Pods Enterprises, LLC v. U-Haul International, Inc.
126 F. Supp. 3d 1263
| M.D. Fla. | 2015Background
- PODS sued U-Haul for trademark infringement, dilution, unfair competition, FDUTPA violations, and unjust enrichment based on U-Haul’s use of the words “pod” and “pods” to market its competing U-Box product; after a two-week trial the jury returned a verdict for PODS totaling $60.7 million.
- Jury awarded $45 million as corrective-advertising actual damages and $15.7 million in U-Haul profits; jury rejected U-Haul’s defenses (genericness and descriptive fair use) and found unjust enrichment.
- U-Haul moved under Fed. R. Civ. P. 50/59 for judgment as a matter of law or a new trial and for remittitur; PODS moved to amend judgment to add a permanent injunction, dismiss PTO cancellation proceedings, add prejudgment/postjudgment interest, seek enhanced damages, and attorneys’ fees.
- The Court denied U-Haul’s renewed JMOL/new-trial/remittitur motions, granted in part PODS’ motion to amend (entered a permanent injunction and added prejudgment and postjudgment interest), denied enhanced damages, and denied PODS’ request for attorneys’ fees.
- Key contested legal themes included: sufficiency of evidence on likelihood of confusion and dilution (fame and blurring), whether U-Haul’s web uses constituted trademark use, causation and entitlement for disgorgement of profits, corrective-advertising damages methodology, availability of prejudgment interest, and whether the case was “exceptional” for fee shifting.
Issues
| Issue | Plaintiff's Argument (PODS) | Defendant's Argument (U‑Haul) | Held |
|---|---|---|---|
| Liability — likelihood of confusion | U-Haul’s use of “pod(s)” on its website and marketing caused consumer confusion and was adopted to trade on PODS’ reputation | Terms were generic/descriptive; uses were non‑trademark, stylistically different, and not likely to confuse | Court: Sufficient evidence supported jury’s finding of likelihood of confusion; verdict upheld |
| Dilution (blurring and fame) | PODS’ mark is famous and U‑Haul’s trademark use of “pod(s)” on web likely blurred distinctiveness | U‑Haul: did not use the term as a mark; PODS’ mark not famous; insufficient proof of association | Court: Substantial evidence supported fame and trademark use by U‑Haul; jury could find likelihood of dilution by blurring |
| Affirmative defenses — genericness & fair use | PODS: mark remains source‑identifying; U‑Haul’s internal use and intent undermines genericity/fair use claim | U‑Haul: term generic ab initio or became generic; use was descriptive/good faith fair use | Court: Jury could reject U‑Haul’s defenses; evidence did not compel a contrary verdict; no new trial |
| Damages — profits and corrective advertising | PODS: entitled to U‑Haul profits and corrective‑advertising damages to remedy loss of brand value | U‑Haul: PODS failed to prove causation, entitlement to disgorgement, and corrective damages were unsupported or excessive | Court: Award supported — disgorgement appropriate after infringement, Winer/Bratic evidence plausible; $45M corrective advertising and $15.7M profits sustained; remittitur denied |
| Prejudgment & postjudgment interest | PODS: prejudgment interest appropriate under Florida loss theory on state claims; postjudgment interest statutory | U‑Haul: damages too speculative; unclear loss date | Held: Prejudgment interest granted ($4,936,100); postjudgment interest granted at statutory rate |
| Enhanced damages & attorneys’ fees | PODS: willful conduct justifies enhancement and fees as an exceptional case | U‑Haul: defenses were reasonable; conduct not sufficiently culpable for fees or enhanced damages | Court: Declined to enhance damages and denied attorneys’ fees — exercised discretion given disputed/good‑faith defenses |
Key Cases Cited
- Chaney v. City of Orlando, 483 F.3d 1221 (11th Cir. 2007) (standard for Rule 50 sufficiency review)
- Reeves v. Sanderson Plumbing Prods., 530 U.S. 133 (2000) (cannot weigh credibility on JMOL; draw inferences for nonmovant)
- Frehling Enterprs., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (adoption of mark to trade on plaintiff’s reputation supports inference of confusing similarity)
- John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (jury’s finding of likelihood of confusion must be upheld if supported by substantial evidence)
- Lone Star Steakhouse v. Longhorn Steaks, 122 F.3d 1379 (11th Cir. 1997) (strength of mark and actual confusion are most important factors in likelihood analysis)
- Aronowitz v. Health‑Chem Corp., 513 F.3d 1229 (11th Cir. 2008) (corrective advertising is an available form of actual damages)
- Burger King Corp. v. Mason, 710 F.2d 1480 (11th Cir. 1983) (discretion in awarding profits and enhanced damages)
- Octane Fitness LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (fee‑shifting “exceptional case” standard and discretionary analysis)