# Van Leeuwen Ice Cream LLC v. Rebel Creamery LLC

> District Court, E.D. New York · March 11, 2024

URL: https://www.frixlaw.com/law-library/cases/10311329

## Case

- **Court:** District Court, E.D. New York
- **Decided:** March 11, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10311329

## How later opinions describe it (automated extraction)

- noting that “a court of equity” historically “had exclusive jurisdiction” to “award[] [an] injunction”
- affirming denial of jury trial on Lanham Act profits claim, and invoking Gucci in support

## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
------------------------------------x

VAN LEEUWEN ICE CREAM LLC,

Plaintiff, MEMORANDUM & ORDER
21-CV-2356(EK)(JRC)

-against-

REBEL CREAMERY LLC,

Defendant.

------------------------------------x
ERIC KOMITEE, United States District Judge:
Background
In this trademark case, Van Leeuwen Ice Cream LLC sues
a competitor of sorts, Rebel Creamery LLC, for infringement of
Van Leeuwen’s trade dress and related claims under federal and
New York law. Van Leeuwen’s complaint seeks, among other
remedies: injunctive relief requiring Rebel to repackage its
products, compensatory and punitive damages, attorney’s fees and
costs, and an order requiring Rebel to account for and pay over
the profits from its infringement. Rebel has filed certain
counterclaims. Neither party has moved for summary judgment.
After discovery closed, Rebel moved to strike Van
Leeuwen’s jury demand, arguing that Van Leeuwen has abandoned
its claims that were legal in nature, and is not entitled to a
jury trial on the equitable claims that remain. Van Leeuwen
abandoned its claim for legal relief, according to Rebel, when
it declined to provide a computation of its damages in discovery
as required by Rule 26(a) of the Federal Rules of Civil
Procedure. As discussed below, this decision triggered the

prohibition, set out in Rule 37(c) of the Federal Rules of Civil
Procedure, on the introduction of such a calculation at trial.
As a result, Van Leeuwen is limited to the pursuit of equitable
remedies.
For the following reasons, the motion to strike the
jury demand is granted.
Discussion
A jury demand on a given claim or issue must be
stricken when “the court, on motion or on its own, finds that on
some or all of those issues [for which a jury is demanded] there
is no federal right to a jury trial.” Fed. R. Civ. P. 39(a)(2).
The Seventh Amendment guarantees the right to trial by jury only
“[i]n Suits at common law.” See Tull v. United States, 481 U.S.

412, 417 (1987).1
The right applies in those actions, including actions
created by statute, that are analogous to “Suits at common law”
brought in the English law courts prior to the adoption of the
Seventh Amendment. See id. “[T]he phrase ‘Suits at common law’
refers to suits in which legal rights are to be ascertained and

1 Unless otherwise noted, when quoting judicial decisions this order
accepts all alterations and omits all citations, footnotes, and internal
quotation marks.
determined, in contradistinction to those where equitable rights
alone are recognized, and equitable remedies are administered.”
Chauffeurs, Teamsters & Helpers, Local No. 391 v. Terry, 494

U.S. 558, 564 (1990).
However, merely pleading entitlement to legal relief
does not necessarily guarantee a jury trial: if the only
remedies that the plaintiff can receive from trial are
equitable, the plaintiff has no right to a jury trial. In
Design Strategy, Inc. v. Davis, for example, the Second Circuit
affirmed the district court’s decision to strike a jury demand
once it became clear that the plaintiff could prevail only on
equitable theories of recovery. 469 F.3d 284, 299–300 (2d Cir.
2006). The plaintiff originally sought both “compensatory
damages” for lost profits — classic legal relief — and various
forms of equitable relief, including disgorgement of profits and
an accounting. See id. at 289–90. As the case progressed,

however, the district court precluded the plaintiff from
introducing evidence of lost profits at trial as a discovery
sanction. See id. at 296. Thus, the plaintiff could not prove
compensatory damages, see id. at 299; the district court then
denied the plaintiff a jury trial, as only equitable relief
remained in issue. See id. at 299–300. The Second Circuit
affirmed. See id.
Thus, to defeat the instant motion, Van Leeuwen must
show that it not only has pled, but that it can prevail on, at
least one legal claim. The claims Van Leeuwen has pled that can

