Clearline Technologies Ltd. v. Cooper B-Line, Inc. et al

Filing 193

MEMORANDUM AND ORDER DENYING 156 MOTION for Enhanced Damages, GRANTING IN PART AND DENYING IN PART 155 MOTION Award of Interest, DENYING 159 MOTION to Amend, GRANTING IN PART AND DENYING IN PART WITHOUT PREJUDICE TO REFILING 184 O pposed MOTION for Supplemental Actual and Enhanced Damages Judgment, GRANTING IN PART AND DENYING IN PART 157 MOTION for Permanent Injunction,TERMINATING 181 Supplemental MOTION for Attorney Fees, DENYING 158 MOTION for Attorney Fees, DENYING 161 Renewed MOTION for Judgment as a Matter of Law Judgment, DENYING 160 Renewed MOTION for (Matter of Law) Judgment (Signed by Judge Keith P Ellison) Parties notified.(sloewe)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
CLEARLINE TECHNOLOGIES LTD.,
Plaintiff,
v.
COOPER B-LINE, INC., et al.,
Defendants.

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CIVIL ACTION NO. H-11-1420

MEMORANDUM AND ORDER
Pending before the Court are the following motions:
1) Clearline Technologies, Ltd.’s (“Clearline” or “Plaintiff”) Motion for Pleading
Amendment (Doc. No. 159);
2) Cooper B-Line Inc.’s (“Cooper”) Renewed Motion for Judgment as a Matter of Law
(“JMOL”) (Doc. No. 161);
3) Clearline’s Renewed Motion for JMOL (Doc. No. 160);
4) Clearline’s Motion for Enhanced Damages (Doc. No. 156);
5) Clearline’s Motion for Supplemental Actual and Enhanced Damages (Doc. No. 184);
6) Clearline’s Motion for Award of Interest (Doc. No. 155);
7) Clearline’s Motion for Permanent Injunction (Doc. No. 157); and
8) Clearline’s Motion for Attorney’s Fees and Costs (Doc. Nos. 158).
Upon considering the Motions, all responses thereto, the applicable law, and oral
arguments, the Court finds that:
1) Clearline’s Motion for Pleading Amendment must be DENIED;
2) Cooper’s Renewed Motion for JMOL must be DENIED;
3) Clearline’s Renewed Motion for JMOL must be DENIED;
4) Clearline’s Motion for Enhanced Damages must be DENIED;

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5) Clearline’s Motion for Supplemental Actual and Enhanced Damages must be
GRANTED IN PART AND DENIED IN PART WITHOUT PREJUDICE TO
REFILING;
6) Clearline’s Motion for Award of Interest must be GRANTED IN PART AND
DENIED IN PART;
7) Clearline’s Motion for Permanent Injunction must be GRANTED IN PART AND
DENIED IN PART;
8) Clearline’s Motion for Attorney’s Fees and Costs must be DENIED.
I.

BACKGROUND
This case involves claims of trade dress and trademark infringement. Clearline contends

that Cooper’s DURA-BLOK™ rooftop support products infringe on its C-PORT® products. At
trial, Clearline argued that Cooper infringed on two aspects of its trade dress: a yellow reflective
stripe and a yellow and black color scheme. It also argued the Cooper infringed on Clearline’s
C-PORT® trademark by using it in the meta-tags on Cooper’s website and in a tradeshow
catalog.
The jury returned a split verdict. (Doc. No. 151.) With regard to Clearline’s trade dress
claims, the jury found that the use of reflective yellow striping was not non-functional, and did
not create a likelihood of confusion as to the source, affiliation, or sponsorship of Cooper’s
product, two independent reasons for finding no trade dress infringement as to the yellow
reflective stripe. (Id. at 2, 4.) As to the yellow and black color scheme, the jury determined that
the color scheme was non-functional, had acquired a secondary meaning, and created a
likelihood of confusion as to the source, affiliation, or sponsorship of Cooper’s product. (Id. at
2–4.) These conclusions constitute a finding of trade dress infringement as to use of the yellow
and black color scheme. Furthermore, the jury concluded that Cooper’s actions relating to its
trade dress infringement were done willfully. (Id. at 5.) It awarded Clearline $2,660,000 in lost

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profits, and $3,200,000 in profit disgorgement damages for Cooper’s trade dress infringement.
(Id. at 6–7.)
As to Clearline’s trademark infringement claims, the jury found that Cooper’s use of the
C-PORT® trademark in meta-tags on its website did not create a likelihood of confusion as to
the source, affiliation, or sponsorship of Cooper’s product. (Id. at 8.) It found that Cooper’s use
of the C-PORT® trademark in a tradeshow catalog, however, did create a likelihood of
confusion as to the source, affiliation, or sponsorship of Cooper’s product, a finding that was
sufficient to find trademark infringement, as none of the other elements of a trademark
infringement claim were contested. (Id.) Nonetheless, the jury concluded that this trademark
infringement did not entitle Clearline to any amount of lost profits or profit disgorgement. (Id. at
10–11.)
Both parties have now filed numerous post-trial motions. The Court will first turn to
Clearline’s Motion for Pleading Amendment. It will then address the motions for JMOL filed by
both sides.

Finally, the Court will address the motions regarding remedies, starting with

damages.
I.

PLEADING AMENDMENT
A.

Legal Standard

Rule 15(b) provides in relevant part:
When issues not raised by the pleadings are tried by express or implied consent of
the parties, they shall be treated in all respects as if they had been raised in the
pleadings. . . . [F]ailure so to amend [the pleadings] does not affect the result of
the trial of these issues.
Fed. R. Civ. P. 15(b). “The purpose of the rule is to allow the course of the trial, rather than the
formal pleadings, to control the outcome.” Flannery v. Carroll, 676 F.2d 126, 131 (5th Cir.
1982). However, “it is not often that amendments are allowed after the close of evidence, since

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the opposing party may be deprived of a fair opportunity to defend and to offer any additional
evidence.” Triad Elec. & Controls, Inc. v. Power Sys. Eng’g, Inc., 117 F.3d 180, 193–94 (5th
Cir. 1997) (citing T.J. Stevenson & Co., Inc. v. 81,193 Bags of Flour, 629 F.2d 338, 370 (5th Cir.
1980)) (emphasis in original). Accordingly, “trial of unpled issues by implied consent is not
lightly to be inferred under Rule 15(b), [and] such inferences are to be viewed on a case-by-case
basis and in light of the notice demands of procedural due process.” Triad, 117 F.3d at 193–94
(citing Jimenez v. Tuna Vessel Granada, 652 F.2d 415, 422 (5th Cir. 1981)).
“[T]rial by implied consent turns on: whether the parties recognized that the unpleaded
issue entered the case at trial, whether the evidence that supports the unpleaded issue was
introduced at trial without objection, and whether a finding of trial by consent prejudiced the
opposing party’s opportunity to respond.” Portis v. First Nat’l Bank of New Albany, 34 F.3d
325, 332 (5th Cir. 1994) (citing United States v. Shanbaum, 10 F.3d 305, 312–13 (5th Cir.
1994)). A party does not consent to try “a new issue by introducing evidence or failing to object
to evidence when the evidence is relevant to pleaded issues in the case.” Moody v. FMC Corp.,
995 F.2d 63, 66 (5th Cir. 1993) (citing Jimenez, 652 F.2d at 422; Int’l Harvester Credit Corp. v.
E. Coast Truck and R.V. Sales, Inc., 547 F.2d 888, 890 (5th Cir. 1977)).
B.

Analysis

Clearline seeks leave to amend its complaint to add a claim that Cooper used its CPORT® trademark in its internet website code. (Doc. No. 159-1 at 2.) Plaintiff’s live complaint
alleges only that Cooper used Clearline’s trademark in its meta-tags, a specific type of code.
(Doc. No. 67 at 39.) Prior to trial, the parties filed a joint pre-trial order indicating that the
parties disagreed as to the level of specificity with which the trademark infringement question
ought to be posed to the jury. (Compare Doc. No. 128-8 at 27 with Doc. No. 128-9 at 15.)

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Clearline requested a broad question on the verdict form, asking whether Clearline had proven
by a preponderance of the evidence that Cooper infringed on Clearline’s trademark. (Doc. No.
128-8 at 27.) Cooper requested more granular questions on the verdict form. With regard to the
allegations of trademark infringement on Cooper’s website, Cooper requested the jury be asked
specifically whether Cooper’s use of Clearline’s trademark in its meta-tags was infringing.
(Doc. No. 128-9 at 15.)1 The Court, upon reviewing the competing jury instructions and the live
pleadings, and after hearing arguments on the jury charge, agreed with Cooper that the charge
and the verdict form should limit the trademark infringement claim to use of the C-PORT®
trademark in meta-tags. (See Doc. No. 161-1, Ex. A at 11, Doc. No. 161-2 at 8.)
At trial, the jury heard evidence that Cooper used the C-PORT® trademark in its alt-tags,
a code distinct from meta-tags. (Trial Tr. 181:18–184:24; 804:18–22; 921:7–13, 921:22–922:8,
926:25–927:3, 934:6–936:9; 957:14–21; 1097:16–1099:22.)

Some of this evidence was

presented by Cooper to rebut Clearline’s allegations that the C-PORT® mark was used in
Cooper’s meta-tags, by showing that, to the extent the mark was present in Cooper’s code, it was
in the alt-tags and not the meta-tags. (See, e.g., 1097:16–1099:22.) During deliberations, the
jury specifically asked whether meta-tags and alt-tags are interchangeable. (See Doc. No. 167-1
at 5.) After hearing argument from the parties, the Court instructed the jury that “[m]eta-tags and
alt-tags refer to different types of code used on web pages.” (Id.) The jury subsequently
answered “no” to Question 7, Part A, which asked, “Did Cooper B-Line’s use of the C-PORT
trademark in its meta-tags without the consent of Clearline create a likelihood of confusion as to
the source, affiliation, or sponsorship of Cooper B-Line’s product?” (Doc. No. 151 at 8.)

