CJC Holdings, Inc. v. Wright & Lato, Inc.

• Decision Date: 15 December 1992
• Docket Number: No. 92-8032,92-8032
• Parties: , 25 U.S.P.Q.2d 1212 CJC HOLDINGS, INC., d/b/a ArtCarved, Plaintiff-Appellee, v. WRIGHT & LATO, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 60

979 F.2d 60

24 Fed.R.Serv.3d 453, 25 U.S.P.Q.2d 1212

CJC HOLDINGS, INC., d/b/a ArtCarved, Plaintiff-Appellee, v. WRIGHT & LATO, INC., Defendant-Appellant.

No. 92-8032.

United States Court of Appeals Fifth Circuit.

Dec. 15, 1992.

William D. Raman, William G. Barber, Amber L. Hatfield, Arnold, White & Durkee, Austin, Tex., for defendant-appellant.

Christina Carlson Dodds, Rick Harrison, Jones, Day Reavis & Pogue, Austin, Tex., for plaintiff-appellee.

Appeal from the United States District Court for the Western District of Texas.

Before GOLDBERG, SMITH, and EMILIO M. GARZA, Circuit Judges.

JERRY E. SMITH, Circuit Judge:

I.

Since 1955, CJC Holdings, Inc. (CJC), d/b/a ArtCarved, has produced its Lyric wedding ring, which consists of a white gold shell inlaid with a separate yellow gold band covered with a floral design. The ring has no copyright or patent protection. Wright & Lato (W & L) copied the ring using a direct mold technique and began selling the ring; W & L puts its own trademark on the inside band of the ring and does not advertise the ring as a 'Lyric' ring.

ArtCarved sent W & L several letters telling it to cease producing the ring or risk suit. W & L responded but did not agree to stop producing the ring. W & L has sold only one copy of the ring that was received in Texas, and ArtCarved solicited that sale through a jewelry store.

II.

CJC sued W & L, claiming it had copied and marketed CJC's 'Lyric' ring and asserting six claims: (1) trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) common law unfair competition; (3) injury to business reputation and dilution of distinctive quality under the Texas Anti-Dilution Statute, Tex.Bus. & Com.Code Ann. § 16.29; (4) conversion; (5) tortious interference with prospective contractual relations and prospective economic advantage; and (6) declaratory judgment under 28 U.S.C. §§ 2201-2202 and Tex.Civ.Prac. & Rem.Code Ann. ch. 37. CJC sought numerous forms of relief, including injunctions against further violations; impoundment of infringing items during pendency of the action; destruction of infringing items; accounting of sales and profits; an award of all profits; actual damages, including lost profits; exemplary damages; treble damages under the Lanham Act; declaratory relief; reasonable attorney fees; and costs.

After W & L failed to file a timely response, the district court clerk entered default. A chronological list best describes the events leading to W & L's default:

1989: CJC discovered that W & L had copied and marketed the Lyric ring.

3/9/90: CJC sent a letter to W & L, asking it to stop.

3/26/90: W & L responded but did not agree to stop.

4/9/90: CJC sent another letter, asking W & L to stop.

4/16/90: W & L responded, saying it would not stop.

6/20/90: CJC filed its complaint.

6/22/90: CJC effected substituted service through the Texas Secretary of State. This made W & L's answer due on 7/16/90.

6/26/90: W & L signed a certified mail receipt acknowledging that it had received the summons and complaint from the Secretary of State. Also on this day, W & L's attorney received a courtesy copy of the complaint--but not the summons--from CJC's attorney. CJC's attorney explained that the suit had been filed but did not say that service had been made. W & L's attorney phoned W & L's president, Greg Clapper, and told him to watch for the complaint and summons.

6/29/90: W & L closed its doors for its annual corporate vacation. No one worked at W & L's office during this vacation.

7/16/90: W & L opened its doors. Its answer was due on this day.

7/17/90: Clapper went to Washington, D.C., on business.

7/19/90: Clapper went to Kansas City on business.

7/21/90: Clapper went to a trade show in New York. While there, he approached CJC's president and inquired about the suit. Clapper said W & L had not been served, but CJC's president said that W & L had been served.

7/26/90: Clapper returned from the trade show and discovered the complaint and summons.

7/30/90: W & L's attorney asked CJC for an extension on the deadline so it could defend the suit.

7/31/90: CJC denied the request and filed a motion for entry of default.

8/1/90: The court clerk entered default.

8/6/90: W & L filed a motion to set aside the default.

8/15/90: W & L filed a motion to dismiss based upon no trade dress protection, no personal jurisdiction, improper venue, and insufficient service of process under Fed.R.Civ.P. 12(b).

4/15/91: CJC filed a motion for default judgment.

