Opposition Brief — Dewberry Group, Inc., fka Dewberry Capital Corporation, Petitioner v. Dewberry Engineers Inc.

No. 23-900

In the

Supreme Court of the United States

DEWBERRY GROUP, INC.,

FKA DEWBERRY CAPITAL CORPORATION,

Petitioner,

v.

DEWBERRY ENGINEERS INC.,

Respondent.

-----------------------------------------ON PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

-----------------------------------------BRIEF IN OPPOSITION TO

PETITION FOR CERTIORARI

------------------------------------------

ARTHUR E. SCHMALZ

HUNTON ANDREWS

KURTH LLP

2200 Pennsylvania Ave. NW

Washington, DC 20037

ELBERT LIN

Counsel of Record

STEPHEN P. DEMM

DAVID M. PARKER

HUNTON ANDREWS

KURTH LLP

Riverfront Plaza

East Tower

951 East Byrd St.

Richmond, VA 23219-4074

(804) 788-8200

elin@huntonAK.com

Counsel for Respondent

Counsel for Respondent

GibsonMoore Appellate Services, LLC

206 East Cary Street ♦ Richmond, VA 23219

804-249-7770 ♦ www.gibsonmoore.net

i

QUESTION PRESENTED

In allowing disgorgement of profits as a remedy for

trademark infringement, the Lanham Act provides

that “[i]f the court shall find that the amount of the

recovery based on profits is either inadequate or

excessive, the court may in its discretion enter

judgment for such sum as the court shall find to be

just, according to the circumstances of the case.” 15

U.S.C.A. § 1117(a).

The question presented is:

Whether a district court’s discretion under the

Lanham Act permits using the financial statements

of “non-arms’ length” affiliates to adjust a

disgorgement award against a trademark infringer,

and only that infringer, when the infringer has

claimed $0 in profits.

ii

RULE 29.6 DISCLOSURE STATEMENT

Respondent Dewberry Engineers Inc. is wholly

owned by The Dewberry Companies Inc. Neither

company is publicly traded, and no publicly held

company owns 10% or more of Dewberry Engineers

Inc.’s stock.

iii

TABLE OF CONTENTS

QUESTION PRESENTED ......................................... i

RULE 29.6 DISCLOSURE STATEMENT ................ ii

TABLE OF CONTENTS ........................................... iii

TABLE OF AUTHORITIES...................................... iv

RELEVANT STATUTORY PROVISION .................. 1

INTRODUCTION ....................................................... 1

STATEMENT OF THE CASE ................................... 4

A. Factual background ..................................... 4

B.

Procedural history........................................ 7

REASONS FOR DENYING THE PETITION ......... 12

I.

The Courts of Appeals are not divided. ..... 13

II.

The Fourth Circuit’s decision does not

conflict with this Court’s precedent. ......... 19

III.

The decision below was correct. ................ 22

IV.

This case is a poor vehicle in any event. ... 30

CONCLUSION ......................................................... 33

iv

TABLE OF AUTHORITIES

Page(s)

CASES

Agency for Int’l Dev. v.

All. for Open Soc’y Int’l, Inc.,

591 U.S. 430 (2020) ............................................. 21

Am. Rice, Inc. v. Producers Rice Mill, Inc.,

518 F.3d 321 (5th Cir. 2008) ......................... 26, 27

Ambler v. Whipple,

87 U.S. 546 (1874) ............................................... 21

Badger Meter, Inc. v. Grinnell Corp.,

13 F.3d 1145 (7th Cir. 1994) ............................... 24

Banjo Buddies, Inc. v. Renosky,

399 F.3d 168 (3d Cir. 2005) ................................ 22

Burger King Corp. v. Mason,

855 F.2d 779 (11th Cir. 1988) ............................. 22

City of Elizabeth v. Am. Nicholson Pavement Co.,

97 U.S. 126 (1877) ............................................... 21

Cutter v. Wilkinson,

544 U.S. 709 (2005) ............................................. 31

Daimler AG v. Bauman,

571 U.S. 117 (2014) ............................................. 21

Dania Jai-Alai Palace, Inc. v. Sykes,

450 So.2d 1114 (Fla. 1984) ..................... 14, 16, 17

v

Edmondson v. Velvet Lifestyles, LLC,

43 F.4th 1153 (11th Cir. 2022) .......... 1, 2, 4, 13-20

George Basch Co. v. Blue Coral, Inc.,

968 F.2d 1532 (2d Cir. 1992) .............................. 23

Getty Petrol. Corp. v. Bartco Petrol. Corp.,

858 F.2d 103 (2d Cir. 1988) ................................ 23

Hard Candy, LLC v.

Anastasia Beverly Hills, Inc.,

921 F.3d 1343 (11th Cir. 2019) ........................... 22

Honeycutt v. United States,

581 U.S. 443 (2017) ............................................. 21

Jennings v. Carson,

8 U.S. 2, 2 L. Ed. 531 (1807) ............................... 21

Kars 4 Kids Inc. v. Am. Can!,

8 F.4th 209 (3d Cir. 2021) ............................. 24, 27

La Quinta Corp. v. Heartland Prop. LLC,

603 F.3d 327 (6th Cir. 2010) ............................... 23

Lindy Pen Co. v. Bic Pen Corp.,

982 F.2d 1400 (9th Cir. 1993) ............................. 22

Liu v. Sec. & Exch. Comm’n,

591 U.S. 71 (2020) ............................................... 21

Max Rack, Inc. v. Core Health & Fitness, LLC,

40 F.4th 454 (6th Cir. 2022), reh’g denied,

No. 20-3598, 2022 WL 3237492

(6th Cir. Aug. 10, 2022) ................................ 24, 27

vi

Metric & Multistandard Components Corp. v.

Metric’s, Inc.,

635 F.2d 710 (8th Cir. 1980) ............................... 23

Romag Fasteners, Inc v. Fossil, Inc.,

140 S.Ct. 1492 (2020) .......................................... 21

Rudisill v. McDonough,

144 S.Ct. 945 (2024) ............................................ 22

Shell Oil Co. v. Com. Petrol., Inc.,

928 F.2d 104 (4th Cir. 1991) .......................... 22-23

TE-TA-MA Truth Found.-Fam. of URI, Inc. v.

World Church of the Creator,

392 F.3d 248 (7th Cir. 2004) ............................... 23

Trump v. Anderson,

601 U.S. 100 (2024) ............................................. 22

U-Haul Int’l, Inc. v. Jartran, Inc.,

601 F. Supp. 1140 (D. Ariz. 1984) ..... 1, 2, 4, 13-20

U-Haul Int’l, Inc. v. Jartran, Inc.,

793 F.2d 1034 (9th Cir. 1986) ................. 14, 16, 17

United States v. Bestfoods,

524 U.S. 51 (1998) ................................4, 19, 20, 28

FEDERAL STATUTES

15 U.S.C.A. § 1117(a) ....................... i, 1-5, 8, 9, 11-16,

19-25, 27, 29, 30, 32

1

RELEVANT STATUTORY PROVISION

The Lanham Act provides, in relevant part:

When a violation of any right of the

registrant of a mark . . . shall have been

established in any civil action arising

under this chapter, the plaintiff shall be

entitled, . . . subject to the principles of

equity, to recover (1) defendant’s profits

. . . . If the court shall find that the

amount of the recovery based on profits is

either inadequate or excessive the court

may in its discretion enter judgment for

such sum as the court shall find to be

just, according to the circumstances of

the case. Such sum in either of the above

circumstances

shall

constitute

compensation and not a penalty. . . .

