Idaho Golf Partners, Inc. v. Penninsula Beverage Co. et al

Filing 137

MEMORANDUM DECISION AND ORDER - IT IS HEREBY ORDERED THAT: 1. IGPIs Motion for Judgment as a Matter of Law (Dkt. 122 ) is DENIED. 2. IGPIs Motion for a New Trial (Dkt. 122 ) is GRANTED IN PART and DENIED IN PART. a. The Motion is GRANTED as to Timb erStone Managements trademark dilution claim (Count III) and as to damages on the unfair competition claim (Count II). However, IGPI will have the option of accepting the jurys lump-sum damages award as the measure of damages for unfair competition a nd proceeding to a new trial only on trademark dilution. b. The Motion is otherwise DENIED.3. TimberStone Managements request for enhanced jury damages is DENIED.4. The Court reserves ruling on TimberStone Managements request for attorneys fees and c osts. 5. The Court will enter a separate notice scheduling a status conference for the purpose of choosing a date for the new trial. 6. Each party may, on or before 9/8/2017, submit proposed findings of fact and conclusions of law on the declaratory judgment and injunctive relief issues. 7. The parties shall meet and confer for purposes of drafting mutually agreeable terms for a permanent injunction. Their proposed injunction shall be filed on or before 9/15/2017. If the parties cannot reach agr eement, each party shall file its own proposed injunction. (Case Management deadline set for 9/8/2017 [Reset for 9/15/2017].)Signed by Judge B. Lynn Winmill. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (cjs)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
IDAHO GOLF PARTNERS, INC.,
Case No. 1:14-cv-00233-BLW
Plaintiff,
MEMORANDUM DECISION AND
ORDER

v.
TIMBERSTONE MANAGEMENT, LLC.,
Defendant.
TIMBERSTONE MANAGEMENT, LLC.,
Counterclaimant,
v.
IDAHO GOLF PARTNERS, INC.,
Counterdefendant.

INTRODUCTION
This case concerns a trademark dispute between two golf courses over the use of
the mark “TIMBERSTONE.” Plaintiff-Counterdefendant Idaho Golf Partners, Inc.
(“IGPI”) operates a golf course in Caldwell, Idaho under the assumed business name
“TimberStone Golf Course.” Defendant-Counterclaimant TimberStone Management,
LLC (“TimberStone Management”) operates the “TimberStone Golf Course” in Iron

MEMORANDUM DECISION AND ORDER - 1

Mountain, Michigan. On June 13, 2014, IGPI filed a complaint alleging a claim for
tortious interference with prospective economic advantage, seeking a declaratory
judgment that TimberStone Management does not own an exclusive right to the
TIMBERSTONE mark, and seeking to enjoin TimberStone Management from interfering
with its use of the mark. TimberStone Management asserted counterclaims for trademark
infringement (15 U.S.C. § 1114), unfair competition and false designation of origin (15
U.S.C. § 1125(a)), trademark dilution (15 U.S.C. § 1125(c)), and cybersquatting (15
U.S.C. § 1125(d)).
Trial in this case took place from September 26 to September 30, 2016 on
TimberStone Management’s counterclaims. The parties’ claims for injunctive and
declaratory relief were reserved for the Court. The jury returned a verdict for
TimberStone Management on its counterclaims for trademark dilution and unfair
competition and false designation of origin, and awarded $9,808 in damages against
IGPI. Additionally, the jury found that IGPI acted willfully, maliciously, or fraudulently.
The jury found no trademark infringement or cybersquatting by IGPI.
Both parties filed omnibus post-trial briefs, addressing their equitable claims and
post-trial motions Dkts. 122, 123. These include (1) IGPI’s motion for judgment as a
matter of law, or alternatively for a new trial, on the trademark dilution and unfair
competition and false designation of origin counterclaims; (2) IGPI’s request for a
declaratory judgment; (3) TimberStone Management’s motion to enhance the jury’s
damages award; (4) TimberStone Management’s motion for attorneys’ fees and costs; (5)

MEMORANDUM DECISION AND ORDER - 2

TimberStone Management’s motion for a permanent injunction.
A hearing was held on the post-trial motions on November 30, 2016. At the
conclusion of that hearing, the Court requested supplemental briefing on the following
issues: (1) whether the Court can consider an issue not specifically raised in a Rule 50(a)
motion, but later presented in a Rule 50(b) motion, in order to avoid plain error; (2)
whether a statutory or common law “good faith remote use” defense applies to an unfair
competition claim under 15 U.S.C. § 1125(a); (3) whether, even if applicable, a prior use
defense on the unfair competition claim was waived when IGPI failed to ask for an
instruction on that defense; and (4) whether the Ninth Circuit has held in any post-2006
case that “fame” may exist in niche market.
This memorandum opinion and order addresses the parties’ post-trial motions. The
Court will issue a separate decision addressing their requests for equitable relief.
LEGAL STANDARD
A.

Rule 50 – Motion for Judgment as a Matter of Law

Federal Rule of Civil Procedure 50 governs a request for a judgment as a matter of
law. Under Rule 50(a), a party must first move for judgment as a matter of law before the
case is submitted to the jury and “specify . . . the law and facts that entitle the movant to
the judgment.” Fed. R. Civ. P. 50(a)(2). Under Rule 50(b), if the court denies the preverdict motion, “the movant may file a renewed motion for judgment as a matter of law
and may include an alternative or joint request for a new trial under Rule 59.” Fed. R.
Civ. P. 50(b). The failure to make a Rule 50(a) motion before the case is submitted to the

MEMORANDUM DECISION AND ORDER - 3

jury forecloses the possibility of the Court later considering a Rule 50(b) motion. Tortu v.
Las Vegas Metropolitan Police Dep’t., 556 F.3d 1075, 1083 (9th Cir. 2009).
Furthermore, “[a] post-trial motion for judgment can be granted only on grounds
advanced in the pre-verdict motion.” Fed. R. Civ. P. 50(b), 1991 advisory committee
notes.
A court may grant a Rule 50 motion for judgment as a matter of law only if “there
is no legally sufficient basis for a reasonable jury to find for that party on that issue.”
Krechman v. County of Riverside, 723 F.3d 1104, 1109 (9th Cir. 2013) (citing Jorgensen
v. Cassiday, 320 F.3d 906, 917 (9th Cir. 2003) (quoting Reeves v. Sanderson Plumbing
Prods., Inc., 530 U.S. 133, 149 (2000)). “A jury’s verdict must be upheld if it is
supported by substantial evidence . . . , even if it is also possible to draw a contrary
conclusion from the same evidence.” Wallace v. City of San Diego, 479 F.3d 616, 624
(9th Cir. 2007). “[I]n entertaining a motion for judgment as a matter of law, the court . . .
may not make credibility determinations or weigh the evidence.” Go Daddy Software,
Inc., 581 F.3d at 961 (quoting Reeves, 530 U.S. at 150). Rather, “[t]he evidence must be
viewed in the light most favorable to the nonmoving party, and all reasonable inferences
must be drawn in favor of that party.” Id.
B.

Rule 59 - Motion for New Trial

Federal Rule of Civil Procedure 59(a)(1) states, “A new trial may be granted . . . in
an action in which there has been a trial by jury, for any of the reasons for which new
trials have heretofore been granted in actions at law in the courts of the United States.”

MEMORANDUM DECISION AND ORDER - 4

“Historically recognized grounds include, but are not limited to, claims ‘that the verdict is
against the [clear] weight of the evidence, that the damages are excessive, or that, for
other reasons, the trial was not fair to the party moving.’” Molski v. M.J. Cable, Inc., 481
F.3d 724, 729 (9th Cir. 2007) (quoting Montgomery Ward & Co. v. Duncan, 311 U.S.
243, 251 (1940). Erroneous or inadequate jury instructions are also bases for a new trial.
See Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir. 1990).
A verdict is against the “clear weight of the evidence” when, after giving full
respect to the jury’s findings, the judge “is left with the definite and firm conviction that a
mistake has been committed” by the jury. Landes Const. Co., Inc. v. Royal Bank of
Canada, 833 F.2d 1365, 1371–72 (9th Cir. 1987) (citations omitted). In ruling on a
motion for new trial, “the judge can weigh the evidence and assess the credibility of
witnesses, and need not view the evidence from the perspective most favorable to the
prevailing party.” Air–Sea Forwarders, Inc. v. Air Asia Co., 880 F.2d 176, 190 (9th Cir.
1989) (citations and quotation marks omitted). However, a court should not upset the
verdict “merely because it might have come to a different result from that reached by the
jury.” Roy v. Volkswagen of Am., Inc., 896 F.2d 1174, 1176 (9th Cir. 1990) (quotation
marks and citation omitted).
ANALYSIS
1.

