Maki v. Real Estate Expert Advisors Inc.

• Decision Date: 05 February 2021
• Docket Number: A20A2121
• Parties: Caroline MAKI et al. v. REAL ESTATE EXPERT ADVISORS INC.
• Court: Georgia Court of Appeals

358 Ga.App. 337

855 S.E.2d 72

Caroline MAKI et al.

v.REAL ESTATE EXPERT ADVISORS INC.

A20A2121

Court of Appeals of Georgia.

February 5, 2021

Marc B. Hershovitz, Atlanta, for Appellant.

Jeffrey Matthew Barnes, Atlanta, for Appellee.

Dillard, Presiding Judge.

Our adversarial system is premised on the idea that legal disputes are best resolved through the strategic battle waged by advocates representing their clients’ best interests before a fair and impartial jury. But every so often, counsel for both parties neglect to provide the trial court with the information it needs to properly decide a case, and this failure—no matter how inadvertent—can sometimes result in a proceeding with a substantial error that is harmful as a matter of law. This is such a case.

Following a bifurcated jury trial, Caroline Maki and The Maki Group Real Estate Expert Advisors, LLC¹ were found liable for misappropriating the trade name of Real Estate Expert Advisors, Inc.² On appeal, Maki argues, inter alia , that the trial court erred by failing to instruct the jury on the "likelihood-of-confusion" analysis necessary to reach its verdict.³ Because we agree with Maki, we reverse.

Viewed in the light most favorable to the jury's verdict,⁴ the record shows that REEA is a real estate brokerage firm specializing in facilitating residential purchases and sales. REEA has been in business and operating under the name of "Real Estate Expert Advisors" since 2014. And prior to REEA's use of this name, no other company, business, or individual used those four words in that exact order. Indeed, REEA spent millions of dollars to advertise and promote its name in the metro Atlanta area—including Gwinnett County—since 2014.

REEA learned that Maki was using "Real Estate Expert Advisors" in its advertising, and, shortly thereafter, sent a demand letter to Maki requesting that it immediately cease use of "Real Estate Expert Advisors." Maki refused to do so, and REEA filed suit against Maki, seeking a temporary and permanent injunction under the Georgia Uniform Deceptive Trade Practices Act, damages for misappropriation of a trade name, attorney fees and litigation expenses, and punitive damages. Maki counterclaimed against REEA, seeking damages as a result of REEA "willfully and recklessly ma[king] false representations to [the court] to perpetrate a fraud on [the court] with the goal of stifling legal competition in the real estate industry" and in violation of OCGA § 10-1-372 (a) (8).

A jury returned a verdict in favor of REEA, awarding attorney fees and damages and, following a second trial, punitive damages. Additionally, the jury ruled in REEA's favor on Maki's counterclaims. The trial court then issued judgment on the jury's verdicts and issued the temporary injunction requested by REEA. Maki sought judgment notwithstanding the verdict, which the trial court summarily denied. This appeal follows.

1. Maki argues that the trial court erred by failing to instruct the jury on the likelihood-of-confusion analysis necessary to reach its verdict. More specifically, Maki contends that the trial court neglected to provide the jury with the seven-factor analysis that must be applied to claims brought under the Georgia Uniform Deceptive Trade Practices Act. We agree.

Maki asserts that the trial court was required to instruct the jury to determine the "likelihood of confusion" based upon the following seven factors:

(1) the strength and distinctiveness of the plaintiff's mark; (2) the similarity of the marks; (3) the similarity of the products the marks represent; (4) the similarity of the parties’ retail outlets and customers; (5) the similarity of advertising media; (6) the defendant's intent; and (7) actual confusion.

Importantly, in Ackerman Security Systems, Inc. v. Design Security Systems, Inc. ,⁵ we noted that the "appropriate legal test" for claims brought under the Georgia Deceptive Trade Practices Act is the likelihood-of-confusion test, which requires the examination of a number of elements, including those Maki asserts must be considered.⁶ And of these factors, federal courts have explained that "the type of mark and the evidence of actual confusion are the most important."⁷ But these seven factors "are not exclusive," and each factor need not be considered in every case.⁸

Here, the trial court instructed the jury, in relevant part, as follows:

A person engages in deceptive trade practice when, in the course of her business, vocation, or occupation, she passes off goods or services as those of another; causes likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of goods or services; causes likelihood of confusion or of misunderstanding as to affiliation, connection or association with, or certification by another; or engages in any other conduct which similarly creates a likelihood of confusion or of misunderstanding.

