Case Information
‐ (L) Pillar Dynasty LLC New York & Co., Inc. In the
United States Court of Appeals
For the Second Circuit ______________
August Term,
(Argued: August Decided: August 2019) Docket Nos. ‐ (L), ‐ (XAP) ______________ P ILLAR D YNASTY LLC, R EFLEX P ERFORMANCE R ESOURCES I NC .,
Plaintiffs ‐ Appellees–Cross ‐ Appellants , –v.–
N EW Y ORK & C OMPANY I NC ., N EW Y ORK & C OMPANY S TORES , I NC ., Defendants ‐ Appellants–Cross ‐ Appellees. ______________
B e f o r e :
L YNCH C ARNEY AND D RONEY Circuit Judges .
______________ ‐ Appellants–Cross ‐ Appellees New York Company, Inc., New
York Company Stores, Inc. (“Defendants”) appeal from judgment United States Southern New York (Rakoff, J. ) awarding Appellees–Cross ‐ Appellants Reflex Performance Resources (“Plaintiffs”) gross earned from sales yoga clothing activewear infringed “Velocity” trademark. Plaintiffs, turn, cross appeal decision, after post briefing, amend removing trebled portion award.
We discern clear error in the District Court’s determination infringement was and in award to Plaintiffs the gross derived Defendants infringement. We rule further did not err amending remove trebled portion award. We also take opportunity clarify under precedent George Basch Co. v. Blue Coral, Inc. , 1992), plaintiff prosecuting trademark infringement claim need every case demonstrate consumer confusion entitled an infringer’s profits. vacate, attorney’s fees prejudgment interest Plaintiffs determination this was “exceptional” case under Lanham Act. While this appeal pending, we held standard determining “exceptional” case under Patent Act, see Octane Fitness, LLC ICON Health & Fitness, U.S. (2014), applies cases brought under Lanham Act, see Sleepy’s Select Comfort Wholesale Corp. Because position apply this holding when ruled on this issue, remand case allow apply Octane Fitness standard first instance.
AFFIRMED part VACATED REMANDED part.
______________
D AVID H. B ERNSTEIN (Jared I. Kagan, brief ), Debevoise & Plimpton, LLP, ‐ Appellants–Cross ‐ Appellees.
A ARON J. S OLOMON (Darren Oved, Michael Kwon, brief ), Oved Oved LLP, New York, NY, ‐ Appellees–Cross Appellants.
______________
C ARNEY Circuit Judge : brought Act, U.S.C. et seq. Appellants–Cross Appellees New York Company, Inc.,
New York Company Stores, Inc. (collectively, “Defendants” “NY C”) appeal from a judgment U.S. District Court Southern District New York (Rakoff, J. ), entered after a jury trial, awarding Plaintiffs ‐ Appellees–Cross ‐ Appellants and Reflex Performance Resources (collectively, “Plaintiffs”) an amount equal Defendants’ gross profits sales yoga clothing and activewear that infringed “Velocity” trademark.
On appeal, Defendants contend primarily that District Court erred substantially denying their post trial motions. They argue that (1) adduced insufficient show that acted willfully their infringing actions, prerequisite disgorgement profits; that (2) obtain award, Plaintiffs were required yet failed demonstrate actual consumer confusion. further contend that Court abused discretion by concluding “exceptional” under certain provisions Lanham Act, see U.S.C. 1117(a), awarding Plaintiffs attorney’s fees prejudgment interest disgorgement award. For part, their cross appeal, Plaintiffs argue abused discretion amending first entered judgment eliminate trebled portions profits award.
We conclude did clearly err determining Defendants’ infringing acts were willful, well as when amended initially ‐ entered remove trebled portion award. further reject argument were required demonstrate actual consumer confusion prerequisite award, clarify Act, plaintiff holder made infringer, without requiring plaintiff demonstrate consumer confusion. *4 See George Basch Co. v. Blue Coral, Inc. 968 1532 1992). We therefore affirm the District Court’s these respects. vacate, the attorney’s fees and
prejudgment interest and determination this was “exceptional” case under Lanham Act. While appeal was pending, we held standard determining “exceptional” under Patent Act, see Octane Fitness, LLC ICON Health Fitness, Inc. U.S. (2014), applies cases brought under Act, see Sleepy’s LLC Select Comfort Wholesale Corp. Because applied prior standard, under which finding determined right attorneys’ fees absent mitigating circumstances, position apply holding concerning Octane Fitness remand cause allow apply more flexible Octane Fitness standard first instance.
