Irwin Industrial Tool Company et al v. Worthington Cylinders Wisconsin, LLC et al

Filing 336

AMENDED JUDGMENT in favor of Irwin Industrial Tool Company against Worthington Cylinder Corporation and Worthington Cylinders Wisconsin, LLC, in the amount of $13,002,248.00, along with prejudgment interest in the amount of $1,827,820.00, and costs in the amount of $64,937.24. Postjudgment interest shall accrue on the entire judgment, including prejudgment interest and costs. Irwin Industrial Tool Company shall recover of Worthington Cylinder Corporation an d Worthington Cylinders Wisconsin, LLC the sum of $904,620.00 in attorneys' fees. Postjudgment interest to accrue on the award of attorneys' fees at the statutory rate. Worthington Cylinder Corporation and Worthington Cylinders Wiscons in, LLC are permanently enjoined as stated in this Judgment. All claims by or against Plaintiff Newell Operating Company are dismissed with prejudice. All claims by or against Defendant Worthington Industries, Inc. are dismissed with prejudice. Signed by District Judge Martin Reidinger on 10/1/10. (gpb)

I r w i n Industrial Tool Company et al v. Worthington Cylinders Wisconsin, LLC et al

D o c . 336

IN THE DISTRICT COURT OF THE UNITED STATES F O R THE WESTERN DISTRICT OF NORTH CAROLINA C H AR L O TTE DIVISION C IV IL CASE NO. 3:08cv291

IR W IN INDUSTRIAL TOOL COMPANY, d /b /a BernzOmatic and NEWELL O P E R ATIN G COMPANY,

) ) ) ) P la in t if f s , ) ) ) vs . ) ) ) W O R TH IN G TO N CYLINDERS WISCONSIN, ) L L C , WORTHINGTON CYLINDER ) C O R P O R ATIO N , and WORTHINGTON ) IN D U S TR IE S , INC., ) ) D e fe n d a n ts . ) )

AM E N D E D JU DG M EN T

TH IS MATTER came to for trial and was heard by the undersigned ju d g e , and a jury was duly empaneled and has answered the issues p re s e n te d as follows: 1. D id Worthington breach the Supply Agreement? A N S W E R : YES 2. D id BernzOmatic breach the Supply Agreement? A N S W E R : NO

Dockets.Justia.com

3.

W h a t amount of damages, if any, is BernzOmatic entitled to recover fro m Worthington for breach of contract arising from Worthington's u s e of BernzOmatic's trade name, trademarks, and logos without B e rn z O m a tic 's authorization? A N S W E R : $ 1,284,003

4.

W h a t amount of damages, if any, is BernzOmatic entitled to recover fro m Worthington for any other breach of contract? ANSWER: $ 11,718,242

5.

W h a t amount of damages, if any, is Worthington entitled to recover fro m BernzOmatic for breach of contract? A N S W E R : N/A

6.

D id Worthington commit any of the following: (a ) Did Worthington sell a 14-ounce propane cylinder in a m a n n e r that infringed upon the trade dress of BernzOmatic? A N S W E R : YES (b ) Did Worthington use advertisements in such a manner as to c o n s titu te false advertising? ANSWER: YES
2

7.

D id the conduct of Worthington that you found occurred in either or b o th Issue No. 6(a) or Issue No. 6(b): (a ) occur in or affect commerce?

A N S W E R : YES (b ) o c c u r in interstate commerce?

A N S W E R : YES 8. W a s the conduct of Worthington that you found occurred in either Is s u e No. 6(a) or Issue No. 6(b) or both a proximate cause of an in ju ry to BernzOmatic? A N S W E R : YES 9. W h a t amount of damages, if any, is BernzOmatic entitled to recover fro m Worthington for the conduct that you found occurred in Issue N o . 6(a) and/or Issue No. 6(b)? A N S W E R : $1.00 10. D id Worthington willfully engage in trade dress infringement and/or fa ls e advertising? A N S W E R : YES

3

B a s e d on the foregoing facts as found by the jury, the Court c o n c lu d e s as a matter of law that the trade dress infringement and false a d ve rtis in g found by the jury in answer to special interrogatories 6(a) and 6 (b ) constitute unfair and deceptive trade practices and unfair competition with in the prohibitions of N.C. Gen. Stat. §75-1.1, et seq. The Court previously entered an Order granting the Defendants s u m m a ry judgment with respect to the Plaintiffs' claims for tortious in te rfe re n c e with contract and for unfair and deceptive trade practices u n d e r N.C. Gen. Stat. § 75-1.1, et seq., as related to the allegations of to rtio u s interference and price discrimination in violation of the RobinsonP a tm a n Act, 15 U.S.C. § 13. [Doc. 242]. The Court further granted the P la in tiffs summary judgment with respect to the Defendants' fraudulent in d u c e m e n t counterclaim. [Id.]. IT IS, THEREFORE, ORDERED, ADJUDGED AND DECREED that th e jury's award of $1.00 for trade dress infringement and false advertising is hereby trebled in accordance with N.C. Gen. Stat. § 75-16. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the P la in tiff Irwin Industrial Tool Company shall have and recover of the D e fe n d a n ts Worthington Cylinders Wisconsin, LLC and Worthington
4

