Super Duper, Inc. v. Mattel, Inc., No. 09-1397 (4th Cir. 2010)

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UNPUBLISHED UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT No. 09-1397 SUPER DUPER, INCORPORATED, d/b/a Super Duper Publications, Plaintiff - Appellant, v. MATTEL, INCORPORATED, a Delaware Corporation, Defendant - Appellee. Appeal from the United States District Court for the District of South Carolina, at Greenville. Henry F. Floyd, District Judge. (6:05-cv-01700-HFF) Argued: March 24, 2010 Before SHEDD and Circuit Judge. AGEE, Decided: Circuit Judges, and June 10, 2010 HAMILTON, Senior Affirmed by unpublished per curiam opinion. ARGUED: Thomas Edward Vanderbloemen, GALLIVAN, WHITE & BOYD, PA, Greenville, South Carolina, for Appellant. Thomas Henderson Dupree, Jr., GIBSON, DUNN & CRUTCHER, LLP, Washington, D.C., for Appellee. ON BRIEF: W. Howard Boyd, Jr., Jennifer E. Johnsen, Adam C. Bach, GALLIVAN, WHITE & BOYD, PA, Greenville, South Carolina; Steven R. LeBlanc, DORITY & MANNING, P.A., Greenville, South Carolina, for Appellant. Dace A. Caldwell, GIBSON, DUNN & CRUTCHER, LLP, Washington, D.C., for Appellee. Unpublished opinions are not binding precedent in this circuit. PER CURIAM: Mattel, Incorporated ( Mattel ) opposed the registration of several of trademarks Super in the Duper, United Incorporated s States Patent and ( Super Duper ) Trademark Office ( USPTO ) based on their alleged infringement of Mattel s preexisting settlement marks. After failed, the parties Super Duper filed efforts a to declaratory reach a judgment action in the United States District Court for the District of South Carolina, requesting the court rule that its trademarks did not violate Mattel s intellectual property rights. counterclaimed, alleging that Super Duper had Mattel engaged in trademark infringement, trademark dilution, unfair competition, and fraud upon the USPTO. After a week-long trial, a jury found that Super Duper s use of seven trademarks infringed upon and/or diluted four of Mattel s damages. 1 preexisting marks Post-trial, and Super awarded Duper Mattel renewed its $400,000 in motion for judgment as a matter of law and Mattel moved for a permanent 1 The jury concluded that Super Duper s use of its SEE IT! SAY IT!, SAY AND SING, FISH AND SAY, FISH & SAY, SORT AND SAY, SORT & SAY, and SAY AND SORT trademarks infringed Mattel s SEE N SAY, SEE N SAY JUNIOR, SEE N SAY BABY, and THE FARMER SAYS marks. The jury also concluded that Super Duper s use of its SEE IT! SAY IT!, SAY AND SING, FISH AND SAY, FISH & SAY, SORT AND SAY, SORT & SAY, and SAY AND SORT trademarks was likely to dilute Mattel s famous SEE N SAY and THE FARMER SAYS marks. 2 injunction, order of cancellation, increased award of attorneys fees and costs. profits, and an The district court denied Super Duper s motion but granted those of Mattel by increasing the damages award to $999,113 and $2,643,844.15 in attorneys fees. providing Mattel with Super Duper filed a timely appeal and we have jurisdiction under 28 U.S.C. § 1291. On appeal, Super Duper challenges (1) the district court s denial of (2) multiple its motion for instructions judgment submitted to as the a matter jury, of and law, (3) the district court s award of increased profits and attorneys fees. Our review of the record reveals no error requiring reversal. Accordingly, we affirm the judgment of the district court. I. We review de novo Super Duper s initial argument that the district court erred in denying its motion for judgment as a matter of law on Mattel s claims for trademark infringement and trademark dilution. See Dotson v. Pfizer, Inc., 558 F.3d 284, 292 (4th Cir. 2009). Judgment as a matter of law is appropriate only when there is no legally sufficient evidentiary basis for a reasonable jury to find for the non-moving party." Int l Ground Transp., Inc. v. Mayor & City Council of Ocean City, 475 F.3d 214, 218 (4th Cir. 2007) (quotation omitted). In considering the evidence presented at trial, we do not make 3 credibility determinations or weigh the evidence, as [c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000) (quotation omitted). After reviewing the record in the light most favorable to Mattel and disregarding all evidence favorable to Super Duper that the jury [was] not required to believe, id. at 150-51, we cannot say