Conopco, Inc. v. May Dept. Stores Co.

• Decision Date: 26 May 1992
• Docket Number: No. 90-1475C(3).,90-1475C(3).
• Citation: 797 F. Supp. 740
• Parties: CONOPCO, INC., d/b/a Chesebrough-Pond's USA Co., Plaintiff, v. MAY DEPARTMENT STORES COMPANY, Venture Stores, Inc., the Benjamin Ansehl Company, and Kessler Containers Ltd., Defendants.
• Court: U.S. District Court — Eastern District of Missouri

797 F. Supp. 740

CONOPCO, INC., d/b/a Chesebrough-Pond's USA Co., Plaintiff, v. MAY DEPARTMENT STORES COMPANY, Venture Stores, Inc., the Benjamin Ansehl Company, and Kessler Containers Ltd., Defendants.

No. 90-1475C(3).

United States District Court, E.D. Missouri, E.D.

May 26, 1992.

Edward J. Hejlek, Senninger, Powers, Leavitt & Roedel, St. Louis, Mo., for Venture & May Dept. and The Benjamin Ansehl Co. & Kessler Containers Ltd.

J.W. Gipple, Gipple & Hale, Washington, D.C.

Stephen J. Horace, St. Louis, Mo., for The May Dept. Stores Co. Ralph W. Kalish, Jr., Kalish & Gilster, St. Louis, for Venture Stores.

Jerome C. Simon, Moser & Marsalek, St. Louis, Mo., for Kessler Containers Ltd.

David M. Harris, Greensfelder, Hemker & Gale, St. Louis, Mo.

Joseph Diamante, Berj A. Terzian, Pennie & Edmonds, New York City, Harry O. Moline, Moline, Ottsen, Mauze, Leggat & Shostak, St. Louis, Mo., for Conopco, Inc.

Mary M. Bonacorsi, Thompson & Mitchell, St. Louis, Mo.

MEMORANDUM

HUNGATE, District Judge.

This matter is before the Court on various post-trial motions.

Defendant The Benjamin Ansehl Company ("Ansehl") moves the Court to amend the judgment entered on January 2, 1992, or in the alternative to order a new trial on certain issues. Ansehl requests oral argument on its motions.

Defendant Kessler Containers, Ltd. ("Kessler") moves the Court to set aside the judgment, findings of fact, and conclusions of law in favor of plaintiff and against Kessler, or in the alternative for a new trial on all issues. Kessler also seeks a stay of execution pending disposition of its motion to amend, and pending notice of appeal, if necessary. Kessler also requests oral argument in support of its motion to amend.

Defendant Venture Stores, Inc. ("Venture") moves to amend and alter the findings, conclusions, and judgment in this cause to remove any determination that Venture is a joint tortfeasor with Ansehl for patent infringement. Venture also requests a stay of execution of the judgment.

Defendant May Department Stores Company ("May") seeks amendment or alteration of the Court's findings, conclusions, and judgment, and also moves for a stay of execution.

Plaintiff Conopco, Inc., d/b/a Chesebrough-Pond's USA Co. ("Conopco") moves for correction of judgment and opposes all defendants' post-trial motions.

Pursuant to Fed.R.Civ.P. 60(a), Conopco seeks to amend this Court's judgment and memorandum entered on January 2, 1992, 784 F.Supp. 648, in order to correct a clerical error. Specifically, Conopco notes that in paragraph 114 of the Court's findings of fact, there is a reference to the secondary meaning survey performed under the supervision and control of Conopco's expert, Dr. Jacob Jacoby. In line 12 of paragraph 114, it is stated: "The study was nondesigned and conducted according to the guidelines articulated in the Manual for Complex Litigation." (emphasis added.) Conopco attaches to its motion a copy of Dr. Jacoby's survey which states: "The study was designed...." (emphasis added.) In light of this clerical error, the Court will amend paragraph 114 of the findings of fact at page 29 of the memorandum filed on January 2, 1992, to delete the word "nondesigned" and replace it with the word "designed."

Defendant Kessler seeks to alter or amend the judgment, or in the alternative for a new trial on all issues. Generally, Kessler asserts that the Court erred in holding Kessler liable for trademark and trade dress infringement because Kessler was not a knowing, intentional, or contributing infringer. Kessler contends that it should not be held liable under Count II of Conopco's complaint because it was not named in Count II and no evidence was adduced at trial that established Kessler's status as a contributory infringer. Kessler argues that the Court erred in its assessment of the amount of Kessler's liability, and in awarding plaintiff's damages based on Kessler's proven gross sales.

