Jurgens v. McKasy
| Decision Date | 07 March 1991 |
| Docket Number | No. 89-1645,90-1105,89-1645 |
| Parties | George W. JURGENS and Margaret M. Jurgens, Plaintiffs/Appellees, v. Timothy McKASY d/b/a Tonka Marketing and CBK, Ltd., Defendants-Appellants. Federal Circuit |
| Court | U.S. Court of Appeals — Federal Circuit |
Brian B. O'Neill, Faegre & Benson, Minneapolis, Minn., argued for plaintiffs/cross-appellants. With him on the brief were Alan M. Anderson and Felicia J. Boyd, Minneapolis, Minn.
Thomas Tinkham, Dorsey & Whitney, Minneapolis, Minn., argued for defendants-appellants. With him on the brief were Stuart R. Hemphill, Michael J. Wahoske and Richard C. Strasser, Minneapolis, Minn.
Before RICH, Circuit Judge, SMITH, Senior Circuit Judge, and PLAGER, Circuit Judge.
These appeals are from a judgment of the United States District Court for the District of Minnesota in a jury case involving patent infringement and unfair competition. The judgment awarded increased damages and injunctive relief to plaintiffs George and Margaret Jurgens for defendants' patent infringement, unfair competition under Lanham Act Sec. 43(a), and violation of the Minnesota Deceptive Trade Practices Act. We affirm the judgment in No. 90-1105, except to the extent it awarded increased Lanham Act damages. We dismiss appeal No. 89-1645 for lack of appellate jurisdiction.
While driving by an airport in the summer of 1975, Jelmer Shjeflo saw an airport windsock with a ball on top of the pole supporting the windsock. The arrangement Shjeflo applied for a utility patent on his conception on October 27, 1976. A single claim was presented for examination, which was allowed without rejection or amendment. The claim reads:
reminded Shjeflo of a goose, and gave birth to his idea of a windsock hunting decoy. In 1976 Shjeflo developed a windsock decoy having a goose-head, stake, and windsock body bag.
1. A decoy comprising a head portion having a neck portion therebeneath and made of relatively rigid material, a hoop member attached to the bottom of the neck portion and extending downward therefrom, a spike attached to the bottom of the hoop and projecting downward therefrom, said spike being adapted to be inserted into the ground, said head and neck portions simulating the head of a water fowl, a flexible bag having a wind sock construction with an opening at the front end with the edges of the bag adjacent the opening fixed to the hoop to keep and maintain the opening in an open condition, the bag having flared out center portions, a tapered rearward portion, whereby when the decoy is positioned so that the opening in the bag is facing into the wind, the wind will inflate the bag so that the bag will give the appearance of the body of a water fowl with the flared out center portions giving the appearance of the folded wings of the decoy, and the tapered rearward portion giving the appearance of the tail of the water fowl.
See also Figures 1 and 4 of the Shjeflo patent, No. 4,062,141, issued December 13, 1977, entitled "DECOY," reproduced below.
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Shjeflo marketed his decoys under the name North Wind Decoys ("North Wind"), with little success in the first few years. In 1980, Shjeflo granted to the Jurgens a license to sell the decoys under the North Wind name. The Jurgens' sales grew slowly at first, but took off after they began selling the decoys as lawn ornaments. The Jurgens then purchased the Shjeflo patent and North Wind trademark for $187,500.
In 1985, CBK, Ltd. ("CBK") saw and obtained a North Wind decoy at a trade
show. Later, CBK's product designer traced around the Jurgens' windsock body and made some modifications to its shape. The resulting drawings were sent to Taiwan for production. CBK began selling its decoys, called "Wind Decoys," in 1986.
On June 23, 1986, the Jurgens sued CBK and Timothy McKasy ("McKasy"), one of CBK's distributors, for selling windsock decoys. The Jurgens accused McKasy of infringing the Shjeflo patent, 1 and accused both McKasy and CBK of infringing its trade dress (the "look and feel" of its windsocks) under Lanham Act Sec. 43(a), 15 U.S.C. Sec. 1125(a) (1982), 2 and violating the Minnesota Deceptive Trade Practices Act ("MDTPA"), Minn.Stat. Sec. 325D.44.
Shortly after the complaint was filed, CBK persuaded the Patent and Trademark Office ("PTO") to reexamine the Shjeflo patent claim in the light of prior art not considered in the original examination. Nonetheless, the patent claim was confirmed by the PTO without amendment.