verdict. evidence that the evidence supports only one reasonable Dotson, 558 F.3d at 292 (quotation omitted). presented at trial was sufficient for the The jury to conclude that the simultaneous use of Mattel s and Super Duper s marks would (1) create a likelihood of confusion in the mind of an appreciable number of ordinarily prudent purchasers regarding the source of the goods in question, Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 127 (4th Cir. 1990) (quotations omitted), and (2) impair[] the distinctiveness of [Mattel s] famous mark[s]. Louis Vuitton Malletier S.A. v. Haute F.3d Diggity Dog, LLC, 507 252, 264 (4th Cir. 2007) (quoting 15 U.S.C. § 1125(c)(2)(B)). In regard to trademark infringement, Super Duper argues, inter alia, that Mattel failed to offer any evidence of actual confusion over a significant period of concurrent use of the marks and that there are many distinctions between its business 4 and products and unpersuasive. those of Mattel. We find these arguments While it is true that a lack of evidence of actual confusion over a substantial period of time may create a strong inference of no likelihood of confusion, CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 269 (4th Cir. 2006), the absence of such proof does not preclude a party from proving a likelihood of confusion based on a compilation of other evidence. It is, after all, well established that no actual is confusion infringement. 2 required to prove a case of trademark Louis Vuitton, 507 F.3d at 263. Furthermore, under these facts, the inference to be drawn from Mattel s lack of evidence of actual confusion was a matter properly submitted to the jury. See Reeves, 530 U.S. at 150 (noting that gleaning inferences from the facts is a jury function[] ). Super Duper places great emphasis on the fact that its marks were in use for five-to-nine years before the start of trial in 2008, and that Mattel produced no evidence of 2 See also CareFirst, 434 F.3d at 269 ( [P]roof of actual confusion is not necessary to show a likelihood of confusion . . . . ); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463 (4th Cir. 1996) ( [E]vidence of actual confusion is unnecessary. ); Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 933 (4th Cir. 1995) ( [T]his Court has emphasized that a trademark owner need not demonstrate actual confusion. ); AMP Inc. v. Foy, 540 F.2d 1181, 1186 (4th Cir. 1976) ( [A]ctual confusion is not an essential element in establishing a likelihood to confuse . . . . ). 5 actual confusion during that time. Mattel, however, first challenged Super Duper s use of its trademarks in the USPTO in 2004. The jury administrative could challenge reasonably affected the conclude manner that in Mattel s which Super Duper used and publicized its marks during the relevant period. We also reject Super Duper s assertion that the jury should have weighed differently, marks, such and analysis additional as differences facilities. depends on likelihood-of-confusion Because varying in the human the parties factors products, likelihood-of-confusion reactions to situations incapable of exact appraisement, we treat the likelihood of confusion as an inherently factual issue that depends on the facts and circumstances in each case. Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 933 (4th Cir. 1995) (quotations omitted). As a cross-section of consumers, the jury is particularly well-suited to evaluating whether an ordinary consumer would likely be confused. Anheuser-Busch, Inc. v. L&L Wings, Inc., 962 F.2d 316, 318 (4th Cir. 1992). Our function on appeal is not to weigh the evidence, but to determine if the record as a whole verdict. Reeves, 530 U.S. at 150-51. supports the jury s We conclude that Mattel met that standard. Super Duper s arguments in relation to Mattel s trademark dilution claims fare no better, as they primarily focus on the 6 lack of survey likelihood of proposition evidence and dilution. that the expert Our testimony precedent successful to the not support the of does a prosecution as trademark dilution claim mandates the production of survey evidence or expert testimony. See Louis Vuitton, 507 F.3d at 266 ( To determine whether a junior mark is likely to dilute a famous mark through blurring, the TDRA directs the [trier of fact] to consider factors all factors that are relevant enumerated to in the the issue, statute including six . . . . ). Of course, such evidence may prove helpful to the jury, but it is not required. relevant in Cf. every id. at case, 266 and ( Not not every every factor blurring will claim be will require extensive discussion of the factors. ). As we have explained, the jury was well situated to make the that factual determination sufficient similarity that Mattel s existed marks between were Super famous, Duper s and Mattel s marks, and that this association was likely to impair the distinctiveness of Mattel s famous marks. 