                                                                            FILED
                           NOT FOR PUBLICATION
                                                                             JUL 22 2020
                    UNITED STATES COURT OF APPEALS                       MOLLY C. DWYER, CLERK
                                                                          U.S. COURT OF APPEALS


                            FOR THE NINTH CIRCUIT


MONSTER ENERGY COMPANY, a                        No.   19-55760
Delaware corporation,
                                                 D.C. No.
              Plaintiff-Appellant,               5:17-cv-00548-CBM-RAO

 v.
                                                 MEMORANDUM*
INTEGRATED SUPPLY NETWORK,
LLC, a Florida limited liability company,

              Defendant-Appellee.



MONSTER ENERGY COMPANY, a                        No.   19-55800
Delaware corporation,
                                                 D.C. No.
              Plaintiff-Appellee,                5:17-cv-00548-CBM-RAO

 v.

INTEGRATED SUPPLY NETWORK,
LLC, a Florida limited liability company,

              Defendant-Appellant.


                    Appeal from the United States District Court
                       for the Central District of California

      *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
                  Consuelo B. Marshall, District Judge, Presiding

                       Argued and Submitted July 8, 2020
                              Seattle, Washington

Before: FERNANDEZ and NGUYEN, Circuit Judges, and BOLTON,** District
Judge.

      Plaintiff Monster Energy Company (MEC) brought this infringement action

against Defendant Integrated Supply Network, LLC (ISN) under the federal

Lanham Act1 and California law.2 The jury determined that ISN had infringed

some of MEC’s marks and its trade dress, that the infringement was not willful,

and that MEC had proven $0 in actual damages but was entitled to $5,000,000 in

punitive damages. The district court denied MEC’s motion for a permanent

injunction under the Lanham Act,3 dismissed its California Unfair Competition

Law4 (UCL) claim, awarded MEC $1 in nominal damages, and otherwise denied

the parties’ post-trial motions. MEC appeals, and ISN cross-appeals, a number of



      **
             The Honorable Susan R. Bolton, United States District Judge for the
District of Arizona, sitting by designation.
      1
            See 15 U.S.C. §§ 1114(1), 1125(a).
      2
            See Cal. Bus. & Prof. Code § 17200; Los Defensores, Inc. v. Gomez,
166 Cal. Rptr. 3d 899, 912 (Ct. App. 2014).
      3
            See 15 U.S.C. § 1116(a).
      4
            See Cal. Bus. & Prof. Code §§ 17200, 17203.
                                         2
the district court’s decisions in Nos. 19-55760 and 19-55800, respectively. We

affirm in part, vacate in part, and remand.

No. 19-55760

      (1) MEC argues that the district court abused its discretion5 in denying its

motion for a permanent injunction pursuant to the Lanham Act on the ground that

MEC had not demonstrated actual irreparable harm6 from ISN’s infringement. We

disagree. Even if MEC adduced evidence of a strong business reputation and

goodwill attributable to its marks and trade dress, the district court acted within its

discretion in finding that MEC did not show that ISN’s infringement was inflicting

actual, irreparable harm on those assets. See adidas Am., Inc. v. Skechers USA,

Inc., 890 F.3d 747, 752, 759–61 (9th Cir. 2018); see also Anderson v. City of

Bessemer City, 470 U.S. 564, 573–74, 105 S. Ct. 1504, 1511, 84 L. Ed. 2d 518

(1985); cf. adidas, 890 F.3d at 752, 756–57.

      (2) MEC argues that the district court erred in dismissing its California UCL

claim for lack of standing. See Cal. Bus. & Prof. Code § 17204; Kwikset Corp. v.

Superior Court, 246 P.3d 877, 885–86 (Cal. 2011). We agree. While MEC had to

      5
            eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391, 126 S. Ct. 1837,
1839, 164 L. Ed. 2d 641 (2006); see also United States v. Hinkson, 585 F.3d 1247,
1261–62 (9th Cir. 2009) (en banc).
      6
            Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239,
1249 (9th Cir. 2013).
                                           3
demonstrate an economic injury in order to have UCL standing, it only needed to

show “the quantum of lost money or property necessary . . . to establish injury in

fact” under federal law. Kwikset, 246 P.3d at 886; see also id. at 885. The jury

determined that ISN infringed MEC’s trademarks and trade dress, which is itself a

cognizable injury. See Already, LLC v. Nike, Inc., 568 U.S. 85, 91–92, 133 S. Ct.

721, 727, 184 L. Ed. 2d 553 (2013); Halicki Films, LLC v. Sanderson Sales &

Mktg., 547 F.3d 1213, 1225–26 (9th Cir. 2008); see also Lujan v. Defs. of Wildlife,

504 U.S. 555, 560, 578, 112 S. Ct. 2130, 2136, 2145, 119 L. Ed. 2d 351 (1992).

That injury is economic for UCL purposes because ISN’s infringement deprived

MEC of the exclusive use of “property to which [it] . . . has a cognizable claim.”

Kwikset, 246 P.3d at 885–86; see Hamilton-Brown Shoe Co. v. Wolf Bros. & Co.,

240 U.S. 251, 259, 36 S. Ct. 269, 272, 60 L. Ed. 629 (1916); see also Coll. Sav.

Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 673, 119 S.