BACKGROUND Reflex Performance Resources (“Reflex”), company owned Behrooz Hedvat his two brothers, designs sells women’s activewear registered trademark “Velocity.” Reflex’s offerings include line leggings, capris, sports bras, tank tops, hooded sweatshirts. Acting through related entity Pillar (“4 Pillar”), Hedvat applied register Velocity *5 U.S. Patent and Trademark Office (“USPTO”) 2012. In 2014, USPTO approved trademark use “clothing and performance wear.”
Reflex does not operate any brick ‐ and ‐ mortar stores—rather, it sells its clothing wholesale retailers such as TJ Maxx, Marshalls, Ross, and Foot Locker, and customers online, through own website and third party sites as Amazon. Reflex maintains Manhattan showroom, where prospective wholesale buyers can view a “look book” and examine samples Reflex’s products.
NY & C is specialty women’s apparel retailer operating hundreds retail stores across United States. It sells branded clothing both through stores website. Reflex Pillar sued NY & C trademark infringement, alleging NY & C product line women’s activewear it labelled “NY & C Velocity” infringed “Velocity” controlled by Pillar licensed Reflex.
The went by jury. called Hedvat as sole witness. He testified some point potential customer came his office asked him if he had licensed “Velocity” mark NY C. Hedvat replied he had not. He told jury he was “extremely surprised” by question, it prompted him visit NY C’s website. App’x
Velocity mark, licensed it exclusively Reflex. Pillar does design or produce apparel issue case—that done solely by Reflex. jury charged with deciding only whether had infringed
trademark; advisory matter, asked render non binding verdict on question willfulness. See Fed. R. Civ. P. 39(c)(1) (permitting “try any issue advisory jury” if triable right jury consent parties). Remaining questions remedies required additional fact finding, including issue willfulness, were determined judge.
There, Hedvat discovered “NY & C Velocity” product line and formed belief line infringed his companies’ Velocity trademark. In his view, Defendants were selling “exact” same type products his company; marketing them same demographic groups similar price; and unlawfully using Velocity trademark do so. App’x 253. Hedvat testified that, acting through counsel, he demanded NY & C cease and desist from selling these products “NY & C Velocity” name and they had done so.
Hedvat conceded Reflex’s sales Velocity products actually increased between and including during period after which he discovered NY & C’s allegedly infringing use. He further explained while other companies had made arguably infringing use name, he was dealing any possible “one one” considered NY & C particularly important because “the big fish.” App’x 275.
After Hedvat concluded his testimony, parties stipulated record gross sale products bearing NY & C Velocity were $1,864,337.29. then rested their case, unsuccessfully moved matter law. App’x unexpected development following court’s denial motion, rested their case without presenting any or testimony, went jury.
*7 This turn events would surprised observers because, his opening statement, Defendants’ counsel focused heavily the expected testimony two witnesses who would appear NY & C: Christine Munley, NY & C’s head merchandising, Yelena Monzina, the company’s creative director. Counsel previewed that Munley would testify never having heard Reflex’s “Velocity” branded apparel despite her extensive expertise market. For her part, Monzina would testify before “NY & C Velocity” product line released, she conducted search that turned up Velocity trademark, as well as many other uses word “Velocity” apparel world. She would aver, she saw no chance consumer confusion between NY & C’s Reflex’s product lines. During closing arguments, Defendants’ counsel offered jury explanation failure call these—or any other—witnesses.
The jury found NY & C had infringed Reflex’s trademark. At request, it also rendered “advisory verdict” NY C’s willful. App’x open court after these verdicts were rendered, announced adoption verdict advised would issue written opinion setting forth findings fact conclusions law shortly. informed parties, without stating reasoning, would direct entered three times amount gross stipulated related NY C Velocity product line, which, noted above, were over $1.8 million. *8 Accordingly, court entered judgment against NY C amount of $5,593,011.87.
Upon Defendants’ timely request, stayed execution of judgment pending post trial motion practice. then moved for judgment as matter law Fed. R. Civ. P. 50(b) and amend or alter under Fed. R. Civ. P. 59(e). They urged that: (1) there legal basis for an award Defendants’ because Plaintiffs had not introduced evidence either willful infringement actual consumer confusion; and (2) Act did authorize an award trebled Defendants’ related profits. Plaintiffs, turn, moved an additional award attorney’s fees and prejudgment interest.
