United States District Court, D. Minnesota
Select Comfort Corporation; and Select Comfort S.C. Corporation, Plaintiffs,
John Baxter; Dires, LLC d/b/a Personal Touch Beds and Personal Comfort Beds; Digi Craft Agency, LLC; Direct Commerce, LLC d/b/a Personal Touch Beds; Scott Stenzel; and Craig Miller, Defendants.
S. Hansen, Esq., Elizabeth A. Patton, Esq., and Heidi O.
Fisher, Esq., Fox Rothschild LLP, counsel for Plaintiffs.
Barbara P. Berens, Esq., Carrie L. Zochert, Esq., and Erin K.
Fogarty Lisle, Esq., Berens & Miller, PA, counsel for
Defendant John Baxter.
Cassandra B. Merrick, Esq., Christopher W. Madel, Esq.,
Jennifer M. Robbins, Esq., Madel PA, counsel for Defendants
Dires, LLC, d/b/a Personal Touch Beds and Personal Comfort
Beds, Scott Stenzel, and Craig Miller.
MEMORANDUM OPINION AND ORDER
DONOVAN W. FRANK UNITED STATES DISTRICT JUDGE
matter is before the Court on numerous post-trial motions.
These motions include Plaintiffs Select Comfort Corporation
and Select Comfort S.C. Corporation's (“Select
Comfort”) Motion for Determination of Entitlement to
Attorneys' Fees and Non-Taxable Expenses (Doc. No. 640),
Motion for Renewed Judgment as a Matter of Law, to Amend the
Verdict, and/or for a New Trial (Doc. No. 643), Motion to
Increase the Damages Award (Doc. No. 654), and Motion for
Permanent Injunction (Doc. No. 668); as well Defendants
Dires, LLC, Craig Miller, Scott Stenzel, and John
Baxter's Motion for Determination of Entitlement to
Attorneys' Fees and Costs (Doc. No. 655) and Amended
Renewed Motion for Judgment as a Matter of Law and For a New
Trial (Doc. No. 644).
factual and procedural background of this litigation is
extensively set forth in prior orders and will not be
repeated here. In summary, Select Comfort brought multiple
claims against Defendants, including claims for trademark
infringement, trademark dilution, false advertising, unfair
competition, and related state-law claims. After trial, the
jury returned a verdict, making the following relevant
Infringement: Defendants did not infringe Select
Comfort's trademark rights in SLEEP NUMBER, WHAT'S
YOUR SLEEP NUMBER?, SELECT COMFORT, or COMFORTAIRE. (Doc. No.
575 (“Special Verdict”) at 2-3.)
Dilution: Select Comfort's SLEEP NUMBER mark is
famous, but Defendants' advertising did not dilute the
mark. (Id. at 6.)
Competition: Defendants' use of NUMBER BED did
not constitute unfair competition. (Id. at 8.)
Advertising: At trial, Select Comfort alleged
Defendants made 14 false statements. The jury found in favor
of Select Comfort on the following statements:
1. Personal Touch is Preferred 6 to 1 Over Sleep
2. Personal Comfort, or we, sold patents to Sleep Number (or
Sleep Number purchased patents from Personal Comfort, or us);
3. Sleep Number bed parts are not replaceable or changeable
(e.g. Sleep Number bed chambers or foam are not replaceable
4. Sleep Number paid Personal Comfort not to compete or to
5. Personal Comfort is FDA regulated/certified/approved or
Personal Comfort sells FDA registered mattresses.
6. Personal Comfort is owned and operated by a FDA registered
medical device manufacturing company.
7. Personal Comfort beds come with “no sales tax”
or are “tax free.”
(Id. at 13-56.) The jury found that statements 1, 2,
and 3 were made with an intent to deceive consumers.
(Id. at 14, 24, 31.) The jury found that the
remaining false statements were made with no intent to
In considering Defendants' Counterclaim, the jury
determined that Select Comfort does not have
trademark rights in NUMBER BED. (Id. at 66.)
The jury found that Select Comfort did not suffer lost
profits as a result of Defendants' conduct, but did find
that Defendants obtained a wrongful benefit in the amount of
$155, 721. (Id. at 65 ($120, 812 attributed to Dires
and $34, 909 attributed to Direct Commerce).)
matter is now before the Court on the parties' post-trial
Select Comfort's Renewed Motion for Judgment as a Matter
of law, to Amend the Verdict, and/or for a New Trial
Comfort moves for judgment as a matter of law, to alter or
amend the verdict, and/or to grant a new trial. In support,
Select Comfort argues that the Court committed several
prejudicial errors. Defendants oppose the motion, arguing
that the Court did not commit any legal error and, even if it
did, any such error did not prejudice Select Comfort.
may render judgment as a matter of law when “a party
has been fully heard on an issue during a jury trial and the
court finds that a reasonable jury would not have a legally
sufficient evidentiary basis to find for that party on that
issue.” Fed.R.Civ.P. 50(a). Under Rule 50, judgment as
a matter of law is appropriate only if no reasonable jury
could have returned a verdict for the nonmoving party.
