitutionality of Wis. Stat. ch. 980 to the availability of periodic reviews that reassess the person's dangerousness to determine if a lesser restriction of his or her liberty is warranted. See State v. Rachel, 2002 WI 81, ¶ 56, 254 Wis. 2d 215, 647 N.W.2d 762. However, ch. 980, when viewed as a whole, provides adequate opportunity for a sexually violent person who has been committed to institutional care to obtain a determination as to whether he or she should be granted supervised release. Wisconsin Stat. § 980.09 plainly facilitates the circuit court's determination as to whether the petitioner is appropriate for discharge from custody or discharge from supervision, depending on the status of the petitioner. Wis. Stat. § 980.08, on the other hand, provides the avenue by which an individual can petition for a transfer from custody to supervised release. Section 980.08(1) states that either the committed individual or the director of the individual's facility may file a petition for supervised release on the individual's behalf. Thus, under the statute, a committed individual who is unable to proceed under § 980.09 is not without the opportunity to pursue a less restrictive alternative to commitment.

¶ 24. Furthermore, as Thiel himself recognized at the probable cause hearing, he had a separate petition for supervised release pending before the court. He specifically asked the court to hold the petition for supervised release in abeyance pending the resolution of his Wis. Stat. § 980.09 discharge petition. Under these circumstances, Thiel's complaint that § 980.09 deprives him of his due process right to litigate his request for supervised release must fail.

¶ 25. Here, the circuit court, after properly considering the reexamination reports and arguments by counsel, see State v. Paulick, 213 Wis. 2d 432, 437-39, 570 N.W.2d 626 (Ct. App. 1997), held that none of the examiner's reports demonstrated probable cause to believe that Thiel's mental disorder no longer made it substantially probable that he would engage in acts of sexual violence and denied Thiel a full evidentiary hearing on the issue. We see no reason to disturb this determination.

¶ 26. Although he did note that Thiel had made some progress, Dr. Hands explicitly concluded that Thiel remained a sexually violent person as that term is understood in Wis. Stat. ch. 980. In addition, Dr. Sachsenmaier reported that Thiel's mental disorders predisposed him to commit sexually violent acts as defined by ch. 980 and that Thiel currently continued to show substantial probability that he will commit another sexually violent offense should he be discharged or placed on supervised release. Finally, Dr. Kotkin offered no opinion as to whether it was substantially probable that Thiel would engage in acts of sexual violence and his report does not present any facts that would support a conclusion that Thiel is no longer a sexually violent person. Indeed, Dr. Kotkin reported that Thiel continues to have Pedophilia and Antisocial Personality Disorder, two mental disorders that predispose him to commit sexually violent acts.- Accordingly, we hold that the circuit court properly concluded that the facts presented failed to establish probable cause to believe that Thiel is no longer a sexually violent person.

¶ 27. We now turn to the second issue on appeal— that being, whether Thiel's due process rights were violated because the circuit court failed to initiate proceedings following remand by this court and therefore nothing occurred until Thiel initiated proceedings by writing to the court nearly ten months later. The State argues that Wis. Stat. § 808.08 controls. Section 808.08 provides:

When the record and remittitur are received in the trial court:
(1) If the trial judge is ordered to take specific action, the judge shall do so as soon as possible.
(2) If a new trial is ordered, the trial court, upon receipt of the remitted record, shall place the matter on the trial calendar.
(3) If action or proceedings other than those mentioned in sub. (1) or (2) is ordered, any party may, within one year after receipt of the remitted record by the clerk of the trial court, make appropriate motion for further proceedings. If further proceedings are not so initiated, the action shall be dismissed except that an extension of the one-year period may be granted, on notice, by the trial court, if the order for extension is entered during the one-year period.

The State contends that subsec. (3) applies in this case. Subsections (1) and (2), by stating, "the judge shall" and "the trial court... shall" respectively, clearly place the duty on the trial court to initiate the action ordered on remand. Subsection (3), however, uses different language. It states, "any party may .. . make appropriate motion for further proceedings." Thus, by its plain language, subsec. (3) places the onus on the parties to move the circuit court to conduct the further proceedings ordered on remand. The circuit court has no obligation to initiate proceedings or to place the case on its schedule or take any action until a party asks it to do so.

¶ 28. Thiel acknowledges Wis. Stat. § 808.08(3), but claims that the statute is irrelevant because his claim is grounded in due process. He maintains, statute aside, that there is a separate constitutional right to a timely probable cause hearing, see State v. Beyer, 2001 WI App 167, ¶¶ 6, 14, 247 Wis. 2d 13, 633 N.W.2d 627, cert. denied, 537 U.S. 1210 (U.S. Wis. Feb. 24, 2003) (No. 02-8175), and that the burden is not on the parties, but rather on the circuit court to initiate the proceedings. We reject Thiel's argument. Although Thiel attempts to cast hi a argument as purely constitutional and not statutory, what Thiel is really claiming is that his constitutional rights trump the statute. We can come to no other conclusion but that he actually claims the statute is unconstitutional because it violates due process. As explained earlier, there is a strong presumption of constitutionality for legislative enactments and the party challenging the statute has the burden of proving the law unconstitutional beyond a reasonable doubt. See Castellani, 218 Wis. 2d at 261. Thiel offers no basis for finding a constitutional violation in this matter; he cites no authority to support his proposition and we can find none. In short, he has made no attempt to show how the statute might in any way be unconstitutional, much less how the statute is unconstitutional beyond a reasonable doubt. Thiel's constitutional challenge, therefore, must fail.