Trial in the district court was by jury, with special verdicts. The jury returned special verdicts for the Jurgens on their claims for patent and trade dress infringement--finding $12,600 in patent damages (against McKasy) and $243,350 in Sec. 43(a) damages ($1,350 against McKasy, $242,000 against CBK). For the MDTPA claim, the jury's verdicts were inconsistent. As to CBK, the jury found no MDTPA violation in one verdict, yet inexplicably assessed $800,000 in punitive damages in another. As to McKasy, it found no violation and assessed no damages.
For obvious reasons, the trial court delayed entering judgment upon the verdicts until the parties had submitted post-trial motions. The Jurgens moved for treble damages, prejudgment interest, and attorney fees on the patent and Lanham Act claims; and for JNOV/new trial on the MDTPA "no liability" verdict. McKasy and CBK, on the other hand, moved for JNOV/new trial on the patent and Lanham Act claims, and CBK moved to strike the $800,000 punitive damage award under the MDTPA.
The court granted the Jurgens' motion for increased damages, doubling the patent and Lanham Act damages against McKasy and trebling the Lanham Act damages against CBK. The court also granted the Jurgens' motion for JNOV of liability against CBK on the MDTPA claim, thereby reconciling the inconsistency between the MDTPA verdicts. The court rejected the McKasy and CBK motion for JNOV on the patent and Lanham Act claims, because they had failed to move for a directed verdict at the close of all the evidence, and denied their alternative motion for a new trial. However, the court granted CBK's motion to strike the $800,000 punitive damage award as unwarranted by the evidence. The court deferred ruling on the Jurgens' request for prejudgment interest and attorney fees. Judgment was entered accordingly on July 5, 1989.
On August 3, 1989, McKasy and CBK appealed from the judgment (Appeal No. 89-1645), and on August 11, 1989, the Jurgens cross-appealed (Appeal No. 89-1658). Subsequently, on October 27, 1989, the district court ruled on the Jurgens' outstanding motion for prejudgment interest and attorney fees. After the court's ruling, McKasy and CBK appealed a second time (Appeal No. 90-1105), fearful that their first appeal may have been ineffective because of the Jurgens' outstanding motion for prejudgment interest. The Jurgens, however, filed no new notice of cross-appeal.
On May 22, 1990, upon motion by McKasy and CBK, we dismissed the Jurgens' cross-appeal No. 89-1658 (concerning the court's striking of the $800,000 punitive This opinion addresses the McKasy and CBK appeals, Nos. 89-1645 and 90-1105. 3
damage award). We held that a notice of cross-appeal filed before the disposition of an outstanding motion for prejudgment interest was of "no effect." Jurgens v. McKasy, 905 F.2d 382, 385 (Fed.Cir.1990)
OPINION
In a jury trial, there are two decisionmakers, the judge and the jury. In general, the judge decides issues of law and issues committed to his discretion, and the jury decides issues of fact that are material to the case and in genuine dispute. On proper appeal from a judgment in a jury case, we review the decisions made by the judge for prejudicial legal error (e.g., jury instructions) or abuse of discretion (e.g., increasing damages), the standard depending upon the particular issue. In contrast, we review the sufficiency of the evidence underlying a jury verdict on an issue of fact to determine whether the jury's decision was supported by substantial evidence. See, e.g., Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552, 10 USPQ2d 1201, 1207 (Fed.Cir.1989).
Between these simple extremes of issues decided by the judge and issues decided by the jury are issues of law submitted to the jury upon disputed facts. When an issue of law has been submitted to the jury upon disputed facts--for example, a jury special verdict on patent claim obviousness where the underlying facts have been disputed--the standard of review has two parts. We first presume that the jury resolved the underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if they are supported by substantial evidence. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 674 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). Then we examine the legal conclusion de novo to see whether it is correct in light of the presumed jury fact findings. See Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 762, 9 USPQ2d 1417, 1421 (Fed.Cir.1988), cert. denied, --- U.S. ----, 110 S.Ct. 62, 107 L.Ed.2d 30 (1989); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 718-19, 223 USPQ 1264, 1273 (Fed.Cir.1984).
In this case, CBK and McKasy failed to bring a timely motion for directed verdict. That failure dramatically changes the standard of review on this appeal--at least with respect to fact issues decided by the jury. Where a directed verdict motion is not made at the close of the evidence, the sufficiency of the evidence underlying presumed jury findings cannot be challenged through a JNOV motion or on appeal. Smith v. Ferrel, 852 F.2d 1074, 1075 (8th Cir.1988); ...
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