The Black & Decker Corporation et al v. Positec USA Inc.
Filing
147
MEMORANDUM OPINION AND ORDER Signed by the Honorable Robert M. Dow, Jr on 8/5/2015. Mailed notice(cdh, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
THE BLACK & DECKER
CORPORATION,
BLACK & DECKER INC. and BLACK
& DECKER (U.S.) INC.,
Plaintiffs,
v.
POSITEC USA INC. and
RW DIRECT INC.,
Defendants.
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Case No. 11-cv-5426
Judge Robert M. Dow, Jr.
MEMORANDUM OPINION AND ORDER
The parties are competing power tool sellers. Plaintiffs allege that Defendants infringed
(1) their patents in certain power tool devices and (2) their trademark-related rights in the
yellow-and-black color combination appearing on Plaintiffs’ products and packaging.1 Plaintiffs
request a jury trial as to all claims. Defendants move to strike Plaintiffs’ jury demand as to their
trademark-related claims for Defendants’ profits.
For the reasons stated below, the Court
respectfully denies Defendants’ motion [99].
I.
Analysis
Under Federal Rule of Civil Procedure 38(a), “there is a right to a jury trial where either
the Seventh Amendment or an ordinary statute of the United States so requires.” Int’l Fin. Servs.
Corp. v. Chromas Techs. Canada, Inc., 356 F.3d 731, 735 (7th Cir. 2004). Where a district court
1
More specifically, Plaintiffs’ trademark-related claims allege trademark infringement under Section 32
of the Lanham Act, 15 U.S.C. § 1114; unfair competition, false designation of origin, and trade dress
infringement under Section 43 of the Lanham Act, 15 U.S.C. § 1125; and common law trademark
infringement and unfair competition. See Am. Compl., [50], Counts II through VI. The Court granted
Defendants’ motion for summary judgment as to Count V, which alleged trademark dilution in violation
of Section 43(iii) of the Lanham Act, 15 U.S.C. § 1125(c). [93].
applies “the substantive law of a state, federal procedural law controls the question of whether
there is a right to a jury trial.” Id. Thus, in a case like this, where Plaintiffs bring parallel state
and federal trademark-related claims, the question is whether the Lanham Act or the Seventh
Amendment creates a jury right.
A.
Statutory Right to a Jury Trial
To avoid the constitutional question if possible,2 the Court begins with a question that
neither side has addressed: whether the Lanham Act creates a right to a jury trial on a claim for a
defendant’s profits. Relevant here is § 1117, which provides:
(a) Profits; damages and costs; attorney fees
When a violation of any right of the registrant of a mark registered in the Patent
and Trademark Office, a violation under section 1125(a) or (d) of this title, or a
willful violation under section 1125(c) of this title, shall have been established in
any civil action arising under this chapter, the plaintiff shall be entitled, subject to
the provisions of sections 1111 and 1114 of this title, and subject to the principles
of equity, to recover (1) defendant’s profits, (2) any damages sustained by the
plaintiff, and (3) the costs of the action. The court shall assess such profits and
damages or cause the same to be assessed under its direction. In assessing profits
the plaintiff shall be required to prove defendant's sales only; defendant must
prove all elements of cost or deduction claimed. 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. The court in exceptional cases may award reasonable attorney
fees to the prevailing party.
15 U.S.C.A. § 1117 (a).
The plain language of the statute, which states that a court “shall assess such profits and
damages or cause the same to be assessed under its direction,” at least suggests the possibility of
2
See Nw. Austin Mun. Util. Dist. No. One v. Holder, 557 U.S. 193, 205 (2009) (“[I]t is a well-established
principle governing the prudent exercise of this Court’s jurisdiction that normally the Court will not
decide a constitutional question if there is some other ground upon which to dispose of the case.” (internal
citation omitted)).
2
a jury determination in the first instance, even if a court may adjust the jury award as it “shall
find to be just.” 15 U.S.C. § 1117(a) (emphasis added). The statute “treats both profits and
damages together, making no separate provision for the manner in which profits are calculated,”
at least suggesting that a right to a jury determination may exist as to both profits and damages.
Ideal World Mktg., Inc. v. Duracell, Inc., 997 F. Supp. 334, 339 (E.D.N.Y. 1998). Moreover, as
Judge Weisberg explained, “[t]hat profits were combined with damages in Section 1117 into a
single monetary recovery which constitutes ‘compensation’, rather than included in Section
1116, the section authorizing injunctions, suggests that Congress considered an award of profits
more in the nature of damages than as incidental to equitable relief.” Oxford Indus., Inc. v.
Hartmarx Corp., 1990 WL 65792, at *7 (N.D. Ill. May 2, 1990).
