LUXOTTICA GROUP, S.p.A., an Italian corporation, OAKLEY, INC., a Washington corporation, Plaintiffs-Appellees Cross Appellants,
AIRPORT MINI MALL, LLC, a Georgia limited liability company, d.b.a. Old National Discount Mall, YES ASSETS, LLC, a Georgia limited liability company, CHIENJUNG YEH, a.k.a. Jerome C. Yeh, DONALD C. YEH, individually, JENNY YEH, ALICE JAMISON, Defendants - Appellants Cross Appellees.
Appeals from the United States District Court for the
Northern District of Georgia D.C. Docket No. 1:15-cv-01422-AT
WILSON, JILL PRYOR and TALLMAN, [*] Circuit Judges.
PRYOR, CIRCUIT JUDGE
eyewear manufacturers holding registered trademarks brought a
contributory trademark infringement action under the Lanham
Act against owners of a discount mall whose subtenants were
selling counterfeit eyewear. At trial, the jury returned a
verdict in the plaintiffs' favor. After careful review
and with the benefit of oral argument, we conclude that none
of the issues the defendants raise on appeal demonstrates
reversible error, so we affirm the jury's verdict.
FACTUAL AND PROCEDURAL BACKGROUND
Luxottica Group, S.p.A. and its subsidiary Oakley, Inc.
(collectively and individually "Luxottica")
manufacture and sell luxury eyewear and own registered
trademarks for the Ray-Ban and Oakley brands. Defendants
Jerome and Jenny Yeh own defendant Yes Assets, LLC. In 2004,
Yes Assets purchased the Old National Village Shopping Center
in College Park, Georgia. The Shopping Center included about
30 store fronts as well as an approximately 79,
000-square-foot indoor space (the "Mall"), which
contained between 120 and 130 booths to lease to individual
vendors. Defendant Alice Jamison, the Yehs' daughter,
managed the Shopping Center. Her responsibilities included
reviewing leases, collecting rent, and visiting the Shopping
Center and Yes Assets' tenants, including the lessee of
December 1, 2009, Yes Assets leased the Mall to a tenant, who
assigned it to a subtenant, who subleased it to former
Georgia congressman Pat Swindall, who in turn subleased the
booths to vendors. From December 1, 2009 forward, Yes Assets
leased the Mall to defendant Airport Mini Mall, LLC
("AMM"), a company Jerome and Jenny created and
later gave to their son, defendant Donald Yeh, and the Mall
became known as the International Discount Mall, AMM's
tradename. Under the lease agreement, Yes Assets provided AMM
and its subtenants (the vendors in the 120 to 130 booths)
with a variety of services-including lighting, water,
sewerage, maintenance and repairs, painting, and cleaning-and
a parking area for customers. Greg Dickerson, whom Jerome
hired as AMM's property manager, subleased the booths to
vendors and reported to Jamison and Jerome until 2013, when
Jerome had a stroke, and to Jamison and Donald afterward.
tenure as the Mall's landlord saw three law enforcement
raids there, during which officers executed search warrants,
arrested subtenants, and seized alleged counterfeits of
Luxottica eyewear and other brands' products. After the
first raid, law enforcement left a copy of the search warrant
and a list of items seized, including eyewear bearing
Luxottica's marks, at the raided booth. The second raid
lasted more than 14 hours and involved approximately 30
federal and local law enforcement agents who shut down the
Mall to execute search warrants, arrested subtenants for
selling counterfeit goods, seized thousands of counterfeit
items bearing Luxottica's marks, and loaded the items
onto a tractor-trailer parked in front of the Shopping
Center. Dickerson witnessed the second raid from the Shopping
Center's parking lot and notified Jamison, Donald, and
Jerome and Jenny's attorney, Louis Bridges. Dickerson
later walked through the Mall to compile a list of the booths
where law enforcement had seized goods and informed Jamison,
Jerome, and Bridges about his inquiries of subtenants
regarding the raid and whether they were selling counterfeit
items. Each subtenant denied selling counterfeit merchandise,
but Jamison admitted that she would expect the subtenants to
lie if they were selling counterfeit goods. On Bridges'
advice, the defendants decided to take no action against the
subtenants unless the subtenants were convicted of a crime.
More than a year after Luxottica filed this lawsuit, police
executed several more search warrants at the Mall and seized
additional counterfeit items bearing Luxottica's marks.
twice sent letters notifying the defendants that their
subtenants were not authorized to sell Luxottica's
eyewear and that any mark resembling Ray-Ban or Oakley marks
would indicate that the glasses were counterfeit. The second
letter also identified specific booths Luxottica suspected of
selling counterfeit eyewear. Jamison and Donald were aware of
both letters. Dickerson visited the booths named in the
second letter but made no attempt to determine whether those
vendors' eyewear products were counterfeit or to
terminate their leases. After Luxottica filed this lawsuit,
Jamison and Bridges attended a meeting at the College Park
Police Department to discuss the unlawful selling of
counterfeit products at the Mall.
the raids, letters, and meeting with law enforcement, the
defendants took no steps to evict the infringing subtenants;
they even renewed leases with several of the subtenants who
had been arrested during the 14-plus-hour raid. In the month
leading up to the filing of this lawsuit, Isabel Rozo, an
employee of Luxottica's private investigator Geanie
Johansen, purchased and photographed $15 and $20 counterfeit
Ray-Ban glasses at several booths. Ray-Ban glasses normally
retail for $140 to $220 a pair.
sued the defendants for contributory trademark infringement
under § 32 of the Lanham Act, 15 U.S.C. § 1114. The
district court denied the defendants' motions in limine
to exclude evidence, except for their second motion, which it
granted in part to limit the evidence Luxottica could
introduce regarding sales at the Mall of counterfeit
non-Luxottica brands and counterfeit sales that occurred
before AMM took over as the Mall's landlord. After an
11-day trial, the jury returned a special verdict holding all
defendants except Jenny liable for contributory trademark
infringement and assessing $100, 000 in damages for each
infringed trademark, totaling $1.9 million in damages. Having
moved for judgment as a matter of law after the close of all
the evidence, the defendants renewed their motion, which the
district court denied.
defendants appeal the jury verdict, a portion of the district
court's instructions to the jury regarding the
application of Georgia landlord-tenant law, and the district
court's denials of their motions in limine and renewed
motion for judgment as a matter of law under Federal Rule of
Civil Procedure 50(b).