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A separate allegation of trademark infringement based on Cooper’s use of Clearline’s trademark in its tradeshow
catalogues was also before the jury.

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On this set of facts, the Court concludes that Clearline’s Motion for Pleading Amendment
must be denied. During the period leading up to trial, and during trial, Cooper clearly opposed
Clearline’s attempts to broaden its trademark infringement claim beyond the scope of the live
pleadings. See Portis, 34 F.3d at 332. This is evident from Cooper’s insistence on a jury charge
and verdict question limiting the inquiry to meta-tags. (Doc. No. 128-9 at 15; Doc. No. 142.)
Furthermore, Cooper relied on evidence that Clearline’s mark was in alt-tags, not meta-tags, to
defend itself against Clearline’s claim. (See, e.g., 1097:16–1099:22.) There is no doubt that
Cooper would be prejudiced by any grant of leave to amend at this stage. Cooper was never on
notice that its use of the C-PORT® trademark in alt-tags had entered the case as a claim. See
Moody, 995 F.2d at 66. Finally, allowing such an amendment after the trial would severely
prejudice Cooper. Cooper almost certainly would not have employed the trial strategy it did had
it been on notice that Clearline was alleging it had infringed on its mark in “internet website
code” generally. Instead, it likely would have focused its efforts on showing that use of the CPORT® trademark in its website code was not likely to cause confusion. If Clearline is allowed
to amend now, Cooper will be denied the opportunity to present any evidence showing that use
of the mark in its internet code generally, and in alt-tags specifically, was not likely to cause
confusion. See Triad, 117 F.3d at 193–94.
II.

JMOL
A.

Legal Standard

The Fifth Circuit reviews a district court’s ruling on a motion for judgment as a matter of
law de novo. See Cambridge Toxicology Grp., Inc. v. Exnicios, 495 F.3d 169, 179 (5th Cir.
2007). Judgment as a matter of law is appropriate “[i]f a party has been fully heard on an issue
during a jury trial and the court finds that a reasonable jury would not have a legally sufficient

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evidentiary basis to find for the party on that issue.” See Fed. R. Civ. P. 50(a)(1); Gomez v. St.
Jude Med. Daig Div. Inc., 442 F.3d 919, 927 (5th Cir. 2006). “The decision to grant a directed
verdict . . . is not a matter of discretion, but a conclusion of law based upon a finding that there is
insufficient evidence to create a fact question for the jury.” Omnitech Int’l v. Clorox Co., 11
F.3d 1316, 1323 (5th Cir. 1994) (citations omitted) (internal quotation marks omitted). A legally
sufficient evidentiary basis requires more than a mere scintilla of evidence. Hollywood Fantasy
Corp. v. Gabor, 151 F.3d 203, 211 (5th Cir. 1998).
The trial court is required to consider the entire record when considering a renewed
judgment as a matter of law motion. Reeves v. Sanderson Plumbing Prod., Inc., 530 U.S. 133,
149–50 (2000). Therefore, a court “should consider all of the evidence—not just that evidence
which supports the non-mover’s case—but in the light and with all reasonable inferences most
favorable to the party opposed to the motion.” Goodner v. Hyundai Motor Co., Ltd., 650 F.3d
1034, 1040 (5th Cir. 2011).
B.

Cooper’s Motion for JMOL (Doc. No. 161)

Cooper moves for judgment as a matter of law. It argues that: 1) the jury’s conclusion
that a yellow reflective stripe is functional mandates the conclusion that the yellow on black
color scheme also be found functional because black is the color of recycled rubber, a functional
material; 2) the yellow on black color scheme is a competitive necessity, an independent ground
for finding it functional; 3) there was insufficient evidence to establish secondary meaning; 4)
the jury’s finding that the use of a yellow stripe did not create a likelihood of confusion requires
a finding that the use of a yellow and black color scheme did not create a likelihood of
confusion; 5) there is insufficient evidence to uphold the jury’s finding of willful trade dress
infringement; 6) the damages award is unsustainable because award of lost profits and Cooper’s

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sales is a double recovery, and, in any event, there is insufficient evidence to support the
amounts awarded as lost profits and disgorgement profits; and 7) there is insufficient evidence to
support the jury’s finding of likelihood of confusion by Cooper’s use of the Clearline’s
trademark. (See generally Doc. No. 161.) The Court addresses each argument, and Clearline’s
response, in turn below.
1.

Trade Dress Infringement

To prove infringement of a trade dress, a plaintiff must show (1) that the dress is
protectable, and (2) that infringement has occurred. Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d
417, 425 (5th Cir. 1984), abrogated on other grounds by TrafFix Devices, Inc. v. Mrkg.
Displays, Inc., 532 U.S. 23 (2001); Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113,
1117–18 (5th Cir. 1991). “The plaintiff has the burden of proof on both of these issues.”
CICCorp., Inc. v. AIMTech Corp., 32 F. Supp. 2d 425, 434 (S.D. Tex. 1998). To be protectable
under the first prong, the trade dress must be nonfunctional and either be inherently distinctive or
have secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210
(2000). The second prong, infringement, occurs where “the use creates a likelihood of confusion
as to the ‘source, affiliation, or sponsorship’” of the alleged infringer’s product. Pebble Beach,
Co. v. Tour 18 I Ltd. (“Pebble Beach II”), 155 F.3d 526, 543 (5th Cir. 1998), abrogated on other
grounds by TrafFix Devices, 532 U.S. 23 (citing 15 U.S.C. § 1125(a)(1)(A)).
a.

Protectable Trade Dress
i.

Nonfunctional

To prevail on a claim of trade dress infringement, a plaintiff must show that the allegedly
infringing feature is not functional. Wal-Mart, 529 U.S. at 210. In TrafFix, the Supreme Court
held that the traditional test of functionality is whether the product feature “is essential to the use

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or purpose of the article or if it affects the cost or quality of an article.” 532 U.S. at 32 (citing
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)) (internal quotation marks
omitted). “Under this traditional definition, if a product feature is ‘the reason the device works,’
then the feature is functional. The availability of alternative designs is irrelevant.” EppendorfNetheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355 (5th Cir. 2002) (quoting TrafFix, 532
U.S. at 33–34). The word “essential,” as used in TrafFix, is a term of art; “[a] feature is essential
to the use or purpose of a product if it serves any significant function other than to distinguish a
firm’s goods or identify their source.” Poly-Am., L.P. v. Stego Indus., L.L.C., 3:08-CV-2224-G,
2011 WL 3206687, at *10 (N.D. Tex. July 27, 2011) (citing Qualitex, 514 U.S. at 165–66)
(internal quotation marks omitted). TrafFix also recognized a second test for functionality in
aesthetic features: “a functional feature is one the ‘exclusive use of which would put competitors
at a significant non-reputation-related disadvantage.’” TrafFix, 532 U.S. at 24 (quoting Qualitex
Co., 514 U.S. at 165). However, “[w]here the design is functional under the [traditional]
formulation there is no need to proceed further to consider if there is a competitive necessity for
the feature.” TrafFix, 532 U.S. at 33.
The Fifth Circuit has recognized that, although functional features cannot be protected, an
arbitrary combination of functional features, “the combination of which is not itself functional,
properly enjoys protection.” Taco Cabana, 932 F.2d at 1119. Other circuits, as well as district
courts in this circuit, have similarly recognized that individual functional features of a design
may still, as a combination, be deserving of trade dress protection. See Antioch Co. v. W.
Trimming Corp., 347 F.3d 150, 157–58 (6th Cir. 2003) (collecting cases from various circuits
recognizing this principle); Kodiak Prods. Co. v. Tie Down, Inc., No. 4:03–CV–1474–Y, 2004
WL 2599353, at *4 n.2 (N.D. Tex. Nov. 12, 2004); Chemlawn Servs. Corp. v. GNC Pumps,

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Inc., 690 F. Supp. 1560, 1571 (S.D. Tex. 1988) (“The parts of the Chemlawn Gun were
obviously designed to perform their particular functions; however, the specific exterior
configuration was arbitrarily selected. It was not necessary to copy the configuration of each of
the parts of the Chemlawn gun in order to effectuate those functions.”); but see Berg v. Symons,
393 F. Supp. 2d 525, 555 (S.D. Tex. 2005) (“Although ‘[a] unique combination of elements may
make a dress distinctive, [ ] the fact that a trade dress is composed entirely of commonly used or
functional elements might suggest that the dress should be regarded as unprotectible [sic] or
‘generic,’ to avoid tying up a product or marketing idea.’” (quoting Yurman Design, Inc. v. PAJ,
Inc., 262 F.3d 101, 118 (2d Cir. 2001)).
Based on the foregoing, Cooper’s argument that two functional features cannot, in
combination, be nonfunctional, is contrary to established precedent.2 However, as explained in
Antioch, “in order to receive trade dress protection for the overall combination of functional
features, those features must be configured in an arbitrary, fanciful, or distinctive way.” Antioch,
347 F.3d at 158 (citing TrafFix, 532 U.S. at 34). “In other words, where individual functional
components are combined in a nonarbitrary manner to perform an overall function, the producer
cannot claim that the overall trade dress is non-functional.” Id.; see also Leatherman Tool
Group, Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013 (9th Cir. 1999) (“[Plaintiff] is correct
that trade dress must be viewed as a whole, but where the whole is nothing other than an

2

In discussing the law on whether functional features may, in combination, be nonfunctional, the Court does not
lend any stamp of approval to Cooper’s framing of the black and yellow color scheme as a feature that is made up of
two functional elements. Cooper contends that the Court has held, as a matter of law, that black color of the support
blocks is functional. (Doc. No. 161 at 4.) The Court has not so ruled. In its Memorandum and Order on Cooper’s
Motion for Summary Judgment, the Court simply acknowledged that Cooper had put forward evidence that the
black color was functional. (Doc. No. 108 at 22.) However, the Court then went on to note that Clearline was not
contending that the black color, on its own, was a part of its trade dress. (Id. at 23.) While the Court never held that
the black color either was or was not functional, the parties did appear to agree, at a conference held on the jury
charge, that the functionality of the black color was “not in the case.” (Trial Tr. 1348:6–21.) For the purposes of
deciding Cooper’s Motion for JMOL, the Court assesses whether the jury verdict may be upheld even assuming that
the black color is functional.

