*4 BIRCH, CUDAHY,* Before FAY and Judges. Circuit * designation. Cudahy, Honorable Richard D. United States Circuit, sitting Judge Circuit for the Seventh $10,000 agreed provide PER CURIAM: Health-Chem per month in funding help to Aronowitz to defendants-appellants, Plaintiffs-counter develop patch at Diag- Health-Chem’s Aronowitz, Diagnostics Health-Chem Jack facility nostic Division research and to em- LLC, (collectively LLC and Leon Services ploy him there as a director and consul- “Aronowitz”),1 an appeal “Omnibus Order” tant.2 agreed Health-Chem also pay by the district court the Southern Dis- licensing fee to rights Aronowitz for in his addressing trict of Florida a number of diagnostic (1) products, including up-front an post-trial motions. The order set aside $233,000 licensing approximately fee of verdict had been rendered the first three months. The Aronowitz’s favor as to his first breach of 2002 Contract against gave option contract claim defendant-counter also Health-Chem an eventu- claimant-appellee Corpora- ally buy rights to the TD Glucose (“Health-Chem”); tion reduced the patch. respect awarded with to the sec- After a series of disputes money over against. ond breach of contract claim Contract, owed under the 2002 sensing Health-Chem from million to nominal out, working the venture was not *5 $1; upheld of ver- parties negotiated arrange- met and a new against dict Aronowitz on Health-Chem’s ment in 2003 “in order that [Health-Chem infringement; counterclaim for trademark funding cease further of Diag- could] its (4) conditionally a granted and new trial to nostic Division and that [Aronowitz could] pri- Health-Chem in the event the court’s assume financial responsibility and man-
mary rulings AF- were reversed. We agement direction of TD [the Glucose de- part, part, FIRM in REVERSE and business], velopment with minimum inter- REMAND for new trial as to Rl-31, ruption operations.” to the Exh. G breach 2003 contract. arrangement, at 1. Under the new parties agreed employ- that Aronowitz’s
I. BACKGROUND ment with Health-Chem would cease and appeal This arises out of a business dis- entity that he would create a new business Health-Chem, pute company between develop the TD The patch. Glucose pharma- that manufactures transdermal parties agreed assignment also to the Aronowitz, patches, ceutical and an inven- entity the 2002 Contract to the new such diagnostic tor of medical In products. stipula- as to all obligations “terminate and signed agreements, parties three tions of between Aro- [the contracts] Agreement, Agree- a Master a License Corporation,” nowitz and as Health-Chem (collec- ment, Security Agreement and a agreement of the date of the and to have Contract”), tively they “2002 which entity the new assume them. Id. at 2. agreed joint to enter into a venture for the provided The contract that further marketing development of one of Aro- nowitz’s inventions, the “TD Glucose” If the assignment of the [2002] Contract, above, performed, as is not described patch, patch a transdermal takes a parties agree nevertheless the to termi- glucose reading having diabetic’s without Contract, obligations to draw blood. Under the 2002 nate all financial of [Health- facility 1. Leon LLC Services was Aronowitz's busi- 2. This was located in Florida rather (where entity prior Pennsylvania ness to the 2003 contract. than in the rest of located) Diagnostics diag- Health-Chem LLC was the Health-Chem was because Health- facility acquired bankruptcy pro- nostic research he established un- Chem had it out of ceedings. der the terms of the 2003 contract. the 2003 contract. Aronowitz provisions Corporation] [Aronowitz Chem had failed to alleged that Health-Chem as of above entities] his business trans- including electricity ... bill at the now Agreement, pay date of this facility exclusively, ceasing Diagnostic Division research specifically, but not ferred off; going of Health-Chem to be cut obligations power all financial and that the regard Diagnos- with to the that Health-Chem had Corporation alleged he also him provide tic Division. failed to with Weiss asserted that Health- wands. Aronowitz agreement termi- Although the new Id. him to cancel its conduct entitled Chem’s obligation provide nated Health-Chem’s option patch. on the TD Glucose monthly funding development for the patch, Health-Chem did the TD Glucose In Aronowitz filed suit June supplies and agree provide certain In an amended against Health-Chem. notably equipment to Aronowitz—most alleged separate he two counts complaint, wands,” necessary to which were “Weiss breach of contract: one for the 2002 Id. at 4. The the clinical trials. perform and one for the 2003 contract. Contract Payments agreed also to a “Cut-off alia, raised, inter the de- allocated Expenses” provision which respect to the 2002 fense of novation with provided specific expenses certain Contract, agreement that the 2003 arguing “[a]ny expenses [specifically listed agreement and nulli- superseded the responsibility of the become the would] any claim for breach. possible fied goods or services were party to whom a counterclaim Health-Chem also initiated delivery.” on the date of delivered based infringe- against Aronowitz for trademark *6 Health- provision, Id. at 3. Under this ment, had the alleging