15 U.S.C.A. § 1117(a) (italicized language omitted by

Petitioner).

INTRODUCTION

The picture painted by Petitioner Dewberry Group

(DG) of a purportedly cert-worthy case is entirely

illusory. Among other things, the alleged circuit split

is premised on two cases that no party or judge

mentioned until now, and that, unsurprisingly, are

readily distinguishable when examined in any depth.

Worse still, DG entirely ignores the language in the

Lanham Act that expressly authorizes the

disgorgement award at issue. For these reasons and

more, the Petition should be denied.

Begin with the purported circuit split. DG points

to two cases (U-Haul and Edmondson) that nobody—

including DG itself—raised in the courts below.

2

That’s because they concerned an issue not present in

this case. In both U-Haul and Edmondson, affiliates

that had not violated the Lanham Act were

themselves held liable, and ordered to pay damages,

for the violating conduct of another. The courts of

appeals held that those orders against the nonviolators were improper, as a matter of state law,

because they lacked a valid basis for ignoring

corporate separateness. Here, DG’s non-violating

affiliates weren’t held liable or required to pay

damages for anything. The Fourth Circuit affirmed

an order against DG, and DG alone, for infringing

conduct committed by DG itself. There is nothing

inconsistent between the decision below and the cases

cited by DG. Instead, the only issue here is how to

calculate damages owed by DG; and, as explained

below, the Lanham Act, by its express terms, accords

the district court substantial discretion on that very

issue.

DG also claims the decision below “conflicts” with

this Court’s decisions, excavating still more cases that

never came up below. But these cases—like U-Haul

and Edmondson—concern issues not present here.

And moreover, only one of these cases even involves

the Lanham Act, and that case addressed the

question of when disgorgement is appropriate, not

how much, which is the question here. There simply

is no plausible argument that the Fourth Circuit’s

holding contradicts the holdings of any of DG’s cited

cases.

At most, DG asserts that the Fourth Circuit’s

interpretation of the Act was wrong on a splitless

issue. But that, too, is incorrect, as DG ignores the

express language in the Lanham Act that provides the

3

very basis for the decisions of both the district court

and Fourth Circuit below:

If the court shall find the amount of the

recovery based on profits is . . .

inadequate . . . the court may in its

discretion enter judgment for such sum

as the court shall find to be just,

according to the circumstances of the

case.”

15 U.S.C. § 1117(a) (emphasis added). Indeed, the

foregoing language is found nowhere in the Petition,

but is instead conspicuously excised via ellipsis from

its “Statutory Provisions Involved.” Pet. 2.

This language expressly authorizes what the

district court did and the Fourth Circuit affirmed. As

the district court itself explained, “profits

disgorgement under the Lanham Act . . . allow[s]

courts to adjust an award up or down as

circumstances demand.” Pet. App. 87a (citing 15

U.S.C. § 1117). And here, the extraordinary facts

demanded much more than the $0 in profits reflected

on DG’s tax returns. The district court found—after

a bench trial—not only that DG was a willful and

repeated bad faith trademark infringer, but also that

DG’s tax returns didn’t reflect “economic reality” due

to the “non-arms’ length” relationship with its

affiliates. Pet. App. 85a. So the district court

adjusted the award, acknowledging that in doing so it

was “not provid[ing] a precise mathematical

calculation of the profits earned by Dewberry Group,

but rather weigh[ing] the equities in determining the

appropriate disgorgement remedy.” Pet. App. 87a. As

the Fourth Circuit agreed, the adjustment merely

approximated “Dewberry Group’s true financial

4

gain.” Pet. App. 43a. This was not some sweeping

assault on “corporate separateness.” It was simply an

application of the broad discretion granted expressly

by the Lanham Act to account for the wide variety of

creative infringers a court might face. DG’s claims

that the decision below did something entirely

different cannot be squared with the opinions and the

record below.

Finally, even were the question DG identifies

otherwise worthy of this Court’s attention, this case

would be an extremely poor vehicle in which to

examine it. Beyond having to recharacterize the

opinions below to fit DG’s theory, this Court also

would have to ignore that DG never raised before the

authorities it now says demonstrate a purported split

and error. Neither to the district court nor to the

court of appeals did DG raise U-Haul, Edmondson,

Bestfoods, or any other decision that it now says

creates a supposed “conflict” and “error.” If this Court

were to grant review, it would find itself embroiled in

threshold questions of waiver and, were it to reach the

merits of DG’s arguments about the cases, would have

no reasoning from the courts below to guide the way.

The Petition should be denied.

STATEMENT OF THE CASE

A. Factual background

DG and Respondent Dewberry Engineers

(Dewberry) provide similar real-estate development

services in overlapping geographic areas. Pet. App.

3a–4a. Dewberry was founded decades earlier, and

owns two federally registered trademarks for the

name “Dewberry.” Pet. App. 3a.

5

Dewberry and DG have now clashed for nearly two

decades in two separate lawsuits, both alleging

trademark infringement under the Lanham Act. The

first began in 2006 with a cease-and-desist letter from

DG. Pet. App. 4a. This letter expressly conceded that

DG’s “Dewberry Capital” mark was confusingly

similar to Dewberry’s. Ibid. But it claimed this

confusion injured DG, not Dewberry, because DG’s

common-law rights trumped Dewberry’s federally

registered marks. Ibid. Dewberry disagreed, and

sued DG for trademark infringement. Ibid.

Around the same time, DG had applied

unsuccessfully to register its “Dewberry Capital”

mark with the United States Patent and Trademark

Office (USPTO). Pet. App. 5a. That mark was

rejected as confusingly similar to those Dewberry had

already registered. Ibid.

The first lawsuit ended in 2007 with a confidential

settlement agreement that memorialized Dewberry’s

superior trademark rights (the “CSA”). Pet. App. 5a–

6a, 12a–14a, 30a–31a. The CSA broadly permitted

Dewberry to use any “Dewberry” mark it wished,

anywhere it pleased. Ibid. By contrast, it allowed DG

to use only one “Dewberry” mark (“Dewberry

Capital”). Ibid. And DG could use that mark only for

certain services, only in certain geographic areas, and

only with a distinguishing column/capital logo. Ibid.

This truce was only temporary, because DG

decided to ignore the CSA. DG first used “Dewberry

Capital” for prohibited services, in prohibited areas,

and without the required logo. Pet. App. 13a–14a.

Then, in 2017, it rebranded to four different

“Dewberry” marks (including “Dewberry Group”), all

6

of which were prohibited by the CSA. See Pet. App.

7a, 30a–31a.

When DG’s founder, John Dewberry, first initiated

this rebranding, he “did not inform [his] then-general

counsel, David Groce, of the prior litigation or the

CSA.” Pet. App. 7a. “Instead, he asked Groce to ‘do a

search’

for

related

trademarks.”

Ibid.