Not long after, issued “Opinion, Order, and Amended Judgment” setting forth both decision parties’ post motions and its findings fact conclusions law concerning issue. New York Co., F. Supp. 3d (S.D.N.Y. The court denied Rule 50(b) motion, holding record contained sufficient circumstantial support Second Circuit precedent did require showing consumer confusion predicate holder infringer’s profits. court reconsidered previous trebling award, reduced sum awarded Plaintiffs over $5.5 million stipulated gross sum approximately $1.8 million. Finally, granted motion attorney’s fees prejudgment interest. “Memorandum Order Final Amended Judgment” issued approximately month later, awarded $365,862.75 *9 attorney’s fees $110,950.91 prejudgment interest. 4 v. New York & Co., No. ‐ CV ‐ 2823 (JSR), 2017 WL 3738442, *1 (S.D.N.Y. Aug. 9,
Defendants timely appealed, Plaintiffs timely cross ‐ appealed from court’s decision to strike trebled portion of award.
DISCUSSION
I. Evidence Willful Infringement
To support an Defendants’ Plaintiffs, District Court first had find that their Plaintiffs’ willful. See George Basch Co. F.2d (“[A] plaintiff must prove that an infringer acted with deception before infringer’s are recoverable way an accounting.”). Defendants urge District erred concluding that Plaintiffs presented sufficient willfulness.
review clear error a court’s determination willfulness. Bambu Sales, Inc. v. Ozak Trading Inc. , F.3d 849, 854 (2d Cir. 1995). A finding fact clearly erroneous when “the reviewing on entire evidence left definite firm conviction that a mistake has been committed.” In re Lehman Bros. Holdings Inc. 459, (2d Cir. factors support finding Lanham Act mirror those apply suits brought Copyright Act, U.S.C. 504(c): plaintiff must show “(1) defendant actually aware infringing activity, or (2) defendant’s actions were result reckless disregard . . . or willful blindness.” Island Software & Comput. Serv., Inc. Microsoft Corp. 2005) (internal quotation marks omitted); see Fendi Adele, S.R.L. Ashley Reed Trading, F. App’x 2013) (applying Copyright Act definition Act claim) (summary order).
At trial, presented direct Defendants’ state mind using “NY C Velocity” brand. finding willfulness, Court, rather, relied on (1) Defendants’ failure stop selling infringing goods after action filed; (2) Defendants’ failure call witnesses who they had previously represented would testify regarding company’s decision use NY C Velocity name; (3) determination “use word ‘Velocity’ their products was, face, blatant infringement.” F. Supp. 3d 620–22. contend even when considered combination, these factors are insufficient matter law support finding knowing reckless infringement. They argue more particularly cease selling infringing product after litigation began cannot support inference infringement, their not call their identified witnesses was simply strategic one, made only because, their view, had failed meet their affirmative burden proving willfulness.
Defendants’ argument has some force. A defendant might decline halt sales challenged product manner consistent with non infringement, if careful due diligence response claim leads believe reasonably has infringed. Even so, while record evidence here be sparse, cannot conclude finding—which was aligned unanimous determination advisory jury and rendered after witnessing trial— clearly erroneous. cases rely on support their challenge are readily distinguishable. For instance, Sands, Taylor Wood Co. Quaker Oats Co. (7th 1992), defendants presented evidence their use continued only after both house and outside counsel conducted due diligence and concluded use non infringing. Id. 962; cf. Dessert Beauty, Fox F. Supp. 2d 427–28 (S.D.N.Y. 2008) (no bad faith where defendants consistently asserted fair use defense “differences between products their marks [were] manifest”), aff’d F. App’x Here, contrast, reasonably found similarities between Defendants’ products “Velocity” “blatant.” provided explain justify their failure cease selling infringing sportswear once they received notice Plaintiffs’ allegations. Indeed, argument focused on own good faith entitlement use “NY C Velocity” name, but purported weakness mark attacking Hedvat’s credibility business practices.
