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Exclaim Mktg., LLC v. DirecTV, LLC

United States Court of Appeals for the Fourth Circuit

October 28, 2016, Argued; December 29, 2016, Decided

No. 15-2399, No. 15-2399

Opinion

 [*251]  PER CURIAM:

A jury awarded $760,000.00 to Exclaim Marketing, LLC, ("Exclaim") on its North Carolina Unfair and Deceptive Trade Practices Act ("UDTPA") claim against DirecTV, LLC, ("DirecTV") and $25,000.00 to DirecTV on its counterclaim for trademark infringement. Thereafter, the district court granted DirecTV's motions for judgment as a matter of law on the UDTPA claim and for an increased award of profits under the counterclaim. Exclaim appeals both of these judgments. In addition, DirecTV has filed a cross-appeal challenging the district court's denial of its motion for attorney's fees. For the reasons that follow, we affirm the judgments of the district [**2]  court in their entirety.

Exclaim is a nationwide marketing company that, in relevant part, acts as a liaison between potential satellite television consumers and satellite television retailers. It purchases thousands of telephone numbers that are then included in telephone directories under various listings. Often, a single Exclaim telephone number will be used in multiple listings in multiple directories. When a consumer calls the number, a telemarketer at a call center asks some screening questions and then forwards the  [*252]  call to one of its clients, a retailer of satellite television. These retailer-clients pay Exclaim for each forwarded call, regardless of whether the consumer eventually purchases satellite television.

The retailers in turn have contracted with one or more providers of satellite television to "market, advertise, and promote" their services. Exclaim Mktg., LLC v. DirecTV, LLC (Exclaim I), 134 F. Supp. 3d 1011, 1016 (E.D.N.C. 2015). DirecTV and Dish Network are the leading satellite television providers in the United States. DirecTV's retailer contracts regulate how its retailers operate and include a restriction that DirecTV retailers can only contract with a third party -- such as Exclaim -- with DirecTV's written consent. DirecTV did not provide written [**3]  authorization for its retailers to contract with Exclaim.

Although most of Exclaim's telephone directory listings are identified in generic terms such as "satellite television," some of its listings used the name "DirecTV" or a close variant such as "Direct TV" or "DIRECTTV." When DirecTV discovered the unauthorized use of its name, the company concluded that was a violation of its trademark. Accordingly, DirecTV hired an outside company to investigate who owned the listings by calling the numbers associated with them. In addition, one of DirecTV's employees also called some of the listings. At times, the callers would give the intermediary telemarketer a false name as part of their conversation. Once DirecTV identified Exclaim as the owner of numbers tied to these allegedly infringing listings, DirecTV contacted Exclaim and asked that Exclaim coordinate to have the listings removed or renamed. Exclaim took steps to remove some of the listings, but over the course of several years DirecTV continued to identify unauthorized listings owned by Exclaim using DirecTV's name and its variants.

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674 Fed. Appx. 250 *; 2016 U.S. App. LEXIS 23378 **; 2016 WL 7479315

EXCLAIM MARKETING, LLC, Plaintiff - Appellant, v. DIRECTV, LLC, Defendant - Appellee, and DIRECTV OPERATIONS, LLC; DIRECTV, INCORPORATED, Defendants.EXCLAIM MARKETING, LLC, Plaintiff - Appellee, v. DIRECTV, LLC, Defendant - Appellant, and DIRECTV, INCORPORATED; DIRECTV OPERATIONS, LLC, Defendants.

Notice: PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of North Carolina, at Raleigh. (5:11-cv-00684-FL). Louise W. Flanagan, District Judge.

Exclaim Mktg., LLC v. DirecTV, LLC, 134 F. Supp. 3d 1011, 2015 U.S. Dist. LEXIS 132935 (E.D.N.C., 2015)

Disposition: AFFIRMED.

CORE TERMS

district court, infringing, listings, profits, unfair, deceptive, retailers, numbers, trademark infringement, increased profit, attorney's fees, circumstances, matter of law, contends, phone number, television, satellite, telephone, trademark, consumer, damages, deceive, factors, generic, telephone number, unfair practice, phone call, counterclaim, calculation, directories

Antitrust & Trade Law, Consumer Protection, Deceptive & Unfair Trade Practices, State Regulation, Civil Procedure, Trials, Jury Trials, Province of Court & Jury, Appeals, Standards of Review, De Novo Review, Judgment as Matter of Law, Postverdict Judgment, Questions of Fact & Law, Trademark Law, Damages, Types of Damages, Compensatory Damages, Profits, Costs & Attorney Fees, Remedies, Types of Damages, Reviewability of Lower Court Decisions, Preservation for Review, Abuse of Discretion, Damages, Causes of Action Involving Trademarks, Infringement Actions, Burdens of Proof, Patent Law, Collateral Assessments, Attorney Fees