Unsurprisingly, Groce’s search “revealed Dewberry

Engineers’ ‘Dewberry’ mark.” Ibid. But “[e]ven after

this . . . Groce still was unaware of the CSA between

the parties.” Ibid. And despite the search result,

Groce applied to register DG’s new “Dewberry Group”

mark with the USPTO. Ibid.

DG’s efforts quickly encountered trouble. The

USPTO rejected the application due to a likelihood of

confusion with Dewberry’s previously registered

marks. Pet. App. 7a. And after learning of DG’s

application, Dewberry sent its first cease-and-desist

letter. Ibid. Upon receipt, Groce promptly apologized

on behalf of DG, “claiming he had not been aware of

the prior litigation or the CSA,” and that DG “had no

intent to infringe [Dewberry’s] valid trademark

rights.” Pet. App. 7a–8a. He promised that DG would

immediately cease rebranding. Pet. App. 8a.

But DG didn’t stop. It applied to register four

additional “Dewberry” marks, all of which were

rejected as confusingly similar to Dewberry’s. Pet.

App. 8a. This prompted two more cease-and-desist

letters from Dewberry. Pet. App. 8a–9a. And still,

DG forged ahead—continuing to use prohibited

marks on promotional materials. Pet. App. 71a.

DG used these new, prohibited marks while

rendering services to its affiliates. These affiliates

were “single-purpose entities,” also owned by John

7

Dewberry, whose sole function was to own commercial

properties serviced by DG. Pet. App. 82a. Although

the affiliates paid DG “a fee for this internal service,”

Pet. App. 44a, that fee did not cover DG’s operating

costs, resulting in negative profits on DG’s tax

returns, Pet. App. 83a–84a. DG remained in business

only because John Dewberry covered these losses

with tens of millions of dollars of his own money. Pet.

App. 84a. The affiliates, on the other hand, recorded

massive profits—$53 million from 2018–2020 alone.

Pet. App. 86a–88a. But these affiliates “do not and

cannot perform the work and services necessary to

generate [these] revenues.” Pet. App. 83a. Instead,

DG “promoted, managed, and operated all of the

properties,” and “did so using the Infringing Marks.”

Ibid.

Predictably, DG’s conduct caused confusion in the

marketplace. One survey found “that at least twenty

percent of respondents confused ‘Dewberry Group’ for

‘Dewberry Engineers.’” Pet. App. 31a. Dewberry also

learned of instances of actual confusion, including by

multiple representatives at one of Dewberry’s largest

clients. Pet. App. 31a.

This confusion caused “irreparable injury” to

Dewberry due to DG’s “negative publicity.” Pet. App.

16a. For example, news articles described one of DG’s

projects as “an ‘eyesore’ and ‘blight,’ a ‘longlanguishing’ ‘skeletal building,’ ‘violating building

codes,’ and containing ‘so many rats’ that ‘it looked

like the ground was moving.’” Ibid.

B. Procedural history

After DG refused to stop rebranding, Dewberry

brought this suit for trademark infringement and

8

breach of the CSA—and won at every stage. Pet. App.

9a–12a.

The district court granted summary judgment for

Dewberry on both claims. Pet. App. 9a. It held that

DG repeatedly violated four different provisions of the

CSA and, in the process, infringed Dewberry’s

trademarks as a matter of law. Pet. App. 10a–11a. It

also granted a permanent injunction prohibiting any

further infringement. Pet. App. 12a.

The district court then held a three-day bench trial

on the issue of damages. Pet. App. 11a. At the

conclusion, it held that disgorgement of profits was

appropriate in light of DG’s “willful, bad faith

infringement.” Pet. App. 86a. It also found that John

Dewberry engaged in a “pattern of claiming

ignorance,” Pet. App. 68a, and his “testimony

throughout trial was not credible,” Pet. App. 70a. It

similarly found that “Groce’s testimony throughout

the trial was not credible,” “troubling,” and “strain[ed]

credulity.” Pet. App. 70a, 73a, 76a.

The district court next turned to calculating the

amount of the disgorgement award. It began by

quoting Section 1117(a), including the language that

“[i]f the court shall find that the amount of the

recovery based on profits is . . . inadequate . . . the

court may in its discretion enter judgment for such

sum as the court shall find to be just according to the

circumstances of the case.” Pet. App. 76a.

The district court then exercised this discretion.

As it said, “disgorgement under the Lanham Act is a

remedy sounding in equity, allowing courts to adjust

an award up or down as circumstances demand.” Pet.

App. 87a (citing 15 U.S.C. § 1117(a)).

9

It first rejected DG’s argument that because its tax

returns showed negative profits, the disgorgement

award should be $0. Pet. App. 82a–84a. The court

found these tax returns inconsistent with “economic

reality.” Pet. App. 84a. In support, it found that John

Dewberry covered DG’s purported losses with at least

$23 million of his own money. Ibid. And it further

found that “[b]ecause no real estate . . . business could

continue as a going concern after decades of losses like

these, . . . Dewberry Group, Inc.’s tax returns,

standing alone, do not tell the whole economic story.”

Pet. App. 84a. The district court therefore found that

an award of $0 would “undermine the equitable

purposes of the Lanham Act[]” by allowing DG to

“evade the financial consequences of its willful, bad

faith infringement.” Pet. App. 85a–86a.

Unwilling to award $0, the district court next

looked for a principled basis for an adjustment. DG

didn’t provide one—it “did not do a profits analysis”

to assess the benefits it received from its

infringement. Pet. App. 92a. Indeed, DG did “no

actual calculations” at all. Ibid. As noted, it simply

insisted that because its tax returns showed a net

loss, it received no benefits whatsoever. Ibid. And

the district court had rejected this implausible

assertion, observing that DG’s strategic decision to

forego its own profits analysis “puts both the

Defendant and the Court at a disadvantage,”

requiring the court to “rely on general notions of

equity . . . and determine its disgorgement award

accordingly.” Ibid.

So the district court instead agreed with

Dewberry’s expert, who had “consider[ed] . . . the

revenues and profits” of DG’s affiliates. Pet. App. 82a.

The court concurred with this examination of “the

10

economic reality of how Defendant’s business actually

operates.” Pet. App. 83a. It thus found that the

affiliates “do not and cannot perform the work

necessary to generate revenues,” and that it was DG,

not the affiliates, that “promoted, managed, and

operated all of the properties . . . using the Infringing

Marks.” Ibid. And because of the “non-arms’ length”

relationship between all of these entities, “all

revenues generated through Dewberry Group, Inc.’s

services show up exclusively on the [affiliates’] books.”

Ibid.

The district court considered this “economic

reality” when fashioning a “disgorgement remedy”

that, in its view, would prevent DG from “evad[ing]

the financial consequences of its willful, bad faith

infringement.” Pet. App. 85a–86a. In doing so, the

district court “acknowledge[d] that it [was] not

provid[ing] a precise mathematical calculation of the

profits earned by Dewberry Group, but rather

weigh[ing] the equities in determining the

appropriate disgorgement remedy.” Pet. App. 87a. To

that end, the district court relied on the affiliates’

financial statements “when calculating the revenues

and profits generated by Defendant’s use of the

Infringing Marks.” Pet. App. 85a. But it did so

“conservatively,”

by

underestimating

the

infringement period. Pet. App. 87a. And then it

further reduced the affiliates’ revenue figures by 20%,

giving DG the benefit of the doubt that some of these

revenues might not have directly resulted from DG’s

infringement. Pet. App. 91a. This all came to a total

award of $43 million. Pet. App. 94a.