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assemblage of functional parts, and where even the arrangement and combination of the parts is
designed to result in superior performance, it is semantic trickery to say that there is still some
sort of separate ‘overall appearance’ which is nonfunctional.”).
Cooper contends that there was no evidence that the reflective yellow striping and black
surface color were arranged arbitrarily. (Doc. No. 161 at 5.) 3 Cooper’s argument that no
evidence supports the jury’s conclusion that, although the use of a yellow reflective stripe is
functional, the overall yellow and black color scheme is not functional must be rejected. Here,
the jury could have concluded that although yellow reflective striping on a support block served
a functional purpose, the yellow and black color scheme, as actually used, did not have a
functional purpose.

For instance, the jury could have concluded that even though yellow

reflective striping is functional, Clearline’s particular arrangement of the yellow stripe on black
material, one horizontal stripe on the side of the support block, was arbitrary. Indeed, it is
difficult to argue that how yellow striping is placed on black material is anything other than
arbitrary. Clearline could have put the yellow stripe vertically, horizontally, toward the top,
toward the bottom, across the middle (as it did), it could have used two yellow stripes, it could
have placed it on both sides, and so on, ad infinitum. 4 The jury simply concluded, after

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Cooper also argues that any argument that the combination of yellow and black is protectable was dismissed at the
summary judgment stage when the Court granted summary judgment as to claims of trade dress infringement based
on the overall appearance of the C-PORT®. (See Doc. No. 180 at 1–3.) This is an inaccurate characterization of the
Court’s Memorandum and Order granting in part and denying in part Cooper’s Motion for Summary Judgment. The
Court granted summary judgment on a claim that the overall appearance of Clearline’s rooftop support products was
protectable trade dress, but the overall appearance included the shape, the dimensions, and the color scheme and
striping. (Doc. No. 108 at 10, 13–15.) The Court clearly considered the color scheme separately from the “overall
appearance” trade dress infringement claim. (See id. at 21–23.) Although the Court indicated that it was denying
summary judgment as to the functionality of the black and yellow color scheme because questions of fact remained
as to the functionality of the yellow stripe, the Court never held that if the yellow stripe was found to be functional,
no further assessment of the black and yellow color scheme would be necessary. (See id. at 23.) Clearline was
entitled to put forward at trial evidence that the combination of the two features was non-functional. Nothing in the
Court’s July 2, 2012 Memorandum and Order is to the contrary.
4
The hypothetical arrangements of yellow and black are not presented as alternative designs, which the Court
recognizes it may not consider under the traditional test. Eppendorf, 289 F.3d at 355. Rather, they are presented
merely to clarify what the Court means when it says it is how a yellow stripe is placed on a black surface that

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considering the demonstrative C-PORT® and DURA-BLOK™ and weighing the evidence of
potential safety benefits of the yellow on black color schemes, that the way the yellow striping
was combined with the black surface did not serve a functional purpose.
The Court is not convinced otherwise by the authority Cooper cites. In Eppendorf, the
Fifth Circuit specifically noted that the color scheme had a functional purpose: enabling users to
clearly see and measure liquid in a syringe. Eppendorf, 289 F.3d at 358. The Court certainly
does not quibble with the argument that two colors may combine to serve a joint functional
purpose, as they did in Eppendorf. But Eppendorf cannot be read as overruling clear language in
Taco Cabana that an arbitrary combination of functional features, “the combination of which is
not itself functional, properly enjoys protection.” Taco Cabana, 932 F.2d at 1119. Similarly, the
Court does not disagree that the overall appearance of a product is functional where the product
is designed such that the individual features all also work together to provide functionality. See
Antioch, 347 F.3d at 159 (finding that the “other features of Antioch’s album work in sync with
the dual strap-hinge to provide the user with the advertised benefits”) (emphasis added);
Leatherman, 199 F.3d at 1013 (holding that where “the arrangement and combination of
[functional] parts is designed to result in superior performance” there can be no claim for trade
dress infringement based on the overall appearance of a product) (emphasis added). Here,
however, the jury was entitled to conclude that the functional features were not specifically
arranged in a manner that provided added functionality, but were rather arranged arbitrarily.
Finally, the Court agrees that, in some cases, the combination of functional features results in a
whole that is nothing more than the sum of its parts. See Tie Tech, Inc., v. Kinedyne Corp., 296
F.3d 778, 785–86 (9th Cir. 2002) (refusing to grant trade dress protection to the overall

matters. The Court does not mean to suggest that it is the existence of these alternatives renders Clearline’s
combination non-functional.

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appearance of a product where the overall appearance was merely a combination of the handle,
rounded edges, and prong of a device designed to cut through wheelchair-securement webbing).
However, when the combination for which protection is sought is a color scheme, the whole is
not merely the sum of its parts; colors, unlike two entirely distinct functional features such as a
handle and a rounded edge, must be combined in some particular manner.
Cooper also argues that it is entitled to judgment as a matter of law on the question of
functionality because the yellow and black color scheme satisfies the secondary definition of
functionality, competitive necessity. Under the competitive necessity test, unlike under the
traditional test, alternative designs are relevant.

See Eppendorf, 289 F.3d at 356, 358

(recognizing that the competitive necessity test discussed in TrafFix is “virtually identical” to the
utilitarian test of functionality used in the Fifth Circuit prior to TrafFix, and noting that
alternative designs, though not relevant to the traditional test, are relevant to the utilitarian test);
Kodiak, 2004 WL 2599353, at *3 (“Only under [the competitive necessity] standard should a
court review the possibility of alternative designs.”). Here, the jury was presented with ample
evidence that alternative designs exist and compete in the field of rooftop support products.
(See, e.g., Trial Tr. 141:19–146:16.) The jury could have concluded, on the basis of this
evidence, that exclusive use of the particular yellow and black color scheme at issue would not
put rooftop support block competitors at a significant non-reputation-related disadvantage.
ii.

Secondary Meaning

To determine whether a trade dress has “secondary meaning,” courts inquire into “the
public’s mental association between the mark and the alleged mark holder” to determine whether
“in the minds of the public, the primary significance of a mark is to identify the source of the
product rather than the product itself.” Bd. of Supervisors for La. State Univ. Agric. and Mech.

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Coll. v. Smack Apparel Co., 550 F.3d 465, 476 (5th Cir. 2008) (citing Wal-Mart, 529 U.S. at
211). “[T]he showing required is that consumers associate the trade dress with a single source,
even if the name of that source is unknown,” at the time the alleged infringement began. 1
McCarthy on Trademarks and Unfair Competition § 8:8 (citation and internal quotation marks
omitted); see also Pebble Beach, Co. v. Tour 18 I Ltd. (“Pebble Beach I”), 942 F. Supp. 1513,
1559 (S.D. Tex. 1996), aff’d as modified by 155 F.3d 526, abrogated on other grounds by
TrafFix, 532 U.S. 23; Natural Polymer Int’l Corp. v. S & M Nutec, LLC, No.
Civ.A.3:03CV0461–P, 2004 WL 912568 at *6. (N.D. Tex. April 27. 2004); Sugar Busters LLC
v. Brennan, 177 F.3d 258, 269 n.8 (5th Cir. 1999). Courts in the Fifth Circuit consider a
combination of factors in this inquiry, including:
(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3)
amount and manner of advertising, (4) nature of use of the mark or trade dress in
newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer
testimony, and (7) the defendant’s intent in copying the trade dress.
Pebble Beach II, 155 F.3d at 543.

These factors in combination may show that consumers

consider a mark to be an indicator of source even if each factor alone would not
prove secondary meaning. Smack Apparel, 550 F.3d at 476 (citing Pebble Beach II, 155 F.3d at
541). Whether a mark has acquired secondary meaning is a question of fact. Amazing Spaces,
608 F.3d at 234.
There is ample support for the jury’s finding.

Clearline presented evidence that it

emphasized its color scheme at trade shows. (See Trial Tr. 147:20–149:8.) Clearline also
presented evidence of sales volume and industry recognition as early as 2003. (See, e.g., Trial
Tr. 148:11–149:8, 161:13–19.) The jury could have extrapolated that sales were made at least in
part because of Clearline’s color scheme branding at popular trade show booths. (See Trial Tr.
147:20–149:19.) Cf. Amazing Spaces, 608 F.3d at 249 (noting that volume of sales was not

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probative because plaintiff attempted to attract customers using other marks). Plaintiff also put
forward evidence of substantial spending on advertising which clearly depicted the yellow and
black color scheme. (See Trial Tr. 150:2–10; Pl.’s Exs. 198, 200.) While Cooper presents some
case law from other circuits suggesting that advertising is only relevant to the extent it
“encourages consumers to look for particular features as indicative of origin,” see Yankee Candle
Co. v. Bridgewater Candle Co., 259 F.3d 25, 44–45 (1st Cir. 2001), there is no such cabined
reading of the advertising factor in the Fifth Circuit.

Plaintiff also presented evidence of

Cooper’s customers directly contacting Clearline, without instructions from Cooper to do so.
(See, e.g., Pl.’s Exs. 59, 60; Peeler Dep. 182:10–17, 183:18–186:4, 192:5–193:17.)

