Aviva Sports, Inc. v. Fingerhut Direct Marketing, Inc. et al

Filing 811

ORDER regarding telephonic conference (please see order for details). (Written Opinion) Signed by Judge Joan N. Ericksen on May 2, 2013. (CBC)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Aviva Sports, Inc.,
Plaintiff,
v.

Civil No. 09-1091 (JNE/JSM)
ORDER

Fingerhut Direct Marketing, Inc., Menard, Inc.,
Kmart Corporation, Wal-Mart Stores, Inc., and
Manley Toys, Ltd.,
Defendants.
Plaintiff Aviva Sports, Inc. (“Aviva”) brought this action against Defendants Fingerhut
Direct Marketing, Inc., Menard, Inc., Kmart Corporation, Wal-Mart Stores, Inc., and Manley
Toys, Ltd., asserting claims of patent infringement and false advertising. The patent
infringement claims have been dismissed, as have the claims against the Retailer Defendants
Fingerhut, Menard, Kmart, and Wal-Mart. The Court has already found Manley liable on
Aviva’s false advertising claims, and previously held that Aviva was not entitled to actual
damages. Thus, the only issue remaining in this case is the potential disgorgement of Manley’s
profits under the Lanham Act, 15 U.S.C. §§ 1117(a), 1125(a). In an Order dated February 6,
2013, the Court stated that “Aviva shall submit to the Court proof of its damages on its Lanham
Act claims” and that “Manley is not permitted to oppose this submission.” 1 A hearing on this
issue was held on March 18, 2013. The Court concluded at that time that no issues remained to
be tried before a jury, as disgorgement of profits is an equitable remedy. See, e.g., Masters v.
UHS of Del., Inc., 631 F.3d 464, 473 (8th Cir. 2011); see also Tull v. United States, 481 U.S.
412, 424 (1987) (explaining that a remedy “intended simply to extract compensation or restore
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The February 6 Order resulted from a history of Manley’s egregious conduct during the
lengthy course of this litigation, involving Manley’s numerous discovery abuses and repeated
failures to obey Court orders.
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the status quo” was issued by “courts of equity” and that “an action for disgorgement of
improper profits” is “traditionally considered an equitable remedy”); 3M Co. v. Mohan, 482 F.
App’x 574, 578-79 (Fed. Cir. 2012) (finding no right to a jury trial where a party proceeded only
on equitable claims); Whitson v. Knox County Bd. of Educ., 468 F. App’x 532, 537 (6th Cir.
2012) (“When subsequent events leave only equitable issues to be resolved, the right to a jury
trial does not exist and is not preserved by the Seventh Amendment or the Federal Rule of Civil
Procedure 38.”).
The parties are now ordered to contact chambers to schedule a telephonic conference to
discuss the process for moving forward with concluding this case. Aviva shall inform the Court
at that time as to whether it intends to submit any additional evidence or argument on the issue of
disgorgement of profits, and both parties should be prepared to discuss the most efficient way of
disposing of that one remaining issue.
IT IS SO ORDERED.
Dated: May 2, 2013
s/Joan N. Ericksen
JOAN N. ERICKSEN
United States District Judge

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