PODS Enters., LLC v. U-Haul Int'l, Inc.

• Decision Date: 24 August 2015
• Docket Number: Case No. 8:12–cv–01479–T–27MAP.
• Citation: 126 F.Supp.3d 1263
• Parties: PODS ENTERPRISES, LLC, Plaintiff, v. U–HAUL INTERNATIONAL, INC., Defendant.
• Court: U.S. District Court — Middle District of Florida

126 F.Supp.3d 1263

PODS ENTERPRISES, LLC, Plaintiff,

v.U–HAUL INTERNATIONAL, INC., Defendant.

Case No. 8:12–cv–01479–T–27MAP.

United States District Court, M.D. Florida, Tampa Division.

Filed Aug. 24, 2015.

Charles E. Cantine, Jason M. Sobel, Joseph Diamante, Michael A. Fernandez, Vivian Luo, Stroock & Stroock & Lavan, LLP, New York, NY, Jeffrey S. Bucholtz, King & Spalding, LLP, Washington, DC, Jonathan B. Sbar, Raul Valles, Jr., Robert L. Rocke, Rocke, McLean & Sbar, PA, Tampa, FL, for Plaintiff.

Leo R. Beus, Beus Gilbert, PLLC, Phoenix, AZ, R. Charles Henn, Jr., William H. Brewster, Kilpatrick Townsend & Stockton, LLP, Atlanta, GA, Dennis L. Wilson, Kilpatrick Townsend & Stockton, LLP, Beverly Hills, CA, William P. Cassidy, Jr., Johnson & Cassidy, P.A., Tampa, FL, for Defendant.

ORDER

JAMES D. WHITTEMORE, District Judge.

BEFORE THE COURT is U–Haul's Renewed Motion for Judgment as a Matter of Law, Or in the Alternative, Motion for New Trial, Or to Alter the Judgment (Dkt. 399), PODS' Motion to Amend the Judgment (Dkt. 400), and PODS' Motion for Attorneys' Fees and Expenses (Dkt. 389). Each motion is opposed (Dkts. 418, 409, 408).

Upon consideration, U–Haul's Motion for Judgment as a Matter of Law, Or in the Alternative, Motion for New Trial, Or to Alter the Judgment (Dkt. 399) is DENIED. PODS' Motion to Amend the Judgment (Dkt. 400) is GRANTEDin part and DENIEDin part. PODS' Motion for Attorneys' Fees and Expenses (Dkt. 389) is DENIED. U–Haul's request for oral argument (Dkt. 399 p. 25) is DENIED.

I. BACKGROUND

After a two-week trial and three days of deliberations in this trademark infringement case, the jury found in favor of PODS Enterprises, LLC and against U–Haul International, Inc. on all eight counts, counterclaims, and affirmative defenses, and returned a verdict of $60.7 million (Dkt. 337: Verdict).¹ PODS contended, and the jury agreed, that U–Haul's use of the words "pod" and "pods" to market U–Haul's products infringed on and diluted PODS' federally-registered trademarks. The jury expressly found against U–Haul on its affirmative defenses of genericness and descriptive fair use (Dkt. 337: Verdict ¶¶ 13, 14).

U–Haul's Rule 50 motions made during trial were largely denied (Dkts. 321, 323, 329). Ruling was deferred on U–Haul's motion for directed verdict on genericness ab initio (Sept. 19 Trial Tr. at 217). After briefing, that motion was denied and final judgment was entered in accordance with the verdict. (Dkts. 369, 370). U–Haul renews its Rule 50 motions and moves for a new trial on similar grounds. PODS moves to amend the judgment to include a permanent injunction against U–Haul, to dismiss U–Haul's attempt to cancel PODS' trademarks, and for an award of prejudgment and postjudgment interest, enhanced damages, and attorneys' fees.

II. U–HAUL'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR NEW TRIAL

A. Standard

Under Rule 50, the "proper analysis is squarely and narrowly focused on the sufficiency of evidence," that is, whether the evidence is "legally sufficient to find for the party on that issue." Chaney v. City of Orlando, 483 F.3d 1221, 1227 (11th Cir.2007). All reasonable inferences are drawn in favor of the nonmoving party, no credibility determinations may be made, the evidence may not be weighed, and evidence that the jury need not have believed is to be disregarded. Reeves v. Sanderson Plumbing Prods., 530 U.S. 133, 150–151, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). Such a motion is to be granted "only if the evidence is so overwhelmingly in favor of the moving party that a reasonable jury could not arrive at a contrary verdict." Middlebrooks v. Hillcrest Foods, Inc., 256 F.3d 1241, 1246 (11th Cir.2001). In sum, review is limited to whether there is sufficient evidence to support the verdict. Chaney, 483 F.3d at 1227. The standard is "heavily weighted in favor of preserving the jury's verdict." Pensacola Motor Sales Inc. v. E. Shore Toyota, LLC, 684 F.3d 1211, 1226 (11th Cir.2012).