¶ 29. Thiel also suggests that it would be unfair to place the burden on him to move the court for further proceedings under Wis. Stat. § 808.08(3) because he is an involuntary commitment patient. Thiel, however, was represented by counsel in his previous appeal. After remittitur, it was his appellate counsel's responsibility to contact the circuit court on his behalf and request that the court conduct further proceedings consistent with our decision. We also note that, as demonstrated by his numerous letters to the circuit court that are a part of the appellate record, Thiel was perfectly capable of contacting the circuit court himself. Indeed, in one letter to the court, Thiel explicitly referred to our previous decision and asked the court to conduct the evidentiary hearing we ordered and to appoint an expert for him.

¶ 30. Thiel's letter asking the circuit court to take action in his case was filed ten months after remittitur, well within the one-year time limit established by the statute. The circuit court responded promptly, requesting clarification. As soon as Thiel clarified matters, the court took swift and appropriate action, and Thiel does not contend otherwise. Thus, the circuit court's action in this case was in full compliance with Wis. Stat. § 808.08(3). We, therefore, affirm the circuit court's order denying his petition for discharge.

By the Court. —Order affirmed.

       All references to the Wisconsin Statutes are to the 2001-02 version unless otherwise noted.

       In a separate appeal, Thiel asserted that the original commitment order should be vacated because the State had faded to prove beyond a reasonable doubt that its commitment petition was filed within ninety days of his release. State v.

        Thiel, 2000 WI 67, ¶ 9, 235 Wis. 2d 823, 612 N.W.2d 94. The supreme court ruled that in a commitment trial pursuant to Wis. Stat. ch. 980, the State must prove beyond a reasonable doubt that the subject of the petition is within ninety days of release or discharge from a sentence imposed on the basis of a sexually violent offense. Thiel, 235 Wis. 2d 823, ¶ 1. Because the evidence in the record did not provide proof beyond a reasonable doubt that the State filed its petition within ninety days of Thiel's release, the supreme court reversed the circuit court and remanded the case to the court of appeals to determine the appropriate remedy. Id. We, in turn, remanded the case to the circuit court for an evidentiary hearing at which the State would be permitted to prove that Thiel was within ninety days of release when the commitment petition was filed. State v. Thiel, 2001 WI App 52, ¶ 32, 241 Wis. 2d 439, 625 N.W.2d 321.

       WISCONSIN Stat. § 980.09(2) state:
      (2) Petition without secretary's approval, (a) A person may petition the committing court for discharge from custody or supervision without the secretary's approval. At the time of an examination under s. 980.07(1), the secretary shall provide the committed person with a written notice of the person's right to petition the court for discharge over the secretary's objection. The notice shall contain a waiver of rights. The secretary shall forward the notice and waiver form to the court with the report of the department's examination under s. 980.07. If the person does not affirmatively waive the right to petition, the court shall set a probable cause hearing to determine whether facts exist that warrant a hearing on whether the person is still a sexually violent person. The committed person has a right to have an attorney represent him or her at the probable cause hearing, but the person is not entitled to be present at the probable cause hearing.
      (b) If the court determines at the probable cause hearing under par. (a) that probable cause exists to believe that the committed person is no longer a sexually violent person, then the court shall set a hearing on the issue. At a hearing under this paragraph, the committed person is entitled to be present and to the benefit of the protections afforded to the person under s. 980.03. The district attorney or the department of justice, whichever filed the original petition, shall represent the state at a hearing under this paragraph. The hearing under this paragraph shall be to the court. The state has the right to have the committed person evaluated by experts chosen by the state. At the hearing, the state has the burden of proving by clear and convincing evidence that the committed person is still a sexually violent person.
      (c) If the court is satisfied that the state has not met its burden of proof under par. (b), the person shall be discharged from the custody or supervision of the department. If the court is satisfied that the state has met its burden of proof under par. (b), the court may proceed to determine, using the criterion specified in s. 980.08(4), whether to modify the person's existing commitment order by authorizing supervised release.

       As the court in State v. Williams, 2001 WI App 263, ¶ 8 n.5, 249 Wis. 2d 1, 637 N.W.2d 791, notes, Wis. Stat. § 980.09(1)(c) and (2)(c) are identical. The only distinction is that subsection (1) applies when the discharge petition is filed with the secretary's approval; subsection (2) applies, as here, when there is a default petition without the secretary's approval.

       The supreme court has narrowly defined the phrase "specific action" in Wis. Stat. § 808.08(1) as "a purely ministerial duty." State ex rel. J.H. Findorff & Son, Inc. v. Circuit Court for Milwaukee County, 2000 WI 30, ¶ 20, 233 Wis. 2d 428, 608 N.W.2d 679. The following are examples of ministerial duties a circuit court may encounter on remand: (1) a remand with instructions to dismiss a complaint, cross-claim, or counterclaim; (2) a remand requiring a remittitur or requiring a circuit court to remand to an administrative agency; (3) a remand with instructions to impose statutory costs; (4) a remand with instructions to impose statutory attorney's fees; or (5) a remand with instructions to enter judgment in accordance with a prior jury verdict. Id., ¶ 20 n.10. Here, we ordered the circuit court on remand to hold an evidentiary hearing to determine if Thiel's waiver of counsel was "knowingly, voluntarily and intelligently made." State v. Thiel, 2001 WI App 32, ¶ 26, 241 Wis. 2d 465, 626 N.W.2d 26. Such a hearing requires "an exercise of discretion" on the circuit court's part and is therefore not a ministerial duty. See Findorff, 233 Wis. 2d 428, ¶ 20. Accordingly, § 808.08(1) does not apply. Similarly, because we did not order a new trial, subsec. (2) does not apply. Subsection (3) then applies by default.