Stone Brewing Co., LLC v. Molson Coors Brewing Company et al

Filing 716

ORDER On Motions For: (1) Treble Damages (2) Attorney's Fees (3) Disgorgement Of Profits [ECF Nos. 642 , 654 ]. Signed by Judge Roger T. Benitez on 7/29/2022. (ddf)

FILED
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JUL 2 9 2022

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CLERK, U.S. DISTRICT CL\JRT
SOUTHERN DISTRICT OF CALIFORNIA

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BY

:nj.,.....

DEPUTY

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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11 II STONE BREWING CO., LLC,
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Case No.: 3:18-cv-00331-BEN-MDD

ORDER ON MOTIONS FOR:
(1) TREBLE DAMAGES
(2) ATTORNEYS' FEES
(3) DISGORGEMENT OF PROFITS

Plaintiff,

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vs.

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II MILLERCOORS LLC,

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Defendant. I

[ECF Nos. 642, 654]

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I.

Background
Following trial, the jury awarded Stone $56 million after finding MillerCoors

infringed on Stone's STONE trademark. Verdict, ECF No. 625. Before the Court are
Plaintiff Stone Brewing Co. LLC's ("Stone") Motion for Treble Damages, Motion for
Attorney's Fees and Costs, and Motion for Disgorgement of Defendant MillerCoors's
Profits. ECF Nos. 642, 654 Defendant MillerCoors opposes the motions. For the reasons
set forth below, the Court DENIES the motions.

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II.

Legal Standards
A.

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Treble Damages and Disgorgement of Profits

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Under 15 U.S.C. § l l l 7(a), a prevailing party, subject to the principles of equity,
4 II may recover (1) the infringing party's profits, (2) damages sustained by the injured party,

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and (3) the costs of the action. "Principles of equity" as used in §111 7 refers to

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II"fundamental rules that apply more systematically across claims and practice areas," and

II include consideration of the defendant's mental state. Romag Fasteners, Inc. v. Fossil,
8 II Inc., 140 S. Ct. 1492, 2497 (2020). "If the court shall find that the amount of the

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based on profits is either inadequate or excessive the court may in its discretion

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enter judgment for such sum as the court shall find to be just, according to the

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11 circumstances

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II exceeding three times such amount." 15 U.S.C. § l l l 7(a). The increased monetary

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11 award

of the case, for any sum above the amount found as actual damages, not

must have a remedial or compensatory purpose and must not be punitive in nature.

Id.; see also SkyDive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105, 1114 (9th Cir. 2012).

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B.

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Attorney's Fees

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In "exceptional cases," the Court "may award reasonable attorney's fees to the
17 II prevailing party." 15 U.S.C. § 1117(a). Courts examine whether a case is "exceptional"
18 II under a "totality of the circumstances test." SunEarth, Inc., 839 F.3d at 1180 (citing
19 II Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). The Court

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evaluate a "nonexclusive list of factors, including frivolousness, motivation,

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II objective unreasonableness (both in the factual and legal components of the case) and the

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11 deterrence"

need in particular circumstances to advance considerations of compensation and
in exercising its discretion to award fees. Id. (quoting Octane Fitness)

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(internal quotations omitted).

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III.

Analysis

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A.

Treble Damages and Disgorgement of Profits

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As a threshold matter, the Court notes that the jury found MillerCoors did not

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II willfully infringe on Stone's trademark. Verdict, ECF No. 625. While willfulness is no
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1 longer a prerequisite to a court ordering disgorgement of profits (Romag, 140 S. Ct. at
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1497; Harbor Breeze v. Newport Landing Sportfishing, 28 F.4th 35, 38 (9th Cir. 2022)),
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infringer's mental state is a "highly important consideration in determining whether an

4 II award of profits is appropriate." Harbor Breeze, at 38. While not dispositive, the Court
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affords substantial weight to the jury's finding that MillerCoors did not willfully infringe

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on Stone's trademark.

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Coupled with the jury's finding, the Court finds the totality of circumstances do

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support disgorgement of profits in this case, either from before or after the verdict.