Conopco responds that, prior to trial, Kessler stipulated to facts necessary to establish its liability for trademark and trade dress infringement. Based on said stipulations, the Court concluded that "there is no question that Kessler knowingly and purposely aided, induced and contributed to trademark and trade dress infringement." (Conclusions of Law ¶ 105). The Court also found that Kessler enjoyed rewards and financial gain after having actual knowledge of Conopco's claims. See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854-55, 102 S.Ct. 2182, 2188-89, 72 L.Ed.2d 606 (1982). Kessler fails to establish any basis sufficient to reverse or amend this Court's finding that Kessler is a contributory infringer and is jointly and severally liable to plaintiff.

Kessler contends first that, through the time of trial, it was never named as a defendant under Count II of plaintiff's complaint, which sought trademark infringement damages solely against May, Venture, and Ansehl. In support of its contention, Kessler cites Klugh v. United States, 620 F.Supp. 892 (D.S.C.1985), for the proposition that "claims that have not been pleaded ... may not be the basis of recovery." Klugh at 900.

Kessler's argument is misplaced. The claim of trademark infringement was pleaded by Conopco. At issue is the fact that Kessler was not named. Klugh addresses the sufficiency of pleadings under the federal rules. The court stated that the function of the complaint is "to put the defendant on notice of the incident out of which the cause of action arose." Roberts v. Acres, 495 F.2d 57 (7th Cir.1974); Klugh, supra at 900. The Court finds that Kessler, a named defendant in the complaint, was put on notice as to the incident out of which the cause of action arose based on its inclusion in Count III for trade dress infringement. The trademark and trade dress infringement claims were both based on the same underlying facts.

Under such circumstances, the Court may hold Kessler liable under both Counts II and III of the complaint. See Webb v. Hiykel, 713 F.2d 405, 408 (8th Cir.1983). Webb involves joint tortfeasors in a civil rights action. The Eighth Circuit Court of Appeals granted plaintiff relief with respect to a defendant, even though the plaintiff had not specifically pled a theory of recovery as to that defendant. The court stated that "the record shows plaintiff presented the ... theory with regard to other defendants. They cannot now claim prejudice due to application of this theory to another defendant.... Finally, the allegations of the pleadings were sufficiently broad to notify the previously unnamed defendant that he could be held responsible for acting `in concert' with other defendants." Id. As noted above, this Court found that Kessler was a contributory infringer. Accordingly, Kessler's contentions with respect to liability under Count II are rejected.

The Court similarly rejects Kessler's assertions with respect to the Court's assessment of damages. The Court found that all of the defendants willfully and intentionally infringed the VASELINE and INTENSIVE CARE trademarks, and assessed treble damages against the infringing defendants. As a joint tortfeasor, Kessler is jointly and severally liable to plaintiff for all damages suffered as a result of defendants' infringing acts. See Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1023 (9th Cir.1985), cert. denied, 474 U.S. 1059, 106 S.Ct. 802, 88 L.Ed.2d 778 (1986).

Additionally, the Court was within its discretion in awarding damages in the amount of $115,632 based on Kessler's gross sales of infringing bottles. After reviewing the evidence presented at trial and the parties' proposed post-trial findings of fact and conclusions of law, the Court based its damage award on gross sales rather than an award based on profits alone, as Kessler advocates. Such a determination is fully within the Court's discretion. See Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132 (9th Cir.1986). Accordingly, Kessler's motion to alter or amend the judgment, or alternatively for a new trial, is denied. Kessler's request for oral argument on its motion is denied as well.

Venture's motion to amend and alter the Court's findings, conclusions, and judgment contends that Venture should not be held jointly and severally liable on Count I of Conopco's complaint because there is no finding or conclusion that Venture shared in Ansehl's profits or acted as an agent of Ansehl with respect to Ansehl's infringing activities. Specifically, Venture argues that (1) manufacturers and retailers should only be jointly and severally liable when they share profits through an agency relationship; and (2) patent infringement is not an indivisible injury. Conopco responds that Venture's arguments contradict the record evidence and misconstrue the underlying principle of joint and several liability.

The Court listed numerous findings of fact which established that Venture worked closely with Ansehl in developing the infringing lotion product. (See Findings of Fact Nos. 71, 72, 73, 118, 130, 134, 135, 136). In its reply memorandum in support of its motion to amend, Venture asserts that Conopco is attempting to "lump all three of its separate claims (patent infringement, trademark infringement, and trade dress infringement) together so as to bootstrap this Court's findings on trademark infringement and trade dress infringement as support for the preposterous claim that Venture was `involved in the development and production' of the patented lotion." Venture is correct insofar as the Court did not find that Venture created the actual lotion formula. However, the Venture lotion product includes the infringing lotion and the infringing packaging. The result is a single product which caused the injury to Conopco.

Venture contends that the imposition of joint and several liability on a retailer, like Venture, for the infringing acts of a manufacturer, like Ansehl, is inconsistent with damage theories for...