PUBLISHED

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

No. 13-2003

GEORGIA-PACIFIC CONSUMER PRODUCTS LP,

 Plaintiff - Appellee,

 and

GEORGIA-PACIFIC CORPORATION,

 Plaintiff,

 v.

VON DREHLE CORPORATION, a North Carolina corporation,

 Defendant - Appellant,

and

CAROLINA JANITORIAL & MAINTENANCE SUPPLY, a North Carolina 

corporation,

 Defendant,

MYERS SUPPLY, INCORPORATED,

 Intervenor/Defendant.

Appeal from the United States District Court for the Eastern 

District of North Carolina, at Raleigh. Terrence W. Boyle, 

District Judge. (5:05-cv-00478-BO)

Argued: December 11, 2014 Decided: March 30, 2015

Amended: April 15, 2015
2

Before NIEMEYER, SHEDD, and KEENAN, Circuit Judges.

Vacated, reversed in part, and remanded in part, with 

instructions, by published opinion. Judge Niemeyer wrote the 

opinion, in which Judge Shedd concurred as to Parts I, III, IV, 

and V and Judge Keenan concurred in full. Judge Shedd wrote a 

separate opinion, concurring in part and dissenting in part. 

ARGUED: Carter Glasgow Phillips, SIDLEY AUSTIN LLP, Washington, 

D.C., for Appellant. Miguel A. Estrada, GIBSON, DUNN & CRUTCHER 

LLP, Washington, D.C., for Appellee. ON BRIEF: Michael P. 

Thomas, PATRICK HARPER & DIXON, LLP, Hickory, North Carolina; 

Richard Klingler, Jacqueline G. Cooper, Nicolas W. Thompson, 

John Paul Schnapper-Casteras, SIDLEY AUSTIN LLP, Washington, 

D.C., for Appellant. Stephen P. Demm, John Gary Maynard, III, 

HUNTON & WILLIAMS LLP, Richmond, Virginia; Jonathan C. Bond, 

GIBSON, DUNN & CRUTCHER LLP, Washington, D.C.; W. Kyle 

Carpenter, WOOLF, MCCLANE, BRIGHT, ALLEN & CARPENTER, PLLC, 

Knoxville, Tennessee, for Appellee. 
3

NIEMEYER, Circuit Judge:

This trademark infringement case presents several issues 

regarding the appropriate relief that may be granted under the 

Lanham Act, 15 U.S.C. §§ 1051-1141n, specifically § 1116 

(authorizing injunctive relief) and § 1117 (authorizing monetary 

relief).

Georgia-Pacific Consumer Products LP owns the trademark 

“enMotion,” which it uses to brand a paper-towel dispenser that 

dispenses paper towels when a motion sensor is triggered by the 

user. Georgia-Pacific designed its enMotion dispenser to 

dispense only ten-inch paper towels that it manufactured.

von Drehle Corporation, a North Carolina corporation that

competes with Georgia-Pacific in the sale of paper towels, 

designed a less expensive paper towel -- the “810-B” paper towel 

-- that it sold specifically for use in Georgia-Pacific’s

enMotion towel dispensers.

In response to von Drehle’s practice of selling its 810-B 

paper towels for “stuffing” into enMotion towel dispensers, 

Georgia-Pacific commenced three separate actions against von 

Drehle or its distributors. Each action alleged that the 

“stuffing” practice constituted contributory trademark 

infringement of Georgia-Pacific’s enMotion mark, in violation of 

the Lanham Act, 15 U.S.C. § 1114(1)(a). Specifically, in this 

action, Georgia-Pacific claimed that von Drehle “knowingly and 
4

intentionally” manufactured the 810-B paper towel “specifically 

and solely for use” in Georgia-Pacific’s enMotion towel 

dispensers and that the practice of stuffing enMotion dispensers 

with the 810-B paper towel was “likely to cause confusion and 

. . . deceive End-User Customers.” In January 2012, a jury 

agreed that von Drehle’s conduct constituted contributory 

trademark infringement and, as requested at closing argument,

awarded Georgia-Pacific $791,431, which represented all of the 

profits that von Drehle earned from the sale of its 810-B paper 

towels from 2005 to the date of trial. After the jury returned 

its verdict, the district court entered a permanent, nationwide 

injunction prohibiting von Drehle from directly or indirectly

infringing Georgia-Pacific’s trademark rights. In addition, 

because the court found that von Drehle’s infringement was 

“willful and intentional,” it (1) trebled the jury’s award from 

$791,431 to $2,374,293; (2) awarded Georgia-Pacific attorneys 

fees in the amount of $2,225,782; and (3) awarded it prejudgment 

interest in the amount of $204,450. Finally, the court awarded 

Georgia-Pacific $82,758 in court costs.

In a parallel action that Georgia-Pacific commenced in the 

Western District of Arkansas against one of von Drehle’s

distributors, the district court had, by the time of the trial

in this action, already ruled against Georgia-Pacific,

concluding that the practice of stuffing von Drehle’s 810-B 
5

paper towel into Georgia-Pacific’s enMotion dispensers “did not 

create a likelihood of confusion,” Georgia-Pacific Consumer 

Prod. LP v. Myers Supply, Inc., No. 6:08-cv-6086, 2009 WL 

2192721, at *8 (W.D. Ark. July 23, 2009), and the Eighth Circuit 

affirmed, 621 F.3d 771, 777 (8th Cir. 2010) (holding that the 

district court did not “clearly err in finding that the 

trademark on a dispenser does not indicate the source of the 

paper towels inside, and concluding that there was no likelihood 

of confusion, and thus no trademark infringement”).

In the second parallel action, which Georgia-Pacific

commenced against one of von Drehle’s distributors in the 

Northern District of Ohio, the district court had, by the time 

of the trial in this action, also ruled against Georgia-Pacific. 

The court held that the Arkansas judgment precluded GeorgiaPacific from relitigating its trademark infringement claim, see

Georgia-Pacific Consumer Prods. LP v. Four-U-Packaging, Inc., 

821 F. Supp. 2d 948 (N.D. Ohio 2011), and the Sixth Circuit 

affirmed, 701 F.3d 1093, 1103 (6th Cir. 2012).