Stone argues the jury's verdict is somehow consistent with MillerCoors acting with a

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knowing disregard of Stone's trademark rights. Pl.' s Reply, ECF No. 698 at 9. Even if

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this Court were to split hairs in the way Stone argues, comparing willfulness and

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knowing indifference, the evidence presented does not support this conclusion. The

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jury's finding of infringement, but not willfulness, logically follows the evidence

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presented that while the "Own the Stone" campaign and 2017 Keystone Light refresh

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may have led to a likelihood of consumer confusion, MillerCoors was not attempting to

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use Stone's name to sell its own beer and had a good faith belief that its product was not

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infringing on Stone's "STONE" trademark. This is not deliberate indifference, but rather

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a mistaken belief that it was advertising and selling a non-infringing product.

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Other factors to consider in a disgorgement of profits analysis are deterrence,

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fairness, availability of adequate remedies at law, and irreparable harm. Monster Energy

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Co. v. Integrated Supply Network, LLC, 533 F. Supp. 3d 928, 933-34 (C.D. Cal. 2021).

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All factors favor MillerCoors. The Court agrees with MillerCoors that this is not a

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infringement case where the infringer is selling a counterfeit product or

attempting to pass off its own product as that of another. Any deterrent effect is minimal

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as MillerCoors has already committed to updating the infringing packaging. ECF No.

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652-1. Stone's request for disgorgement of profits is based on speculation from its

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experts that any uptick in Keystone Light sales must have been at the expense of Stone.

28 II Pl.'s Mot, ECF No. 654-1, 23-27. However, the empirical evidence in the form of
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1 II Nielsen data specifically cuts against this. DX6534; 6537; 6575; 8491. While Stone
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allowing MillerCoors to keep these profits would amount to unjust enrichment,

opposite is also true. Stone would be reaping a windfall of sales of Keystone Light

beer that, based on the evidence, never would have gone to Stone. The Court also finds
Stone had an adequate remedy at law in that it presented its lost profits case to the

6 Iljury and the jury was able to take that into consideration in its damages calculation. Any
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one of the above-mentioned factors are not dispositive, but when considered as a whole,
of profits is not supported by the evidence.

The Court also finds the awarded damages should not be trebled. As discussed,

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is not a case where the infringing party acted willfully. Stone argues it suffered

11 II "genuine, intangible harms that could not be calculated or addressed in damages
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II calculations at trial." ECF No. 698 at 14. The Court rejects this rationale in its decision

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II to not award treble damages. Stone had ample opportunity at trial to present its theory of

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II damages to the jury. Having considered the entirety of Stone's case, the jury awarded

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II $56 million. Stone's proffered evidence regarding loss of market share and loss of points

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11 of distribution

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11 causation,

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II losses Stone claims, as well as the Nielsen surveys indicating no Stone-to-Keystone or

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11 Keystone-to-Stone

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II award is appropriate. To the extent, if any, that there is intangible harm, the jury award is

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11 adequate

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II case. Coupled with the lack of willfulness by MillerCoors, this case does not warrant

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II denied.

are correlated with Keystone Light's refresh, but there is scant evidence of

especially in light of the other factors (many more players in the craft beer

market, craft beer's stagnation as a whole) that are much more likely the cause of the

customers. This is not a case where the damages are hard to quantify,

as Stone argues, but rather one where the evidence simply fails to prove a higher damages

compensation for the damages Stone suffered from MillerCoors' actions in this

trebling of damages. Stone's motion for disgorgement of profits and treble damages is

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B.

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Attorneys' Fees

Section 1 l 17(a) provides that "[t]he court in exceptional cases may award

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II reasonable attorney fees to the prevailing party." 15 U.S.C. § l 117(a). Here, Stone is the

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11 prevailing

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II awarded Stone $56 million in damages. This Court also denied MillerCoors's motion for

party. The jury found MillerCoors liable for trademark infringement and

6 I!judgment as a matter of law and motion for entry of judgment on affirmative defenses.
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II ECF No. 710. Even though Stone is the prevailing party in this case, the Court finds

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Even in a case where a non-prevailing party failed to produce any evidence, the

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Circuit has upheld a finding the case was not exceptional and denied attorney's fees

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11 because

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II Information Sciences Corp. v. eBay, Inc., 511 F.3d 966,973 (9th Cir. 2007). Regarding