That said, other cases have indicated that the Lanham Act does not create a jury right. In
Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962), the Supreme Court addressed whether
plaintiffs requesting a trademark infringer’s profits had a right to a jury trial. The complaint was
ambiguous in that it arguably alleged breach of a trademark license, trademark infringement, or
both. Id. at 476–77. The Supreme Court held that the plaintiffs had a Seventh Amendment jury
right as to their demand for an accounting of the defendant’s profits, reasoning that the
complaint’s request for an accounting was “wholly legal in its nature,” regardless of whether the
complaint was construed to allege a breach of contract, trademark infringement, or both. Id. at
477. The Court did not address, as an initial matter, whether a statutory right existed. Given the
well-settled constitutional avoidance doctrine, see Nw. Austin Mun. Util. Dist. No. One, 557 U.S.
at 205, the fact that the Court resolved Dairy Queen on constitutional grounds at least suggests
that it did not believe a statutory right to a jury trial existed. Since then, lower courts addressing
3
the issue have found no statutory jury right. Although the analysis in these cases is not robust,3
this Court is hesitant to find a statutory right to a jury trial given Dairy Queen’s reasoning.
Accordingly, the Court turns to address whether a jury right exists under the Seventh
Amendment.
B.
Constitutional Right to a Jury Trial
The Seventh Amendment provides that “[i]n suits at common law, where the value in
controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact
tried by a jury shall be otherwise re-examined in any Court of the United States, than according
to the rules of the common law.” U.S. Const. amend. VII. This amendment does not create the
right to a trial by jury. Rather, it generally “preserves the substance of the right to a jury trial
which existed under English common law when the amendment was adopted.”
Rogers v.
Loether, 467 F.2d 1110, 1113 (7th Cir. 1972).
Courts apply a two-prong test to determine whether the Seventh Amendment preserves a
right to a jury. “First, we must ‘compare the * * * action to 18th-century actions brought in the
3
In Visible Sys. Corp. v. Unisys Corp., 551 F.3d 65 (1st Cir. 2008), the First Circuit concluded that
“[u]nder the reasoning of the Supreme Court’s opinion in Feltner v. Columbia Pictures Television, Inc.,
523 U.S. 340, 118 (1998), construing similar phraseology in the Copyright Act, it seems clear that the
Lanham Act itself does not create a right to a jury trial whenever the remedy of an accounting of
defendant’s profits is sought.” Id. at 78. But the statute at issue in Feltner did not include the language in
§ 1117, providing that a court “shall assess such profits and damages or cause the same to be assessed
under its direction.” 15 U.S.C. § 1117(a) (emphasis added). Ideal World Mktg. also stated that “the Act
does not specifically provide for trial by jury,” without citing authority for that conclusion. 997 F. Supp.
at 336. It then offers analysis to the contrary, noting that the language “or cause the same to be assessed
under its direction,” 15 U.S.C. § 1117(a), “suggests strongly that, like damages, the actual calculation of
profits should be made by the jury,” particularly because “the statute treats both profits and damages
together, making no separate provision for the manner in which profits are calculated.” Id. at 339.
Oxford Industries also concluded that § 1117 does not create a jury right since, regardless of whether the
court assesses profits or damages or causes either to be assessed under its direction, the Court may adjust
the monetary relief. 1990 WL 65792, at *4. However, it also noted the following to the contrary: “That
profits were combined with damages in Section 1117 into a single monetary recovery which constitutes
‘compensation’, rather than included in Section 1116, the section authorizing injunctions, suggests that
Congress considered an award of profits more in the nature of damages than as incidental to equitable
relief.” Id. at *7.
4
courts of England prior to the merger of the courts of law and equity. Second, we examine the
remedy sought and determine whether it is legal or equitable in nature.’ The latter inquiry is
more important than the former.” Int’l Fin. Servs., 356 F.3d at 735 (quoting Tull v. United
States, 481 U.S. 412, 417–18 (1987)). “Where history does not provide a clear answer, we look
to precedent and functional considerations.” City of Monterey v. Del Monte Dunes at Monterey,
Ltd., 526 U.S. 687, 718 (1999). Lastly, where an action involves both legal and equitable issues,
a right to a jury exists as to the legal issues. Beacon Theatres, Inc. v. Westover, 359 U.S. 500,
510–11 (1959) (“[O]nly under the most imperative circumstances * * * can the right to a jury
trial of legal issues be lost through prior determination of equitable claims.”). Thus, the ultimate
unit of analysis is “the issue to be tried rather than the character of the overall action.” Ross v.
Bernhard, 396 U.S. 531, 538 (1970).
Defendants move to strike Plaintiffs’ request for a jury trial on their trademark-related
claims for Defendants’ profits. They do not move to strike Plaintiffs’ request for a jury trial on
their patent claims for monetary relief, nor do the parties dispute that the remaining requests for
injunctive relief are equitable issues to be decided by the Court. Thus, the only issue is whether
Plaintiffs have a right to a jury trial on their trademark-related claims for Defendants’ profits.
