United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
LYNN WINMILL CHIEF JUDGE.
case concerns a trademark dispute between two golf courses
over the use of the mark “TIMBERSTONE.”
Plaintiff-Counterdefendant Idaho Golf Partners, Inc.
(“IGPI”) operates a golf course in Caldwell,
Idaho under the assumed business name “TimberStone Golf
Course.” Defendant-Counterclaimant TimberStone
Management, LLC (“TimberStone Management”)
operates the “TimberStone Golf Course” in Iron
Mountain, Michigan. On June 13, 2014, IGPI filed a complaint
alleging a claim for tortious interference with prospective
economic advantage, seeking a declaratory judgment that
TimberStone Management does not own an exclusive right to the
TIMBERSTONE mark, and seeking to enjoin TimberStone
Management from interfering with its use of the mark.
TimberStone Management asserted counterclaims for trademark
infringement (15 U.S.C. § 1114), unfair competition and
false designation of origin (15 U.S.C. § 1125(a)),
trademark dilution (15 U.S.C. § 1125(c)), and
cybersquatting (15 U.S.C. § 1125(d)).
in this case took place from September 26 to September 30,
2016 on TimberStone Management's counterclaims. The
parties' claims for injunctive and declaratory relief
were reserved for the Court. The jury returned a verdict for
TimberStone Management on its counterclaims for trademark
dilution and unfair competition and false designation of
origin, and awarded $9, 808 in damages against IGPI.
Additionally, the jury found that IGPI acted willfully,
maliciously, or fraudulently. The jury found no trademark
infringement or cybersquatting by IGPI.
parties filed omnibus post-trial briefs, addressing their
equitable claims and post-trial motions Dkts. 122, 123. These
include (1) IGPI's motion for judgment as a matter of
law, or alternatively for a new trial, on the trademark
dilution and unfair competition and false designation of
origin counterclaims; (2) IGPI's request for a
declaratory judgment; (3) TimberStone Management's motion
to enhance the jury's damages award; (4) TimberStone
Management's motion for attorneys' fees and costs;
(5) TimberStone Management's motion for a permanent
hearing was held on the post-trial motions on November 30,
2016. At the conclusion of that hearing, the Court requested
supplemental briefing on the following issues: (1) whether
the Court can consider an issue not specifically raised in a
Rule 50(a) motion, but later presented in a Rule 50(b)
motion, in order to avoid plain error; (2) whether a
statutory or common law “good faith remote use”
defense applies to an unfair competition claim under 15
U.S.C. § 1125(a); (3) whether, even if applicable, a
prior use defense on the unfair competition claim was waived
when IGPI failed to ask for an instruction on that defense;
and (4) whether the Ninth Circuit has held in any post-2006
case that “fame” may exist in niche market.
memorandum opinion and order addresses the parties'
post-trial motions. The Court will issue a separate decision
addressing their requests for equitable relief.
Rule 50 - Motion for Judgment as a Matter of Law
Rule of Civil Procedure 50 governs a request for a judgment
as a matter of law. Under Rule 50(a), a party must first move
for judgment as a matter of law before the case is submitted
to the jury and “specify . . . the law and facts that
entitle the movant to the judgment.” Fed.R.Civ.P.
50(a)(2). Under Rule 50(b), if the court denies the
pre-verdict motion, “the movant may file a renewed
motion for judgment as a matter of law and may include an
alternative or joint request for a new trial under Rule
59.” Fed.R.Civ.P. 50(b). The failure to make a Rule
50(a) motion before the case is submitted to the jury
forecloses the possibility of the Court later considering a
Rule 50(b) motion. Tortu v. Las Vegas Metropolitan Police
Dep't., 556 F.3d 1075, 1083 (9th Cir. 2009).
Furthermore, “[a] post-trial motion for judgment can be
granted only on grounds advanced in the pre-verdict
motion.” Fed.R.Civ.P. 50(b), 1991 advisory committee
may grant a Rule 50 motion for judgment as a matter of law
only if “there is no legally sufficient basis for a
reasonable jury to find for that party on that issue.”
Krechman v. County of Riverside, 723 F.3d 1104, 1109
(9th Cir. 2013) (citing Jorgensen v. Cassiday, 320
F.3d 906, 917 (9th Cir. 2003) (quoting Reeves v.
Sanderson Plumbing Prods., Inc., 530 U.S. 133, 149
(2000)). “A jury's verdict must be upheld if it is
supported by substantial evidence . . ., even if it is also
possible to draw a contrary conclusion from the same
evidence.” Wallace v. City of San Diego, 479
F.3d 616, 624 (9th Cir. 2007). “[I]n entertaining a
motion for judgment as a matter of law, the court . . . may
not make credibility determinations or weigh the
evidence.” Go Daddy Software, Inc., 581 F.3d
at 961 (quoting Reeves, 530 U.S. at 150). Rather,
“[t]he evidence must be viewed in the light most
favorable to the nonmoving party, and all reasonable
inferences must be drawn in favor of that party.”