that Aronowitz used any or responsible goods for Chem was general mark “Health- more two-word of the prior services delivered to execution juryA tri- permission. Chem” without its responsi- 2003 contract and Aronowitz was 2005. At the close al was held October any or de- ble for unlisted services goods case, of Health-Chem moved Aronowitz’s livered thereafter. judgment as a matter of law on two granted Aronow- The 2003 contract also first, grounds: that the 2003 contract ef- entity a limited license to use itz’s new Contract, a of the 2002 fectuated novation Diagnostics” trademark “Health-Chem thereby eliminating any claim for breach patch connection with TD Glucose de- its Contract; and, second, that of the 2002 use was to be limited to velopment. Such damages prof- for lost Aronowitz’s claimed entity’s company the new “name and liter- specu- contract were too its under the 2003 Finally, ature.” Id. under the 2003 con- “grudgingly” lative. The trial court denied tract, option Health-Chem retained an to motion.3 at 45. R10 Health-Chem the, TD purchase rights to Glucose of all renewed its motion at the close of five guaranteed and Aronowitz was patch, again The court denied the mo- evidence. percent of net sales. tion, that “con- stating this time execution, effect the 2003 its dis- cerned about Within two weeks of agreement, the 2002 parties agreement over the had on putes arose between the assign- the 'effects of this previously Contract] 3. The district court had touched on and obligations and in the ment will be to terminate all this issue much earlier case in its agreement] stipulations' ... For [that [that] to strike Aro- of denial of Health-Chem’s motion reason, provision jury [2002 Contract] demand for a trial. The court nowitz's jury terminated Agree- waiver of trial was had ruled that "The October 2003 agreement.” at 2. assignment Rl-40 provided ment an October [2002 going prevent jury at this Id. The court concluded that [was] Aronowitz’s R17 at point considering from it.” 175. contention that the Agreement “ap- judgment moved for as a matter plie[d] only prospectively short of [fell] infringement of law on the trademark creating a substantial conflict in the evi- claim; the court also that motion. denied dence” that Health-Chem was entitled as a matter of law in its favor closing arguments jury prior
Just as to breach of the 2002 Contract. Id. instruction, proposed two al- amended verdict forms. The ternative As to the million verdict for $2.6 first, any which omitted mention of breach contract, breach of the 2003 operating un- Contract, as to the 2002 would have been der assumption the award had applicable granted judgment had the court solely been alleged based on Aronowitz’s as a matter law on the issue of novation. profits, lost the court observed that “the began by asking The second to record fails to contain sufficiently ‘compe- whether the 2002 decide Contract had tent and substantial’ evidence demon- [to superseded by been the 2003 contract. strate] causal connection between against The court ruled use of either of the breach and [Health-Chem’s] [Aronowitz’s] proposed forms. profits.” lost future Id. at 12. The court The returned a verdict in favor of reasoned that many too obstacles stood Aronowitz as to each breach of contract between Health-Chem’s fulfilled obli- Specifically, claim. it awarded of gations under the 2003 contract and the $331,000 as to breach of the 2002 Contract TD patch’s generation profit. Glucose million as to breach of the 2003 particularly pointed The court to the need however, jury, contract. The returned a to raise at least million more for re- $10 against verdict Aronowitz on Health- search and development, completion counterclaim, finding Chem’s that Aronow- trials, successful clinical FDA obtaining infringed itz had on the “Health-Chem” approval, proving success in the mar- claim, it trademark. On that awarded ket. $25,000 The Health-Chem. The court went on to observe that even respective renewed their motions *7 shown, if a causal connection had been law, judgment for as a matter of which the presented “insufficient evidence was to together district court addressed in its damages measure the with reasonable cer- February 2006 “Omnibus Order.” However, tainty.” Id. at 13. because the respect to With Health-Chem’s renewed court also found that the record contained motion, the district court first observed jury’s support sufficient evidence to the “only the fair construction” of the conclusion that Health-Chem did breach plain terms the 2003 contract was that contract, judg- the 2003 the court entered “parties extinguish intended to their Aronowitz, ment in favor of in the obligations” contractual under the 2002 (as only in damages amount of nominal $1 Contract, a effecting novation as a matter law). required by Florida making jury’s finding of law and “[t]he claim, infringement As to the trademark contrary legally unreasonable.” [ ] judgment argued Aronowitz had as R4-154 at 16. The court went on to find grounds matter of law on the that he had that even if that construction were incor- and, permission not used the mark without rect, only “the reasonable conclusion based had, likely even if he that the use was not upon presented the evidence at trial [was] to cause confusion. The