Petition for Writ of Certiorari — Cirrus Design Corporation, Petitioner v. Great Western Air, LLC, dba Cirrus Aviation Services, LLC

Supreme Court briefJun 27, 2025

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No. ______

In the

Supreme Court of the United States

________________

CIRRUS DESIGN CORPORATION,

Petitioner,

GREAT WESTERN AIR, LLC

dba CIRRUS AVIATION SERVICES, LLC,

________________

Respondent.

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Ninth Circuit

________________

PETITION FOR WRIT OF CERTIORARI

________________

SCOTT BURNETT SMITH

HUNTER PEARCE

SCHYLER B. BURNEY

BRADLEY ARANT

BOULT CUMMINGS

LLP

200 Clinton Ave. W.

Suite 900

Huntsville, AL 35801

PAUL D. CLEMENT

Counsel of Record

MATTHEW D. ROWEN

PHILIP HAMMERSLEY

CLEMENT & MURPHY, PLLC

706 Duke Street

Alexandria, VA 22314

(202) 742-8900

paul.clement@clementmurphy.com

Counsel for Petitioner

June 27, 2025

QUESTION PRESENTED

The decision below entrenches an acknowledged

split that derives (at best) from misreading this

Court’s decision in Dairy Queen, Inc. v. Wood, 369 U.S.

469 (1962), and (at worst) from ignoring it altogether.

Dairy Queen held that the Seventh Amendment

entitled the “owners of [a] trademark” to a jury trial in

an infringement action seeking “an accounting” of

profits. Id. at 473-78. That the “claim” was “cast in

terms of an ‘accounting,’ rather than in terms of an

action for … ‘damages,’” made no difference. Id. at

477. Despite Dairy Queen’s clear holding, four circuits

now hold the opposite, i.e., that trademark owners

have a jury-trial right only if they seek to recover

damages, and lose their jury-trial right on both

infringement and the amount of recovery by exercising

their statutory right to recover the infringer’s “profits”

in lieu of their own “damages.” That decision defies

this Court’s precedent, neglects centuries of commonlaw practice, and forces trademark owners to sacrifice

their constitutional rights in order to exercise their

statutory right to recover “profits,” a particularly

apposite remedy for the most egregious trademark

infringement. Put simply, the decision below flouts

this Court’s precedent, creates perverse incentives,

and puts the Ninth Circuit on the wrong side of a deep

split in authority.

The question presented is:

Whether, as this Court held in Dairy Queen, the

Seventh Amendment jury-trial right applies in

trademark-infringement actions seeking monetary

relief in the form of the infringer’s profits.

PARTIES TO THE PROCEEDING

Petitioner Cirrus Design Corporation was the

defendant/counter-claimant and appellant below.

Respondent Great Western Air, LLC d/b/a Cirrus

Aviation Services, LLC, was the plaintiff/counterdefendant and appellee below.

iii

CORPORATE DISCLOSURE STATEMENT

Petitioner Cirrus Design is a wholly owned

subsidiary of Cirrus Industries, Inc.

Cirrus

Industries, Inc., is a wholly owned subsidiary of Cirrus

Aircraft Limited, a Cayman Islands corporation

publicly traded on the Hong Kong Stock Exchange.

STATEMENT OF RELATED PROCEEDINGS

This case arises from and is related to the

following proceedings in the United States Court of

Appeals for the Ninth Circuit and the United States

District Court for the District of Nevada:

 Great Western Air, LLC dba Cirrus Aviation

Services v. Cirrus Design Corporation, No. 2:16cv-02656-DJA (D. Nev.), judgment entered

January 6, 2023, Rule 52 and 59 motions denied

on August 23, 2023.

 Cirrus Design Corporation v. Great Western Air,

LLC dba Cirrus Aviation Services, No. 23-15157

(9th Cir.), judgment entered December 17,

2024, rehearing denied January 30, 2025.

There are no other proceedings in state or federal

trial or appellate courts directly related to this case

within the meaning of this Court’s Rule 14.1(b)(iii).

TABLE OF CONTENTS

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

PARTIES TO THE PROCEEDING ........................... ii

CORPORATE DISCLOSURE STATEMENT ........... iii

STATEMENT OF RELATED PROCEEDINGS ....... iv

TABLE OF AUTHORITIES .................................... viii

PETITION FOR WRIT OF CERTIORARI ................ 1

OPINIONS AND ORDERS BELOW ......................... 3

JURISDICTION ......................................................... 4

CONSTITUTIONAL

AND

STATUTORY

PROVISIONS INVOLVED...................................... 4

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

A. Legal Background ........................................ 4

B. Factual Background ..................................... 8

C. Procedural Background .............................. 10

REASONS FOR GRANTING THE PETITION....... 11

The Decision Below Conflicts With This

Court’s Decision In Dairy Queen And

Entrenches An Acknowledged Circuit Split ..... 13

A. This Court Decides Dairy Queen ............... 13

B. Post-Dairy Queen, A Consensus Emerges

That Infingement Claims Seeking Profits

May Be Tried Before a Jury ....................... 16

C. Multiple Circuits Split From That

Consensus and Deny the Jury Right ......... 20

II. The Decision Below Is Wrong ........................... 23

A. An Infringement Action Under the

Lanham Act Asserts a Legal Claim ........... 23

B. The Profits Remedy Under the Lanham

Act Seeks Legal Relief ................................ 28

C. The

Decision

Below

Egregiously

Misapplied the Seventh Amendment ........ 30

III. The Question Presented Is Important, And

This Case Is An Ideal Vehicle To Resolve It .... 32

CONCLUSION ......................................................... 35

APPENDIX

Appendix A

Memorandum Opinion, United States Court

of Appeals for the Ninth Circuit, Great

Western Air, LLC v. Cirrus Design Corp.,

No. 23-15157 (Dec. 17, 2024)....................... App-1

Appendix B

Order, United States Court of Appeals

for the Ninth Circuit, Great Western Air, LLC

v. Cirrus Design Corp., No. 23-15157

(Jan. 30, 2025) ............................................. App-4

Appendix C

Excerpts of Transcript of Proceedings

Regarding Jury Demand, United States

District Court for the District of Nevada,

Great Western Air, LLC v. Cirrus Design

Corp., No. 16-cv-02656 (Sept. 9, 2022)........ App-6

Appendix D

Findings of Fact, Conclusions of Law,

and Judgment Following Bench Trial,

United States District Court for the

District of Nevada, Great Western Air, LLC v.

Cirrus Design Corp., No. 16-cv-02656

(Jan. 6, 2023) ............................................. App-25

vii

Appendix E

Order, United States District Court

for the District of Nevada, Great Western Air,

LLC v. Cirrus Design Corp., No. 16-cv-02656

(Aug. 23, 2023) ........................................... App-60

Appendix F

Relevant Constitutional and Statutory

Provisions................................................... App-68

U.S. Const. amend. VII ...................... App-68

15 U.S.C. §1114 .................................. App-68

15 U.S.C. §1117 .................................. App-75

viii

TABLE OF AUTHORITIES

Cases

adidas-Am., Inc. v. Payless Shoesource, Inc.,

546 F.Supp.2d 1029 (D. Or. 2008) ......................... 16

Alcan Int’l Ltd. v. S.A. Day Mfg. Co.,

179 F.R.D. 398 (W.D.N.Y. 1998) ..................... 16, 17

B&B Hardware, Inc. v. Hargis Indus., Inc.,

575 U.S. 138 (2015) ............................................ 4, 26

Beacon Theatres, Inc. v. Westover,

359 U.S. 500 (1959) ................................................ 32

Black & Decker Corp. v. Positec USA Inc.,

118 F.Supp.3d 1056 (N.D. Ill. 2015)...................... 16

Blanchard v. Hill,

26 Eng. Rep. 692 (1749) ......................................... 27

Chauffeurs, Teamsters & Helpers v. Terry,

494 U.S. 558 (1990) ................................................ 29

Dairy Queen, Inc. v. Wood,

369 U.S. 469 (1962) ........ 1, 13, 14, 15, 17, 19, 21, 28

Daisy Grp., Ltd. v. Newport News, Inc.,

999 F.Supp. 548 (S.D.N.Y. 1998) .................... 16, 17

Dimick v. Schiedt,

293 U.S. 474 (1935) ................................................ 32

Feltner v. Columbia Pictures Television, Inc.,

523 U.S. 340 (1998) ........................................ 1, 8, 23

Ferrari S.P.A. v. Roberts,

944 F.2d 1235 (6th Cir. 1991)................................ 22

Fifty-Six Hope Road Music, Ltd.

v. A.V.E.L.A., Inc.,

778 F.3d 1059 (9th Cir. 2015).............. 11, 20, 21, 31

Granfinanciera, S.A. v. Nordberg,

492 U.S. 33 (1989) ........................................ 8, 27, 28

Great-West Life & Annuity Ins. Co.

v. Knudson,

534 U.S. 204 (2002) ................................................ 29

Grove Fresh Distribs., Inc.

v. New England Apple Prods. Co.,

1991 WL 3928 (N.D. Ill. Jan. 11, 1991) ................ 17

Gucci Am., Inc. v. Accents,

994 F.Supp. 538 (S.D.N.Y. 1998) .......................... 16

Hamilton-Brown Shoe Co.

v. Wolf Bros. & Co.,

240 U.S. 251 (1916) ................................................ 30

Hana Fin., Inc. v. Hana Bank,

574 U.S. 418 (2015) ................................................ 33

Hard Candy, LLC

v. Anastasia Beverly Hills, Inc.,

921 F.3d 1343 (11th Cir. 2019).............................. 21

Holiday Inns of Am., Inc. v. Lussi,

42 F.R.D. 27 (N.D.N.Y. 1967) ................................ 17

Hunting World Inc. v. Reboans Inc.,

1994 WL 763408 (N.D. Cal. Oct. 26, 1994) ........... 17

Ideal World Mktg. v. Duracell, Inc.,

997 F.Supp. 334 (E.D.N.Y. 1998) .......................... 16

In re Trade-Mark Cases,

100 U.S. 82 (1879) .................................................. 26

Inwood Labs., Inc. v. Ives Labs., Inc.,

456 U.S. 844 (1982) ................................................ 26

Jack Daniel’s Props., Inc. v. VIP Prods. LLC,

599 U.S. 140 (2023) ............................................ 6, 33

JL Beverage Co., LLC

v. Jim Beam Brands Co.,

815 F.App’x 110 (9th Cir. 2020) ............................ 21

Kennedy v. Lakso Co.,

414 F.2d 1249 (3d Cir. 1969) ........................... 19, 29

L.L. Bean, Inc. v. Drake Publishers, Inc.,

629 F.Supp. 644 (D. Me. 1986) .............................. 17

Matal v. Tam,

582 U.S. 218 (2017) ............................................ 6, 25

McCullough v. Dairy Queen,

194 F.Supp. 686 (E.D. Pa. 1961) ..................... 14, 21

Nat’l Presto Indus., Inc.

v. U.S. Merchs. Fin. Grp., Inc.,

121 F.4th 671 (8th Cir. 2024) ................................ 22

NordicTrack, Inc. v. Consumer Direct, Inc.,

158 F.R.D. 415 (D. Minn. 1994) ...................... 16, 17

Oxford Indus., Inc. v. Hartmarx Corp.,

1990 WL 65792 (N.D. Ill. May 2, 1990) ................ 17

Parsons v. Bedford,

28 U.S. (3 Pet.) 433 (1830) ....................................... 7

Perttu v. Richards,

--- S.Ct. ----, 2025 WL 1698783

(U.S. June 18, 2025) ........................................ 15, 32

Petrella v. Metro-Goldwyn-Mayer, Inc.,

572 U.S. 663 (2014) ................................................ 30

Root v. Ry. Co.,

105 U.S. 189 (1881) ................................................ 30

S.C. Johnson & Son v. Johnson,

175 F.2d 176 (2d Cir. 1949) ..................................... 5

SEC v. Jarkesy,

603 U.S. 109 (2024) .................................... 1, 7, 8, 32

Sheldon v. Metro-Goldwyn Pictures Corp.,

309 U.S. 390 (1940) .................................................. 8

Sid & Marty Krofft Television Prods., Inc.

v. McDonald’s Corp.,

562 F.2d 1157 (9th Cir. 1977)................................ 20

Singleton v. Bolton,

99 Eng. Rep. 661 (1783) ......................................... 25

Southern v. How,

79 Eng. Rep. 1243 (1618) ....................................... 25

Swofford v. B & W, Inc.,

336 F.2d 406 (5th Cir. 1964)...................... 18, 19, 30

Tandy Corp. v. Malone & Hyde, Inc.,

769 F.2d 362 (6th Cir. 1985)............................ 17, 22

Tull v. United States,

481 U.S. 412 (1987) ............................................ 8, 29

Vidal v. Elster,

602 U.S. 286 (2024) ...................................... 5, 25, 26

Constitutional Provision

U.S. Const. amend VII ............................................... 7

Statutes

15 U.S.C. §1114(1)(a) .................................................. 6

15 U.S.C. §1116(a) ...................................................... 7

15 U.S.C. §1117(a) ............................................ 6, 7, 33

15 U.S.C. §1127 .......................................................... 6

17 U.S.C. §504 .......................................................... 33

17 U.S.C. §504(a) ........................................................ 7

Pub. L. No. 79-489, 60 Stat. 427 (1946) ..................... 5

xii

Rules

Fed. R. Civ. P. 38(a) .................................................... 3

Sup. Ct. R. 10(a) ....................................................... 13

Other Authorities

Lionel Bently, The First Trademark Case at

Common Law?, 47 U.C. Davis L. Rev. 969

(2014) ...................................................................... 25

William Blackstone, Commentaries on the

Laws of England (1765) ........................................... 7

John Comyns, A Digest of the Laws of

England (1780) ...................................................... 26

Grafton D. Cushing, On Certain

Cases Analogous to Trade-Marks,

4 Harv. L. Rev. 321 (1891) ..................................... 27

Sidney A. Diamond, The Historical

Development of Trademarks,

65 Trademark Rep. 265 (1975) .............................. 27

Dan B. Dobbs, Law of Remedies: Damages—

Equity—Restitution (2d ed. 1993) ......................... 18

Joel Eichengrun, Remedying the Remedy

of Accounting, 60 Ind. L.J. 463 (1984) .................. 29

13 Geo. I, c. 26, §XXX (1726) .................................... 25

Gilson on Trademarks (2018)................................... 24

James M. Koelemay, Jr., A Practical

Guide to Monetary Relief in

Trademark Infringement Cases,

85 Trademark Rep. 263 (1995) .............................. 18

C.C. Langdell, A Brief Survey of Equity

Jurisdiction (2d ed. 1908) ...................................... 29

xiii

John Mallory, Modern Entries, in English

(4th ed. 1791) ......................................................... 25

McCarthy on Trademarks and Unfair

Competition (5th ed. 2025) .................................. 5, 6

Beverly Pattishall, Two Hundred Years

of American Trademark Law,

68 Trademark Rep. 121 (1978) ................................ 5

César Ramirez-Montes, A Re-Examination

of the Original Foundations of AngloAmerican Trademark Law,

14 Marq. Intell. Prop. L. Rev. 91 (2010) ................. 5

Restatement (Third) of Unfair Competition

(1995) .................................................................... 4, 6

Gary M. Ropski, The Federal Trademark

Jury Trial Right—Awakening of a

Dormant Constitutional Right,

70 Trademark Rep. 177 (1980) .............................. 27

Frank I. Schechter, The Historical

Foundations of the Law Relating to

Trade-Marks (1925) ............................................... 26

Frank I. Schechter, The Rational Basis

of Trademark Protection,

60 Trademark Rep. 334 (1970) .............................. 26

Bruce S. Sperling, The Right to Jury Trial

in a Federal Action for Trademark

Infringement or Unfair Competition,

62 Trademark Rep. 58 (1972) ................................ 30

Keith M. Stolte, How Early Did AngloAmerican Trademark Law Begin?,

88 Trademark Rep. 564 (1998) ........................ 24, 25

xiv

Mark A. Thurmon, Ending the Seventh

Amendment Confusion: A Critical Analysis

of the Right to a Jury in Trademark Cases,

11 Tex. Intell. Prop. L.J. 1 (2002) ............. 13, 16, 20

Charles Alan Wright & Arthur R. Miller,

Federal Practice and Procedure

(4th ed. 2025) ................................................... 18, 29

PETITION FOR WRIT OF CERTIORARI

The decision below entrenches a circuit split on an

important and recurring issue of federal law—all over

whether this Court meant what it said six decades ago.

In Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962), this

Court appeared to squarely hold that when “owners of

[a] trademark” bring an “infringement” claim seeking

“a money judgment,” the “claim … is unquestionably

legal,” which means the Seventh Amendment applies

regardless of whether “their complaint is cast in terms

of an ‘accounting,’ rather than in terms of an action for

‘debt’ or ‘damages.’” Id. at 473-78. For decades, lower

courts embraced that straightforward reading; indeed,

the question was deemed sufficiently settled that it

almost never reached appellate courts. This Court

likewise seemed to view the issue as open-and-shut:

Feltner v. Columbia Pictures Television, Inc., 523 U.S.

340 (1998), cited Dairy Queen for the proposition that

“actual damages and profits … constitute legal relief”

that trigger the Seventh Amendment jury-trial right

in infringement actions. Id. at 346 (emphasis added).

More recently, however, four circuits have

adopted a narrow (mis)reading of Dairy Queen.

According to the Sixth, Eighth, Ninth, and Eleventh

Circuits, the Seventh Amendment does not apply

when the relief sought in a trademark-infringement

action is “profits” rather than “damages.” That

revisionist view conflicts with the majority view that

prevailed in Dairy Queen’s immediate wake, and it

just as clearly departs from this Court’s most recent

precedents emphasizing the central importance of

preserving the Seventh Amendment jury-trial right.

See, e.g., SEC v. Jarkesy, 603 U.S. 109, 121-22 (2024).

This case cleanly presents the question of whether

Dairy Queen means what it says (as the majority view

holds) or whether the new, seek-profits-lose-your-jurytrial-right view is correct. That question cries out for

resolution, which only this Court can provide.

The need for plenary review is particularly acute,

moreover, as the most recent cases are deeply flawed,

even beyond their failure to follow Dairy Queen. The

test for determining whether a statutory claim

triggers the jury-trial right looks to historical practice

in 1791. Ample evidence demonstrates not only that

trademark-infringement actions were available at law

in England, but that such actions were not brought in

equity until decades into the nineteenth century, long

after the Framers enshrined the right in the Seventh

Amendment. History likewise shows that the remedy

asserted here (profits for trademark infringement) is

best considered legal rather than equitable. Simply

put, the Ninth Circuit erred by denying a jury, and the

other circuits on its side of the split are in need of

correction.

Adding insult to injury, the decision below

frustrates Congress’ explicit decision to give victims of

trademark infringement the option of recovering the

infringer’s illicit profits, by making the price of

exercising that statutory right the sacrifice of the

constitutional jury-trial right. The Lanham Act allows

victims to obtain profits, damages, or both as a

monetary remedy for infringement.

The profits

remedy is particularly useful in targeting the most

egregious infringement, such as when the infringer

sells an inferior product with far lower production and

marketing costs than the real McCoy. In such cases,

calculating damages based on the victim’s own lost

profits from sales of the superior (and more-costly-toproduce-and-market) article will underestimate the

true harm caused. No one doubts that plaintiffs that

content themselves with the out-of-pocket damages

remedy retain their Seventh Amendment rights as to

both infringement and the amount of damages. Yet

under the Ninth Circuit’s rule, plaintiffs who seek the

most apposite remedy for targeting the most egregious

infringement will need to sacrifice their Seventh

Amendment right, even as to infringement. That

makes no sense, and it underscores the serious

consequences of failing to faithfully apply Dairy Queen

and Rule 38’s promise that jury-trial rights are

“inviolate.” See Fed. R. Civ. P. 38(a).

In short, the question presented is critically

important, and this case is the right vehicle to resolve

it, as the issues were preserved and presented to the

district and appellate courts and an opinion reversing

on the Seventh Amendment issue would result in a

new trial. More important, such a decision would

reaffirm juries’ enduring role in our constitutional

republic. The Court should grant the petition.

OPINIONS AND ORDERS BELOW

The Ninth Circuit’s decision, 2024 WL 5134351, is

reproduced at App.1-3; its order denying rehearing en

banc is reproduced at App.4-5. The district court’s

order striking petitioner’s jury-trial demand is

reproduced at App.6-24; its findings of fact and

conclusions of law, 649 F.Supp.3d 965, are reproduced

at App.25-59; and its order denying petitioner’s postjudgment motion is reproduced at App.60-67.

JURISDICTION

The Ninth Circuit issued its opinion on December

17, 2024, App.1, and denied a timely rehearing

petition on January 30, 2025, App.4. On April 21,

2025, Justice Kagan extended the time for filing a

petition to May 30. On May 20, Justice Kagan

extended the time for filing a petition to June 27. This

Court has jurisdiction under 28 U.S.C. §1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

The Seventh Amendment to the United States

Constitution is reproduced at App.68. Sections 32 and

35 of the Lanham Act, 15 U.S.C. §§1114, 1117, are

reproduced at App.68-78.

STATEMENT OF THE CASE

A. Legal Background

1. The use of trademarks to identify the source of

goods has ancient roots, “going back at least to Roman

times.” B&B Hardware, Inc. v. Hargis Indus., Inc.,

575 U.S. 138, 142 (2015). “[T]he first widespread use

of trademarks” arose out of “the guild system of

medieval England.” Restatement (Third) of Unfair

Competition §9 cmt. b (1995). The purpose of such

markings at first “was primarily regulatory since the

marks fixed responsibility for defective merchandise.”

Id. As markets became more sophisticated, guilds

used the marks “to identify the source of the goods to

prospective purchasers who could then make their

selections based upon the reputation, not merely of the

immediate vendor, but also of the manufacturer.” Id.

Inevitably, the burgeoning use of trademarks

gave rise to trademark infringement. To combat that

malicious practice, law courts began recognizing legal

protections for those marks.

The common law

empowered aggrieved mark holders to bring actions

against other producers that had appropriated their

mark to mislead consumers about the source of the

product and to capitalize on the mark holder’s

reputation. See 1 McCarthy on Trademarks and

Unfair Competition §5:2 (5th ed. 2025). That legal

action derived from the tort of “deceit,” and it required

the mark holder to prove that the defendant pirated

the mark with the fraudulent intent to deceive the

public. César Ramirez-Montes, A Re-Examination of

the Original Foundations of Anglo-American

Trademark Law, 14 Marq. Intell. Prop. L. Rev. 91,

100-02 (2010).

America inherited that tradition and likewise

enforced trademark rights at common law. See Vidal

v. Elster, 602 U.S. 286, 296 (2024). State and federal

courts developed trademark law through actions in

courts of law in the early years of the Republic. When

infringement became sufficiently pervasive to justify a

national solution, Congress (after some early, ill-fated

reforms) enacted the Act of July 5, 1946, Pub. L.

No. 79-489, 60 Stat. 427, known as the Lanham Act.

The Lanham Act achieved “major innovative

improvements in statutory law,” Beverly Pattishall,

Two Hundred Years of American Trademark Law, 68

Trademark Rep. 121, 139 (1978), and at last “put

federal trade-mark law upon a new footing,” S.C.

Johnson & Son v. Johnson, 175 F.2d 176, 178 (2d Cir.

1949) (Hand, J.). Harkening back to marks’ sourceidentifying function during the era of medieval guilds,

the Act encourages the registration and use of marks

to help customers’ ability to confidently “select ‘the

goods and services that they wish to purchase, as well

as those they want to avoid.’” Jack Daniel’s Props.,

Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023)

(quoting Matal v. Tam, 582 U.S. 218, 224 (2017)).

To safeguard the source-identifying purpose of

trademarks, Congress gave trademark holders a right

of action against “the deceptive and misleading use of

marks.” 15 U.S.C. §1127. So whenever someone

impermissibly “use[s]” the mark “in commerce” to sell

goods or services in a manner that deceives or

misleads the public, that person “shall be liable in a

civil action by the registrant for the remedies

hereinafter provided.” Id. §1114(1)(a). The “keystone”

for liability is whether the infringing use will likely

cause consumer confusion about the source of a good

or service. Jack Daniel’s Props., 599 U.S. at 147.

At the remedial stage, the Lanham Act gives the

injured plaintiff multiple options in seeking monetary

relief. She can “recover (1) defendant’s profits, (2) any

damages sustained by the plaintiff, and (3) the costs of

the action.” 15 U.S.C. §1117(a). The profits remedy—

also referred to as an “accounting of profits”—

authorizes the trademark owner to collect the

infringer’s ill-gotten gains from the infringing use of

the mark. 4 McCarthy on Trademarks and Unfair

Competition §30:59 (5th ed. 2025). The profits remedy

recognizes that, in cases of egregious infringement,

the illicit profits earned by the seller of an inferior

knock-off may exceed the damages suffered by the

plaintiff from the lost sales of a superior (and moreexpensive-to-produce) genuine article. Restatement

(Third) of Unfair Competition §36 cmt. c (1995). To

provide a complete remedy in such circumstances, the

Lanham Act (like the Copyright Act) thus gives

plaintiffs the right “to recover” not only “any damages

sustained” from the infringement, but also the

“defendant’s profits.” 15 U.S.C. §1117(a); see 17 U.S.C.

§504(a) (“an infringer of copyright is liable for … the

profits of the infringer”). On top of those monetary

remedies, trademark registrants may also seek

injunctive relief to prevent ongoing or future harm

from trademark infringement. 15 U.S.C. §1116(a).

2. Who decides whether a right has been violated,

and the proper remedy for the violation, can often be

as important (if not more so) than any substantive

issue. That, at least, was the view of our Founding

Fathers. Blackstone described the right to a jury as

“the glory of the English law,” 3 William Blackstone,

Commentaries on the Laws of England 379 (1765), and

“American colonists” likewise “prized” the jury-trial

right so much so that they championed it in the

Declaration of Independence and enshrined it in the

Bill of Rights, Jarkesy, 603 U.S. at 121.

To that end, the Seventh Amendment guarantees

“the right of trial by jury” in “Suits at common law.”

U.S. Const. amend VII. “As Justice Story explained,

the Framers used the term ‘common law’ in the

Amendment ‘in contradistinction to equity, and

admiralty, and maritime jurisprudence.’” Jarkesy,

603 U.S. at 122 (quoting Parsons v. Bedford, 28 U.S.

(3 Pet.) 433, 446 (1830)). It is thus long settled that

the Amendment is not limited to common-law claims,

but extends to statutory claims that are legal in

nature. Id. Equally settled is the right’s enduring

importance; “every encroachment upon it” must be

“watched with great jealousy.” Id.

To determine whether the right attaches to

statutory actions, courts first “compare the statutory

action to 18th-century actions brought in the courts of

England prior to the merger of the courts of law and

equity,” and then “examine the remedy sought and

determine whether it is legal or equitable in nature.”

Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 42

(1989). As relevant here, most money judgments were

(and thus are) legal in nature. “A court in equity,” to

be sure, “was empowered to provide monetary awards

that were incidental to or intertwined with injunctive

relief.” Tull v. United States, 481 U.S. 412, 424 (1987).

But usually only to that extent: As this Court

explained in Sheldon v. Metro-Goldwyn Pictures

Corp., 309 U.S. 390 (1940), “recovery of profits … had

been allowed in equity both in copyright and patent

cases” in the pre-merger era, but only “as appropriate

equitable relief incident to a decree for an injunction.”

Id. at 399; see also Feltner, 523 U.S. at 346 (noting that

“actual damages and profits” under the Copyright Act

“generally are thought to constitute legal relief”).

B. Factual Background

1. Headquartered on the shores of Lake Superior,

petitioner Cirrus Design manufactures aircraft and

provides aviation services. The company was founded

by two brothers, Alan and Dale Klapmeier, who were

inspired to name their business “Cirrus” after the

telltale sign of smooth flying weather: cirrus clouds.

The brothers built their company around the

Cirrus mark for almost forty years. After first using

the moniker at a tradeshow in the 1980s, the brothers

successfully registered the “CIRRUS” mark in 1995.

App.29; CA9.Dkt.34-11.at.2. In the following years,

petitioner obtained additional service marks and

trademarks for “CIRRUS” and the word “CIRRUS”

followed by other words, like “Cirrus Vision” and

“Cirrus Certified.” See, e.g., CA9.Dkt.34-11.at.5, 7, 9,

19. With those registered marks in hand, the brothers

devoted their careers to making the Cirrus brand one

that consumers came to know and trust.

They accomplished all that and more. The Cirrus

Design fleet includes the world’s best-selling singleengine aircraft.

See CA9.Dkt.34-9.at.129.

The

company designed and sold a parachute system that

has saved hundreds of lives. CA9.Dkt.34-9.at.129.

Cirrus also provides many aviation services, ranging

from flight training and aircraft maintenance to

concierge and acquisition-related offerings.

See

CA9.Dkt.34-6.at.140; CA9.Dkt.34-9.at.130. Simply

put, petitioner is one of the preeminent brands in the

personal-aviation industry, and it boasts an expansive

domestic and international footprint.

2. But after investing untold time and resources

into its business, petitioner discovered that another

company was exploiting the Cirrus trademark:

respondent Cirrus Aviation Services. Like petitioner,

respondent operates in the personal-aviation

industry, offering charter and other “aircraft

management and acquisition services.” CA9.Dkt.349.at.124. After uncovering respondent’s infringing use

of its mark, petitioner sent multiple cease-and-desist

letters.

See CA9.Dkt.34-9.at.134.

Respondent

answered by filing suit.

C. Procedural Background

1. Respondent filed a declaratory judgment action

in the U.S. District Court for the District of Nevada,

seeking a declaration of non-infringement. Petitioner

answered with a counter-claim for trademark

infringement under §1114 of the Lanham Act.

CA9.Dkt.34-10.at.47.

As remedies, petitioner

requested the respondent’s profits and injunctive

relief.

CA9.Dkt.34-10.at.49-51.

Both parties

demanded a jury trial.

CA9.Dkt.34-10.at.51;

CA9.Dkt.34-10.at.104.