Rule 59 - Motion for New Trial
Rule of Civil Procedure 59(a)(1) states, “A new trial
may be granted . . . in an action in which there has been a
trial by jury, for any of the reasons for which new trials
have heretofore been granted in actions at law in the courts
of the United States.” “Historically recognized
grounds include, but are not limited to, claims ‘that
the verdict is against the [clear] weight of the evidence,
that the damages are excessive, or that, for other reasons,
the trial was not fair to the party moving.'”
Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th
Cir. 2007) (quoting Montgomery Ward & Co. v.
Duncan, 311 U.S. 243, 251 (1940). Erroneous or
inadequate jury instructions are also bases for a new trial.
See Murphy v. City of Long Beach, 914 F.2d 183, 187
(9th Cir. 1990).
verdict is against the “clear weight of the
evidence” when, after giving full respect to the
jury's findings, the judge “is left with the
definite and firm conviction that a mistake has been
committed” by the jury. Landes Const. Co., Inc. v.
Royal Bank of Canada, 833 F.2d 1365, 1371-72 (9th Cir.
1987) (citations omitted). In ruling on a motion for new
trial, “the judge can weigh the evidence and assess the
credibility of witnesses, and need not view the evidence from
the perspective most favorable to the prevailing
party.” Air-Sea Forwarders, Inc. v. Air Asia
Co., 880 F.2d 176, 190 (9th Cir. 1989) (citations and
quotation marks omitted). However, a court should not upset
the verdict “merely because it might have come to a
different result from that reached by the jury.”
Roy v. Volkswagen of Am., Inc., 896 F.2d 1174, 1176
(9th Cir. 1990) (quotation marks and citation omitted).
IGPI's Motion for Judgment as a Matter of Law under Rule
close of TimberStone Management's case in chief, IGPI
made a Rule 50(a) motion for judgment as a matter of law. The
Court denied the motion and the case was submitted to the
jury. IGPI now renews its motion for judgment as a matter of
law pursuant to Rule 50(b), asserting that there was
insufficient evidence as to: (1) TimberStone Management's
trademark dilution claim; (2) TimberStone Management's
unfair competition claim; (3) the jury's finding that
IGPI infringed TimberStone Management's marks
maliciously, fraudulently, or willfully; (4) actual damages.
threshold matter, TimberStone Management argues that IGPI is
procedurally barred from asserting the first three grounds
for its Rule 50(b) motion because IGPI failed to preserve
these arguments. The Court agrees.
Rule 50(a), a pre-verdict motion for judgment as a matter of
law must “specify . . . the law and facts that entitle
the movant to the judgment.” Fed.R.Civ.P. 50(a)(2).
“Because it is a renewed motion, a proper
post-verdict Rule 50(b) motion is limited to the grounds
asserted in the pre-deliberation Rule 50(a) motion. Thus, a
party cannot properly raise arguments in its post-trial
motion for judgment as a matter of law under Rule 50(b) that
it did not raise in its pre-verdict Rule 50(a) motion.”
See E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d
951, 961 (9th Cir. 2009); see also Exxon Shipping Co. v.
Baker, 554 U.S. 471 (2008); Fed.R.Civ.P. 50(b) Adv.
Comm. Notes 2006.
Ninth Circuit strictly construes this limitation. See
Freund v. Nycomed Amersham, 347 F.3d 752, 761 (9th Cir.
2003) (district court erred in granting JMOL on punitive
damages where defendant failed to raise the argument in its
Rule 50(a) motion). In fact, courts generally require
sufficiency-of-the-evidence arguments to be made at the level
of a claim's specific elements or sub-elements. See
id.; accord Gierlinger v. Gleason, 160 F.3d 858
(2d Cir. 1998) (“The JMOL motion must at least identify
the specific element that the defendant contends is
insufficiently supported. A generalized challenge is
inadequate.”) (internal quotations and citations
this standard here, the Court determines that IGPI failed to
preserve the sufficiency of the evidence challenges on the
trademark dilution and unfair competition claims. Counsel for
IGPI made the following oral motion under Rule 50(a) for
judgment as a matter of law at the conclusion of TimberStone
I don't believe TimberStone Management has satisfied its
prima facie showing on the myriad of claims, trademark,
infringement, both under the Lanham Act and common law.
Particularly, though, I guess I would like to talk about two
issues, and that is the cybersquatting. I don't think
there has been any evidence of bad faith in connection with
that. There has been a lot of talk about should have, would
have, could have, mistakes, but nothing that would rise to
the level of bad faith.
