Luxottica Group, S.p.A. v. Airport Mini Mall, LLC
932 F.3d 1303
| 11th Cir. | 2019Background
- Luxottica (owner of Ray-Ban and Oakley marks) sued the owners/operators of the International Discount Mall (Yes Assets, AMM, Jerome, Jenny, Donald Yeh, and manager Alice Jamison) for contributory trademark infringement under the Lanham Act after mall vendors sold counterfeit Luxottica eyewear.
- Law enforcement executed multiple raids at the mall, including a 14-hour raid seizing thousands of alleged counterfeits; mall management was notified and one raid left a warrant/list at a booth.
- Luxottica sent two written notices identifying unauthorized sales and specific suspect booths; mall managers and AMM personnel received or knew of these notices but did not evict suspected infringing vendors and renewed some leases.
- Luxottica’s investigator purchased and photographed very low‑priced counterfeit Ray‑Bans ($15–$20) and presented that evidence at trial; jury found direct infringement by vendors and contributory liability for all defendants except Jenny.
- The jury awarded statutory damages totaling $1.9 million; the district court denied defendants’ Rule 50(b) motion; defendants appealed evidentiary rulings and jury instructions among other issues.
Issues
| Issue | Plaintiff's Argument (Luxottica) | Defendant's Argument (Yehs/AMM) | Held |
|---|---|---|---|
| Sufficiency of evidence for contributory infringement (knowledge) | Defendants had at least constructive knowledge/were willfully blind (raids, notices, low prices, ability to inspect) while continuing to provide services that enabled sales | Tiffany standard requires plaintiffs to identify particular infringers; defendants lacked specific-notice knowledge so evidence insufficient | Affirmed: Even under a specific-knowledge assumption, evidence supported constructive knowledge/willful blindness and thus contributory liability |
| Whether landlord‑tenant contributory liability applies | Landlords supplying space/utilities/services that facilitate infringement can be contributorially liable if they know or have reason to know | Argue stricter limits/that landlords here lacked required specific knowledge or duties to act | Court assumed (without deciding) landlords can be liable and held evidence sufficient to apply contributory theory to landlords here |
| Jury instructions re: Georgia landlord self-help and control (including use of “and/or”) | Instructions correctly explained landlords could evict under lease terms and that defendants had ability to control tenants’ use of space | Instructions imprecise; defendants lacked clear evidence of tenant default and could be exposed to wrongful eviction; conjunction “and/or” ambiguous | No reversible error: jury could reasonably find lease provisions permitted self-help; any imprecision not substantially prejudicial |
| Evidentiary rulings (investigator testimony/exhibits, pre‑AMM incidents, other‑brand counterfeits, Swindall testimony) | Evidence of investigator purchases/photographs, raids (including pre‑AMM), and other-brand allegations were probative of knowledge; Swindall’s testimony relevant to defendants’ notice | Challenge admission as prejudicial, hearsay, improper exhibit handling, or untimely witness disclosure | No abuse of discretion: district court reasonably admitted/managed evidence; errors (if any) were not prejudicial |
Key Cases Cited
- Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844 (Sup. Ct. 1982) (recognizing contributory trademark infringement standard)
- Duty Free Am., Inc. v. Estée Lauder Cos., 797 F.3d 1248 (11th Cir. 2015) (Lanham Act liability analyzed under basic tort principles)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (marketplace provider liability requires more than general knowledge; contemporaneous knowledge of specific listings emphasized)
- Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) (contributory liability applied to flea market operators)
- Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143 (7th Cir. 1992) (flea market operator contributory liability)
- Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013) (willful blindness as a way to prove constructive knowledge)
- Mini Maid Servs. Co. v. Maid Brigade Sys., Inc., 967 F.2d 1516 (11th Cir. 1992) (serious and widespread infringement increases likelihood defendant knew)
- United States v. Baxter Int’l, Inc., 345 F.3d 866 (11th Cir. 2003) (willful blindness can establish constructive knowledge)