Bernard Carl v. BernardJCarl.com, No. 09-2325 (4th Cir. 2010)
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UNPUBLISHED UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT No. 09-2325 BERNARD J. CARL, Plaintiff - Appellant, v. BERNARDJCARL.COM; FABRICE MARCHISIO; COTTY VIVANT MARCHISIO & LAUZERAL, Defendants Appellees, and NS HOLDING, INC., f/k/a JOHN DOE #1; JOHN DOE #2, Network Solutions, Incorporated; Defendants. Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. T. S. Ellis, III, Senior District Judge. (1:07-cv-01128-TSE-TRJ) Submitted: October 21, 2010 Decided: December 3, 2010 Before NIEMEYER, DUNCAN, and AGEE, Circuit Judges. Affirmed in part, vacated in part, and remanded by unpublished per curiam opinion. Bernard J. Carl, Appellant Pro Se. Unpublished opinions are not binding precedent in this circuit. 2 PER CURIAM: Bernard J. Carl brought suit in the district court against French law firm Cotty Vivant Marchisio & Lauzeral ( CVM&L ) and one of its partners, Fabrice Marchisio. In the district court, Carl alleged that Marchisio and CVM&L purchased the domain message name under a bernardjcarl.com false identity and posed claiming that a Carl defamatory owed them money for services performed as a subcontractor for a law firm hired by Carl to assist with the acquisition of a French luxury brand. Carl brought claims under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. §§ 1125(d)(1), (2) (2006), the Lanham Act, federal anti-cyberpiracy law, 15 U.S.C.A. § 8131 (2010), and Virginia state law trademark and libel. The Defendants did not file responsive pleadings, and Carl moved for default judgment. The district court dismissed all of Carl s claims as well as his state law trademark claim. federal The court found Marchisio and CVM&L liable on Carl s defamation claim and awarded $10,000 in compensatory damages, but also found that Carl had not established that Marchisio and CVM&L had acted with actual malice, and therefore denied his request for punitive damages. The attorney s fees. court also declined Carl appeals. to award Carl costs and For the reasons that follow, we 3 affirm in part, vacate in part, and remand for further the district proceedings. Carl s court first misinterpreted cyberpiracy law. claim 15 on appeal U.S.C.A. is § 8131, that the federal anti- The statute provides: Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person. 15 U.S.C.A. § 8131(1)(A). The district court determined that Carl had not shown that Marchisio or CVM&L had the intent to profit by selling the domain name back to Carl or to a third party. the record, and we agree. We have reviewed The statute s language is specific, and while the defendants may have been attempting to profit, they did not do so in the means specified in the statute. Carl next concedes that the district court was correct to dismiss his Lanham Act and state law trademark claims because this court has rejected the doctrine in trademark cases. F.3d 309, 316 initial confusion See Lamparello v. Fallwell, 430 (4th Cir. 2005). should revisit that decision. interest He argues, though, that we The merits of this request aside, a panel of this court cannot overrule the decision of a prior 4 United panel. States v. Simms, 441 F.3d 313, 318 (4th Cir. 2006). Carl next argues that the district court erred in determining that Marchisio and CVM&L did not act with actual malice and therefore could not be subject to punitive damages for defamation. award punitive facts When pertinent reviewing damages, to a the a trial reviewing court s court punitive-damage decision must award examine and to the exercise independent judgment to determine whether the record establishes Williams v. Garraghty, actual malice with convincing clarity. 455 S.E.2d 209, 217 quotations omitted). (Va. 1995) (internal citations and Conversely, a trial court s decision not to award damages is also reviewed independently. In order to receive punitive damages in a defamation case under Virginia law, the convincing plaintiff evidence must prove that the actual malice defendant by clear and knew the either statements were false at the time he made them, or that he made them with a reckless disregard for their truth. Government Micro Resources, Inc. v. Jackson, 624 S.E.2d 63, 70 (Va. 2006) (internal citations omitted). Our review of the record persuades us that Carl has made a sufficient showing of actual malice to support an award of punitive damages. and CVM&L at least The evidence demonstrates that Marchisio acted recklessly 5 when they made libelous statements concerning a purported debt owed by Carl. We find particularly compelling the fact that the Defendants in this matter were attorneys who knew they never contracted with Carl, that they represented to Carl s former counsel a desire to avenge an insult, and that they went to great lengths to conceal their identities. Because the Defendants reckless disregard for truth is sufficient to establish malice, the district court improperly concluded that it could not award punitive damages. However, whether to award punitive damages, and the amount of any such award, are matters within the district court s discretion. See Hamilton Dev. Co. v. Broad Rock Club, Inc., 445 S.E.2d 144 140, court s denial (Va. of 1994). punitive Thus, we damages and vacate remand the for district further proceedings on this issue. 1 Finally, Carl argues on appeal that the district court erred by general failing rule to under award Virginia attorney s law is fees that and costs. 2 attorney s fees The and costs may not be recovered by a prevailing litigant as an item 1 To be clear, although we disagree with the district court s finding that actual malice was not established, we express no opinion about whether the district court should award punitive damages, or the amount of any such award. 2 Carl sought to recover the costs of investigating and prosecuting his civil case, rather than the recoverable costs enumerated in 28 U.S.C. § 1920 (2006). 6 of damages. State Farm Fire and Cas. Co. v. Scott, 372 S.E.2d 383, 386 (Va. 1988). We find no reason to deviate from that general rule here. We therefore affirm the district court s judgment with respect to Carl s cyberpiracy claim, his trademark claims, and the court s decision not to award attorney s fees and costs. We vacate the district court s finding of no actual malice, and remand for further proceedings on that claim. We dispense with oral contentions argument adequately because expressed in the the facts and materials legal before the court are and argument would not aid the decisional process. AFFIRMED IN PART, VACATED IN PART, AND REMANDED 7
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