The other issue is with respect to the intentional
interference claim, there is no evidence of actual damages.
And that intentional interference claim is a state-law claim,
and it's separate and apart from the Lanham Act and
statutory damages, and disgorgement of profits, those sorts
of things. There is simply no evidence of actual damages
being presented to the court that would warrant submitting
any claim with reference to actual damages but particularly
that intentional interference claim, Your Honor. And
that's all. I understand the court's position.
Partial Transcript for Sept. 30, 2016, at 5:2-21,
Dkt. 127. IGPI did not file a brief in support of its motion.
The Court denied the motion and the case was submitted to the
careful review of the transcript, the Court concludes that
IGPI's oral Rule 50(a) motion challenged the sufficiency
of the evidence on only two issues: (1) “bad faith,
” an element of TimberStone Management's
cybersquatting claim, and (2) actual damages. In contrast,
IGPI's Rule 50(b) motion asserts that there was
insufficient evidence on the following issues: (1)
“famousness” of TimberStone Management's
mark, an element of the trademark dilution claim; (2)
“likelihood of confusion, ” an element of the
unfair competition claim; (3) fraud, malice, and willfulness;
and (4) actual damages. Of these, the only argument expressly
raised in the pre-verdict motion was evidence of actual
contends that the remaining arguments were adequately
preserved for three reasons. First, the opening line of its
oral pre-verdict motion presented a comprehensive
sufficiency-of-the-evidence challenge to the “myriad of
[Defendant's] claims.” Second, IGPI notes that the
Court had previously stated its intention to deny the motion.
Finally, TimberStone Management and Court were aware of
IGPI's more specific grounds for the Rule 50 motion, due
to off-the-record discussions and the fact that
“Plaintiff has consistently and repeatedly, throughout
this litigation raised the same exact arguments as to the
sufficiency of Defendant's evidence.”
Court is not persuaded by these arguments. First, the opening
line of IGPI's motion-“I don't believe
TimberStone Management has satisfied its prima facie showing
on the myriad of claims”-falls far short of the
specificity required by Rule 50. See Fed. R. Civ. P.
50(a)(2) (a Rule 50(a) motion “must specify . . . the
law and facts that entitle the movant to the
judgment.”). Courts have stressed that a pre-verdict
motion must bring into focus the precise claims that a movant
contends are insufficiently supported; a generalized
challenge as to “the myriad of claims” fails to
do so. Permitting this sort of all-encompassing motion would
eviscerate the preservation requirement.
the second argument, the failure to comply with Rule 50(b)
has on occasion been excused where a district court prevents
or discourages a party from fully presenting its pre-verdict
motion. For example, in Reeves v. Teuscher, 881 F.2d
1495 (9th Cir. 1989), the Ninth Circuit excused technical
noncompliance with Rule 50, where the district court
interrupted defense counsel's attempt to move for a
directed verdict at the close of evidence and instructed
counsel to move after the verdict-which he did.
Similarly, in Motorola, Inc. v. Interdigital Tech.
Corp., 930 F.Supp. 952, 961 (D. Del. 1996),
rev'd in part on other grounds, 121 F.3d 1461
(Fed. Cir. 1997), the district court had “made clear
that it did not require or desire additional argument at the
time the [Rule 50(a)] motion was made” and therefore
concluded that “it would be unfair to penalize ITC for
acceding to the Court's wishes.” In contrast here,
the Court prompted IGPI to make its Rule 50(a) motion on the
record before the case was submitted to the jury. It did not
request or encourage a merely perfunctory argument. See
Partial Transcript for Sept. 30, 2016, at 4:8.
Counsel's knowledge that the motion would likely be
denied did not excuse his obligation to carefully preserve
the Court finds no support for the notion that off-the-record
discussions may fulfill the preservation obligations under
Rule 50. Ultimately, “[a] lawyer has a duty to preserve
issues on the record for his client.” Belk, Inc. v.
Meyer Corp., U.S., 679 F.3d 146, 159-60 (4th Cir. 2012).
Counsel for IGPI failed to do so here. The Court also advised
counsel for IGPI that any arguments made at the jury
instruction conference should be restated on the record in a
proper Rule 50(a) motion, and provided time for IGPI to do
so. Counsel took this opportunity to challenge the
sufficiency of the evidence on two specific claims, giving
the impression that IGPI did not intend to pursue arguments
about unproven elements of other claims. Even if IGPI had
previously maintained that evidence of fame, likelihood of
confusion, and fraud, malice, and willfulness was lacking,
these arguments were abandoned.
the Court concludes that IGPI is procedurally barred from
obtaining judgment as a matter of law, except on the
sufficiency of the evidence of damages. The Court takes up
this argument below in the comprehensive discussion on
IGPI's Motion for New Trial under Rule 59
alternative to its request for judgment as a matter of law,
IGPI requests a new trial on grounds that the jury verdict
was against the weight of the evidence. The Court will grant
the motion for a new trial as to the trademark dilution claim
and otherwise deny the motion.
prevail on a claim for trademark dilution under the Trademark
Dilution Revision Act (“TDRA”) of 2006, 15 U.S.C.