5/30/91: Court denied W & L's motion to set aside default and took CJC's motion for entry of default judgment under advisement.

6/20/91: W & L filed a motion for reconsideration of court's ruling refusing to set aside default, or in the alternative, relief from such ruling under Fed.R.Civ.P. 60(b)(1).

11/20/91: Court entered order denying W & L's motion for reconsideration and granting CJC's motion for default judgment.

12/9/91: Court entered final judgment.

The final judgment granted CJC an injunction requiring W & L to label its rings so as to avoid public confusion, but the court found no evidence to support an award of damages. The court did award CJC $115,000 in attorneys' fees, plus interest and costs.

III.

W & L argues that the district court should have set aside the default judgment. We review a district court's refusal to set aside an entry of default under Fed.R.Civ.P. 55(c) or to set aside a default judgment under Fed.R.Civ.P. 60(b) under an abuse of discretion standard. Federal Sav. & Loan Ins. Corp. v. Kroenke, 858 F.2d 1067, 1069 (5th Cir.1988). ¹

Under either rule, we examine the same factors: whether the default was willful, whether setting it aside would prejudice the adversary, and whether a meritorious defense is presented. United States v. One Parcel of Real Property, 763 F.2d 181, 183 (5th Cir.1985) (citing Meehan v. Snow, 652 F.2d 274, 277 (2d Cir.1981)). These factors are not "talismanic," and we will consider others. Dierschke v. O'Cheskey (In re Dierschke), 975 F.2d 181, 184 (5th Cir.1992). The ultimate inquiry remains whether the defendant shows "good cause" to set aside the default. Id. The district court need not consider all of these factors. Id.

Here, the district court based its decision upon W & L's willful failure to answer the complaint. Because willfulness is a finding of fact, we review that finding under a clearly erroneous standard. Id.

Our prior cases use the term 'willful' when considering the culpability of the defendant's actions. See, e.g., One Parcel of Real Property, 763 F.2d at 183. Other cases, echoing the "excusable neglect" language of rule 60(b), speak of neglect or culpable conduct on the part of the defaulting party. E.g., Kroenke, 858 F.2d at 1069-70 ("justifiable neglect" and "culpability of the defendant's conduct"); United States v. One 1978 Piper Navajo PA-31 Aircraft, 748 F.2d 316, 318 (5th Cir.1984) ("justifiable neglect" and "excusable neglect"). We conclude that the latter view is more consistent with rule 60(b) and our recent opinion in Dierschke. Here, the district court held that W & L's default was willful, a finding which, if upheld, would certainly not constitute excusable neglect. We therefore review the district court's determination of willfulness, but we suggest that district courts should use the less subjective excusable neglect standard in the future.

W & L relies upon several important facts in arguing that its default was not willful. W & L's president, Clapper, and W & L's outside counsel claim they were not aware they had been served until after the answer was due. Clapper claims he received the registered letter and sent it to the accounting department, thinking it pertained to a collection proceeding. Several days later, the entire company went on vacation for two weeks, pursuant to industry custom.

Following the vacation, Clapper attended several trade shows, at one of which Clapper sought out ArtCarved's President, Sullivan, to inquire about the suit. Clapper stated that W & L had not been served, while Sullivan claimed service had been made. After Clapper returned, he immediately called counsel, who requested an extension of time; this occurred fourteen days after the answer was due. W & L blames CJC for the confusion, because CJC sent W & L's counsel a copy of the complaint but not the summons.

We cannot say that the district court's finding was clearly erroneous. CJC's counsel sent W & L's counsel a copy of the complaint as a courtesy; this put W & L on notice it would soon be served with process. W & L seems to suggest that, by sending only the complaint, CJC tricked it into believing it would not be served. We find no merit in this argument. The federal rules did not require CJC to send W & L the complaint; CJC did so out of courtesy.

W & L's position implies it was less likely to be alert for service of process than if CJC had sent nothing. We think W & L should have expected service of process. W & L received the certified letter three days before its company-wide vacation. We do not find it unreasonable to expect companies to read certified letters in three days. If the rule were otherwise, service by certified mail would rarely be effective. Based upon these facts, the district court's finding on willfulness was not clearly erroneous, and we cannot say the district court abused its discretion in refusing to set aside the default judgment.

IV.

We next must address W & L's claim that the district court improperly awarded attorneys' fees to CJC. The Lanham Act allows a court to award attorneys' fees in exceptional cases. 15 U.S.C. § 1117(a) (West Supp.1992). We recently declined the opportunity to define the term 'exceptional,' Taco Cabana Int'l v. Two Pesos Inc., 932 F.2d 1113, 1127 (5th Cir.1991), aff'd, --- U.S. ----, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992), so we define that term here. A district court should decide whether a case is...