district court re- Agree- that the intended the 2003 extinguish” jected arguments, observing that the ment Contract. these were novation and fraudulent inducement with Aronow- in connection given license development pleadings efforts had and material issues raised itz’s reseai-ch limited the use of the name at 21. In presented been at trial.” Id. evidence that Aro- Diagnostics,” but “Health-Chem errors, granted the court light of these used the further and gone had nowitz in motion for a new trial Health-Chem’s (and registered) separately general more alternative, judg- in the court’s case en- “Health-Chem” on his two-word mark on ments as a matter of law were reversed the mark used was tity’s website. Because , appeal. Diagnos- to “Health-Chem equivalent argues that appeal, On tics,” that there had been the court found (1) finding, in as a district court erred unauthorized use. The court an illicit and law, con- matter of that the 2003 contract in the record that to evidence pointed then (2) contract; of the 2002 stituted novation employees potential both customers in reducing the million verdict to $1 customers confused the use: had been ground that there nominal on the website for had mistaken Aronowitz’s support was insufficient evidence potential employee and a Heath-Chem’s profits; the basis of lost award on that Health-Chem mistakenly had believed judg- (3)denying Aronowitz’s motion for Beach, Pompano in Florida. was located the trademark ment as a matter of law on Accordingly, enough the court found counterclaim; condi- infringement presented had been as to each evidence trial tionally granting Health-Chem a new infringement of the trademark element argues in the alternative. Aronowitz also conflict in claim “to create a substantial that, evidence,” judg- either thereby making judgment the event we reverse “inappropriate.” Id. at as a matter of law ment a matter of law but do not rein- as upheld also verdicts, 10. The court to a state the he is entitled $25,000 damages, ex- imposing verdict only. new trial as to have wide plaining that “courts discretion II. DISCUSSION just recovery determining amount infringement on a trademark claim” Judgments A. a Matter Law as presented had sufficient de a district We review novo support prospec- “to the award of evidence ruling court’s on motion for as damages.” Id. at 10. tive corrective pursuant a matter of law to Federal Rule court, made a conditional Finally, Celebrity of Civil Procedure 50. Doe v. alternative mo-
ruling on Health-Chem’s (11th Cruises, Inc., 394 F.3d Cir. found, for a trial. The court tion new 2004) (citation omitted). In doing, so we in its discussions the same reasons covered *8 apply the same standard as the district breach, that the verdicts as to Evans, 1425, court. Rankin v. 133 F.3d and 2003 contracts had breach of the 2002 (11th Cir.1998). court 1435 The district weight of the evi- against great been the may grant judgment as a matter of law “at The court also found it presented. dence or, renewed, timely if the close of evidence special submit two refusing had erred to verdict, as after the has returned its request- had interrogatories Health-Chem long legally ‘there is no sufficient evi- as regarding: verdict form ed be added to the dentiary basis for a reasonable (1) Agreements 2002 were whether the ” non-moving party. Lip the find’ for Agreements, and terminated the 2003 Durango v. Bran phardt Steakhouse (2) fraudulently had whether [Aronowitz] (11th don, Inc., 1183, 267 F.3d 1186 Cir. to enter into the induced [Health-Chem] 50). 2001) Contract, In un- (quoting fact that “both Fed.R.Civ.P. despite 2002
1237 analysis this we examine all evi- dertaking question 361. The of intent generally “is a light in a favorable to the dence most non- question of fact” for a jury. Wolowitz v. Cruises, Celebrity moving party. 394 F.3d Inc., Thoroughbred 920, Motors 765 So.2d (citation omitted). at 902 However, 923 (Fla.Dist.Ct.App.2000). “[wjhere agreement the terms of a written 1. Breach Contract of2002 doubt, are question of whether it challenges Aronowitz first effects a novation is one of law for the court’s as a matter of law in Hauser, court.” Corp. S.N.W. 461 So.2d favor of Health-Chem as to breach of the 188, (Fla.Dist.Ct.App.1984); 189 see also Contract, citing following points 2002 Sink v. Abitibi-Price Corp., Sales argument that support his there was 1313, So.2d 1316 (Fla.Dist.Ct.App.1992) 1) the parties no novation: modified the (finding novation as a matter of law where wording final such that terminated all parties entirely entered into “an new obligations” “financial rather than all “con and unambiguous agreement equal or 2) obligations;” assignment tractual of greater dignity agreement to the first provided the 2002 Contract the 2003 respect made with subject”) the same 3) occurred; actually contract never Borkowski, (quoting Evans v. 139 So.2d the 2003 contract included a “schedule of 472, 474 (Fla.Dist.Ct.App.1962)). expenses” specifically which allocated re Here, the language of the 2003 contract forward, sponsibility expenses going states that the assignment for which it but did not mention debts owed still under provides obligations all “terminatefs] the 2002 contract. stipulations [prior of the contract 2002] “A agree novation is mutual between