Shortly before the jury trial was scheduled to

begin, respondent withdrew its own jury demand and

moved to strike petitioner’s. See CA9.Dkt.34-8.at.101.

Respondent argued that petitioner’s request for the

monetary remedy of profits is equitable and carries no

jury-trial right. CA9.Dkt.34-8.at.101-07. The district

court agreed and struck petitioner’s jury demand.

App.23.

Its reasoning for that decision was terse. The

district court, relying on Ninth Circuit precedent,

concluded that “the Seventh Amendment does not

afford the right to a jury calculation of profits because

disgorgement is an equitable remedy, and the specific

issues of profit determination cannot be said to be

traditionally tried … to a jury.” App.21. Although

petitioner requested a jury trial on “all issues so

triable,” CA9.Dkt.34-10.at.51 (emphasis added)—

including liability—the court’s reasoning focused on

the profits remedy, see App.21.

The trademark claims proceeded to a four-day

bench trial, which culminated in the district court

entering judgment for the respondent. App.26. After

judgment, petitioner moved for a new trial on the basis

that the district court wrongly decided disputed

factual questions without a jury. The court denied

that motion, App.61, and petitioner timely appealed.

2. The Ninth Circuit affirmed. App.2. The court

devoted a single paragraph to the Seventh

Amendment question, relying on an earlier circuit

decision, Fifty-Six Hope Road Music, Ltd. v.

A.V.E.L.A., Inc., 778 F.3d 1059 (9th Cir. 2015), holding

“that the Seventh Amendment’s jury-trial right for

‘suits at common law’ does not apply to trademark

claims seeking disgorgement of profits because those

claims are equitable, not legal, in nature.” App.2. The

panel believed that Fifty-Six “squarely govern[ed] this

trademark case”—even though in Fifty-Six (unlike

here) the liability question was tried to a jury, see 778

F.3d at 1074—so it upheld the district court’s order

striking petitioner’s jury demand. App.3.

The full court denied rehearing en banc. App.4-5.

REASONS FOR GRANTING THE PETITION

This trademark-infringement action should have

been tried before a jury. That much should have been

clear in light of Dairy Queen—and, for decades, it

would have been. Court after court in the 1960s, ’70s,

and ’80s read Dairy Queen to mean what it says and

to hold that infringement claims seeking monetary

relief are legal for Seventh Amendment purposes, no

matter what form of monetary relief was sought.

Indeed, the Ninth Circuit itself held as much in a

this Court has reaffirmed the Seventh Amendment’s

importance, circuits have departed from Dairy Queen

and limited the jury-trial right to trademark plaintiffs

seeking to recover their own damages, rather than the

infringer’s profits. The decision below is emblematic

of that new, rights-denying trend, and it entrenches a

deep division of authority across circuits and closely

related statutory schemes.

The approach taken by the Ninth Circuit (and

three other circuits) defies not only Dairy Queen but

history and first principles. Trademark-infringement

actions were actions at law at the Framing, and the

notion that a litigant would lose that jury-trial right

based on its choice of monetary remedy makes no

sense. No one doubts that a victim of trademark

infringement who seeks to recover its own damages

has a right to a jury trial on both liability and

damages. And no one doubts that, in cases involving

egregious infringement, the infringer’s illicit profits

may outstrip the plaintiffs’ out-of-pocket damages. In

other infringement cases, profits may simply be easier

to prove than damages. In either event, it makes little

sense to force the victim to settle for a damages

remedy in order to preserve its constitutional right to

a jury trial.

Recent decisions of this Court have reaffirmed the

critical importance of safeguarding the Seventh

Amendment right. Recent decisions of the courts of

appeals have gone in the opposite direction and cut

back on Seventh Amendment rights and eroded the

clear import of this Court’s decision in Dairy Queen.

The decision below exemplifies that misguided trend

and turns vertical stare decisis upside down. This

petition provides the Court with a clean vehicle for

resolving an entrenched split and reaffirming the

enduring role of the jury in resolving legal disputes.

The Court should grant certiorari.

The Decision Below Conflicts With This

Court’s Decision In Dairy Queen And

Entrenches An Acknowledged Circuit Split.

The decision below contradicts this Court’s

decision in Dairy Queen, which is reason enough for

this Court to grant review. See Sup. Ct. R. 10(a). But

the decision below is, unfortunately, not an isolated

anomaly. There is an acknowledged “split in the

courts concerning the holding in Dairy Queen”—

specifically, whether Dairy Queen meant it when it

explicitly held that the owner of a trademark is

entitled to a jury trial on an infringement claim

seeking “an accounting.” Mark A. Thurmon, Ending

the Seventh Amendment Confusion: A Critical

Analysis of the Right to a Jury in Trademark Cases, 11

Tex. Intell. Prop. L.J. 1, 21 n.76 (2002); see Dairy

Queen, 369 U.S. at 475-79. This Court should grant

certiorari to resolve that split and restore the Seventh

Amendment’s proper role in trademark-infringement

suits (and beyond).

A. This Court Decides Dairy Queen.

This Court held in Dairy Queen that the Seventh

Amendment provides a right to a jury trial in

trademark-infringement actions seeking “accounting”

as the remedy no less than in trademark-infringement

actions seeking “damages.” 369 U.S. at 477-78. The

decision below squarely conflicts with that decision.

1. The dispute in Dairy Queen centered on

whether the defendant had unlawfully used the “Dairy

Queen” trademark. Id. at 473. The parties entered a

licensing agreement allowing the defendant to use

that mark, id., but the defendant defaulted on

payments, and the plaintiff trademark owner argued

that breach rendered the defendant’s continued use of

the mark infringement, id. at 474-75. To remedy those

violations, the plaintiff sought “an accounting of

profits illegally obtained by the defendant,” as well as

an injunction, McCullough v. Dairy Queen, 194

F.Supp. 686, 687 (E.D. Pa. 1961), and demanded a jury

trial, see Dairy Queen, 369 U.S. at 470. The district

court struck the jury-trial demand because it believed

the case raised primarily equitable issues, and the

Third Circuit declined to issue mandamus. Id.

This Court granted review despite the mandamus

posture and reversed, holding that the complaint

sought a legal remedy for the invasion of a legal right,

triggering the Seventh Amendment. To begin, the

Court noted that the complaint was unclear about

whether the relief sought was for damages from

breach of contract or for trademark infringement. Id.

at 476-77. But the Court found it “unnecessary to

resolve th[at] ambiguity” because, either way, the

claim was “wholly legal in its nature.” Id. at 477. If

the complaint brought an action for damages based on

breach of contract, “it would be difficult to conceive of

an action of a more traditionally legal character.” Id.

“And as an action for damages based upon a charge of

trademark infringement, it would be no less subject to

cognizance by a court of law.” Id. Thus, the Seventh

Amendment jury-trial right attached.1

1 The Court held that the Seventh Amendment applied for the

additional and alternative reason that both “the legal and

equitable claims”—i.e., the claim for monetary relief and the

claim for an injunction—“depended on ‘common’ ‘factual issues.’”

As is true in this case, the party seeking a bench

trial in Dairy Queen tried to circumvent the Seventh

Amendment by focusing on the complaint’s request for

an “accounting” rather than “damages.” Id. The Court

brushed that aside as irrelevant wordplay. See id. at

477-78. The plaintiff in Dairy Queen was not bringing

“a suit for an equitable accounting” because the

plaintiff lacked the essential prerequisite for such a

purely equitable suit: “the absence of an adequate

remedy at law.” Id. at 478 (emphasis added). Instead,

the plaintiff had an adequate legal remedy without

regard to whether the claim was for a contractual

breach or trademark infringement or sought the

infringer’s profits or the plaintiff’s own out-of-pocket

damages. See id. Whatever recovery theory the

complaint advanced—whether “breach of contract,”

“trademark infringement,” or “both”—the plaintiff’s

request for money damages via an accounting sought

a “legal remedy” for the invasion of a legal right, viz.

trademark protection. Id. at 479. That the precise

“measure of damages may necessitate a look into

[defendant’s] business records,” as factfinders usually

do when calculating the profits remedy, did not

transform the legal action into an equitable one. Id.

2. The decision below simply cannot be reconciled

with Dairy Queen. In both cases, the plaintiff sued for

trademark infringement. While the Dairy Queen

plaintiff also brought a breach-of-contract claim, the

Court could not have been clearer that its decision did

not turn on that factor. And in both cases, the plaintiff

sought to recover the defendant’s illicit profits as its

Perttu v. Richards, --- S.Ct. ----, 2025 WL 1698783, at *6 (U.S.

June 18, 2025) (quoting Dairy Queen, 369 U.S. at 479).

measure of monetary relief. That is the factor that the

lower courts in Dairy Queen and in this case seized

upon to deny the plaintiff its jury-trial right. That was

mandamusable error in Dairy Queen, and the error

here is even clearer given that Dairy Queen is on the

books. That alone would justify this Court’s review,

but, unfortunately, the decision below does not stand

alone, and is part of a much deeper conflict.

B. Post-Dairy Queen, A Consensus Emerges

That Infingement Claims Seeking

Profits May Be Tried Before a Jury.

The lesson of Dairy Queen—a decision issued

unanimously and in a mandamus posture—seemed

pellucidly clear. Unsurprisingly, “[t]he majority of

courts” post-Dairy Queen “held that an accounting for

defendant’s profits in a trademark case is a legal

remedy” that triggers the jury right “unless the issues

are extraordinarily complex.” Thurmon, supra, at 81.

Following Dairy Queen’s clear marching orders,

district courts nationwide held that Lanham Act

claims trigger the jury-trial right even when the relief

sought is “profits” rather than “damages.” See, e.g.,

Black & Decker Corp. v. Positec USA Inc., 118

F.Supp.3d 1056 (N.D. Ill. 2015); adidas-Am., Inc. v.

Payless Shoesource, Inc., 546 F.Supp.2d 1029, 1086-88

(D. Or. 2008); Alcan Int’l Ltd. v. S.A. Day Mfg. Co., 179

F.R.D. 398, 400-02 (W.D.N.Y. 1998); Daisy Grp., Ltd.

v. Newport News, Inc., 999 F.Supp. 548, 549-52

(S.D.N.Y. 1998); Ideal World Mktg. v. Duracell, Inc.,

997 F.Supp. 334, 337-40 (E.D.N.Y. 1998); Gucci Am.,

Inc. v. Accents, 994 F.Supp. 538, 539-40 (S.D.N.Y.

1998); NordicTrack, Inc. v. Consumer Direct, Inc., 158

F.R.D. 415, 422-23 (D. Minn. 1994); Hunting World

Inc. v. Reboans Inc., 1994 WL 763408, at *1-3 (N.D.

Cal. Oct. 26, 1994); Grove Fresh Distribs., Inc. v. New

England Apple Prods. Co., 1991 WL 3928, at *3 (N.D.

Ill. Jan. 11, 1991); Oxford Indus., Inc. v. Hartmarx

Corp., 1990 WL 65792, at *2-8 (N.D. Ill. May 2, 1990);

L.L. Bean, Inc. v. Drake Publishers, Inc., 629 F.Supp.

644, 645-46 (D. Me. 1986); Holiday Inns of Am., Inc. v.

Lussi, 42 F.R.D. 27, 30-32 (N.D.N.Y. 1967). These

opinions treat Dairy Queen as “controlling” the

Seventh Amendment question. E.g., Alcan Int’l, 179

F.R.D. at 401; Daisy Grp., 999 F.Supp. at 551; see also

NordicTrack, 158 F.R.D. at 422.

The issue seemed so open-and-shut that Seventh

Amendment disputes in the trademark context rarely

found their way to the circuit courts. That is no

surprise given that Dairy Queen not only upheld a

jury-trial right in a case seeking an accounting, but

treated the failure to honor the plaintiff’s jury-trial

right in such a case as mandamusable error. See 369

U.S. at 470. Thus, even though the Sixth Circuit in

Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362 (6th

Cir. 1985), (erroneously) perceived a “pervasive equity

background” behind suits to recover monetary relief

for trademark infringement, it recognized that, under

Dairy Queen, “the damages or accounting aspect of

trademark infringement actions are considered legal

actions for purposes of the jury trial clause of the

Seventh Amendment.” Id. at 364. The Tandy court

thus (correctly) viewed Dairy Queen as settling the

matter.

Courts from coast to coast thus agreed that it was

settled that trademark-infringement claims trigger

the Seventh Amendment right even when an

“accounting” was sought rather than “damages.”

Scholars recognized the obvious import of Dairy Queen

as well. See, e.g., James M. Koelemay, Jr., A Practical

Guide to Monetary Relief in Trademark Infringement

Cases, 85 Trademark Rep. 263, 307 (1995); 9 Charles

Alan Wright & Arthur R. Miller, Federal Practice and

Procedure §2312 (4th ed. 2025) (“Wright & Miller”);

Dan B. Dobbs, Law of Remedies: Damages—Equity—

Restitution §2.6(3) (2d ed. 1993).

The real

battleground instead focused on whether Dairy

Queen’s reasoning applied to the other federal

intellectual-property statutes, which like the Lanham

Act give infringement victims a menu of monetary

remedies to fully vindicate their rights.

Shortly after Dairy Queen, three circuits relied on

that decision to uphold the Seventh Amendment right

in patent- and copyright-infringement suits seeking

profits. The first was Swofford v. B & W, Inc., 336 F.2d

406 (5th Cir. 1964), a patent suit. The plaintiffs

“requested a preliminary and final injunction against

infringement by the defendant, an accounting for

profits, damages,” and “costs.” Id. at 408. The district

court held that the plaintiffs were entitled to a jury

trial. Id. The Fifth Circuit affirmed. As the court

explained, the notion that a request for an

“accounting” put a case into the equity courts got

history all wrong. The pre-merger “rule allowing an

accounting for profits” in courts of equity “was

adopted, not for the purpose of acquiring jurisdiction,

but, for the purpose of awarding a substitute for

damages at the option of the complainant in cases

where, having jurisdiction to grant equitable relief,

the court was not permitted by the principles and

practice in equity to award damages.” Id. at 411. That

was clear to the Fifth Circuit not only from history,

but from Dairy Queen, which the Fifth Circuit read as

“holding” that “a request for accounting” in the

trademark context presented a “legal issue” that

triggered the jury-trial right. Id. at 410 & n.7.

The Third Circuit—having been reversed in Dairy

Queen—similarly got the message of that decision loud

and clear and also extended it into the patent context

in Kennedy v. Lakso Co., 414 F.2d 1249 (3d Cir. 1969).

The plaintiffs in Kennedy brought a patentinfringement suit seeking an injunction, an

accounting, and damages. Id. at 1250-51. The district

court struck “the plaintiffs’ demand for [a] jury trial.”

Id. at 1251. The Third Circuit, declining to repeat its

error in Dairy Queen, reversed. Just like the Fifth

Circuit in Swofford, the Third Circuit acknowledged

that “equity traditionally has had jurisdiction in

actions for an accounting,” but emphasized that “it has

always been recognized that there may be a suit for

accounting at law.” Id. at 1253. “The claim for an

accounting, therefore, does not … destroy the right to

a jury trial ….” Id. at 1253-54; see also id. at 1254 n.16

(discussing Dairy Queen, 369 U.S. at 477-78). No

matter the remedy, “the underlying issue” in the

action “remains essentially the same—infringement.”

