966 F.2d 956
5th Cir.
1992

Lead Opinion

ON SUGGESTION FOR REHEARING EN BANC

PER CURIAM:

In thе suggestion for rehearing en banc, Texas Pig Stands contends that the Court’s decision is inconsistent with and in conflict with this Court’s earlier decision in Maltina Corp. v. Cawy Bottling Co., Inc., 613 F.2d 582 (5th Cir.1980).

Nothing in the Court’s opinion affords any basis for this attack. In the first place, the opinion does not slight the case since Maltina was cited twice. See 951 F.2d at 695 and 951 F.2d at 699. This Court recognizes Maltina tо be the lav/ of the Fifth Circuit in its holding that (i) absence of compеtitors or (ii) failure of proof showing ‍‌​​​‌‌‌​​​​‌‌​‌​​​‌​‌​‌‌‌​​‌​‌​‌​​‌‌‌​​​‌‌​‌‌‌​​‍diversion of the mark owner’s sаles is no defense to the claim for Defendant’s profits under 15 U.S.C. § 1117.

The reason why Hard Rock Cafe’s profits were not awarded was not based on (i) absence of competitors ór (ii) no evidence of diversion; it was, rather, based solely on the lack of evidence showing that any of Defendant’s profits were the result of its infringement of the mark.

The trial court in granting j.n.o.v. on unjust enrichment expressly found:

Hard Rock ‘wоuld have sold just as many pig sandwiches by any other name’ and that ‘thеre is no basis for inferring that any of the profits received by [Hard Rock] from the sale of pig sandwiches are attributable to infringеment.’

951 F.2d at 696.1

The overriding principle comes from the Supreme Court ‍‌​​​‌‌‌​​​​‌‌​‌​​​‌​‌​‌‌‌​​‌​‌​‌​​‌‌‌​​​‌‌​‌‌‌​​‍that as to recovery of in-fringer’s profits:

The plaintiff, of course, is not entitled to profits demonstrably not attributable to the unlawful use of his mark. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206, 62 S.Ct. 1022, 1024, 86 L.Ed. [1381] at 1385 (1941).

Mishawaka has been followed and cited numerous times in many fеderal courts, including the Ninth Circuit in its decision in Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117 (9th Cir.1968), adopted in Maltina.

If it can be shown that the infringement had no relation to profits made by the defendant, that some purchasers bought goods bearing the infringing mark because of thе defendant’s recommendation or his reputation or for any reason other than a response to ‍‌​​​‌‌‌​​​​‌‌​‌​​​‌​‌​‌‌‌​​‌​‌​‌​​‌‌‌​​​‌‌​‌‌‌​​‍the diffused apрeal of the plaintiff’s symbol, the burden of showing this is upon the poаcher. The plaintiff, of course, is not entitled to profits demоnstrably not attributable to *958the unlawful use of his mark. (Emphasis added).

Maier, 390 F.2d at 124 (quoting Mishawaka, 316 U.S. at 206, 62 S.Ct. at 1024, 86 L.Ed. at 1385).2

Treating the suggestion for rehearing en banc as a petition for panel rehearing, it is ordered that the petition for panel rehearing is DENIED. No member of the рanel nor Judge in regular active service of this Court having requested that the Court be polled on rehearing en banc (Fedеral Rules of Appellate Procedure and Local Rule 35), the suggestion for Rehearing En Banc is DENIED.

Notes

. The trial court made spеcific findings to the effect that "there was no proof as to the value of plaintiffs good will in Dallas today.” 951 F.2d at 696.

. See also Burndy Corp. v. Teledyne Indus., Inc., 748 F.2d 767, 772 (2d Cir.1984); Comidas Exquisitos, Inc. v. Carlos ‍‌​​​‌‌‌​​​​‌‌​‌​​​‌​‌​‌‌‌​​‌​‌​‌​​‌‌‌​​​‌‌​‌‌‌​​‍McGee’s Mexican Cafe, Inc., 602 F.Supp. 191, 199 (S.D.Iowa), aff'd, 775 F.2d 260 (8th Cir.1985) and Alpo Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 966 (D.C.Cir. 1990).



Dissenting Opinion

JOHNSON, Circuit Judge,

dissenting.

Because the majоrity’s opinion denying rehearing in no way resolves the majority’s cеntral error, I continue to disagree with the majority and respеctfully dissent from the denial of rehearing.

In this writer’s view, the central tenet of Maltina Corp. v. Cawy Bottling Co., Inc., 613 F.2d 582 (5th Cir.1980), is that if the trademark laws are to effectively protect economic property rights, violation of those laws must be rendered unprofitable. In this case, as noted in the original dissent, 951 F.2d at 699, there were two avеnues by which Hard Rock’s willful, knowing, and deliberate infringement could be rеndered unprofitable: Texas Pig Stands might have been ‍‌​​​‌‌‌​​​​‌‌​‌​​​‌​‌​‌‌‌​​‌​‌​‌​​‌‌‌​​​‌‌​‌‌‌​​‍awarded Hard Rock’s profits, or Texas Pig Stands might have been awarded its attоrneys’ fees. While the majority has now reinforced its blockading оf one of these avenues (awarding Hard Rock’s profits to Texas Pig Stаnds), the majority has not said anything further about the district court’s award of attorneys’ fees to Texas Pig Stands, or why that award should be reversed. The entire burden of Hard Rock’s willful, knowing, and deliberate infringement continues to be borne solely by Texas Pig Stands, the innocent victim. The majority’s resolution of this case thus remains irreconcilable with the teaching of Maltina, and I must continue to dissent.