Aronowitz and Health-Chem Cor- parties ment between the for the dis poration,” as of the date of the contract’s charge existing obligation by of a valid Rl-31, Further, execution. Exh. G at 2. of a obligation.” substitution new valid provides the contract that even absent that Kings Jakobi v. Creek Vill. Townhouse assignment, “the parties agree to termi- Ass’n, 665 So.2d (Fla.Dist.Ct.App.1 all obligations nate financial of [Health- 995).4 law, Under Florida four elements Chem to under the Aronowitz] [2002 Con- required are to effectuate the novation of a agree Id. We with the tract].” district (1) binding previously contract: valid only court reasonable conclusion (2) contract; agreement parties language based on this parties is (3) contract; cancel that a new valid and extinguish intended to the 2002 Contract. contract; binding agreement of the parties replace that the new contract will if language Even the contract’s extinguish the old one. Thompson v. sufficiently ambiguous were as intent Co., (Fla. Jared Kane 872 So.2d regarding the 2002 to allow us to Contract Jakobi, Dist.Ct.App.2004); 665 So.2d at evidence, parol consider we find that the parties 327. The only concede only reasonable conclusion to be drawn at element issue here is the intention of par from the evidence at trial is that the as to the 2002 Contract. First, ties intended novation. that, points out execution of the before may
Intent be inferred from the *9 contract, totality provision of the the draft which stated surrounding circumstances Thompson, parties agreed the transaction. 872 So.2d at the to all contrac- “ceas[e] Apparently, disagreement upon existing 4. the heart of the a novation contractual obli- majority partial the between and dissent in gations. this case concerns the breadth of the effect of
1238 in full binding remain and Contract between Health-Chem obligations” tual Aronowitz, say obligations spe- “ceas[e] was altered to financial not Any and effect. Appellant’s obligations.” See were, all financial cifically by plain the lan- mentioned 2). Rl-31, Exh. G at (referring to Br. at 33 contract, to be “terminated.” guage of the change sug- this asserts Aronowitz fact, presence In to us that the seems only cut intended parties that the gests in payment provision a cut-off a such fund the obligation to off Health-Chem’s Health-Chem’s con- 2003 contract bolsters division, to extin- not patch TD Glucose that the 2003 contract was intend- tention under the 2002 Con- obligations all guish parties’ ed to effectuate a severance of the convinced. The context tract. are not We Accordingly, we relationship. business change was in which the paragraph “an find that the 2003 contract constituted change that the suggests made instead entirely unambiguous agreement new and in consistency terms for the sake of made agree- to the equal greater dignity or rather than out of sentence within the same respect ment first made with to the in significant difference concern over Sink, at As subject.” See 602 So.2d reads, sentence in meaning. The entire such, court that agree we with the district ... is assignment “If the pertinent part: only reasonable conclusion to be drawn parties performed, not nevertheless contract from the evidence is that the 2003 terminate all obli- agree to financial a novation of the 2002 constituted Con- gations [Aronowitz] of [Health-Chem] tract. all including ... the termination of em- Diagnostic at the ployees of Health-Chem 2. Breach 2003 Contract Division, specifically but not exclusive- and [originally all contrac- ly ceasing challenges Aronowitz next financial Corp of Health Chem obligations tual] a matter of grant court’s as Division and regard Diagnostic with to the in declaring law million tract provision since what particularly not find the its vendors contract “terminate” and assignment of the gations complete tractual” with the term forth context, obligation. at Further, 2 terms of performed.” (emphasis the “Cul^Off is irrelevant between the this to have created provision in the 2003 breach, the failure of the replacement agreement.” assignment added). Accordingly, “eeas[e]” Id. Payment obligees, except in the face of the 2003 [2002] is parties Additionally, contract, “financial,” in that lingering of the term “con- of the 2002 all contract any ambiguity, Rl-31, even financial obli- parties Expenses” parties assigning financial “[i]f asserts, we find Exh. G as set ... we do Con- will is Levitt-Ansca Towne Park ing mitted unless the 2004); Lipscher v. LRP lost established with reasonable & for lost F.3d Florida successful district court awarded awarded ages contract Co., expectation awarding instead. 873 So.2d profits. law). Although a business claim profits to be damages solely operational Under Florida apparently Aronowitz In is not impermissibly speculative (11th expected making for breach “track required Cir.2001) Publ’ns, Inc., assumed the $1 (Fla.Dist.Ct.App. will not be P’ship this law, an award amount can be nominal dam compensation record,” at a of the 2003 ruling, to show a certainty. (applying v. Smith per minimum, profit damages the lost amount payments expenses responsibility determined some reasonable must be period over the of transition does not es- yardstick. Gay or Mech. tablish that intended the 2002 standard W.W.