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II consider, the Court finds MillerCoors's defenses were not frivolous, and the evidence

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11 MillerCoors

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II host of Keystone Light packaging and advertising throughout the existence of Keystone

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11 Beer

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11 products

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II conduct to deter here. MillerCoors believed it was not infringing on Stone's trademark,

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11 presented

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II the jury found to be infringing. ECF No. 653-1. Stone argues that MillerCoors's hiring

awarding attorney fees is not warranted, as this is not an "exceptional case."

it found the case was not frivolous and raised debatable issues. Applied

frivolousness, motivation, and objective unreasonableness factors the Court must

to the jury very likely could have convinced them that trademark infringement

did not occur in this case. The Court previously highlighted the Nielsen reports, but
also presented a variety of evidence including their own confusion survey, a

tending to show prior use, as well as evidence that Stone Brewing Company
were not the target of their refreshed ad campaign for Keystone Light. While

jury ultimately found Stone's evidence more compelling on these fronts, it does not
away from the reasonableness and good faith with which it was presented.
Regarding the need to advance "considerations of compensation and deterrence,"

the Court finds this factor also weighs against awarding attorneys' fees. There is no

its case to the jury, and ultimately lost. Following the verdict, MillerCoors

undertook an extensive rebranding and repackaging of the Keystone Light product that

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premier law firms is somehow evidence of this being an exceptional case. Pl.' s

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ECF No. 699 at 14. This Court is not prepared to find a litigant's selection of law

firm( s) a factor that makes a case exceptional for purposes of attorneys' fees. Stone also
to the "scorched earth" nature ofMillerCoors' litigation strategy, while ignoring

role Stone themselves played in fostering a contentious litigation environment. While

6 11 this case was well litigated by both parties, it certainly was one of the most fiercely
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cases the Court has seen in many years.

But, the Court finds Stone as responsible for this as MillerCoors. For example,
Stone again highlights in its reply that MillerCoors' s late notice of witness Scott Whitley

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II was in bad faith. Id. at 13. But this Court already found that the late disclosure of Mr.

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11 Whitley

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11 notice

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II depose Mr. Whitley. Even after this deposition, Stone moved to exclude his testimony on

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was not in bad faith and the factual circumstances that led to his discovery and

to Stone were justified. ECF No. 533 at 2. The Court then allowed Stone to

basis of late disclosure, despite having ample time to depose and prepare for trial.

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Before the Special Master was appointed in this case to handle jury instructions,

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certain exhibits, and deposition excerpts, Stone previously moved for and was denied a

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Special Master to address certain discovery matters. ECF No. 482. In addressing Stone's

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attempt to relitigate already decided matters, the Court stated:
[T]he Court finds the disputed discovery matters raised by Stone were
previously litigated. See ECF Nos. 250,283,284,360,363,408,409,440. In
the absence of being able to demonstrate an actual need for a special master,
Stone's motion appears to be focused on relitigating discovery matters already
decided. Stone had the chance to seek reconsideration of the initial rulings on
these matters. Appointing a special master now would seem to be opening up
an unorthodox avenue for re-visiting discovery rulings while avoiding the
usual hurdles of untimely reconsideration motions. See Valley Forge
Insurance Co. v. Hartford Iron & Metal, Inc., 2017 WL 365630, at *3 (N.D.
Ind. Jan. 25, 2017). Here, discovery has been closed for two years and the
parties are preparing for a trial that commences in just over six weeks.

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11/d. at 3. If Stone wants to spend time relitigating matters this Court has already decided,

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falls on Stone. It does not make this case "exceptional," and the costs should not fall

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1 11 on MillerCoors. Based on the totality of the circumstances, this Court does not find this
2 11 to be an exceptional case that warrants awarding attorneys' fees to the prevailing party.
3 Accordingly, Stone's motion for attorneys' fees is denied.
4 IV.

Conclusion

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For the reasons set forth above, Plaintiffs Motions for Disgorgement of Profits,

6 Trebling of Damages, and Attorneys' Fees are denied.
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IT IS SO ORDERED.

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9 IIDATED: July 29, 2022
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1;1o'NJ(o<fER T. BENITEZ

/Jnited States District Judge

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3:18-cv-00331-BEN-MDD