Furthermore, although Defendants may have had no affirmative obligation to present good faith to avoid a finding willfulness, Court permissibly drew an adverse inference from Defendants’ failure to call witnesses whom they themselves had highlighted as centerpiece defense case. volunteered court jury alike their witnesses’ testimony would establish, among other things, subjective good faith their creative director in selecting “NY C Velocity” name, her diligence in first engaging in a “personal vetting process,” then ordering a third party search report. App’x 200–05. light reasonable determination as “blatant” nature infringement, we can hardly say clearly erred drawing from absence these witnesses from inference testimony would have been “less than credible.” 4 , 257 F. Supp. 3d 622; see United States v. Torres F.2d 1165, Cir. 1988) (trial court may use discretion give a missing witness instruction when “a party has it peculiarly within his power produce witnesses whose testimony would elucidate transaction,” yet fails call those witnesses).
To sure, not required make such an inference. make colorable argument they simply made a strategic decision *13 rest rely the inadequacy of Plaintiffs’ evidence, and that adverse inference can reasonably be drawn decision. On review clear error, “[w]here there are two permissible views evidence, the factfinder’s choice between them cannot clearly erroneous.” Lehman Bros. F.3d Here, import conduct is reasonably susceptible several interpretations, including Court’s, therefore we sustain it. Considering totality factors identified by as basis decision, we will disturb its determination willfully infringed Plaintiffs’ trademark.
II. Actual Consumer Confusion Profits Award next contend our case law demands a Lanham Act plaintiff seeking an an infringer’s profits prove actual consumer confusion. This argument foreclosed our seminal George Basch Co. Blue Coral, F.2d 1992), which we addressed underpinnings profits awards under statute. point to some seemingly contrary statements an earlier case, G.H. Mumm Champagne E. Wine Corp. (1944) (Hand, J. ). To dispel any doubts as to this question, we write to clarify that, our Circuit, a plaintiff need establish actual consumer confusion to recover lost profits under Lanham Act. George Basch we identified “three categorically distinct rationales” for
awarding successful Lanham Act plaintiff an accounting for defendant’s profits: (1) avoid unjust enrichment; (2) proxy plaintiff’s actual damages; (3) deter infringement. at 1537. As unjust enrichment rationale, we drew analogy law constructive trust declared “a defendant becomes accountable when plaintiff can show were defendant’s infringement, defendant’s sales would otherwise gone plaintiff.” Id. at We explained this showing indistinguishable from “the element consumer confusion required justify damage award” under Act. Id. further observed infringer’s awarded “rough proxy measure *15 plaintiff’s damages[,] . . . shift[ing] burden of proving economic injury off the innocent party, plac[ing] hardship of disproving economic gain onto infringer.” Id. 1539. This rationale too, we acknowledged, requires a plaintiff “show consumer confusion resulting from infringement.” Id.
In contrast, our discussion of third rationale—deterrence—included mention of actual consumer confusion. Instead, we declared “a court may award a defendant’s profits solely upon a finding defendant fraudulently used plaintiff’s mark.” Id. “By awarding of a bad faith infringer rightful owner a mark,” we reasoned, “we promote secondary effect deterring public fraud regarding source quality consumer goods services.” Id.
Although our discussion there deterrence rationale somewhat terse, other portions George Basch opinion strongly suggest understanding a Act plaintiff infringing defendant’s upon a finding bad faith, without additional proof actual consumer confusion. For example, we “underscore[d] absence . . . showing [of willfulness], plaintiff foreclosed from receiving monetary relief”—in form plaintiff’s proved damages, defendant’s profits—if he can present “proof actual consumer confusion.” Id. This conditional statement would make little sense if actual confusion were essential precondition defendant’s deterrence rationale. addition, observed plaintiff failed demonstrate either confusion would precluded asserting “ both unjust enrichment deterrence available grounds relief.” Id (commenting Burndy Corp. Teledyne Indus., 1984)) . This remark, *16 too, suggests that we considered to suffice for an award profits deterrence rationale.
Our language George Basch may not have been ideally clear unequivocal respect, is true. Our subsequent rulings applying language, leave little doubt question: have repeatedly affirmed since George Basch a demonstration actual confusion is not a prerequisite to a profits award. See Merck Eprova AG v. Gnosis S.p.A. , F.3d 247, 261 (2d Cir. 2014) (“Our precedent permits a to a defendant’s full profits based solely deterrence.”); Int ʹ l Star Class Yacht Racing Ass ʹ n v. Tommy Hilfiger U.S.A., Inc. , F.3d 66, Cir. 1998) (“We held an accounting for is available, even if plaintiff cannot show actual injury or consumer confusion.”); Int ʹ l Star Class Yacht Racing Ass ʹ n v. Tommy Hilfiger, U.S.A., Inc. F.3d 749, Cir. 1996) (while “[p]roof actual confusion is ordinarily required recovery damages pecuniary loss,” plaintiff entitled recover because “[i]n order recover accounting an infringer’s profits, plaintiff must prove infringer acted bad faith”).