Applying the two-prong historical test to this issue, the Court arrives at an inconclusive
result. The history of trademark actions and remedies lies in the murky overlap of law and
equity. As one district court cogently explained,
Trademark law draws on principles developed both at law and in equity. See
Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 364 (6th Cir. 1985).
Although in England and the United States, both equity and law courts were
empowered to decide trademark cases, most suits for trademark infringement
were brought in equity “because injunctive relief was generally considered the
first and most effective step for courts to take in redressing a trademark
infringement,” id. (citing F. Schechter, The Historical Foundations of the Law
Relating to Trademarks, at 122–145 (1925)), and because courts of equity were
additionally empowered to award damages or profits as incidental relief. See
5
Oxford Indus., 1990 WL 65792 (citing G. Ropski, The Federal Trademark Jury
Trial—Awakening of a Dormant Constitutional Right, 70 Trademark Rep. 177,
179–180 (1980)); see also 1 Pomeroy’s Equity Jurisprudence § 181, at 257–258
(Symons 5th ed. 1941).
Ideal World Mktg., 997 F. Supp. at 336–37.4
Because “history does not provide a clear answer,” the Court turns to “precedent and
functional considerations.” City of Monterey, 526 U.S. at 718. Key here is Dairy Queen. Also
important is the Seventh Circuit’s explanation of the purposes for an accounting. Although an
accounting is a “typical” example of equitable relief, Int’l Fin. Servs., 356 F.3d at 736, an
accounting in the context of a trademark infringement case may be based on three rationales:
“unjust enrichment, deterrence, and compensation.” Roulo v. Russ Berrie & Co., 886 F.2d 931,
941 (7th Cir. 1989); accord Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1157 (7th Cir.
1994). As to the last rationale, courts in this circuit and others have accepted the proposition that
profits may function as a “proxy for damages.” BASF Corp. v. Old World Trading Co., 41 F.3d
1081, 1096 (7th Cir. 1994).5 In fact, Plaintiffs here claim profits as a proxy for damages.
4
For further explanation of the mixed legal and equitable history of trademark actions and remedies, see
George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537–38 (2d Cir. 1992); Daisy Grp., Ltd. v.
Newport News, Inc., 999 F. Supp. 548, 552 (S.D.N.Y. 1998); Thurmon, supra, 27–69; see also Reich v.
Cont’l Cas. Co., 33 F.3d 754, 755–56 (7th Cir. 1994) (explaining the mixed legal–equitable history of
restitution); 9 Charles A. Wright & Arthur Miller, FED. PRAC. & PROC. CIV. § 2310 (3d ed.) (explaining
the mixed legal–equitable history of an accounting).
5
See also Mowry v. Whitney, 81 U.S. 620, 653 (1871) (“The profits which are recoverable against an
infringer of a patent are in fact a compensation for the injury the patentee has sustained from the invasion
of his right. They are the measure of his damages. Though called profits, they are really damages”); Dairy
Queen, 369 U.S. at 476 (characterizing an accounting for profits as an “unquestionably legal” action for
damages, regardless of whether the complaint was construed to allege a breach of contract, trademark
infringement, or both); George Basch, 968 F.2d at 1539 (“Historically, an award of defendant’s profits
has also served as a rough proxy measure of plaintiff’s damages.”); Visible Sys., 551 F.3d at 79 (“This
circuit, like others, has recognized three rationales for awarding to the plaintiff an accounting of the
defendant's profits: ‘(1) as a rough measure of the harm to plaintiff; (2) to avoid unjust enrichment of the
defendant; or (3) if necessary to protect the plaintiff by deterring a willful infringer from further
infringement.’”); Maltina Corp. v. Cawy Bottling Co., 613 F.2d 582, 584 (5th Cir. 1980) (noting that
“[s]ome courts view the award of an accounting as simply a means of compensating a markholder for loss
or diverted sales” without expressly adopting that view]); Restatement (First) of Torts § 747 (1938)
6
Courts allow parties to pursue an award of profits as a proxy for damages because of the
evidentiary barriers to proving damages. To prove trademark infringement, a plaintiff must
prove a likelihood of confusion. But to recover damages, a plaintiff additionally must establish
“actual confusion” that caused “actual injury, i.e., a loss of sales, profits, or present value
(goodwill).” Web Printing Controls Co. v. Oxy–Dry Corp., 906 F.2d 1202, 1204–05 (7th Cir.
1990).6 As one court in this district explained,
[u]nless he can show diversion of sales, a trademark owner will be hard pressed to
prove damages, and even if he shows [1] [actual] confusion of the marks and
[2] diversion of customers it is difficult to show how many customers bought the
infringer’s product who would have bought the trademark owner’s but for the
deception. (Few purchasers of cheap “knockoffs” of expensive goods would have
bought the genuine article.) The damage caused by the dilution of the owner’s
goodwill when the infringer’s goods are of inferior quality is virtually impossible
to quantify. At least in some circumstances the infringer’s profits may be a rough
measure of the owner’s damages, and an award of profits affords some
compensation to the trademark owner.