Id. at 1253. And on that issue, the Third Circuit

explained, Dairy Queen made clear that the right to a

jury trial could not be frustrated simply because the

plaintiff requested remedies that might also be

available in equity, such as an injunction or profits.

See id. at 1252-54 & n.16; see Dairy Queen, 369 U.S.

at 478-79.

Finally (and ironically in light of the decision

below), the Ninth Circuit held the same in the

Krofft Television Productions, Inc. v. McDonald’s

Corp., 562 F.2d 1157 (9th Cir. 1977), overruled on

other grounds by Skidmore v. Led Zeppelin, 952 F.3d

1051 (9th Cir. 2020) (en banc). On “[t]he issue

whether an accounting of profits in an infringement

action is legal or equitable,” the Ninth Circuit

“agree[d]” with the Fifth Circuit in “Swofford,” which

“held that Dairy Queen controlled,” and thus held the

plaintiffs “had a right to a jury trial” on their claim for

“profits.” Id. at 1175.2

C. Multiple Circuits Split From That

Consensus and Deny the Jury Right.

Within the past decade, as lower-court memories

of Dairy Queen have apparently begun to fade, courts

of appeals have started to feel themselves free to

consider the issue de novo and to split from that

earlier consensus. In a sharp break from the above

“majority” view, four circuits now hold that litigants

are not entitled to have a jury decide infringement

actions seeking profits. Thurmon, supra, at 81.

1. The Ninth Circuit did so in Fifty-Six Hope Road

Music v. A.V.E.L.A., Inc., 778 F.3d 1059. The plaintiff

sued for trademark infringement under the Lanham

Act and sought profits under §1117. “A jury” decided

infringement, but “the trial judge” ruled that

determining “profits” was an issue for it, not the jury,

2 That said, because the record made clear that “the parties did

not intend the jury to consider profits,” the court affirmed. Sid

& Marty, 562 F.2d at 1175.

to resolve. Id. at 1074. Breaking from its earlier

precedent in Sid & Marty, the Ninth Circuit affirmed,

holding that “the determination of profits under” the

Lanham Act need not go to a jury. Id. at 1076; see JL

Beverage Co., LLC v. Jim Beam Brands Co., 815

F.App’x 110, 114 (9th Cir. 2020) (Friedland, J.,

concurring) (“highlight[ing] the tension between FiftySix … and Sid & Marty”). The court reached that

conclusion because it viewed a claim for profits to be

“equitable, not legal.” Fifty-Six, 778 F.3d at 1075. In

so holding, the court brushed aside Dairy Queen,

reading it as involving a claim for damages rather

than one for profits. Id. But see Dairy Queen, 369 U.S.

at 475; 194 F.Supp. at 687 (Dairy Queen district court

noting that the complaint sought “an accounting of

profits illegally obtained by the defendant”).

The Eleventh Circuit soon followed suit in Hard

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

1343 (11th Cir. 2019). It reasoned that “[t]he remedy

of an accounting and disgorgement of profits for

trademark infringement is equitable in nature,” and

thus held that “a plaintiff seeking the defendant’s

profits in lieu of actual damages is not entitled to a

jury trial.” Id. at 1348. The Eleventh Circuit “[did]

not read Dairy Queen as holding that the accounting

and disgorgement of profits was a legal remedy, since

that isn’t what the plaintiff had sought.” Id. at 1358.

It did not mention that the district court in Dairy

Queen explicitly noted that the plaintiff sought “an

accounting of profits,” or that this Court explicitly held

that there would be a jury trial right no matter

whether the complaint asserted damages for breach of

contract or an accounting of profits for trademark

infringement. See pp.14-15, supra.

Most recently, the Eighth Circuit agreed that

profits claims under the Lanham Act must be decided

by courts rather than juries. See Nat’l Presto Indus.,

Inc. v. U.S. Merchs. Fin. Grp., Inc., 121 F.4th 671, 67780 (8th Cir. 2024). Its analysis largely tracks the

Eleventh Circuit’s reasoning in Hard Candy,

including its dismissive treatment of Dairy Queen.

See id.

Finally, a Sixth Circuit panel held that the

defendant had no right to a jury on the claims seeking

an injunction and profits under the Lanham Act.

Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 1248 (6th Cir.

1991). It did so, however, in a conclusory manner

without mentioning either Dairy Queen or its earlier

decision in Tandy, which considered an accounting for

profits a “legal action for purposes of the jury trial

clause of the Seventh Amendment.” Tandy, 769 F.2d

at 364; see p.17, supra.

2. These decisions have created a split of authority

that is both intractable and inexplicable in light of

Dairy Queen. In the majority of circuits, district courts

continue to honor the jury-trial rights of victims of

trademark infringement whether they seek monetary

relief in the form of damages or profits (or both). While

not all those circuits have addressed the issue at the

appellate level, that simply reflects the clarity of Dairy

Queen and courts’ understandable interest in avoiding

the repetition of mandamusable error. And, in at least

two circuits—the Third and Fifth—the rule of Dairy

Queen has been extended beyond the trademark

context. The Eleventh and Eighth Circuits, by

contrast, refuse to apply Dairy Queen even in the

trademark context. And the Ninth and Sixth Circuits

are in a category of their own. The Ninth Circuit

paradoxically applies Dairy Queen in the copyright

context, but not in the trademark context. And the

Sixth Circuit is on both sides of the split—having

treated Dairy Queen as controlling in Tandy only to

come out the other way without mentioning Tandy or

Dairy Queen in Ferrari. In short, the decision below

conflicts with this Court’s decision in Dairy Queen,

and the lower courts are hopelessly in conflict with

each other. These conflicts cry out for this Court’s

review.

II. The Decision Below Is Wrong.

Even if considered on a clean slate, the decision

below would be egregiously wrong. Under the modern

framework for deciding whether the Seventh

Amendment right attaches to statutory claims, what

this Court already held in Dairy Queen is exactly

right: Actions for trademark infringement plainly

trigger Seventh Amendment protections even when

the plaintiff seeks the infringer’s profits as a remedy.

A. An Infringement Action Under

Lanham Act Asserts a Legal Claim.

the

Infringement actions under the Lanham Act

resemble legal claims tried before juries in 18thcentury England. Because those claims have a “close

analo[g]” at common law that did not sound in equity,

the jury right applies. Feltner, 523 U.S. at 348.

1. Before the Seventh Amendment, the common

law granted trademark owners actions on the case for

infringement that were tried in courts of law.

That common-law tradition traces back at least to

1584 with Sandforth’s Case. There, a clothier alleged

that he had spent over a decade manufacturing highquality cloth to sell in England and overseas. See

Keith M. Stolte, How Early Did Anglo-American

Trademark Law Begin?, 88 Trademark Rep. 564, 585

(1998). He marked those cloths with the letters “J.G.”

and a distinctive mark called a “tucker’s handle.” Id.

Thanks to his trusted reputation, the clothier

“obtained and acquired much gain and profit.” Id. at

586.

That commercial success got the attention of

competing merchants. As alleged by the clothier, one

merchant schemed “to hinder the [clothier] in selling

such cloths of his and to take away and worsen the

opinion and esteem which the aforesaid merchants

and subjects had concerning the cloths of the same

[clothier].” Id. The merchant executed that scheme

by using the letters “J.G.” and the distinctive “tucker’s

handle” on cloths that were “ill, insufficient and

unmerchantable.” Id. The trademark piracy had

devastating effect: After customers bought the knockoff goods bearing the clothier’s mark, they “reversed

the opinion and esteem which they had previously had

of the same cloths but also gave notice to many other

merchants and subjects of the deceitful and

insufficient making of the … cloths.” Id. at 586-87.

The clothier had a viable action at law with

“remarkable parallels to a twentieth-century case of

intentional trademark infringement.” 1 Gilson on

Trademarks §1.06[2] (2018). As one report from the

trial recounted, the aggrieved clothier “brought an

action on the case” against the infringer. Stolte,

supra, at 588 n.117. The court agreed “that an action

on the case lies by the custom of London for

counterfeiting another’s mark.” Id. at 590 n.130. A

later opinion, when discussing the case, agreed “that

the action [did] well lie” against the defendant that

had “used the [clothier’s] mark to his ill-made cloth on

purpose to deceive him.” Southern v. How, 79 Eng.

Rep. 1243, 1244 (1618).

Legislative protections for marks soon followed.

Parliament enacted a law in 1726 that made it “lawful

to and for every trader, dealer and weaver of linen

manufacture, to weave his name, or fix some known

mark, in any piece of linen manufacture by him made.”

13 Geo. I, c. 26, §XXX (1726). And if someone sold a

product under another person’s mark, they could be

held liable in courts of law for fraud. See id.; Vidal,

602 U.S. at 296 (citing this law).

By 1783, the law was sufficiently clear that Lord

Mansfield could pronounce that, “if the defendant had

sold a medicine of his own under the plaintiff’s name

or mark, that would be a fraud for which an action

would lie.” Singleton v. Bolton, 99 Eng. Rep. 661, 661

(1783); see Vidal, 602 U.S. at 296; see also Lionel

Bently, The First Trademark Case at Common Law?,

47 U.C. Davis L. Rev. 969, 983-84 (2014). That view

was corroborated by 18th century practice guides,

which instructed that an action at law “lies against a

tradesman for putting another’s mark to his own

commodities.” 1 John Mallory, Modern Entries, in

English *418 (4th ed. 1791).

Building on that tradition, American common-law

courts likewise permitted actions for trademark

infringement in the nation’s formative years. See

Tam, 582 U.S. at 224 (collecting authorities).

Although trademark law in the United States

“developed slowly,” Vidal, 602 U.S. 296, it was

nonetheless understood from the Founding that a

trademark confers a “property right for the violation

of which damages may be recovered in an action at

law,” In re Trade-Mark Cases, 100 U.S. 82, 92 (1879).

The Lanham Act transferred that old common-law soil

into its new statutory regime, “codify[ing] and

unify[ing] the common law of unfair competition and

trademark protection.” Inwood Labs., Inc. v. Ives

Labs., Inc., 456 U.S. 844, 861 n.2 (1982) (White, J.,

concurring in the result).

Accordingly, the essence of an infringement action

under the Lanham Act matches the English commonlaw actions available for trademark infringement. At

common law, “the proper … action for trade-mark

infringement [was] an action in deceit.” Frank I.

Schechter, The Historical Foundations of the Law

Relating to Trade-Marks 143 (1925); see, e.g., 1 John

Comyns, A Digest of the Laws of England 166 (1780).

The deceit perpetrated by the defendant was

misleading the public into thinking that his goods

belonged to the plaintiff. See Frank I. Schechter, The

Rational Basis of Trademark Protection, 60

Trademark Rep. 334, 338 (1970). Similarly, the

Lanham Act “creates a federal cause of action for

trademark infringement” that imposes liability when

the defendant’s use of the plaintiff’s mark “‘is likely to

cause confusion, or to cause mistake, or to deceive’

with regards to the plaintiff’s mark.” B&B Hardware,

575 U.S. at 144. In both actions, the key to liability is

the defendant’s deceptive use of the plaintiff’s mark.

And both actions allow the aggrieved mark owner to

bring a suit at law to hold the defendant responsible

for infringement.

2. Chancery courts, by contrast, at first refused to

provide relief in trademark-infringement actions.

Equity did not intervene in such disputes until after

the Seventh Amendment’s ratification in 1791.

Blanchard v. Hill, 26 Eng. Rep. 692 (1749),

exemplifies equity’s initial hesitation to wade into

trademark disputes. There, a plaintiff sought an

injunction to restrain a competitor from using his

proprietary mark on playing cards. Lord Hardwicke

refused to issue an injunction, explaining: “Every

particular trader has some particular mark or stamp;

but I do not know any instance of granting an

injunction here, to restrain one trader from using the

same mark with another; and I think it would be of

mischievous consequence to do it.” Id. at 693. The

chancery court then encouraged the plaintiff to pursue

the legal remedies available at common law. See id.

Tellingly, it was not until decades after 1791 that

equity intervened in trademark actions. Arguably the

first case of a chancellor issuing in injunction in

trademark dates to 1816. See Grafton D. Cushing, On

Certain Cases Analogous to Trade-Marks, 4 Harv. L.

Rev. 321, 321 (1891) (Day v. Day). But many scholars

believe that practice did not begin until 1838. See, e.g.,

Gary M. Ropski, The Federal Trademark Jury Trial

Right—Awakening of a Dormant Constitutional Right,

70 Trademark Rep. 177, 181 (1980); Sidney A.

Diamond, The Historical Development of Trademarks,

65 Trademark Rep. 265, 288 (1975).

History thus does not establish that actions

vindicating trademark rights “were typically or indeed

ever entertained by English courts of equity when the

Seventh Amendment was adopted.” Granfinanciera,

492 U.S. at 44 (emphasis added). Moreover, that

chancery courts sometimes intervened postratification obviously does not prove that a trademarkinfringement action involves “equitable rights alone.”

See id. at 43-44. The common-law history described

above puts that notion conclusively to rest.

B. The Profits Remedy Under the Lanham

Act Seeks Legal Relief.

The remedy that petitioner seeks should not be

enough to deprive it of a Seventh Amendment right to

have trademark-infringement liability determined by

a jury, but in reality the remedy sought here—a fixedsum award of money damages in the form of

respondent’s profits—actually bolsters the conclusion

that the right at issue is legal rather than equitable.

That much is clear from this Court’s precedents, as

well as the history and purposes of the profits remedy.

1. As explained above, Dairy Queen resolved this

issue over 60 years ago. The defendant in Dairy Queen

tried to evade a jury by focusing on the complaint’s

request for an “accounting” rather than “damages.”

369 U.S. at 477. But as the Court made clear, the

plaintiff’s request for money relief via an accounting

sought a “legal remedy.” Id. at 478-79. The fact that

the “measure of damages may necessitate a look into

[defendant’s] business records,” as typically happens

when determining a defendant’s profits, did not

transform that “legal remedy” into an equitable one.

Id. at 479; see p.15, supra.

2. Nothing has changed since Dairy Queen. To be

sure, this Court has at times described “an accounting

for profits” as “a form of equitable restitution.” GreatWest Life & Annuity Ins. Co. v. Knudson, 534 U.S. 204,

214 n.2 (2002); see also Chauffeurs, Teamsters &

Helpers v. Terry, 494 U.S. 558, 570 (1990); Tull, 481

U.S. at 424. But recent scholarship confirms that, at

least in this context, the profits remedy was always a

legal remedy, not an equitable one—and thus that

Dairy Queen was right.

The “common law action of account was created in

the twelfth or thirteenth century in response to the

need for a mechanism to allow recovery” of money in

another’s possession. Joel Eichengrun, Remedying the

Remedy of Accounting, 60 Ind. L.J. 463, 464 (1984). It

arose because feudal landlords needed a way to

recover rent from agents that effectively managed the

property yet refused to remit the profits. See id. So

the common law recognized “an action whose sole

object was the enforcement of obligations to account.”

C.C. Langdell, A Brief Survey of Equity Jurisdiction

83 (2d ed. 1908). The remedy in such actions “was a

money judgment for the income or profit earned from

plaintiff’s property.” Eichengrun, supra, at 464.