Indeed, rule expressed George Basch confirmed our later decisions makes good sense. Whether Act plaintiff can demonstrate actual consumer confusion, be sure, is important factor determining whether infringement *17 occurred in first place. See Polaroid Corp. Polarad Elecs. Corp. F.2d 1961) (Friendly, J. ) (listing factors, including actual confusion, to considered assessing whether Lanham Act’s “likelihood of confusion” test for infringement is met). deterrence rationale disgorgement of profits, focuses culpability of willful infringer, and presence or absence of actual consumer confusion may always bear a logical connection to infringer’s good or bad faith. Moreover, have long recognized actual consumer confusion “in fact is very difficult to demonstrate,” W.E. Bassett Co. Revlon, 1970), and deserving plaintiffs find challenging and costly make a showing even cases of blatant intentional infringement. Tethering power of courts require defendant’s disgorgement profits plaintiff’s showing consumer confusion would hamper courts’ ability deter misconduct, contrary purposes Lanham Act. See id. at (observing “[i]t is essential deter companies willfully infringing competitor’s mark” disgorgement is “the only way courts can fashion strong enough deterrent”). Resisting both these considerations repeated more recent expressions Circuit’s law, return again statement Judge Learned Hand G.H. Mumm 1944: “It is course true recover damages or whether trade mark unfair competition, necessary show buyers, who wished buy plaintiff’s goods, been actually misled into buying defendant’s.” at (emphasis added). For several reasons, passing remark does compel different result here. First, G.H. Mumm was decided two years before passage Act, therefore uncertain use interpreting statutory language codified U.S.C. 1117(a). Second, Judge Hand’s statement dictum—no issue G.H. *18 Mumm . Rather, the Court’s holding proof of actual confusion not required justify injunctive relief . Id. 501.
One might object requiring a infringement plaintiff prove only willfulness on top of support recovery of an infringer’s profits the deterrence rationale hollows out the unjust enrichment proxy for ‐ damages rationales described in George Basch which require a showing of both actual confusion for a profits award. This concern, is adequately addressed observation George Basch while “a finding willful deceptiveness is necessary order warrant an accounting profits . . . may not be sufficient.” Otherwise stated: whatever the rationale adopted, a district court must still balance equitable factors assessing propriety profits award. These include, but are limited to: (1) degree certainty defendant benefited unlawful conduct; (2) availability adequacy other remedies; (3) role particular defendant effectuating infringement; (4) any delay plaintiff; (5) plaintiff’s clean (or unclean) hands. Id. Thus, when relying deterrence rationale support infringer’s absence any confusion, courts should attend closely need fashion remedy may sufficiently deter misconduct without giving plaintiffs lottery level windfall. Indeed, Act calls just such determination: “If court shall find amount recovery based either inadequate excessive court discretion enter sum shall find just, according circumstances case.” U.S.C. 1117(a). Even when plaintiff sustains burden proving willfulness, courts should consider only whether enhanced appropriate, but *19 whether the disgorgement of all profits attributable the infringing product necessary achieve the desired deterrent effect.
In this case, District Court addressed equitable factors identified George Basch concluded an award Defendants’ gross Plaintiffs justified. review court’s choice remedy under Lanham Act abuse discretion only. Tommy Hilfiger, U.S.A. In this case, where evidence conduct less than overwhelming, where Plaintiffs introduced consumer confusion, where gross sales actually increased during years Defendants marketed infringing products, District Court could have concluded its discretion an award something less than full would have an adequate deterrent effect on these future infringers. Nevertheless, applying deferential abuse discretion standard review governs such rulings, conclude Court acted within permissible bounds discretion doing so here.