The court then entered judgment against DG, and

DG alone. Supp. App. 1SA. The court didn’t purport

to hold DG’s affiliates liable for infringement, order

11

DG’s affiliates to pay, or direct DG to retrieve any

money from them. Ibid. It simply ordered DG to pay

$43 million. Ibid.

DG appealed, and the Fourth Circuit affirmed the

district court in every respect in a partially split

decision. Nearly all of the Fourth Circuit’s decision—

including its rulings on liability and the

appropriateness of ordering disgorgement in light of

DG’s bad faith—remains unchallenged here. The

only issue is the amount of the disgorgement award.

As relevant to that question, the majority affirmed

the district court’s decision to consider the finances of

DG’s affiliates “for the purpose of calculating

revenues generated by Dewberry Group’s use of the

infringing marks.” Pet. App. 11a. Like the district

court, the majority began by quoting Section 1117(a),

including the provision that “[i]f the court shall find

that the amount of the recovery based on profits is . .

. inadequate . . . the court may in its discretion enter

judgment for such sum as the court shall find to be

just, according to the circumstances of the case.” Pet.

36a–37a.

The majority then rejected DG’s argument that

the district court had impermissibly “pierce[d] the

corporate veil.” Pet. 43a. It “view[ed] the district

court’s decision differently.” Ibid. “Rather than

pierce the corporate veil,” the district court merely

“considered the revenues of [the affiliates] in

calculating Dewberry Group’s true financial gain

from its infringing activities.” Ibid.

The Fourth

Circuit explained that disgorgement of profits is

“subject to the principles of equity” and “ultimately a

matter of the court’s discretion.” Pet. App. 45a. And

here, the district court properly “weighed the equities

12

of the dispute and exercised its discretion.” Ibid. The

Fourth Circuit further found that “[a]ny

arbitrariness” in the district court’s award “can be

traced back to [DG’s] litigation strategy to deny any

connection between its affiliates’ revenues and its

infringing marks.” Pet. App. 46a (emphasis in

original).

Judge Quattlebaum dissented. In his view, the

district court should not have “use[d] revenues from

[the affiliates] to assess the profits of the Dewberry

Group” without either suing those affiliates directly

or “pierc[ing] the Dewberry Group’s corporate veil.”

Pet. App. 58a–59a.

DG petitioned for rehearing en banc. No judge

requested a poll, and the petition was denied. Pet.

App. 121a.

REASONS FOR DENYING THE PETITION

Certiorari is not warranted. For starters, none of

the reasons that ordinarily justify this Court’s

intervention are present. There is no split among the

courts of appeals, and there is no conflict with any

holding of this Court. The reality is that DG merely

seeks splitless error correction, but there wasn’t any

error either. The decisions below rest on the broad

discretion expressly granted by the plain text of the

Lanham Act that DG entirely ignores. And on top of

all that, the Petition is riddled with problems—

including waiver and a case of extraordinary facts—

that make it an extremely poor vehicle to consider

DG’s issue, even were it otherwise worthy of review.

The Petition should be denied.

13

I. The Courts of Appeals are not divided.

Though DG now claims that the Fourth Circuit

has split from two other courts of appeals, neither DG

nor any of the opinions below even acknowledged the

two cases cited in the Petition, much less any division

in authority. DG itself never once cited or discussed

U-Haul or Edmondson—either in the district court or

the three briefs it filed in the Fourth Circuit,

including its request for rehearing en banc. Nor did

the district court or either opinion in the Fourth

Circuit. Even Judge Quattlebaum, who had every

reason to flag an inter-circuit conflict in his partial

dissent, did not identify one or ask for a poll on

rehearing en banc.

The reason for that deafening silence is simple:

there is no circuit split. Both U-Haul and Edmondson

are readily distinguishable.

In those falseadvertising cases, the lower courts were reversed for

imposing damages liability on entities other than the

violator, and ordering those non-violators to pay for

conduct of the violator. Here, however, even DG

cannot dispute that the district court didn’t impose

liability on anyone other than the trademark

infringer (DG), and didn’t order DG’s non-infringing

affiliates to pay anything. Instead, the only issue here

is whether the district court properly calculated the

damages owed by DG, and DG alone—an issue over

which the Act expressly gives the court broad

discretion. Infra Section III. Accordingly, there is no

split to resolve.

Start with U-Haul. The plaintiff there sued both

a corporation (Jartran, Inc.) and its owner (Ryder).

Jartran was found to have violated the Lanham Act

by falsely comparing itself to the plaintiff in an

14

advertising campaign. U-Haul Int’l, Inc. v. Jartran,

Inc., 601 F. Supp. 1140, 1143–44 (D. Ariz. 1984). But

the district court also held that Ryder was Jartran’s

alter ego, and found both Jartran and Ryder “jointly

and severally” liable for $40 million. Id. at 1150–51.

In short, the district court ordered damages from a

non-violating party (Ryder) for the violating conduct

of another (Jartran).

The Ninth Circuit reversed, among other things,

the order against Ryder. Under Florida state law, the

Ninth Circuit explained, “individual stockholders can

be liable for the debts of corporations only after” an

alter-ego finding. U-Haul Int’l, Inc. v. Jartran, Inc.,

793 F.2d 1034, 1043 (9th Cir. 1986) (discussing Dania

Jai-Alai Palace, Inc. v. Sykes, 450 So.2d 1114 (Fla.

1984)). But, the appeals court held, the district court

had erred in reaching its alter-ego finding because

Ryder hadn’t used the corporate separateness of

Jartran for a fraudulent purpose. Ibid. Without that

finding, as DG itself puts it, “Mr. Ryder could not be

liable for Jartran’s infringing conduct and resulting

profits.” Pet. 17.

Edmondson is similar. The plaintiffs there sued a

company (Velvet Lifestyles, LLC) for false advertising

under the Lanham Act.

Edmondson v. Velvet

Lifestyles, LLC, 43 F.4th 1153, 1157 (11th Cir. 2022).

But they also sued one of the company’s individual

managers (Dorfman) and its corporate affiliate (My

Three Yorkies, LLC). Ibid. The district court held all

three defendants liable on summary judgment,

though it made no specific “findings regarding Mrs.

Dorfman’s or Yorkies’ direct involvement with the

relevant advertisements.” Id. at 1158. After a trial

on damages, the jury awarded damages against all

three defendants too. Id. at 1159.

15

The Eleventh Circuit reversed as to Dorfman and

Yorkies. It explained that the plaintiffs and the

district court had “operat[ed] on the mistaken

assumption that if Velvet Lifestyles was liable for

violating the Act, so were Yorkies and Mrs. Dorfman.”

Id. at 1161. Instead, “it was the plaintiffs’ burden to

show factually and legally that Yorkies and Mrs.

Dorfman were liable under the Lanham Act, and they

failed to do so.” Ibid. (citation omitted). In particular,

the plaintiffs had not shown any basis for direct

liability or to “disregard” the limitations on liability

that “Florida law” recognizes for separate corporate

entities. Id. at 1160. Accordingly, just as in U-Haul,

the district court had erred in holding non-violators

liable for a violator’s conduct and damages.