1239 Contractor, Two, Ltd., Inc. v. Infringement Trademark Wharfside 1348, (Fla.Dist.Ct.App. 545 So.2d 1351 Aronowitz also appeals the dis 1989) curiam). (per observe an We trict court’s denial of his motion judg expectation royalties on future net sales ment as a matter of law on the trademark merely is profits subset of lost future infringement counterclaim. A successful subject and therefore to the same burden cause of action for infringement trademark proof damages profits as lost would requires the evidence to establish that the be. 1) infringer commerce, used the mark in
Although agree we with "the 2) district consent; without that the use was court that the presented evidence in- was likely to cause confusion. John H. Har provide any sufficient to reasonable cer- Checks, Inc., land Co. v. Clarke 711 F.2d tainty by damages (11th Cir.1983). which to calculate due royalties, to lost we do not see that the Aronowitz does not contest the damages by award made was allegation that he used the shorter mark necessarily solely upon royal- based lost “Health-Chem” on company’s website, his During ties. Aronowitz’s closing argu- argues that Health-Chem “did not and ment, he asked specifically only for $5 cannot show likelihood of confusion.” royalties, million lost but also for Appellant’s Br. at 51. have recognized We $94,000 for the pur- Weiss wands never seven factors to be considered as to the by approximate- chased Health-Chem and (1) likelihood of mark; confusion: type of $15,000 ly payment connection with a (2) (3) mark; similarity of similarity of the a third party erroneously from made to (4) products the represent; marks similari and retained Health-Chem after execu- ty of the parties’ retail outlets and custom tion of the Testimony pre- 2003 contract. (5) ers; similarity media; of advertising during sented the course of (6) intent; defendant’s actual con the trial possible also raised other smaller Enters, fusion. Frehling v. Int’l Select compensatory damages. bases for Be- Inc., (11th Group, 192 F.3d - cause is impossible, the absence of Cir.1999). these, “Of type of mark and interrogatories form, on the verdict for us the evidence of actual confusion are the to determine what the jury might factors important.” most Id. have in calculating considered its mil- $2.6 verdict, There recognized lion we are four say are unable to that the types mark, entirety ranging from of that verdict weakest unsupported.5 However, strongest: generic, impermissibly descriptive, suggestive absent the specu- arbitrary. lative royalties, stronger claimed for lost Id. “The mark, greater scope award could not have protection reached $2.6 million. Accordingly, we reverse accorded A strength it.” Id. mark’s is court’s as a matter of enhanced law reduc- where there is little or third- no ing $1, party but we decline to use of that mark. Id. at 1336. With reinstate the confusion, verdict. regard to actual specifi- we have argues 5. Aronowitz also he approval.” Appellant’s introduced and FDA atBr. Rl-31, However, required 4]). evidence that (quoting million would be Exh. G [at research, complete development, particular argument and FDA this was not raised be- approval Further, patch of the TD Glucose fore the trial court. the record does jury might have based its award having presented on this not reflect Aronowitz this amount due to Health-Chem’s failure “to co- amount to the as a direct basis for dam- operate distribution, fully funding, ages. to secure *11 Florida, facility a in about to evi- Chem weight” had cally accorded “substantial the still made whether Health-Chem confused were actual customers dence that for, and about they looking were patches to other opposed as of a mark use the associated was whether Aronowitz—who Stores, Inc. Safeway people. of categories company— a previous the of with failure 675 F.2d Drugs, Safeway Disc. Health-Chem. There was with associated Cir.1982). (11th testimony potential that a em- also was that agree Here, apparently the concerned, af- of was ployee Health-Chem suggestive is mark a Health-Chem the Diagnos- Health-Chem at the looking ter strong- in second mark, it putting thus website, having to relocate tics about of meriting higher a level category, est Florida, major a customer was and that categorized as if it were than protection discrepancy between concerned about Frehling, 192 See descriptive. or generic described on the website products only Additionally, the F.3d at 1335-36. produce. claimed to those Health-Chem usage of the any third-party of mention hand, interrogatory an on theOn other ques- in a mark is contained Health-Chem that form indicates the verdict Bro- attorney Ken tion Aronowitz’s asked not intend to Aronowitz did found that officer, chief financial dy, Health-Chem’s mark. find infringe