potentially be so characterized are those seeking monetary
relief under the Lanham Act and under New York common law. I
consider the nature of these claims in turn.
A. Lanham Act Claims
1. The Jury Trial Right in Lanham Act Cases
Under the Lanham Act, a plaintiff in a trademark case
can recover: its own damages (from, for example, lost profits
and injured reputation); its attorneys’ fees and costs; and the
defendant’s profits. Merck Eprova AG v. Gnosis S.p.A., 760 F.3d
247, 261 (2d Cir. 2014) (citing 15 U.S.C. § 1117(a)); see George
Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1539–40 (2d Cir.
1992).

“[D]amages for trademark infringement” are a “legal
form[] of monetary relief” to which the right to a jury trial
attaches. Gucci Am., Inc. v. Weixing Li, 768 F.3d 122, 133 (2d
Cir. 2014) (citing Dairy Queen, Inc. v. Wood, 369 U.S. 469, 472–
73, 477–78 (1962)). In contrast, “[i]t is well settled that a
claim for attorneys’ fees and costs under the Lanham Act does
not entitle a party to a trial by jury.” Empresa Cubana Del
Tabaco v. Culbro Corp., 123 F. Supp. 2d 203, 211 (S.D.N.Y.
2000).
The Supreme Court has explained that as an alternative
to damages for its own lost profits, a trademark plaintiff may
recover an infringing defendant’s illicit gains “as an equitable
measure of compensation.” Hamilton–Brown Shoe Co. v. Wolf Bros.
& Co., 240 U.S. 251, 259 (1916). “A defendant who is liable in

a trademark or trade dress infringement action may be deemed to
hold its profits in constructive trust for the injured
plaintiff.” George Basch, 968 F.2d at 1538. In other words, a
defendant may be “accountable for its profits” to the plaintiff.
Id. A claim seeking an “accounting” of such profits is “a
restitutionary action in equity, imposing on a defendant the
obligation to disclose and return profits from the use of the
plaintiff’s property.” Gucci, 768 F.3d at 131. It is “founded
in the Chancellor’s equitable power to compel an accounting of
wrongly gained assets.” Id.

The Second Circuit recognizes “three categorically
distinct rationales for awarding a successful Lanham Act
plaintiff an accounting for the defendant’s profits: (1) to
avoid unjust enrichment; (2) as a proxy for plaintiff’s actual
damages; and (3) to deter infringement.” 4 Pillar Dynasty LLC
v. N. Y. & Co., Inc., 933 F.3d 202, 212 (2d Cir. 2019). In this
case, Van Leeuwen invokes the second rationale, arguing that it
is seeking Rebel’s profits as a proxy for Van Leeuwen’s actual
damages. See Van Leeuwen Opp. to Mot. to Strike 3, ECF No. 48.
And Van Leeuwen contends that this class of Lanham Act claims
supports a jury demand. See id. Effectively, according to Van
Leeuwen’s view, the claim for an accounting is equitable, but

when that claim is made as a proxy for a legal claim, the jury
entitlement still holds. This view is not, in the end, correct.
Van Leeuwen’s position does find support in several
district court opinions from this circuit that predate Gucci.
These decisions held that a claim for an infringer’s profits as
a “proxy for damages” was legal in nature, and thus could
support a jury demand. Some of these cases relied on the
Supreme Court’s 1962 decision in Dairy Queen, which held that a
trademark infringement claim was triable to a jury despite the
plaintiff’s prayer for an accounting, where the particular money
judgment requested in the complaint was “unquestionably legal”
in nature. See 369 U.S. at 472–73, 476–78.
In Daisy Group, Ltd. v. Newport News, Inc., for

example, the district court held that the plaintiff’s “claim for
profits under the Lanham Act g[ave] rise to a right to trial by
jury” because the plaintiff sought “profits as a rough proxy
measure of its damages.” 999 F. Supp. 548, 551–52 (S.D.N.Y.
1998). In Ideal World Marketing, Inc. v. Duracell, Inc., the
court went as far as to hold that all Lanham Act profits claims
garner the jury trial right. 997 F. Supp. 334, 339 (E.D.N.Y.
1998). The Ideal World court rejected that “a right as
fundamental as the Seventh Amendment right to a jury trial can
be made to depend upon subtle distinctions between . . .
rationales” for the remedy. Id.