This case does not involve that issue. Unlike in UHaul and Edmondson, the district court here did not

attempt to hold non-violators liable for a violator’s

conduct and damages without a proper legal basis. In

fact, as even DG must admit, the district court did not

order anything at all against the non-violators.

Rather, the district court’s judgment of liability and

award of damages were against the violator (DG)

only. Supp. App. 1SA. The court merely “considered

the revenues” of the non-infringing affiliates in

deciding the appropriate sum to order from DG for

DG’s “use of the infringing marks.” Pet. App. 11a. As

explained further below, that approach to calculating

the award from DG for its own conduct was entirely

within the district court’s statutorily-granted

discretion. See infra Section III. But regardless, it

does not conflict with U-Haul or Edmondson. The

holdings in those cases concerned whether orders of

damages liability against non-violators for the

violations of others had a proper basis; there simply

16

are no such orders here. And that’s precisely why

nobody—not DG, the district court, or any member of

the Fourth Circuit—cited U-Haul or Edmondson

below.

DG’s newfound efforts to concoct a split of

authority are not convincing. It first attempts to elide

the clear difference between these cases by abstractly

describing U-Haul and Edmondson as addressing

“whether the presumption of corporate separateness”

applies under the Lanham Act. Pet. 15. Likewise, it

argues that the “Ninth and Eleventh Circuits respect

the corporate form” while the Fourth Circuit

“disregard[s] it.” Pet. 12–13. See also id. at 15 (“The

circuits are now divided on the scope of Lanham Act

remedies against corporate affiliates.”).

But neither the holdings of nor any of the

reasoning in U-Haul or Edmondson concerned the

abstract question whether corporate separateness

should be “respected.” The actual issue in those cases

was whether state-law principles of corporate

separateness prevented the district courts from doing

what they did—namely, imposing liability on and

ordering damages from non-violating entities for the

conduct of violating entities. In U-Haul, the Ninth

Circuit was enforcing the Florida state law principle

that “individual stockholders can be liable for the

debts of corporations only after” an alter-ego finding.

793 F.2d at 1043 (citing Dania Jai-Alai Palace). And

in Edmondson, the Eleventh Circuit was enforcing a

similar rule from the same Florida Supreme Court

case: that “[t]hose who utilize the laws of this state in

order to do business in the corporate form have every

right to rely on the rules of law which protect them

against . . . liability unless” there is justification for

“piercing of the corporate veil.” 43 F.4th at 1162

17

(quoting Dania Jai-Alai Palace). Those are state-law

principles about actually imposing liability on

separate corporate entities for the acts of another, not

generic vibes about “respect[ing] the corporate form.”

Pet. 15. Indeed, even DG is ultimately forced to admit

to this more precise, and more accurate,

understanding of the scope of those cases. See Pet. 16

(“Both the Ninth and Eleventh Circuits have rejected

attempts . . . to hold defendants liable for related

entities’ infringing conduct unless the plaintiff can

properly pierce the corporate veil.”) (emphasis

added).1

As discussed, nothing in this case conflicts with

any of that. The Fourth Circuit had no occasion even

to consider the issues in U-Haul and Edmondson

because, unlike in those cases, the district court here

did not order anything against entities protected from

liability by corporate separateness. It found liability

and ordered damages against DG, and DG alone. Of

course, the fact that the affiliates weren’t ordered to

pay could be an issue for collection. As Dewberry

acknowledged at oral argument before the Fourth

Circuit, if it chooses to attempt to seek funds from the

non-infringing affiliates because DG claims an

inability to pay, Dewberry would then need to pierce

the corporate veil or otherwise overcome corporate

separateness. Oral Argument Recording at 36:45,

available at https://tinyurl.com/yn9ns9us. That just

confirms, however, that this case simply does not

See also id. at 17 (“[T]he U-Haul court held that [the

affiliate] could not be held liable . . . .”) (emphasis added); id. at

19 (“[T]he Eleventh Circuit held . . . that a manager generally is

not liable for the corporation’s actions.”) (emphasis added).

1

18

present the same non-violator liability issues as UHaul and Edmondson.

DG’s next tactic is to try to mischaracterize what

happened in this case to create a purported conflict

with the actual holdings in U-Haul and Edmondson.

It argues that the district court held DG “liable for its

affiliates’ infringing acts,” and that the Fourth Circuit

affirmed this “choice to disregard corporate form.”

Pet. 20.

But that is belied by the record. Nowhere did the

district court find DG liable for its affiliates’

infringing acts. To the contrary, all the district court’s

findings and conclusions concerned DG’s liability for

its own conduct. The district court found as fact that

the affiliates “do not and cannot perform the work and

services necessary to generate revenues.” Pet. App.

83a. They were “single-purpose entities” whose sole

function was to “own[] properties managed and

serviced by Dewberry Group.” Pet. App. 82a. Instead,

it was DG that “promoted, managed, and operated all

of [the] properties.” Pet. App. 83a. Thus, the district

court calculated for disgorgement purposes what it

deemed the true value of “Dewberry Group’s use of

infringing marks.” Pet. App. 11a (emphasis added).

To be sure, DG claimed in the district court that “[DG]

produces infringing branding for its affiliates, who in

turn generate profits using that branding on their

lease, loan, and other promotional materials.” Pet.

App. 39a. See also ibid. (DG arguing that “it is not

the ‘economic engine that creates the revenue that

flows to these [affiliates]’”). But the district court

rejected those arguments in finding, as noted, that the

affiliates “do not and cannot perform the work and

services necessary to generate revenues.” Pet. App.

83a.

19

II. The Fourth Circuit’s decision does not

conflict with this Court’s precedent.

Beyond trying to manufacture a circuit split, DG

also claims the Fourth Circuit’s decision “conflicts

with this Court’s decisions.” Pet. 22–32. For this, DG

and its amici rely primarily on Bestfoods. They argue

that Bestfoods established a “presumption” that

“corporate veil-piercing principles apply to federallaw remedies unless Congress displaces them in the

statute,” and claim the Lanham Act does not

overcome that presumption for three reasons, and

therefore the decision below “conflicts” with

Bestfoods. Pet. 22 (citing United States v. Bestfoods,

524 U.S. 51 (1998)). See also Am. Br. 2, 11.

Once again, this is an argument raised for the first

time in DG’s petition. Like U-Haul and Edmondson,

DG never cited Bestfoods below. Nor did the district

court or any judge of the Fourth Circuit.

And yet again, the reason for that omission is

straightforward: there is no “conflict.” This is true for

two reasons. First, as in U-Haul and Edmondson, the

award at issue in Bestfoods actually imposed liability

on a non-violating affiliate for the violating conduct of

another. The question in Bestfoods was “whether a

parent corporation . . . may . . . be held liable as an

operator of a polluting facility owned and operated by

the subsidiary.” 524 U.S. at 55 (emphasis added).

The Court held that it wasn’t, because a “parent

corporation” is generally “not liable for the acts of its

subsidiaries.” Id. at 61 (emphasis added). See also id.

at 58 (noting that “only the first [liability] phase ha[d]

been completed” in the case, not the remedy phase).

Again, that’s not what happened here—the decisions

below didn’t hold DG’s affiliates liable for anything.

20

So for the same reasons there is no conflict with UHaul and Edmondson, there is no conflict with any

holding in Bestfoods.