65. The Trademark Dilution Revision Act See id. at 264- ( TDRA ) requires nothing more, see 15 U.S.C. § 1125(c), and we are prohibited from reweighing facts. the evidence or drawing See Reeves, 530 U.S. at 150. 7 inferences from the II. We now turn to Super Duper s claims that multiple instructions submitted to the jury failed to correctly state the law and require reversal of the judgment. [I]t is well settled that a trial court has instructions to a jury. broad discretion in framing its Volvo Trademark Holding Aktiebolaget v. Clark Mach. Co., 510 F.3d 474, 484 (4th Cir. 2007). We accordingly review the district court s jury instructions only for abuse of discretion, although we review de novo claims that the jury instructions failed to correctly state the law. Id. Affirmance is required so long as the instructions given by the district court, taken as a whole, adequately state the controlling law. Id. (quotation omitted). In other words, we will reverse based on error in jury instructions only if the error is determined to have been prejudicial, based on a review of the record as a whole. Abraham v. County of Greenville, 237 F.3d 386, 393 (4th Cir. 2001) (quotation omitted). Super Duper first contends that the district court s instructions eliminated Mattel s burden of proving a likelihood of confusion by a preponderance of the evidence. While [a]ny the district doubt court regarding erred the in instructing outcome 8 of the We disagree. the jury likelihood that of confusion analysis must be resolved in favor of Mattel, 3 Joint Appendix ( J.A. ) at 2001, the jury instructions as a whole adequately and correctly stated the controlling law. For example, the district court informed the jury that Mattel ha[d] the burden of proving the elements of a trademark infringement claim by a preponderance of the evidence and the jury was instructed to find in Super Duper s favor if Mattel failed to prove any of the requisite elements of a trademark infringement claim. Id. at 1998. The special verdict form also specifically asked the jury to determine whether Mattel ha[d] proven by a preponderance of the evidence that any of Super Duper s trademarks . . . infringe[d] Mattel s trademarks. at 2034. Id. Super Duper is accordingly unable to establish that the district court s error was prejudicial in light of the record as a whole. 4 Abraham, 237 F.3d at 393 (quotations omitted). 3 As the Supreme Court explained in KP Permanent Make-Up, Inc. v. lasting Impression I, Inc., 543 U.S. 111 (2004), the defendant in a trademark-infringement suit has no free-standing need to show confusion unlikely and is merely required to leave the factfinder unpersuaded that the plaintiff has carried its own burden on that point. 543 U.S. at 120-21. 4 In light of our opinion in AMP Inc. v. Foy, 540 F.2d 1181 (4th Cir. 1976), we also reject Super Duper s challenge to the district court s instruction that if the jury found Mattel s trademarks to be strong marks, Super Duper s trademarks (as the latecomer) must be substantially different from Mattel s trademarks to avoid a finding of infringement. J.A. at 2012; (Continued) 9 Next, instructing Super the Duper jury argues that the a district lack of court evidence erred of in actual confusion is a factor [that] is neutral and does not favor either party. whether there J.A. at 2013. was a We have already recognized that significant period of concurrent use of Super Duper s and Mattel s marks without any evidence of actual confusion was determination. a factual matter best left to the jury s See Reeves, 530 U.S. at 150 (recognizing that the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge ). Accordingly, the district court did not abuse its discretion in instructing the jury that an absence of evidence of actual confusion, in and of itself, was a neutral factor. 