IGPI’s Motion for Judgment as a Matter of Law under Rule 50(b)
At the close of TimberStone Management’s case in chief, IGPI made a Rule 50(a)

motion for judgment as a matter of law. The Court denied the motion and the case was

MEMORANDUM DECISION AND ORDER - 5

submitted to the jury. IGPI now renews its motion for judgment as a matter of law
pursuant to Rule 50(b), asserting that there was insufficient evidence as to: (1)
TimberStone Management’s trademark dilution claim; (2) TimberStone Management’s
unfair competition claim; (3) the jury’s finding that IGPI infringed TimberStone
Management’s marks maliciously, fraudulently, or willfully; (4) actual damages.
A.

Procedural Default

As a threshold matter, TimberStone Management argues that IGPI is procedurally
barred from asserting the first three grounds for its Rule 50(b) motion because IGPI failed
to preserve these arguments. The Court agrees.
Under Rule 50(a), a pre-verdict motion for judgment as a matter of law must
“specify . . . the law and facts that entitle the movant to the judgment.” Fed. R. Civ. P.
50(a)(2). “Because it is a renewed motion, a proper post-verdict Rule 50(b) motion is
limited to the grounds asserted in the pre-deliberation Rule 50(a) motion. Thus, a party
cannot properly raise arguments in its post-trial motion for judgment as a matter of law
under Rule 50(b) that it did not raise in its pre-verdict Rule 50(a) motion.” See E.E.O.C.
v. Go Daddy Software, Inc., 581 F.3d 951, 961 (9th Cir. 2009); see also Exxon Shipping
Co. v. Baker, 554 U.S. 471 (2008); Fed. R. Civ. P. 50(b) Adv. Comm. Notes 2006.1

1

The purpose of this preservation requirement is to protect the Seventh Amendment right to trial
by jury and to provide notice of the alleged deficiencies at a time when the opposing party still has time to
correct them. See Waters v. Young, 100 F.3d 1437, 1441 (9th Cir. 1996) (quoting Fed. R. Civ. P. 50
advisory committee’s note to 1991 amendment). Judge Carnes of the Eleventh Circuit articulated the
purpose of this rule in more colorful terms:
A Rule 50(a) motion must be made . . . on terms sufficient to alert the opposing party and the

MEMORANDUM DECISION AND ORDER - 6

The Ninth Circuit strictly construes this limitation. See Freund v. Nycomed
Amersham, 347 F.3d 752, 761 (9th Cir. 2003) (district court erred in granting JMOL on
punitive damages where defendant failed to raise the argument in its Rule 50(a) motion).
In fact, courts generally require sufficiency-of-the-evidence arguments to be made at the
level of a claim’s specific elements or sub-elements. See id.; accord Gierlinger v.
Gleason, 160 F.3d 858 (2d Cir. 1998) (“The JMOL motion must at least identify the
specific element that the defendant contends is insufficiently supported. A generalized
challenge is inadequate.”) (internal quotations and citations omitted).
Applying this standard here, the Court determines that IGPI failed to preserve the
sufficiency of the evidence challenges on the trademark dilution and unfair competition
claims. Counsel for IGPI made the following oral motion under Rule 50(a) for judgment
as a matter of law at the conclusion of TimberStone Management’s case-in-chief:
I don’t believe TimberStone Management has satisfied its prima facie showing on
the myriad of claims, trademark, infringement, both under the Lanham Act and
common law.
Particularly, though, I guess I would like to talk about two issues, and that is the
cybersquatting. I don’t think there has been any evidence of bad faith in
connection with that. There has been a lot of talk about should have, would have,
could have, mistakes, but nothing that would rise to the level of bad faith.
The other issue is with respect to the intentional interference claim, there is no
evidence of actual damages. And that intentional interference claim is a state-law
claim, and it’s separate and apart from the Lanham Act and statutory damages, and
court of the ground for the motion. Otherwise, a sly movant, discerning a deficiency in his
adversary’s presentation of the evidence, could lie in wait . . . until after a verdict when it would
then be too late for the adversary to correct what might have been a readily fixable omission.
McGinnis v. Am. Home Mortg. Servicing, Inc., 817 F.3d 1241, 1265 (11th Cir. 2016) (J. Carnes,
dissenting).

MEMORANDUM DECISION AND ORDER - 7

disgorgement of profits, those sorts of things. There is simply no evidence of
actual damages being presented to the court that would warrant submitting any
claim with reference to actual damages but particularly that intentional
interference claim, Your Honor. And that’s all. I understand the court’s position.
Partial Transcript for Sept. 30, 2016, at 5:2–21, Dkt. 127. IGPI did not file a brief in
support of its motion. The Court denied the motion and the case was submitted to the
jury.
After a careful review of the transcript, the Court concludes that IGPI’s oral Rule
50(a) motion challenged the sufficiency of the evidence on only two issues: (1) “bad
faith,” an element of TimberStone Management’s cybersquatting claim, and (2) actual
damages. In contrast, IGPI’s Rule 50(b) motion asserts that there was insufficient
evidence on the following issues: (1) “famousness” of TimberStone Management’s mark,
an element of the trademark dilution claim; (2) “likelihood of confusion,” an element of
the unfair competition claim; (3) fraud, malice, and willfulness; and (4) actual damages.
Of these, the only argument expressly raised in the pre-verdict motion was evidence of
actual damages.
IGPI contends that the remaining arguments were adequately preserved for three
reasons. First, the opening line of its oral pre-verdict motion presented a comprehensive
sufficiency-of-the-evidence challenge to the “myriad of [Defendant’s] claims.” Second,
IGPI notes that the Court had previously stated its intention to deny the motion. Finally,
TimberStone Management and Court were aware of IGPI’s more specific grounds for the
Rule 50 motion, due to off-the-record discussions and the fact that “Plaintiff has
consistently and repeatedly, throughout this litigation raised the same exact arguments as
MEMORANDUM DECISION AND ORDER - 8

to the sufficiency of Defendant’s evidence.”
The Court is not persuaded by these arguments. First, the opening line of IGPI’s
motion—“I don’t believe TimberStone Management has satisfied its prima facie showing
on the myriad of claims”—falls far short of the specificity required by Rule 50. See Fed.
R. Civ. P. 50(a)(2) (a Rule 50(a) motion “must specify . . . the law and facts that entitle
the movant to the judgment.”). Courts have stressed that a pre-verdict motion must bring
into focus the precise claims that a movant contends are insufficiently supported; a
generalized challenge as to “the myriad of claims” fails to do so. Permitting this sort of
all-encompassing motion would eviscerate the preservation requirement.
As for the second argument, the failure to comply with Rule 50(b) has on occasion
been excused where a district court prevents or discourages a party from fully presenting
its pre-verdict motion. For example, in Reeves v. Teuscher, 881 F.2d 1495 (9th Cir.
1989), the Ninth Circuit excused technical noncompliance with Rule 50, where the
district court interrupted defense counsel’s attempt to move for a directed verdict at the
close of evidence and instructed counsel to move after the verdict—which he did.
Similarly, in Motorola, Inc. v. Interdigital Tech. Corp., 930 F. Supp. 952, 961 (D. Del.
1996), rev’d in part on other grounds, 121 F.3d 1461 (Fed. Cir. 1997), the district court
had “made clear that it did not require or desire additional argument at the time the [Rule
50(a)] motion was made” and therefore concluded that “it would be unfair to penalize
ITC for acceding to the Court’s wishes.” In contrast here, the Court prompted IGPI to
make its Rule 50(a) motion on the record before the case was submitted to the jury. It did

MEMORANDUM DECISION AND ORDER - 9

not request or encourage a merely perfunctory argument. See Partial Transcript for Sept.
30, 2016, at 4:8. Counsel’s knowledge that the motion would likely be denied did not
excuse his obligation to carefully preserve IGPI’s arguments.
Finally, the Court finds no support for the notion that off-the-record discussions
may fulfill the preservation obligations under Rule 50. Ultimately, “[a] lawyer has a duty
to preserve issues on the record for his client.” Belk, Inc. v. Meyer Corp., U.S., 679 F.3d
146, 159–60 (4th Cir. 2012). Counsel for IGPI failed to do so here. The Court also
advised counsel for IGPI that any arguments made at the jury instruction conference
should be restated on the record in a proper Rule 50(a) motion, and provided time for
IGPI to do so. Counsel took this opportunity to challenge the sufficiency of the evidence
on two specific claims, giving the impression that IGPI did not intend to pursue
arguments about unproven elements of other claims. Even if IGPI had previously
maintained that evidence of fame, likelihood of confusion, and fraud, malice, and
willfulness was lacking, these arguments were abandoned.
Accordingly, the Court concludes that IGPI is procedurally barred from obtaining
judgment as a matter of law, except on the sufficiency of the evidence of damages. The
Court takes up this argument below in the comprehensive discussion on damages.
2.