On appeal from the remedies award in this case, von Drehle 

challenges the geographical scope of the district court’s 

injunction, arguing that the Eighth and Sixth Circuits’ rulings 

against Georgia-Pacific render the injunction entered by the 

district court unduly broad. It also challenges the monetary 

awards, contending that the district court applied the wrong 
6

legal standards for trebling the jury award and for awarding 

attorneys fees and prejudgment interest.

Because we agree with von Drehle, we reverse the district 

court’s judgment in part and vacate and remand in part, with 

instructions. As to the injunction, we instruct the district 

court to narrow it to cover only the geographical area of the 

Fourth Circuit. As to the monetary awards, (1) we reverse the 

treble damages award and instruct the district court to 

reinstate the jury’s award of $791,431; (2) we vacate the award 

of attorneys fees and remand for application of the appropriate 

standard; and (3) we reverse the award of prejudgment interest.

I

In 2005, after learning of von Drehle’s practice of 

“stuffing” or “causing to be stuffed” Georgia-Pacific enMotion 

towel dispensers with von Drehle 810-B paper towels, GeorgiaPacific sent von Drehle a letter “[d]emand[ing] . . . that von 

Drehle immediately cease and desist marketing, selling and 

distributing the 810 towel.” von Drehle rejected GeorgiaPacific’s demand, stating that it considered its conduct to be 

legitimate competition that did not infringe Georgia-Pacific’s 

enMotion trademark.

Georgia-Pacific thereafter commenced this action, alleging 

that von Drehle’s stuffing practices constituted contributory 
7

trademark infringement, in violation of the Lanham Act, 

15 U.S.C. § 1114(1)(a). It alleged that von Drehle “knowingly 

and intentionally manufactured -- or directed the manufacture --

and sold -- or directed the sale of -- finished paper towel 

rolls designed specifically and solely for use in enMotion 

dispensers,” and that this practice was “likely to cause 

confusion and . . . to deceive End-User Customers . . . .” 

Georgia-Pacific sought injunctive relief, an accounting of von 

Drehle’s profits, and damages.

The district court granted von Drehle’s motion for summary 

judgment, concluding that Georgia-Pacific had “failed to show 

that von Drehle’s sale of its 810-B paper towel roll to 

distributors for use in enMotion dispensers caused consumer 

confusion.” Georgia-Pacific Consumer, Prods. LP v. von Drehle 

Corp., 645 F. Supp. 2d 532, 536 (E.D.N.C. 2009). The court 

considered the end-users in this context to be “those business 

owners who purchase[d] paper towel rolls from distributors for 

the enMotion dispensers installed in their premises,” a class of 

consumers who “kn[e]w exactly from which company they [were]

purchasing the paper towel rolls.” Id. at 537. By order dated 

August 10, 2010, we reversed and remanded, holding that the 

district court “erred in limiting its likelihood of confusion 

inquiry to distributors who purchased 810-B Toweling and their 

respective end-user customers,” such as hotels. Georgia-Pacific
8

Consumer Prods., LP v. von Drehle Corp., 618 F.3d 441, 453 (4th 

Cir. 2010). We pointed out that “Fourth Circuit case law makes 

room for the factfinder to consider confusion among the nonpurchasing public in the likelihood-of-confusion inquiry.” Id.

On remand, von Drehle filed a motion seeking judgment as a 

matter of law, arguing that the decision of the Western District 

of Arkansas, which rejected Georgia-Pacific’s infringement 

claims, should preclude Georgia-Pacific from advancing those 

same claims in this case. The district court, however, denied 

von Drehle’s motion and set the matter for trial, explaining 

that von Drehle had inordinately delayed raising its preclusion 

argument.

At the three-day trial, Georgia-Pacific presented its case 

to the jury for contributory trademark infringement and 

requested injunctive relief and disgorgement of von Drehle’s 

profits. At closing argument to the jury, counsel for GeorgiaPacific stated:

So what we want is for [von Drehle] to quit doing it, 

and we want damages. The damages we want and I think 

from the Judge’s instructions you will find if we 

prevail we are entitled to this -- [is] for them to 

give up the profits that they made selling knock-off 

paper to put into our trademarked dispenser. And the 

only number in the record on that is in Plaintiff’s 

Exhibit 266 [summarizing von Drehle’s annual gross 

profits from the sale of 810-B paper towels from 2004 

through 2011]. They made a profit of $794,000 from 

the time that they put it on the market in 2004 

through 2011. And that’s what we’re asking you for, 

the profits, give us the profits that you made trading 
9

on our name and our trademark. So I submit to you 

when you get back there and you go through all these 

packages, get to the verdict form, the first question 

is, have we proven trademark infringement? Yes. The 

second question is, what are the damages? $794,000.

(Emphasis added). Just as Georgia-Pacific’s counsel requested, 

the jury returned a verdict answering “yes” to the question 

whether von Drehle infringed Georgia-Pacific’s trademark and 

awarding Georgia-Pacific: “$791,431 when the cease [and desist] 

letter came out Jan 05.” Because Exhibit 266, to which counsel 

referred at closing argument, included profit for 2004 in the 

amount of $2,569, which was earned before the cease and desist 

letter was sent, the jury apparently subtracted that sum from 

the $794,000 amount requested to arrive at its award of 

$791,431. The jury thus awarded Georgia-Pacific 100% of the 

profits that it requested for the period beginning with its

cease-and-desist letter in January 2005 and ending in December 

2011.

Following trial, von Drehle renewed its motion for judgment 

as a matter of law based on claim and issue preclusion, and the 

district court granted it, vacating the jury verdict and

entering judgment for von Drehle. Georgia-Pacific Consumer 

Prods. LP v. von Drehle Corp., 856 F. Supp. 2d 750, 757

(E.D.N.C. 2012). The court explained:

The question submitted to the jury in this case was 

whether “plaintiff established by a preponderance of 

the evidence that the defendant infringed on 
10

plaintiff’s valid trademark.” The jury responded to 

this question in the affirmative. However, because 

another court had previously decided this same 

question in the negative, this Court now holds that 

Defendant should be permitted to raise the affirmative 

defense of claim and issue preclusion and that 

judgment as a matter of law is appropriate.

