United States District Court, S.D. Alabama, Southern Division
ZP NO. 314, LLC, Plaintiff,
ILM Capital, LLC, et al., Defendants.
F. BIVINS, UNITED STATES MAGISTRATE JUDGE.
case is before the Court on Plaintiff ZP's motion for
consideration of attorneys' fees, statutory equitable
relief, and mediation, and Defendants' responses thereto.
(Docs. 186, 187, 189). The motion has been briefed by the
parties and is ripe for consideration. For the reasons set
forth herein, ZP's motion is GRANTED, in part,
and DENIED, in part.
Settlement conference or mediation.
in response to ZP's request to reconvene mediation with
the Court, Defendants have advised that they have no interest
in a court-facilitated settlement conference or mediation at
this time. (Doc. 186 at 11-12). Therefore, ZP's request
is DENIED at this time. The parties may file
a joint request for a court-facilitated settlement conference
at any time.
a bench trial in this case, the Court issued an order on
September 30, 2019, finding in favor of ZP on its claims for
unfair competition under the Lanham Act (15 U.S.C. §
1125(a)), trademark infringement and unfair practices under
Alabama Code § 8-12-1, et seq., contributory
and vicarious liability with respect to the aforementioned
claims, and injunctive relief. (Doc. 176 at 22-30, 36-37). In
ZP's instant motion, it seeks damages, including
equitable relief in the form of an accounting of
Defendants' profits, attorneys' fees and costs,
nominal damages, and injunctive relief. The Court will
address ZP's requests for damages in turn.
“Defendants' profits” and “damages
sustained by ZP.”
motion, ZP argues that a broad menu of remedies are available
for trademark infringement under the Lanham Act, including
“damages sustained by the plaintiff, ” “an
accounting of defendant's profits, ” injunctive
relief, attorneys' fees, and costs. (Doc. 187 at 2).
Relying on Hard Candy, LLC v. Anastasia Beverly Hills,
Inc., 921 F.3d 1343, 1352-53 (11th Cir. 2019), ZP seeks
“an equitable accounting” of Defendants'
profits in the instant case. In their response, Defendants do
not dispute ZP's statement of the law but maintain that
ZP abandoned any claim for “damages sustained
by the plaintiff” or for “an accounting of
defendants' profits” under the Lanham Act. (Doc.
189 at 2).
record reflects that, in its amended complaint, ZP originally
requested nominal relief, equitable relief, including
preliminary and permanent injunctive relief, costs and
attorneys' fees, and an order directing that Defendants
give an accounting of “any and all profits derived by
them from the sale of products or services through the use of
the infringing marks” or domain names. (Doc. 60 at 14).
However, in pretrial proceedings and at trial, ZP abandoned
its claim for an accounting of profits and sought only
nominal damages, injunctive relief, attorneys' fees, and
costs related to its claims for unfair competition under the
Lanham Act (15 U.S.C. § 1125(a)) and trademark
infringement/unfair practices under Alabama Code §
8-12-1, et seq. Indeed, in the parties' joint
proposed pretrial document, ZP expressly sought
“monetary relief for at least nominal damages, ”
injunctive relief, statutory damages for cybersquatting,
costs, and attorneys' fees. (Doc. 147 at 8- 9). As
Defendants point out, ZP's failure to identify in the
joint proposed pre-trial document any additional categories
of damages it was seeking, or any facts relating to the
amount of those categories of damages, resulted in a waiver
of the right to seek any such damages. See,
e.g., Rockwell Int'l Corp. v. United
States, 549 U.S, 457, 474 (2007) (“[C]laims,
issues, defenses, or theories of damages not included in the
pretrial order are waived even if they appeared in the
complaint . . . .”).
at the pretrial conference, the Court instructed the parties
to be prepared to present at trial all evidence regarding
damages, except for the issue of attorneys' fees which
would be bifurcated and decided after trial. (Doc. 154). In
the Court's pretrial order, the claims to be tried were
listed as: whether there had been any violations of the
Anti-cybersquatting Act (15 U.S.C. § 1125(d)(1)(A)),
trademark infringement and unfair competition under 15 U.S.C.
§ 1125(a) of the Lanham Act, federal common law, Alabama
Code § 18-21-1, and Alabama common law, and, if so,
whether statutory damages or injunctive relief should be
awarded. (Doc. 161 at 1-2). The issue of attorneys' fees
was bifurcated and reserved until after a ruling on liability
and damages. (Id.).
trial, ZP offered no evidence regarding Defendants'
profits or any damages suffered by ZP, nor did ZP request
leave to do so at a later date. Moreover, in its proposed
findings of fact and conclusions of law submitted
after trial, ZP did not include any damages related
to Defendant's profits or ZP's damages, but asked the
Court to award injunctive relief, nominal damages, statutory
damages for cybersquatting, punitive damages for ZP's
state law intentional interference claim, attorneys'
fees, and costs. (Doc. 170 at 19-21).
reviewed the record at length, including the parties'
many filings and representations to the Court, the Court
finds that, with respect to the claims on which ZP prevailed,
namely its claims for unfair competition under the Lanham Act
and state law trademark infringement claims, ZP made the
conscious and strategic decision to forego the recovery of
any damages other than nominal damages, injunctive relief,
attorneys' fees, and costs. Indeed, at trial, ZP made no
attempt to present any evidence of its damages or of
Defendants' profits. Accordingly, ZP's belated
request for an equitable accounting in order to prove damages
in the form of “defendant's profits” or
“damages sustained by the plaintiff” for
Defendants' trademark infringement and unfair competition
under 15 U.S.C. § 1125(a) of the Lanham Act is
Attorneys' fees and costs.
motion, ZP seeks leave to file a brief and supporting
affidavits and documentation to support its claims for
attorneys' fees and costs in this action. (Doc. 187 at
1-2). Defendants do not ...