IGPI’s Motion for New Trial under Rule 59
As an alternative to its request for judgment as a matter of law, IGPI requests a

new trial on grounds that the jury verdict was against the weight of the evidence. The
Court will grant the motion for a new trial as to the trademark dilution claim and

MEMORANDUM DECISION AND ORDER - 10

otherwise deny the motion.
A.

Trademark Dilution

To prevail on a claim for trademark dilution under the Trademark Dilution
Revision Act (“TDRA”) of 2006, 15 U.S.C. § 1125(c), a party must show that its mark is
“famous,” meaning that “it is widely recognized by the general consuming public of the
United States as a designation of source of the goods or services of the mark’s owner.” 15
U.S.C. § 1125(c)(2)(A). “It is well-established that dilution fame is difficult to prove.”
Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012).
Protection from dilution, as opposed to trademark infringement, is “reserved for a select
class of marks— . . . only those whose mark is a ‘household name.’” Nissan Motor Co. v.
Nissan Computer Corp., 378 F.3d 1002, 1011 (9th Cir. 2004) (quoting Thane Int’l., Inc.
v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002) (“[T]he mark must be a
household name.”); see also H.R. Rep. No. 104–374, at 3 (1995) (listing Dupont, Buick,
and Kodak as examples of eligible “famous marks”).
To determine the requisite degree of fame, the court may consider all relevant
factors, including those four enumerated by statute: (i) the duration, extent, and
geographic reach of advertising and publicity of the mark; (ii) the amount, volume, and
geographic extent of sales of goods or services offered under the mark; (iii) the extent of
actual recognition of the mark; and (iv) whether the mark was registered. 15 U.S.C. §
1125(c).
(1)

Application of Statutory Factors

MEMORANDUM DECISION AND ORDER - 11

Applying this standard here, the Court concludes that TimberStone Management
presented insufficient evidence to support the jury’s finding that the TIMBERSTONE
mark is “famous” within the meaning of the TDRA. As for the first statutory factor,
TimberStone Management’s advertising and promotional efforts were limited in scope.
The company’s own Director of Marketing, Tyler Swanson, described his marketing
budget as “extremely low.” The company’s efforts appear limited to passively
maintaining its website and social media accounts, fairly ubiquitous marketing in today’s
economy. TimberStone Management presented no evidence that it has purchased
advertisements or otherwise promoted its brand. These modest efforts pale in comparison
to the dollars spent advertising truly famous marks, and even those held not famous. See,
e.g., Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004)
(upholding lower court’s finding that a material dispute of fact existed regarding whether
NISSAN was a famous mark, despite evidence of more than $898 million in advertising
expenditures); Jada Toys v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2007) (concluding that
HOT WHEELS was sufficiently famous, where $350 million was spent advertising the
mark); Nike, Inc. v. Nikepal Int’l, Inc., No. 2:05–CV–1468–GEB–JFM, 2007 WL
2782030, at *5–6 (E.D. Cal. Sept. 18, 2007) (NIKE mark was sufficiently famous, where
the company spent in excess of $1 billion on promotion); Bd. of Regents, Univ. of Texas
Sys., 550 F.Supp.2d at 677–78 (W.D. Tex. 2008) (University of Texas longhorn logo was
not famous, despite its promotion at nationally televised football games on ABC and
ESPN, on the cover of Sports Illustrated, on cereal boxes, and on $400 million in UT

MEMORANDUM DECISION AND ORDER - 12

retail products).
As for publicity, the Michigan course has received accolades in publications with
nationwide distribution, such as GolfDigest and Golfweek. It was also featured on
multiple “best of” lists and enjoyed a five-star rating from GolfDigest in 2004 and 2008.
However, these articles were too few to have transformed TIMBERSTONE into a
household name. “Many products receive broad incidental media coverage. Such
promotion does not lead to the conclusion that their trademarks have become a part of the
collective national consciousness.” Thane Int’l Inc. v. Trek Bicycle Corp., 305 F.3d 894,
912 (9th Cir.2002). The impact of such publications is also lessened by the fact that the
TimberStone course of Michigan was almost always listed alongside dozens or even
hundreds of other golf courses achieving similar reviews. See, e.g., Coach Services, Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 1375 (Fed. Cir. 2012) (substantial media
references failed to show widespread recognition of COACH brand where “many of the
references are limited to mentioning one of CSI’s COACH products among other
brands.”).
The amount, volume, and geographic extent of sales provide similarly weak
support for a finding of fame. While TimberStone Management has sold rounds of golf to
customers from almost every state, most came from Michigan and adjacent states. Joe
Rizzo, former Director of Golf at TimberStone Management, testified that these states are
the golf course’s “target area” and that 90-95% of customers drive to the course.
Moreover, TimberStone Management’s sales number only in the tens of thousands, and

MEMORANDUM DECISION AND ORDER - 13

golf is the type of activity that is likely to draw a significant number of repeat customers.
TimberStone Management provided no evidence of the number of unique customers that
had purchased a round of golf from its course. Moreover, its sales volume pales in
comparison to that of truly famous marks. See, e.g., Jada Toys, Inc., 518 F.3d at 635
(three billion units sold supported finding that HOT WHEELS was famous).
Finally, and most importantly, there is no evidence of actual recognition of the
TIMBERSTONE mark in the general public,2such as “press accounts about the
popularity of the brand, or pop-culture references involving the brand[.]” Thane, 305 F.3d
at 912. Survey evidence or market research demonstrating widespread brand awareness,
or the lack thereof, weighs heavily in determining a mark’s fame.3 TimberStone
Management did not submit any such surveys or polls. Even if it had, the leading treatise
on trademark law recommends “that a minimum threshold survey response should be in
the range of 75% of the general consuming public of the United States.” 4 McCarthy on
Trademarks § 24:106 (4th ed.) (footnotes omitted). There is nothing in the record to
suggest that the TIMBERSTONE’s recognition is so pervasive even in the niche golf
market.
As for the final factor, whether the mark was registered, the fact that

2

TimberStone Management presented testimony of one individual, Lisa Largent, who resided
outside Michigan and had golfed its course. However, Ms. Largent is herself an avid golfer and has
family in Michigan. Her knowledge of the course does not establish actual recognition of the
TIMBERSTONE mark among the general consuming public.
3
TimberStone Management cites to several cases assessing the usefulness of survey evidence to
establish “dilution,” a separate element of a trademark dilution claim. See Pl. Br. These cases are entirely
inapposite for the purposes of the “fame” analysis. Survey evidence serves a distinct and critical function
in establishing a mark’s fame.