Id. at 753 (citation omitted). On appeal, we again reversed, 

concluding that “von Drehle [had] waived its preclusion 

defenses” and that “the district court abused its discretion by 

allowing von Drehle to assert its preclusion defenses 16 months 

after the substantive basis for those defenses was known to von 

Drehle.” Georgia-Pacific Consumer Prods., LP v. von Drehle 

Corp., 710 F.3d 527, 536 (4th Cir.), cert. denied, 134 S. Ct. 

393 (2013). We remanded the case with instructions to reinstate 

the jury verdict and to consider the other relief that GeorgiaPacific had requested. Id.

On remand, the district court granted Georgia-Pacific the 

injunctive relief it requested and, finding von Drehle’s 

infringement to have been willful and intentional, trebled the 

jury verdict, awarded attorneys fees, and awarded prejudgment 

interest. Including court costs, the total monetary award 

amounted to $4,887,283.51.

From the judgment entered on July 28, 2013, von Drehle 

filed this appeal, challenging the geographical scope of the 

injunction and each monetary award except court costs.
11

II

As part of the post-verdict relief granted, the district 

court entered a permanent, nationwide injunction prohibiting von 

Drehle “from interfering directly or indirectly with [GeorgiaPacific’s] trademark rights,” which, the court stated, included 

“the right of [Georgia-Pacific] to enforce the use of only their 

paper towel products in their enMotion dispensers.” GeorgiaPacific Consumer Prods. LP v. von Drehle Corp, No. 5:05-cv-478-

BO, 2013 WL 3923984, at *2 (E.D.N.C. July 29, 2013). von Drehle 

contends that the district court should not have issued a 

nationwide injunction that “conflict[s] with the decisions of 

other circuits” and that “undermine[s] the prerogatives of 

courts of appeals that have yet to address the relevant legal 

issues.” As noted, both the Eighth and the Sixth Circuits have 

concluded that Georgia-Pacific may not enforce its enMotion mark 

to prohibit the practice of stuffing von Drehle’s 810-B paper 

towels into enMotion towel dispensers. See Myers Supply, 621 

F.3d at 777; Four-U-Packaging, 701 F.3d at 1103.

We review the scope of a permanent injunction for abuse of 

discretion. See Tuttle v. Arlington Cnty. Sch. Bd., 195 F.3d 

698, 703 (4th Cir. 1999).

Neither party contends that a district court, as a general 

matter, lacks authority to issue a nationwide injunction 

prohibiting trademark infringement. See 15 U.S.C. § 1116(a); 
12

see also Va. Soc’y for Human Life, Inc. v. FEC, 263 F.3d 379, 

393 (4th Cir. 2001) (“Nationwide injunctions are appropriate if 

necessary to afford relief to the prevailing party”), abrogation 

on other grounds recognized in Real Truth About Abortion, Inc. 

v. FEC, 681 F.3d 544, 550 n.2 (4th Cir. 2012); Richmond Tenants 

Org., Inc. v. Kemp, 956 F.2d 1300, 1302, 1309 (4th Cir. 1992) 

(holding that a nationwide injunction was “appropriately 

tailored to prevent irreparable injury” where the various 

plaintiffs resided in different parts of the country); see also

United States v. AMC Entm’t, Inc., 549 F.3d 760, 770 (9th Cir. 

2008) (“[T]he court has the power to enforce the terms of the 

injunction outside the territorial jurisdiction of the court, 

including issuing a nationwide injunction”). Nonetheless,

equity requires that injunctions be carefully tailored, 

especially where, as here, questions of inter-circuit comity are 

involved. See Va. Soc’y, 263 F.3d at 393-94; AMC Entm’t, 549 

F.3d at 773 (“Principles of comity require that, once a sister 

circuit has spoken to an issue, that pronouncement is the law of 

that geographical area”); id. at 770 (“Courts ordinarily should 

not award injunctive relief that would cause substantial 

interference with another court’s sovereignty”).

Within the 11 States comprising the Eighth and Sixth 

Circuits, courts of appeals have held that Georgia-Pacific may 

not enforce its enMotion mark to prohibit the stuffing of von 
13

Drehle 810-B paper towels into enMotion towel dispensers. For 

us to now countenance an injunction that would give GeorgiaPacific the right to enforce its mark in those States would 

amount to a direct and unseemly affront to those courts. And 

such an affront would only be exacerbated in light of our 

earlier ruling, where we refused to recognize their decisions

due to von Drehle’s tardiness. In addition, upholding the 

nationwide injunction would, as a practical matter, create a 

direct and perhaps irreconcilable conflict as to GeorgiaPacific’s trademark rights in the Eighth and Sixth Circuits, 

leaving litigants and others in those States confused. As a 

matter of comity, therefore, we conclude that the district court 

abused its discretion in extending the injunction to those 

jurisdictions, and accordingly we will not authorize its 

enforcement within the Eighth and Sixth Circuits.

The question remains whether we should nonetheless 

authorize the injunction to operate within those circuits that 

have not yet had occasion to consider these issues. Courts in 

circuits other than the Eighth and Sixth now face a significant 

split of authority regarding the enforceability of GeorgiaPacific’s enMotion trademark in the context of von Drehle’s 

stuffing practices. Were Georgia-Pacific to commence identical 

litigation against von Drehle or one of its distributors in the 

First Circuit, for example, that court would be faced with the 
14

question of whether to follow the Fourth Circuit on the one hand 

or the Eighth and Sixth Circuits on the other. Because the 

forum court should be free to resolve this question, comity also 

requires that we not allow the injunction to extend to the 

remaining circuits. Cf. Va. Soc’y, 263 F.3d at 393-94 (refusing 

to issue an injunction that would have “encroache[d] on the 

ability of other circuits to consider” an important legal 

question and “impos[ed] our view of the law on all the other 

circuits”).

Georgia-Pacific challenges this conclusion on two grounds. 

