Eastern Property Development LLC et al v. Gill

Filing 139

ORDER denying 118 Motion for Attorney Fees; denying 122 Motion for Remittitur. Ordered by Judge Clay D. Land on 12/12/2012. (CGC)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF GEORGIA
COLUMBUS DIVISION
EASTERN PROPERTY DEVELOPMENT,
LLC and SOUTH EAST ENTERPRISE
GROUP, LLC,

*
*

Plaintiffs,

*
CASE NO. 4:11-CV-62 (CDL)

vs.

*

LOREN GILL,

*

Defendant.

*
O R D E R

The jury returned a verdict in favor of Plaintiffs Eastern
Property Development, LLC and South East Enterprise Group, LLC
(“Plaintiffs”)
Plaintiffs’

and

against

trespass,

Defendant

conversion,

Loren
and

Gill

(“Gill”)

interference

on

with

contractual relations claims, awarding Plaintiffs $35,335.98 in
compensatory damages and $250,000.00 in punitive damages.

Gill

contends that the punitive damages award was unconstitutionally
excessive and has filed a motion to reduce it to match the
compensatory damages award (ECF No. 122).

For the reasons set

forth below, the motion is denied.
Also pending before the Court is Plaintiffs’ Motion for
Attorneys’ Fees under § 35 of the Lanham Act, 15 U.S.C. § 1117
(ECF No. 118).
interference

In addition to their trespass, conversion, and

with

contractual

relations

claims,

Plaintiffs

pursued a trade name infringement claim under § 43 of the Lanham
Act,

15 U.S.C. §

Plaintiffs

1125.

failed

to

The
prove

Court

previously

found

that

on

trade

name

damages

their

infringement claim, and the Court declined to submit that issue
to the jury.

The Court noted, however, that it would determine

after trial whether Plaintiffs are entitled to attorneys’ fees
on their trade name infringement claim.

As discussed below,

Plaintiffs’ motion for attorneys’ fees is denied.
I.

Gill’s Motion for Remittitur of Punitive Damages Award
The jury’s punitive damages award of $250,000.00 is roughly

seven times the compensatory damages award of $35,335.98.

It is

beyond dispute that “‘[p]unitive damages may properly be imposed
to further a State’s legitimate interests in punishing unlawful
conduct and deterring its repetition.’”
Cont’l Carbon Inc., 481 F.3d

Action Marine, Inc. v.

1302, 1317-18 (11th Cir. 2007)

(quoting BMW of N. Am., Inc. v. Gore, 517 U.S. 559, 568 (1996)).
However, it is equally clear that “[t]he Due Process Clause of
the

Fourteenth

Amendment

prohibits

the

imposition

excessive or arbitrary punishments on a tortfeasor.”
Mut.

Auto.

Ins.

Co.

v.

Campbell,

538

U.S.

408,

of

grossly

State Farm
416

(2003).

Defendants’ motion requires the Court to determine whether the
award in this case is so excessive or arbitrary that it cannot
pass constitutional muster.

2

Having conducted the trial in this action, the Court cannot
conclude from the evidence presented that the punitive damages
award is grossly excessive in relation to the state’s legitimate
interest in punishing the conduct engaged in by the Defendant
and deterring similar conduct.

The Court also cannot conclude

that the punitive damages award is so disproportionate to the
amount

of

reduced.

compensatory

damages

recovered

that

it

must

be

The evidence presented at trial supports the jury’s

conclusion that Gill’s conduct was sufficiently reprehensible to
warrant the imposition of $250,000 in punitive damages.

The

Court acknowledges that the 7-to-1 ratio awarded by the jury is
higher

than

the

4-to-1

ratio

that

has

been

endorsed

by

the

Supreme Court, see Campbell, 538 U.S. at 425; however, the Court
also understands that an evaluation of the excessiveness of a
punitive

damages

award

cannot

be

“reduced

to

a

simple

mathematical formula,” Action Marine, 481 F.3d at 1321 (internal
quotation marks omitted).

The evidence in this case supported a

finding by the jury that Gill busted into Plaintiffs’ offices,
took

over

their

operations,

disrupted

interfered with their employees
provable

monetary

damages

their

and tenants.

ultimately

suffered

business,

and

The amount of
by

understates the egregiousness of Defendant’s conduct.

Plaintiffs
Moreover,

due to the fact that the Court issued a preliminary injunction
preventing further similar conduct during the pendency of the

3

action,

Plaintiffs’

compensatory

damages

were

mitigated

notwithstanding the fact that Gill violated that injunction on
one occasion.

The evidence presented at trial supported the

punitive damages award, and under the specific circumstances of
this

case,

the

Court

cannot

conclude

that

the

excessive to the point of being unconstitutional.

award

was

To reduce the

award would be tantamount to an arbitrary substitution of this
Court’s judgment for the collective wisdom of Plaintiffs’ peers
who sat on his jury.