This

evidence does not directly prove that customers contacted Clearline because of the black and
yellow color scheme on the products Cooper was selling; however, the Court does not believe it
must. The jury was free to infer, in light of the totality of the evidence, that Cooper’s customers
contacted Clearline because they associated the black and yellow color scheme with Clearline.
Finally, although survey evidence is admittedly the preferred evidence of secondary meaning,
Amazing Spaces, 608 F.3d at 248, the jury was presented with more than a scintilla of evidence
on the other factors from which it was entitled to conclude that Clearline’s yellow and black
color scheme had acquired secondary meaning.
b.

Infringement

Trade dress infringement occurs where “the use creates a likelihood of confusion as to the
‘source, affiliation, or sponsorship’” of the alleged infringer’s product.

Pebble Beach II, 155

F.3d at 543 (citing 15 U.S.C. § 1125(a)(1)(A)). “‘Likelihood of confusion’ means more than a
mere possibility; the plaintiff must demonstrate a probability of confusion.” Xtreme Lashes, LLC
v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009). Courts “examine the following

15

nonexhaustive ‘digits of confusion’ in evaluating likelihood of confusion: (1) the type of
trademark; (2) mark similarity; (3) product similarity; (4) outlet and purchaser identity; (5)
advertising media identity; (6) defendant’s intent; (7) actual confusion; and (8) care exercised by
potential purchasers.” Id. at 227. “No digit is dispositive, and the digits may weigh differently
from case to case, depending on the particular facts and circumstances involved.” Id. (quotation
marks omitted). “[L]ikelihood of confusion is typically a question of fact.” Id.
Cooper raises the same argument for infringement as it did for functionality: the jury’s
finding that Cooper’s use of the reflective yellow stripe did not create a likelihood of confusion
mandates the conclusion that Cooper’s use of the black and yellow color scheme also could not
have created a likelihood of confusion. However, just as the jury could have concluded that,
although the yellow stripe was functional, the particular black and yellow color scheme was not,
the jury also could have concluded that, while the yellow stripe on Cooper’s product did not,
alone, create a likelihood of confusion, the overall black and yellow color scheme used by
Cooper did. There is no inconsistency in such a conclusion and a new trial is not warranted.
Furthermore, the jury was presented with ample evidence as to the relevant factors to consider
for infringement.
2.

Willfulness as to Trade Dress Infringement

A defendant is liable for willful infringement if he acts “voluntarily and intentionally and
with the specific intent to cause the likelihood of consumer confusion . . . , to cause mistake or to
deceive.” Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338, 349 n.9 (5th Cir. 2002) (citations
and internal quotations omitted). “Intent to compete, however, is not tantamount to intent to
confuse.” Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 486 (5th Cir. 2004).

16

Here, the jury was presented with evidence that Cooper selected the yellow reflective
stripe and the black recycled rubber because of independent functional and aesthetic reasons.
(See Trial Tr. 670:16–24, 845:5–846:17, 851:7–852:16, 896:15–897:3.) However, it was also
presented with evidence that Cooper sent sample C-PORT® products to its manufacturer, sought
to make a product that would “look similar” and “still have all of the same features” as the CPORT®, and even tried, initially, to have the yellow stripe painted onto the recycled rubber, like
Clearline. (Pl.’s Ex. 77; see also Pl.’s Ex. 21; Trial Tr. 498:1–506:25, 650:17–651:24, 653:18–
655:8, 668:18–671:16, 727:23–728:10.) Weighing such competing evidence is the province of
the jury. The jury could have determined that a preponderance of the evidence here supported a
finding that Cooper’s desire to create a product with such a similar look evinced intent to
confuse, and not simply an intent to compete. Judgment as a matter of law is inappropriate.
3.

Trade Dress Infringement Remedies

Prevailing plaintiffs in trade dress infringement cases may recover under 15 U.S.C. §
1117(a), which provides that a “plaintiff shall be entitled. . . 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. . . . Such sum . . . shall constitute compensation and not a penalty.” 15 U.S.C. §
1117(a). See also Taco Cabana, 932 F.2d at 1126. Although the Lanham Act “itself is no
obstacle to a recovery of both plaintiff’s damages and defendant’s profits[,] . . . damages and
profits cannot be awarded simultaneously if it would result in over-compensation.” 1 McCarthy
on Trademarks and Unfair Competition § 30:73; see also GTFM, Inc. v. Solid Clothing Inc., No.
01 Civ. 2629(DLC), 2002 WL 31886612, at *6 (S.D.N.Y. Dec. 27, 2002); Holiday Inns, Inc. v.
Airport Holiday Corp., 493 F. Supp. 1025, 1028 (N.D. Tex. 1980), aff’d, 683 F.2d 931 (5th Cir.
1982). “An award of the defendant’s profits is not automatic, and is committed to the discretion

17

of the district court, whose decision [is reviewed] for an abuse of discretion.” Pebble Beach II,
155 F.3d at 554 (citations omitted).
Here, the jury was properly instructed that it could not include in its award of Cooper’s
profits any amount already included in its calculation of Clearline’s lost profits. Plaintiff’s
expert explained that his calculation method removed any duplicative damages, but took into
account the extent to which Cooper was unjustly enriched by, for instance, purchasing materials
from a cheaper supplier. (Trial Tr. 979:1–980:9.) Although Cooper put forward its own expert,
who questioned the propriety of including both lost profits and profit disgorgement premised on
the same sales (see Trial Tr. 1221:16–1223:5), the jury was entitled to credit the testimony of
Plaintiff’s expert. Cooper has not shown that the jury’s award constitutes an impermissible
double recovery for Clearline.
a.

Clearline’s Lost Profits

Proof of damages in a trademark and trade dress action is governed by the law of
damages of tort actions. 1 McCarthy on Trademarks and Unfair Competition § 30:72; see also
Broan Mfg. Co., Inc. v. Associated Distribs., Inc., 923 F.2d 1232, 1235 (6th Cir. 1991). As a
general rule, “damages are not permitted which are remote and speculative in nature.” Broan,
923 F.2d at 1235 (citations omitted). “This rule serves to preclude recovery, however, only
where the fact of damage is uncertain, i.e., where the damage claimed is not the certain result of
the wrong, not where the amount of damage alone is uncertain.” Id. (citations omitted) (emphasis
in original). “Thus, although to set a damage figure arbitrarily or through pure guesswork is
impermissible, [o]nce the existence of damages has been shown, all that an award of damages
requires is substantial evidence in the record to permit a factfinder to draw reasonable inferences

18

and make a fair and reasonable assessment of the amount of damages.” Id. at 1236 (citations and
internal quotation marks omitted).
Cooper argues that Clearline presented no evidence that Cooper would have continued its
relationship with Clearline. It contrasts this case with Broan, where the plaintiffs were never
advised that the relationship was under review, and both parties expected a long term
relationship. See Broan, 923 F.3d at 1237–38. Here, in contrast, Cooper submitted evidence that
it was dissatisfied with the relationship, particularly with Clearline’s level of supply, and that
Clearline was aware of Cooper’s dissatisfaction. (Trial Tr. 245:7–253:22, 833:11–834:6, 843:1–
14, 899:15–20.) However, Clearline also presented evidence that it was working to address the
backlog, that some improvement had been made, and that Cooper recognized that product flow
had improved. (Trial Tr. 443:18–447:4.) Broan itself acknowledges that “[s]ome uncertainty
regarding what might have happened in the absence of the copying scheme is not fatal.” Broan,
923 F.2d at 1237. The jury was entitled to conclude from the competing evidence that Clearline
had established the fact that it suffered lost profits as a result of infringement to a reasonable
degree of certainty. See id. (“Broan must establish the fact of damages with reasonable, not
absolute, certainty.”).
Cooper’s argument that the amount of lost profits awarded lacks any support in the record
must also be rejected. The jury was entitled to weigh competing expert testimony and evidence
in the record about Clearline’s supply capabilities, the likelihood that the relationship between
Cooper and Clearline would continue, the profits Clearline made selling to other customers, and
other relevant evidence put forward by the parties, and draw reasonable inferences in assessing
Clearline’s lost profits. There is nothing patently unreasonable about the jury’s conclusion to
award about half of what Clearline’s expert calculated to be Clearline’s lost profits.

19

b.

Cooper’s Profits

A plaintiff who proves infringement may be entitled to a defendant’s profits, to the extent
they are attributable to the defendant’s unlawful use of plaintiff’s trade dress or trademark. 15
U.S.C. § 1117(a); see also Pebble Beach II, 155 F.3d at 554–55. An award of profits is not
automatic, but discretionary. See Pebble Beach II, 155 F.3d at 554. The factors to be considered
in determining whether to award defendant’s profits
include, but are not limited to (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 Technologies, 313 F.3d at 349 (citations and internal quotation marks omitted).
“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(a). Thus,
the burden is on the infringer “to prove (1) which, if any, of those sales were not attributable to
the wrongful act, and (2) deductible costs and expenses to arrive at net profits.” 1 McCarthy on
Trademarks and Unfair Competition § 30:66 (citation and internal quotation marks omitted).
The principle was established decades ago by the Supreme Court, and it remains the law of the
land. See Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 206–07
(1942) (“The burden is the infringer’s to prove that his infringement had no cash value in sales
made by him. If he does not do so, the profits made on sales of goods bearing the infringing
mark properly belong to the owner of the mark.”); see also Venture Tape Corp. v. McGills Glass
Warehouse, 540 F.3d 56, 64 (1st Cir. 2008); Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d

20

595, 606–07 (6th Cir. 1991); Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505,
518 (9th Cir. 1985).
Cooper argues that it is Clearline who must prove that that Cooper’s profits are
attributable to its infringement. In support of this argument, Cooper cites Burndy Corp. v.
Teledyne Indus., Inc., 748 F.2d 767, 772 (2d Cir. 1984), Badger Meter, Inc. v. Grinnell Corp., 13
F.3d 1145, 1157 (7th Cir. 1994), Pebble Beach II, 155 F.3d at 554–55, and Quick Technologies,
313 F.3d at 350. Burndy does state that the burden is on the plaintiff to prove that a defendant’s
sales were attributable to its infringing use of plaintiff’s trademark. Burndy, 748 F.2d at 772.
However, this statement is contrary to the language of the Lanham Act, Supreme Court
precedent, and the majority of circuit precedent. This Court declines to follow Burndy. Badger
Meter, Pebble Beach II and Quick Technologies are all silent as to who bears the burden of
proving whether a defendant’s profits are attributable to infringement. None of these cases
controverts the well-established principle that profits may be presumed to be attributable to
infringement unless the defendant proves otherwise.
Cooper’s argument that the amount of its profits Clearline was awarded lacks any support
in the record must also be rejected. This argument lacks merit for the same reason Cooper’s
argument as to the amount of Clearline’s lost profits lacks merit. The jury was entitled to
consider Clearline’s expert’s calculation of Cooper’s profits, Cooper’s evidence of other factors
that contributed to its profits, the amount of profits already accounted for in its award of
Clearline’s lost profits, and any other relevant evidence put forward by the parties, and determine
what amount of Cooper’s profits was an appropriate award. See Pipitone v. Biomatrix, 288 F.3d
239, 250 (5th Cir. 2002) (holding that jury was entitled to consider expert’s testimony and the
predicate facts, and determine for itself how much weight to accord the expert’s opinion);

21

Grenada Steel Indus., Inc. v. Ala. Oxygen Co., Inc., 695 F.2d 883, 889 (5th Cir. 1983) (jury was
entitled to credit or discredit one or more expert opinions).
4.