First, it contends that von Drehle waived any challenge to the 

scope of the injunction because it failed to present the

argument to the district court. The record, however, belies 

this contention. In response to Georgia-Pacific’s motion for a 

permanent injunction, von Drehle argued to the district court 

that the judgment against it “has created a significant split 

with the Sixth and Eighth Circuits” and that the district court 

“cannot and should not enter any injunction which impacts . . . 

the Sixth and Eighth Circuit decisions.” In addition, at the 

hearing before the district court on the motion, von Drehle 

pointed out that “the Eighth Circuit and the Sixth Circuit have 

found [that] this conduct is not infringement” and accordingly 

maintained that, “to the extent [the court] is going to grant an 

injunction, . . . the injunction needs to take . . . into 
15

account [those] rulings.” Finally, it is clear that the 

district court was fully aware of von Drehle’s argument, as 

indicated by its remark to Georgia-Pacific’s attorney during the 

same hearing that “this injunction can’t go into Ohio and 

Tennessee where you’ve lost. It can only hold water where 

you’ve won.”

Second, Georgia-Pacific argues that “there is no basis for 

von Drehle’s claim that the injunction . . . interferes with the 

Myers or Four-U rulings” because “[n]either decision determined

the rights of von Drehle, which was not a party to either case.” 

But such an argument takes a far too technical view of this 

case, especially when considering the inter-circuit comity 

issues involved. Even though there was not a precise identity 

of parties, the fact remains that Georgia-Pacific has been given 

the right to enforce its trademark against von Drehle’s stuffing 

practices in the Fourth Circuit and has been denied that right 

in the Eighth and Sixth Circuits.

Accordingly, for the sake of comity, we require, under the 

unique circumstances of this case, that the injunction be 

limited geographically to the States in this circuit. We 

therefore vacate the injunction granted by the district court 

and remand with instructions to modify it in accordance with 

this opinion.
16

III

In response to Georgia-Pacific’s request for treble 

damages, the district court observed that an award of treble 

damages “is appropriate when there has been a finding of willful 

or intentional infringement.” Georgia-Pacific, 2013 WL 3923984, 

at *2 (citing Larsen v. Terk Techs. Corp., 151 F.3d 140, 150 

(4th Cir. 1998)). After noting that von Drehle’s president had

testified that von Drehle’s 810-B towels were specifically 

designed to fit the Georgia-Pacific enMotion dispensers and that 

he knew that they would be stuffed into enMotion dispensers, the 

court concluded that von Drehle’s infringement was “willful and 

intentional.” Relying on Larsen, it accordingly trebled the 

jury’s award of $791,431 to $2,374,293.

von Drehle contends that the district court erred in 

applying the “willful and intentional” standard from Larsen

because Larsen applied to a recovery under § 1117(b), which 

requires a court to treble damages for a knowing and intentional

use of a counterfeit mark. This case, however, involves a 

recovery of profits under § 1117(a), and therefore, von Drehle 

argues, the court is authorized to adjust the jury’s award only 

if it deems the recovery to be “inadequate or excessive,” and 

then only to compensate the plaintiff, not to punish the 

defendant.
17

Georgia-Pacific argues that although Larsen interprets 

§ 1117(b), it is hardly irrelevant in this case because the 

“counterfeiting claims addressed by [§ 1117(b)] provide a close 

parallel to the claims at issue here.” And it contends that 

“whatever the basis of the plaintiff’s proven injury -- profits, 

damages, or both -- the statute expressly permits the court to 

award a greater sum.”

We agree with von Drehle that, by relying on Larsen and 

awarding treble damages for willful and intentional 

infringement, the district court erroneously conflated § 1117(a) 

and § 1117(b). 

Monetary relief for trademark infringement is provided for 

in 15 U.S.C. § 1117, and each type of monetary award is 

categorized with particularity and separately addressed. 

Section 1117(a), which applies generally to trademark 

infringement cases (and which the parties agree applies in this 

case), authorizes a plaintiff to recover (1) the defendant’s 

profits based simply on proof of the defendant’s sales; (2) the 

plaintiff’s damages; (3) court costs; and (4) in exceptional 

cases, attorneys fees. The section also sets forth the criteria 

and standards for awarding each type of recovery. As to a 

recovery based on the defendant’s profits, § 1117(a) provides:

In assessing profits the plaintiff shall be required 

to prove defendant’s sales only; defendant must prove 

all elements of cost or deduction claimed. . . . If 
18

the court shall find that the amount of the recovery 

based on profits is either inadequate or excessive[,]

the court may in its discretion enter judgment for 

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

to the circumstances of the case. Such sum . . . 

shall constitute compensation and not a penalty.

And as to a recovery based on the plaintiff’s damages, which the 

statute distinguishes from an award based on the defendant’s 

profits, § 1117(a) provides:

In assessing damages the court may enter judgment, 

according to the circumstances of the case, for any 

sum above the amount found as actual damages, not 

exceeding three times such amount. . . . Such 

sum . . . shall constitute compensation and not a 

penalty.

Section 1117(b), on the other hand, mandates the award of 

treble profits or treble damages for a defendant’s “use of [a]

counterfeit mark” if the infringement consists of (1) 

“intentionally using a mark or designation, knowing such mark or 

designation is a counterfeit mark,” or (2) “providing goods or 

services [using such mark], with the intent that the recipient 

of the goods or services would put the goods or services to use

in committing the violation.” 15 U.S.C. § 1117(b) (emphasis 

added). This section also authorizes a court to award 

prejudgment interest for such a violation. Thus, § 1117(b), by

providing for heightened monetary awards, reflects the fact that 

use of a counterfeit mark is “the most blatant and egregious 

form of ‘passing off.’” J. Thomas McCarthy, McCarthy on 

Trademarks and Unfair Competition § 25:10 (4th ed. 2012).
19

Section 1117 provides vastly different legal standards, 

based on the egregiousness of the offense, for determining when 

a district court can modify an award -- distinguishing an award 

for knowingly and intentionally using a counterfeit mark from an 

award for using a noncounterfeit mark. The district court 

therefore erred in relying on Larsen, a case involving a 

counterfeit mark, to award treble damages here.