Oxford Indus., 1990 WL 65792, at *7.7
With Dairy Queen and the three rationales in the backdrop, courts have disagreed over
whether a plaintiff demanding an infringer’s profits has a Seventh Amendment right to a jury.
The case law roughly falls into three categories. The first category generally interprets Dairy
Queen to hold that, where a plaintiff demands an infringer’s profits, a right to a jury trial exists
(Courts historically awarded profits “as an equivalent or substitute for legal damages when equity
jurisdiction was properly invoked for injunctive relief.”).
6
See also Roulo, 886 F.2d at 941 (“Where plaintiff seeks an award of damages, plaintiff must show that
defendant’s infringement caused those losses.”).
7
See also George Basch, 968 F.2d at 1539 (“Due to the inherent difficulty in isolating the causation
behind diverted sales and injured reputation, damages from trademark or trade dress infringement are
often hard to establish.”) (collecting cases noting the same); Ideal World Mktg., 997 F. Supp. at 338 (“[A]
consideration of the relevant case law indicates that an award of profits has largely served a remedial
function in trademark cases, designed to compensate plaintiffs for diverted sales and to address the
difficulties of proof inherent in such cases.”); Daisy, 999 F. Supp. at 552 (noting that profits may be “an
alternative measure of damages because of the difficulty of proving actual lost sales.”).
7
regardless of the theory behind profits.8 A second line of cases suggests that a jury right may
exist depending on the theory of profits; where profits are a proxy for damages, a jury right
exists, but where profits are premised on unjust enrichment, a jury right does not exist.9 The
third group continues to characterize disgorgement as equitable, and some of these cases
distinguish Dairy Queen on the ground that it involved contract damages.10 If either the first or
8
See, e.g., Ideal World Mktg., 997 F. Supp. at 339 (interpreting Dairy Queen to mean that a jury right
exists regardless of which theory applies because the constitutional right to a jury trial cannot depend on
“subtle distinctions” between rationales); Grove Fresh Distribs., Inc. v. New England Apple Prods. Co.,
1991 WL 3928, at *3 (N.D. Ill. Jan. 11, 1991) (reading Dairy Queen to hold generally that “an accounting
is a legal claim for damages” and to dismiss the historical exception that applied where accounts were too
complicated for a jury); Oxford Indus., 1990 WL 65792, at *5 (suggesting little practical difference
between profits premised on damages versus unjust enrichment; reasoning that, either way, “a claim for a
trademark infringer’s profits is more analogous to a suit for damages than one for restitution”; and finding
that an infringement action for profits created a right to a jury); see also Kennedy v. Lakso Co., 414 F.2d
1249, 1252–54 (3d Cir. 1969) (stating even more broadly that regardless of whether a plaintiff requests an
infringer’s damages or profits, a jury right exists unless the determination will be too complicated for a
jury).
9
See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1175 (9th
Cir. 1977) (finding that where a plaintiff’s request for a copyright infringer’s profits was “‘basically a
money claim for damages,’” a jury right existed under Dairy Queen (quoting Swofford v. B & W, Inc.,
336 F.2d 406, 411 (5th Cir. 1964) (same in patent infringement context))); SPSS, Inc. v. Nie, 2009 WL
2579232, at *3 (N.D. Ill. Aug. 19, 2009) (finding that the evidence did not show how profits could be a
surrogate for damages, that the applicable theory was unjust enrichment, that the remedy was therefore
equitable, and that the plaintiff therefore had no jury right); Simon Prop. Grp., L.P. v. mySimon, Inc.,
2001 WL 66408, at *22 (S.D. Ind. Jan. 24, 2001) (Hamilton, J.) (noting prior jury instructions stating that
“one measure of damages for infringement under federal trademark law was the amount of defendant’s
profits attributable to use of the infringing marks.”); Emmpresa Cubana Del Tabaco v. Culbro Corp., 123
F. Supp. 2d 203, 209 (S.D.N.Y. 2000) (finding a claim for profits based on unjust enrichment equitable);
Daisy, 999 F. Supp. at 552 (“Whether a profits remedy is more legal than equitable in nature depends on
which of these theories provides the basis for the requested profits award”; profits premised on damages
or deterrence create a right to a jury, but profits based on unjust enrichment do not); NordicTrack, Inc. v.