But these district court decisions, and their
interpretation of Dairy Queen, cannot be reconciled with the
Second Circuit’s subsequent — and more specific — holding in
Gucci. The Gucci panel considered whether a district court had
the power to issue a preliminary injunction freezing an
infringer’s assets in a trademark case. 768 F.3d at 132-33.
The court would have that power only if the plaintiff sought at
least one equitable, rather than legal, remedy. Id. at 131.2
The Second Circuit concluded that the district court
could issue the injunction because the plaintiff prayed for an
accounting for the defendant’s profits under the Lanham Act.
Id. at 133. That remedy, the court held, is equitable, not
legal. Id. at 132. The court distinguished Dairy Queen as
involving a request for the plaintiff’s damages — not solely for

the defendant’s profits. See Gucci, 768 F.3d at 132-33. The
court explained that while the Dairy Queen plaintiffs’
“complaint included a request for an accounting,” those
plaintiffs “did not seek an award of profits, but amounts owed

2 As the Second Circuit explained, “district courts have no authority to
issue a prejudgment asset freeze . . . where such relief was not
traditionally accorded by courts of equity.” Id. Yet “they maintain the
equitable power to do so” where the plaintiff is “pursuing a claim for final
equitable relief.” Id.
under a contract and damages for trademark infringement.” Id.
This conclusion relied on the following description, in Dairy
Queen, of the remedies sought:

The most natural construction of the respondents’
claim for a money judgment would seem to be that it is
a claim that they are entitled to recover whatever was
owed them under the [trademark license] contract as of
the date of its purported termination plus damages for
infringement of their trademark since that date.

Dairy Queen, 369 U.S. at 477.
Gucci thus clarified that a Lanham Act accounting for
profits — even when the rationale for the remedy is to supply a
“proxy” for legal damages — is equitable. It follows that
entitlement to a jury trial cannot be manufactured by “the
rationale the plaintiff offer[s] for seeking to recover the
defendant’s profits.” Hard Candy, LLC v. Anastasia Beverly
Hills, Inc., 921 F.3d 1343, 1360 (11th Cir. 2019) (affirming
denial of jury trial on Lanham Act profits claim, and invoking
Gucci in support). That conclusion is consistent with “the
longstanding interpretation of the Seventh Amendment set out by
the Supreme Court, which requires [courts] to look to the nature
of the action and the nature of the requested remedy” to
determine whether it supports a jury demand. Id.; see also
Tull, 481 U.S. at 417 (articulating this interpretation).
Since Gucci, other district courts in this circuit
have recognized that a Lanham Act profits claim — a disgorgement
remedy, at bottom — cannot support a jury demand. This trend is
consistent with Design Strategy’s teaching that there is no
right to a jury trial unless the court can award “damages in the

strict sense of remedying loss.” 469 F.3d at 300.
A court in this district recently struck a jury demand
in reliance on Gucci. See RVC Floor Decor, Ltd. v. Floor &
Decor Outlets of Am., Inc., No. 18-CV-6449, 2023 WL 3092918, at
*7 (E.D.N.Y. Apr. 26, 2023). The court reasoned that
“Plaintiff’s remaining remedies” of “disgorgement of profits
under [the Lanham Act] and state law, and an injunction” were
all equitable. Id.
Similarly, in Bruce Kirby, Inc. v. Laserperformance
(Europe) Ltd., after a jury in a Lanham Act case purported to
award the defendant’s profits as “damages,” the court deemed the
award advisory. No. 13-CV-00297, 2021 WL 328632, at *12 (D.
Conn. Feb. 1, 2021), aff’d in part on other grounds, No. 21-519,

2023 WL 5319216 (2d Cir. Aug. 18, 2023). The court, applying
Gucci, concluded that the remedy the plaintiffs had sought was
the equitable profits remedy, not the legal damages remedy, and
“there [was] no right to a jury trial on that issue.” Id.
To be sure, some district courts have allowed juries
to award profits in Lanham Act cases even after Gucci. For
example, in Car Freshner Corp. v. D & J Distrib. & Mfg., Inc. —
provided in slip copy by the plaintiffs — the court “instructed
the jury that the Lanham Act permits a plaintiff to recover the
profits that a defendant earned through its acts of
infringement.” No. 14-CV-391, slip. op. at 3 (S.D.N.Y. Mar. 1,