Over time, the accounting remedy expanded to

“other situations where an owner of real or personal

property delivered it to another to be used or employed

for the owner’s benefit.” Id. at 466. But the “obligation

to render an account” was nonetheless “created by

law,” Langdell, supra, at 75, and enforced in commonlaw courts, see id. at 83; Wright & Miller, supra, §2310

(“Historically, an action for an accounting was

available in the common law courts from the earliest

times.”); Kennedy, 414 F.2d at 1253 (“it has always

been recognized that there may be a suit for

accounting at law”). Indeed, the common law “has

always treated an action solely for … profits as an

action in the ‘law’ courts with all factual issues being

determined by a jury.” Bruce S. Sperling, The Right

to Jury Trial in a Federal Action for Trademark

Infringement or Unfair Competition, 62 Trademark

Rep. 58, 59 (1972). That explains why this Court, in

the related context of copyright infringement, has

distinguished the “equitable” remedy of “an

injunction” from the “legal remedies” of “actual

damages and … profits of the infringer.” Petrella v.

Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 663 (2014).

Although chancery courts did provide relief in

actions for accounting, that does not make the remedy

requested here equitable. Equity would not hear a

claim “for a naked account of profits and damages

against an infringer” because “such relief ordinarily is

incidental to some other equity.” Root v. Ry. Co., 105

U.S. 189, 215-16 (1881) (patent dispute). For a

chancery court to order an accounting for profits in

trademark disputes, “the jurisdiction must be rested

upon some other equitable ground”—usually an

injunction. Hamilton-Brown Shoe Co. v. Wolf Bros. &

Co., 240 U.S. 251, 259 (1916). Even then, the court

exercised jurisdiction over an accounting claim only as

a matter of convenience to “avoid multiplicity of suits

and not because the jury lacked competence” to decide

the issues raised by the profits remedy. Swofford, 336

F.2d at 411. But as this Court has made clear, that

rationale no longer holds water in the post-merger era.

See p.32, infra; see also p.14 n.1, supra.

C. The

Decision

Below

Egregiously

Misapplied the Seventh Amendment.

The Ninth Circuit’s contrary holding that

petitioner was not entitled to a jury trial on any

factual issues—neither for liability nor the remedy—

defies historical tradition and this Court’s precedent.

The decision below never undertook the historical

analysis the Seventh Amendment requires. Instead,

it turned to another Ninth Circuit decision, Fifty-Six,

which it believed settled the issue. App.2. That

decision involved a jury trial on the infringement

issue, 778 F.3d at 1075-76, and falls short at each step

of the constitutional analysis.

The Ninth Circuit’s holding that the profits

remedy should be decided by the judge rests on

misconceptions about the relevant history. The court

correctly acknowledged that “[l]itigants filed

trademark-like actions in ‘deceit’ prior to 1791,” but it

then dismissed those actions as rare. Id. at 1075.

That improperly discounts the legal significance of

Sandforth’s Case (1584) and Singleton (1783). See

pp.23-25, supra. Regardless, relative scarcity is beside

the point; “rare” or not, the common law

unquestionably gave trademark owners a cause of

action to remedy infringement.

As for the profits remedy, the court hastily

concluded that it was equitable in nature without

meaningfully considering that remedy’s history. An

account for profits derived from the common law. See

pp.28-30, supra. And in this context, it would not be

issued absent some independent basis on which a

court of equity could rest its jurisdiction. The court

breezed by those historical facts and instead focused

on how (it thought) “current law” treats “actions for

disgorgement of improper profits [as] equitable.”

Fifty-Six, 778 F.3d at 1075. Whether true or not, the

appropriate Seventh Amendment scrutiny considers

the remedy from a historical perspective. So the claim

that current law considers profits equitable (even if

true) does not move the needle on the constitutional

question.

Furthermore, the Ninth Circuit’s unthinking

extension of Fifty-Six in the decision below—from a

holding that there was no right to have a jury fix the

amount of profits after the jury decided infringement,

to holding here that there was no right to have a jury

decide infringement at all—flouts the long-settled rule

that “factual disputes regarding the merits of a legal

claim go to the jury, even if that means a judge must

let a jury decide questions he could ordinarily decide

on his own.” Perttu v. Richards, --- S.Ct. ----, 2025 WL

1698783, at *5 (U.S. June 18, 2025); see Beacon

Theatres, Inc. v. Westover, 359 U.S. 500, 510-11 (1959).

Under that rule, a jury must be available to decide

infringement even assuming (as Fifty-Six incorrectly

held) that the question of profits is equitable and thus

beyond the jury’s ken.

III. The Question Presented Is Important, And

This Case Is An Ideal Vehicle To Resolve It.

This case is an ideal vehicle for the Court to settle

an important constitutional question that shapes how

cases are litigated under the Lanham Act specifically,

and intellectual-property statutes more generally.

The importance of the Seventh Amendment jurytrial right needs little elaboration. It “is ‘of such

importance and occupies so firm a place in our history

and jurisprudence that any seeming curtailment of

the right’ has always been and ‘should be scrutinized

with the utmost care.’” Jarkesy, 603 U.S. at 121

(quoting Dimick v. Schiedt, 293 U.S. 474, 486 (1935)).

The erosion of the constitutional right to a jury is

especially pernicious in the trademark context.

Infringement actions often turn on factual disputes

about whether consumers are being misled about the

source of a product. See Jack Daniel’s Props., 599 U.S.

at 147. Questions about how consumers perceive

marks “falls comfortably within the ken of a jury.”

Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 422

(2015). Indeed, the Court has affirmed in this very

context that “the jury is generally the decisionmaker

that ought to provide the fact-intensive answer.” Id.

The importance of the issue is magnified by the

perverse incentives and cruel dilemmas created by the

decision below. In the Lanham Act, Congress made a

deliberate decision to give victims of infringement a

range of monetary remedies—their out-of-pocket

losses and/or recovery of the infringer’s illicit profits.

See 15 U.S.C. §1117(a). Congress gave victims the

same options in cases of copyright infringement. See

17 U.S.C. §504; p.7, supra. The reason for empowering

victims with this choice is obvious: The infringer does

not bear the cost of innovation and, especially in the

trademark context, often markets an inferior product

that is cheaper to produce. Thus, in many cases the

illicit profits of the infringer will outstrip the victim’s

damages from lost profits of lost sales of the superior

(and more-costly-to-produce) genuine article. In other

cases, the infringer’s profits may be easier to prove

than victim’s damages or can avoid adding insult to

injury by giving the copyist access to the victim’s

business records in discovery. For all those reasons,

Congress has given the victims of infringement the

choice of monetary remedies. No one doubts that a

victim that contents itself with a damages remedy is

entitled to a jury trial on both infringement and the

amount of monetary relief. But under the decision

below, the price of exercising the statutory remedy of

profits is to lose the constitutional entitlement to a

jury trial.

That defies common sense and

congressional design, and creates an unacceptable

dynamic that fully justifies this Court’s review.

Finally, this case presents the legal issue squarely

and cleanly. There is no dispute that profits were the

only monetary remedy petitioner sought. Both parties

initially requested a jury trial, only for respondent to

withdraw its own demand on the eve of jury trial and

move to strike petitioner’s demand. App.20. The case

has now been litigated to final judgment, and reversal

on the Seventh Amendment question would result in

a new trial, this time before a jury—a remedy that

mattered to the Framers and matters to petitioner’s

efforts to vindicate its trademark rights under the

Lanham Act.

CONCLUSION

For the foregoing reasons, this Court should grant

the petition for certiorari.

Respectfully submitted,

SCOTT BURNETT SMITH PAUL D. CLEMENT

HUNTER PEARCE

Counsel of Record

SCHYLER B. BURNEY

MATTHEW D. ROWEN

BRADLEY ARANT

PHILIP HAMMERSLEY

BOULT CUMMINGS CLEMENT & MURPHY, PLLC

LLP

706 Duke Street

200 Clinton Ave. W.

Alexandria, VA 22314

Suite 900

(202) 742-8900

Huntsville, AL 35801 paul.clement@clementmurphy.com

Counsel for Petitioner

June 27, 2025

APPENDIX

TABLE OF APPENDICES

Appendix A

Memorandum Opinion, United States

Court of Appeals for the Ninth Circuit,

Great Western Air, LLC v. Cirrus Design

Corp., No. 23-15157 (Dec. 17, 2024)............ App-1

Appendix B

Order, United States Court of Appeals for

the Ninth Circuit, Great Western Air, LLC

v. Cirrus Design Corp., No. 23-15157

(Jan. 30, 2025) ............................................. App-4

Appendix C

Excerpts of Transcript of Proceedings

Regarding Jury Demand, United States

District Court for the District of Nevada,

Great Western Air, LLC v. Cirrus Design

Corp., No. 16-cv-02656 (Sept. 9, 2022)........ App-6

Appendix D

Findings of Fact, Conclusions of Law,

and Judgment Following Bench Trial,

United States District Court for

the District of Nevada, Great Western

Air, LLC v. Cirrus Design Corp.,

No. 16-cv-02656 (Jan. 6, 2023) .................. App-25

Appendix E

Order, United States District Court

for the District of Nevada, Great Western

Air, LLC v. Cirrus Design Corp.,

No. 16-cv-02656 (Aug. 23, 2023) ............... App-60

Appendix F

Relevant Constitutional and Statutory

Provisions................................................... App-68

U.S. Const. amend. VII ...................... App-68

15 U.S.C. §1114 .................................. App-68

15 U.S.C. §1117 .................................. App-75

App-1

Appendix A

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

________________

No. 23-15157

________________

GREAT WESTERN AIR, LLC, dba CIRRUS AVIATION

SERVICES, LLC,

Plaintiff-counterdefendant-Appellee,

CIRRUS DESIGN CORPORATION,

Defendant-counterclaimant-Appellant.

________________

Argued and Submitted: Nov. 5, 2024

Filed: Dec. 17, 2024

________________

Before: Hawkins, Tashima, and Owens,

Circuit Judges.

________________

MEMORANDUM*

________________

Cirrus Design Corporation, d/b/a Cirrus Aircraft

(“Appellant”), appeals from the district court’s order

denying relief on Appellant’s claims of trademark

* This disposition is not appropriate for publication and is not

precedent except as provided by Ninth Circuit Rule 36-3.

App-2

infringement and unfair competition under the

Lanham Act, the Nevada Deceptive Trade Practices

Act, and common law. Appellant also appeals from the

district court’s decision granting Great Western Air’s

(“Appellee”) motion to strike Appellant’s demand for a

jury trial. As the parties are familiar with the facts,

we do not recount them here. We affirm.

1. The district court did not err in granting

Appellee’s motion to strike Appellant’s jury demand.

See Fed. R. Civ. P. 39(a)(2) (providing that a jury must

try all issues for which a jury demand has been made

unless “the court, on motion or on its own, finds that

on some or all of those issues there is no federal right

to a jury trial”). In Fifty-Six Hope Road Music, Ltd. v.

A.V.E.L.A., Inc., this court held that the Seventh

Amendment’s jury-trial right for “suits at common

law” does not apply to trademark claims seeking

disgorgement of profits because those claims are

equitable, not legal, in nature. 778 F.3d 1059, 1074-76

(9th Cir. 2015). Notwithstanding Sid & Marty Krofft

TV Products v. McDonald’s Corp., 562 F.2d 1157 (9th

Cir. 1977), overruled on other grounds by Skidmore v.

Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020), which

dealt with the jury-trial right in the copyright context,

Fifty-Six Hope Road squarely governs this trademark

case.

2. The district court did not err in concluding

that Appellant’s claims failed because Appellant did

not establish a likelihood of consumer confusion.

Appellant principally contends that the district court

improperly excluded certain types of confusion from

its analysis. See 15 U.S.C. § 1125(a)(1)(A) (providing

that the Lanham Act protects against “the use[] in

App-3

commerce” of any mark “likely to cause confusion, or

to cause mistake, or to deceive as to the affiliation,

connection, or association . . . or as to the origin,

sponsorship, or approval of [a person’s] goods,

services, or commercial activities by another person”).

The district court considered confusion as to (1) source

or origin; (2) sponsorship; (3) association; and

(4) affiliation. This is not a case where the district

court “assumed that likelihood of confusion exists only

when consumers are confused as to the source of a

product.” Brookfield Commc’ns, Inc. v. W. Coast Ent.

Corp., 174 F.3d 1036, 1057 (9th Cir. 1999). Rather, the

district court’s analysis accords with this court’s

understanding that the likelihood-of-confusion

inquiry is a flexible one. See Network Automation, Inc.

v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145,

1147, 1149 (9th Cir. 2011).

Nor does the district court’s well-reasoned

analysis of the likelihood-of-confusion factors or its

weighing of those factors evince clear error. See AMF,

Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.

1979) (laying out the trademark infringement factors);

Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1123

(9th Cir. 2014) (providing that this court reviews for

clear error a district court’s likelihood of confusion

determination). As the district court correctly

determined that Appellant failed to carry its burden of

proving its claims, the district court did not err in

denying Appellant injunctive relief.

AFFIRMED.

App-4

Appendix B

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

________________

No. 23-15157

________________

GREAT WESTERN AIR, LLC, dba CIRRUS AVIATION

SERVICES, LLC,

Plaintiff-counterdefendant-Appellee,

CIRRUS DESIGN CORPORATION,

Defendant-counterclaimant-Appellant.

________________

Filed: Jan. 30, 2025

________________

Before: Hawkins, Tashima, and Owens,

Circuit Judges.

________________

ORDER

________________

Judge Owens voted to deny the petition for

rehearing en banc, and Judges Hawkins and Tashima

so recommend. The full court has been advised of the

petition for rehearing en banc, and no judge has

requested a vote on whether to rehear the matter en

banc. Fed. R. App. P. 40.

App-5

The petition for rehearing en banc is therefore

DENIED.

App-6

Appendix C

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEVADA

________________

No. 16-cv-02656

________________

GREAT WESTERN AIR, LLC, dba CIRRUS AVIATION

SERVICES, LLC,

Plaintiff,

CIRRUS DESIGN CORPORATION,

Defendant.

________________

Hearing Date: Sept. 9, 2022

________________

EXCERPTS OF PROCEEDING TRANSCRIPT

RE: JURY DEMAND

________________

[31] [Court] circumstances in this case.

And so, I’m going to deny the plaintiff’s, Aviation’s

motion to supplement the pleadings found at No. 142.

And this transcript will be the record of the order.

All right. So that brings us to Cirrus Aviation’s

motion to strike its jury demand, seeking to proceed

before this Court to a bench trial, arguing that there

is no right to a jury trial under the (indiscernible) or

the Nevada Trade Practices Act, and that there’s no

App-7

right under common law or the Seventh Amendment

that would create a right to a jury trial.

And case law, as Cirrus Aviation argues, is such

that disgorgement of profits is essentially injunctive

relief along with the injunctive relief that’s requested.

And recovery of the fees and costs and all of that being

equitable in nature, there’s no basis for a jury trial.

Of course, Cirrus Aircraft opposes that and wants

its jury trial, says that they’ve been relying for better

part of four years or maybe more on a–on a jury trial,

and to pull that out from under them at this stage–

and those are my words, not yours–would be

prejudicial and that we should have a jury trial.