MEMORANDUM DECISION AND ORDER - 14

TIMBERSTONE is a registered mark does not add meaningfully to its assertion of fame.
As the leading commentator notes, “[o]ne cannot logically infer fame from the fact that a
mark is one of the millions on the federal Register.” 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 24:106, at 24-293 (4th ed.).
For these reasons, the court is firmly convinced that the jury verdict in favor of
TimberStone Management on its trademark dilution claim was against the great weight of
the evidence. The evidence of “fame,” an essential component of trademark dilution, was
simply insufficient to find that the TIMBERSTONE mark is “widely recognized by the
general consuming public of the United States.”
(2)

Niche Fame

TimberStone Management argues that its mark achieved sufficient fame to support
its dilution claim because its mark is famous within the “niche” golfing market. The
Ninth Circuit did endorse a concept of “niche” fame in Thane International, Inc. v. Trek
Bicycle Corporation, 305 F.3d 894 (9th Cir. 2002). However, Thane was decided under
the then-governing FTDA, which contained no requirement of “wide[] recogni[tion] by
the general consuming public.” That language, added in the 2006 amendments to federal
anti-dilution law, clearly precludes recognition in a niche industry, region, or market
segment. See 15 U.S.C. § 1125(c)(2)(A).
In fact, the House Report accompanying the Trademark Dilution Act of 2006
states that the legislation was intended to eliminate the “niche” fame concept adopted in
certain circuits. See House Report on Trademark Dilution Act of 2006, H.R. Rep. 109-23

MEMORANDUM DECISION AND ORDER - 15

at 8 (“[T]he legislation expands the threshold of ‘fame’ and thereby denies protection for
marks that are famous only in ‘niche’ markets.”) (emphasis added); id. at 25 (statement
of the Honorable Howard L. Berman) (“This bill narrows the application of dilution by
tightening the definition of what is necessary to be considered a famous mark. The bill
eliminates fame for a niche market.”) (emphasis added).
TimberStone Management refers the Court to cases it suggests still allow for a
claim of fame in a “niche” industry under the 2006 amendments. These cases either failed
to reach the “fame” issue,4 involved state law dilution claims lacking a “fame”
requirement,5 found sufficient evidence of nationwide fame among the general public,6
or relied exclusively on pre-2006 circuit case law without careful attention to the
legislative change.7 The overwhelming majority of courts have rejected the concept of
“niche” fame since the passage of the 2006 amendments.8 None have concluded that
4

See Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1033–37 (9th Cir. 2007); Zino Davidoff
SA v. CVS Corp., 571 F.3d 238, 247 (2d Cir. 2009).
5
See American Century Proprietary Holdings, Inc. v. American Century Casualty Co., 295 F.
App’x 630, 639 (5th Cir. 2008) (applying the Texas anti-dilution statute, which includes a lesser
requirement of distinctiveness, not fame); Gruma Corp. v. Mexican Rests., Inc., 497 F. App’x 392, 400
(5th Cir. 2012) (same); Russell Rd. Food & Bev., LLC v. Galam, No. 2:13-cv-00776-RFB-NJK, 2016
U.S. Dist. LEXIS 50354, at *39-40 (D. Nev. Apr. 13, 2016) (applying Nevada’s anti-dilution statute)
6
In Gerawan Farming, Inc. v. Prima Bella Produce, Inc., No. CV F 10-0148 LJO, 2011 U.S.
Dist. LEXIS 84776, at *77-79 (E.D. Cal. Aug. 2, 2011), for example, the court determined that there was
sufficient evidence of fame of PRIMA produce to withstand summary judgment, where PRIMA was sold
in major grocery stores, the label was advertised “aggressively” on fruit stickers and packaging, and a
New York fruit buyer testified that customers “ask for the PRIMA brand.”
7
See US Risk Ins. Group, Inc. v. United States Risk Management, LLC, 2013 WL 4504754 (N.D.
Tex. Aug. 20, 2013) (citing a 2001 Fifth Circuit case suggesting the niche fame is sufficient, and
concluding only that a fact issue existed as to fame); Zinn v. Seruga, No. 05-3572 (GEB 2009 WL
3128353, at *29-30 (D.N.J. Sept. 28, 2009) (citing a 2000 Third Circuit opinion suggesting that niche
fame is sufficient).
8
See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1372 (Fed. Cir. 2012)
(TDRA eliminated the possibility of “niche fame” as supporting a dilution claim); Paleteria La

MEMORANDUM DECISION AND ORDER - 16

Thane’s “niche” fame standard survived the change in law. Thus, the Court cannot accept
TimberStone Management’s position that recognition in a niche market will suffice to
establish fame.
(3)

Degree of Recognition Required

TimberStone Management next argues that even if “niche” fame will not suffice, a
mark need not rise to the level of a “household name” to be deemed famous. This
position is untenable, given the Ninth Circuit’s use of that precise language. See Nissan
Motor, 378 F.3d at 1011 (“[T]he FTDA extends dilution protection only to those whose
mark is a ‘household name.’”); Thane International, 305 F.3d at 911 (“[T]he mark must
be a household name.”).
Moreover, the authorities cited by TimberStone Management do not suggest that
the TIMBERSTONE mark enjoys recognition comparable to other marks deemed
famous. Two of the cited cases were resolved without any discussion of fame. See

Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V., 69 F. Supp. 3d 175, 220 (D.D.C. 2014)
(“‘[N]iche fame’ . . . is insufficient as a matter of law to maintain a dilution claim.”); Urban Home, Inc. v.
Cordillera Inv. Co., LLC, No. CV 13-08502 GAF JEMX, 2014 WL 3704031, at *6 (C.D. Cal. June 19,
2014) (“The trademark dilution statute was revised in 2006 to deny protection to marks whose fame
extends only to niche markets”); Leapers, Inc. v. SMTS, LLC d/b/a Tuff Zone, TRARMS, Inc., 2014 U.S.
Dist. LEXIS 140622, *10, 2014 WL 4964376 (E.D. Mich. Oct. 3, 2014) (“‘niche fame’ is insufficient to
obtain protection against trademark dilution.”); adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp.
2d 1029, 1061 n.1 (D. Or. 2008) (“Specific changes to federal dilution law under the TDRA include: . . . a
rejection of dilution claims based on ‘niche’ fame.”); Bd. of Regents, Univ. of Tex. Sys. v. KST Elec., Ltd.,
550 F.Supp.2d 657, 679 (W.D. Tex. 2008) (“One of the major purposes of the TDRA was to restrict
dilution causes of action to those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie
Dolls, and the like.”); Dan–Foam A/S v. Brand Named Beds, LLC, 500 F.Supp.2d 296, 307 n. 90
(S.D.N.Y. 2007) (concluding that the TDRA “was intended to reject dilution claims based on niche fame,
i.e. fame limited to a particular channel of trade, segment of industry or service, or geographic region.”);
see also 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:104.

MEMORANDUM DECISION AND ORDER - 17

Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1033–37 (9th Cir. 2007); Zino
Davidoff SA v. CVS Corp., 571 F.3d 238, 247 (2d Cir. 2009). Two involved state law
dilution claims lacking a “fame” requirement. See American Century Proprietary
Holdings, Inc. v. American Century Casualty Co., 295 F. App’x 630, 639 (5th Cir. 2008)
(applying the Texas anti-dilution statute, which includes a lesser requirement of
“distinctiveness”); Gruma Corp. v. Mexican Rests., Inc., 497 F. App’x 392, 400 (5th Cir.
2012) (same). The final case dealt with a brand with substantially more nationwide fame
than TIMBERSTONE. See Gerawan Farming, Inc. v. Prima Bella Produce, Inc., No. CV
F 10-0148 LJO, 2011 U.S. Dist. LEXIS 84776, at *77-79 (E.D. Cal. Aug. 2, 2011)
(finding sufficient evidence of fame of PRIMA produce to withstand summary judgment,
where PRIMA was sold in major grocery stores, the label was advertised “aggressively”
on fruit stickers and packaging, and a New York fruit buyer testified that customers “ask
for the PRIMA brand.”).
In fact, brands with far greater recognition than TIMBERSTONE are routinely
found to lack sufficient fame to qualify for protection from dilution. See, e.g., Coach
Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012) (COACH
high-end handbags and leather goods); Thane Intern., Inc. v. Trek Bicycle Corp., 305
F.3d 894, 911-912 n.14 (9th Cir. 2002) (TREK bicycles); Maker's Mark Distillery, Inc. v.
Diageo North America, Inc., 703 F. Supp. 2d 671, 698 (W.D. Ky. 2010) (MAKER’S
MARK trade dress of red dripping wax); Blue Man Productions, Inc. v. Tarmann, 75
U.S.P.Q.2d 1811, 2005 WL 2034544 (T.T.A.B. 2005) (BLUE MAN GROUP