Nor can Georgia-Pacific seek to justify the award of treble 

damages under the plain language of § 1117(a). Under that 

section, when a plaintiff seeks recovery based on a defendant’s 

profits, the court may adjust the jury’s verdict up or down, but 

only if it finds the amount of recovery to be either “inadequate 

or excessive,” and then only insofar as the adjustment is 

determined to be just and compensatory, not punitive. Accord

Thompson v. Haynes, 305 F.3d 1369, 1380 (Fed. Cir. 2002) (“By 

the terms of the statute, ‘damages’ are to be treated separately 

from ‘profits.’ As for damages, the court may award up to three 

times actual damages, depending on the circumstances of the 

case. As for profits, however, the court is not authorized to 

award up to three times the amount proved. For profits, the 

court is constrained to award the amount proved, subject only to 

an adjustment, up or down, where the recovery would be otherwise 

unjust”); Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 

1157 (7th Cir. 1994) (“[S]ection 1117(a) provides two methods 
20

which the district court can utilize separately or in 

combination to approximate a fair recovery for the plaintiff. 

The first discretionary method is to award up to three times the 

damages plaintiff can actually prove. . . . The second 

discretionary method allows the court to award the plaintiff 

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

circumstances of the case,’ and is premised on the finding that 

‘recovery based on [defendant’s] profits is either inadequate or 

excessive’” (alteration in original) (quoting 15 U.S.C. 

§ 1117(a))). 

In this case, Georgia-Pacific requested a recovery 

consisting only of von Drehle’s profits, and the jury granted 

that request. As counsel for Georgia-Pacific told the jury,

“[t]he damages we want . . . is for them to give up the profits

that they made selling knock off paper to put into our 

trademarked dispenser. . . . [T]hat’s what we’re asking you 

for, the profits, give us the profits that you made trading on 

our name and our trademarks.” Indeed, it is uncontroverted that 

Georgia-Pacific’s only claim for monetary relief in this case 

was based on von Drehle’s profits. And, as noted, when a 

recovery is based on the defendant’s profits, § 1117(a) gives 

the district court the limited discretion to increase the award 

only when and to the extent it deems the award to be inadequate 

to compensate the plaintiff for the defendant’s profits. Here, 
21

there would be no basis for the district court to conclude that 

the jury’s award was inadequate to compensate Georgia-Pacific

because the jury gave Georgia-Pacific virtually all that it

sought. Moreover, Georgia-Pacific has never argued that the 

jury’s award of profits was inadequate. Since enhancement of a 

profits recovery is the only avenue through which GeorgiaPacific could have obtained additional monetary relief under 

§ 1117(a), the district court erred in awarding treble damages, 

which are punitive and are not authorized by § 1117(a) for a 

recovery based on profits.

Georgia-Pacific argues that von Drehle has waived any

argument that treble damages were illegally awarded, contending 

that von Drehle did not present the issue to the district court. 

Again, the record belies this contention. In response to 

Georgia-Pacific’s request for treble damages, von Drehle pointed 

out to the district court that enhanced damages were not 

appropriate because “[t]his case was submitted to the jury on 

Georgia-Pacific’s request for an award of von Drehle’s profits” 

and Georgia-Pacific had presented no evidence that “the verdict 

amount [was] insufficient to compensate [it],” and it referred 

the court directly to § 1117(a). While von Drehle may not have 

presented this argument in as detailed a fashion as it has to us

on appeal, it nonetheless preserved its point for appeal.
22

Accordingly, we reverse the district court’s order awarding 

treble damages and direct the court to enter judgment in the 

amount awarded by the jury, $791,431, which constitutes von 

Drehle’s profits from the sale of its 810-B paper towels from 

January 7, 2005, through the end of 2011.

IV

The district court also awarded Georgia-Pacific attorneys 

fees of $2,225,782.35, finding that von Drehle’s “willful and 

intentional” infringement rendered this case “exceptional,” as 

that term is used in 15 U.S.C. § 1117(a). Georgia-Pacific, 2013 

WL 3923984, at *2. Section 1117(a) provides, “The court in 

exceptional cases may award reasonable attorney fees to the 

prevailing party.” (Emphasis added). The court based its 

willful-and-intentional finding on the fact that von Drehle 

specifically designed its 810-B paper towels for use in GeorgiaPacific’s enMotion dispenser and knew that they would be stuffed 

in those dispensers.

von Drehle contends that this case is not “exceptional,” as 

that term is used in § 1117(a), and that the district court 

erroneously relied on its purposeful conduct in distributing

towels for use in Georgia-Pacific’s enMotion machines,

conflating willful and intentional conduct with willful and 
23

intentional infringement. We agree, especially since von Drehle 

reasonably believed that its conduct was lawful.

We have defined the “exceptional” case for purposes of 

§ 1117(a) “as one in which ‘the defendant’s conduct was 

malicious, fraudulent, willful or deliberate in nature.’” 

Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535, 550 (4th 

Cir. 2004) (quoting PETA v. Doughney, 263 F.3d 359, 370 (4th 

Cir. 2001)). But, in this context, the word “willful” does not 

mean that the defendant’s actions were merely volitional, but 

rather that the defendant acted with the intent to infringe the 

plaintiff’s protected mark. See, e.g., In re Outsidewall Tire 

Litig., 748 F. Supp. 2d 557, 562 (E.D. Va. 2010) 

(“‘[W]illfulness’ means more than simply that the act of 

infringement was done voluntarily and intentionally and not 

because of accident or other innocent reason” (internal 

quotation marks and citation omitted)); Vanwyk Textile Sys., 

B.V. v. Zimmer Mach. Am., Inc., 994 F. Supp. 350, 381 (W.D.N.C. 

1997) (“Willfulness in performing the act . . . does not 

necessarily mean willfulness in violating the law. Willfulness 

in violating the law may qualify the case as exceptional” 

(citation omitted)); accord Badger Meter, 13 F.3d at 1159 (“We 

do not agree that intentionally copying a competitor’s product, 

even if this is later determined to involve trade dress 

infringement, by itself constitutes ‘willful’ infringement 
24

. . .”); Tex. Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc., 

951 F.2d 684, 696-97 (5th Cir. 1992) (noting that the attorneys 

fees provision in § 1117(a) “has been interpreted by courts to 

require a showing of a high degree of culpability on the part of 

the infringer”). To affirm the district court’s application of 

its volitional standard would mean that every Lanham Act case 

would qualify as “exceptional” unless the defendant could show 

that it unintentionally or mistakenly performed the actions 

later found to be a violation of the Act.

