                           NOT FOR PUBLICATION                           FILED
                    UNITED STATES COURT OF APPEALS                        APR 20 2020
                                                                      MOLLY C. DWYER, CLERK
                                                                       U.S. COURT OF APPEALS
                           FOR THE NINTH CIRCUIT

STONE CREEK, INC., an Arizona                   No.    18-15914
corporation,                                           19-15167

                Plaintiff-Appellant,            D.C. No. 2:13-cv-00688-DLR

 v.
                                                MEMORANDUM*
OMNIA ITALIAN DESIGN, INC., a
California corporation,

                Defendant-Appellee.

                   Appeal from the United States District Court
                            for the District of Arizona
                   Douglas L. Rayes, District Judge, Presiding

                     Argued and Submitted December 3, 2019
                            San Francisco, California

Before: LUCERO,** CALLAHAN, and BADE, Circuit Judges.

      This appeal concerns Stone Creek, Inc.’s entitlement to the approximately

$4.5 million that Omnia Italian Design, Inc. made from selling furniture branded

with the STONE CREEK trademark in Bon-Ton Stores, Inc.’s retail locations


      *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
      **
            The Honorable Carlos F. Lucero, United States Circuit Judge for the
U.S. Court of Appeals for the Tenth Circuit, sitting by designation.
throughout the Midwest. This court previously determined that Omnia’s blatant

appropriation of the mark violated the Lanham Act. Stone Creek, Inc. v. Omnia

Italian Design, Inc., 875 F.3d 426, 429 (9th Cir. 2017). We credited the district

court’s factual findings but remanded the case for a determination of whether

Stone Creek was entitled to a disgorgement of Omnia’s profits under 15 U.S.C.

§ 1117(a). Id. at 436, 442. On remand, the district court declined to award profits

and shifted costs to Stone Creek under Federal Rule of Civil Procedure 68. Stone

Creek appeals these decisions. Stone Creek also challenges the district court’s

admission of survey evidence relied upon by one of Omnia’s expert witnesses. We

have jurisdiction under 28 U.S.C. § 1291. We affirm in part, reverse in part, and

remand.1

      1. The district court did not abuse its discretion in denying Stone Creek an

award of Omnia’s profits. See Playboy Enters., Inc. v. Baccarat Clothing Co., 692

F.2d 1272, 1275 (9th Cir. 1982) (“[U]nless we are left with a definite and firm

conviction that a clear error of judgment occurred, the trial court’s denial of an

award of profits must be upheld.”). “An award of profits is not automatic upon a

finding of infringement.” Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778

F.3d 1059, 1073 (9th Cir. 2015) (internal quotation marks and citation omitted).


      1
             Because the parties are familiar with the facts of this case, we need
not discuss them at length here.


                                          2
The district court determined on remand that Omnia’s sales of STONE CREEK-

branded goods were not attributable to the infringement.2 See Maier Brewing Co.

v. Fleischmann Distilling Corp., 390 F.2d 117, 124 (9th Cir. 1968) (“The plaintiff

of course is not entitled to profits demonstrably not attributable to the unlawful use

of his mark.” (quoting Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co.,

316 U.S. 203, 206 (1941)). This finding is not clearly erroneous, as it is supported

by record evidence, including expert testimony. Moreover, the Lanham Act does

not entitle plaintiffs to windfalls. See 15 U.S.C. § 1117(a) (allowing for

disgorgement only to the extent it “constitute[s] compensation and not a penalty”);

Fifty-Six Hope Rd. Music, 778 F.3d at 1073. Disgorgement here, where Omnia did

not profit from the infringement, would amount to an inequitable windfall because

Stone Creek lacks brand awareness in the Midwest and has made only minimal

sales there.

      2. The district court did not abuse its discretion in admitting Omnia’s survey

evidence. Stone Creek asserts that Omnia violated Rule 26 by not disclosing the

individual surveys underlying the opinion of one of its expert witnesses. But

Omnia provided spreadsheets containing the survey responses, and the expert

himself did not receive the data broken out by individual. Stone Creek also


2
      The district court also concluded that Omnia did not willfully infringe Stone
Creek’s mark because it did not intend to trade on Stone Creek’s goodwill.
Because we affirm on alternative grounds, we do not reach this issue.