While the Court has the obligation to

conduct an independent review of the constitutionality of the
award, the Court is not authorized to reduce it arbitrarily.
Based on the Court’s review, Gill’s motion for remittitur must
be denied.
II.

Plaintiffs’ Motion for Attorneys’ Fees
Plaintiffs seek attorneys fees based on their claim that

Gill infringed their trade name, South East Enterprise Group,
LLC, in violation of § 43(a) of the Lanham Act, 15 U.S.C. §
1125(a).

Specifically,

protected
Group,

interest

LLC,

and

metropolitan

area

in

Plaintiffs
the

that

trade

consumers

associate

that

contend
name
in
name

that

South
the
with

they

East

have

a

Enterprise

Columbus,

Georgia

Plaintiffs’

real

estate rental services.

Plaintiffs further assert that it was

trade

for

name

infringement

Gill

to

form

a

company

called

Southeastern Enterprise Group, LLC, open a bank account in that

4

company’s name, and send correspondence to Plaintiffs’ tenants
instructing them to remit their rent payments to Gill’s newly
formed company.
When Plaintiffs filed this action, they sought, and the
Court

granted,

a

preliminary

injunction

enjoining

Gill

from

“holding himself out as working for, acting for, or speaking on
behalf

of

either

Eastern

Property

Development

or

South

East

Enterprise or any other name that, because of its similarity to
those

two

names,

is

confusingly

similar.”

Preliminary Injunction 2, ECF No. 14.
that

once

the

Court

granted

their

Order

Granting

Plaintiffs acknowledge
motion

for

preliminary

injunction on June 28, 2011, Gill stopped using the name South
Eastern Enterprise Group, LLC.
entitled

to

attorneys’

Plaintiffs contend that they are

fees

for

the

period

before

the

preliminary injunction was entered.
Under
exceptional

§

35(a)

cases

may

of

the

award

Lanham

Act,

reasonable

“[t]he

attorney

court

fees

to

in
the

prevailing party” in an action under § 43(a) of the Lanham Act.
15 U.S.C. § 1117(a) (emphasis added).
further

defined

exceptional,

the

“While Congress has not

legislative

history

of

the

[Lanham] Act suggests that exceptional cases are those where the
infringing party acts in a malicious, fraudulent, deliberate, or
willful manner.

Burger King Corp. v. Pilgrim’s Pride Corp., 15

F.3d

(11th

166,

168

Cir.

1994)

5

(internal

quotation

marks

omitted); accord Lipscher v. LRP Publ’ns, Inc., 266 F.3d 1305,
1320

(2001)

(concluding

that

the

correct

exceptionality is fraud or bad faith).
rise

to

the

level

of

exceptionality,

standard

for

“Although a case may
the

decision

to

grant

attorney fees remains within the discretion of the trial court.”
Burger King Corp., 15 F.3d at 168.
In this case, the record is devoid of sufficient facts for
the Court to conclude that Plaintiffs are the prevailing parties
on their Lanham Act claim.

Plaintiffs acknowledge that their

trade name, South East Enterprise Group, is merely descriptive
and is thus not entitled to trade name protection unless it has
acquired secondary meaning.

See Tana v. Dantanna’s, 611 F.3d

767, 774 (11th Cir. 2010) (discussing requirements for trademark
validity).

“A name has acquired secondary meaning when the

primary significance of the term in the minds of the consuming
public is not the product but the producer.”
quotation
claim

marks

seemed

omitted).

to

be

an

At

trial,

afterthought.

Id. (internal

Plaintiffs’

Lanham

Plaintiffs

Act

failed

to

present sufficient evidence that the name “South East Enterprise
Group” has attained secondary meaning.
not

hold

Enterprise

today

that

Group,

has

Plaintiffs’
not

attained

Although the Court does

trade

name,

secondary

South

meaning

East

and

is

therefore not a protectable trade name, the Court does conclude
that

Plaintiffs

failed

to

meet

6

their

burden

of

establishing

secondary meaning at trial.

Accordingly, the Court finds that

Plaintiffs are not the “prevailing party” within the meaning of
§ 35(a) of the Lanham Act, and Plaintiff’s Motion for Attorneys’
Fees is therefore denied.
CONCLUSION
As discussed above, Gill’s motion to reduce the punitive
damages award (ECF No. 122) is denied, as is Plaintiffs’ Motion
for

Attorneys’

Fees

under

§

15 U.S.C. § 1117 (ECF No. 118).

35

of

the

Lanham

Act,

The Court previously stayed

collection of the judgment pending its ruling on Gill’s motion
to reduce the judgment.

That stay is now lifted.

IT IS SO ORDERED, this 12th day of December, 2012.
S/Clay D. Land
CLAY D. LAND
UNITED STATES DISTRICT JUDGE

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