on Health-Chem’s We might in that company a California about in record to controvert this no evidence Brody name. did not using the same be in Accordingly weighs this factor finding. Thus, testi- positive is no it. there confirm agree of Aronowitz. We with favor any third that or other evidence mony fac- remaining that the four district court mark, thereby according it uses party In favor neither side.6 consideration tors meriting further strength even more factors, that we of all relevant conclude at Frehling, 192 F.3d See protection. important the two most factors because 1336. likelihood of confusion— determining the contains evidence of Finally, the record and actual confusion— type of mark First, testimo- there confusion, confusion. actual weighed finding favor of such Health-Chem customers ny potential support a there was sufficient evidence Diag- the Health-Chem infringement. had been to jury’s finding who of reasonable for Health-Chem’s did err looking the district court not Accordingly, nostics website judg- ex- Aronowitz’s motion pharmaceutical patches denying transdermal law.7 Health- ment as a matter of about whether pressed confusion (4) companies. the two The rec- was exten entations of the other four factors None (1) adver- substantial evidence of party: The issue ord also lacks sively either discussed tising mark media. use of the is Aronowitz’s exists, similarity. there is no issue of as it so any (2) average also asserts that confusion argued an con 7. Aronowitz It could be likely due to might by his website was more supplies believe that caused medical sumer names, similarity produced trans- between "Health- both the same manufacturer "Health-Chem,” Diagnostics” than patches and home-use Chem pharmaceutical dermal "Health-Chem” diagnostic E. to his of the shorter See use other medical tests. however, Aronowitz, Co., legal makes no Int'l mark. Remy & S.A. v. Shaw-Ross Martin assertion, Inc., (11th argument in connection with this Cir. 756 F.2d Imports, hand, 1985). change the that his license and it does not fact not Health- On the other is itself, longer mark subsidiary, to use of the subsidiary was limited Chem Laboratories, Diagnostics” and actually manufac “Health-Chem Hereon record, found, ample evidence in the on products. It is clear from based tures resulting his of confusion from differences a likelihood what similarities or the record pres- use the shorter mark. or sales exist between customers might *12 4. Damages Infringement industry three trade shows to reestablish for Health-Chem’s identity in the market Aronowitz has challenged also $50,000 would cost $75,000. between and $25,000 jury’s damages award as to Altogether, this results in a range of the infringement trademark on ground cost of corrective advertising of between that Health-Chem has not demonstrated $75,000 $120,000. and We therefore con- mark, value its made use of its clude that there was more than sufficient mark, spent any money or on corrective in evidence the record jury for a to find advertising. Act, “Under the Lanham that corrective advertising was necessary damages for infringement may trademark $25,000 and to award at least on that basis. (1) (2) include profits, any defendant’s (3) by plaintiff, sustained if case, Even this were not the as with Inns, of the cost action.” Ramada million verdict for breach of con- Co., tract, Inc. v. Gadsden Motel 804 F.2d the verdict form contained no inter- (11th Cir.1986) (citing 15 rogatories U.S.C. to indicate how jury calcu- 1117). Further, § the Lanham Act con lated its damages award for trademark upon fers district courts “wide discretion infringement. However, our review of the in determining just recovery amount of record reveals evidence of alternative bas- infringement.” trademark Id. at 1564- es for an award. In addition to the evi- Unlike the case of prof future lost dence and provided estimates for correc- by contract, its caused breach of “Lanham tive advertising, there was testimony also damages may Act be awarded even when regarding damage to repu- Health-Chem’s they susceptible precise are not calcula goodwill. tation and Brody testified that tions.” Finally, Id. at 1565. as the some of larger Health-Chem’s customers instructed, was “damages expressed sustained had trepidation possi- about the plaintiff’ include “all injury bility elements of of a continued relationship between the business of the prox trademark owner Health-Chem and Aronowitz because of imately resulting from the his association infringer’s with a failed business. This wrongful testimony acts” such as the costs of could figured correc have into the advertising injury tive or repu to business consideration of the in- goodwill. given tation or struction it Id. at which called 1564-65. any injury assessment of