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The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationTrademarks

IP News

By Howard Shire and Alicia Ginsberg
April 01, 2023
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Proving Damages for Trademark Infringement In the Eleventh Circuit

In Instant One Media, Inc. v. EzFauxDecor, LLC et al., No. 22-11374 (11th Cir. Mar. 9, 2023), the United States Court of Appeals for the Eleventh Circuit affirmed in part, vacated in part, and remanded a damages award from the United States District Court for the Northern District of Georgia.

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Background

Instant One Media, Inc. (Instant One) sued EZ Faux Decor, LLC (EZ) for breach of contract under Georgia state law and trademark infringement under the Lanham Act. Both sell vinyl adhesive products to resurface countertops and appliances. In 2017, Instant One and EZ settled previous litigation where EZ agreed not to use the term "instant" within two words of the terms "granite" or "stainless." Instant One then registered trademarks for "instant granite" and "instant stainless." By 2018, EZ was violating the parties' settlement agreement and infringing Instant One's trademarks.

Instant One sued, alleging a state law breach of contract claim and federal law trademark infringement claim. The district court granted partial summary judgment to Instant One as to liability for breach of contract, and the liability for trademark infringement and damages as to both claims went to trial. During the trial, Instant One called its President to testify to the primary issues and its lawyer to testify to his attorneys' fees. The jury found EZ liable on the trademark claim and awarded Instant One three types of damages: $275,000 actual damages for either the breach of contract or trademark infringement; $500,000 in disgorgement on the trademark claim; and $260,000 in attorneys' fees under a Georgia state law fee-shifting statute. The district court denied EZ's renewed motion for judgment as a matter of law and entered judgment for Instant One. EZ appealed that denial with respect to each type of damages.

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