MEMORANDUM DECISION AND ORDER - 18

entertainment group); Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 52
U.S.P.Q.2d 1402 (D. Mass. 1999), aff’d, 232 F.3d 1 (1st Cir. 2000) (CLUE board game);
Board of Regents, University of Texas System ex rel. University of Texas at Austin v. KST
Elec., Ltd., 550 F. Supp. 2d 657, 678 (W.D. Tex. 2008) (University of Texas “longhorn”
logo); Advantage Rent-A-Car, Inc. v. Enterprise Rent-A-Car, Co., 238 F.3d 378, 57
U.S.P.Q.2d 1561 (5th Cir. 2001) (WE'LL PICK YOU UP slogan for Enterprise auto
rental)
In sum, the Court concludes that TimberStone Management failed to establish the
high degree of fame demanded for purposes of a trademark dilution claim. To the extent
that the TIMBERSTONE mark has achieved any recognition, it is within the niche
golfing market, rather than the general consuming public. However, niche fame is
insufficient as a matter of law to support a dilution claim. TIMBERSTONE does not
enjoy the status of a household name or “widespread recognition among the general
consuming public.” Given the clear lack of evidence to sustain a finding of “fame,” the
Court concludes that the jury reached a seriously erroneous result in finding for
TimberStone Management on its trademark dilution claim. A new trial on this claim is
warranted.9

9

The Court would observe that upon a retrial, if the evidence of the “famousness” of the
TIMBERSTONE mark is no more compelling that at the first trial, it would be hard-pressed not to grant a
Rule 50(a) Motion for Judgment as a Matter of Law on the trademark dilution claim at the conclusion of
TimberStone Management’s case-in-chief. Indeed, the Court would have granted IGPI’s Rule 50(b)
motion on that issue had it been properly preserved as part of the IGPI’s Rule 50(a) motion.

MEMORANDUM DECISION AND ORDER - 19

B.

Unfair Competition and False Designation of Origin

IGPI also argues that a new trial is required on Count II, Unfair Competition and
False Designation of Origin, 18 U.S.C. § 1125(a), because there was insufficient
evidence to support the jury’s finding of a “likelihood of confusion” and the jury’s
special verdict was irreconcilably inconsistent. The Court disagrees that a new trial is
warranted on this claim.
(1)

Inconsistent Jury Verdict

According to IGPI, the jury could not reasonably have found in favor of
TimberStone Management on the unfair competition claim where it found against
TimberStone Management on its federal and common law trademark infringement
claims, because all three claims involve a likelihood of confusion analysis. Dkt. 122 at
10.
The Supreme Court has held that trial courts have a duty to harmonize seemingly
inconsistent answers to special verdict interrogatories “if it is possible under a fair
reading of them.” Gallick v. Baltimore & Ohio R.R. Co., 372 U.S. 108, 119 (1963). A
court may not order a new trial until it “attempt[s] to reconcile the jury’s findings, by
exegesis if necessary.” Id. “Where there is a view of the case that makes the jury’s
answers to special interrogatories consistent, they must be resolved that way.” Atl. & Gulf
Stevedores, Inc. v. Ellerman Lines, Ltd., 369 U.S. 355, 364 (1962).
Here, Question 1 on the Special Verdict form asked: “Did TimberStone
Management prove each element of its claim for federal trademark infringement by a

MEMORANDUM DECISION AND ORDER - 20

preponderance of the evidence [See Instruction No. 11.0-11.4]?” The jury answered
“NO” and was therefore instructed to skip Question 2 as to whether IGPI proved its
affirmative defense of “continuous prior use.” See Dkt. 117-1 at 2. Question 4 asked the
same regarding TimberStone Management’s common law trademark infringement claim.
The jury answered “NO” to this question as well, and was directed to skip Question 5 as
to the continuous prior use defense. Finally, Question 6 asked whether TimberStone
Management proved its claim of unfair competition and false designation of origin. This
time, the jury answered “YES.”
IGPI contends that the jury’s answers of “NO” to Questions 1 and 4 demonstrate
that TimberStone Management failed to prove the “likelihood of confusion” element of
its prima facie claims for federal and common law trademark infringement. If this were
the case, it would be difficult to reconcile the jury’s finding on Question 6 that
TimberStone Management had proven its claim for unfair competition and false
designation of origin, as this claim also requires a showing of “likelihood of confusion.”
The apparent inconsistency between the jury’s answers to Special Verdict
Questions 1, 4 and 6 can be explained by reviewing the jury instructions for each claim.
Jury Instruction No. 11.0 (Federal Trademark Infringement) directed as follows: “If you
find that Idaho Golf Partners has proven its affirmative defense by a preponderance of the
evidence, then you should find for Idaho Golf Partners on the claim for federal
trademark infringement.” Dkt. 116 (emphasis added). A similar directive is found in
Instruction No. 12.0, on Common Law Trademark Infringement. Id. In contrast, Jury

MEMORANDUM DECISION AND ORDER - 21

Instruction No. 13, on Unfair Competition and False Designation of Origin, establishes
no such prior use defense. Id.
A reasonable juror could have interpreted Instruction Nos. 11.0 and 12.0 as a
directive to incorporate the prior use defense into the answers to Special Verdict
Questions 1 and 4. That is, a reasonable juror might have answered “NO” to Questions 1
and 4 if IGPI established its affirmative prior use defense, even if TimberStone
Management had satisfied all elements of its prima facia claim.
Question 6 is unique in that the jury was not instructed on a prior use defense for
the claim of unfair competition and false designation of origin. With that in mind, the
apparent inconsistency between the answers to Questions 1, 4, and 6 is easily resolved.
Drawing all reasonable inferences in TimberStone Management’s favor, the jury found
that TimberStone Management had established its prima facie case, including “likelihood
of confusion,” on all three claims—federal trademark infringement, common law
trademark infringement, and unfair competition and false designation of origin. However,
the jury found that IGPI had proven its affirmative defense of continuous prior use and
therefore answered “NO” to Questions 1 and 4, even though TimberStone Management
made out its prima facie case. Because the jury was not instructed on a prior use defense
for the unfair competition claim, it answered “YES” to Question 6. Accordingly, the
Court finds that there is no internal conflict in the jury’s verdict.
(2)

Likelihood of Confusion

IGPI also appears to argue that the jury could not have found for TimberStone

MEMORANDUM DECISION AND ORDER - 22

Management on its unfair competition claim because there was insufficient evidence of
any “likelihood of confusion.” See Dkt. 122 at 10. A party claiming unfair competition
must establish that the purported infringer’s use of the mark is likely to cause consumer
confusion. 15 U.S.C. § 1125(a). In determining whether there is likelihood of consumer
confusion, courts within the Ninth Circuit apply an eight-factor test introduced in AMF,
Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir.1979). The Sleekcraft factors
include: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks;
(4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the
degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting
the mark; and (8) likelihood of expansion of the product lines. Id.
Several factors weigh heavily in favor of a “likelihood of confusion” here. First, as
for similarity of the marks, both golf courses utilize the exact same name spelled the
exactly the same way. They also sell identical goods. “Placing an identical mark on
identical goods creates a strong likelihood of confusion.” Stone Creek, Inc. v. Omnia
Italian Design, Inc., 862 F.3d 1131, 1133 (9th Cir. 2017); see also Brookfield Commc’ns,
Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1056 (9th Cir. 1999) (“In light of the
virtual identity of marks, if they were used with identical products or services likelihood
of confusion would follow as a matter of course.”)
Both parties rely heavily on social media and other online marketing to promote
their courses. Finally, TimberStone Management put forth several instances of actual
customer confusion. Multiple TimberStone Management employees testified as to golfers

MEMORANDUM DECISION AND ORDER - 23

calling the wrong course, showing up for a tee time that they mistakenly reserved with
the Idaho course, or posting information about the Idaho course on the Facebook page for
the Michigan course (and vice versa). IGPI employees also testified that at least a dozen
people have called their course trying to reach TimberStone of Michigan.
Having considered all of the factors, the Court concludes that there was sufficient
evidence of “likelihood of confusion” such that the jury’s finding for TimberStone
Management on its unfair competition claim was not against the great weight of the
evidence. IGPI’s motion for a new trial on the unfair competition claim will be denied.
C.