You know, Ms. Bevilacqua, are you going to argue

this one, as well, or Mr. Peek?

So–and you can either argue from table or come

up to the–but I wanted to direct my–my initial

questions to [32] you, because here’s what I’m

struggling with on this. The cases that you’ve cited

and that I–I’ve seen as it relates to the detrimental

reliance seem to all have an underlying basis for the

jury trial, meaning it was either statutorily created or

otherwise.

And so, you know, for instance, where, say, in the

cases of–and I’m just using this now by way of

example. I’m not citing a specific case.

But where the plaintiff requested the jury trial,

the defendant didn’t, then the plaintiff withdrew it,

and the defendant said, Well, I relied because there

was a basis for the jury trial, not just the reliance

itself, how do you–if you don’t have a basis here to

begin with, is–is your detrimental reliance enough?

App-8

Mr. Peek: Your Honor, yes, it is, because we

have–we have proceeded along, Your Honor, from the

beginning–and the–and the Court knows, as a–as a

trial lawyer itself–the benefits of a jury versus a bench

trial, importance of a jury versus a bench trial.

And we think that this should be a case tried to a

jury because, one, they asked for it from day one and

repeatedly throughout the course of the proceeding

asked for a jury. So we have been looking, Your Honor,

and thinking about and planning for a jury trial.

Now we have to have this little paradigm shift, if

[33] you will, Your Honor, not to–I’m not trying to

criticize the Court, but–but certainly, a jury brings

something different into the–into the mix, as the

Court knows.

So we have been preparing with proposed jury

instructions. We have been preparing with

instructions to the–the special questions to the jury.

We have been preparing, Your Honor, with motions in

limine. Typically, you wouldn’t file motions in limine

unless there were a jury.

So we have expended a significant amount of

resources, Your Honor. We have our jury instructions

prepared, ready to submit. We have our special verdict

forms prepared and ready to submit as per the Court’s

rule. That’s what we were going to talk about today.

So we have–we have, certainly, Your Honor,

detrimentally relied with the expenditure of

significant amounts of time and resources to prepare

for a jury trial.

And no less than, what, eight or more times

Cirrus Aviation has said jury trial, jury trial, jury

App-9

trial, demanded a jury trial. In the pretrial order last

year.

The Court: No question.

Mr. Peek: Yeah.

The Court: But I keep struggling with, is that

enough if there isn’t a–a legal basis for it?

And the fact that–and look, the other thing, I

know, is a trial order, and it just seems to be the way

it is. [34] And I’ve seen that on the bench is–and

probably because the workload and everything else.

You can only see so far in front of you. But you don’t

start really preparing heavily until couple, two, three

months out, if that.

And so, if–if that’s the case where the parties

prepare and then realize as they’re going through this,

Hey, wait a minute. Now that we’ve really looked at

this issue–I mean, that’s something you guys could

have done way back when, as well, saying, you know,

even though they asked for a jury trial, we don’t really

have a right. There isn’t a legal basis–

Mr. Peek: But–but even–Your Honor, as you

know, the rule provides, under 39, for consent. So we

looked at it as a consent to a jury trial under (c)(2),

under 39(c)(2). So, even though there may not have

been a right to a jury trial, you know, 39(c)(2) talks

about you may do it by consent. And so, that’s what we

are looking at. They consented to a jury.

to–

The Court: Well, so that would be similar, then,

Mr. Peek: I said (c)(2)–yeah, (c)(2).

App-10

The Court: So that would be similar to that

Ciminelli case where even though they didn’t have a

basis – but that–in that case, both parties are

agreeing, and now they’re not.

Mr. Peek: I know. But they–but they can

impliedly consent, Your Honor, and implicitly consent,

as we [35] amplify within our–in our briefing that

there are many courts that say you can imply the

consent. The consent does not have to be expressed.

The consent can be by actions.

And here, there’s quite a bit of action on the part

of the plaintiffs to ask for and seek a jury trial.

So when you say you start preparing for–yes, we

do. We started looking at a jury trial. So when I was–

when I was retained by Ms. Bevilacqua back in May,

the thought was, okay. We have a jury.

What do we have to do to prepare for a jury?

What’s it look like? What does our venire look like here

in Las Vegas? Where is the venire from? Where is it

going to come? You know, what’s it going to look like?

So we’re thinking about the strategies for

preparing for a venire here in Las Vegas. It’s different

in certainly where Ms. Bevilacqua practices in

Minnesota. So we think about what that venire would

look like. We think about, Okay. What are the jury

instructions that we’re going to have?

And we’re talking about jury instructions. We’re

preparing those instructions knowing that there’s a

jury, believing that there’s a jury, with no peep from

the other side who has known, as well, Your Honor.

When you talk about people knowing whether

there’s a jury trial, this is pretty established. They

App-11

certainly do cite the case law that goes back, I think,

to 2015 and even earlier [36] which says, no right to a

jury trial.

You knew when you filed that dec relief action

whether or not you were entitled to a trial by a jury.

You knew when we filed our answer and our

counterclaim whether or not you had a right to a trial

by jury. But when you asked for it, we consented to it,

just like you did. You consented to it. You asked for it.

The Court: So you’re saying in the years of that–

the years of their position being a jury trial, a jury

trial, it essentially rises to the level of the situations

where both sides have agreed, even though there isn’t

a specific statutory basis for it, and so, then, they’re

given the jury trial and off we go?

Mr. Peek: Yeah. And how many times can you

say it before we begin to rely on the fact–

The Court: Right. No, no–

Mr. Peek:–that there’s a jury trial?

The Court: So I couldn’t, but perhaps you guys

could find a–I couldn’t find–I don’t think the Ninth

Circuit has ruled on this under this set of facts–

Mr. Peek: We–

The Court:–which doesn’t make any life any

easier, but that’s why I get paid the medium bucks–

Mr. Peek: But there are cases out of other

circuits. The Ninth Circuit hasn’t necessarily said you

can’t go by implied [37] consent.

The Court: No, no. I–I think that’s the crux is it’s

going to be in my discretion, one way or the other.

App-12

Mr. Peek: Exactly. It now becomes up to your

discretion as to whether or not you think, under

39(c)(2), that they have, by their actions, impliedly

consented to a jury trial.

And now–I don’t–and I don’t need to repeat what

we said so much in the brief, Your Honor, but there

are–even their most recent amended complaint, their

supplemental complaint, did also–if you see it

attached to–I think it’s Docket 42 or 142. It also asks

for a jury trial. So even as recently as when they filed

that motion to supplement and attached their draft to

supplemental pleading, they asked for a jury trial.

So how much more do you need for implied

consent than all of the actions, beginning with the

filing of the complaint, the stipulations that they’ve

entered into, the fact that Judge Dorsey set it for a

jury trial, the fact that when we came before you in

March, you gave us time for–okay. This is when I have

to have jury instructions. This is when I have to have

proposed voir dire questions. This is when I have to

have motions in limine, all in anticipation of a motion

in limine.

We went to the extent of drafting and filing our

motions in limine. We wouldn’t ordinarily–ordinarily

do that if there’s not a jury trial because that would be

addressed to [38] the sound discretion. The Court can

certainly weigh that evidence and hear it and knows

the difference between admissible and inadmissible

evidence. Doesn’t necessarily have to have motions in

limine. Doesn’t necessarily require it. But they’re

required in a jury.

So how many times can you say it without us

beginning to rely on it and planning for it?

App-13

(Indiscernible)–

The Court: 39(c), though, that’s that advisory

jury where–

Mr. Peek: No. (c)(2), Your Honor, is the one that

actually talks about consent.

The Court: But doesn’t that mean both parties–

Mr. Peek: It does. And that’s what they’re saying,

you know, the–

The Court: So that’s your detrimental reliance,

then, flows into that; that they had consented,

consented, consented, and then they pull it out–

Mr. Peek: And the case law says you don’t

necessarily have to have the expressed consent. There

can be implied consent–

The Court: All right–

Mr. Peek:–and so that’s the cases that we cited to

you, Your Honor, that discuss implied consent. And

they impliedly consented when they asked for a jury,

when they [39] informed the Court they were going to

have a jury–

The Court: You’ve answered that question

before. I–

Mr. Peek: So I–I think, under (c)(2), Your Honor–

The Court: Okay.

Mr. Peek:–that that consent has been more than

amplified even as recently as their filing of a draft

supplemental complaint.

The Court: All right.

one.

Mr. Peek: And I don’t know how to answer that

App-14

The Court: Let me hear from them. And if I need

more from you, I’ll, of course, ask for it.

Mr. Peek: Thank you, Your Honor.

The Court: Yeah. So, as he’s vacating and you’re

coming up, so, you know, he’s got a point. They’ve been

under the impression for all this time.

And, you know, can you–I mean, again, I don’t

know that there’s any cases, but can you, with your,

sort of, actions over the course of the many years of

this case up to and including probably about three or

four weeks ago, when you filed the motion saying no

jury trial–I mean, can that be the sort of consent under

(c)(2) that I say, You know what? I am going to order

the jury trial in this case?

Ms. McCarty: No –

[40] The Court: Why not?

Ms. McCarty:–we don’t–we don’t believe so, Your

Honor.

Let me give you a little bit of history of this case

that you don’t have at this point.

Initially, when they did their initial disclosures,

they sought monetary damages and indicated that

they would have an expert that would provide the

testimony with regard to monetary damages. So when

we filed our initial jury demand, that was part of what

we were operating under. That didn’t happen, and

over the course of the case, they have shifted from

monetary damages to disgorgement of profits, which

you have correctly indicated is entirely equitable

relief.

App-15

So the idea that, you know, never, never has–we

had any reason to seek a jury demand other than we

wanted one is just not the case. The case has evolved.

Things have changed. And we are now adjusting based

on some of those changes.

Contrary to this idea that there’s this horrendous

detrimental reliance, I would point you to the JL

Beverage case, which I discovered while we were

working on our motions for limine for damages. It is

the case that arose here before Judge Du, and

coincidentally, the party that represented Jim Beam,

which was the party that was seeking to have the jury

demand stricken under very similar facts, was Mr.

McCue, who is counsel for Cirrus Design Services and

who, as you may have noticed, [41] files every pleading

in this court.

So the idea that they didn’t know this was an

issue is simply not the case. Mr. McCue was on the JL

Beverage case, which is the case that was decided in

2020 by the Ninth Circuit, which is the case that first

brought our attention to this very issue.

With regard to consent, you are correct. I certainly

could not find anything in the Ninth Circuit that says

there is some sort of implicit consent, and if there is

complicit consent or implicit consent, then–then you

can order a jury trial. There is no right to a jury trial

here. We can’t waive something we never had a right

to.

I will point your attention to a case out of Central

District of California, Hope Medical Enterprises v.

Fagron Compounding Services, that had exactly the

situation we have here. Both sides demanded a jury

trial. One side then sought to strike it. And the Court

App-16

in the Hope Medical Enterprises case found that a jury

trial is not required if the Court finds that on some or

all of the issues, there is no federal right to a jury trial.

If you find there’s no federal right to a jury trial, there

is no reason to go forward with a jury trial.

Additionally, it cites to Moore’s Federal Practice,

which states that parties have a great deal of latitude

on the timing of motions to strike a jury, including on

the eve of trial.

[42] So I would point to this case as instructive

because it is very much on point to where we are today.

We came across the case. We looked at it. It’s a case

here. It was Judge Du’s case. And the bell went off,

and we advised the Court of it as soon as the earliest

opportunity. We made the reference to it in our motion

in limine, and at this time, we do not believe they have

cited to any–certainly, not binding authority, and

really, not persuasive authority, that there is some

sort of an implicit consent that now holds us.

The rule applied the parties’, plural, consent. We

do not consent. We are seeking to have the jury

demand withdrawn because there is no right to a jury

trial.

If you look at the Ciminelli case, the Court

ordered bifurcated actions because some of the issues

did have a right to a jury trial while the lost wages did

not. That’s not the case here. There’s not a single claim

that offers any right to a jury trial.

The Court: Well, and both parties consented in

that case, and it wasn’t a reliance, you know. They’re

saying, at least, if I’m understanding Mr. Peek

correctly, that you all consented by virtue of your

App-17

actions and–and creating the–their belief that you’re

going to have a jury trial.

And so, the question becomes, is–do I find that

that, then, makes you a party who’s consenting

because of your actions in the last two years? And

that’s where I think [43] Ciminelli is different as both

parties said, No. We want the jury.

And so, I do think pretty clearly that if you all said

no, we want a jury, and I said, well, it’s not really a

basis, but if both parties want a jury, I think it’s in my

discretion to say yes. So–but anyway, go ahead.

Ms. McCarty: Well, and–

The Court: I guess, I’m saying I’m agreeing with

your assessment of that one.

Ms. McCarty: Let’s talk a little bit about the

prejudice since that was such an issue in your last

decision, so I definitely want to touch on it here.

Mr. Peek has brought up the issue of jury

instructions and motions in limine. Certainly, we have

done–been working on those things, as well. Certainly,

I don’t think there’s any detriment for the parties to

have put together motions in limine, and there’s

certainly nothing to preclude you from ruling on them

if you so choose because they would certainly narrow

the issues, make a clearer path for both parties as they

prepare to trial, and create the efficiency.

When we look at bringing in a jury, I don’t have to

tell you all of the additional layers that having a jury

creates, right? You’ve got to deal with jury services.

We’ve got to empanel them. That’s additional time.

We’ve got to go through the effort of dealing with

empaneling a jury during COVID. And [44] while

App-18

certainly our numbers are way down and we’re all

thankful for that, there are going to be those

individuals who don’t want to be here because of that.

Bringing the jury just even in and out of the

courtroom increases the time that is spent.

The Court: Oh, I know the logistics.

Ms. McCarty: The logistics are a nightmare.

Additionally, what we are talking about here are

federal claims involving two sophisticated parties on a

very narrow issue of federal law, which most jurors are

not going to have any familiarity with. There really is

no benefit to having a trier of fact trying to assess the

very things that you’re trying to assess today, which

are very sophisticated areas of the law.

If we don’t need a jury, certainly, for judicial and

party economy, we shouldn’t have a jury. This case

would be so much smoother, so much faster, so much

easier before Your Honor than it would be before the

folks that receive a jury summons and may or may not

want to be here.

The Court: All right. I don’t have any other

questions of you.

Anything else you want to let me know?

Ms. McCarty: I do not. Thank you, Your Honor.

The Court: All right. Mr. Peek, I’ll certainly give

you the last word, and you were answering, I think,

specifically, [45] my questions earlier. If there are

other arguments you want to make, of course, please

feel free to do that at this time, as well.

Mr. Peek: Your Honor, I–one area that I do want

to correct Ms. McCarty on is I–I think that she said to

App-19

you that they only decided to ask for a jury when they

saw a pleading by us asking for damages?

I called the Court to–Court’s attention to our brief

in which we cite, Your Honor, to the times that they

made the demand. So when Ms. McCarty says to you,

We only made this when we knew that you had asked

for damages, that’s not true. In fact, their demand for

a jury trial was on their initial complaint for

declaratory relief on infringement.

Demand for jury trial, that’s what you see. We see

that on page 8. So they’re the ones who started the ball

rolling. We’re the ones that just picked up and say,

Okay. We like a jury, as well. We’re fine with a jury.

