Roger Cleveland Golf Company Inc v. Prince et al

Filing 139

RESPONSE in Opposition re 130 MOTION to Alter Judgment Response filed by Roger Cleveland Golf Company Inc.Reply to Response to Motion due by 5/9/2011 (McElwaine, John)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
Roger Cleveland Golf Company, Inc.,
Plaintiff,
vs.
Christopher Prince, Sheldon Shelley, Prince
Distribution, LLC, and Bright Builders,
Inc.
Defendants.

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Civil Action No. 2:09-2119-MBS

RESPONSE IN OPPOSITION TO
BRIGHT BUILDERS' MOTION FOR
REMITTITUR AND TO ALTER OR
AMEND THE JUDGMENT

COMES NOW the Plaintiff, Roger Cleveland Golf Company, Inc. (“Cleveland”), by and
through its undersigned attorneys, and hereby submits this response in opposition to Defendant
Bright Builders, Inc.'s Motion for Remittitur and to Alter or Amend the Judgment. In support of its
opposition, Cleveland states as follows:
SUMMARY
On March 10, 2011, a jury returned a substantial verdict in favor of Cleveland. The jury
found for Cleveland on all counts and found that both Bright Builders, Inc. ("Bright Builders") and
co-defendant Christopher Prince ("Prince") had willfully violated the trademarks rights of Cleveland
and had willfully violated the South Carolina Unfair Trade Practices Act. The trial strategies of the
co-defendants could not have been more divergent. While Prince admitted liability and testified that
he would not sell counterfeit golf clubs again, Bright Builders denied any responsibility for its part
in the sale of the counterfeit clubs and its owner testified that should the same set of circumstances
happen again today, he would not do anything differently. In its verdict, the jury assessed statutory
damages of $70,000.00 per mark against Bright Builders and $2,500.00 per mark against codefendant Prince.

Continuing its pattern of avoiding responsibility, Bright Builders now seeks a remittitur of
the statutory damages assessed. Specifically, Bright Builders asks this Court to substitute its
judgment for that of Congress and the jury. In support of its motion, Bright Builders fails to argue
that the $70,000.00 statutory damage award is excessive, a requirement for a remittitur motion.
Instead, Bright Builders reargues its stance that there is no evidence of wrongdoing on its part,
submits to the Court that the company is facing "extreme financial hardship," and asks that the
statutory damages be reduced to $2,500.00. Bright Builders' request is absurd. As an initial matter,
the Court must respect a jury award that falls within the statutory range established by Congress.
Furthermore, even should this Court find that it has the power to remit a statutory damage award
that falls within the statutory range established by Congress, this case presents a textbook example
of where it would be entirely inappropriate to do so, as the jury's award of $70,000.00 represents
only 3.5% of the $2,000,000.00 per mark award that the jury was authorized to award. For these
reasons and the reasons set forth infra, the Court should deny Bright Builders' Motion for
Remittitur.
LEGAL STANDARD
"At the outset, we note that a remittitur… is the established method by which a trial judge
can review a jury award for excessiveness. Remittitur is a process, dating back to 1822, by which
the trial court orders a new trial unless the plaintiff accepts a reduction in an excessive jury award."
Atlas Food Systems and Services, Inc. v. Crane Nat'l Vendors, Inc., 99 F.3d 587, 593 (4th Cir. 1996)
(emphasis added). "Indeed, if a court finds that a jury award is excessive, it is the court's duty to
require a remittitur or order a new trial." Id. "A trial judge may not upset the jury's verdict merely
because he or she would have decided the case differently." Coastal Fuels, Inc. v. Caribbean
Petroleum Corp., 79 F.3d 182, 201 (1st Cir. 1996).

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ARGUMENT
I.

The Court Should Deny Bright Builders' Request For A Remittitur
In a last ditch effort to reduce the jury's verdict, Bright Builders seeks to remit the jury

award of $70,000.00 per mark down to $2,500.00 per mark. As an initial matter, the Court does not
have the authority to disturb a jury award that is within the statutory range set by Congress. Such
amounts are, as a matter of law, reasonable and not excessive. Furthermore, the Seventh
Amendment requires that juries, not judges, determine the proper amount of statutory damages in a
given case or controversy. Despite such rights and Bright Builders' concession that the $70,000.00
amount is "within the statutory limits under the Lanham Act," it argues that remittitur is proper
because the amount is not "justified and reasonable." See Memorandum in Support of Remittitur,
Docket No. 130, pg 3. However, even should the Court find it has the authority to remit the award
(which it should not for the reason stated infra), Bright Builders has provided no basis in either fact
or law to demonstrate that the jury award is excessive. As the 4th Circuit is clear in that remittitur is
only proper upon a showing of excessiveness, Bright Builders has not and cannot show that the jury
award is excessive.
A.