or loss to Brody testified that engen- confusion reputation, goodwill, Health-Chem’s gen- dered among Aronowitz’s website sales,. eral reputation, business decep- or Health-Chem’s customers and potential customers, tion of as well as corrective concern, employees caused which cost advertising. Health-Chem both money time and to ex- The plain away this case only on an individual awarded basis. He small explained percentage $120,000 specific up several corrective ac- requested by tions that could be used to connection address the problem infringement with its trademark generally. Based claim. personal on his We find experience with sufficient evidence in the Health-Chem and record to Hereon Laboratories, support this one of award for corrective Health-Chem’s manu- advertis- ing or facturing subsidiaries, damages. other he offered estimates of each cost such action: devel- B. Injunction Against Permanent Use of oping a corrective website would cost be- “Health-Chem” Mark $10,000 $25,000; tween running ads in publications trade would cost Finally, between in connection with the $15,000 $20,000; attending claim, two or trademark infringement ordered.” Fed. has otherwise late court the permanent the breadth
challenges 50(c)(1). We review court as Proc. by the district R. Civ. injunction imposed to Rule 59 Judgment. pursuant We Final of a new trial grant of its Amended part injunc- City permanent Williams the issuance of of discretion. review for abuse *13 (11th v. 964, Valdosta, discretion. Simmons for abuse of F.2d 974 Cir. tions 689 of Cir.1996). (11th 1080, 1085 Conger, 1982). 86 F.3d abuse of discretion review for Our in- permanent may grant courts Federal the basis” rigorous when is “more is to infringement found where junctions the evidence. Id. weight the of grant was further prevent in order to have occurred of in the context As we discussed mark, injunc- and such a infringing use of law, courts are a matter of judgments as the for- keep to designed should be tions the evidence reweigh free to generally “not away” from “a safe distance infringers mer merely be jury the verdict aside set Howard See Johnson protected the mark. drawn different the could have cause (11th 1512, Khimani, 1517 F.2d v. 892 Co. or because or conclusions inferences Cir.1990). are more that other results judges feel Here, however, an unusual situ- we have v. Illinois Cent. Narcisse reasonable.” part of mark at issue is ation in which the Cir.1980). (5th 544, R.R., F.2d 548 620 Gulf a to has license mark a which Aronowitz is error as Accordingly, when there famil- find that the Consequently, we use. a rendered the has damages, but any other language “or boilerplate iar liability, appropri the ruling as to proper trademark” similar to Defendant’s marks the case to the remedy is to remand ate in- makes the district court used the remittitur, see, e.g. either court for district in case. broad this inappropriately junction Industries, Inc., v. Manhattan Goldstein the Accordingly, we vacate R4-155 at 2. (11th Cir.1985), or for 1448 758 F.2d injunction as issued. permanent exclusively to the amount of trial as a new Scrap e.g. see Parker Metal damages, a New Trial C. Conditional Grant of (11th Processors, Inc., 993, 1018 386 F.3d the dis Now, reverse we because Cir.2004) (reversing jury award excessive as matter of a grant trict court’s solely as to remanding for trial new million jury’s replacing of law Private also Overseas Inv. See damages). damages, nominal with in$1 verdict 47 County, Metro. Dade F.3d Corp. v. insuffi million verdict still find the $2.6 Cir.1995) (“Because (11th reinstated, to be ciently legally supported clearly properly and liability issues were the claim for of how come to issue we remedy in this jury, decided ought to be the 2003 contract breach remand case to dis is to instance court The district upon remand. resolved amount of a new on the trict trial court a motion for new granted Health-Chem’s only.”). damages in case we reversed in alternative trial of law. judgments as matter either of its conditionally Here, the district court grant but re challenges this in with the a new trial connection granted only. a new trial as quests breach claim because 2003 contract jury’s verdict the amount of the found Proce Rule of Civil Federal overwhelming weight “against be may court that a district provides dure 59 (1) the was in that evidence the evidence” part of the “on all or grant a new trial causal connection support insufficient 59(a). Rule 50 Fed. R. Proc. issues.” Civ. breach Health-Chem’s in the between granted trial that a new provides royal- lost and Aronowitz’s appel- unless the contract proceed “shall alternative ties, yardstick given CUDAHY, “no was to the Judge, Senior Circuit jury that could be used to determine [Aro- concurring