Weber v. Strippit, Inc., 186 F.3d 907, 912 (8th Cir.
1999). In analyzing a Rule 50 motion, a court must consider
the evidence in the light most favorable to the non-moving
party, resolve all factual conflicts in the non-moving
party's favor, and give the non-movant the benefit of all
reasonable inferences. Id. “Judgment as a
matter of law is proper when the record contains no proof
beyond speculation to support the verdict.” Heating
& Air Specialists, Inc. v. Jones, 180 F.3d
923, 932-33 (8th Cir. 1999). “A jury verdict will not
be set aside unless there is a complete absence of probative
facts to support a verdict.” Walsh v.
Nat'l Computer Sys., Inc., 332 F.3d 1150,
1158 (8th Cir. 2003) (quotation omitted).
Rule 59, a “court may, on motion, grant a new trial on
all or some of the issues--and to any party . . . after a
jury trial, for any reason for which a new trial has
heretofore been granted in an action at law in federal
court.” Fed.R.Civ.P. 59(a). The standard for granting a
new trial is whether the verdict is against “the great
weight of the evidence.” Butler v. French, 83
F.3d 942, 944 (8th Cir. 1996). The Eighth Circuit explained
[A] trial court may not grant a new trial simply because the
trial court would have found a verdict different from the one
the jury found. This is certainly a necessary condition to
granting a motion for new trial, but it is not a sufficient
one. Rather, the trial court must believe, as we have already
said, that the verdict was so contrary to the evidence as to
amount to a miscarriage of justice.
Id. A new trial is also appropriate where legal
errors at trial result in a miscarriage of justice. Gray
v. Bicknell, 86 F.3d 1472, 1480-81 (8th Cir. 1996).
Evidentiary errors warrant a new trial only when “the
cumulative effect of the errors is to substantially influence
the jury's verdict.” Williams v. City of Kan.
City, Mo., 223 F.3d 749, 755 (8th Cir. 2000). A new
trial also may be ordered if the Court erred in instructing
the jury on the applicable law. T.H.S. Northstar Assocs.
v. W.R. Grace & Co.-Conn., 860 F.Supp. 640, 650 (D.
Minn. 1994), vacated on other grounds, 66 F.3d 173
(8th Cir. 1995). The Court, however, has broad discretion in
framing instructions and need not give every proposed
instruction provided that the court adequately presents the
law and the issues to the jury. Fleming v. Harris,
39 F.3d 905, 907 (8th Cir. 1994). Moreover, the instructions
are to be considered in their entirety to determine whether,
when read as a whole, the charge fairly and adequately
submits the issues to the jury. Id. “A single
erroneous instruction will not necessarily require
reversal.” Id. The harmless error rule applies
to jury instructions. Laubach v. Otis Elevator Co.,
37 F.3d 427, 429 (8th Cir. 1994).
courts enjoy broad discretion in choosing whether to grant a
new trial.” Pulla v. Amoco Oil Co., 72 F.3d
648, 656 (8th Cir. 1995). A district court reviewing a motion
for a new trial is “not free to reweigh the evidence
and set aside the jury verdict merely because the jury could
have drawn different inferences or conclusions or because
[the court] feel[s] that other results are more
reasonable.” Fireman's Fund Ins. Co. v. Aalco
Wrecking Co., Inc., 466 F.2d 179, 186 (8th Cir. 1972)
motion to amend under Federal Rule of Civil Procedure 59(e)
serves the “limited function of correcting manifest
errors of law or fact or to present newly discovered
evidence.” United States v. Metro. St. Louis Sewer
Dist., 440 F.3d 930, 933 (8th Cir. 2006) (internal
quotation marks omitted). A Rule 59(e) motion is not a
vehicle to introduce new evidence, tender new legal theories,
or raise arguments that could have been offered or raised
before the Court entered judgment. Id.
