Eko Brands v. Adrian Rivera Maynez Enterprises Inc

District Court, W.D. Washington·Decided March 30, 2020·No. 2:17-cv-00894·Unknown

Opinion

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3 WESTERN DISTRICT OF WASHINGTON 6 EKO BRANDS, LLC, 7 Plaintiff, 8 v. C17-894 TSZ 9 ADRIAN RIVERA MAYNEZ MINUTE ORDER ENTERPRISES, INC.; and ADRIAN 10 RIVERA, 11 Defendants. 12 The following Minute Order is made by direction of the Court, the Honorable 13 Thomas S. Zilly, United States District Judge: (1) Plaintiff Eko Brands, LLC’s motion to amend judgment, docket no. 151, is 14 GRANTED in part and DENIED in part, as follows: 15 (a) With regard to the reasonable royalty awarded to plaintiff by a jury in the prior patent litigation between the parties, plaintiff’s motion to amend 16 Paragraphs 46–48 of the Findings of Fact and Conclusions of Law, docket no. 149, to reflect that plaintiff may elect between such royalty award and a disgorgement 17 of defendants’ profit associated with products bearing the marks ECO FILL DELUXE, ECO FILL DELUXE 2.0, or ECO-FLOW during the period from 18 April 2, 2015, through June 8, 2018, is DENIED. Despite its awareness long before trial that double recovery was an issue in this case, plaintiff did not 19 previously contend that it is entitled to such election. See Zimmerman v. City of Oakland, 255 F.3d 734, 740 (9th Cir. 2001) (observing that a district court “does 20 not abuse its discretion when it disregards legal arguments made for the first time on a motion to amend”). Moreover, the authorities upon which plaintiff relies do 21 not support its position. In Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 466 F.3d 1000 (Fed. Cir. 2006), the Federal Circuit made clear that patent infringement 22 and trademark infringement damages may not be awarded for the same sales of the 1 same accused devices. Id. at 1016-20. Nowhere in the decision does the Federal Circuit discuss the concept of an “election” between remedies. Moreover, Aero 2 involves patent and trademark infringement damages that were awarded in the same trial. In this matter, plaintiff had already obtained the patent royalty award, 3 and the award had already been affirmed by the Federal Circuit, before the Court issued its Findings of Fact and Conclusions of Law on January 30, 2020. See 4 Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367 (Fed. Cir. 2020) (decided Jan. 13, 2020). Although a similar sequence was at issue in Apple, 5 Inc. v. Samsung Elecs. Co., 2014 WL 4467837 (N.D. Cal. 2014), which was also cited by plaintiff, in that case, the district court acknowledged the double-recovery 6 problem presented by an award of damages in a prior case for design patent infringement and the award of damages in the instant case for infringement of 7 utility patents, but it opted not to eliminate any duplicative damages until after the appeals in both cases had been resolved. Id. at *25. The Apple Court did not 8 indicate how it would resolve the double-recovery issue or suggest that the matter would be subject to the plaintiff’s unilateral election, but rather stated that it would 9 “consult with the parties” and “allow for appropriate briefing” after both appeals were resolved. Id. at *26. The procedural posture of this case is entirely different, 10 and plaintiff has recovered the amount adequate to compensate it for patent and trademark infringement for the period from April 2, 2015, through June 8, 2018. 11 (b) With regard to plaintiff’s and defendants’ products’ respective 12 compatibility with the Keurig® 2.0 machine, plaintiff’s motion to amend Paragraphs 49–52 of the Findings of Fact and Conclusions of Law, docket no. 149, 13 to reflect that defendants’ profit associated with the ECO FILL 2.0 product is attributable solely to trademark infringement and/or unfair competition, is 14 DENIED. Plaintiff’s motion to amend merely relitigates matters decided by the Court. See Zimmerman, 255 F.3d at 740 (affirming the denial of a Rule 59(e) 15 motion because it “repeated legal arguments made earlier and sought to introduce facts that were available earlier”). Plaintiff has not assigned error to Chart 1 on 16 Page 25 of the Findings of Fact and Conclusions of Law, docket no. 149, which reflects the data in Trial Exhibit 473, and Chart 1 supports the Court’s conclusion 17 that defendants’ gross revenues for their ECO FILL products correlated with defendants’ introduction of an operable reusable filter for Keurig® 2.0 machines, 18 as opposed to their use of the mark ECO FILL. As reflected in Chart 1, for almost a year before Keurig placed its 2.0 machine on the market in October 2014, 19 defendants experienced virtually de minimis sales of ECO FILL products, but shortly thereafter, defendants’ gross revenues soared. When other manufacturers, 20 including Keurig, began offering cartridges compatible with the 2.0 machines, defendants’ market share declined. Plaintiff’s contention that defendants’ residual 21 volume of sales (for the years 2016–2018) relating to their 2.0 compatible product is tied exclusively to the use of the ECO FILL mark, as opposed to other factors 22 like customer loyalty to a product first used before other options became available, 1 is undermined by the market-share information that plaintiff unsuccessfully attempted to introduce at trial. See Findings of Fact and Conclusions of Law at 34 2 n.19 (docket no. 149). Over the years following Keurig’s redesign, plaintiff has lost ground to Keurig, which does not use any mark containing ECO or EKO, and 3 not to defendants, whose percentage of industry sales has remained fairly steady. Moreover, during the years 2016 through 2018, defendants experienced net losses 4 with respect to the ECO FILL 2.0 product, and thus, any error in not disgorging to plaintiff the profit associated with that product for those years is harmless.1 In 5 contrast, plaintiff was awarded all of the net profits associated with the ECO FILL 1.0 product, see Tables 1 and 2 of the Findings of Fact and Conclusions of Law 6 (docket no. 149); see also new Table 3 attached hereto (see ¶ 1(d), below), and it therefore cannot be heard to complain. 7 (c) With regard to defendants’ profits associated with ECO CAFAFE 8 filters, plaintiff’s motion to amend Paragraph 60 of the Findings of Fact and Conclusions of Law, docket no. 149, to reflect that, notwithstanding plaintiff’s 9 lack of a competing product, such profits are attributable solely to use of the mark ECO CARAFE and must be disgorged to plaintiff, is DENIED. Plaintiff’s 10 assertion that the Court erred in not awarding ECO CARAFE related profits simply because plaintiff did not have a directly competing product misapprehends 11 the Court’s ruling. The Court did not consider the absence of a competing product as a standalone reason for denying disgorgement, but rather as circumstantial 12 evidence that the profits at issue were attributable to a factor other than use of the mark ECO CARAFE. Neither of the Ninth Circuit opinions cited by plaintiff 13 support a different result. In Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117 (9th Cir. 1968), although the products were different, they bore the 14 identical mark, namely “Black & White,” which the trademark registrant had used in interstate commerce for more than 50 years in connection with its “scotch of 15 excellent reputation,” and which the infringers used for beer, but apparently only within intrastate commerce. Id. at 120.

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Eko Brands v. Adrian Rivera Maynez Enterprises Inc, (W.D. Wash. 2020).

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Zimmerman v. City Of Oakland
255 F.3d 734 (Ninth Circuit, 2001)
Eko Brands, LLC v. Adrian Rivera Maynez Enters.
946 F.3d 1367 (Federal Circuit, 2020)
Maier Brewing Co. v. Fleischmann Distilling Corp.
390 F.2d 117 (Ninth Circuit, 1968)