More importantly, after the court had received the parties’ 

briefs in this case, the Supreme Court handed down its decision

in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. 

Ct. 1749 (2014). While Octane Fitness did not construe 

§ 1117(a), it did construe a parallel and identical provision in 

the Patent Act, which provides, “The court in exceptional cases 

may award reasonable attorney fees to the prevailing party.” 

35 U.S.C. § 285. The Federal Circuit had previously given § 285 

a narrow interpretation, concluding:

A case may be deemed exceptional when there has been 

some material inappropriate conduct related to the 

matter in litigation, such as willful infringement, 

fraud or inequitable conduct in procuring the patent, 

misconduct during litigation, vexatious or unjustified 

litigation, conduct that violates Fed. R. Civ. P. 11, 

or like infractions. Absent misconduct in conduct of 

the litigation or in securing the patent, sanctions 

may be imposed against the patentee only if both 

(1) the litigation is brought in subjective bad faith, 

and (2) the litigation is objectively baseless.
25

Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d 

1378, 1381 (Fed. Cir. 2005) (citation omitted). But the Supreme 

Court rejected the Federal Circuit’s interpretation of 

“exceptional,” describing the Federal Circuit’s test as “unduly 

rigid.” Octane Fitness, 134 S. Ct. at 1755. Relying on the 

statute’s simple text and dictionary definitions of 

“exceptional,” the Court concluded:

[A]n ‘exceptional’ case is simply one that stands out 

from others with respect to the substantive strength 

of a party’s litigating position (considering both the 

governing law and the facts of the case) or the 

unreasonable manner in which the case was litigated. 

District courts may determine whether a case is 

‘exceptional’ in the case-by-case exercise of their 

discretion, considering the totality of the

circumstances.

Id. at 1756. The Court then pointed the district courts to the 

same nonexclusive list of factors that it had previously 

identified as relevant for use in determining whether to award 

attorneys fees under a similar provision of the Copyright Act, a 

list that included “frivolousness, motivation, objective 

unreasonableness (both in the factual and legal components of 

the case) and the need in particular circumstances to advance

considerations of compensation and deterrence.” Id. at 1756 n.6 

(quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 

(1994)) (internal quotation marks omitted).

To be sure, the Octane Fitness Court did not interpret the 

attorneys fees provision of § 1117(a). But the language of 
26

§ 1117(a) and § 285 is identical, and we conclude that there is 

no reason not to apply the Octane Fitness standard when 

considering the award of attorneys fees under § 1117(a). See

Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 314-15 (3d 

Cir. 2014) (“While Octane Fitness directly concerns the scope of 

a district court’s discretion to award fees for [an] 

‘exceptional’ case under § 285 of the Patent Act, the case 

controls our interpretation of [§ 1117(a)]. Not only is § 285 

identical to [§ 1117(a)], but Congress referenced § 285 in 

passing [§ 1117(a)]”).

Thus, we conclude that a district court may find a case 

“exceptional” and therefore award attorneys fees to the 

prevailing party under § 1117(a) when it determines, in light of 

the totality of the circumstances, that (1) “there is an unusual 

discrepancy in the merits of the positions taken by the 

parties,” Fair Wind Sailing, 764 F.3d at 315, based on the nonprevailing party’s position as either frivolous or objectively 

unreasonable, see Octane Fitness, 134 S. Ct. at 1756 n.6; (2) 

the non-prevailing party “has litigated the case in an 

‘unreasonable manner,’” Fair Wind Sailing, 764 F.3d at 315 

(quoting Octane Fitness, 134 S. Ct. at 1756); or (3) there is 

otherwise “the need in particular circumstances to advance 

considerations of compensation and deterrence,” Octane Fitness, 
27

134 S. Ct. at 1756 n.6 (quoting Fogerty, 510 U.S. at 534 n.19) 

(internal quotation marks omitted).

Because the district court did not have the benefit of the 

Octane Fitness standard when considering whether Georgia-Pacific 

was entitled to attorneys fees under § 1117(a), we vacate the 

court’s award of attorneys fees and remand the question for 

further consideration in light of this standard. 

V

Finally, the district court awarded Georgia-Pacific

prejudgment interest in the amount of $204,450, based on its 

conclusion that this was an “exceptional” case. GeorgiaPacific, 2013 WL 3923984, at *3.

von Drehle contends that the district court erred in 

awarding prejudgment interest because (1) prejudgment interest 

is not an available remedy under 15 U.S.C. § 1117(a), and (2) in 

any event, this is not an “exceptional” case.

Section 1117, authorizing monetary relief for trademark 

infringement, particularizes in considerable detail the types of 

monetary relief available for trademark infringement and defines

the criteria for awarding each type. It thus authorizes, in 

specified circumstances, awards of (1) the defendant’s profits; 

(2) the plaintiff’s damages; (3) court costs; (4) attorneys 

fees; (5) treble profits or treble damages; (6) prejudgment 
28

interest; and (7) statutory damages. Because Congress 

legislated with great precision in providing when each

particular type of monetary relief is available, it is 

appropriate to conclude that if Congress provided for a certain 

type of monetary relief only in a given specified circumstance, 

that type of relief is not available in other circumstances. 

For example, in § 1117(a), a plaintiff may be awarded the 

defendant’s profits based only on proof of the defendant’s 

sales, subject to a specific adjustment when necessary to 

compensate for an inadequate or an excessive award of profits. 

Yet in § 1117(b), a plaintiff may be awarded three times the 

defendant’s profits when the specific criteria of § 1117(b) are 

satisfied. Similarly, as relevant here, § 1117(b) authorizes an 

award of prejudgment interest in cases involving the knowing and 

intentional use of a counterfeit mark, but § 1117 makes no 

express provision for prejudgment interest in other 

circumstances. 

