Hoffmann Bros. Heating & Air Conditioning v. Hoffmann Air Conditioning & Heating, LLC
| Decision Date | 29 March 2023 |
| Docket Number | 4:19-cv-00200-SEP |
| Parties | HOFFMANNN BROTHERS HEATING AND AIR CONDITIONING, LLC, Plaintiffs, v. HOFFMANN AIR CONDITIONING AND HEATING, LLC, et al., Defendants, v. HOFFMANNN BROTHERS HEATING AND AIR CONDITIONING, INC., ROBERT J. HOFFMANNN, CHRIS HOFFMANNN, AND ROBERT JOSEPH HOFFMANNN, JR. Counterclaim Defendants. |
| Court | U.S. District Court — Eastern District of Missouri |
Before the Court are Plaintiff's Motion for Judgment as a Matter of Law, or alternatively, Motion for New Trial Defendants' Motion for Confirmation from the Court Regarding Preliminary Injunctive Relief, and multiple motions for bills of costs. Docs. [467], [474], [490], [493], [494] [495]. The motions have been fully briefed. For the reasons set forth below, Plaintiff's and Counterclaim Defendants' motions are denied and Defendants' motions are granted.
This matter comes before the Court after more than a decade of litigation among the parties. In 1988, Defendant Thomas E Hoffmann (Tom), and his older brother, Counterclaim Defendant Robert Hoffmann (Robert), along with their father, purchased what would eventually become Hoffmann Brothers Heating and Air Conditioning, Inc.[1]Doc. [252] at 2. In 2010, Robert made plans to buy Tom out of the family business, Doc. [278] ¶ 1 *SEALED*, and a lawsuit between the brothers ensued in the Circuit Court of St. Louis County. See Doc. [285] ¶ 2. On July 14, 2011, the parties entered into a Settlement Agreement. Id. The 2011 Settlement Agreement included, among other things, a non-disparagement clause, nonsolicitation agreements, stock payment provisions, the dismissal and release of claims involved in the previous lawsuit, and a provision that provided for Tom to receive a payment in exchange for his agreement to not use the “Hoffmann” name in connection with an HVAC business for the four years following the settlement. See Doc. [251-2] *SEALED* (Copy of the 2011 Settlement Agreement).
After executing the Settlement Agreement, Tom created a new HVAC company, operating under the name “Engineered Solutions.” See Doc. [59] ¶ 22. In the summer of 2017, Tom began using the business name “Hoffmann Air Conditioning & Heating” (Hoffmann AC) and operating the website hoffmannairconditioning.com. Id. ¶ 23. Soon after Tom began operating with the Hoffmann name, Robert emailed counsel to determine whether Hoffmann Brothers had any recourse against Tom changing his business name and advertising the new name on his website and social media accounts. Doc. [278] ¶ 11 *SEALED*. On January 25, 2019, Plaintiff's counsel sent a Cease & Desist letter to Tom, demanding that Tom stop using the word “Hoffmann” in conjunction with his HVAC business. Doc. [285] ¶ 9. Shortly thereafter, on February 8, 2019, Plaintiff Hoffmann Brothers filed this suit against Defendants Tom Hoffmann and Hoffmann AC, bringing seven counts alleging various claims relating to trademark and copyright infringement, cyberpiracy, and breach of contract. See Doc. [1] (Complaint); Doc. [55] (Second Amended Complaint). Defendants later filed counterclaims against Plaintiff Hoffmann Brothers as well as Robert J. Hoffmann, Robert J. Hoffmann Jr. (Joe), and Chris Hoffmann (Counterclaim Defendants). Doc. [59]. After Defendants filed a motion for summary judgment, Plaintiff voluntarily dismissed its cyberpiracy claim with prejudice. See Doc. [276] at 16. At summary judgment, Defendants prevailed on Plaintiff's claims for copyright infringement (Count 1) and dilution (Count 5). See Doc. [362]. Plaintiff prevailed on Count II of Defendants' counterclaim for breach of contract, and Counterclaim Defendants prevailed on Defendants' counterclaims for defamation and tortious interference. Id. The parties proceeded to trial on Plaintiff's remaining trademark-related claims, its breach of contract claims, and Defendants' claim for prima facie tort against Joe Hoffmann.
On June 17, 2022, after an eight-day trial, the jury found in favor of Defendants on Plaintiff's primary claims of trademark infringement and unfair competition. See Doc. [460]. The jury found that Defendants had a good faith belief that they were entitled to use the mark Hoffmann Air Conditioning & Heating. See Doc. [460-1] at 4. The jury also found that Defendants did not intentionally set out to deceive or confuse consumers in order to trade on the goodwill or reputation of the Hoffmann Brothers mark. Id. at 3. The jury further found in favor of Defendants on their counterclaim of prima facie tort against Counterclaim Defendant Joe Hoffmann, awarding $800 in actual damages and $5,000 in punitive damages. Id. For Plaintiff's two breach of contract claims against Tom, the jury found in favor of Tom on Plaintiff's claim that Tom breached the 2011 Settlement Agreement by using the name “Hoffmann” in an HVAC business name between 2011 and 2015, and found in favor of Plaintiff on its claim that Tom had breached the 2011 Settlement Agreement by failing to return or destroy all Hoffmann Brothers materials in his possession, but awarded only nominal damages of $1 to Plaintiff for the breach. See Doc. [460]. Finally, the jury found in favor of Counterclaim Defendant Robert Hoffmann on Tom Hoffmann's breach of contract claim against him. Id.