And, Your Honor, I call your attention–and you

see this in my briefing and–on the bottom of page 3,

where we say, Courts have held that a party has

consented to a jury trial when, for example, a party

demanded a jury trial, citing to the Sprint Nextel. And

again, these are cases outside of the Ninth Circuit, I

know. Agree to a jury trial in joint status reports.

So those two prongs are met.

Did not object to a jury trial in pretrial orders and

[46] schedules.

We have that cited, as well, Your Honor, in a

footnote.

Filed motions to exclude experts from jury

consideration.

They did that.

And delayed objecting to a jury demand for a

prolonged period of time until shortly before trial.

App-20

Every one of those is footnoted, Your Honor. Every

one of those points is footnoted in 3 and 4, bottom of

page 3 and the top of page 4.

And I think, Your Honor, that that should inform

the Court that they have impliedly consented. They

asked for the jury. We had planned for a jury. We

suffered prejudice by not having a jury. And to say

that, Oh, gosh, a jury of our peers won’t understand

this complex litigation, Your Honor, I’ve been doing

jury trials for 50 years in complex litigation, and I

think juries get it. They get it very well. They’re very

smart. They’re very informative. We do our job as

we’re supposed to do as trial lawyers. That jury will

certainly understand.

And I’ve heard Ms. McCarty and Mr. Connot

stand–stand before you. They’re very smart lawyers.

They know how to get this to a jury. Mr. Connot, I

know, has had a lot of jury trials, so this is not

something that’s going to be over the head of a jury.

[47] And to make–make that kind of an argument

when you’re on the eve of trial, that only informs me

that some–for some reason, they woke up and had an

epiphany that maybe they don’t want a jury for some

other reason that we’re not quite aware of.

So, Your Honor, I–I would ask for the–the Court

to acknowledge the consent impliedly through all of

their actions and allow the jury to go forward.

The Court: All right. Thank you.

All right. Under Federal Rule of Civil Procedure

3982, when a jury demand–or a jury is demanded

under Rule 38, the trial on all issues must be by a jury,

unless the Court, on motion or on its own, finds that

App-21

on some or all of those issues, there’s no federal right

to a jury trial.

To determine whether the party has the right to a

jury trial, the Court must first ascertain whether the

statutes underlying the parties’ claim afford the right

to a jury trial. Cite to JL Beverage Company, LLC v.

Beam, Inc., which has previously been referenced by

the parties. That’s our local case here at 217 Westlaw

5158661 at note 1.

The next citing, City of Monterey v. Del Monte

Dunes at Monterey, Ltd., 526 U.S. 687707, a 1999 case.

Parties agree and it’s pretty clear the law on that

does not provide for the right to a jury trial. And so, it

would have to then be another statute that affords the

right to a jury [48] trial. And what the Court must

consider then is the Seventh Amendment and whether

the Seventh Amendment affords such a right in this

case.

In Fifty-Six Hope Road Music, the Ninth Circuit

concluded that the Seventh Amendment does not

afford the right to a jury calculation of profits because

disgorgement is an equitable remedy, and the specific

issues of profit determination cannot be said to be

traditionally tried–or tied to a jury. Again, that’s the

same cite.

Again, there’s an issue of the timeliness of the

motion, as Mr. Peek so accurately points out. And

given their reliance on the jury request prior in this

case and on many, many times, there’s less mandatory

authority on the issue of timeliness and waiver.

However, there’s persuasive authority that a motion

to strike a jury can be denied for being too late, as Mr.

App-22

Peek has pointed out on a number of occasions, both

here and in his pleading.

There’s some support for the general proposition

that a party can waive their rights under Rules 38 and

39 by their behavior and consent. Again, the one

example is Craig v. Atlantic-Richfield Company, 19

F.3d 372, a Ninth Circuit case of 1994. However, Craig

stands for the proposition that consent to a jury

demand should be unambiguous and determined.

Additionally, under Rule 39(a)(2), the Court may,

on its own initiative, remove a case from the jury

docket if it [49] finds that the right to a jury trial did

not exist under a statute or constitution.

What Mr. Peek is asking and–and his clients are

asking me to do is, under 39(c)(2), find that the parties

have consented and, while there isn’t any statutory or

constitutional basis for a jury trial, that I nonetheless

order the jury trial because by their actions over the

course of the prior years, they have consented to the

jury trial, and therefore, with that consent, I should

use my discretion and order the jury trial to continue.

And I–and I must say, you know, Mr. Peek–Ms.–

Ms. Bevilacqua, you know, I spent my career trying

cases in front of juries. I did bench trials. I certainly

know the nuances and the differences between them.

And I certainly can understand your reliance, as

you’ve outlined, but I just–I–I can’t get to the point

where I say that–that they have consented by these

actions. And–and I–and I–without the case law and

something directing me to say that–that those actions

show some sort of consent under 39(c)(2), especially in

light of the Judge Du case that was cited where her

striking the jury demand at that stage was upheld by

App-23

the Ninth Circuit, I–it just–it pains me to–to not give

you your jury trial right, but I just can’t find that what

they did rises to the level of consent under that rule.

And so, I’m going to grant their motion to strike

the [50] jury demand, and this matter will proceed

before the Court, which changes, obviously, the

complexion quite a bit of the case.

I have not started looking at the motions in

limine, but I’m going to. And I agree on some level with

Ms. McCarty that those may very well narrow some of

the issues.

I know that in just glancing at them, there are a

couple that aren’t going to be issues because it was

evidence you didn’t want the jury to hear. And since

there’s not going to be a jury, those might not be as

important or ones that have much effect on the trial.

But the others, I’ll take a look at.

The other thing I’ve considered, Mr. Peek and Ms.

Bevilacqua, was I don’t know that you have–do you–

and I’m not asking you to make a decision at this

stage, but is–I don’t know if there will be an

interlocutory right to appeal this before the trial. It

doesn’t appear to be because Judge Du’s case went

forward, and then you’d have to bring that up later.

And so, I guess, the first question would be, is–

with this decision, is everybody still prepared and

ready to go to trial on the date we have set later this

month?

Mr. Connot: From plaintiff’s perspective, Cirrus

Aviation, yes, Your Honor.

The Court: All right.

App-24

Ms. Bevilacqua: Yes, we are prepared, Your

Honor.

The Court: All right. So we’re still going to have

the–the hearing–well, you know, I’m going to think

about …

App-25

Appendix D

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEVADA

________________

No. 16-cv-02656

________________

GREAT WESTERN AIR, LLC, dba CIRRUS AVIATION

SERVICES, LLC,

Plaintiff,

CIRRUS DESIGN CORPORATION,

Defendant.

________________

Filed: Jan. 6, 2023

________________

FINDINGS OF FACT, CONCLUSIONS OF LAW,

AND JUDGMENT FOLLOWING BENCH TRIAL

________________

This is a trademark infringement case arising out

of a dispute between a high-end airplane charter

company—Great Western Air, LLC dba Cirrus

Aviation Services, LLC (“Cirrus Aviation”)—and a

personal airplane manufacturer—Cirrus Design

Corporation (“Cirrus Aircraft”)—that share the same

name. Cirrus Aviation sues Cirrus Aircraft for

declaratory relief that its name does not infringe on

Cirrus Aircraft’s trademark of the single word

CIRRUS and that it has not engaged in unfair

competition.

App-26

Cirrus Aircraft counterclaims, arguing that

Cirrus Aviation has infringed on its trademark and

engaged in unfair competition under federal, state,

and common law. Cirrus Aircraft also asks the Court

to impose a permanent injunction to keep Cirrus

Aviation from using the name, to disgorge Cirrus

Aviation of profits attributable to its use of the name,

and to require Cirrus Aviation to pay Cirrus Aircraft’s

attorneys’ fees. The parties engaged in a four-day

bench trial and, based on the testimony presented, the

exhibits, and briefing, the Court finds that Cirrus

Aircraft has not met its burden of proving its claims

by a preponderance of the evidence and thus has not

shown it is entitled to damages or injunctive relief.

The Court enters judgment in favor of Cirrus Aviation

and against Cirrus Aircraft and closes this case.

FINDINGS OF FACT

Cirrus Aviation is a charter airline catering to

“the one percent of the one percent.”1 Passengers

aboard a Cirrus Aviation flight experience the lofty

luxury of picking when they would like to fly, avoiding

the lines and traffic of commercial airlines, having the

plane all to themselves, and taking advantage of

opulent onboard amenities.2 Prices are, fittingly, sky

high. Passengers can expect to pay between $8,000

and $340,000 per trip.3 Cirrus Aviation even offers to

help customers purchase their own plane to keep in

Cirrus Aviation’s fleet.4 Cirrus Aviation provides the

1 ECF No. 173 at 61:23-62:13.

2 Id. at 62:16-25, 91:20-92:17, 94:4-96:11.

3 Id.

4 Id. at 63:1-68:8.

App-27

pilot, maintenance, management, and storage.5 And

when the owner is not using the plane, Cirrus Aviation

uses it to fly other customers and the owner earns

money in return.6

Cirrus

Aircraft

successful

plane

manufacturer. It makes planes for people who love to

fly, not as passengers, but as pilots.7 It builds three

models: the SR20, the SR22, and the Vision Jet.8 Its

planes seat between four and seven people, cost

between $1 million and over $3 million, and are the

only planes in the industry to include a parachute for

the entire plane.9 Since their introduction, Cirrus

Aircraft’s planes have soared in popularity. The SR

series has been the most popular single engine aircraft

for twenty years and the Vision Jet has been the mostdelivered business jet for three years.10 To encourage

non-pilots to consider plane ownership, Cirrus

Aviation has created programs through which it finds

pilots to fly the owners’ planes and teach the owners

how to fly.11 It also offers plane management,

maintenance, and storage solutions to make plane

ownership a breeze.12

5 Id.

6 Id.

7 ECF No. 175 at 190:6-19.

8 ECF No. 108 at 3.

9 ECF No. 175 at 229:15-21; ECF No. 174 at 64:13-69:12, 73:16-

20, 117:20-121:14, 161:18-20; ECF No. 108 at 3.

10 ECF No. 174 at 125:14-19, 126:11-22.

11 ECF No. 175 at 204:4-205:15; ECF No. 174 at 85:12-88:12,

140:24-142:10, 162:3-15, 175:18-176:14; Exs. 63, 67-76, 78.

12 ECF No. 174 at 140:24-142:10, 162:3-15, 173:5-14.

App-28

The trouble is, both companies have practically

the same name. Their shared name— cirrus—is a type

of cloud. A high-altitude, wispy looking cloud. The

appearance of which indicates calm skies and

excellent flying weather. But the little cloud has led to

a turbulent relationship between Cirrus Aviation and

Cirrus Aircraft.

Cirrus Aircraft’s history

Midwestern-raised brothers, Alan and Dale

Klapmeier, grew up around aviation. Their

grandfather owned planes and their uncle was a

pilot.13 Older brother Alan first caught the aviation

bug, and his younger brother Dale followed suit.14 The

brothers’ parents even got their own pilots’ licenses,

deciding that they would not let their sons fly until

they knew how to do it first.15 The brothers learned to

fly in their family’s plane and eventually began fixing

up their own.16 They later graduated to building kit

planes, which are sold unassembled so enthusiasts

can put them together themselves.17

One year, while the brothers were on break from

college, they decided to fly from their family farm in

Wisconsin to see their grandparents in Chicago.18

They called the flight service for a weather update and

were disappointed to learn that storms were expected,

13 Id. at 49:11-50:18.

14 Id. at 50:1-14.

15 Id.

16 Id. at 50:20-25, 53:3-22.

17 Id. at 50:20-25, 53:3-22, 55:2-12.

18 Id. at 56:9-57:8.

App-29

and flying was not recommended.19 Their

disappointment only grew when, as they were driving

to Chicago, they looked up not to see storm clouds, but

feathery cirrus clouds against a blue sky.20 It was

excellent flying weather. During that begrudging

drive, the two decided to create their own aviation

company, and to name it after the cirrus clouds that

mocked them as they drove.21

At the 1987 Oshkosh Air Show, the Klapmeier

brothers unveiled their first Cirrus plane: a kit plane

that bragged to be the fastest, biggest, and coolest kit

plane on the market.22 But the pair quickly learned

that, while people loved the design of the plane, not

everyone wanted to build their own.23 So the brothers

found a financial backer and began designing their

first ready-made airplanes.24 As part of that process,

in 1994, Alan applied for a trademark of the name

CIRRUS for use in aircraft and structural parts.25

Later, the company would expand the mark for use in

avionics, aircraft inspection and repair, flight

instruction and training, aircraft financing, aircraft

sales and acquisition, aircraft maintenance, aircraft

19 Id.

20 Id.

21 Id.

22 Id. at 57:10-58:8.

23 Id. at 60:8-17.

24 Id. at 60:8-63:5.

25 Ex. 1 at 001.

App-30

insurance,

others.26

and

aircraft

management,

amongst

In 1993, the brothers began marketing their new

planes in teaser-style advertisements that hinted at

the “Mystery of Hangar X.”27 And at the July 1994

Oshkosh Airshow, they unveiled their ready-made

planes, including the mystery plane: the SR20.28 By

about 2000, the SR series was a bestseller.29 By 2011,

a foreign entity purchased the company.30 And by

about 2019, the Vision Jet became the most-delivered

turbo jet.31 Cirrus Aircraft had taken off.

II. Cirrus Aircraft discovers Cirrus Aviation

Years later, in 2014, Cirrus Aircraft was

surprised to learn that another company was using its

name. Todd Simmons—Cirrus Aircraft’s executive

vice president of sales, marketing, and support—had

stumbled

across

Cirrus

Aviation’s

website,

cirrusav.com. Concerned, he sent the website link to

others in the company, asking them to investigate.33

This was not the first time another company had

used the name Cirrus. But certain of the other

companies were less concerning to Cirrus Aircraft

because of their limited offerings and limited

26 Exs. 1, 2; ECF No. 176 at 31:4-14, 32:1-10.

27 ECF No. 174 at 61:5-63:20.

28 Id. at 63:2-64:12.

29 Id. at 125:12-20.

30 Id. at 106:1-3.

31 Id. at 125:12-20.

32 Ex. 82; ECF No. 174 at 185:9-22.

33 Ex. 82; ECF No. 174 at 185:9-22.

App-31

geographic presences.34 Cirrus Flight Operations, a

Minnesota corporation, had been using the name even

before Cirrus Aircraft.35 It offered a variety of aviation

services from a small airport in Blaine, Minnesota—

including operating charter flights—starting in

1978.36 Currently, it offers charter broker services in

which it acts as a middleman, connecting charter

clients with charter operators.37 Cirrus Aviation,

Inc.—with locations in New Jersey and Arizona—buys

and sells turbine engines and related equipment.38

Cirrus Aviation, Incorporated—based in Florida—

operates a flight training company and pilot shop.39

And an entity in Oregon once called Alan Klapmeier

to discuss using the name Cirrus for a flight school.40

Unlike these entities, Cirrus Aviation’s use of the

name troubled Cirrus Aircraft.41 So, shortly after

discovering the website, Cirrus Aircraft sent a ceaseand-desist letter to Cirrus Aviation, asking it to cease

using the Cirrus name.42 Cirrus Aviation refused.

