Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

CPC Properties, Inc. v. Dominic, Inc.

United States District Court, Third Circuit

October 9, 2013

CPC PROPERTIES, INC., Plaintiff,
v.
DOMINIC, INC., Defendant.

MEMORANDUM

Berle M. Schiller, J.

CPC Properties, Inc. (“CPC”) sued Dominic, Inc. (“Dominic”), d/b/a Tony’s Place, for trademark infringement and other related claims based on Dominic’s placement of a crab image next to the word “fries” in an advertisement for its seasoned fries, on its menus, and on its website. CPC sells seasoned fries under the trademark CRAB FRIES®. The Court entered judgment in favor of CPC on a number of its claims. Now before the Court is CPC’s Application for Damages and Other Relief, and Motion for Attorneys’ Fees. For the following reasons, the Court denies CPC’s requests for damages and attorneys’ fees.

I. BACKGROUND

The Court previously recited the factual and procedural history of this case. See CPC Props., Inc. v. Dominic, Inc., Civ. A. No. 12-4405, 2013 WL 4457338, at *1-2 (E.D. Pa. Aug. 21, 2013). As such, the Court will only set forth the facts necessary to decide this motion.

CPC owns and operates the CHICKIE’S AND PETE’S chain of sports bars and kiosks that operate in and around the Philadelphia area. CHICKIE’S AND PETE’S owns the trademark CRAB FRIES®, under which it markets and sells its seasoned french fries. Dominic owns and operates a family-style Italian restaurant in Northeast Philadelphia called Tony’s Place. In 2000, CPC’s predecessor-in-interest sued Dominic for using the words “CRAB FRIES” in marketing its seasoned french fries. The parties settled that dispute in 2002, and Dominic ceased using the terms “CRAB” or “CRAB FRIES” to describe its fries.

On August 3, 2012, CPC sued Dominic, asserting that Dominic engaged in trademark infringement, false designation of origin, common law service mark infringement, unfair competition, unjust enrichment, and trademark dilution by using a crab image next to the word “FRIES” in an advertisement, on its menus, and on its website. Less than a week after CPC filed the Complaint, the Court entered a preliminary injunction, to which the parties stipulated (“Stipulated Preliminary Injunction”), which ordered Dominic to cease using the crab image in connection with its fries. However, subsequent investigation by CPC revealed that Dominic had not fully removed the crab image from its website, some menus, and the receipts given to customers, though it had made some effort to obscure the crab images on its menus and had not used the image in advertisements. The Court held Dominic in contempt of the Stipulated Preliminary Injunction and awarded attorneys’ fees to CPC for litigating that issue.

On May 1, 2013, CPC moved for a judgment on the pleadings. Dominic filed an inadequate response. Therefore, the Court accepted as true the facts contained in CPC’s motion. The Court entered judgment in favor of CPC on the claims of: (1) trademark infringement under § 32 of the Lanham Act; (2) unfair competition and false designation of origin under § 32 of the Lanham Act; (3) common law trademark infringement; (4) common law unfair competition and false designation of origin; and (5) trademark dilution in violation of Pennsylvania law. CPC Props., Inc., 2013 WL 4457338. Judgment was entered against CPC on the unjust enrichment claim. Id. CPC now asks this Court, pursuant to the Lanham Act and the Pennsylvania Anti- Dilution Statute, to (1) award damages to CPC by disgorging Defendant’s profits and trebling those damages; and (2) designate this as an “exceptional case” and award attorneys’ fees to CPC.

II.DISCUSSION

A. Damages

The Lanham Act and the Pennsylvania Anti-Dilution Statute contain similar provisions describing when damages are appropriate. Indeed, damages under the Lanham Act and the Pennsylvania Anti-Dilution Statute are analyzed according to identical standards. See Strick Corp. v. Strickland, 162 F.Supp.2d 372, 378 n.10 (E.D. Pa. 2001) (“As the federal and state dilution statutes contain virtually identical provisions, they are subject to the same analysis.”); 15 U.S.C. § 1117 (describing the circumstances in which damages are appropriate for violations of the Lanham Act or the federal anti-dilution statute). However, recovery under both statutes for the same course of misconduct would be improper. See Granger v. One Call Lender Servs., LLC, Civ. A. No. 10-3442, 2012 WL 3065271, at *3 (E.D. Pa. July 26, 2012) (recognizing the “bar to double recovery in the intellectual property context” in a case where the plaintiff sought damages under the Copyright Act, Lanham Act, and Pennsylvania Unfair Trade Practices and Consumer Protection Law). A plaintiff who prevails in demonstrating trademark infringement or unfair competition in violation of the Lanham Act, or a willful violation of the federal anti-dilution statute, is entitled, “subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.” 15 U.S.C. § 1117.

CPC asks only for the Court to award damages in the form of disgorging the profits Dominic enjoyed as the result of its use of the crab image. (Pl.’s Application for Damages and Other Relief [Pl.’s App.] at 2.) Damages are not always an appropriate remedy for trademark infringement or dilution. See Caesars World, Inc. v. Venus Lounge, Inc., 520 F.2d 269, 274-75 (3d Cir. 1975) (“If the record in the district court contains no evidence of actual damage or actual profit in dollars and cents no monetary award may be made . . . and the trademark owner must be content with injunctive relief.”). Indeed, disgorgement of profits as a remedy is available only “if the defendant is unjustly enriched, if the plaintiff sustained damages, or if an accounting is necessary to deter infringement. These rationales are stated disjunctively; any one will do.” Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 178 (3d Cir. 2005); see also Marshak v. Treadwell, 595 F.3d 478, 495 (3d Cir. 2009). Thus, the Court will first decide whether there is a justification for disgorging Dominic’s profits, and then will calculate the extent to which Defendant profited from the infringing behavior.

1.Appropriateness of disgorging profits

In deciding whether there is a justification for disgorging a defendant’s profits under § 1117, courts in the Third Circuit balance the following factors, among others: “(1) whether the defendant had the intent to confuse or deceive, (2) whether sales have been diverted, (3) the adequacy of other remedies, (4) any unreasonable delay by the plaintiff in asserting his rights, (5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.” Quick Techs. v. Sage Grp. PLC, 313 F.3d 338, 349 (5th Cir. 2002); see also World Entm’t Inc. v. Brown, 487 F. App’x 758, 762 (3d Cir. 2012); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 175 ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.