Trademark Infringement

To prevail on a claim of trademark infringement, a plaintiff must show that a defendant’s
use of plaintiff’s trademark is “likely to cause confusion among consumers as to the source,
affiliation, or sponsorship of [defendant’s] products or services.” Scott Fetzer Co., 361 F.3d at
483 (citations and internal quotation marks omitted). “A likelihood of confusion means that
confusion is not just possible, but probable.” Id. (citation and internal quotation marks omitted);
Smack Apparel, 550 F.3d at 478. In determining whether a likelihood of confusion exists, the
Fifth Circuit considers the following “‘digits of confusion’: (1) the type of trademark allegedly
infringed; (2) the similarity between the two marks; (3) the similarity of the products or services;
(4) the identity of the retail outlets and purchasers; (5) the identity of the advertising media used;
(6) the defendant’s intent; (7) any evidence of actual confusion; and (8) the degree of care
exercised by potential purchasers.” Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671
F.3d 526, 532 (5th Cir. 2012) (citations omitted). “No one factor is dispositive, and a finding of
a likelihood of confusion does not even require a positive finding on a majority of these digits of
confusion.” Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 194 (5th Cir. 1998) (citations
and internal quotation marks omitted).
Here, Cooper does not dispute that it used an identical mark in its tradeshow catalogue.
For that reason alone, the jury’s finding of a likelihood of confusion has sufficient support in the
record. See 1 McCarthy on Trademarks and Unfair Competition § 23:20 (noting that cases
where a defendant uses an identical mark are “open and shut”).

Cooper’s argument that

tradeshow catalogues are not a wide-reaching mode of advertising is entirely inapposite. The

22

identity of the advertising media used is relevant to the extent that defendant uses similar ads, in
similar media, to target the same audience.

See MNI Mgmt., Inc. v. Wine King, LLC, 542 F.

Supp. 2d 389, 416 (D.N.J. 2008) (quoting Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 722
(3d Cir. 2004)). Cooper has cited no case law standing for the proposition that use of limited
advertising to reach only a particular audience (here, attendees of trade shows) warrants ruling,
as a matter of law, that there is no likelihood of confusion.
C.

Clearline’s Motion for JMOL (Doc. No. 160)

Clearline seeks JMOL arguing that: 1) Clearline has shown that it is entitled to the full
amount of damages requested related to infringement of its trade dress; 2) Clearline has shown
that it is entitled to the full amount of damages requested related to trademark infringement; and
3) Clearline has shown that Cooper infringed on its trademark in Cooper’s website code. The
first two points are addressed together.
1.

Damages

Clearline argues that it is entitled to the full amount of damages requested because
Cooper did not meet its burden to show that some of Cooper’s profits were not attributable to
infringement. Cooper reiterates the arguments it raised in support of its own JMOL as to the
inadequacy of Plaintiff’s damages evidence. It also points out that it presented evidence showing
that its sales of the DURA-BLOK™ may have been attributable to various other factors aside
from the infringing color scheme, including existing customer relationships, complementary
products, increased production capacity, and other features of the DURA-BLOK™. (Trial Tr.
1212:11–1213:21.)

23

Cooper’s arguments about the inadequacy of Clearline’s damages evidence have already
been addressed, and need not be rehashed. As explained supra Part II.B.3, the jury was entitled
to weigh competing evidence regarding Clearline’s lost profits, and Cooper, not Clearline, had
the burden to show that not all of Cooper’s profits were attributable to infringement. However,
Clearline’s Motion for JMOL on this point must also be denied. Just as the jury was entitled to
credit the testimony of Plaintiff’s expert as to damages, it was also entitled to credit the evidence
Cooper put forth showing that some of Cooper’s profits were the result of other factors and to
discount Plaintiff’s expert’s conclusions that Clearline suffered damages as a result of trademark
infringement. See Pipitone, 288 F.3d at 250; Grenada, 695 F.2d at 889.
2.

Trademark infringement

Clearline also seeks judgment as a matter of law that Cooper infringed on Clearline’s
trademark by using its mark in Cooper’s website code. As explained supra Part I, with regard to
Cooper’s use of Clearline’s C-PORT® trademark in its website code, Clearline claimed only that
Cooper infringed on its trademark by using the mark in meta-tags. Record evidence indicates
that Cooper used the C-PORT® mark in its alt-tags only, and not in its meta-tags. See supra Part
I.B. Because the evidence is legally sufficient to uphold the jury’s verdict on the claim before it,
and because, as explained supra Part I, Clearline is not entitled to amend its pleadings to put
forth a different claim, judgment as a matter of law is inappropriate.
III.

ENHANCED DAMAGES
A.

Legal Standard

A district court has “considerable discretion in fashioning an appropriate remedy for
infringement” under the Lanham Act. Taco Cabana, 932 F.2d at 1127. The statute provides that
“[i]n assessing damages the court may enter judgment, according to the circumstances of the

24

case, for any sum above the amount found as actual damages, not exceeding three times such
amount. Such sum . . . shall constitute compensation and not a penalty.” 15 U.S.C. § 1117(a).
“An enhancement of damages may be based on a finding of willful infringement, but cannot be
punitive.” Taco Cabana, 932 F.2d at 1127; see also Champion Cooler Corp. v. Dial Mfg., No.
3:09–CV–1498–D, 2010 WL 1644193, at *3 (April 22, 2010) (noting that “evidence of
willfulness alone, without proof that damages are not completely compensatory, does not entitle
a plaintiff to enhanced damages”).
Enhancement is appropriate where the damages awarded fail to adequately compensate a
plaintiff. Taco Cabana, 932 F.2d at 1127. The Fifth Circuit has recognized “[i]t is anomalous to
say that an enhancement of damages, which implies an award exceeding the amount found
‘compensatory,’ must be ‘compensatory’ and not ‘punitive.’” Id. It has further explained that
one appropriate use of the judicial power to enhance compensatory damages would be to
“provide proper redress to an otherwise undercompensated plaintiff where imprecise damage
calculations fail to do justice, particularly where the imprecision results from defendant's
conduct.” Id.
B.

Analysis

Clearline seeks enhanced damages, arguing that the jury’s award does not reflect the full
$12,866,718 in damages calculated by its expert.

It also points to Neil Krovatz’s testimony

cataloguing the financial difficulties Clearline faced as a result of Cooper’s infringement, and the
effect those difficulties had on Clearline’s ability to compete. (Trial Tr. 176:24–178:17.)
The Court does not find an award of enhanced damages warranted. First, as explained
supra Part II.C.1, the record contains evidence that would justify the jury’s decision to award
less than the full amount of damages Clearline requested. The Court sees no reason to question

25

the jury’s weighing of competing expert calculations, and other evidence probative of the
likelihood and extent of a continued relationship between Cooper and Clearline. Furthermore,
this is not a case where damages calculations are imprecise because of stonewalling by Cooper.
Taco Cabana, 932 F.2d at 1127; see also Neles-Jamesbury, Inc. v. Bill’s Valves, 974 F. Supp.
979, 983 n.8 (S.D. Tex. 1997) (declining to enhance damages, and noting that “there is no
indication that any imprecision was a result of Defendants’ conduct”). Finally, while Taco
Cabana does not bar a court from enhancing damages when the imprecision stems from
something other than a defendant’s obstruction, this Court declines to use its discretion to further
enhance an already substantial damages award based on nothing more than Plaintiff’s own
assertions that he suffered additional, un-quantified damages.
IV.

SUPPLEMENTAL DAMAGES
In its Motion for Supplemental Damages, Clearline seeks supplemental actual damages

for Cooper’s continued sales of the DURA-BLOKs™ after the adverse jury verdict. Clearline
requests that Cooper be ordered to provide its sales numbers from October 5, 2012, the date of
the verdict, to the present. Cooper has refused to do so to date. Clearline also requests that the
Court award supplemental actual damages to Clearline, and enhance those damages based on
Cooper’s willful continued infringement.
Neither the parties, nor this Court, could find any case law under the Lanham Act
addressing the question of supplemental damages for the continuing sale of infringing products
post-verdict. However, both parties agree that patent case law has addressed this question.
Patent law has recognized that awarding supplemental damages for post verdict infringement is
appropriate and, indeed, required. See, e.g., SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365,

26

1384 (Fed. Cir. 2013); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1212–13 (Fed.
Cir. 2010).
The provision governing damages in patent cases provides as follows:
Upon finding for the claimant the court shall award the claimant damages
adequate to compensate for the infringement . . . together with interest and costs
as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either
event the court may increase the damages up to three times the amount found or
assessed.
35 U.S.C. § 284. This provision appears, at first glance, rather similar to the Lanham Act’s
damages provision. See 15 U.S.C. § 1117(a) (providing for compensatory damages and leaving
district courts with discretion to award up to three times the amount of damages assessed by a
jury). Notably, however, § 284 does not contain the prohibition on punitive damages that exist
in the Lanham Act. See 15 U.S.C. § 1117(a) (providing that damages awarded under the
Lanham Act “shall constitute compensation and not a penalty”).

