LLC v. ILM Capital, LLC

          ORDER

          SONJA F. BIVINS, UNITED STATES MAGISTRATE JUDGE.

         This 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.^[1]

         I. Settlement conference or mediation.

         First, 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.

         II. Damages.

         Following 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.^[2] (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.

         A. “Defendants' profits” and “damages sustained by ZP.”

         In its 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).

         The 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.^[3] 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 . . . .”).

         Further, 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.^[4] (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.).

         At 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.^[5] 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).

         Having 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 DENIED.

         B. Attorneys' fees and costs.

         In its 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 ...