5 see AMP Inc., 540 F.3d at 1187 (citing a respectable body of authority that holds that the second comer has a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer ) (emphasis added) (quotation omitted). 5 The district court did not abuse it discretion in refusing to grant Super Duper s request for a sophisticated user instruction, as Sharon Webber, the co-owner of Super Duper, testified at trial that Super Duper sold its goods to the [v]ery general public. J.A. at 675. Nor did the district court abuse its discretion in instructing the jury that the ultimate consumers of Super Duper s products were children. Id. at 2013; see Lyons Partnership, L.P. v. Morris Constumes, Inc., 243 F.3d 789, 802 (4th Cir. 2001) (holding that the similarity of child-oriented works must be viewed from the perspective of the child audience for which the products were intended ) (quotation omitted). 10 See AMP Inc., 540 F.2d at 1186 ( [A]ctual confusion is not an essential element in establishing a likelihood to confuse . . . . ). Super district Duper also court s contends instructions that several suggested that aspects the of jury the could impose liability based solely on the similarity of Super Duper s and Mattel s trademarks. But see Commc ns Satellite Corp v. Comcet, Inc., 429 F.2d 1245, 1252 (4th Cir. 1970) ( Resemblance of the marks is not alone sufficient to establish the likelihood of confusion. ). On appeal, however, we do not view a single instruction in isolation; rather we consider whether taken as a whole and in the context of the entire charge, the instructions accurately and fairly state the controlling law. v. Rahman, 83 F.3d 89, 92 (4th Cir. 1996). United States We conclude that, in this case, the instructions given to the jury fairly state the controlling law. For example, the district court s instruction regarding the elements of factors the a trademark jury should infringement claim consider reaching in specified its seven verdict: (1) the strength of Mattel s trademarks, (2) the similarity of Mattel s and Super Duper s trademarks, (3) the similarity of the goods that the trademarks identify, (4) the similarity of the parties business facilities, (5) the similarity of the parties advertising, (6) Super Duper s 11 intent in selecting its trademarks, and (7) any actual confusion between Super Duper s and Mattel s products or trademarks. related to the similarity Duper s trademarks. 6 clearly explained of Only the second factor Mattel s J.A. at 2000. that [t]he trademarks and Super Furthermore, the court presence or absence of any particular factor . . . should not necessarily resolve whether there is a likelihood of confusion because consider all [of the] relevant evidence. the jury must Id. Moreover, the district court s specific instruction on the factor relating to the similarity of the parties trademarks clarified that [t]rademarks are not to be evaluated in a side by side comparison test, such as a meticulous comparison in court. Id. at 2008. Rather, [i]t is the overall impression created by the trademark from the ordinary consumer s cursory observation in the marketplace that will or will not lead to a likelihood of confusion. Id. (emphasis added). It was thus made clear to the jury that all relevant market-related factors 6 While the district court erred in giving an instruction that fleetingly referred to the similarity between Super Duper s and Mattel s trademarks, J.A. at 2000, Super Duper failed to lodge an objection on this basis in the district court. Our review is consequently only for plain error, see United States v. Jeffers, 570 F.3d 557, 564 n.4 (4th Cir. 2009), and Super Duper cannot establish that this overlooked comment caused it prejudice. See United States v. Stitt, 250 F.3d 878, 884 (4th Cir. 2001) (noting that actual prejudice [is] required by the third prong of plain-error review ). 