Accordingly, the second

paragraph of § 284 has been understood to allow a district court discretion to award enhanced
damages as a penalty for willful infringement. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1579
(Fed. Cir. 1996) (noting that § 284 provides for punitive damages); Beatrice Foods Co. v. New
England Printing and Lithographing Co., 923 F.2d 1576, 1579 (Fed. Cir. 1991) (“Under our
cases, enhanced damages may be awarded only as a penalty for an infringer’s increased
culpability, namely willful infringement or bad faith.”). This, of course, is directly contrary to
how the Fifth Circuit has interpreted the Lanham Act provision allowing a court to “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.”

27

15 U.S.C. § 1117(a); see Taco

Cabana, 932 F.2d at 1127 (recognizing that enhancement is appropriate only where the damages
awarded fail to adequately compensate a plaintiff).
Despite this important difference, the Court agrees with Clearline that patent law
provides useful guidance on the question of whether to award supplemental damages for postverdict infringement.

This is because patent case law makes clear that supplemental damages

for post-verdict infringement are required as compensation. See Finjan, 626 F.3d at 1212–13
(recognizing that a patentee is not “fully compensated” unless the damages award includes sales
following the verdict); Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1303 (Fed. Cir.
2009) (noting that “[a] damages award for pre-verdict sales of the infringing product does not
fully compensate the patentee because it fails to account for post-verdict sales”).
The Court concludes that the above case law supports some award of damages for the
post-verdict sales. However, at this time, there is no evidence in the record as to the amount of
post-verdict sales. Accordingly, the Court declines, at this stage, to determine the appropriate
formula for determining what proportion of Cooper’s post-verdict sales Clearline is entitled to,
and whether the supplemental damages ought to be enhanced because Cooper’s post-verdict
infringement was allegedly willful. The Court orders Cooper to produce to Clearline, within
fifteen days, its post-verdict sales figures of DURA-BLOKs™. Parties are expected to engage in
any discovery necessary to accurately determine the damages Clearline incurred from postverdict sales of DURA-BLOKs™.

The Court encourages parties to attempt to reach an

agreement on an appropriate supplemental damages award. If parties cannot reach an agreement,
however, Clearline should re-file its Motion for Supplemental Damages within forty-five days
and include briefing on the appropriate method of calculating damages stemming from post-

28

verdict sales.

The Court will evaluate whether an evidentiary hearing is necessary upon

reviewing the parties’ filings.
V.

INTEREST
A.

Legal Standard

Pre-judgment interest is not provided for in 15 U.S.C. § 1117(a). Am. Honda Motor Co.,
Inc. v. Two Wheel Corp., 918 F.2d 1060, 1064 (2d Cir. 1990). Circuits that have spoken on the
issue do agree that trial courts may award pre-judgment interest in trademark and trade dress
infringement cases. See 1 McCarthy on Trademarks and Unfair Competition § 30:93 (collecting
cases). However, circuit courts have reached very different conclusions as to when an award of
pre-judgment interest is appropriate. The Seventh and Tenth Circuits have held, in analyzing
claims under the Lanham Act, that “prejudgment interest should be presumptively available to
victims of federal law violations. Without it, compensation of the plaintiff is incomplete and the
defendant has an incentive to delay.” Gorenstein Enters., Inc. v. Quality Care-USA, Inc., 874
F.2d 431, 436 (7th Cir. 1989); see also United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205
F.3d 1219, 1236–37 (10th Cir. 2000). In contrast, the Second Circuit has held that pre-judgment
interest is to be reserved for “exceptional” cases. Am. Honda, 918 F.2d at 1064. In so holding, it
provided no explanation as to why this rule is desirable. See id. The Eighth Circuit has simply
held that a “district court has discretion to deny prejudgment interest in Lanham Act cases.”
EFCO Corp. v. Symons Corp., 219 F.3d 734, 743 (8th Cir. 2000). The Fifth Circuit has not
spoken on the question of when pre-judgment interest ought to be awarded for violations of the
Lanham Act. The Court is aware of at least one district court in Texas that has awarded prejudgment interest to a prevailing party in a trademark infringement case. See ErgoBilt, Inc. v.

29

Neutral Posture Ergonomics, Inc., No. Civ.A. 397CV2548L, 2004 WL 1041586, at *11 (N.D.
Tex. May 6, 2004).5
B.

Analysis

Clearline requests both pre-judgment interest and post-judgment interest on its entire
damages award, and on any attorneys’ fees awarded. Specifically, Clearline seeks pre-judgment
interest in the amount of five percent. It seeks post-judgment interest at the rate provided for in
28 U.S.C. § 1961(a). Cooper argues the Court should not award pre-judgment interest because
the jury was already instructed to make Clearline whole with its lost profit award. Cooper also
argues that pre-judgment interest should be awarded only in exceptional cases, citing Gorenstein
and American Honda. Cooper then argues that, even if pre-judgment interest is awarded, it
should only be awarded for Clearline’s lost profits, not for Cooper’s profits. Cooper also
disputes the five percent interest rate, arguing that a pre-judgment interest rate of 3.35 percent is
appropriate. Finally, Cooper does not dispute that, if post-judgment interest is awarded, it should
be in accordance with 28 U.S.C. § 1961(a).
Cooper’s assertion that the jury may have already awarded pre-judgment interest is
specious. The jury was never instructed to consider interest, and there is no suggestion that it
did. Carrying Cooper’s argument to its logical conclusion, pre-judgment interest should never be
awarded by a court, unless a jury was specifically instructed not to consider interest. The Court
declines to adopt such a position.
As explained supra Part V.A, there is no settled rule as to what circumstances justify an
award of pre-judgment interest. The circuits have taken a variety of approaches, none of which
5

One other district court has held that pre-judgment interest is inappropriate because 15 U.S.C. § 1117(a) does not
provide for it. See Neles-Jamesbury, 974 F. Supp. at 983. This position goes against all circuit precedent, and the
Court declines to follow Neles-Jamesbury on this point. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978
F.2d 947, 963 (7th Cir. 1992) (noting that no court of appeals has accepted the argument that “the Lanham Act’s
silence means that prejudgment interest is not available in an action for infringement under the Act”).

30

is binding on this Court. Accordingly, the Court has some latitude in fashioning an appropriate
rule as to when pre-judgment interest should be awarded. The Court is persuaded by the Seventh
Circuit’s reasoning that pre-judgment interest should be awarded in most cases. Gorenstein, 874
F.2d at 436.6 Where a plaintiff proves lost profits, pre-judgment interest ought to be awarded as
a matter of course; but for the infringement, the plaintiff would have had his lost profits, and
interest from being able to invest those profits. However, the Court is convinced by Cooper’s
argument that such interest should not be provided for any amount of Cooper’s profits the jury
awarded. But for the infringement, Clearline would not have possessed any portion of Cooper’s
profits that was not duplicative of its own lost profits. For instance, but for infringement,
Clearline would not have enjoyed the profits Cooper earned as a result of using a cheaper
supplier. (See Trial Tr. 979:1–980:9.) Accordingly, it has suffered no lost opportunity cost with
regard to Cooper’s profits. The Court is not persuaded by Clearline’s citation to 28 U.S.C. §
1961(a) in support of its argument that it is entitled to interest on all damages. 28 U.S.C. §
1961(a) provides the applicable rule for post-judgment interest; in that context, interest should,
of course, be “allowed on any money judgment in a civil case.”

28 U.S.C. § 1961(a).

Accordingly, Clearline is entitled to pre-judgment interest only on the jury’s award of lost
profits.
Clearline and Cooper disagree as to the appropriate rate to be used in calculating prejudgment interest.

Clearline states that the average prime rate from the date of accrual of the

claim to the date its motion was filed was five percent. Clearline’s assertion is contradicted by
6

Cooper argues that Gorenstein also provides that pre-judgment interest is only appropriate in cases where the
infringement was willful. While Gorenstein does note that an award of pre-judgment interest was especially
appropriate in that case because the violation was “intentional, and indeed outrageous,” it never suggests that prejudgment interest should be limited to those cases. Gorenstein, 874 F.2d at 436. Gorenstein could not be clearer in
holding that pre-judgment interest should be generally available. Id. (“The time has come, we think, to generalize,
and to announce a rule that prejudgment interest should be presumptively available to victims of federal law
violations.”).

31

the prime interest rates it itself provides. (See Doc. No. 155 at 3 (indicating that the prime
interest rate was five percent in May 2008 and 3.25 percent at the time Clearline filed its
motion).) It also argues, in the alternative, that the Court may use, instead of the prime interest
rate, the rate Cooper paid for unsecured loans, and urges the Court to presume that rate was five
percent, because Cooper has provided no evidence to the contrary. Clearline also asks this Court
to use its discretion to compound the interest rate at least annually. If the Court does award
interest, Cooper does not disagree with using the prime interest rate, but points out that
Clearline’s proposed rate is inaccurate and lists its own prime interest rate figures throughout the
relevant time period.
The Gorenstein court advised district courts to use the prime rate for fixing pre-judgment
interest cases where no statutory interest rate governs. Gorenstein, 874 F.2d at 436. The prime
interest rate “is a readily ascertainable figure which provides a reasonable although rough
estimate of the interest rate necessary to compensate plaintiffs not only for the loss of the use of
their money but also for the risk of default.” Id. The Gorenstein court recognized, however, that
while the prime rate is convenient, “a more precise estimate would be the interest rate paid by the
defendant for unsecured loans.” Id. at 437. While Gorenstein certainly allows a district court to
use the interest rate paid by a defendant for unsecured loans, the Court declines Clearline’s
invitation to assume what rate Cooper paid without any evidence. Pre-judgment interest will be
awarded in the amount of the average prime rate from the time Clearline’s infringement claims
accrued, in May 2008, until the date judgment is entered. The Court anticipates entering final
judgment the week parties reach an agreement on supplemental damages, or, if no agreement is
reached, the week the Court determines the amount of supplemental damages.