Second, Bestfoods couldn’t meaningfully “conflict”

with this case anyway, because it addressed an

entirely different statute.

It applied the

“presumption” of corporate separateness to liability

under the Comprehensive Environmental Response,

Compensation, and Liability Act (CERCLA), not the

Lanham Act. 524 U.S. at 55. And it concluded that

the presumption was not overcome with respect to

that specific statute. Ibid. It did not involve the

Lanham Act, nor did it say anything about whether

or how that presumption applies to the Lanham Act.

At most, DG has identified a possible reason the

Fourth Circuit was wrong—namely, that it should

have construed the Lanham Act differently in light of

Bestfoods. That isn’t true, for the reasons stated both

above and below, including because Bestfoods

addressed liability rather than remedies, and because

the Lanham Act includes unique discretionary

language that DG ignores. 15 U.S.C.A. § 1117(a)

(“[T]he court may in its discretion enter judgment for

such sum as the court shall find to be just, according

to the circumstances of the case.”), see infra Section

III. But in all events, DG hasn’t identified any

“conflict” with Bestfoods.

Nor can DG establish a “conflict” with any other

decisions of this Court. Pet. 27–29. By DG’s own

admission, these other decisions all addressed

defendants who were “ordered to disgorge someone

else’s profits.” Pet. 27. As explained below, that’s not

what happened here, either. See infra Section III.

But regardless, as with Bestfoods, nearly all of these

21

other cases did not involve the Lanham Act. Agency

for Int’l Dev. v. All. for Open Soc’y Int’l, Inc., 591 U.S.

430 (2020) (First Amendment); Daimler AG v.

Bauman, 571 U.S. 117 (2014) (personal jurisdiction);

Ambler v. Whipple, 87 U.S. 546 (1874) (partnership

dispute); City of Elizabeth v. Am. Nicholson Pavement

Co., 97 U.S. 126, 127 (1877) (pre-Lanham Act patent

infringement); Jennings v. Carson, 8 U.S. 2, 6, 2 L.

Ed. 531 (1807) (condemnation of ship); Liu v. Sec. &

Exch. Comm’n, 591 U.S. 71 (2020) (SEC enforcement

action); Honeycutt v. United States, 581 U.S. 443

(2017) (criminal forfeiture).

Only one of DG’s cases actually did address the

Lanham Act, but it too concerned a completely

different issue. Pet. 25–26 (citing Romag Fasteners,

Inc v. Fossil, Inc., 140 S.Ct. 1492 (2020)). Romag held

that a plaintiff need not “prove a willful Lanham Act

violation in order to seek the defendant’s profits.” Pet.

26 (citing Romag). That is not in question here, as DG

does not contest at all its willful, bad faith

infringement

or

Dewberry’s

entitlement

to

disgorgement. DG challenges only the amount of that

award—an issue governed by specific language in the

Lanham Act that was not at issue in Romag.

DG argues that Romag is nevertheless relevant

because it “treated Section 1117(a)’s text with care,”

while the decision below did not. Pet. 25. That’s

wrong, too, as the district court faithfully adhered to

the statutory language that DG completely ignores.

See infra Section III. But in any event, DG’s

argument isn’t premised on a legal principle; at most,

it’s just another vague feeling about a case. If a lower

court’s alleged failure to treat statutory text “with

care” constitutes a conflict worthy of certiorari, this

Court will need to greatly expand its docket.

22

III. The decision below was correct.

In the end, DG’s petition is little more than a plea

for splitless error correction, and should be denied for

that reason alone. As shown, DG lacks any serious

argument that circuits are actually split. Nor has it

shown any conflict with a prior holding of this Court.

And while this Court sometimes grants review of

cases in that posture, not even DG contends that this

case has the characteristics that justify certiorari in

those circumstances.

See, e.g., Rudisill v.

McDonough, 144 S.Ct. 945 (2024) (resolving splitless

veterans issue arising out of exclusive jurisdiction of

the Federal Circuit); Trump v. Anderson, 601 U.S. 100

(2024) (resolving splitless question of a State’s

authority to remove former President Trump from a

presidential primary ballot).

What is more, the Fourth Circuit’s decision was

correct. The Lanham Act “provides a broad menu of

remedies to a plaintiff claiming infringement.” Hard

Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d

1343, 1353 (11th Cir. 2019). Among other things, it

authorizes damages, disgorgement of profits, or some

combination of the two. 15 U.S.C.A. § 1117(a). It also

confers “broad discretion” to set the amount of a

monetary award, as courts of appeals (including the

Ninth and Eleventh Circuits) unanimously agree.

See, e.g., Lindy Pen Co. v. Bic Pen Corp., 982 F.2d

1400, 1411 (9th Cir. 1993); Burger King Corp. v.

Mason, 855 F.2d 779, 781 (11th Cir. 1988) (“wide

scope of discretion”).2

2 See also Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 177

(3d Cir. 2005) (“The District Court has broad discretion in

shaping remedies under [§ 1117(a)].”); Shell Oil Co. v. Com.

23

With respect to disgorgement in particular, the

statute expressly grants an even wider berth. The

Act, for example, “shifts the burden of proving

economic injury off the innocent party, and places the

hardship of disproving economic gain onto the

infringer.” George Basch Co. v. Blue Coral, Inc., 968

F.2d 1532, 1539 (2d Cir. 1992). And while damages

awards are expressly capped, disgorgement of profits

is not. Ibid. (limiting awards to “three times” actual

damages). See also Getty Petrol. Corp. v. Bartco

Petrol. Corp., 858 F.2d 103, 109 (2d Cir. 1988)

(“Unlimited enhancement . . . of an award based on

defendant’s profits is permitted in order to correct

inadequacy . . . .”).

Most significantly, the Act expressly provides that

if a court finds that “the amount of the recovery based

on profits is . . . inadequate[,] . . . the court may in its

discretion enter judgment for such sum as the court

shall find to be just, according to the circumstances of

the case.” 15 U.S.C. § 1117(a). This discretion allows

courts to capture the infringer’s “true profits” when

the “infringer gained more . . . than the [infringer’s]

Petrol., Inc., 928 F.2d 104, 108 (4th Cir. 1991) (“[T]he court has

broad discretion to award any monetary relief necessary to serve

the interests of justice.”) (citing § 1117(a)); La Quinta Corp. v.

Heartland Prop. LLC, 603 F.3d 327, 342 (6th Cir. 2010) (“Section

1117(a) grants a district court a great deal of discretion in

fashioning an appropriate remedy in cases of trademark

infringement.”) (citation omitted); TE-TA-MA Truth Found.Fam. of URI, Inc. v. World Church of the Creator, 392 F.3d 248,

263 (7th Cir. 2004) (“[A] district court has broad discretion under

§ 1117(a) to fashion an appropriate remedy according to

equitable

considerations.”);

Metric

&

Multistandard

Components Corp. v. Metric’s, Inc., 635 F.2d 710, 715 (8th Cir.

1980) (“The language of [§ 1117(a)] is clear: the district court is

given broad discretion to award the monetary relief necessary to

serve the interests of justice . . . .”).