III. Attorney’s Fees Prejudgment Interest awarded Plaintiffs attorney’s fees, relying
Lanham Act provision allows an award prevailing party “exceptional cases.” U.S.C. 1117(a). It further required pay prejudgment *20 interest, “within the discretion of the [also] normally reserved ‘exceptional’ cases.” Am. Honda Motor Co. v. Two Wheel Corp. , 918 F.2d 1060,
In making these awards in 2017, the Court cited then ‐ current Lanham Act precedent the proposition “[t]he finding determines the right attorney’s fees.” Bambu Sales, Inc. at 854; see Patsy’s Brand, Inc. v. I.O.B. Realty, Inc. 209, 2003) (“exceptional cases” include “instances fraud or bad faith or infringement” (citations omitted)). In the Supreme Court interpreted identical attorney’s fee provision found in the Patent Act, U.S.C. 285. Octane Fitness, LLC v. ICON Health Fitness, U.S. (2014). In Octane Fitness without tying determination expressly finding willfulness, defined case “one stands out others respect substantive strength party’s litigating position (considering both governing law facts case) unreasonable manner which case litigated.” Id. called courts given wide latitude they engage “case ‐ case exercise discretion, considering totality circumstances.” Id. “case exercise,” courts consider factors including “frivolousness, motivation, objective unreasonableness (both factual legal components case) need particular circumstances advance considerations compensation deterrence.” Id. n.6 (citing Fogerty Fantasy, Inc., U.S. n.19 (1994)).
During pendency this appeal, ruled Octane Fitness ’s flexible definition “exceptional case” applies attorney’s fees provision Act, which mirrors Patent Act’s text regard. Sleepy’s Select *21 Comfort Wholesale Corp. 530–31 Defendants now urge us to apply that standard conclude that “[t]here is nothing special, extraordinary, or unusual about the case, nor the litigation pursued in ‘unreasonable manner,’” App’t Br. 35. They seek made under Octane Fitness standard the Court abused discretion in awarding attorney’s fees prejudgment interest to Plaintiffs here. Plaintiffs respond any remand would futile because Octane Fitness standard lowers threshold awarding attorney’s fees that, in any event, award attorney’s fees is warranted under Octane Fitness standard both because substantive strength their case unreasonable manner in which comported themselves during litigation. Appellees’ Br. 52–55. decline to make determination appeal. Although are indeed correct Octane Fitness provides courts broad discretion to award attorney’s fees, it still demands courts engage in “case case exercise discretion, considering totality circumstances” in determining whether case “one stands out from others,” so to warrant award fees. U.S. 554. This exercise differs appreciably prior practice. Thus, observed pre Octane Fitness law, unclear “whether default outcome willful infringement fees unless there are mitigating factors, or require aggravating factors order justify fee award.” F. Supp. 3d It then appeared adopt former approach, awarding fees after failed “point any mitigating factors present cases they cite which courts declined fees.” Id. Because Octane Fitness establishes no presumption—rebuttable otherwise—that cases involving are necessarily “exceptional,” remand allow apply approach articulated Octane Fitness first instance, expressing *22 view here as to whether record may support finding this case “exceptional” under this standard.
As award prejudgment interest, case law draws distinctions between showing required support such award required justify award attorney’s fees. See Am. Honda Motor Co. F.2d Accordingly, also vacate District Court’s prejudgment interest. On remand, District Court may, its discretion, Plaintiffs prejudgment interest if determines “exceptional” under Octane Fitness standard. IV. Cross Appeal
On cross appeal, argue abused discretion granting part motion alter judgment Fed. R. Civ. P. 59(e) removing trebled portions award. review amend judgment abuse discretion. Baker v. Dorfman F.3d 415, (2d Cir. 2000).
Under Rule 59(e), “district courts alter or amend correct clear error law or prevent manifest injustice.” Munafo Metro. Transp. Auth. 2004) (internal quotation marks omitted). A Rule 59(e) motion “may used relitigate old matters, raise arguments or present could *23 been raised prior entry judgment.” Exxon Shipping Co. Baker U.S. n.5 (2008).
Plaintiffs contend District Court erred in granting Defendants’ motion because failed “point controlling decisions data court overlooked.” Shrader CSX Transp., We disagree. After accepting jury’s advisory verdict on willfulness, District Court forthwith awarded treble without any further elaboration. App’x 522–23. While motion reconsideration Fed. R. Civ. P. 59(e) does properly serve occasion repeat already defeated arguments, in deciding motion court still reconsider hastily made earlier ruling if, upon revisiting non prevailing party’s arguments, concludes erred.
Because, motion, District Court end correctly applied standard set forth U.S.C. 1117(a), we review its elimination trebled portion abuse discretion only. For substantially same reasons stated District Court decision issue, F. Supp. 3d 625–27, agree failed demonstrate entitlement enhanced award. The permissibly exercised discretion concluding much. therefore affirm amend judgment accordingly.
CONCLUSION AFFIRMED part VACATED
REMANDED part.