§ 1125(c), a party must show that its mark is
“famous, ” meaning that “it is widely
recognized by the general consuming public of the United
States as a designation of source of the goods or services of
the mark's owner.” 15 U.S.C. § 1125(c)(2)(A).
“It is well-established that dilution fame is difficult
to prove.” Coach Services, Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012). Protection
from dilution, as opposed to trademark infringement, is
“reserved for a select class of marks- . . . only those
whose mark is a ‘household name.'” Nissan
Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1011
(9th Cir. 2004) (quoting Thane Int'l., Inc. v. Trek
Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002)
(“[T]he mark must be a household name.”); see
also H.R. Rep. No. 104-374, at 3 (1995) (listing Dupont,
Buick, and Kodak as examples of eligible “famous
determine the requisite degree of fame, the court may
consider all relevant factors, including those four
enumerated by statute: (i) the duration, extent, and
geographic reach of advertising and publicity of the mark;
(ii) the amount, volume, and geographic extent of sales of
goods or services offered under the mark; (iii) the extent of
actual recognition of the mark; and (iv) whether the mark was
registered. 15 U.S.C. § 1125(c).
Application of Statutory Factors
this standard here, the Court concludes that TimberStone
Management presented insufficient evidence to support the
jury's finding that the TIMBERSTONE mark is
“famous” within the meaning of the TDRA. As for
the first statutory factor, TimberStone Management's
advertising and promotional efforts were limited in scope.
The company's own Director of Marketing, Tyler Swanson,
described his marketing budget as “extremely
low.” The company's efforts appear limited to
passively maintaining its website and social media accounts,
fairly ubiquitous marketing in today's economy.
TimberStone Management presented no evidence that it has
purchased advertisements or otherwise promoted its brand.
These modest efforts pale in comparison to the dollars spent
advertising truly famous marks, and even those held not
famous. See, e.g., Nissan Motor Co. v. Nissan
Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004)
(upholding lower court's finding that a material dispute
of fact existed regarding whether NISSAN was a famous mark,
despite evidence of more than $898 million in advertising
expenditures); Jada Toys v. Mattel, Inc., 518 F.3d
628 (9th Cir. 2007) (concluding that HOT WHEELS was
sufficiently famous, where $350 million was spent advertising
the mark); Nike, Inc. v. Nikepal Int'l, Inc.,
No. 2:05-CV-1468-GEB-JFM, 2007 WL 2782030, at *5-6 (E.D. Cal.
Sept. 18, 2007) (NIKE mark was sufficiently famous, where the
company spent in excess of $1 billion on promotion); Bd.
of Regents, Univ. of Texas Sys., 550 F.Supp.2d at 677-78
(W.D. Tex. 2008) (University of Texas longhorn logo was not
famous, despite its promotion at nationally televised
football games on ABC and ESPN, on the cover of Sports
Illustrated, on cereal boxes, and on $400 million in UT
publicity, the Michigan course has received accolades in
publications with nationwide distribution, such as GolfDigest
and Golfweek. It was also featured on multiple “best
of” lists and enjoyed a five-star rating from
GolfDigest in 2004 and 2008. However, these articles were too
few to have transformed TIMBERSTONE into a household name.
“Many products receive broad incidental media coverage.
Such promotion does not lead to the conclusion that their
trademarks have become a part of the collective national
consciousness.” Thane Int'l Inc. v. Trek
Bicycle Corp., 305 F.3d 894, 912 (9th Cir.2002). The
impact of such publications is also lessened by the fact that
the TimberStone course of Michigan was almost always listed
alongside dozens or even hundreds of other golf courses
achieving similar reviews. See, e.g., Coach
Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356,
1375 (Fed. Cir. 2012) (substantial media references failed to
show widespread recognition of COACH brand where “many
of the references are limited to mentioning one of CSI's
COACH products among other brands.”).
amount, volume, and geographic extent of sales provide
similarly weak support for a finding of fame. While
TimberStone Management has sold rounds of golf to customers
from almost every state, most came from Michigan and adjacent
states. Joe Rizzo, former Director of Golf at TimberStone
Management, testified that these states are the golf
course's “target area” and that 90-95% of
customers drive to the course. Moreover, TimberStone
Management's sales number only in the tens of thousands,
and golf is the type of activity that is likely to draw a
significant number of repeat customers. TimberStone
Management provided no evidence of the number of unique
customers that had purchased a round of golf from its course.