                                          3
contends that the surveys constitute inadmissible hearsay. But survey evidence is

admitted as a matter of course in trademark disputes, see E. & J. Gallo Winery v.

Gallo Cattle Co., 967 F.2d 1280, 1292-93 (9th Cir. 1992), and the survey

responses are admissible under Federal Rule of Evidence 703 as the bases of the

expert’s opinions.

      3. The district court erred in awarding Omnia costs under Rule 68. Omnia

and Bon-Ton made Stone Creek a joint $25,000 offer of judgment, which Stone

Creek rejected. Stone Creek then improved its position by settling with Bon-Ton

for more than that amount. A settlement resulting in dismissal with prejudice

constitutes a judgment for purposes of Rule 68. Lang v. Gates, 36 F.3d 73, 76 (9th

Cir. 1994). The district court therefore needed only to add the settlement amount

to the final judgment and compare that figure to the defendants’ joint Rule 68

offer. Accordingly, we vacate the district court’s judgment of costs and remand

this case for further proceedings consistent with this disposition.

      AFFIRMED IN PART, REVERSED IN PART, and REMANDED.




                                          4
                                                                             FILED
Stone Creek, Inc. v. Omnia Italian Design, Inc., Nos. 18-15914+               APR 20 2020
                                                                         MOLLY C. DWYER, CLERK
LUCERO, J., concurring in part and dissenting in part:                    U.S. COURT OF APPEALS


      I concur with the conclusion of my colleagues that the district court did not

abuse its discretion in admitting Omnia’s survey evidence and that it erred in

shifting costs to Omnia under Federal Rule of Civil Procedure 68. I disagree,

however, with their conclusion that the profits from sales by Omnia of STONE

CREEK-branded goods were not attributable to Omnia’s infringement.

Additionally, the majority should have addressed willfulness. Accordingly, I

respectfully dissent.

                                           I

      This court previously determined that Omnia infringed Stone Creek’s

trademark. See Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 432,

439 (9th Cir. 2017) (“Stone Creek I”). When a defendant is found liable for

trademark infringement, the Lanham Act provides that a court may award

disgorgement of profits to the plaintiff. See id. at 439 (citing 15 U.S.C.

§ 1117(a)). Willfulness is a prerequisite to the order by a court of such a

disgorgement. Id. at 441. Even if a plaintiff shows willful infringement, it is

entitled only to those profits that are attributable to an unlawful use of its mark.

Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 124 (9th Cir.

1968).


                                           1
                                          A

      The burden of demonstrating that profits are not attributable to the

infringement falls upon the infringer. See Nintendo of Am., Inc. v. Dragon Pac.

Int’l, 40 F.3d 1007, 1012 (9th Cir. 1994). In the case at bar, the district court

concluded that Omnia had met that burden by showing that consumers were

“unaware of the Stone Creek brand” and did not experience actual confusion

between Stone Creek and Omnia in purchasing Omnia furniture bearing the

STONE CREEK mark. Stone Creek Inc. v. Omnia Italian Design Inc., No. CV-13-

00688-PHX-DLR, 2018 WL 1784689, at *3 (D. Ariz. Apr. 12, 2018). Yet neither

the district court nor the majority cite any authority for the proposition that brand

awareness or actual confusion is required in order to prove that profits are

attributable to the unlawful use of a mark. Such a requirement, moreover, is

inconsistent with Ninth Circuit precedent.

      In Maier Brewing, this court recognized that the protection of a trademark is

essentially the defense “of the psychological function of symbols.” 390 F.2d at

122 (quoting Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S.

203, 205 (1942)). A trademark induces purchasers to select the objects they want,

or what objects they have “been led to believe [they] want[], . . . .” Id.