[1] following statement facts taken testimony presented four day jury trial.
[2] Like Reflex, entity wholly owned Hedvat his two brothers. It created hold several trademarks, including Velocity mark issue here. After securing
[4] On cross examination, Hedvat could remember whether his attorneys sent NY C pre ‐ suit cease desist letter, merely filed case. It uncontested, NY C continued sell allegedly infringing products after lawsuit filed they had been duly served.
[5] Because, based representations opening, had expected cross ‐ examine Monzina, offered counsel opportunity read some Monzina’s deposition testimony into record before went jury. They elected do so.
[6] Plaintiffs contend (and concluded) Defendants waived argument because they failed raise it as ground their Rule 50(a) motion judgment as matter law, which filed after concluded their chief. styled later post trial motion as one Rule 50(b), but it is axiomatic Rule 50(b) applies “only cases tried jury has power return binding verdict”; does not apply “cases tried without jury those tried court with advisory jury .” Wright Miller, 9B Fed. Prac. Proc. (3d ed. 2018) (emphasis added). Defendants’ putative Rule 50(b) motion did challenge jury’s binding verdict they had infringed mark; instead, it, they objected Court’s independent accept jury’s advisory finding on willfulness. See DeFelice Am. Int’l Life Assurance Co. N.Y. 1997) (noting consult advisory jury “so long as court retains ultimate responsibility findings fact conclusions”); Mallory Citizens Utils. Co. 1965) (“When advisory jury used, review appeal court’s though no jury had been present.” (internal quotation marks omitted)). Accordingly, although Rule 50(b) motion improperly made, has bearing review findings fact conclusions law, do treat argument waived.
[7] Although, so far we found, we have never held expressly bench trial, district may draw adverse inference from missing witness, we see reason think do role factfinder what may instruct jury it authorized do same role. See Chevron Corp. Donziger F. Supp. 2d (S.D.N.Y. 2014) (“Such inference equally permissible bench trials.”), aff’d 2016). Consistent standard review findings fact bench trials, review court’s draw (or refrain drawing) inference clear error, abuse discretion. See Adelson Hananel (1st
[8] We further reject argument Act’s amendment—which expressly required willfulness make out claim trademark dilution violation U.S.C. 1125(c)—somehow implicitly superseded requirement plaintiff prove support recovery infringer’s profits. two decades since amendment, we consistently adhered requirement as set forth George Basch . See, e.g., Merck Eprova AG v. Gnosis S.p.A. F.3d 247, 261–62 Cir. 2014). are bound by prior panels “until time as they are overruled either by en banc panel by Supreme Court.” United States Wilkerson Moreover, recounted Romag Fasteners, Fossil, Inc. 789–90 (Fed. 2016), implausible Congress sought make any change law infringement, opposed trademark dilution, through amendment. statutory language tying court’s infringer’s application “principles equity” changed amendment, language explored defined George Basch.
[9] arguments on score are likely waived because they failed request jury instruction special verdict on “actual confusion.” This failure precluded ruling whether confusion required sustain infringer’s Act before submitted jury. Nevertheless, because expressed view merits these arguments opinion, see F. Supp. 3d n.2, exercise discretion address them here affirming judgment.
[10] This rule is consistent followed sister circuits. See, e.g. Masters UHS Delaware, 473–74 (8th 2011) (“Where jury disgorges remedy likely cause confusion, cause mistake, deceive relationship between parties’ services, equity does require adherence putative judge made rule requiring actual confusion.”); Gracie Gracie (9th 2000) (“While actual confusion relevant likelihood confusion (which required . . .)[,] showing confusion necessary obtain recovery profits.”).
[11] puzzling development, noted above, Defendants’ counsel stipulated only amount Defendants’ gross profits, rather than generally lower net profit figure. Generally speaking, infringer’s Act can expected refer net profits, but infringer bears burden “to prove any deductions costs gross revenues attributable [infringement].” Manhattan Indus., Sweater Bee Banff, Ltd. Accordingly, might considered whether, even when Defendants’ counsel apparently faltered score, deterrence rationale necessitated greater than net profits.
[12] exercising discretion issue, may, course, consider other factors generally relevant awards prejudgment interest, such “(i) need fully compensate wronged party damages suffered, (ii) considerations fairness relative equities award, (iii) remedial purpose statute involved, and/or (iv) other general principles are deemed relevant court.” Wickham Contracting Co. Local Union No.