United States District Court, E.D. North Carolina, Western Division
T&RRENCE W. BOYLE UNITED STATES DISTRICT JUDGE
cause comes before the Court on plaintiffs motion for a
pretrial conference and trial setting. [DE 318]. The matter
has been fully briefed and is ripe for disposition. For the
reasons discussed below, plaintiffs motion is denied and
final judgment is entered in this case.
Court incorporates by reference as if fully set forth herein
the factual and procedural background included in its order
granting partial summary judgment. [DE 149].
December 8, 2015, the Court granted Variety Stores,
Inc.'s (hereinafter "Variety") partial summary
judgment in its favor on its claim for trademark infringement
and unfair competition under federal law and trademark
infringement and unfair and deceptive practices under state
law. [DE 149]. In its order, the Court found that Variety
owns a protectable interest in the BACKYARD marks and that
Wal-Mart Stores, Inc.'s (hereinafter Walmart) competing
use created a likelihood of confusion. Id.
Variety moved for a bench trial focused on an accounting and
disgorgement of profits which is an equitable remedy not
necessitating a jury trial. [DE 157]. The Court granted this
motion, [DE 211], and an evidentiary bench trial on these
issues was held on October 11 and 12, 2016. The Court, in a
written order issued on November 22, 2016, found that
Walmart's sales of infringing products during the
relevant time period in the states where Variety and Walmart
both operated totaled $395, 316, 314.71, that Walmart proved
appropriate costs to be deducted in the amount of $362, 794,
643.31, and therefore found that profit in the amount of $32,
521, 671.40 could be attributed to sales of the infringing
mark. [DE 316]. After considering several equitable factors
the Court determined, in its discretion, that the profit
figure derived above was a just award to plaintiff in these
circumstances and ordered that Walmart disgorge the amount to
on December 21, 2016, Variety filed the instant motion
requesting that the Court set a date for a jury trial on the
issue of damages, arguing that the Lanham Act allows it to
recover damages in addition to an equitable disgorgement of
profits and that it reserved its right to such a jury trial
on damages. [DE 318]. Walmart responded in opposition, [DE
321], Varietyvfiled a reply, [DE 328], and the
Court's written opinion now follows.
action, Variety asserted claims against Walmart under the
Lanham Act, 15 U.S.C. § 1114, 15 U.S.C. § 1125,
North Carolina trademark law, N.C. Gen. Stat. § 80-11,
at common law, and the North Carolina Unfair and Deceptive
Trade Practices Act, N.C Gen. Stat. § 75-1.1 et
seq. Following its order on plaintiffs motion for
partial summary judgment, in which the Court found Walmart
liable for trademark infringement, the Court made an
equitable determination of recovery on behalf of the
plaintiff. The Court must now consider whether, in addition
to its equitable award, Variety is also entitled to a jury
trial on actual damages.
Lanham Act states in relevant part:
When a violation of any right of the registrant of a mark . .
. shall have been established ... the 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. The court shall
assess such profits and damages or cause the same to be
assessed under its direction ... In assessing damages the
court may enter judgment, according to the circumstances of
the case, for any sum above the amount found as actual
damages, not exceeding three times such amount. If the court
shall find that the amount of the recovery based on profits
is either inadequate or excessive the court may in its
discretion enter judgment for such sum as the court shall
find to be just, according to the circumstances of the case.
Such sum in either of the above circumstances shall
constitute compensation and not a penalty.
15 U.S.C. § 1117(a). In Synergistic Intern., LLC v.
Korman, the Fourth Circuit set forth the following six
factors for a court to weigh equitably when determining
whether monetary relief under the Lanham Act, 15 U.S.C.
§ 1117(a), is appropriate, and if so, the amount
(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) and whether this
is a case of palming off.
470 F.3d 162, 175-76 (4th Cir. 2006). A court may also
consider other factors "that may be relevant in the
circumstances, " id. at 176, and "the
court has broad discretion to award any monetary relief
necessary to serve the interests of justice." Shell
Oil Co. v. CommercialPetroleum, ...