Correlatively, if a trademark owner is able “to convey through the mark . . . the

                                           2
desirability of the commodity upon which [the mark] appears,” then the owner has

achieved “something of value.” Id. Therefore, if an infringer exploits customers’

“response to the diffused appeal of the plaintiff’s symbol,” the infringer profits

from its infringement. Id. at 124. Returning to the Lanham Act, I stress that the

purpose of the Act is to make trademark infringement “unprofitable.” Id. at 123.

      When Omnia elected to “use” the STONE CREEK mark because it sounded

“American,” it acted deliberately and intentionally. Stone Creek I credited the

district court’s findings that (1) Bon-Ton wanted to sell Omnia’s furniture under a

different label with an “American made name” and that (2) Omnia unlawfully

branded its furniture with the STONE CREEK mark because the mark “sounded

American.” Stone Creek Inc. v. Omnia Italian Design Inc., No. CV-13-00688-

PHX-DLR, 2015 WL 6865704, at *3 (D. Ariz. Nov. 9, 2015). Using documentary

materials Stone Creek provided to Omnia in the course of their business

relationship, and without Stone Creek’s knowledge or permission, Omnia digitally

recreated a mark identical to the STONE CREEK mark, slapped it on the furniture

it sold to Bon-Ton, and reaped $4,455,352 from the sale of that furniture to Bon-

Ton’s customers. Id. at *3-4.

      On these facts, it is clear that the “diffused appeal” or “psychological

function” of the STONE CREEK mark is the conveyance to consumers that

furniture bearing the mark was “American[-]made.” Bon-Ton contracted with

                                          3
Omnia to purchase furniture bearing a mark signifying that the furniture was

American-made, and Omnia picked STONE CREEK for this reason. The burden

thus fell upon Omnia to show that the nearly $4.5 million it made through the sale

of STONE CREEK-branded furniture to Bon-Ton, and ultimately to consumers,

was not attributable to its exploitation of Stone Creek’s American-sounding name.1

      Omnia utterly failed to meet that burden. Despite evidence that Omnia stole

the STONE CREEK mark precisely because of its diffused appeal, the district

court concluded that Omnia met its burden by submitting expert testimony and

survey evidence regarding consumers’ lack of awareness of the STONE CREEK

brand. This was error. Neither logic nor precedent supports the notion that brand

awareness is necessary in order for a consumer to make a purchasing decision

based on the diffused appeal or psychological function of a trademark.

      Maier Brewing stands for just the opposite proposition. That case criticized

previous decisions relying solely on injunctions to protect a trademark owner from

the diversion of sales. 390 F.2d at 122-23. Observing that even if a trademark

owner’s goods are of lesser quality than an infringer’s, the court recognized that a

trademark owner is nevertheless “deprived of [its] right to the exclusive use and

control of the reputation of [its] product” if its mark is infringed. Id. at 122. The


1
 The district court and majority erroneously consider only the sale of infringing
furniture by Bon-Ton. Bon-Ton itself was a purchaser of the infringing goods.
See id. at *3.
                                           4
court explained that even if profits were not diverted from the trademark-owner

because its goods were not in direct competition with the infringer’s, the infringer

was unjustly enriched by its infringement, and the “buying public” was harmed by

“some of the more unscrupulous members of our economic community.” Id. at

123. By limiting their focus to “brand awareness” and the fact that Stone Creek

and Bon-Ton had different sales territories, both the district court and the majority

ignored these concerns.

      I would hold that Omnia failed to meet its burden to show that its profits

from the sale of infringing furniture were not attributable to its infringement. Lack

of brand awareness or actual confusion are insufficient to meet that burden.