2016), ECF No. 114 (emphasis added). The court then upheld the
jury’s award of such profits, without deeming it advisory. See
id. But it did so with no analysis of the Seventh Amendment
question, and it appears from the court’s passing description
that damages, as well as equitable remedies, were in play.3
The Seventh Amendment question here is resolved by
Gucci: damages (i.e., harm to the plaintiff) support a jury
demand, while profits (gain to the defendant) do not. See 768
F.3d at 131–33. A profits claim does not support a jury demand
even if the plaintiff purports to seek “a determination of a
defendant’s profits for the purposes of a damages award under
the Lanham Act.” Bruce Kirby, 2021 WL 328632, at *12. It is

“the basis for the plaintiff’s claim and the nature of the
underlying remedies sought,” and not how the plaintiff has
“labeled” it, that dictates whether a claim is legal or
equitable. Cent. States, Se. & Sw. Areas Health & Welfare Fund
v. Gerber Life Ins. Co., 771 F.3d 150, 153–54 (2d Cir. 2014).

3 In Car Freshner, the defendant had not objected to the jury’s deciding
the issue; on the contrary, the defendants had actually moved for a new trial
— before a new jury — because “the jury lacked the necessary proof . . . to
render a damages verdict.” Defs.’ Reply Mem. 12, Car Freshner, No. 14-CV-391
(S.D.N.Y. Feb. 9, 2016), ECF No. 113.
2. Van Leeuwen’s Lanham Act Claims Do Not Support its
Jury Demand
Here, as noted above, Van Leeuwen pled Lanham Act
claims for damages and profits alike. On the face of Van
Leeuwen’s complaint, Van Leeuwen seeks the relief that, per
Dairy Queen, entitles a trademark plaintiff to a jury trial: a
legal claim for “damages based upon a charge of trademark
infringement,” plus equitable remedies. See 369 U.S. at 477,
479. Nevertheless, Van Leeuwen can obtain only equitable
remedies on its Lanham Act claims, as it can no longer prove
actual damages at trial. Design Strategy, 469 F.3d at 299–300.

This is true because of the way Van Leeuwen opted to conduct
discovery.
Under Rule 26(a), a party must “provide a computation
of any category of damages voluntarily, i.e., ‘without awaiting
a discovery request.’” Id. (quoting Fed. R. Civ. P.
26(a)(1)(A)). If a party fails to disclose such a computation,
“the party is not allowed to use that information . . . to
supply evidence . . . at a trial, unless the failure was
substantially justified or is harmless.” Fed R. Civ. P.
37(c)(1); see also Design Strategy, 469 F.3d at 298.

Van Leeuwen disclosed a computation of Rebel’s illicit
gains during discovery, which has now closed. See Expert Report
of Phillip Brida, Mot. Ex. B ¶ 7, ECF No. 46 (calculating “the
amount of damages due to Van Leeuwen based on the profits
realized by Rebel”). But Van Leeuwen explicitly declined to
disclose a computation of its own lost profits, stating that

“[a] computation of damages in accordance with Rule
26(a)(1)(A)(iii) is premature at this time.” Van Leeuwen
Initial Disclosures, Mot. Ex. A at 6, ECF No. 38–1.
While I might possess discretion to allow Van Leeuwen
to belatedly introduce a computation of its actual damages, Van
Leeuwen has confirmed that no such computation will be
forthcoming. At oral argument, Van Leeuwen unequivocally
disclaimed any intention to offer proof of its actual damages in
this case, contenting itself to rely on its expert’s calculation
of Rebel’s profits as a proxy for Van Leeuwen’s damages. See
Hr’g Tr. 16:15–19, ECF No. 63 (“The only computation of damages
that Van Leeuwen is putting forth is an accounting of Rebel’s