Ct. 2219, 2224, 144 L. Ed. 2d 605 (1999). Thus, we vacate the standing decision

and remand for a decision on the merits of the UCL claim.7




      7
            The district court should consider the effect, if any, of Sonner v.
Premier Nutrition Corp., 962 F.3d 1072, 1081 (9th Cir. 2020).
                                          4
      (3) MEC argues that the district court abused its discretion8 in denying

MEC’s motion for a new trial on actual damages on the ground that the jury’s $0

damages verdict was unsupported by the evidence. We disagree. The verdict

reflects the jury’s determination that MEC failed to carry its burden of proving the

amount of damages, if any. Intel Corp. v. Terabyte Int’l, Inc., 6 F.3d 614, 620–21

(9th Cir. 1993); Phillipine Nat’l Oil Co. v. Garrett Corp., 724 F.2d 803, 806 (9th

Cir. 1984); see also Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir. 2010).

Any tension between the jury’s punitive and actual damages awards does not lead

to the conclusion that the actual damages verdict had no reasonable basis. See

Molski, 481 F.3d at 729. The district court did not abuse its discretion in denying

MEC’s motion for a new trial on actual damages.

      (4) At the time of trial, we required willfulness as a precondition to a

disgorgement award under the Lanham Act. Stone Creek, Inc. v. Omnia Italian

Design, Inc., 875 F.3d 426, 441 (9th Cir. 2017). MEC argues that Romag

Fasteners, Inc. v. Fossil, Inc., __ U.S. __, __, 140 S. Ct. 1492, 1495–97, 206 L. Ed.

2d 672 (2020), has fatally undermined that principle. See Miller v. Gammie, 335

F.3d 889, 900 (9th Cir. 2003) (en banc). We exercise our discretion to consider



      8
            See Molski v. M.J. Cable, Inc., 481 F.3d 724, 728 (9th Cir. 2007); see
also Hinkson, 585 F.3d at 1261–62.
                                          5
this question,9 and we agree that the Supreme Court has squarely rejected the

reasoning that motivated Stone Creek. See Romag Fasteners, __ U.S. at __, 140 S.

Ct. at 1495–97. Thus, we remand to the district court to decide whether

disgorgement of profits is appropriate in the circumstances of this case. See id. at

__, 140 S. Ct. at 1497.

No. 19-55800

      (5) Several of ISN’s assignments of error are essentially alternative facets of

its theory that MEC failed to demonstrate that it was injured by ISN. First, as

described above at (2), the infringement verdict itself constitutes a cognizable

injury in fact. Thus, we reject ISN’s argument that MEC lacked constitutional

standing to pursue its claims.10 Second, ISN was not entitled to judgment as a

matter of law on MEC’s infringement claims because the showing required to

demonstrate a Lanham Act violation cannot be conflated with the showing required

to recover damages for that violation. See 15 U.S.C. § 1117(a); Brookfield

Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 (9th Cir. 1999);

Intel Corp., 6 F.3d at 620–21. Third, the district court did not err in refusing to use

      9
             Dream Palace v. County of Maricopa, 384 F.3d 990, 1005 (9th Cir.
2004).
      10
              We also reject ISN’s implicit assumption that standing evaporates if a
plaintiff loses on the merits. See Steel Co. v. Citizens for a Better Env’t, 523 U.S.
83, 89, 118 S. Ct. 1003, 1010, 140 L. Ed. 2d 210 (1998).
                                           6
injury and causation jury instructions and verdict-form questions that were

predicated on ISN’s misunderstanding of the showing required for a Lanham Act

violation. See Clem v. Lomeli, 566 F.3d 1177, 1180–81 (9th Cir. 2009).

      (6) The district court did not abuse its discretion in excluding evidence that

MEC’s energy drinks cause harm to some consumers. While the evidence may

have had some slight relevance, the district court properly excluded it on the basis

that it plainly carried a substantial risk of unfair prejudice. See United States v.

Wiggan, 700 F.3d 1204, 1213 (9th Cir. 2012); see also Fed. R. Evid. 401, 403.

      (7) The district court erred in refusing to vacate the punitive damages

award11 based on MEC’s California common law claim. Because “actual damages

are an absolute predicate for an award of exemplary or punitive damages” in

California and the jury awarded $0 in actual damages, the punitive damages award

should have been vacated. Kizer v. County of San Mateo, 806 P.2d 1353, 1357

(Cal. 1991); see Cheung v. Daley, 42 Cal. Rptr. 2d 164, 167 (Ct. App. 1995); see

also Costerisan v. Tejon Ranch Co., 62 Cal. Rptr. 800, 802–03 (Ct. App. 1967).

Moreover, although an award of nominal damages may be mandatory in a 42




      11
             See Cal. Civ. Code § 3294(a).
                                            7
U.S.C. § 1983 action in some circumstances,12 the district court erred in overriding

the jury’s $0 damages verdict and awarding $1 in nominal damages in this case.

See Wei Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020, 1038 (9th Cir. 2003);

Costerisan, 62 Cal. Rptr. at 802–03. We vacate the nominal and punitive damages

awards, and we remand so that the district court can consider whether the punitive

damages should be reinstated, in whole or in part, after the UCL and Lanham Act

disgorgement claims are decided.

      (8) We vacate the attorney’s fees and costs awards and remand for

reconsideration after the district court has decided the other matters on remand.

      AFFIRMED IN PART, VACATED IN PART, AND REMANDED for

further proceedings not inconsistent with this disposition. The parties shall bear

their own costs on appeal.




      12
            See Hazle v. Crofoot, 727 F.3d 983, 991 n.6, 992 (9th Cir. 2013);
Floyd v. Laws, 929 F.2d 1390, 1401–02 (9th Cir. 1991).
                                          8