Consumer Direct, Inc., 158 F.R.D. 415, 422 (D. Minn. 1994) (“Actions which pursue an accounting for
damages under Section 1117, can be—under the ordinary application of the Dairy Queen principle—
presented to a Jury.” (emphasis added)); Merriam-Webster, Inc. v. Random House, Inc., 1993 WL
205043, at *2–3 (S.D.N.Y. June 10, 1993) (an unjust enrichment claim for an infringer’s profits is
equitable and does not create a jury right); Am. Cyanamid Co. v. Sterling Drug, Inc., 649 F. Supp. 784,
789 (D.N.J. 1986) (finding no jury right where a plaintiff’s theory is unjust enrichment rather than
damages).
10
See, e.g., Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1075 (9th Cir. 2015)
(ruling that a “claim for disgorgement of profits under § 1117(a) is equitable, not legal” and reasoning
that Dairy Queen “does not broadly hold that a Lanham Act claim for disgorgement of profits is a legal
claim. Rather, the Supreme Court characterizes the Dairy Queen claim as a legal claim for damages (not
8
second view is correct, then Plaintiffs have a jury right (assuming that their theory of profits as a
proxy for damages has evidentiary support—a question which the Court addresses further
below).
Neither the Supreme Court nor the Seventh Circuit has addressed which interpretation is
correct, so the Court begins with the Supreme Court’s guidance that, where the historical
Seventh Amendment analysis is unclear, “we look to precedent and functional considerations.”
City of Monterey, 526 U.S. at 718. As to precedent, the weight of authority supports the first or
second view more than the third. Consistent with these views, numerous courts in this circuit
have tried demands for profits before juries.11 As to function, the Seventh Circuit has stated
clearly that profits may function as a “proxy for damages,” BASF, 41 F.3d at 1096; see also
Roulo, 886 F.2d at 941, a consideration supporting at least the second view. Also supporting the
second view is the Seventh Circuit’s decision in a trademark case to affirm a jury award that it
disgorgement of profits”); G.A. Modefine S.A. v. Burlington Coat Factory Warehouse Corp., 888 F. Supp.
44, 46 (S.D.N.Y. 1995) (“Defendants cite Dairy Queen * * * for the proposition that an accounting of
profits can be a legal remedy. However * * * the Dairy Queen Court based its decision on the fact that
the predominant claim was for breach of contract and not for equitable relief.”) (citation and internal
quotation marks omitted); Coca-Cola v. Cahill, 330 F. Supp. 354, 355 (W.D. Okla. 1971) (distinguishing
itself from Dairy Queen because the parties “had no contractual relationship. Plaintiff’s claim is not for
damages for breach of a contract entered into between them.”).
11
See, e.g., R.J. Reynolds Tobacco Co. v. Premium Tobacco Stores, Inc., 2005 WL 293512, at *1 (N.D.
Ill. Feb. 8, 2005) (jury awarded profits based on unjust enrichment); Aero Products Int’l, Inc. v. Intex
Recreation Corp., 2004 WL 5129997, at *3 (N.D. Ill. Dec. 15, 2004) (jury awarded a plaintiff the
trademark infringer’s profits); Simon Prop., 2001 WL 66408 (Hamilton, J.) (“The court instructed the
jury, pursuant to evidence on damages offered by SPG, that one measure of damages for infringement
under federal trademark law was the amount of defendant’s profits attributable to use of the infringing
marks.”); Hot Wax, Inc. v. S/S Car Care, 1999 WL 966094, at *7 (N.D. Ill. Oct. 14, 1999) (declining to
overturn a jury award of profits); Morton v. Planet Hollywood (Chicago), 1993 WL 4137, at *2 (N.D. Ill.
Jan. 4, 1993) (“Plaintiffs are entitled to a jury trial on their claim for an accounting under the Lanham
Act.”); Grove Fresh Distribs., 1991 WL 3928, at *3 (denying a motion to strike a plaintiff’s jury demand
for recovery of defendants’ profits); Oxford Indus., 1990 WL 65792, at *7 (finding a right to a jury where
a plaintiff requested a trademark infringer’s profits); Roulo v. Russ Berrie & Co., 1988 WL 64094, at *1
(N.D. Ill. June 10, 1988) (indicating a jury award of a copyright and trade dress infringer’s profits);
Quality Care-USA, Inc. v. Gorenstein Enters., Inc., 1987 WL 27307, at *2 (N.D. Ill. Dec. 9, 1987)
(declining to overturn a jury award attributable to a trademark infringer’s profits).
9
interchangeably characterized as “damages” and “profits” and described as corresponding with
the plaintiff’s “loss of business.” Grove Fresh, 969 F.2d at 554–58, 560.
It bears mentioning that the Seventh Circuit has provided some indications supporting the
even broader first view. The Seventh Circuit’s pattern jury instructions, for example, explain
that “[i]n addition to Plaintiff’s damages, Plaintiff may recover the profits Defendant gained
from the [trademark infringement; trade dress infringement; false advertising]. You may not,
however, include in any award of profits any amount that you took into account in determining
actual damages.” Federal Civil Jury Instructions of the Seventh Circuit, 13.6.4 Defendant’s
Profit (2009 rev.).
