Brennan's Inc v. Dickie Brennan & Co

376 F.3d 356

Opinion

United States Court of Appeals Fifth Circuit F I L E D IN THE UNITED STATES COURT OF APPEALS July 23, 2004

FOR THE FIFTH CIRCUIT Charles R. Fulbruge III Clerk _____________________

No. 03-30470 _____________________

BRENNAN’S INC; OWEN E BRENNAN, JR; JAMES C BRENNAN; THEODORE M BRENNAN

Plaintiffs - Appellants - Cross-Appellees

v.

DICKIE BRENNAN & COMPANY INC; RICHARD J BRENNAN, JR

Defendants - Appellees - Cross-Appellants

RICHARD J BRENNAN; COUSINS RESTAURANTS INC; SEVEN SIXTEEN IBERVILLE LLC

Defendants - Appellees

_________________________________________________________________

Appeals from the United States District Court for the Eastern District of Louisiana _________________________________________________________________

ON PETITION FOR REHEARING

Before KING, Chief Judge, and BENAVIDES and CLEMENT, Circuit Judges.

PER CURIAM:

The defendants have filed a petition for panel rehearing in

which they ask that we further limit the scope of the proceedings

on remand.

Parts II.C.1 and II.C.2 of our opinion explained that the

1998 Agreement shields Richard Brennan Jr. (Dickie) and his companies from trademark liability for uses permitted under the

Agreement, but not from liability for uses that exceed the

Agreement’s permissions. The jury found that uses associated

with Dickie Brennan’s Steakhouse, but not Dickie Brennan’s Palace

Café, exceeded the permissions of the 1998 Agreement. We clarify

our mandate to make explicit that the plaintiffs may not pursue

on remand a trademark action against either Dickie or Cousins

(which operates the Palace Café) with regard to the Palace Café.

The defendants argue that there is no need for a remand even

regarding the Steakhouse restaurant, on the ground that the

plaintiffs’ contract-based lost-profits award provides a complete

recovery on any trademark-related cause of action. Pet. for

Reh’g at 4-13. Our opinion indicated that the plaintiffs might

not be able to obtain any additional relief, but it is for the

district court to determine in the first instance whether

trademark-specific remedies are available and appropriate in this

case and whether the jury’s award was inadequate to capture the

losses compensable in a trademark action.

Relying on an argument on which our opinion expressed no

view, see __ F.3d at __ [slip op. at 2846 n.7], the defendants

ask that we limit the scope of the actions that may be pursued on

remand against Richard Brennan Sr. Pet. for Reh’g at 3-4. Their

arguments in this regard may be addressed to the district court.

With that, the petition for rehearing is DENIED.