Willfulness Verdict

IGPI also seeks a new trial on the jury’s finding that it infringed TimberStone’s
mark maliciously, fraudulently, or willfully, on two grounds. First, IGPI argues that
because the jury did not find trademark infringement, it could not have found that IGPI
infringed the TIMBERSTONE mark maliciously, fraudulently, or willfully. The Court
disagrees. The jury was instructed: “[i]f you find for TimberStone Management on their
federal or common law trademark infringement, unfair competition and false designation
of origin, or dilution claims, you will also be asked to answer the following question on
the Special Verdict Form: Did TimberStone Management establish by a preponderance of
the evidence that Idaho Golf Partners infringed TimberStone Management’s mark
maliciously, fraudulently, or willfully?” Jury Instructions, No. 17, Dkt. 116. The jury
found for TimberStone Management on two of these claims and thus properly proceeded
to answer the question of willfulness.

MEMORANDUM DECISION AND ORDER - 24

Second, IGPI argues that there was insufficient evidence of maliciousness,
fraudulence, or willfulness. Here too the Court disagrees and finds that the jury did not
act against the weight of the evidence. The jury was instructed, without objection from
either side, that “Idaho Golf Partners acted ‘willfully’ if it knew that it was infringing
TimberStone Management’s trademark or if it acted with indifference to TimberStone
Management’s trademark rights.” See Jury Instructions, No. 17, Dkt. 116. At trial, both
Travis and David Christensen testified that they were not aware of the TimberStone
course in Michigan until TimberStone Management sent the cease and desist letter in
April 2012. However, there is circumstantial evidence from which it may reasonably be
inferred that IGPI learned about the Michigan course prior to the cease and desist letter.
Most notably, Kelly Christensen testified that he found the URL
www.timberstonegolfcourse.com when searching for a domain name on GoDaddy.com.
He claimed that he never followed the link. Kelly Christensen also testified that he never
performed a Google search for the word “TimberStone.” A reasonable jury could have
discredited such testimony and inferred that the Kelly Christensen, the director of
marketing for the Idaho Golf Course, had come across some mention of the TimberStone
course in Michigan. Additionally, the jury could have construed IGPI’s subsequent
failure to investigate TimberStone Management’s rights to the TIMBERSTONE mark as
evidence of indifference to those rights. The Court will therefore deny IGPI’s Motion for
New Trial as to the jury’s finding of willfulness.
The Court feels compelled to add a final observation. The jury was instructed that

MEMORANDUM DECISION AND ORDER - 25

“Idaho Golf Partners acted ‘willfully’ if it knew that it was infringing TimberStone
Management’s trademark or if it acted with indifference to TimberStone Management’s
trademark rights.” See Jury Instructions, No. 17, Dkt. 116. This instruction is a more
lenient standard of willfulness that ordinarily employed in trademark cases. The Ninth
Circuit has stated that “willfulness” should require some proof of the infringer’s intent to
profit from the reputation of the trademark holder. In Lindy Pen Co. v. Bic Pen Corp.,
982 F.2d 1400 (9th Cir. 1993), for example, the Ninth Circuit held that to qualify as
“willful,” the infringement must be “willfully calculated to exploit the advantage of an
established mark.” Id. at 1406 (quoting Bandag, Inc. v. Al Bolser's Tire Stores, 750 F.2d
903, 921 (Fed. Cir. 1984)); see also Spin Master, Ltd. v. Zobmondo Entm't, LLC, 944 F.
Supp. 2d 830, 847 (C.D. Cal. 2012) (“Lindy Pen requires at least a showing of trading on
the mark holder's established name as part of the willfulness required.”) In other words,
mere knowledge of a competing trademark claim will not suffice to establish “willful
infringement.”
Even if the instruction on “willfulness” was erroneous in that respect, it does not
warrant a new trial. IGPI did not contemporaneously object to the instruction, or object to
the instruction in its post-trial briefing, and the error did not affect IGPI’s substantial
rights. The jury’s finding of “willfulness” is merely advisory on this Court in determining
the appropriate award of profits and damages. In reviewing the jury award, the Court will
consider whether IGPI meets the higher standard of willfulness expressed in Lindy Pen,
982 F.2d 1400.

MEMORANDUM DECISION AND ORDER - 26

3.

Damages
The jury returned a verdict for TimberStone Management on its claims for unfair

competition and trademark dilution and issued a lump-sum damages figure of $9,808. In
resolving the pending motions, the Court must consider (1) whether there was sufficient
evidence of damages to support the jury’s verdict; (2) whether it should enhance the
award.
A.

IGPI’s Request for Judgement as a Matter of Law due to Insufficient
Evidence of Actual Damages

IGPI seeks judgment as a matter of law on the issue of damages, arguing that
TimberStone Management presented insufficient evidence as to actual damages and
requests that the jury’s award of actual damages in the amount of $9,808.00 should be
vacated. As stated above, this claim is not procedurally barred as it was properly
preserved in IGPI’s Rule 50(a) motion.
Section 35(a) of the Lanham Act provides for monetary relief for a violation under
sections 1125(a) and (b) or a willful violation under section 1125(c). 15 U.S.C. § 1117. A
jury may award both (1) actual damages sustained by the plaintiff and (2) defendant’s
profits acquired through its infringing use.10 Id. In reviewing a jury’s damages award, the
Court may “accept ‘crude’ measures of damages based upon reasonable inferences so
10

The award of profits functions as a surrogate for actual damages, in recognition of the
difficulty in proving actual diverted sales or injured reputation. See BASF Corp. v. Old World Trading
Co., 41 F.3d 1081, 1096 (7th Cir. 1994) (noting that profits may function as a “proxy for damages”);
George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992) (observing that profits are recognized
as a “rough proxy” for damages, given the difficulty of “isolating the causation behind diverted sales and
injured reputation”).

MEMORANDUM DECISION AND ORDER - 27

long as those inferences are neither “inexorable . . . [nor] fanciful.” See Intel Corp. v.
Terabyte Int'l, Inc., 6 F.3d 614, 621 (9th Cir. 1993).
Here, TimberStone Management presented evidence under both methods: actual
damages—in the form of lost sales, loss of goodwill, and the cost to correct consumer
confusion—and IGPI’s profits. The jury heard evidence regarding TimberStone
Management’s brand recognition and the tarnishing that occurs with being wrongly
associated with a “bargain course.” There was evidence that consumers accidentally
booked tee times at the wrong course, suggesting that TimberStone Management may
have lost potential sales due to customer confusion. Finally, TimberStone Management
presented some testimony about the employee time spent dealing with consumer
confusion and the potential cost of a corrective advertising campaign.
TimberStone Management also put forward evidence to support a profit award.
The Lanham Act provides a relaxed evidentiary burden for establishing profits as a
measure of damages: “In assessing profits the plaintiff shall be required to prove
defendant’s sales only; defendant must prove all elements of cost or deduction claimed.”
15 U.S.C. § 1117. In other words, once the plaintiff establishes the scale of defendant’s
sales bearing the infringing mark, the infringing party has the burden of disproving
economic gain from the unlawful mark. Here, TimberStone Management presented
evidence of IGPI’s revenues over the relevant time period and therefore met its
evidentiary burden to claim profits.
In sum, there was a legally sufficient evidentiary basis for a reasonable jury to

MEMORANDUM DECISION AND ORDER - 28

award TimberStone Management damages, such that judgment as a matter of law in
IGPI’s favor is not warranted.
B.