profits, the computation that was set forth in our damages
report. Van Leeuwen does not intend to present a separate
actual damages computation.”).
Notwithstanding the case law discussed above, Van
Leeuwen argues that this tack entitles it to a jury trial. As
noted above, the Second Circuit recognizes that one “rationale[]
for awarding a successful Lanham Act plaintiff an accounting for
the defendant’s profits” is that a profits award can serve “as a
proxy for plaintiff’s actual damages,” 4 Pillar Dynasty, 933
F.3d at 212 — albeit only a “rough” one. George Basch, 968 F.2d
at 1539. From this principle, Van Leeuwen argues that a
computation of a Lanham Act defendant’s profits, unmoored from

the plaintiff’s actual damages, is necessarily an adequate
computation of the plaintiff’s actual damages, as it is a
“rough” equivalent thereof. See Van Leeuwen Opp. 15. Thus, Van
Leeuwen insists, it has introduced a calculation of its actual
damages: the calculation of Rebel’s profits.
But Van Leeuwen takes the Second Circuit’s words out
of context. It is the profits equitable remedy that is a rough
proxy for the legal remedy of damages. Calculations of
trademark infringers’ profits are not, as an arithmetic matter,
“proxies” for markholders’ actual damages.
Underscoring this point, when courts in this circuit
have calculated Lanham Act plaintiffs’ actual damages, they have

not simply tallied up the defendants’ total profits from
infringing sales. For example, in River Light V, L.P. v. Lin &
J Int’l, Inc., the court calculated actual damages by estimating
the percentage of the infringer’s customers who bought
infringing “knock-offs” by mistake. See No. 13-CV-3669, 2015 WL
3916271, at *7–8 (S.D.N.Y. June 25, 2015). The court then
assumed that the markholder would have been able to sell — at
the markholder’s profit margins — to that subset of the
infringer’s customers. See id. The defendant’s profits played
no per se role in the calculation.
Similarly, in Church & Dwight Co. v. SPD Swiss
Precision Diagnostics GmbH, when calculating actual damages, the
court did not use the defendants’ profits — i.e., the
defendants’ sales multiplied by its profit margin per unit. Id.

Instead, as in River Light, the court used the defendants’ sales
multiplied by the plaintiff’s profit margin per unit. See id.
The district court used this methodology even though the
“plaintiff’s lost profits and the defendants’ [gained] profits
[we]re based upon the same sales.” No. 14-CV-585, 2018 WL
4253181, at *16 (S.D.N.Y. Sept. 5, 2018).
Van Leeuwen counters that “damages” are available
under the Lanham Act even to plaintiffs who cannot prove the
amount of their damages, if they can show a “general right to
damages.” Hr’g Tr. 22:6 (quoting George Basch, 968 F.2d at
1539). To that end, Van Leeuwen relies on George Basch, in

which the Second Circuit noted “the inherent difficulty in
isolating the causation behind diverted sales and injured
reputation” and that “damages from trademark or trade dress
infringement are often hard to establish.” 968 F.2d at 1539.
As a result, as a “rule,” “profits from defendant’s proven sales
are awarded to the plaintiff unless the defendant can show that
the infringement had no relationship to those earnings.” Id.
But George Basch never suggests that a plaintiff can prevail in
a jury trial without proving actual damages. Indeed, George
Basch sourced its “rule” from a passage in the Supreme Court’s
decision in Mishawaka Manufacturing Co. v. S.S. Kresge Co., 316

U.S. 203 (1942), discussing an accounting for defendant’s
profits under the Trade-Mark Act of 1905, not a claim for
plaintiff’s damages. See George Basch, 968 F.2d at 1539 (citing
Mishawaka, 316 U.S. at 206).4 Thus, the George Basch rule eases
a plaintiff’s burden on a profits claim — but such a claim still
cannot support a jury demand, even when labeled as a damages
claim. See also Cent. States, 771 F.3d at 153–54 (nature of
claim, not label, controls whether it is legal or equitable).
In sum, none of Van Leeuwen’s Lanham Act claims
support its jury demand.
B. New York Law Claims

Van Leeuwen also asserts New York common law claims
for trade-dress infringement and unfair competition, and a
trademark dilution claim under N.Y. Gen. Bus. Law § 360–l.
Compl. ¶¶ 54–55, 63, ECF No. 1. But without a computation of
actual damages, Van Leeuwen cannot recover compensatory damages