24

profits reflect.” Kars 4 Kids Inc. v. Am. Can!, 8 F.4th

209, 223 (3d Cir. 2021) (citation omitted). See also

Max Rack, Inc. v. Core Health & Fitness, LLC, 40

F.4th 454, 473 (6th Cir. 2022) (“[T]he court may

increase a profits award for a compensatory reason,

such as a concern that the award does not encompass

the defendant’s full profits.”), reh’g denied, No. 203598, 2022 WL 3237492 (6th Cir. Aug. 10, 2022);

Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145,

1157 (7th Cir. 1994) (“[T]he benchmark for making

this determination is the likely benefit accruing to the

defendant on account of its infringement.”). No court

has ever held otherwise.

The Fourth Circuit’s and district court’s holdings

fall squarely within this statutory language. The

district court determined that a disgorgement award

of $0, based on DG’s tax returns, would disregard

“economic reality” and “undermine the equitable

purposes of the Lanham Act.” Pet. App. 85a–86a. So

it exercised its discretion to “adjust an award up . . .

as

circumstances

demand,”

expressly

“acknowledg[ing]” that it was not “provid[ing] a

precise mathematical calculation of the profits earned

by Dewberry Group.” Pet. App. 87a. In line with that

reasoning, Dewberry consistently argued to the

Fourth Circuit that the district court “merely

considered [the affiliates’] finances as evidence when

exercising its ‘broad discretion’ to ‘enter judgment for

such sum as the court shall find to be just.’” Supp.

App. 55SA.3 And the Fourth Circuit agreed, holding

3 See also Supp. App. 27SA (“In exercising its broad equitable

discretion to ‘enter judgment for such sum as the court shall find

to be just,’ the district court properly considered the profits of

DG’s [affiliates].”); Supp. App. 25SA (“The district court did not

25

that the district court’s discretionary adjustment

approximated “Dewberry Group’s true financial

gain.” Pet. App. 43a. As a result, DG’s argument that

the district court imposed a “penalty” is simply wrong.

Pet. 30 (quoting 15 U.S.C. § 1117(a)).

It makes no difference that this adjustment was

calibrated to the financial statements of DG’s

affiliates. The Lanham Act doesn’t restrict the

evidence a court can use to increase an award. And

here, using the affiliates’ financial statements made

sense given the district court’s finding that the

affiliates “do not and cannot perform the work

necessary to generate revenues” and “all revenues

generated through Dewberry Group, Inc.’s services

show up exclusively on [these affiliates’] books.” Pet.

App. 82a. For purposes of adjusting the award, it was

entirely appropriate to look past DG’s “non-arms’

length” relationship with these affiliates to the

“economic reality of how Defendant’s business

actually operates.” Pet. App. 83a. Doing so allowed

order disgorgement from these entities, but rather used the

profits distributed to them (earned from DG’s services using the

Infringing Marks) to calculate the disgorgement award against

DG.”); Supp. App. 52SA (“Here, the district court acted well

within that ‘broad discretion’ when it calculated profits based not

only on DG’s financial statements, but those of the [affiliates].”);

Supp. App. 54SA (“[T]he district court properly considered other

financial evidence to ‘tell the whole economic story.’”); Supp.

App. 55SA (“Again, even if the [affiliates] are separate corporate

entities, that doesn’t prevent the court from considering the

profits DG generated for them through its services using the

Infringing marks when calculating an award against DG.”); Oral

Argument

Recording

at

36:25,

available

at

https://tinyurl.com/yn9ns9us (“The district court . . . used the

revenues and the profits of [the affiliates] as a benchmark, a

measuring stick . . . for the exercise of his discretion under §

1117(a) . . . .”).

26

the court to capture DG’s “true financial gain.” Pet.

App. 43a. And in all events, DG cannot argue that the

district court’s findings in this regard were clearly

erroneous.

In fact, the financial statements of these affiliates

were the only benchmark available to the district

court. DG chose to do “no actual calculations” and

rest solely on the (implausible) assertion that there

were simply no profits to disgorge. Pet. App. 92a. So

not only did it make sense to use the financial

statements of the affiliates in determining an

appropriate disgorgement award, but DG also left the

district court little other choice. Indeed, that is why

the Fourth Circuit noted that any imprecision in

those calculations “can be traced back to Dewberry

Group’s litigation strategy to deny any connection

between its affiliates’ revenues and its infringing

marks.” Pet. App. 46a (emphasis in original).

Moreover, as the Fourth Circuit explained, to hold

that affiliates’ finances are never an appropriate

measuring stick would undermine Congress’s intent

that the Lanham Act “take all the economic incentive

out of trademark infringement,” particularly under

the unique facts and circumstances of this case. Pet.

App. 45a. That is what the court found “illuminating”

about American Rice. Pet. App. 44a–45a (citing Am.

Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321

(5th Cir. 2008)). There, the Fifth Circuit affirmed a

disgorgement award that included not just the profits

formally recognized by the infringing defendant, but

also profits the infringer had passed along to

affiliates.

Pet. App. 44a.

The decision below

acknowledged that unlike in American Rice, DG never

formally possessed the affiliates’ profits before they

appeared on its affiliates’ books. Pet. App. 44a. But

27

“while Dewberry Group did not receive the revenues

from its infringing behavior directly, it still benefited

from its infringing relationship with its affiliates,”

just like the infringer in American Rice. Pet. App.

45a. As in American Rice, the Fourth Circuit was

concerned about “handing potential trademark

infringers the blueprint for using corporate

formalities to insulate their infringement from

financial consequences.” Pet. App. 45a.

In challenging the Fourth Circuit’s decision, DG

entirely ignores the district court’s discretion to

increase a disgorgement award to “such sum as the

court shall find to be just” when “the amount of

recovery based on profits is . . . inadequate.” 15

U.S.C. § 1117(a). While DG claims “careful attention

to Section 1117(a)’s text is warranted,” Pet. 26, it

nowhere even acknowledges this crucial statutory

language. In fact, when reciting the “Statutory

Provisions Involved,” DG literally omits the language

with an ellipsis. Pet. 2. So while DG accuses the

Fourth Circuit of “rewrit[ing] the Lanham Act,” Pet.

22, DG is the one actually doing so.

In short, DG’s attack on the Fourth Circuit’s

decision rests entirely on a flawed premise. DG

focuses exclusively on other statutory language,

repeatedly complaining that the decision below

ordered disgorgement of more than just “defendant’s

profits.” See, e.g., Pet. 5, 13, 22, 25 (quoting 15 U.S.C.

§ 1117(a)). But again, the statute allows precisely

that in the event the court “find[s] that the amount of

the recovery based on profits is . . . inadequate.” Ibid.

And at a minimum, the adjustment isn’t a “penalty” if

used to approximate the defendant’s “true profits.”

Kars 4 Kids, 8 F.4th at 223. See also Max Rack, 40

F.4th at 473 (“full profits”). That’s exactly what

28

happened here—the district court increased the

award to approximate “Dewberry Group’s true

financial gain” because the profits reflected on DG’s

tax return were wholly inadequate. Pet. App. 43a.

DG’s analysis—including its lengthy discussion of

Bestfoods—thus completely misses the point. Indeed,

because DG never even acknowledges the district

court’s discretion to increase a disgorgement award,

it also never argues that the district court abused that

discretion. Accordingly, that argument is waived.