III. Cirrus Aviation’s history

Cirrus Aviation insists that its use of the Cirrus

name began organically and much in the same way

34 ECF No. 176 at 41:8-43:23.

35 ECF No. 175 at 125:25-126:7.

36 Id. at 125:17-139:21.

37 ECF No. 173 at 53:22-55:4; ECF No. 175 at 125:25-126:3.

38 Ex. 1208-B at 40:8-11, 42:8-20.

39 Ex. 1208-A at 9:13-15, 10:2-18, 30:9-11.

40 ECF No. 175 at 214:15-215:8.

41 ECF No. 176 at 41:8-43:23, 51:22-52:13.

42 Ex. 1015.

App-32

that Cirrus Aircraft’s did: a fondness for the little

cloud that promises good flying weather. The company

is family-owned by Milt Woods and his sons, Greg and

Mark.43 Milt had been a commercial pilot since the

sixties and, in 1994, decided to start his own aircraft

management company.44 He named his company

Cirrus Aviation Services, Inc. after the wispy,

promising cloud with which he was no doubt familiar

through his commercial piloting career.45 At this

point, neither Milt, Greg, nor Mark knew about Cirrus

Aircraft.46

Milt used the company to engage in the charter

market a few different ways between 1994 and 2010.

He started by operating a Canadian charter company,

then became part owner of a Las Vegas-based charter

company in the early 2000s.47 Neither company

operated under the Cirrus name.

Eventually, Milt switched gears and, through

Cirrus Aviation Services, Inc., began brokering

charter flights.48 But brokering charter flights is not

the same as offering them. Eventually, joined by his

sons, Milt set his sights higher: on becoming a charter

operation.49

43 Ex. 1000.

44 ECF No. 173 at 47:8-16.

45 Id.

46 Ex. 164-A at 41:16-42:21; Ex. 165-A at 51:6-14; ECF No. 173

at 134:11-16.

47 ECF No. 173 at 47:8-48:5, 53:6-14, 131:14-22, 209:6-22.

48 Id. at 53:20-54:2.

49 Id. at 55:5-7.

App-33

Obtaining the certificate—called a Part 135

certificate—required by the Federal Aviation Agency

(“FAA”) to operate charter flights is no simple task.50

To simplify the process, in 2010, the Woods family

decided to purchase a company that already had its

Part 135 certificate.51 The company—named Great

Western Air, LLC—was owned by an individual who

had multiple companies under the same name.52

Because he still had his other companies, Great

Western Air’s owner asked the Woods family to choose

a different name, to which they agreed.53 The family

decided to name the company Cirrus Aviation

Services, LLC because Milt was proud of the name,

liked the cloud, and wanted to keep it to maintain his

customer base.54

Before making that decision, Greg looked through

the Air Charter Guide to see if any other Part 135

airlines were using the name but did not check

whether the name was trademarked.55 Greg did not

find any other uses of Cirrus by Part 135 operators.56

But by 2010, the Woods family was already aware of

Cirrus Aircraft.57 They simply did not think Cirrus

Aircraft’s use of the name was a concern because

Cirrus Aircraft made small piston airplanes, rather

50 Id. at 56:9-18.

51 Id. at 55:12-15.

52 Id. at 57:19-25.

53 Id. at 57:22-58:21.

54 Id. at 57:22-58:21, 208:11-14.

55 Id. at 57:22-58:21.

56 Id. at 207:11-21.

57 Id.

App-34

than the commercial aircraft in which the Woods

family was interested.58

Having settled on a name, Cirrus Aviation offered

its first charter flight in February of 2010.59 In 2014,

it received Cirrus Aircraft’s cease-and-desist letter.

And in 2016, Cirrus Aviation sued Cirrus Aircraft,

asking the Court to enter declaratory judgment that

its name does not infringe on Cirrus Aircraft’s mark

and that it had not engaged in unfair competition.60

CONCLUSIONS OF LAW

Theories of liability

Cirrus Aviation asks the Court to issue a

declaration that it has not infringed on Cirrus

Aircraft’s trademark of the word CIRRUS and that

Cirrus Aviation’s use of that name is not unfair

competition. Cirrus Aircraft asks the Court to find

that Cirrus Aviation infringed on its trademark and

engaged in unfair competition under the Lanham Act,

the Nevada Deceptive Trade Practices Act, and

common law. The analysis for each theory is the

same.61

The test asks: (1) whether the plaintiff has a

protectable ownership interest in the mark; and

(2) whether the defendant’s use of the mark is likely

58 Id.

59 Id. at 133:24-134:1.

60 ECF No. 1.

61 See M2 Software, Inc. v. Madacy Entertainment, 421 F.3d

1073, 1080 (9th Cir. 2005); see New West Corp. v. NYM Co. of

Calif., Inc., 595 F.2d 1194, 1201 (9th Cir. 1979); see Mayweather

v. Wine Bistro, No. 2:13-cv-210-JAD-VCF, 2014 WL 6882300, at

*6 (D. Nev. Dec. 4, 2014).

App-35

to cause consumer confusion.62 Here, the parties do

not dispute Cirrus Aircraft’s protectable interest in

the mark. They dispute whether Cirrus Aviation’s use

of that mark is likely to cause consumer confusion.

Likelihood of confusion in the Ninth Circuit

depends on eight factors: (1) strength of the mark;

(2) proximity of the goods; (3) similarity of the marks;

(4) evidence of actual confusion; (5) marketing

channels used; (6) type of goods and the degree of care

likely to be exercised by the purchaser; (7) defendant’s

intent in selecting the mark; and (8) likelihood of

expansion of the product lines.63 Not every factor

carries equal weight.64 The Ninth Circuit has

explained that courts should consider the factors

together to decide if, under a totality of the

circumstances, a likelihood of confusion exists.65

Using these factors, Cirrus Aircraft must prove by

a preponderance of the evidence that Cirrus Aviation’s

use of the mark is likely to cause confusion.66 The

Court finds that Cirrus Aircraft has not met this

See Ironhawk Technologies, Inc. v. Dropbox, Inc., 2 F.4th

1150, 1159 (9th Cir. 2021).

63 See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th

Cir. 1979).

64 See Thane Int’l Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901

(9th Cir. 2002).

65 See Ironhawk, 2 F.4th at 1161.

See Stone Creek Incorporated v. Omnia Italian Design

Incorporated, No. cv-13-00688-PHXDLR, 2018 WL 1784689, at

*1, n.2 (D. Ariz. April 12, 2018) aff’d, 808 F. App’x 459 (9th Cir.

2020); Ninth Circuit Manual of Model of Civil Jury Instructions

§ 15.6 (2020) (addressing the elements and burden of proof for

trademark infringement under 15 U.S.C. § 1114(1)).

App-36

burden of proof. It thus enters judgment in favor of

Cirrus Aviation.

A. Strength of the mark

Trademark law offers greater protection to marks

that are “strong,” meaning, “distinctive.”67 Courts in

the Ninth Circuit analyze a mark’s strength in terms

of conceptual strength and commercial strength.68

Conceptual strength depends on the obviousness of a

mark’s connection to the good or service to which it

refers.69 Commercial strength is based on actual

marketplace recognition.70

Conceptual strength

Conceptual strength exists along a spectrum of

five categories ranging from strongest to weakest.71

Generic marks—like “Light Beer”—are not eligible for

trademark protection.72 Descriptive marks—like

“speedy,” “friendly,” or “green”—are not entitled to

trademark protection unless they have acquired

secondary meaning.73 Suggestive marks—like “Roach

67 Ironhawk, 2 F.4th at 1162.

68 JL Beverage Company, LLC v. Jim Beam Brands Co., 828

F.3d 1098, 1106-1107 (9th Cir. 2015).

69 Id.

70 Id.

71 Id.

See Brookfield Communications, Inc. v. West Coast

Entertainment Corp, 174 F.3d 1036, 1058 n. 19 (9th Cir. 1999);

see Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75

(7th Cir. 1977).

73 See Zobmondo Entertainment, LLC v. Falls Media, LLC, 602

F.3d 1108, 1114 (9th Cir. 2010); see Union Nat’l Bank of Tex.,

App-37

Motel” insect trap—suggest a product’s features and

require consumers to exercise some imagination to

associate the suggestive mark with the product.74

They are thus often entitled to trademark protection.75

Arbitrary marks—like “Black and White” scotch

whiskey—are made up of words commonly used in the

English language but are entitled to federal

trademark protection because they serve to identify a

particular source of a product.76 Fanciful marks—like

“Clorox”—are made up terms and are automatically

entitled to trademark protection.77

In American Home Products Corp. v. Johnson

Chemical Co., Inc., the Second Circuit Court of

Appeals explained that “Roach Motel” is at least a

suggestive mark because it invokes the idea of a

“fanciful abode for roaches.”78 The image was

significant in relation to the design of the product, an

open-ended box containing an attractant for bugs and

a sticky adhesive to prevent the bug from escaping.79

The trap was shaped to prevent the bug from

Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d

839, 845 (5th Cir. 1990).

74 See Brookfield Comm., 174 F.3d at 1058 n. 19; see American

Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103 (2d Cir.

1978).

75 See Zobmondo, 602 F.3d at 1113.

See Brookfield Comm., 174 F.3d at 1058 n. 19; see

Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149,

154 (9th Cir. 1963).

77 See Zobmondo, 602 F.3d at 1113; see Clorox Chemical Co. v.

Chlorit Mfg. Corporation, 25 F.Supp. 702, 205 (E.D.N.Y. 1938).

78 See American Home Prods., 589 F.2d at 107.

79 See id. at 104.

App-38

leaving—even if not stuck on the adhesive—and used

the slogan, “Roaches Check In…But They Don’t Check

Out,” to reinforce the “motel” theme.80

The Ninth Circuit discussed the arbitrary nature

of “Black & White” scotch whisky in Fleischmann

Distilling Corp. v. Maier Brewing Co.81 It explained

that the term was not descriptive of the whisky, nor

did the whisky have anything to do with the qualities

of black and white.82 Having no relation to whisky, the

court concluded that, used in the alcoholic beverage

industry, the name “Black and White” had come to

mean a particular brand of whisky.83

Here, the “Cirrus” mark is on the strong end of the

spectrum, falling in between suggestive and arbitrary.

Cirrus Aircraft argues that its mark is arbitrary: a

common word but identifying a particular source of

airplanes. Cirrus Aviation argues that the mark is

suggestive: requiring consumers to exercise their

imagination to associate a cloud with air travel. The

mark falls somewhere in the middle.

The “Cirrus” mark is more than suggestive when

compared with “Roach Motel.” “Roach Motel”

suggested a trap that bugs would enter through an

opening, much as a person might enter a motel

through a doorway. The term suggested the singleopening feature of the trap. But Cirrus Aircraft has

provided no evidence that “Cirrus” suggests any

features of Cirrus Aircraft’s planes. While the term

80 Id. at 104-105.

81 See Fleischmann Distilling Corp., 314 F.2d at 153-54.

82 See id.

83 See id.

App-39

could suggest that the plane flies amongst cirrus

clouds, that suggestion is less obvious than “Roach

Motel” insect traps, which were designed and

marketed to invoke a motel.

On the other hand, the “Cirrus” mark is not

entirely arbitrary to airplanes like “Black & White” is

to whisky. While not descriptive of the plane itself,

cirrus clouds are indicative of good flying weather. The

term “cirrus,” as used in the aviation industry, thus

does not only mean a particular brand of plane.

Despite falling between two of the spectrum’s

guideposts, the mark still falls on the stronger end of

the spectrum. The mark is thus conceptually strong.

But the Court must still consider that strength in

context of the market in which it is used.

Commercial strength.

Commercial strength refers to market presence

and can be supported by evidence of advertising

expenditures, which increase that presence.84

Evidence of commercial strength can strengthen an

otherwise conceptually weak mark.85 But use of

similar marks by third-party companies in the

relevant industry can weaken it.86

Here, other uses of the “Cirrus” mark in the

aviation industry broadly, and in the charter industry

specifically, weaken the mark in context. In support of

its contention that it maintains a strong market

presence, Cirrus Aircraft introduced evidence of the

84 See JL Beverage, 828 F.3d at 1107.

85 Brookfield Comm., 174 F.3d at 1058.

86 M2 Software, Inc., 421 F.3d at 1087-8.

App-40

awards it has won,87 articles about its success,88 its

advertisements,89 its founders’ induction into the

National Aviation Hall of Fame,90 and testimony from

its president about how certain of its planes have been

bestsellers in their categories for years running.91 It

also introduced evidence that it spends up to $10

million a year in marketing.92 But given the testimony

at trial that charter flights and personal aircraft

attract different types of customers, the Court is not

convinced that strength in the personal aircraft

market equates entirely to strength in the charter

market. It is not clear that charter customers would

be interested in the success of a personal aircraft.93

And although Cirrus Aircraft introduced evidence that

some charter companies have Cirrus Aircraft planes

in their fleets,94 it did not offer evidence showing how

much of the charter market its planes occupy or what

type of advertising it has done in that market.

Additionally, Cirrus Aviation has introduced

evidence that three other companies in the aviation

87 Ex. 29.

88 Ex. 30; Ex. 37.

89 Ex. 35; Ex. 39.

90 Ex. 36.

91 ECF No. 174 at 125:12-126:24.

92 ECF No. 176 at 87:22-25.

93 Compare ECF No. 173 at 62:9-25 (Greg Woods explaining

that customers of their charter flights choose to get into the back

of an airplane and the efficiency for which they choose to take

charter as opposed to commercial flights) with ECF No. 175 at

190:6-19 (Alan Klapmeier explaining that the concept of “owner

flown” was part of the philosophy and market for Cirrus Aircraft).

94 Ex. 152; ECF No. 175 at 32:14-16.

App-41

market use the name Cirrus, one of which used it in

charter.95 Cirrus Aircraft described these companies

as geographically limited “mom-and-pop” operations

and noted that it is not required to litigate every use

of its mark. Even so, evidence of these companies

weakens the Cirrus mark’s commercial strength,

albeit less so than if they were larger companies.

Taking the conceptual strength of the mark together

with its commercial weakness, the Court finds that

this factor is neutral in the analysis.

B. Proximity of the goods

Goods and services are related when they are

complementary, similar in use or function, or sold to

the same class of purchasers.96 The plaintiff need not

establish that the parties are direct competitors.97

Instead, the Ninth Circuit has adopted a flexible

approach to the notion of competition.98 Under that

approach, related goods or services are those which

would reasonably be thought by the buying public to

come from the same source if sold under the same

mark.99 The proximity of the goods also becomes less

important where consumers exercise a great deal of

care because, “rather than being misled, the consumer

95 ECF No. 175 at 127:22-128:9 (Cirrus Flight Operations); id.

at 214:15-215:8 (a Cirrus flight school); Ex. 1208-B at 40:8-11,

42:8-20 (Cirrus Aviation, Inc.); Ex. 1208-A at 9:13-15, 10:2-18,

30:9-11 (Cirrus Aviation Incorporated).

96 Ironhawk, 2 F.4th at 1163.

97 Id.

98 Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190,

1212-13 (9th Cir. 2012).

99 Rearden., 683 F.3d at 1212-13.

App-42

would merely be confronted with choices among