C ylin d e r Corporation the sum of $13,002,248.00, along with prejudgment in te re s t, calculated until April 14, 2010, the date of entry of the original J u d g m e n t in this case, in the amount of $1,827,820.00, and costs in the a m o u n t of $64,937.24. Postjudgment interest shall accrue on the entire J u d g m e n t, including the award of prejudgment interest and costs, at the ra te specified under 28 U.S.C. § 1961, from April 14, 2010 until paid in full. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the P la in tiff Irwin Industrial Tool Company shall have and recover of the D e fe n d a n ts Worthington Cylinders Wisconsin, LLC and Worthington C ylin d e r Corporation the sum of $904,620.00 in attorneys' fees. Postjudgment interest shall accrue on the award of attorneys' fees at the ra te specified under 28 U.S.C. § 1961 from the date of entry of this A m e n d e d Judgment until paid in full. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the D e fe n d a n ts Worthington Cylinders Wisconsin, LLC and Worthington C ylin d e r Corporation and their officers, agents, servants, employees, a ffilia te s , successors, and assigns, and any and all persons acting in c o n c e rt or participation with them who receive actual notice of this Order (c o lle c tive ly "Worthington") are hereby enjoined and restrained as follows:

5

(1 )

W o rth in g to n shall refrain from infringing BernzOmatic's tra d e dress and engaging in false advertising, both as found b y the jury in this case, in violation of the Lanham Act and N .C . Gen. Stat. § 75-1.1. Specifically, Worthington shall re fra in from making, using, inducing someone else to make o r use, importing, selling, or offering to sell any blue p ro p a n e hand torch fuel cylinders that infringe

B e rn z O m a tic 's protectable trade dress, most notably such c ylin d e rs with labels incorporating a black circle similar to B e rn z O m a tic 's black "Circle of Trust" logo, and from trading o n BernzOmatic's protectable trade dress by advising any c u s to m e r or potential customer of the similarity between the to ta l image of Worthington's hand torch cylinder product a n d the total image of any current or former BernzOmatic h a n d torch cylinder product. (2) Worthington also shall refrain from advertising or marketing h a n d torch fuel cylinders by making false statements or c la im s in any advertising that Worthington has been the "n a m e " that BernzOmatic customers have "trusted all

6

a lo n g "; that Worthington cylinders have "always" been B e rn z O m a tic customers' "first choice"; that Worthington has b e e n "the fuel behind the [BernzOmatic] flame for over 43 ye a rs "; and that Worthington is the "true source" for B e rn z O m a tic hand torch fuel cylinders. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that all c la im s asserted by or against the Plaintiff Newell Operating Company are D IS M IS S E D WITH PREJUDICE, and Newell Operating Company shall re c o ve r nothing from the Defendants in the form of damages. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that all claims asserted by or against the Defendant Worthington Industries, Inc. a re DISMISSED WITH PREJUDICE, and Worthington Industries, Inc. shall re c o ve r nothing from the Plaintiffs in the form of damages. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the D e fe n d a n ts ' Motion for Summary Judgment [Doc. 148] is GRANTED IN P AR T; the Plaintiffs' claims for tortious interference with contract as set fo rth in Count VII of the Complaint and for unfair and deceptive trade p ra c tic e s related to the allegations of tortious interference and price d is c rim in a tio n in violation of the Robinson-Patman Act, 15 U.S.C. § 13 as
7

s e t forth in Count VI of the Complaint are hereby DISMISSED WITH P R E J U D IC E ; and the Plaintiffs shall recover nothing from the Defendants in the form of damages on these claims. IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the P la in tiffs ' Motion for Summary Judgment [Doc. 150] is GRANTED IN P AR T; the Defendants' counterclaim for fraudulent inducement as set forth in Count I of the Amended Counterclaim is hereby DISMISSED WITH P R E J U D IC E ; and the Defendants shall recover nothing from the Plaintiffs in the form of damages on this counterclaim. IT IS SO ORDERED. Signed: October 1, 2010

8