In addition to Plaintiff's post-trial motions, Defendants now request relief from certain self-imposed injunctions entered into throughout the course of this litigation. In the early days of this litigation, Plaintiff Hoffmann Brothers filed a motion for preliminary injunction, followed by an amended motion for preliminary injunction, both of which were based on its trademark claims. See Docs. [16]; [153]. Before the Court issued a decision on Plaintiff's requests for a preliminary injunction, the parties entered into two joint agreements wherein Defendants agreed to abide by the restrictions sought in the injunction, and that were to remain in effect until “final disposition of this case.” Docs. [149] at 2; [173] at 2. Defendants maintain that when the jury found in their favor on Plaintiff's trademark infringement claims, that constituted “final disposition” of the claims, and now ask the Court to find that they are no longer bound by the restrictions imposed under the joint agreements. Doc. [467].
Rule 50 of the Federal Rules of Civil Procedure states that, when ruling on a renewed motion for judgment as a matter of law “the court may: (1) allow judgment on the verdict, if the jury returned a verdict; (2) order a new trial; or (3) direct the entry of judgment as a matter of law.” Fed.R.Civ.P. 50(a)-(b).
In ruling on a motion under Rule 50, a court must draw all reasonable inferences in favor of the nonmoving party. Roberson v. AFC Enters., Inc., 602 F.3d 931, 933 (8th Cir. 2010); Canny v. Dr. Pepper/Seven-Up Bottling Grp., Inc., 439 F.3d 894, 900 (8th Cir. 2006). A court must deny a motion for judgment as a matter of law if it concludes that reasonable jurors could draw different conclusions based on the evidence. Roberson, 602 F.3d at 933. A court must also “give the prevailing party the benefit of all favorable inferences which may reasonably be drawn from the facts.” Neely v. Am. Family Mut. Ins. Co., 930 F.Supp. 360, 368 (N.D. Iowa 1996) (quoting Minneapolis Cmty. Dev. Agency v. Lake Calhoun Assocs., 928 F.2d 299, 301 (8th Cir. 1991)). In other words, a court ruling on a renewed motion for a judgment as a matter of law, must:
(1) resolve direct factual conflicts in favor of the nonmovant, (2) assume as true all facts supporting the nonmovant which the evidence tended to prove, (3) give the nonmovant the benefit of all reasonable inferences, and (4) deny the motion if the evidence so viewed would allow reasonable jurors to differ as to the conclusions that could be drawn.
Stults v. Am. Pop Corn Co., 815 F.3d 409, 418 (8th Cir. 2016) (quoting Jones v. Edwards, 770 F.2d 739, 740 (8th Cir. 1985)). And in doing so, a court must “not make credibility determinations or weigh the evidence.” Meyers v. Starke, 420 F.3d 738, 741 (8th Cir. 2005).
The Eighth Circuit has stated that “[j]udgment as a matter of law is appropriate only when the record contains ‘no proof beyond speculation to support the verdict.'” Am. Bank of St. Paul v. TD Bank, N.A., 713 F.3d 455, 462 (8th Cir. 2013) (quoting Wilson v. Brinker Int'l, Inc., 382 F.3d 765, 770 (8th Cir. 2004)) (additional citations omitted); see also Arabian Agric. Servs. Co. v. Chief Indus., Inc., 309 F.3d 479, 482 (8th Cir. 2002). Put differently, judgment as a matter of law “is appropriate ‘when all the evidence points one way and is susceptible of no reasonable inferences sustaining the position of the non-moving party.'” Hortica-Florists'Mut. Ins. Co. v. Pittman Nursery Corp., 729 F.3d 846, 854 (8th Cir. 2013) (quoting Ehrhardt v. Penn Mut. Life Ins. Co., 21 F.3d 266, 269 (8th Cir. 1994)). Still, “‘[a] mere scintilla of evidence is inadequate to support a verdict' and judgment as a matter of law is appropriate when the record contains no proof beyond speculation to support the verdict.” Clark v. Kan. City Mo. Sch. Dist., 375 F.3d 698, 701 (8th Cir. 2004) (quoting Larson v. Miller, 76 F.3d 1446, 1452 (8th Cir. 1996)).
Federal Rule of Civil Procedure 59(a)(1)(A) states that a court may grant a motion for a new trial after a jury trial “for any reason for which a new trial has heretofore been granted in an action at law in federal court.” Fed.R.Civ.P 59(a)(1)(A). A new trial is appropriate if there is a “clear showing that the outcome is against the great weight of the evidence so as to constitute a miscarriage of justice.” Weitz Co. v. MH Wash., 631 F.3d 510, 520 (8th Cir. 2011) (quoting Foster v. Time Warner Entm t Co., ...
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