These instructions state that profits exceeding actual damages—which
logically must be based on unjust enrichment or deterrence—may be tried before a jury.
Consistent with this view, the Seventh Circuit has affirmed a jury award of profits that was
“appropriate under either a deterrence or unjust enrichment theory even if plaintiff’s actual
sustained losses may have been less.” Roulo, 886 F.2d at 941.12 For these reasons, the Court
finds that both the first and second views described above are more persuasive than the third
view. The Court further notes that to the extent that the law is ambiguous, any doubts should be
resolved in favor of finding a constitutional jury right, as the “federal policy favoring jury trials
is of historic and continuing strength,” Simler v. Conner, 372 U.S. 221, 222 (1963) (collecting
cases, including Dairy Queen), and the risk of error is greater when denying rather than
recognizing a constitutional right.
12
On initial glance, this case appears consistent with the third category, in that it involved trademark
infringement in the context of a license agreement. On deeper review, however, it proves distinguishable
from Dairy Queen (and therefore falls outside the third category) because the trademark license expired
pre-infringement. The plaintiffs did not raise any breach of contract claims, nor did they litigate the case
as a trademark infringement claim intertwined with a breach of license claim.
10
While the Court is persuaded that Defendants’ motion must be denied, they do raise
several arguments worth addressing in some detail. First, they argue that the second view
enables plaintiffs to manipulate a constitutional jury right by strategically choosing their theory
of profits.
See Mark A. Thurmon, Ending the Seventh Amendment Confusion: A Critical
Analysis of the Right to a Jury Trial in Trademark Cases, 11 Tex. Intell. Prop. L.J. 1, 90–91
(2002). But a plaintiff’s label need not control, and courts must serve as gatekeepers. Where a
plaintiff contends that profits are a substitute for damages, but the evidence indicates otherwise, a
court may strike a jury demand.13 Indeed, as explained below, the threat to strike a jury demand
remains viable throughout and even after the trial should Plaintiffs’ proffered theory lack
evidentiary support.
Defendants also argue that Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d
1059 (9th Cir. 2015), offers the correct interpretation of Dairy Queen. Fifty-Six concluded that
Dairy Queen “does not broadly hold that a Lanham Act claim for disgorgement of profits is a
legal claim” because the Supreme Court subsequently characterized Dairy Queen as “a legal
claim for damages (not disgorgement of profits).” Id. at 1075 (citing Feltner v. Columbia
Pictures Television, Inc., 523 U.S. 340, 346 (1998)). But to the extent that Feltner referred to
Dairy Queen as an “action for damages,” 523 U.S. at 346, it helps Plaintiffs, not Defendants. It
suggests that where a plaintiff requests profits that could be described as damages, a jury right
exists.14
13
See, e.g., SPSS, 2009 WL 2579232, at *3 (“Nie has not developed a theory as to how he suffered actual
damages. Rather, to the extent he is entitled to a monetary judgment, it is due to the Company’s alleged
unjust enrichment. Nie cannot grant himself the right to a jury trial simply by labeling his claim an
accounting of profits.”).
14
Fifty-Six also contradicts Ninth Circuit precedent without explanation. See Sid & Marty Krofft
Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1174–75 (9th Cir. 1977) (finding a jury right
as to an accounting for profits).
11
Related cases from the third view also fail to persuade. These cases consider the profits
in Dairy Queen to have been legal, not equitable, because the complaint involved a breach of
contract claim.15 However, Dairy Queen made clear that, construing the complaint to allege only
trademark infringement, the remedy was still legal. Dairy Queen, 369 U.S. at 477.
Although the Court is unpersuaded by the third view, it does peripherally suggest an
important question worth addressing: To the extent that a request for an accounting creates a
jury right under the second view, does it do so only when trademark infringement occurs in the
context of a licensing agreement? In other words, does it do so only when an accounting serves
not as the ultimate form of relief but as a procedural tool for computing damages based on the
royalty in the licensing agreement?
One measure of trademark damages is a reasonable royalty, and one measure of a
reasonable royalty may be an actual royalty in a licensing agreement. Thus, on first glance, one
could read Dairy Queen’s “accounting to determine the exact amount of money owing” to refer
to a procedural tool for computing damages based on the contractual royalty.16 But a closer look
suggests otherwise. The agreement there granted the licensor the right to 50% of the licensee’s
sales, 369 U.S. at 474, and the lower court opinion makes clear that the accounting was one for
profits, see McCullough v. Dairy Queen, Inc., 194 F. Supp. 686, 687 (E.D. Pa. 1961). If the
15
See, e.g., G.A. Modefine S.A., 888 F. Supp. at 46 (“Defendants cite Dairy Queen * * * for the
proposition that an accounting of profits can be a legal remedy. However * * * the Dairy Queen Court
based its decision on the fact that the predominant claim was for breach of contract and not for equitable
relief.” (citation and internal quotation marks omitted)); Coca-Cola, 330 F. Supp. at 355 (distinguishing
itself from Dairy Queen because the parties “had no contractual relationship. Plaintiff’s claim is not for
damages for breach of a contract entered into between them.”).