In order to prevail in an action under the Georgia Uniform Deceptive Trade Practices Act, the plaintiff need not prove competition between the parties or actual confusion or misunderstanding.

So, Maki is correct that the trial court did not instruct the jury as to the seven likelihood-of-confusion factors.⁹ But this does not end our inquiry.

Maki's requests to charge did not contain an instruction as to the likelihood-of-confusion analysis.¹⁰ And it is undisputed that Maki issued no objection to the trial court's instructions to the jury.¹¹ As a result, we review this assertion only for "substantial error" because, "[n]otwithstanding any other provision of [ OCGA § 5-5-24 ], the appellate courts shall consider and review erroneous charges [when] there has been a substantial error in the charge which was harmful as a matter of law, regardless of whether objection was made hereunder or not."¹²

A charge constituting substantial error is one that is harmful as a matter of law—i.e. , "blatantly apparent and prejudicial to the extent ... it raises the question of whether the losing party has, to some extent at least, been deprived of a fair trial because of it, or a gross injustice is about to result or has resulted directly attributable to the alleged errors."¹³ Suffice it to say, instances of reversal under OCGA § 5-5-24 (c) "are likely to be very, very rare."¹⁴ Indeed, generally speaking, if counsel—who are skilled and trained in the law and who have prepared and tried the case—"fail to see the error and enter an exception as provided in subsections (a) and (b), it is not to be regarded as harmful."¹⁵ Nevertheless, it is the duty of the trial court, whether requested or not, to "give the jury appropriate instructions on every substantial and vital issue presented by the evidence, and on every theory of the case."¹⁶

Here, the instructions given by the trial court tracked the language of the relevant Code sections nearly verbatim.¹⁷ But the "central inquiry" in an infringement case is "whether there is a ‘likelihood of confusion’ on the part of consumers between the names and symbols used by the two parties,"¹⁸ which is reflected by repeated reference to the "likelihood of confusion" in the statute itself.¹⁹ And the extent to which two marks are confusingly similar cannot be assessed "without considering all seven factors to ensure that the determination is made in light of the totality of the circumstances."²⁰

Thus, because of this clear mandate, the omission from the charge of the seven "likelihood of confusion" factors was so blatantly apparent and prejudicial that it raises the question of whether Maki was deprived of a fair trial.²¹ The sole issue in this case—whether there was a likelihood of confusion between the parties’ names—was erroneously presented because the instructions were incomplete, which necessarily hampered the jury's deliberations.²² This, in turn, hinders our analysis of the jury's verdict.²³ Accordingly, although we are certainly troubled by the failure of trial counsel to request this additional instruction or otherwise notice its omission,²⁴ we must reverse and order that a new trial be conducted because the error in this case was harmful as a matter of law.²⁵

2. Based on our decision in Division 1, we need not address Maki's remaining enumerations of error.

Judgment reversed.

Rickman, P. J., and Brown, J., concur

1 For ease of reference, Caroline Maki and The Maki Group Real Estate Expert Advisors, LLC are collectively referred to as "Maki" throughout the opinion.

2 For ease of reference, Real Estate Expert Advisors, Inc. will be referred to as "REEA" throughout the opinion.

3 Maki separately argues that the trial court erred in failing to grant judgment notwithstanding the verdict because REEA's mark as applied to its services is generic and merely descriptive. Maki also contends that the court likewise erred in entering a judgment awarding actual damages against it for violating the Georgia Uniform Deceptive Trade Practices Act when that statute only permits injunctive relief. Finally, Maki maintains that the trial court erred in awarding REEA attorney fees and litigation expenses under OCGA § 13-6-11, as well as punitive damages. But we need not address any of these enumerations of error because Maki is entitled to a new trial.

4 See, e.g. , Bloom v. Camp , 336 Ga. App. 891, 892 (1), 785 S.E.2d 573 (2016) ("The ‘any evidence’ standard of review applies to this argument, that is, we must affirm if there is any evidence to support the jury's verdict, and in making this determination, we must construe the evidence in the light most favorable to ... the prevailing party.").

5 201 Ga. App. 805, 412 S.E.2d 588 (1991).

6 Id. at 806 (1) ; see ITT Corp. v. Xylem Grp., LLC , 963 F.Supp.2d 1309, 1327 (6) (ND Ga. 2013) ("Whether confusion occurs under [the] Georgia Deceptive Trade Practices Act, [OCGA] § 10-1-372, requires the same ‘likelihood of confusion’ analysis found in trademark-infringement claims under the Lanham Act.").

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