DG claims the Fourth Circuit and district court did

something different, although it has trouble telling a

consistent story. DG sometimes complains that it was

held liable for “an affiliate’s acts,” Pet. 24 (emphasis

added), and other times says it was held “jointly liable

for [its affiliates’] profits,” Pet. 28 (emphasis added).

This waffling is itself confirmation that both

characterizations are wrong.

First, as noted earlier, the Fourth Circuit didn’t

affirm an award that “imposed liability for an

affiliate’s acts without veil piercing,” in violation of

Bestfoods. Pet. 24 (emphasis added). DG points to no

language in either of the decisions below even

remotely suggesting that this occurred, because there

is none. To the contrary, these decisions allowed an

award of “profits generated by Dewberry Group’s use

of infringing marks.” Pet. App. 11a (emphasis added).

See also Pet. App. 85a (calculating “profits generated

by Defendant’s use of the infringing marks”)

(emphasis added). The district court found as fact

that DG’s affiliates didn’t actually do anything—it

was DG that performed all “the work and services

necessary to generate [their] revenues.”

Supra

Statement of the Case, Section A (quoting Pet. App.

29

83a). Accordingly, the decisions below held DG liable

only for its own acts, not the acts of its affiliates.

Second, DG (and its amici) alternatively claim the

Fourth Circuit allowed DG to be held “jointly liable

for [the] profits” of its affiliates. Pet. 28. See also Am.

Br. 8–12. And because DG purportedly “never

received” those profits, the award was “plainly a

penalty.” Pet. 30–31. In support, DG quotes language

“treat[ing] Dewberry Group and its affiliates as a

single corporate entity.” Pet. 3–4, 9–10,

But the Fourth Circuit’s decision didn’t do that

either. It didn’t hold DG “jointly liable” for the

affiliate’s profits—it approved the district court’s

treating of these companies as a “single corporate

entity for the purpose of calculating” the award. Pet.

App. 11a (emphasis added). See also Pet. App. 85a

(“[DG] and its [affiliates] will be treated as a single

corporate entity when calculating the revenues and

profits generated by Defendant’s use of the Infringing

Marks.”) (emphasis added). The Fourth Circuit

agreed with what Dewberry had explained in briefing

and at oral argument (supra pp. 27–28 & n.3)—that

the calculation merely used the affiliates’ financials

as a benchmark for DG’s “true financial gain.” Pet.

App. 43a. In other words, the Fourth Circuit affirmed

the district court’s exercise of discretion to “adjust an

award up . . . as circumstances demand,” Pet. App.

87a—not as a “precise mathematical calculation of

the profits earned by Dewberry Group,” ibid., but an

equitable adjustment based on the “circumstances of

the case,” 15 U.S.C. § 1117(a).

For all these reasons, DG is wrong, too, that the

Fourth Circuit’s decision will impact other statutes.

In DG’s (and its amici’s) telling, this decision

30

misconstrued the phrase “subject to the principles of

equity” as conferring “broad ‘discretion’ to ‘weigh the

equities of the dispute.’” Pet. 11 (quoting Pet. App.

45a). See also Pet. 26–27, 29; Am. Br. 3, 14–16. This,

DG claims, could “distort other crucial statutory

frameworks” that reference “equitable relief.” Pet. 34.

But as noted, the district court and Fourth Circuit

didn’t violate these equitable principles at all but,

instead, faithfully adhered to the plain text of the

Lanham Act. And that language, which these other

statutes lack, expressly gives the district court

“discretion” to “enter judgment for such sum as the

court shall find to be just.” 15 U.S.C. § 1117(a)

(emphasis added). As the Fourth Circuit stressed, the

Lanham Act is uniquely aimed at “giv[ing] trademark

registrants . . . ‘the greatest protection that can be

given them.’” Pet. App. 45a (quoting Park Fly).

IV. This case is a poor vehicle in any event.

Even were the question DG identifies otherwise

worthy of this Court’s attention, this case would be an

extremely poor vehicle in which to examine it.

First, as just explained, DG’s arguments

mischaracterize the decisions below. See supra

Section III. To address DG’s arguments, this Court at

least would need to ignore language in both decisions

confirming that the district court exercised its

statutorily-conferred discretion to increase the

disgorgement award to a “sum [it found] to be just,

according to the circumstances of the case.” 15 U.S.C.

§ 1117(a).

Second, accepting DG’s erroneous view of the

decisions below wouldn’t make any practical

difference. Even if that view were correct, the

decisions below could still have achieved the exact

31

same result through the statutory text that DG

conspicuously ignores. This Court (or the courts

below on remand) could still affirm the award as a

sum deemed “just,” based on DG’s “true financial

gain.” Pet. App. 43. In fact, that is what the courts

below actually did.

Third, while DG argued more generally below that

the district court had improperly “pierced the

corporate veil,” it didn't make the specific arguments

it now advances, nor did it mention any of the case

law it now cites. DG didn’t claim below it was being

held liable for the “acts” of its affiliates. Nor did it

argue that (1) the phrase “subject to principles of

equity” imports restrictions from the common law; or

(2) one of those restrictions prevents “joint liability”

for another party’s profits. Pet. 26–30. See also Am.

Br. 3–12. As explained, DG didn’t raise these

arguments because they don’t apply—the district

court didn’t hold DG “jointly liable” for anything. But

were this Court to grant review anyway, it would need

to address as a threshold matter whether these

arguments are waived. As this Court has repeatedly

stressed, it is a court “of review, not of first view.”

Cutter v. Wilkinson, 544 U.S. 709, 719 n.7 (2005).

Finally, even setting these other problems aside,

this case is a poor vehicle on the facts alone. As the

district court found, DG structured its business such

that “all revenues generated through Dewberry

Group, Inc.’s services show up exclusively” on the

books of its affiliates. Pet. App. 83a. DG then claimed

that because its own tax returns showed negative

profits, the district court had no choice but to award

$0.

Pet. App. 82a–84a.

And DG offered no

alternative—it “did not do a profits analysis” and

performed “no actual calculations.” Pet. App. 92a.

32

These unusual facts are almost tailor-made for the

Lanham Act’s unique discretionary language.

Accordingly, this case could offer little guidance

outside of these very specific circumstances.

What’s more, reversing the decision below would

effectively exonerate DG for “willful, bad faith

infringement.” Op. 54. DG purposefully violated a

settlement agreement, disregarded multiple cease

and desist letters, and ignored repeated rejections by

the USPTO. See supra Statement of the Case, Section

A. John Dewberry even hid the parties’ prior

litigation from his own general counsel. Ibid. And on

top of that, he structured his companies so that none

of the profits from DG’s infringing conduct would

appear on DG’s books. Ibid. It is difficult to imagine

more compelling circumstances for increasing a

disgorgement award that the defendant insists

should be $0.

33

CONCLUSION

The Court should deny the petition for certiorari.

Respectfully submitted,

ARTHUR E. SCHMALZ

HUNTON ANDREWS

KURTH LLP

2200 Pennsylvania Ave.

NW

Washington, DC 20037

ELBERT LIN

Counsel of record

STEPHEN P. DEMM

DAVID M. PARKER

HUNTON ANDREWS

KURTH LLP

Riverfront Plaza

East Tower

951 East Byrd St.

Richmond, VA 232194074

(804) 788-8200

elin@huntonAK.com

Counsel for Respondent