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Georgia-Pacific Consumer Prods. LP v. Von Drehle Corp.

United States Court of Appeals for the Fourth Circuit

December 11, 2014, Argued; March 30, 2015, Decided

No. 13-2003

Opinion

 [***1371]  [*711]   NIEMEYER, Circuit Judge:

This trademark infringement case presents several issues regarding the appropriate relief that may be granted [**2]  under the  [*712]  Lanham Act, 15 U.S.C. §§ 1051-1141n, specifically § 1116 (authorizing injunctive relief) and § 1117 (authorizing monetary relief).

Georgia-Pacific Consumer Products LP owns the trademark "enMotion," which it uses to brand a paper-towel dispenser that dispenses paper towels when a motion sensor is triggered by the user. Georgia-Pacific designed its enMotion dispenser to dispense only ten-inch paper towels that it manufactured.

Von Drehle Corporation, a North Carolina corporation that competes with Georgia-Pacific in the sale of paper towels, designed a less expensive paper towel -- the "810-B" paper towel -- that it sold specifically for use  [***1372]  in Georgia-Pacific's enMotion towel dispensers.

In response to Von Drehle's practice of selling its 810-B paper towels for "stuffing" into enMotion towel dispensers, Georgia-Pacific commenced three separate actions against Von Drehle or its distributors. Each action alleged that the "stuffing" practice constituted contributory trademark infringement of Georgia-Pacific's enMotion mark, in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a). Specifically, in this action, Georgia-Pacific claimed that Von Drehle "knowingly and intentionally" manufactured the 810-B paper towel "specifically and solely [**3]  for use" in Georgia-Pacific's enMotion towel dispensers and that the practice of stuffing enMotion dispensers with the 810-B paper towel was "likely to cause confusion and . . . deceive End-User Customers." In January 2012, a jury agreed that Von Drehle's conduct constituted contributory trademark infringement and, as requested at closing argument, awarded Georgia-Pacific $791,431, which represented all of the profits that Von Drehle earned from the sale of its 810-B paper towels from 2005 to the date of trial. After the jury returned its verdict, the district court entered a permanent, nationwide injunction prohibiting Von Drehle from directly or indirectly infringing Georgia-Pacific's trademark rights. In addition, because the court found that Von Drehle's infringement was "willful and intentional," it (1) trebled the jury's award from $791,431 to $2,374,293; (2) awarded Georgia-Pacific attorneys fees in the amount of $2,225,782; and (3) awarded it prejudgment interest in the amount of $204,450. Finally, the court awarded Georgia-Pacific $82,758 in court costs.

In a parallel action that Georgia-Pacific commenced in the Western District of Arkansas against one of Von Drehle's distributors, [**4]  the district court had, by the time of the trial in this action, already ruled against Georgia-Pacific, concluding that the practice of stuffing Von Drehle's 810-B paper towel into Georgia-Pacific's enMotion dispensers "did not create a likelihood of confusion," Georgia-Pacific Consumer Prod. LP v. Myers Supply, Inc., No. 6:08-cv-6086, 2009 U.S. Dist. LEXIS 63774, 2009 WL 2192721, at *8 (W.D. Ark. July 23, 2009), and the Eighth Circuit affirmed, 621 F.3d 771, 777 (8th Cir. 2010) (holding that the district court did not "clearly err in finding that the trademark on a dispenser does not indicate the source of the paper towels inside, and concluding that there was no likelihood of confusion, and thus no trademark infringement").

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781 F.3d 710 *; 2015 U.S. App. LEXIS 5082 **; 114 U.S.P.Q.2D (BNA) 1370 ***

GEORGIA-PACIFIC CONSUMER PRODUCTS LP, Plaintiff - Appellee, and GEORGIA-PACIFIC CORPORATION, Plaintiff, v. Von Drehle CORPORATION, a North Carolina corporation, Defendant - Appellant, and CAROLINA JANITORIAL & MAINTENANCE SUPPLY, a North Carolina corporation, Defendant, MYERS SUPPLY, INCORPORATED, Intervenor/Defendant.

Subsequent History: As Amended April 15, 2015.

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of North Carolina, at Raleigh. (5:05-cv-00478-BO). Terrence W. Boyle, District Judge.

Georgia-Pacific Consumer Prods. LP v. Von Drehle Corp., 2013 U.S. Dist. LEXIS 105740 (E.D.N.C., July 28, 2013)

CORE TERMS

district court, injunction, profits, paper towel, dispensers, trademark, infringement, enMotion, trademark infringement, Circuits, nationwide, prejudgment interest, comity, damages, injunctive relief, stuffing, distributors, preclusion, Consumer, willful, courts, rights, treble damages, doctrine of comity, circumstances, manufactured, Lanham Act, awarding, defenses, towel

Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Remedies, Injunctions, Permanent Injunctions, Trademark Law, Damages, Types of Damages, Costs & Attorney Fees, Compensatory Damages, Profits, Prejudgment Interest, Treble Damages, General Overview