32

The Court further believes that compounding the interest would more closely return
Plaintiff to its position absent infringement.

After all, returns on an investment may be

reinvested and earn further returns. Accordingly, the Court uses its discretion to order that the
pre-judgment interest be compounded annually. Gorenstein, 874 F.2d at 437.
The Court is somewhat baffled by the parties’ apparent disagreement as to the average
prime rate, an easily ascertainable fact. Rather than providing unsupported assertions of the
prime rate at random intervals between May 2008 and May 2013, the parties should review the
detailed historical data available from the Federal Reserve regarding the prime rate. Once the
remaining issue of supplemental damages is resolved, the parties will be expected to consult
http://www.federalreserve.gov/releases/h15/data.htm to determine the average prime rate from
May 2008 until the date of final judgment. The parties then will be required to submit an agreed
proposal detailing the prime rate during the relevant time period and calculating the dollar
amount of pre-judgment interest Clearline is owed based on the foregoing.
Finally, Clearline will be entitled to post-judgment interest as provided in 28 U.S.C. §
1961 on the full amount of the money judgment “at a rate equal to the weekly average 1-year
constant maturity Treasury yield, as published by the Board of Governors of the Federal Reserve
System, for the calendar week preceding[] the date of judgment.” 28 U.S.C. § 1961. The
applicable weekly average 1-year constant maturity Treasury yield should be determined by
consulting http://www.federalreserve.gov/releases/h15/current/default.htm.
will be made when the Court enters final judgment.
VI.

PERMANENT INJUNCTION
A.

Legal Standard

33

The determination

To be entitled to a permanent injunction under the Lanham Act, a party must
demonstrate: “(1) that it has suffered an irreparable injury; (2) that remedies available at law,
such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the
balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
(4) that the public interest would not be disserved by a permanent injunction.” Flowserve Corp.
v. Hallmark Pump Co., 2011 WL 1527951, at *9 (S.D. Tex. Apr. 20, 2011) (quoting eBay, Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).
Some courts have suggested that a finding of likelihood of confusion can satisfy the
irreparable harm requirement. See Phillip Morris USA Inc. v. Lee, No. P-05-CA-0490-PRM, 547
F. Supp. 2d 667, 680 (W.D. Tex. 2008); Coach, Inc. v. Brightside Boutique, No. 1:11-CA-2-,
2012 WL 32941, at *6 (W.D. Tex. Jan 6, 2012) (collecting cases). Fifth Circuit precedent on
this point is conflicting. In Paulsson Geophysical Services, Inc. v. Sigmar, the Fifth Circuit
explicitly declined to “decide whether a court may presume irreparable injury upon finding a
likelihood of confusion in a trademark case.” 529 F.3d 303, 312–13 (5th Cir. 2008). It noted
that the Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C. rendered this a
complicated question. Id. In eBay, the Supreme Court rejected any bright line rule that a finding
of patent infringement entitled a party to an injunction. eBay, 547 U.S. at 393–94. The Court’s
decision in eBay concluding that a finding of patent infringement does not automatically entitle a
patentee to an injunction certainly casts doubt on prior case law suggesting that trademark or
trade dress infringement constitutes irreparable injury as a matter of law. See Aurelia HepburnBriscoe, Comment, Irreparable Harm in Patent, Copyright, and Trademark Cases After eBay v.
Mercexchange, 55 How. L.J. 643, 668–73 (2012). However, more recently, the Fifth Circuit
indicated that presuming irreparable injury Lanham Act cases remains appropriate. Abraham v.

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Alpha Chi Omega, 708 F.3d 614, 627 (5th Cir. 2013) (citing 1 McCarthy on Trademarks and
Unfair Competition § 30:2) (“All that must be proven to establish liability and the need for an
injunction against infringement is the likelihood of confusion—injury is presumed.”).
These conflicting precedents make a district court’s determination as to the propriety of
an injunction in a variety of intellectual property cases more difficult than it perhaps once was.
Nonetheless, certain principles provide valuable guideposts. Where the infringement involves
direct competitors, a finding of irreparable harm may well be appropriate. See z4 Techs., Inc. v.
Microsoft Corp., 434 F. Supp. 2d 437, 440 (E.D. Tex. 2006). Continuing infringement, even
after an adverse verdict, is surely sufficient to show inadequacy of remedies at law. 1 McCarthy
on Trademarks and Unfair Competition § 30:2 (“If an injunction were denied, the court would be
telling plaintiff to sit by and watch defendant continue to violate the law and infringe upon
plaintiff’s rights until such time as plaintiff decided to sue again for money damages as
compensation for the past injury incurred.”). In contrast, a trial court has substantial discretion to
deny an injunction where infringement was inadvertent and is not likely to recur. See, e.g.,
Schutt Mfg. Co. v. Riddell, Inc., 673 F.2d 202, 207 (7th Cir. 1982); In re Circuit Breaker Litig.,
860 F. Supp. 1453, 1456 (C.D. Cal. 1994). Where a district court does issue an injunction, it has
substantial discretion to tailor the injunction in light of the equities.

See 1 McCarthy on

Trademarks and Unfair Competition § 30:3 (collecting cases where the courts have allowed
defendants to use infringing marks with a disclaimer, and allowing defendants to sell off existing
stock). If the infringement was willful, however, a court does not have to balance the hardships.
United States v. Marine Shale Processors, 81 F.3d 1329, 1358–59, 1359 n.16 (5th Cir.
1996); Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325, 1333–34 (7th Cir.
1977). Finally, the “public interest is always served by requiring compliance with Congressional

35

statutes such as the Lanham Act and by enjoining the use of infringing marks.” Quantum Fitness
Corp. v. Quantum LifeStyle Ctrs., L.L.C., 83 F. Supp. 2d 810, 832 (S.D. Tex. 1999); see also TMobile USA Inc. v. Shazia & Noushad Corp., No. 3:08–CV–00341, 2009 WL 2003369, at *4
(N.D. Tex. July 10, 2009).
B.

Analysis

Clearline argues that it is entitled to a permanent injunction enjoining Cooper from using
a yellow and black color scheme because Cooper continues to sell the infringing products to this
day. Cooper does not address the factors for injunctive relief, and instead merely argues that
Clearline did not succeed on the merits of its trade dress claims. The Court has already rejected
this argument supra Part II.B.1. Clearline also argues that it is entitled to a permanent injunction
barring Cooper from using the C-PORT® mark. Cooper argues that this would be unwarranted
because it has not threatened to continue its accidental use of Clearline’s trademark.
This record supports a finding of irreparable harm from Cooper’s use of an infringing
black and yellow color scheme. The jury found likelihood of confusion, and here, Clearline and
Cooper are direct competitors.

At the time Clearline filed its motion, Cooper’s website

continued to advertise the black and yellow DURA-BLOKs™.

(Doc. No. 157-1 ¶ 4.)

Furthermore, at oral argument, Cooper admitted that it continued to sell the infringing DURABLOKs™ to this day. Cooper’s sales of its infringing rooftop support products have continued
to exclude Clearline from reaching certain customers, supporting a finding of irreparable harm.
See z4, 434 F. Supp. 2d at 440. Furthermore, this is a clear case where remedies at law are
inadequate. Cooper has continued to sell the DURA-BLOKs™ despite a jury verdict against it.
Denying Clearline an injunction would leave it in the untenable position of continuously suing
for past damages.

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One factor weighing somewhat against issuing a permanent injunction is Cooper’s
apparent intention to transition, in the very near future, to a different color scheme. Clearline
alerted the Court that, in an April 19, 2013 email blast to its distributors, Cooper announced that
it was switching to a red and black color scheme on its DURA-BLOKs™. (See Doc. No. 192-1.)
At oral argument, Cooper confirmed that it would be introducing the new color scheme
sometime around June 10, 2013. “It is within the discretion of the trial court to grant or deny an
injunction against conduct which has ceased and is not likely to recur.” See, e.g., Schutt, 673
F.2d at 207; K&G Men’s Co. v. Carter, No. 10–309–JJB–SCR, 2010 WL 4135202, at *1 (M.D.
La. Oct. 19, 2010). However, here, Cooper has only taken steps to cease its infringing conduct,
but has not actually done so. Indeed, Cooper’s actions come months after ignoring a jury verdict
against it. Furthermore, at oral argument, Cooper indicated that, while it was developing a new
color scheme, it would prefer to keep using the yellow and black color scheme. Given Cooper’s
disregard of the jury verdict to date, the Court is not at all convinced that Cooper would not
revert to its original color scheme if it was unhappy with the red and black color scheme.
As discussed previously, the evidence can sustain the jury’s finding of willfulness. See
supra Part II.B.2. However, as noted supra Part II.B.2, Cooper also presented evidence that it
merely combined two functional features with desirable benefits. While the Court need not, on
the basis of this evidence, grant judgment as a matter of law on the question of willfulness,
Cooper’s evidence is sufficient to convince this Court that this is not a clear case of willful
infringement. See infra Part VII.B. As such, the Court declines to use its discretion in a manner
that does not balance the equities.

Cf. Marine Shale Processors, 81 F.3d at 1358–59

(recognizing that in cases where a defendant’s conduct was willful, a court was not required to
balance the equities). Balancing the equities, however, poses little difficulty in this instance.