4 See also Mishawaka, 316 U.S. at 205–06 (“[The Trade-Mark Act of 1905]
provides that upon a decree being rendered in any such case for wrongful use
of a trade-mark the complainant shall be entitled to recover, in addition to
the profits to be accounted for by the defendant, the damages the complainant
has sustained thereby . . . and in assessing profits the plaintiff shall be
required to prove defendant’s sales only . . . . Infringement and damage
having been found, the Act requires the trade-mark owner to prove only the
sales of articles bearing the infringing mark.” (emphasis added)).
under state law, either. See Design Strategy, 469 F.3d at 299–
300. The Second Circuit held as much in Design Strategy, which
involved New York common law claims seeking to recover “lost

profits,” on the one hand, and “profits earned by the
Defendants,” on the other. Id. The Design Strategy court held
that the district court’s “decision to preclude evidence, and
therefore a claim, of lost profits” left the plaintiff seeking
“profits earned by the Defendants,” a remedy that was equitable
because it had no “connection to [the plaintiff’s] actual loss.”
Id.
Since Design Strategy, the New York Court of Appeals
has confirmed that “profits” cannot be awarded in New York
unfair competition cases unless the plaintiff demonstrates “a
causal relation not wholly unsubstantial and imaginary[] between
the gains of the [defendant] and those diverted from” the
plaintiff. E.J. Brooks Co. v. Cambridge Sec. Seals, 105 N.E.3d

301, 308–09 (N.Y. 2018). Van Leeuwen insists that it will
combine its computation of Rebel’s profits with “evidence of
actual damage” such as “a drop in year-over-year sales when
Rebel hit the market.” Van Leeuwen Opp. 15. But, at least in
federal court, Van Leeuwen cannot escape Design Strategy and
Rule 26’s requirement of a computation of Van Leeuwen’s actual
damages as a prerequisite to asserting a lost profits theory at
trial.
Furthermore, under New York law, “punitive damages may
not be awarded absent sustainable compensatory damages.” Rivera
v. City of New York, 836 N.Y.S.2d 108, 117 (N.Y. App. Div. 1st
Dep’t 2007); see N.Y. Pattern Jury Instr. Civil 2:278 (“Punitive

damages may not be awarded unless there has been an award for
compensatory damages (even nominal).” (citing Hubbell v. Trans
World Life Ins. Co. of N.Y., 408 N.E.2d 918, 919 (N.Y. 1980))).
Punitive damages are accordingly unavailable on the New York law
claims. See Design Strategy, 469 F.3d at 300 (no compensatory
damages possible without evidence of plaintiff’s “actual loss”).5
And injunctive relief for trademark dilution, available under
Section 360–l, is of course equitable, not legal. RVC Floor
Decor, 2023 WL 3092918, at *7; see also F.T.C. v. Bronson
Partners, LLC, 654 F.3d 359, 367 (2d Cir. 2011) (noting that “a
court of equity” historically “had exclusive jurisdiction” to

“award[] [an] injunction”). Van Leeuwen’s state law claims thus
cannot save its jury demand.6

5 The Design Strategy court declined to reach the question of whether
punitive damages alone would support a jury trial, as it had not been
briefed, and accordingly did not analyze whether the plaintiff there could
obtain punitive damages. Id. Because Van Leeuwen cannot prove any
entitlement to punitive damages under New York law, I also need not consider
whether, were such damages available, Van Leeuwen would be entitled to a jury
trial.

6 Though Van Leeuwen argued in its briefing that it should at minimum be
entitled to an advisory jury, Van Leeuwen Opp. 16, Van Leeuwen withdrew the
request for an advisory jury at oral argument. Hr’g Tr. 40:20–41:3.
Conclusion
For the foregoing reasons, the motion to strike the
jury demand is granted. By April 5, 2024, the parties shall
submit an updated Joint Pretrial Order consistent with this

order. A pretrial conference shall be held on April 8 at 10:30
AM.

SO ORDERED.

/s/ Eric Komitee__________
ERIC KOMITEE
United States District Judge

Dated: March 11, 2024
Brooklyn, New York

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10311329. Public record. Not legal advice.