A Rule 59 motion for new trial based on evidentiary grounds is to be granted only if the verdict "is against the clear weight of the evidence or will result in a miscarriage of justice." Hewitt v. B.F. Goodrich Co., 732 F.2d 1554, 1556 (11th Cir.1984) (quotation omitted). "Because it is critical that a judge does not merely substitute his judgment for that of the jury, new trials should not be granted on evidentiary grounds unless, at a minimum, the verdict is against the great-not merely the greater-weight of the evidence." Lipphardt v. Durango Steakhouse of Brandon, Inc., 267 F.3d 1183, 1186 (11th Cir.2001) (quotation omitted); Redd v. City of Phenix City, Ala., 934 F.2d 1211, 1215 (11th Cir.1991) ("When there is some support for a jury's verdict, it is irrelevant what we or the district judge would have concluded.").

Applying these standards, I find that the evidence introduced at trial was sufficientto support the jury's verdict, the verdict is not against the great weight of the evidence, and the verdict did not result in a miscarriage of justice. And to the extent U–Haul takes issue with the jury's factual findings, the Supreme Court has recently reaffirmed the significance of a jury's determinations. Hana Financial, Inc. v. Hana Bank, ––– U.S. ––––, 135 S.Ct. 907, 911, 190 L.Ed.2d 800 (2015) ("[W]hen the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.").

B. Liability

1. Trademark Infringement

U–Haul challenges the sufficiency of the evidence supporting the jury's finding that U–Haul's use of PODS' trademarks was likely to cause confusion. Likelihood of confusion is evaluated using a seven-factor test: (1) the type and strength of the trademark allegedly infringed, (2) similarity of the parties' marks, (3) similarity of the parties' goods, (4) similarity of the parties' sales channels, distribution, and customers, (5) similarity of advertising media, (6) defendant's intent, and (7) actual confusion. Frehling Enterprises, Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir.1999). The most important of these factors are the type and strength of the trademark and actual confusion. Lone Star Steakhouse v. Longhorn Steaks, 122 F.3d 1379, 1382 (11th Cir.1997).

Applying this test "entails more than the mechanistic summation of the number of factors on each side; it involves an evaluation of the overall balance" and a consideration of "the unique facts of each case." Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649 (11th Cir.2007) (quotation and citation omitted). And additional factors may be considered. Tana v. Dantanna's, 611 F.3d 767, 780 (11th Cir.2010). Because the test for likelihood of confusion is fact intensive, the question is usually reserved for the jury. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983).

Here, the jury necessarily found a likelihood of confusion because it returned a verdict against U–Haul for trademark infringement. Id. at 973 ("The jury necessarily found that there was a likelihood of confusion between the two marks because it returned a verdict against Clarke for trademark infringement."). That factual finding must be upheld if based on substantial evidence, that is, "evidence of such quality and weight that reasonable and fair-minded men in the exercise of impartial judgment might reach different conclusions." Id., quoting Boeing Co. v. Shipman, 411 F.2d 365, 374 (5th Cir.1969).

Moreover, if a plaintiff shows, as PODS did, that the defendant adopted its mark to benefit from plaintiff's reputation, "this fact alone" may be sufficient to justify the inference that there is confusing similarity. Frehling, 192 F.3d at 1340. As will be discussed, a reasonable jury could certainly have found this to have been the case, based on the evidence describing U–Haul's calculated decision to use "pod" and "pods" on its website.

In sum, PODS introduced sufficient evidence supporting the jury's finding that U–Haul's use of "pod" and "pods" was likely to cause confusion. The jury's verdict in this regard was not against the great weight of the evidence. As to the type and strength of mark, PODS introduced evidence that it possessed two incontestable federal trademark registrations, favoring a finding of a strong mark. (PX 1, PX 2). See Dieter v. B & H Indus. of Sw. Florida, Inc., 880 F.2d 322, 329 (11th Cir.1989) ("[I]ncontestable status is a factor to be taken into consideration in likelihood of confusion analysis. Because [plaintiff's] mark is incontestable, then it is presumed to be at least descriptive with secondary meaning, and therefore a relatively strong mark."); Accord Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 938 (11th Cir.2010). Although U–Haul introduced evidence that third parties generically used "pod" and "pods" in support of its argument of a weak mark, the jury was entitled to reject or give little weight to this evidence and give more weight to the incontestable status of PODS' marks.

With respect to the similarity of the parties' marks, sufficient evidence was introduced to support the jury's finding that this factor weighed in favor of a likelihood of confusion. U–Haul raises a series of arguments that the parties' marks were different, including that U–Haul did not use "pod" and "pods" as a trademark, that PODS used the marks in capital letters whereas U–Haul used the lowercase, and that the parties' websites and mobile apps presented different commercial impressions. The overall impression of the marks, however, was a question of fact for the jury, and all of these arguments were made to the jury and implicitly rejected by virtue of the verdict.

The jury could reasonably have found that the linguistic similarities between "U–Box pod" and "PODS containers" and U–Haul's widespread use of the words "pod" and "pods" on its website outweighed the dissimilarities...