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Cooper has already been working on a new color scheme for several months, and will not have
difficulty transitioning. Finally, enjoining continued trade dress infringement is in the public
interest. See Quantum Fitness, 83 F. Supp. 2d at 832; T-Mobile, 2009 WL 2003369, at *4.
The factors support a permanent injunction enjoining Cooper from continued use of the
infringing black and yellow color scheme. However, Clearline is not entitled to the broad
injunction it seeks barring Cooper from using any black and yellow color scheme. While the
facts support a conclusion that the particular combination of black and yellow was not functional
and likely to cause confusion, see supra Part II.B.1.a–b, the jury verdict cannot, and should not,
be interpreted to mean that all black and yellow color schemes are off-limits. After all, the jury
found the yellow reflective striping used by Cooper functional and not likely to cause confusion,
and the record contains evidence that the black color was functional. (Doc. No. 151 at 2, 4; Trial
Tr. 849:8–851:6.) It is entirely possible that another combination of these features would be
either functional or not likely to cause confusion. Accordingly, Cooper is immediately and
permanently enjoined from using the particular black and yellow color scheme it has been using
on its DURA-BLOKs™, and any other black and yellow color scheme that would be confusingly
similar to the black and yellow color scheme Clearline has been using on its C-PORTs®.
In contrast, the record does not warrant permanently enjoining Cooper from using the CPORT® mark. The evidence showed that Cooper had recognized the need to remove the CPORT® mark from its internet code and tradeshow catalogues, and taken steps to do so, well
before the jury verdict, although it had clearly missed some references. (See, e.g., Trial Tr.
806:4–809:22, 899:25–900:9, 933:19–935:14, 1174:17–1175:11.) Cooper represented, at oral
argument, that it no longer retained any references to the C-PORT® mark in its internet code or
its tradeshow catalogues. Clearline agreed that it was not aware of any continuing infringement

38

of its trademark. In circumstances like these, where the infringement may well have been
inadvertent and recurrence is unlikely, an injunction is not warranted. See, e.g., Schutt, 673 F.2d
at 207; Circuit Breaker Litig., 860 F. Supp. at 1456.
VII.

ATTORNEYS’ FEES
A.

Legal Standard

Clearline seeks attorneys’ fees under the Lanham Act. “The court in exceptional cases
may award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). “The
prevailing party has the burden to demonstrate the exceptional nature of a case by clear and
convincing evidence.” Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1390 (5th Cir. 1996)
(citing CJC Holdings, Inc. v. Wright & Lato, Inc., 979 F.2d 60, 65 (5th Cir. 1992)).
“An exceptional case is one where the violative acts can be characterized as ‘malicious,’
‘fraudulent,’ ‘deliberate,’ or ‘willful.’” Id. (citing Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486,
491 (5th Cir. 1992)); see also Taco Cabana, 932 F.2d at 1127. The Fifth Circuit has recognized
that many courts “require a showing of a high degree of culpability on the part of the infringer,
for example, bad faith or fraud,” before a case can be found exceptional. Seven-Up, 86 F.3d at
1390 (citing Tex. Pig Stands, Inc. v. Hard Rock Café Int’l, 951 F.2d 684, 696–97 & n. 25 (5th
Cir. 1992); Moore, 960 F.2d at 491 & n.2.). It is not clear whether the Fifth Circuit has itself
adopted such a requirement. Compare Moore, 960 F.2d at 492 (applying the standard requiring a
high degree of culpability, such as bad faith or fraud) with Tex. Pig Stands, 951 F.2d at 697 n.25
(declining to draw a “bright line” requiring that a case involve “very egregious conduct” before it
can be deemed exceptional). It is clear, however, that “[a] jury finding of willfulness does not
bind the trial court in determining whether [a] case is ‘exceptional.’” Tex. Pig Stands, 951 F.2d
at 697. Furthermore, deliberate copying will likewise not render a case per se exceptional. CJC

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Holdings, 979 F.2d at 65. In fact, “[a] district court normally should not find a case exceptional
where the party presents what it in good faith believes may be a legitimate defense.” Id. at 66
(citation omitted).
Clearline also moves for attorneys’ fees under the Illinois Uniform Deceptive Trade
Practices Act (“DTPA”). The standard for liability under the DTPA is the same as that under the
Lanham Act. Tarin v. Pellonari, 625 N.E.2d 739, 745–46 (Ill. Ct. App. 1993). The DTPA
provides that “[c]osts or attorneys’ fees or both may be assessed against a defendant only if the
court finds that he has willfully engaged in a deceptive trade practice.” 815 Ill. Comp.
Stat. 510/3. “[A]ttorneys’ fees are awarded to the prevailing party under the DTPA under a
similar analysis as the Lanham Act.” Neuros Co., Ltd. V. KTrubo, Inc., No. 08–cv–5939, 2013
WL 1706368, at *4 (N.D. Ill. April 17, 2013).
B.

Analysis

Clearline argues that it is entitled to attorneys’ fees under the Lanham Act or, in the
alternative, under the DTPA because this case is exceptional, pointing to the jury’s finding of
willfulness. It requests approximately $1.5 million in attorneys’ fees. Cooper argues that
attorneys’ fees are inappropriate because Clearline should not be the prevailing party for the
reasons argued in Cooper’s JMOL. These arguments have been thoroughly addressed. See
supra Part II.B. Cooper next argues that this case is not exceptional because Cooper merely
copied functional features, and this case does not involve the high level of culpability generally
found in cases where attorneys’ fees are awarded. It also argues that Clearline’s proof of fees is
inadequate.
The Court agrees with Cooper that this case is not exceptional. Although the jury was
presented with sufficient evidence to conclude that that the infringement was willful by a

40

preponderance standard, see supra Part II.B.2, the Court does not find that Cooper infringed
willfully by a clear and convincing standard. Seven-Up, 86 F.3d at 1390. The record also
contains a significant amount of evidence that the black recycled rubber and the yellow color
were each selected for their functional benefits. See supra Part II.B.2. This evidence suggests
that Cooper may have infringed on a nonfunctional combination of these functional features
unintentionally, out of a desire to obtain the benefits of the individual functional features.
Although the Court does not find indefensible the jury’s determination that Cooper’s
infringement under a preponderance standard, it does believe that, at most, there was only
enough evidence to support a finding of willfulness by a preponderance, and not by clear and
convincing evidence.
Furthermore, the Court does not agree with Clearline that this is a case of bad faith and
“brazen imitation.” Taco Cabana, 932 F.2d at 1128. Unlike Taco Cabana, which involved
infringement of the trade dress a plaintiff had in the appearance of a chain of Mexican
restaurants, this case involves a combination of features that, independently, are likely
functional. Cooper may well have copied Clearline’s trade dress because it, in good faith,
believed there was nothing protectable about it. While the jury ultimately concluded that the
combination was protectable, Cooper has surely presented “what it in good faith believe[d] [to]
be a legitimate defense.” CJC Holdings, 979 F.2d at 66.
Based on the foregoing, the Court concludes this is not an exceptional case. Accordingly,
Clearline’s request for attorneys’ fees under the Lanham Act is denied. Because attorneys’ fees
are provided under the DTPA under a similar analysis as the Lanham Act, and because the
Illinois statute similarly vests this Court with discretion to award or not award fees even in cases

41

of willful infringement, the Court also declines to award fees in this case under the DTPA. See
815 Ill. Comp. Stat. 510/3; Neuros, 2013 WL 1706368, at *4.
VIII. CONCLUSION
For the reasons discussed above, the Court holds as follows:
1) Clearline’s Motion for Pleading Amendment (Doc. No. 159) is DENIED;
2) Cooper’s Renewed Motion for JMOL (Doc. No. 161) is DENIED;
3) Clearline’s Renewed Motion for JMOL (Doc. No. 160) is DENIED;
4) Clearline’s Motion for Enhanced Damages (Doc. No. 156) is DENIED;
5) Clearline’s Motion for Supplemental Actual and Enhanced Damages (Doc. No. 184)
is GRANTED IN PART AND DENIED IN PART WITHOUT PREJUDICE TO
REFILING as follows:
•

an award of supplemental damages is appropriate;

•

Cooper must produce to Clearline, within fifteen days, its post-verdict sales
figures of DURA-BLOKs™;

•

parties are to engage in any necessary discovery and negotiate an appropriate
amount of supplemental damages;

•

in the event parties cannot reach an agreement on supplemental damages,
Clearline should re-file its Motion for Supplemental Damages within forty-five
days;

6) Clearline’s Motion for Award of Interest (Doc. No. 155) is GRANTED IN PART
AND DENIED IN PART as follows:
•

pre-judgment interest will be awarded in the amount of the average prime rate
from May 2008 until the date judgment is entered;

•

pre-judgment interest will be compounded annually;

•

once supplemental damages are resolved, parties will submit an agreed proposal
detailing the prime rate during relevant time period based on data published by
the Federal Reserve and calculating the dollar amount of pre-judgment interest
Clearline is owed;

•

Clearline will be awarded post-judgment interest at the weekly average 1-year
constant maturity Treasury yield for the calendar week preceding the date of
judgment;

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7) Clearline’s Motion for Permanent Injunction (Doc. No. 157) is GRANTED IN
PART AND DENIED IN PART as follows:
•

Cooper is immediately and permanently enjoined from using the black and yellow
color scheme it has been using on its DURA-BLOKs™, and any other black and
yellow color scheme that would be confusingly similar to the black and yellow
color scheme Clearline has been using on its C-PORTs®;

•

No permanent injunction shall issue with respect to Clearline’s trademark
infringement claims; and

8) Clearline’s Motion for Attorney’s Fees and Costs (Doc. Nos. 158) is DENIED.

IT IS SO ORDERED.
SIGNED at Houston, Texas, on this the 3rd day of June, 2013.

KEITH P. ELLISON
UNITED STATES DISTRICT JUDGE

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