STANDARDS OF REVIEW
review de novo questions of law, such as the legal
standard for liability for contributory trademark
infringement. U.S. Sec. & Exch. Comm'n v. Big
Apple Consulting USA, Inc., 783 F.3d 786, 795 (11th Cir.
2015). We also review de novo a district court's
denial of a Rule 50(b) motion. Id. at 813.
"Judgment as a matter of law is appropriate only if the
facts and inferences point overwhelmingly in favor of one
party, such that reasonable people could not arrive at a
contrary verdict." Equal Emp't Opportunity
Comm'n v. Exel, Inc., 884 F.3d 1326, 1329 (11th Cir.
2018) (internal quotation marks omitted), cert.
denied, 139 S.Ct. 1373 (2019). "We consider all the
evidence, and the inferences drawn therefrom, in the light
most favorable to the nonmoving party." Id.
(internal quotation marks omitted). "We will not
second-guess the jury or substitute our judgment for its
judgment if its verdict is supported by sufficient
evidence." Id. (internal quotation marks
denying motions in limine are reviewed for abuse of
discretion. Kropilak v. 21st Century Ins. Co., 806
F.3d 1062, 1067 (11th Cir. 2015). Under that standard, we
will reverse a district court's ruling "only if the
court applie[d] an incorrect legal standard, follow[ed]
improper procedures in making the determination, or ma[d]e
findings of fact that are clearly erroneous."
Id. (internal quotation marks omitted). The movant
must also establish "substantial prejudicial
effect." Goldsmith v. Bagby Elevator Co., 513
F.3d 1261, 1276 (11th Cir. 2008).
Court reviews jury instructions de novo to determine
whether they "misstate the law or mislead the jury to
the prejudice of the objecting party." Bhogaita v.
Altamonte Heights Condo. Ass'n, 765 F.3d 1277, 1285
(11th Cir. 2014) (internal quotation marks omitted). Although
our review is de novo, we will reverse based on a
district court's jury instructions "only where we
are left with a substantial and ineradicable doubt as to
whether the district court properly guided the jury."
Id. (internal quotation marks omitted).
affirm the district court on each issue appealed. The
district court (1) correctly determined that the evidence was
sufficient-even under the legal standard the defendants urge
us to adopt-to support the jury's verdict finding the
defendants liable for contributory trademark infringement;
(2) committed no reversible error in instructing the jury;
(3) correctly determined that the evidence was sufficient to
support the jury's verdict on each defendant's
individual liability; and (4) did not abuse its discretion in
the challenged evidentiary rulings.
Luxottica Presented Sufficient Evidence to Sustain the
Jury's Verdict on Contributory Trademark
the Lanham Act, the owner of a registered trademark may hold
someone contributorially liable for trademark infringement if
that person induces or knowingly facilitates the
infringement. The defendants argue that the district court
should have followed the reasoning of a Second Circuit case
that they believe imposed a tougher knowledge requirement for
contributory trademark infringement claims. Under that
court's reasoning, the defendants argue, the evidence was
insufficient to prove that they had the requisite knowledge
of, or demonstrated willful blindness to, their
subtenants' direct infringement. We disagree and affirm
the district court's denial of the defendants' Rule
50(b) motion. First, we explain the elements of the
contributory trademark infringement cause of action. Second,
because the defendants do not contest that landlords may be
held contributorially liable for their (sub)tenants'
direct trademark infringement, we assume without deciding
that contributory liability for trademark infringement
extends to the landlord-tenant context. Third, we resolve the
defendants' argument about the proper legal standard by
assuming without deciding that liability for contributory
trademark infringement requires that the defendant have
knowledge of specific acts of direct infringement. Even under
this standard, the evidence was sufficient to support the
jury's verdict because the defendants had at least
constructive knowledge of their subtenants' direct
Contributory Liability Under the Lanham Act
contributory trademark infringement cause of action stems
from the application of "basic tort liability concepts
to determine the scope of liability" under the Lanham
Act. Duty Free Americas, Inc. v. Estée Lauder
Cos., 797 F.3d 1248, 1276 (11th Cir. 2015) (internal
quotation marks omitted). The Supreme Court first acknowledged
the existence of this cause of action in Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.
844 (1982). In that case, manufacturers had supplied
pharmacists with a generic version of a drug whose brand name
was trademarked. Id. at 846-48. Some pharmacists had
infringed the brand name manufacturer's mark by
mislabeling bottles containing generic capsules as containing
brand name capsules. Id. at 848-51, 854. But instead
of suing the infringing pharmacists, the brand name
manufacturer sued the generic manufacturers, id. at
846-47, 849-51, prompting the Supreme Court to recognize in
the Lanham Act a cause of action for contributory
infringement: "if a manufacturer or distributor
intentionally induces another to ...