                                          B

      The majority did not address whether Omnia’s infringement was willful. In

this circuit, disgorgement under the Lanham Act is appropriate “only in those cases

where the infringement is willfully calculated to exploit the advantage of an

established mark” or “where the defendant is attempting to gain the value of an

established name of another.” Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400,

1405, 1406 (9th Cir. 1993) (quotations omitted). 2




2
 The majority cites no precedent supporting that a mark is not “established” if
consumers lack awareness of a brand.
                                          5
      The district court found that Omnia ripped off the STONE CREEK mark

because it “sounded American and because marketing materials and a logo were

already prepared.” 2015 WL 6865704, at *3. It concluded that Omnia therefore

did not intend to trade off Stone Creek’s goodwill because Stone Creek had no

brand awareness in Bon-Ton’s trading territory. But as explained above, an

inherent and protectable aspect of the STONE CREEK mark—its “diffused

appeal” or “psychological function”—necessarily includes its American-sounding

name. Omnia intended to trade off this aspect of the mark; Stone Creek’s lack of

brand awareness or sales in Bon-Ton’s territory is irrelevant to this intent. Because

Omnia’s actions were “calculated to exploit the advantage” of the STONE CREEK

mark—its American-sounding name—I would hold that Omnia’s infringement of

the mark was willful. No one made Omnia do it. As I noted above, its conduct

was deliberate and intentional.

                                         C

      Willfulness and attributability having been satisfied, I address equitable

considerations. The Lanham Act requires that remedies for infringement be

“subject to the principles of equity.” § 1117(a). The majority holds that

disgorgement “would amount to an inequitable windfall since Stone Creek lacks

brand awareness in the Midwest and has only made minimal sales there.” Again,

its reliance on a lack of brand awareness and sales is misplaced.

                                         6
      In Maier Brewing, this court held that even when a trademark owner is not

in direct competition with the infringer, disgorgement is yet appropriate under an

“unjust enrichment rationale.” 390 F.2d at 123. The court recognized that willful

infringement, even in the absence of diverted sales, “slight[s]” the trademark

owner and the public “if the court provides no greater remedy than an injunction.”

Id. In balancing the equities to analyze whether disgorgement is appropriate in the

absence of competition, the court observed:

             It seems scarcely equitable for an infringer to reap the
             benefits of a trade-mark he has stolen, force the registrant
             to the expense and delay of litigation, and then escape
             payment of damages on the theory that the registrant
             suffered no loss. To impose on the infringer nothing more
             serious than an injunction when he is caught is a tacit
             invitation to other infringement.

Id. (quotation and alterations omitted).

      This is precisely what the district court and the majority have done. 3 Omnia

blatantly stole Stone Creek’s mark, forced Stone Creek to the expense and delay of

litigation, and got off with only an injunction. It has not been ordered to disgorge

its ill-gotten profits on the statement that Stone Creek did not have any sales in the




3
 I do not consider it analytically helpful to justify the denial of an award in this
case by characterizing the award as a “windfall.” Using the term “windfall” as a
correlative of a sanction seems to me inappropriate. Under this logic, punitive
damages would always be prohibited, even where jurisprudentially appropriate.


                                           7
territory where the infringing furniture was sold. The district court reasoned that

consumers were unaware of the Stone Creek brand and therefore did not confuse it

with Omnia. But this case presents the exact “unjust enrichment” situation

contemplated by Maier Brewing as an independent basis for disgorgement.

Because Omnia’s behavior mirrors the precise scenario described in Maier

Brewing—conduct this court has condemned—the equities weigh in favor of

disgorgement.

                                          II

      I would not be so quick to let Omnia off the hook for its willful, deliberate,

intentional, and wrongful conduct. I would not allow Omnia to get off scot free

with only a slap on the wrist and a scold that it “not do it again.” I would enforce

the precedent of this circuit, clearly articulated in Maier Brewing. It is our clearly

established precedent that in the absence of disgorgement, a party may end up

adopting a deliberate business pattern of trade piracy selling products under the

trademark of another. 390 F.2d at 123. In concluding otherwise, the majority

invites the danger warned of in Maier Brewing. Stone Creek is a small company,

based in one city, with hopes of expanding. With but an injunction facing Omnia,

there is nothing to prevent it from assuming another company’s “American-

sounding” mark that it might find appealing to consumers; repeating its conduct by




                                           8
selling infringing furniture outside the next company’s territory until it is caught;

and so on.

      Fifty years ago, this circuit recognized that such a result was inequitable.

Because we should have done so again today, I most respectfully dissent.




                                           9