12 must be taken into account in determining whether marks are similar and whether a likelihood of confusion ultimately exists. That the district court instructed the jury that similarities in the parties marks weigh more heavily than differences, J.A. at 2008, does not alter our analysis. Although we have stated that, in assessing the similarity of marks, courts similarities, do not Petro confine Stopping their Ctrs., scrutiny L.P. v. merely James to River Petroleum, Inc., 130 F.3d 88, 94 (4th Cir. 1997), the district court s instruction did not remove the marks dissimilarities from the jury s consideration. similarities between Super Indeed, the jury s search for Duper s and Mattel s marks would necessarily reveal the marks dissimilarities, as similarity and dissimilarity are but two sides of the same coin. Super Duper s argument as to the district court s markpairings instruction similarly lacks merit. The instruction in question simply stated that the mere presence of a house mark, e.g., the name Super Duper, does not avoid likelihood of confusion as between two marks. a finding of Id. at 2008. In short, this instruction correctly explained that placement of Super Duper s house mark on its product packaging did not ipso facto foreclose the possibility that a likelihood of confusion existed between Super Duper s trademarks and those of Mattel. See CareFirst, 434 F.3d at 271-72 (recognizing that the effect 13 of a mark infringed pairing mark, as depends well on as the any strength of differences the in allegedly the public presentations of the[] marks that would significantly reduce the likelihood of confusion ). III. Finally, Super Duper contests the district court s award of increased profits and attorneys fees to Mattel. Super Duper s argument in this regard is predicated on the section of the TDRA that specifies that a plaintiff prevailing under the likelihood of dilution standard may only recoup profits, damages, costs, and attorneys fees if the mark . . . that is likely to cause dilution by blurring . . . was first used in commerce by the person against whom [relief] is sought after October 6, 2006. 15 U.S.C. § 1125(c)(5)(A). Although Super Duper is correct that its trademarks were in use before October 6, 2006, Super Duper failed to raise anything remotely resembling this argument in its Rule 50(a) motion for judgment as a matter of law. See Exxon Shipping Co. v. Baker, 128 S. Ct. 2605, 2617 n.5 (2008) ( A motion under Rule 50(b) is not allowed unless the movant sought relief on similar grounds under Rule 50(a) before the case was submitted to the jury. ). issue only for plain error. We accordingly review this See Price v. City of Charlotte, 93 F.3d 1241, 1248-49 (4th Cir. 1996). 14 Under the facts of this case, we decline to exercise our discretion to correct the error. 7 See Olano, 507 U.S. 725, 732 (1993) (noting that the decision to correct [a] forfeited error [is] within the sound discretion of the court of appeals, and the court should not exercise that discretion unless the error seriously affect[s] the fairness integrity or public reputation of judicial proceedings. (quoting United States v. Young, 470 U.S. 1, 15 (1985))). The award of profits and attorneys fees and costs in this case was independently justified by the jury s conclusion that Super Duper s use of seven trademarks infringed four of Mattel s preexisting marks. See 15 U.S.C. §§ 1117(a) & 1125(a). We recognize that the jury awarded no damages based on its finding of trademark infringement. But the award of $999,113 in lost profits now at issue was made by the district court, rather than the jury. Section 1117(a) specifically provides that, in cases like the one currently before us in which a plaintiff establishes trademark infringement under § 1125(a), [i]f the court . . . find[s] that the amount of the recovery based on profits is either inadequate or excessive the court may in its 7 See also Corti v. Storage Tech. Corp., 304 F.3d 336, 341 (4th Cir. 2002) ( Before we can exercise our discretion to correct an error not raised below in a civil case, at a minimum, the requirements of United States v. Olano, 507 U.S. 725 (1993), must be satisfied. ). 