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Gavrieli Brands LLC v. Soto Massini (USA) Corp.

United States District Court for the District of Delaware

March 24, 2020, Decided; March 24, 2020, Filed

C.A. No. 18-462 (MN)



/s/ Maryellen Noreika


Presently before the Court is the renewed motion of Defendants Soto Massini (USA) Corporation ("Soto USA") and Thomas Pichler (collectively, "Defendants") for judgment as a matter of law or, in the alternative, for a new trial (D.I. 155) and the motion of Plaintiff Gavrieli Brands LLC ("Plaintiff" or "Gavrieli") for a permanent injunction, attorneys' fees, enhanced damages and pre-and post-judgment interest (D.I. 152).


Plaintiff filed this action on March 26, 2018, asserting claims of patent infringement, trade dress infringement, unfair competition and unjust enrichment against Defendants. [*2] 1 (See D.I. 1; see also D.I. 27). In particular, Plaintiff alleged that Defendants' Terzetto Milano ballet flats ("the accused shoes") infringed U.S. Design Patent Nos. D781,035 ("the '035 Patent"), D781,032 ("the '032 Patent"), D781,034 ("the '034 Patent"), D681,927 ("the '927 Patent") and D761,538 ("the '538 Patent") and that Defendants' infringement was willful. (See D.I. 27 ¶¶ 1-2, 127-181). Plaintiff also asserted that the accused shoes infringed Plaintiff's trade dress in its Tieks® brand ballet flats under the Lanham Act and common law, that Defendants engaged in unfair competition and false advertising in violation of the Lanham Act and California law and that Defendants were unjustly enriched. (Id. ¶¶ 182-228).

The Court presided over a five-day jury trial from April 29, 2019 to May 3, 2019. (See D.I. 144). On the patent infringement issues, the jury found that Defendants willfully infringed the '035, '032, '034 and '927 Patents (collectively, "the Patents-in-Suit") and that the Patents-in-Suit were not invalid.2 (Id. at 2-4). The jury further found that Defendants intentionally infringed the Tieks® trade dress and intentionally engaged in false advertising, which — per the parties' stipulation — also rendered Defendants liable for unfair competition [*3]  under federal and state law. (Id. at 5-7). The jury also found that Defendants had been unjustly enriched. (Id. at 8). The jury awarded Plaintiff $880,658 in compensatory damages for patent infringement and unjust enrichment, $1,282,000 in compensatory damages for loss of goodwill from Defendants' trade dress infringement, false advertising or unfair competition, $790,000 in compensatory damages for corrective advertising arising from Defendants' trade dress infringement, false advertising or unfair competition, and $880,658 in compensatory damages for Defendants' profits from trade dress infringement, false advertising or unfair competition. (Id. at 9-11; see also D.I. 149 (judgment setting forth breakdown of damages totaling $2,952,658: $880,658 from profits for patent infringement and non-patent claims; $1,282,000 in lost goodwill from non-patent claims; $790,000 for corrective advertising for trade dress infringement, false advertising and unfair competition)). The jury awarded no punitive damages. (D.I. 144 at 12).

On May 13, 2019, the Court entered judgment on the jury verdict under Federal Rule of Civil Procedure 58(b). (See D.I. 149). Both sides filed post-trial motions on June 27, 2019. Plaintiff moved for a permanent injunction, attorneys' [*4]  fees, enhanced damages and pre-and post-judgment interest. (See D.I. 152 & 153). Defendants filed a renewed motion for judgment as a matter of law or, in the alternative, a new trial. (See D.I. 155). Briefing on post-trial motions was completed on July 18, 2019. (See D.I. 152, 153, 154, 155, 156, 157 & 158).3

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2020 U.S. Dist. LEXIS 50649 *

GAVRIELI BRANDS LLC, a California Limited Liability Company, Plaintiff, v. SOTO MASSINI (USA) CORP., a Delaware Corporation, and THOMAS PICHLER, an individual, Defendants.


shoes, infringement, invalidity, attorney's fees, trade dress, false advertising, damages, patent, matter of law, Lanham Act, advertising, unfair competition, new trial, prior art, outsole, blue, post-judgment, designs, permanent injunction, counterclaims, enhanced damage, leather, profits, prejudgment interest, patent infringement, pretrial order, requests, reasons, jury's verdict, post-trial