part dissenting part: damages] nowitz’s with reasonable certain- agree I that the 2002 Contract sup- ty ... because offered insuffi- [Aronowitz] planted by the 2003 Contract and that potential cient evidence of [his] costs.” obligations Health-Chem’s financial under However, at R4-154 the district court agreement former were “terminated” declined to disturb the verdict as to when agreement the new took effect. liability underlying on the claim for There is no doubt both wanted rigorous breach. Our review of the record to get they perceived out of what to be a support evidence reveals no bad deal. I write separately, however, to abuse of discretion. Accordingly, we af- *14 clarify a I matter do not believe that the firm grant the district court’s alternative panel opinion squarely addresses: What of a new trial as to the remaining sole happens obligations to direct between the unresolved issue of in connection contracting parties resulted from with breach of the 2003 contract. completed transactions while the 2002 Contract
III. CONCLUSION effect and there was no 2003 Contract? As question this arises appeals the district court’s here, what is the status of debts already granting judgment order aas matter of by owed to Aronowitz Health-Chem and law in of favor Health-Chem as to breach recorded in the books? contract, reducing of the 2002 damages as $1, to breach of the 2003 contract to The panel opinion deals clearly with this upholding verdict as to the question insofar as it obligations involves infringement trademark claim against him. parties: third Goods or services deliv- Because we find no error the district ered before the date of the 2003 Contract court’s conclusion that the 2003 contract obligation Health-Chem, are be the constituted a novation of the 2002 Con- goods while or services delivered after the tract, thereby eliminating any possible 2003 Contract are obligation to be the breach, claim for we judg- AFFIRM the recipient. But panel opinion may ment as a matter of law as to breach interpreted be to assume that the 2003 2002 contract. Because we find the $2.6 Contract cancels and extinguishes even be, million award in part, in- past debts between the not involv- sufficiently legally supported by the evi- ing third parties. opinion The leans heavi- dence, we REVERSE the judgment as a ly on a clause from the 2003 Contract that matter reducing of law the award from states that it “terminates all financial obli- $1, million to and REMAND A FOR gations” Aronowitz, of Health-Chem to NEW TRIAL AS TO DAMAGES as to but in meaning context the of this lan- breach of the 2003 contract. Because we guage is far from self-evident. I do not find that the record contains sufficient evi- believe that concept of “terminating” a dence for a reasonable to conclude necessarily contract implies the cancella- that Health-Chem demonstrated both re- tion of already debts on the books. It is quirements infringement for trademark certainly a stretch to language make that $25,000 and to award in damages, AF- we royalties also mean that all FIRM the district court’s denial of Aro- Health-Chem owed Aronowitz under the nowitz’s motion for aas matter forgiven contract are Finally, of law. need not be perma- we VACATE the injunction paid. nent issued That language the district court is the kind of I would inappropriately because it is expect debts, broad. concluding see before Scheerer, a.k.a. Germar The trans- Germar owed, forgiven. are now once Petitioner, Rudolf, history; they are are question actions unless a new deal not to be undone to do language purporting explicit there is General, Respondent. Attorney U.S. so. 06-14192, Nos. 06-15971. prescriptions generally Contracts are how I future, That is past. not the Appeals, States Court United I the 2008 Contract. interpret would Circuit. Eleventh “termination” of the that the effect think Jan. make obligation to to end the language is fact, this is what In payments. further speci- They expressly
parties stipulated. of the 2003 language opening
fied in the agreement that the intent
Contract Diag- funding” of the
was to “cease further of intent This statement
nostics Division. *15 the “ter- interpretation guide our
should fact, In Health-Chem
mination” clause. litigation throughout
actually conceded money under
that it still owed of his prior for the use
the 2002 Contract did not claim
patents. simply extinguished;
this debt had been I much was owed. about how
disagreed debts nothing suggest such
see by the 2003 Contract.
have been cancelled district
Accordingly, would reverse the I to the 2002 respect with
court’s all other of contract claims
beach panel. join opinion I
respects Petitioner, SCHEERER,
Germar GENERAL, Michael
U.S. ATTORNEY DHS, Secretary
Chertoff, in his Respondent. capacity,
official