To be sure, as a general matter, prejudgment interest may

be awarded at the district court’s discretion unless the 

applicable statute provides otherwise. See Quesinberry v. Life 

Ins. Co. of N. Am., 987 F.2d 1017, 1030 (4th Cir. 1993) (en 

banc). But when, as here, a statute provides particularized 

forms of monetary relief and explicitly authorizes prejudgment 

interest in some circumstances but not others, we conclude that 
29

prejudgment interest is not intended to be awarded except as 

provided in the statute. See Moscow Distillery Cristall v. 

Pepsico, Inc., Nos. 96-36217, 96-36249, 96-36250, 1998 WL 

101696, at *3 (9th Cir. Mar. 9, 1998) (“Prejudgment interest is 

available under the Lanham Act only for counterfeiting . . .” 

(citing 15 U.S.C. § 1117(b))). As relevant here, § 1117(a) 

makes no specific provision for prejudgment interest in cases 

involving a recovery of a defendant’s profits, nor does

prejudgment interest itself constitute a profit, as that term is 

generally used.

We recognize that at least one court has authorized 

prejudgment interest under § 1117(a) in an “exceptional” case. 

See Am. Honda Motor Co. v. Two Wheel Corp., 918 F.2d 1060, 1064 

(2d Cir. 1990). But we can find no support for its conclusion

in the text of the statute. Indeed, § 1117(a) employs the 

“exceptional case” standard only for an award of attorneys fees, 

not prejudgment interest.

That said, we do not categorically foreclose an award of 

prejudgment interest under § 1117(a) as an element of a damages

award in a trademark infringement case. To be sure, one’s loss 

of the use of a particular sum of money over a period of time 

causes damage, for which the law generally allows an award of 

prejudgment interest. See generally Monessen Sw. Ry. Co. v. 

Morgan, 486 U.S. 330, 335 (1988) (“Prejudgment interest is 
30

normally designed to make the plaintiff whole and is part of the 

actual damages sought to be recovered”); Johnson v. Cont’l 

Airlines Corp., 964 F.2d 1059, 1063 (10th Cir. 1992) 

(“[P]rejudgment interest is an integral element of compensatory 

damages . . .”). But, in this case, Georgia-Pacific did not 

undertake to prove its own damages, claiming instead only a 

disgorgement of von Drehle’s gross profits.

For these reasons, we reverse the district court’s award of 

prejudgment interest to Georgia-Pacific.

VI

In sum, we vacate the district court’s injunction and its 

award of attorneys fees and remand for further proceedings 

consistent with this opinion. We reverse its awards of treble 

damages (leaving in place the jury’s award of profits) and 

prejudgment interest.

IT IS SO ORDERED.
31

SHEDD, Circuit Judge, concurring in part and dissenting in part:

I agree with the majority except for its unnecessary 

restriction of the nationwide injunction entered by the district 

court in response to von Drehle Corporation’s unlawful actions.1

In 2013, we affirmed a jury verdict in favor of Georgia-Pacific 

Consumer Products, LP on its contributory infringement claim 

against von Drehle, and we remanded the case for further 

proceedings, including consideration of Georgia-Pacific’s 

request for injunctive relief. Despite the fact that GeorgiaPacific had by that time lost similar litigation in the Eighth 

and Sixth Circuits, we rejected von Drehle’s belated attempt to 

assert claim and issue preclusion as affirmative defenses, and 

we also found that there were no “special circumstances” 

(including comity) permitting the district court to raise the 

preclusion defenses sua sponte. On remand, the district court 

permanently enjoined von Drehle from interfering with GeorgiaPacific’s trademark rights. The parties agree that the scope of 

the injunction is nationwide.

Viewing this appeal under our normal standard of review, 

the district court did not abuse its broad equitable discretion 

by entering a nationwide injunction. The majority’s contrary 

 1

Despite my partial concurrence, I do not agree with the 

majority’s assertion that “von Drehle reasonably believed that 

its [infringing] conduct was lawful.” Majority Op., at 23.
32

decision, limiting the scope of the injunction to the states 

within this circuit, is based on misapplication of the 

discretionary doctrine of comity; fails to accord proper respect 

to our 2013 opinion; and runs counter to a fundamental purpose 

of the Lanham Act, which is “to provide national protection for 

trademarks used in interstate and foreign commerce.” Park ’N 

Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193 

(1985). The result of the majority’s opinion is that GeorgiaPacific will be deprived of the complete and effective relief to 

which it is entitled, and von Drehle, relying on that opinion, 

will believe that it is permitted to continue interfering with 

Georgia-Pacific’s trademarks in 45 states. The Lanham Act 

authorizes federal courts to issue injunctive relief “according 

to the principles of equity and upon such terms as the court may 

deem reasonable,” 15 U.S.C. § 1116(a), but there is nothing 

equitable or reasonable about this result, and its peculiarity 

is self-evident, see, e.g., United States Jaycees v. 

Philadelphia Jaycees, 639 F.2d 134, 142 (3rd Cir. 1981) 

(“Protection of infringers is not a purpose of the Lanham Act. 

On the contrary, the Act’s objective is the protection of the 

trademark and the public.”).

I

We have previously detailed the history of this and related 

litigation. See Georgia-Pacific Consumer Prods., LP v. von 
33

Drehle Corp., 618 F.3d 441 (4th Cir. 2010) (“Georgia-Pacific 

I”); Georgia-Pacific Consumer Prods., LP v. von Drehle Corp., 

710 F.3d 527 (4th Cir.) (“Georgia-Pacific II”), cert. denied, 

134 S.Ct. 393 (2013). I will highlight certain aspects of this 

litigation history to better explain my disagreement with the 

majority’s decision.

Since the early 2000s, Georgia–Pacific has manufactured and 

marketed throughout the country a touchless paper towel 

dispenser under the “enMotion” product line. The dispenser is 

designed for use in the “away-from-home” restroom market, and 

Georgia-Pacific owns several federally registered trademarks 

associated with the enMotion line. The Georgia-Pacific dispenser 

was different in size and dimensions from competing dispensers, 

and Georgia–Pacific developed high-quality paper towels that 

were designed specifically for use in the Georgia-Pacific 

dispensers. Georgia-Pacific leased its dispensers to 

distributors. The leases between Georgia–Pacific and its 

distributors, and the subleases that the distributors were 

required to enter into with end-user customers such as hotels 

and restaurants, stipulated that only Georgia-Pacific paper 

towels were to be used in the dispensers.

