Georgia-Pacific Consumer Products v. Von Drehle Corporation
781 F.3d 710
| 4th Cir. | 2015Background
- Georgia-Pacific owns the enMotion trademark for a motion-sensor paper-towel dispenser and markets towels designed for its dispensers.
- Von Drehle sold cheaper 810-B towels intended for use in enMotion dispensers, prompting Georgia-Pacific to sue for contributory infringement under the Lanham Act.
- A jury found willful infringement and awarded Georgia-Pacific $791,431 in profits; the district court trebled the amount, awarded attorneys’ fees, prejudgment interest, and costs.
- On appeal, Georgia-Pacific’s related preclusion arguments and the Arkansas and Ohio judgments informed subsequent rulings; courts in other circuits rejected Georgia-Pacific’s ability to bar stuffing in their circuits.
- The Fourth Circuit held the injunction was nationwide but needed narrowing due to comity concerns with Eighth and Sixth Circuits, and remanded to modify scope.
- The panel vacated treble damages, reversed prejudgment interest, and remanded for reconsideration of attorneys’ fees under a standard aligned with Octane Fitness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of the injunction | Georgia-Pacific seeks nationwide injunction to protect its marks from stuffing nationwide. | Injunction should be narrowed to avoid inter-circuit comity conflicts with Eighth/Sixth Circuits. | Injunction narrowed to the Fourth Circuit geography; nationwide scope vacated. |
| Treble damages under §1117 | Treble damages justified by willful/conscious misconduct and profits recovery. | Treble damages improperly applied under §1117(b) logic; profits recovery under §1117(a) cannot be punitive. | Treble damages reversed; reinstate jury’s profit award of $791,431. |
| Attorneys’ fees under §1117(a) | Failure to consider willful conduct supports “exceptional” fees under Octane Fitness standard. | Willfulness as defined should be narrow; Octane Fitness standard should apply to fee award. | Vacate fee award; remand for Octane Fitness-based reconsideration. |
| Prejudgment interest under §1117(a) | Prejudgment interest may be available as part of compensatory relief in certain circumstances. | Prejudgment interest not available under §1117(a) except in §1117(b) counterfeit cases. | Reverse prejudgment interest award; not recoverable under §1117(a) here. |
Key Cases Cited
- Larsen v. Terk Techs. Corp., 151 F.3d 140 (4th Cir. 1998) (controls when adjusting profits under §1117(a))
- Thompson v. Haynes, 305 F.3d 1369 (Fed. Cir. 2002) (distinguishes profits vs. damages in §1117(a))
- Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145 (7th Cir. 1994) (interprets §1117(a) adjustment as compensatory, not punitive)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (establishes totality-of-circumstances test for 'exceptional' fee awards)
- Va. Soc’y for Human Life, Inc. v. FEC, 263 F.3d 379 (4th Cir. 2001) (comity considerations in nationwide injunctions)
- eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (injunction standard governing permanent relief in trademark cases)
- Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014) (recognizes Octane Fitness framework for §1117 fees)
- Georgia-Pacific Consumer Prods., LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir. 2010) (may preclude patent-like relitigation; comity concerns in preclusion)
- Georgia-Pacific Consumer Prods., LP v. Four-U-Packaging, Inc., 701 F.3d 1093 (6th Cir. 2012) (confirms comity considerations in preclusion contexts)