15 discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. In this case, the district court found the jury s award of $400,000 in lost profits inadequate and increased the award to $999,113, the amount of lost profits Mattel s expert testified was attributable to Super Duper s seven infringing marks. Super Duper has simply failed to establish that the district court s award of lost profits would have differed had it not considered the jury s finding of trademark dilution. Accordingly, we decline to exercise our discretion to correct the district court s error in regard to the award of profits under the TDRA. 8 See Stitt, 250 F.3d at 884 (noting that actual 8 We reject Super Duper s contention that the district court erred in increasing Mattel s award of lost profits. The district court s ruling in this regard is consistent with the equitable factors laid down in Synergistic International, LLC v. Korman, 470 F.3d 162, 175 (4th Cir. 2006), and does not constitute an abuse of discretion. See Metric & Multistandard Components Corp. v. Metric s, Inc., 635 F.2d 710, 715 (8th Cir. 1980) ( [T]he district court is given broad discretion to award the monetary relief necessary to serve the interests of justice . . . . ). Nor are we persuaded that the court erred in failing to put a more restrictive time limitation on Mattel s award of lost profits. Indeed, Super Duper s reliance on our opinion in Lyons Partnership, L.P. v. Morris Costumes, Inc., 243 F.3d 789 (4th Cir. 2001) is misplaced. Although Lyons established that the doctrine of laches may be applied to equitable claims brought under the Lanham Act, 243 F.3d at 799 (emphasis omitted), Mattel did not unreasonably delay in instituting its Lanham Act claims; therefore, the doctrine of estoppel by laches does not apply. See What-A-Burger of Va., Inc. v. Whataburger, Inc., 357 F.3d 441, 449 (4th Cir. 2004) ( Indeed, the key question, for purposes of estoppel by laches, is not simply (Continued) 16 prejudice [is] review ) required (quotation by the omitted); third see prong also of United plain-error States v. Robinson, 460 F.3d 550, 557 (4th Cir. 2006) ( [A]n appellant on plain error review bears the burden of persuasion with respect to prejudice. ). We further conclude that the district court did not err in determining that this was an exceptional case thus rendering the award § 1117(a). of attorneys fees appropriate under 15 U.S.C. The district court adopted the reasoning set forth in Mattel s petition for attorneys fees in concluding that this case was exceptional. In tandem with the district court s own observation jury that the considered . . . overwhelming evidence of [Super Duper s] wrongdoing and determined that it both infringed and intentionally diluted certain of [Mattel s] marks, J.A. at 2708, the reasons stated in Mattel s attorneys fees petition are sufficient to uphold the ruling that this was an exceptional case. Inc. v. Freebies Publ g, 364 F.3d 535, district court s See Retail Servs., 550 (4th Cir. 2004) (recognizing that an exceptional case is one in which the defendant s conduct was malicious, fraudulent, willful or deliberate in nature (quotation omitted)). whether there has been some delay, but whether that delay was unreasonable. ) (emphasis in original). 17 Because Super Duper failed to preserve its objections to the specific billing items it contests on appeal and/or to cite to any portion of the record demonstrating that Mattel, in fact, recouped the associated attorneys fees, we further hold that the district Mattel s court request did for not abuse attorneys its discretion fees in in the granting amount of $2,643,844.15. See Am. Reliable Ins. Co. v. Stillwell, 336 F.3d 311, Cir. 320 (4th 2003) ( [W]e review a district court s decision awarding or denying attorney s fees and costs for abuse of discretion. ). Super Duper has simply provided us with no [valid] basis . . . to discern the degree to which it believes the district court abused its discretion, Jean v. Nelson, 863 F.2d 759, 772 (11th Cir. 1988), and [w]e will not make arguments for [a party] that it did not make in its briefs. O Neal v. Ferguson Constr. Co., 237 F.3d 1248, 1257 n.1 (10th Cir. 2001) (citing Fed. R. App. P. 28(a)(9)(A)). Accordingly, we find Super Duper s argument without evidence unpersuasive, and conclude that the district court acted within its discretion in approving the attorneys fees described in the evidence before it. Gray v. Lockheed Aeronautical Sys. Co., 125 F.3d 1387, 1389 (11th Cir. 1997); see also Norman v. Hous. Auth. of the City of Montgomery, 836 F.2d 1292, 1301 (11th Cir. 1988) ( As the district court must be reasonably precise in excluding 18 hours thought to be unreasonable or unnecessary, so should be the objections and proof from fee opponents. ). For the foregoing reasons, we affirm the judgment of the district court. AFFIRMED 19

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