16
See Mark A. Thurmon, Ending the Seventh Amendment Confusion: A Critical Analysis of the Right to a
Jury Trial in Trademark Cases, 11 Tex. Intell. Prop. L.J. 1, 27–69 (2002) (“In the Supreme Court’s view,
Dairy Queen was a damages case. The Dairy Queen plaintiffs sought an ‘accounting’ in the procedural
sense only, not an award of defendant’s profits.”)
12
ultimate relief were damages, an accounting of profits (rather than sales) would have been
pointless.
Seventh Circuit precedent also suggests that a request for profits creates a jury right
beyond the licensing context. In instructing that profits may be a proxy for damages, BASF, 41
F.3d at 1096, the Seventh Circuit cited George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d
Cir. 1992). George Basch explained that, because proving actual damages is difficult, trademark
law creates an alternative form of relief—profits as a proxy for damages—which is governed by
a less challenging evidentiary regime: “[I]n 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.
As George Basch explains, this regime “shifts the burden of proving
economic injury off the innocent party, and places the hardship of disproving economic gain
onto the infringer.” 968 F.2d at 1539. George Basch’s rationale suggests that a request for
profits creates a jury right beyond the licensing context. The Lanham Act’s creation of an
alternative evidentiary regime—one meant to facilitate the recovery of a plaintiff’s loss—should
not strip a party of its constitutional right to what is otherwise essentially a request for damages.
Defendants also argue that Dairy Queen should be read in light of the Supreme Court’s
“subsequent repeated characterizations of disgorgement as an equitable remedy,” citing Tull v.
United States, 481 U.S. 412 (1987) and Curtis v. Loether, 415 U.S. 189 (1974). Reply [110]
at 4. Curtis addresses disgorgement only in passing, and although it suggests that disgorgement
may be equitable, it does not address whether it must be and, if not, when it may be legal. See
Curtis, 415 U.S. at 197.
Moreover, Tull’s general statement that that disgorgement is
“traditionally considered an equitable remedy,” is not determinative. 481 U.S. at 424. Tull did
not address the issue here—whether a plaintiff who claims an infringer’s profits as a proxy for
damages has a right to a jury.
13
Defendants’ citation to Reebok Int’l v. Marnatech Enters., 970 F.2d 552, 559 (9th Cir.
1992), also is unpersuasive. Reebok did characterize an accounting for profits as generally
equitable, but it did so in the context of a different question: whether a district court may order a
pre-judgment freeze of a defendant’s assets in a trademark case brought under the Lanham Act.
The Ninth Circuit answered in the affirmative, reasoning that because the Lanham Act authorizes
“an accounting of [a defendant’s] profits as a form of final equitable relief, the district court had
the inherent power to freeze [the defendant’s] assets in order to ensure the availability of that
final relief.”
Id.
Reebok’s reasoning does not exclude the possibility that profits maybe
equitable in some circumstances and legal in others. Similarly, Ferrari S.P.A. v. Roberts, 944
F.2d 1235, 1248 (6th Cir. 1991), acknowledges that disgorgement may be equitable, but it does
not address whether it must be equitable, and whether it may be legal when profits are a proxy
for damages.
Defendants cite several more cases characterizing profits as equitable. See, e.g., Fuller
Prods. Co. v. Fuller Brush Co., 299 F.2d 772 (7th Cir. 1962); Emmpresa Cubana Del Tabaco v.
Culbro Corp., 123 F. Supp. 2d 203 (S.D.N.Y. 2000); Am. Cynamide Co. v. Sterling Drug Inc.,
649 F. Supp. 784 (D.N.J. 1986); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah
Div. of Travel Dev., 955 F. Supp. 598, 605 (E.D. Va. 1997). But these cases do not contradict
the second view, insofar as the profits at issue were expressly or effectively premised on unjust
enrichment.
Defendants also contend that even if profits are considered a legal remedy when they
operate as a proxy for damages, profits based on unjust enrichment are still equitable. They
further argue that Plaintiffs’ theory of profits must be premised on unjust enrichment, not
damages, because Plaintiffs have presented no evidence that they “suffered any losses as a result
14
of the alleged infringing activities” and because they have “made no effort to show that any sales
made to Positec would have gone to it instead.” Reply, [110], at 8.
The evidence at least suggests otherwise.