TimberStone Management’s Request to Enhance Jury Award

The Lanham Act “confers a wide scope of discretion” upon courts to adjust the
amount of recovery awarded by a jury. See Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d
1105, 1113 (9th Cir. 2012). Section 1117(a) provides, in relevant part, that a prevailing
party
shall be entitled, . . . subject to the principles of equity, to recover (1) defendant's
profits [and] (2) any damages sustained by the plaintiff . . . . In assessing damages
the court may enter judgment, according to the circumstances of the case, for any
sum above the amount found as actual damages, not exceeding three times such
amount. If the court shall find that the amount of the recovery based on profits is
either inadequate or excessive the court may in its discretion enter judgment for
such sum as the court shall find to be just, according to the circumstances of the
case. Such sum in either of the above circumstances shall constitute compensation
and not a penalty.
15 U.S.C. § 1117 (emphasis added). Here, TimberStone Management requests that the
Court award both treble damages and a higher measure of IGPI’s profits. The Court
considers each request in turn.
(1)

Increased Profits

As stated above, the Court has discretion to increase a profit award “[i]f the court
shall find . . . the amount of the recovery . . . inadequate.” 15 U.S.C. § 1117(a). In so
doing, the must apply “principles of equity,” id., and ensure that the defendant “not retain
the fruits, if any, of unauthorized trademark use or continue that use [and the] plaintiff is
not . . . [given] a windfall.” Bandag, Inc. v. Al Bolster's Tire Stores, Inc., 750 F.2d 903,

MEMORANDUM DECISION AND ORDER - 29

918 (9th Cir. 1984)). “Awarding profits ‘is proper only where the defendant is attempting
to gain the value of an established name of another.’” Fifty-Six Hope Rd. Music, Ltd. v.
A.V.E.L.A., Inc., 778 F.3d 1059, 1073–74 (9th Cir.), cert. denied, 136 S. Ct. 410, 193 L.
Ed. 2d 317 (2015) (quoting Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th
Cir. 1993).
The evidence presented at trial showed that IGPI made over $3.7 million in gross
revenues from 2011 to 2015 but accrued only $300,000 in profits over that period.
TimberStone Management argues that it is entitled to the entire measure of IGPI’s profits
over the relevant period. However, there is no evidence that such profits were derived
from IGPI’s illegal conduct or, for that matter, that IGPI actually benefitted from its
unlawful conduct. TimberStone Management alludes to IGPI having “profited
handsomely” from its infringement but cites no supporting evidence. There is, for
example, no evidence that IGPI customers purchased rounds of golf in Idaho based on
their belief that the course was affiliated with the TimberStone of Michigan. Moreover, it
strains reason to suggest that a customer might mistakenly golf a round in Idaho while
believing herself to be at the Michigan course.
Finally, while the Court concluded above that there was sufficient evidence to
support the jury’s advisory finding of “willful” infringement, the Court does not agree
that the evidence demonstrated any wrongful intent on the part of IGPI to profit from its
unauthorized trademark use. The jury found that IGPI began using its mark in good
faith—that is, without intent of profiting from the efforts of TimberStone Management

MEMORANDUM DECISION AND ORDER - 30

and without intending or reasonably anticipating confusion. This finding was reasonable,
given the absence of any evidence of bad faith. Moreover, IGPI’s subsequent refusal to
stop using the mark after TimberStone Management’s cease and desist letter was sent
does not, standing alone, support the inference of subsequent bad faith. See Sands, Taylor
& Wood Co. v. Quaker Oats Co., 978 F.2d 947, 962 (7th Cir. 1992); see also Straus v.
Notaseme Hosiery Co., 240 U.S. 179, 181 (1916) (“[T]he defendants’ persistence in their
use of the design after notice proves little or nothing against them.”). Therefore, the Court
finds that IGPI’s actions were not “willfully calculated to exploit the advantage of an
established mark.” Lindy Pen, 982 F.2d at 1406 (citation omitted).
“Awarding profits ‘is proper only where the defendant is attempting to gain the
value of an established name of another.’” Fifty-Six Hope, 778 F.3d at 1073–74 (quoting
Lindy Pen, 982 F.2d at 1406). A careful examination of the record fails to reveal any
evidence as to IGPI’s actual or attempted gain from its infringing activity. Accordingly,
the Court will decline to award profits above any amount that may be encompassed in the
jury’s lump-sum award.
(2)

Treble Damages

Section 1117(a) provides that, “[i]n assessing damages the court may enter
judgment, according to the circumstances of the case, for any sum above the amount
found as actual damages, not exceeding three times such amount.” In a trademark case,
“[t]he district court assesses ‘any damages sustained by the plaintiff’ in the same manner
as in tort damages: the reasonably foreseeable harms caused by the wrong.” Skydive Ariz.,

MEMORANDUM DECISION AND ORDER - 31

Inc., 673 F.3d at 1112 (citation omitted).
Here, TimberStone Management claims actual damages in the form of lost sales,
loss of goodwill, and the cost to correct consumer confusion. The evidence of lost sales
here was minimal, at best. TimberStone Management presented no evidence of diverted
sales. It stands to reason that the course lost sales to confused customers who booked tee
times at the Idaho course. However, TimberStone Management employees testified that
their ordinary practice was to attempt to simply rebook such customers.
TimberStone Management also claims that it has submitted records that “detail the
fact of harm to Defendant’s reputation and goodwill.” Def. Resp. to Pl. Post-Trial Brief at
7, Dkt. 124 (emphasis added). The Court disagrees. TimberStone Management did
present evidence supporting the quality of its course, customer goodwill, and recognition
in the golf industry. TimberStone established instances of actual consumer confusion
between the two courses, largely through misdirected calls and mistaken Facebook
postings. There was also uncorroborated testimony from TimberStone Management
employees of the brand tarnishing that might occur from being associated with the Idaho
course.
However, TimberStone Management made no attempt to establish an actual,
material loss of goodwill from confusion or the scope of any such harm. For example,
there was no evidence that consumers believed the courses were affiliated or thought
worse of the Michigan course after coming across photos or postings about the Idaho
course. Nor does this case fit the paradigm scenario of lost goodwill from customer

MEMORANDUM DECISION AND ORDER - 32

confusion: a confused customer purchasing the infringer’s goods, believing she was
buying the goods of the trademark holder, then associating inferior characteristics of the
former with the latter.
Finally, TimberStone Management presented some evidence as to corrective costs.
James Webster, one of the co-owners of TimberStone Management, testified that his
employees have spent time dealing with consumer confusion. However, there was no
effort made to quantify the amount of employee time or its cost to the business.
Moreover, while James Webster testified that it would cost $30,000 for TimberStone
Management to run one month of corrective advertising in a national golf publication,
such a measure is not reasonably tailored to the scope of confusion established at trial.
In sum, a careful examination of the record fails to reveal any evidence suggesting
that TimberStone Management suffered greater actual harm than what is reflected in the
jury’s award.
The Court must also apply “principles of equity,” in determining whether to award
treble damages. The Third and the Fifth Circuits have identified several equitable factors
to guide this decision, which the Court finds instructive. See Banjo Buddies, Inc. v.
Renosky, 399 F.3d 168, 175 (3d Cir.2005); Quick Techs., Inc. v. Sage Group PLC, 313
F.3d 338, 349 (5th Cir. 2002). These include:
(1) whether the defendant had the intent to confuse or deceive, (2) whether sales
have been diverted, (3) the adequacy of other remedies, (4) any unreasonable
delay by the plaintiff in asserting his rights, (5) the public interest in making the
misconduct unprofitable, and (6) whether it is a case of palming off.
Quick Techs., 313 F.3d at 349 (internal quotation marks omitted).
MEMORANDUM DECISION AND ORDER - 33

Here, most of the factors weigh against trebling the damage award. As for (1) and
(6), the Court found above that IGPI lacked any intent to confuse or deceive customers
and did not attempt pass off its course as one affiliated with TimberStone of Michigan.
Nor was there evidence that TimberStone Management’s sales were actually diverted to
IGPI, as would support factor (2). As for factor (3)—the adequacy of other remedies—
the Court finds that an injunction would more appropriately correct any injury the
plaintiff suffered in terms of the costs of corrective action. Factor (4) does not weigh
heavily in either party’s favor, as both TimberStone Management and IGPI were
relatively prompt in seeking legal recourse. As for factor (5), while the public has a
general interest in making trademark infringement unprofitable, no factors strengthen or
distinguish that general interest in this case. Moreover, there is no evidence here that
IGPI actually profited from its unlawful conduct. Therefore, the Court finds that trebling
the amount of damages awarded by the jury is not necessary to fairly compensate
TimberStone Management for the adverse effects of IGPI’s infringement.
In sum, after a careful examination of the evidence of actual damages, and
consideration of the equities in this case, the Court concludes that trebling the award of
damages or awarding additional profits is not justified. The jury’s award of $9,808 is a
reasonable compensatory award when considering the minimal evidence of TimberStone
Management’s actual damages and lack of any evidence that IGPI actually profited from
customer confusion between the two courses. TimberStone Management’s request for
enhanced recovery will be denied.