Comfort argues that the Court made the following prejudicial
errors that require amending the verdict or granting a new
trial on its trademark infringement claims: (1) disallowing
Select Comfort from pursuing an initial interest claim; (2)
applying the wrong standards and burdens under the Lanham Act
in jury instructions; and (3) allowing Defendants' bed
demonstration. In addition, Select Comfort argues that
despite these errors, it offered overwhelming evidence that
Defendants used Select Comfort's marks (or similar
words/phrases) in a manner likely to cause customer confusion
as to the source of sponsorship of the goods and, therefore,
that the jury's verdict on the trademark infringement
claims was contrary to this evidence.
Initial Interest Confusion Doctrine
Comfort first argues that the Court erred by not allowing it
to pursue an initial interest claim. Select Comfort argues
that it should have been allowed to pursue the theory that
significant confusion at the initial point that consumers
viewed on-line advertisements is all that was required to
establish liability under the Lanham Act, and that it was
error to instruct the jury that a showing of a likelihood of
confusion at the time of purchase was required. Defendants
argue that the Court's rulings on the initial interest
doctrine were correct.
order granting in part and denying in part the parties'
motions for summary judgment, the Court held that Select
Comfort's trademark infringement claim requires a showing
of a likelihood of confusion at the time of purchase. In so
holding, the Court explained that in Sensient Techs.
Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 766
(8th Cir. 2010), the Eighth Circuit declined to formally
adopt the “initial interest confusion” doctrine
and explained that “even if the doctrine applied
generally in this circuit, it would not apply” where,
“although the products are similar, . . . the customers
are sophisticated and exercise a relatively high degree of
care in making their purchasing decisions.”
Id. As explained previously, the initial interest
doctrine would not apply to the facts of this case because
the beds at issue were purchased on-line and are expensive,
suggesting that consumers would exercise a high degree of
care in making any such purchase. The Court discerns no error
in its ruling on initial interest confusion. Importantly, the
Court notes that it did not hold that initial interest
confusion was irrelevant to the issue of whether there was a
likelihood of confusion (or that the jury could not consider
evidence of such confusion), but only that such confusion
alone would not result in liability. Moreover,
Select Comfort's theory of liability in this case centers
on the contention that Defendants capitalize on consumers
being confused initially at the point-of-click
on-line, thus diverting the consumers to Defendants'
website and then fostering that confusion and/or replacing it
with false claims. Select Comfort was free to submit evidence
of point-of-click confusion to support a showing of
likelihood of confusion between the purchasing alternatives
at the time of purchase. In addition, Select Comfort
separately asserted false advertising claims, some of which
were successful at trial.
based on its arguments regarding the initial interest
confusion doctrine, Select Comfort argues that the Court
applied the wrong standards and burdens under the Lanham Act
in its jury instructions. Specifically, Select Comfort argues
that: the jury instructions improperly restricted the jury to
determining whether there was a likelihood of confusion at
the time of purchase; without a definition of “time of
purchase, ” the jury understood that consumers must
actually purchase Defendants' products while confused;
the Court should have instructed the jury that confusion
occurring at other points in the sale and service process is
relevant to whether confusion is likely to occur at the time
of purchase; the Court should have indicated that actionable
confusion includes confusion as to where consumers can
purchase a product; and because Defendants' survey expert
indicated that the “essence” of confusion is
source confusion, without a corrective instruction, the jury
was left believing that actionable confusion is limited to
source confusion. Further, with respect to the issue of
abatement, Select Comfort argues that if at any point it
showed a likelihood of confusion (including initial interest
confusion), the burden shifted to Defendants to show by clear
and convincing evidence that efforts to abate confusion were
successful. Finally, Select Comfort contends that the Court
erred by not instructing the jury on “actionable”
confusion or providing a definition of
relevant part, the Court offered the following instructions
to the jury:
PLAINTIFFS' CLAIM OF TRADEMARK
Plaintiffs claim that Defendants' advertising constitutes
trademark infringement. Plaintiffs have the burden of proving
infringement by a preponderance of the evidence.
The Lanham Act recognizes a cause of action for infringement
of a federally registered mark where use of a mark is likely
to cause confusion, mistake, or deception. To establish
trademark infringement, the owner of a trademark must
demonstrate that the defendant's alleged infringing was
likely to cause confusion among consumers regarding the
origin, sponsorship, affiliation or approval of the
For their claims that Defendants infringed their trademarks,
Plaintiffs must prove by a preponderance of the evidence that
Defendants used Plaintiffs' trademarks or a similar word
or phrase in connection with a product and that use is likely
to cause confusion as to the origin, sponsorship, affiliation
or approval of the product. The core element of trademark
infringement is whether Defendants' use of a term creates
a likelihood that the consuming ...