During the summary judgment briefing,
Plaintiffs produced a declaration from Helen Fischer, director of brand marketing for the DeWalt
brand. Fischer stated that Plaintiffs and Defendants sell their products in the same retail stores to
the same customers. Consistent with this statement, her declaration includes a photograph
depicting both sides’ products side-by-side at Costco. See [93] at 24–25. Plaintiffs also offered a
likelihood of confusion survey from their expert, James Berger. The Berger survey showed
respondents a photograph of Plaintiffs’ and Defendants’ products side-by-side in a store. The
survey asked respondents if they believed that the products were produced by the same company,
and 47% of respondents said yes. See [93] at 32. Parties have used such survey evidence to
show not only a likelihood of confusion but also actual confusion. Rust Env’t & Infrastructure,
Inc. v. Teunissen, 131 F.3d 1210, 1218 (7th Cir. 1997). Actual confusion, in turn, may support a
plaintiff’s theory of actual loss. Web Printing Controls, 906 F.2d at 1204–05. And actual loss
supports a theory of profits as a proxy for damages, as explained above.
Taken together, Plaintiffs’ evidence suggests that (1) the parties are direct competitors;
(2) their products lay side-by-side in the same retail stores; and (3) a substantial percentage of
customers may be confused as to the source of the parties’ products. With that evidence,
Plaintiffs may be able to convince a trier of fact that, by infringing Plaintiffs’ trademark-related
rights, Defendants’ caused consumers to purchase Defendant’s’ products instead of Plaintiffs’.
Accordingly, Plaintiffs appear to have a viable theory that profits serve as a proxy for damages.17
17
To the extent that (1) Plaintiffs’ evidence at trial falls short of making a plausible case under the
“profits as a proxy for damages” model outlined above or (2) the Court becomes convinced upon further
reflection that there is no right to a jury trial in this case, the Court retains the option of treating the jury’s
15
For this reason, Defendants’ reliance on Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006
U.S. Dist. LEXIS 9154 (S.D.N.Y. Mar. 7, 2006), and SPSS, Inc. v. Nie, 2009 WL 2579232, is
misplaced. As Defendants point out, both courts rejected the plaintiffs’ theories of profits as a
proxy for damages and concluded that profits were rooted in unjust enrichment instead.
However, both cases are distinguishable; they did not involve direct competitors producing
substitute products, so the evidence did not suggest that the defendants’ gain correlated with the
plaintiffs’ loss.
Defendants’ citation to Visible Sys. Corp., 551 F.3d at 65, also is unpersuasive. The
Court there found insufficient evidence of profits as a proxy for damages for reasons inapplicable
here. The “harm to plaintiff was in fact measured and damages were awarded,” and there was no
evidence that the defendant profited from the infringement; the “plaintiff’s theory of harm was
one of reverse confusion, and reverse confusion does not lend itself to any automatic assumption
that there is an equivalence between defendant’s profits and plaintiff’s diverted sales.” Id. at 80.
Lastly, Defendants argue that Plaintiffs cannot contend that profits are a proxy for
damages because the amended complaint includes language suggesting a theory of unjust
enrichment. While the amended complaint does include such language, it is not mutually
exclusive with a theory of profits as a proxy for damages. When parties are competitors selling
similar products, it may well be that the defendant’s sale of infringing products causes its own
unjust enrichment while simultaneously causing the plaintiff a loss. To the extent that both
determinations as advisory (or disregarding them altogether). See Fed. R. Civ. P. 39 (“In an action not
triable of right by a jury, the court * * * may try any issue with an advisory jury”); Price v. Marshall
Erdman & Associates, Inc., 966 F.2d 320, 324 (7th Cir. 1992) (“An equity judge can always submit an
issue to a jury for advice, but he is not bound by the advisory verdict.”); United States v. Ellis Research
Labs., Inc., 300 F.2d 550, 554 (7th Cir. 1962) (“The use of an advisory jury under Rule 39(c), F.R.C.P.,
lies within the discretion of the trial court”); Burton v. Gen. Motors Corp., 2008 WL 3853329, at *1 (S.D.
Ind. Aug. 15, 2008) (Hamilton, J.) (taking a motion to strike a jury demand under advisement during trial
and instructing the parties that “if it were to find that the plaintiffs had no right to a jury trial on [certain]
claims, the court would treat the jury’s verdict as advisory”).
16
theories may apply and one theory is equitable while the other is legal, the equitable relief does
not negate Plaintiffs’ jury right as to the legal theory. Dairy Queen, 369 U.S. at 472-73 (1962).
Moreover, the amended complaint included allegations of damages, which make clear that
Plaintiffs have alleged a loss, supporting their theory of profits as a proxy for damages.
II.
Conclusion
For the reasons stated above, the Court denies Defendants’ motion [99].
Dated: August 5, 2015
____________________________
Robert M. Dow, Jr.
United States District Judge
17
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