MEMORANDUM DECISION AND ORDER - 34

C.

Necessity of a New Trial on Damages

The jury did not apportion its lump-sum damages award between the two claims
on which TimberStone Management prevailed. Because the jury’s verdict on trademark
dilution must be set aside, the Court must also consider whether the jury’s general
damages award must be set aside and a new trial conducted on damages, out of concern
that the damages were based in part on overturned claim.
It is well settled that where the jury returns a general verdict on multiple theories
of liability, one of which is later found to be invalid, the general verdict must be reversed
and a new trial ordered if the court cannot determine whether the verdict was based upon
the invalid theory. See United N.Y. and N.J. Sandy Hook Pilots Ass’n v. Halecki, 358 U.S.
613, 619 (1959) (“[A] new trial will be required” where “there is no way to know that
[an] invalid claim . . . was not the sole basis for [a] verdict.”); McCord v. Maguire, 873
F.2d 1271, 1273–74 (9th Cir.), opinion amended on denial of reh'g, 885 F.2d 650 (9th
Cir. 1989). Where the verdict was not influenced by the overturned claims or theories, a
new trial is not required. See McCord, 873 F.2d at 1274; see also Chowdhury v. Worldtel
Bangladesh Holding, Ltd., 746 F.3d 42, 50 (2d Cir. 2014) (collecting cases).
This so-called “general verdict” rule has been applied in cases where the jury
issues a single damages award on multiple claims. In this context, federal courts have
held that a lump-sum damages award must be vacated if the jury may have awarded a
portion of the total damages exclusively for the claim or theory of liability that is later
reversed. See, e.g., Friedman & Friedman, Ltd. v. Tim McCandless, Inc., 606 F.3d 494,

MEMORANDUM DECISION AND ORDER - 35

502 (8th Cir. 2010) (vacating a global damages award where the court had no way of
knowing whether the jury awarded some portion of the award for a later-reversed claim).
However, a new trial is unnecessary where one of the alternative claims fully sustains the
damages awarded—that is, where the error did not affect the damages figure. See e.g.,
Ondrisek v. Hoffman, 698 F.3d 1020, 1026–27 (8th Cir. 2012) (holding that “the award
should stand despite the erroneous submission of another theory, where the damages are
the same under a properly submitted theory.”); Quigley v. Rosenthal, 327 F.3d 1044,
1073–74 (10th Cir. 2003) (concluding that the damages award could stand because
reversal on one of the counts “has no effect on the damages award,” because the damages
for each of the five claims were “the same.”).
In this case, the jury was instructed that if it found for TimberStone Management
on any of its federal or common law trademark infringement, unfair competition, or
trademark dilution claims, it may award (1) actual damages, and (1) IGPI’s profits. See
Jury Instructions, No. 18.1, Dkt. 116. While the measure of damages was the same on
each claim, trademark dilution is, at least in theory, “a separate legal theory positing a
different kind of damage to a mark caused by a different form of consumer perception.” 4
McCarthy on Trademarks and Unfair Competition § 24:72 (4th ed.). Federal antidilution
law is aimed at protecting against a gradual whittling away of the selling power of a
famous mark. See id. (collecting cases). In contrast, protections against trademark
infringement are aimed at consumer mistake and deception, and the commercial damage
it creates. Id.; see also B & H Mfg. Co. v. Bright, No. CVF016619AWISMS, 2005 WL

MEMORANDUM DECISION AND ORDER - 36

1342815, at *13 (E.D. Cal. May 10, 2005) (upholding separate jury award for dilution
and infringement).
Whether the jury picked up on this subtle difference is debatable. TimberStone
Management made no effort at trial to point out unique damages attributable to dilution.
It’s possible, therefore, that the general damages award would have been supported by
finding of liability on the unfair competition claim alone.
However, given this uncertainty, the Court feels compelled to require that the issue
of damages on both claims be re-submitted to a jury. Thus, at a new trial, the jury will be
required to decide both IGPI’s liability for trademark dilution and what, if any, damages
were suffered by TimberStone Management on that claim, as well as the unfair
competition claim. On the other hand, it strikes the Court that only IGPI would be
prejudiced by upholding the general verdict award if those damages may have been
awarded by the jury based upon the trademark dilution claim. Therefore, it would appear
appropriate to offer IGPI the option of accepting the jury’s general damages award as the
measure of damages on the unfair competition claim and proceeding to a new trial only
as to liability and damages on the trademark dilution claim.
4.

TimberStone’s Request for Attorneys’ Fees and Costs
Because the Court has determined that a partial new trial is required, and to avoid

addressing fee issues in a piecemeal fashion, the Court will reserve ruling on
TimberStone Management’s request for attorneys’ fees and costs. TimberStone
Management may supplement its motion for fees and costs, as appropriate, after the new

MEMORANDUM DECISION AND ORDER - 37

trial.
CONCLUSION
For the reasons states above, the Court will deny IGPI’s Motion for Judgment as a
Matter of Law. However, given the insufficiency of the evidence of TIMBERSTONE’s
fame, a partial new trial is warranted on the trademark dilution claim. The jury will be
asked to decide IGPI’s liability on the trademark dilution claim and what, if any, damages
were suffered by TimberStone Management on that claim, as well as the unfair
competition claim. IGPI will have the option of accepting the jury’s general damages
award as the measure of damages on the unfair competition claim and proceeding to a
new trial only as to liability and damages on the trademark dilution claim. The Court will
reserve ruling on TimberStone Management’s request for attorney’s fees and costs until
any new trial proceedings are completed.
A separate order will issue addressing IGPI’s request for a declaratory judgment
and TimberStone Management’s request for injunctive relief. Each party may submit
proposed findings of fact and conclusions of law on these issues or before September 8,
2017. Although the Court is inclined to issue a limited permanent injunction, the terms
proposed by Plaintiff are far too broad, given the jury’s finding that IGPI established its
good faith remote use defense. However, the Court would be inclined to require IGPI to
take reasonable steps to avoid any further confusion, such as monitoring its social media
pages for misdirected consumer postings, modifying its mark to clearly designate its
location in Idaho, and other terms as the parties may agree upon and the Court find just.

MEMORANDUM DECISION AND ORDER - 38

Accordingly, the parties shall also meet and confer for purposes of drafting mutuallyagreeable terms for a permanent injunction. Their proposed injunction shall be filed on or
before September 15, 2017. If the parties cannot reach agreement, each party shall file its
own proposed injunction.
ORDER
IT IS HEREBY ORDERED THAT:
1.

IGPI’s Motion for Judgment as a Matter of Law (Dkt. 122) is DENIED.

2.

IGPI’s Motion for a New Trial (Dkt. 122) is GRANTED IN PART and
DENIED IN PART.
a.

The Motion is GRANTED as to TimberStone Management’s
trademark dilution claim (Count III) and as to damages on the unfair
competition claim (Count II). However, IGPI will have the option of
accepting the jury’s lump-sum damages award as the measure of
damages for unfair competition and proceeding to a new trial only
on trademark dilution.

b.
3.

The Motion is otherwise DENIED.

TimberStone Management’s request for enhanced jury damages is
DENIED.

4.

The Court reserves ruling on TimberStone Management’s request for
attorney’s fees and costs.

MEMORANDUM DECISION AND ORDER - 39

5.

The Court will enter a separate notice scheduling a status conference for the
purpose of choosing a date for the new trial.

6.

Each party may, on or before September 8, 2017, submit proposed findings
of fact and conclusions of law on the declaratory judgment and injunctive
relief issues.

7.

The parties shall meet and confer for purposes of drafting mutuallyagreeable terms for a permanent injunction. Their proposed injunction shall
be filed on or before September 15, 2017. If the parties cannot reach
agreement, each party shall file its own proposed injunction.

DATED: August 17, 2017
_________________________
B. Lynn Winmill
Chief Judge
United States District Court

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