The Court Must Respect the Jury's Damage Award

In counterfeiting cases, the Lanham Act allows for statutory damages of "not less than
$1,000 or more than $200,000 per counterfeit mark." 15 U.S.C. §1117(c)(1). In cases of willful
counterfeiting, statutory damages of up to $2,000,000.00 per mark are authorized. 15 U.S.C.
§1117(c)(2). The Supreme Court – fully aware of the statutory ranges set by Congress – has made
it clear that the Seventh Amendment grants the jury with the sole authority to determine "all issues
pertinent to an award of statutory damages" including the amount of the award itself. Feltner v.
Columbia Pictures Television, Inc., 523 U.S. 340, 355 (1998). As the jury is charged with deciding

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"all issues pertinent to an award of statutory damages," the Court is without power to remit an award
of statutory damages that falls within the ranges set by Congress. Id.; see also SESAC, Inc. v.
WPNT, Inc., 327 F. Supp. 2d 531, 532 (W.D. PA. 2003) (rejecting request for remittitur of statutory
damages as "[t]he court should not interfere lightly with a carefully crafted statutory scheme by
substituting its judgment for that of the legislature").
Bright Builders does not cite a single case permitting the remittitur of a jury's damage award
when the award falls within the range of available damages established by Congress. Statutory
damages serve a broad range of purposes including deterrence of future infringement, a rough
measure of harm to the trademark owner, and a rough measure of harm to the consuming public.
Congress determined the appropriate range of statutory damages with these very goals in mind, and
it did so with infringers such as Bright Builders in mind. Any district court judge that superimposes
his or her own subjective view on the "correct" amount of statutory damages under the Lanham Act
usurps the role of the jury in direct violation of the Seventh Amendment, the Supreme Court's
decision in Feltner, and impermissibly invades Congress' role of setting statutory damages ranges
within the Lanham Act. As such, the Court should not remit the jury's damages award because it
falls squarely within statutory ranges set by Congress and because the Seventh Amendment affords
the right to have such awards determined by a jury rather than a Court.
B.

The Jury Award is not Excessive

Even should this Court consider remittitur, the jury's award is not excessive. As explained
supra, the jury's verdict of only $70,000.00 per mark falls well within the statutory ranges set by
Congress for both willful and non-willful infringement. Given that the jury could have awarded up
to $2,000,000.00 in damages based on its finding of willfulness, there was nothing "excessive"
about the award and the award is reasonable as a matter of law. In order for the Court to remit a

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jury's damages award, the 4th Circuit requires a showing that the award was excessive. See Atlas
Food Systems and Services, Inc, 99 F.3d at 593. While Bright Builders argues that the award is
unreasonable and unjust (arguments rejected by the jury when determining liability and damages),
Bright Builders provides no basis in fact or law as to why the award is excessive when it falls within
statutory ranges. Further, Bright Builders ignores the fact that the jury's $70,000.00 award is a mere
3.5% of the $2,000,000.00 the Lanham Act authorized the jury to award. Moreover, as a primary
purpose of statutory damages is to deter infringement and given Bright Builders' owner's testimony
that should the same set of circumstances happen again today, he would not do anything differently,
the jury award also adequately and reasonably sets an amount meant to deter Bright Builders from
future infringement. Given these facts, the jury award is reasonable as a matter of law and Bright
Builders cannot demonstrate the excessiveness required in order to succeed on a motion for
remittitur.
CONCLUSION
WHEREFORE, as the Court is without explicit authority to remit a jury's damage award that
is within the statutory ranges set by Congress, and because Bright Builders has not and cannot argue
that the jury's award is excessive, Bright Builders' Motion for Remittitur and to Alter or Amend the
Judgment must be denied.

[SIGNATURE ON NEXT PAGE]

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NELSON MULLINS RILEY & SCARBOROUGH LLP
By: s/ John C. McElwaine
John C. McElwaine
Federal Bar No. 6710
E-Mail: [e-mail]

151 Meeting Street / Sixth Floor
Post Office Box 1806 (29402-1806)
Charleston, SC 29401-2239
[phone]
Jeffrey S. Patterson
Federal Bar No. 6603
E-Mail: [e-mail]

One Post Office Square, 30th Floor
Boston, MA 02109
[phone]
Admitted Pro Hac Vice
Morgan T. Nickerson
Massachusetts Bar No. 667290
E-mail: [e-mail]
One Post Office Square, 30th Floor
Boston, MA 02109
[phone]
Attorneys for Plaintiff Roger Cleveland Golf Company, Inc.
Charleston, South Carolina
April 25, 2011

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