In July 2005, Georgia-Pacific filed this lawsuit against 

von Drehle in the Eastern District of North Carolina asserting 

several claims for relief, including one for contributory 
34

trademark infringement in violation of 15 U.S.C. § 1114(1).2 The 

gist of the contributory infringement claim is that von Drehle, 

a North Carolina corporation with its principal place of 

business in Hickory, North Carolina, manufactured and marketed 

nationally a line of paper towels (sometimes referred to as “the 

810-B paper towels”) that were designed for use in GeorgiaPacific’s paper towel dispensers. “The von Drehle paper towels 

were inferior in quality to the [Georgia-Pacific] paper towels, 

but von Drehle and its distributors marketed the von Drehle 

paper towels as a cheaper alternative for use in the [GeorgiaPacific] dispensers, a practice known in the industry as 

‘stuffing.’” Georgia-Pacific II, 710 F.3d at 529.

Partially due to an erroneous summary judgment ruling in 

von Drehle’s favor, which we vacated in our 2010 Georgia-Pacific 

I decision, over six years elapsed before Georgia-Pacific was 

able to present its contributory trademark infringement claim to 

a jury. During a January 2012 trial, the jury found in Georgia–

Pacific’s favor and awarded damages in the amount of $791,431, 

which represent “all of the profits that von Drehle earned from 

 2

See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 

854 (1982) (“[I]f a manufacturer or distributor intentionally 

induces another to infringe a trademark, or if it continues to 

supply its product to one whom it knows or has reason to know is 

engaging in trademark infringement, the manufacturer or 

distributor is [contributorily] responsible for any harm done as 

a result of the deceit.” (emphasis added)).
35

the sale of its 810-B paper towels from 2005 to the date of 

trial.” Majority Op., at 4. In the damages award, no distinction 

has ever been made between the profits earned from von Drehle’s 

sales within or outside the Fourth Circuit.

Initially, Georgia-Pacific’s victory was short-lived. Two 

months after trial, the North Carolina district court (acting on 

von Drehle’s motion and sua sponte) set aside the jury verdict 

and granted judgment as a matter of law to von Drehle based on 

grounds of claim and issue preclusion. See Georgia-Pacific 

Consumer Prods., LP v. von Drehle Corp., 856 F.Supp.2d 750 

(E.D.N.C. 2012). The court’s decision stemmed from the judgments 

in two related cases filed by Georgia-Pacific against von Drehle 

distributors. In both cases, Georgia-Pacific asserted, among 

other things, a claim for contributory trademark infringement 

based on these distributors’ marketing of the von Drehle paper 

towels for use in Georgia-Pacific’s dispensers.3

 3

Von Drehle has criticized Georgia-Pacific’s “multi-front 

litigation” strategy, but “[e]ffective enforcement of trademark 

rights is left to the trademark owners and they should, in the 

interest of preventing purchaser confusion, be encouraged to 

enforce trademark rights.” Scotch Whisky Ass’n v. Majestic 

Distilling Co., 958 F.2d 594, 599 (4th Cir. 1992) (internal 

punctuation and citation omitted). Moreover, under the 

majority’s view that the nationwide injunction is inappropriate, 

Georgia-Pacific will be required to engage in a multi-front 

strategy in the future to protect its trademark rights.
36

Georgia-Pacific filed the first of these cases in September 

2008 - more than three years after it filed this action - in the 

Western District of Arkansas against Myers Supply, Inc. In July 

2009, while the original case against von Drehle was pending in 

the North Carolina district court, the Arkansas district court 

conducted a bench trial and ruled against Georgia-Pacific. 

Applying a different legal analysis than the one we set forth in 

Georgia-Pacific I, see Georgia-Pacific II, 710 F.3d at 531 n.5, 

the Arkansas district court determined that Myers Supply was 

aware that its customers were “stuffing” von Drehle paper towels 

into Georgia-Pacific’s dispensers, but the stuffing did not 

create a likelihood of confusion as to the origin of the paper 

towels and, therefore, did not constitute trademark 

infringement. The Eighth Circuit subsequently affirmed the 

Arkansas district court decision. See Georgia-Pacific Consumer 

Prods. LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir. 2010).

Georgia-Pacific filed the second action in May 2009 against 

Four-U-Packaging, Inc. in the Northern District of Ohio. In 

November 2011, shortly before trial in the North Carolina 

district court, the Ohio district court granted summary judgment 

against Georgia-Pacific, holding that the action was barred by 

the judgment in the Myers Supply case. See Georgia-Pacific 

Consumer Prods. LP v. Four-U-Packaging, Inc., 821 F.Supp.2d 948 

(N.D. Ohio 2011). In December 2012, while Georgia-Pacific’s 
37

appeal of the North Carolina district court’s decision to grant 

judgment as a matter of law to von Drehle was pending in this 

Court, the Sixth Circuit affirmed the Ohio district court 

decision. See Georgia-Pacific Consumer Prods. LP v. Four-UPackaging, Inc., 701 F.3d 1093 (6th Cir. 2012). The Sixth 

Circuit based its ruling in part on the fact that the North 

Carolina district court had set aside the jury verdict against 

von Drehle and dismissed the case. The Sixth Circuit explained 

that a primary goal of issue preclusion “is to ‘foster[] 

reliance on judicial action by minimizing the possibility of 

inconsistent decisions,’” and it concluded that “[b]ecause 

judgment in Georgia–Pacific’s favor was set aside, application 

of issue preclusion in this case poses no risk of creating 

inconsistent rulings.” Id. at 1103 (quoting Montana v. United 

States, 440 U.S. 147, 153–54 (1979)).

At the time, the Sixth Circuit’s observation about the 

status of the North Carolina district court case was accurate. 

However, four months after the Sixth Circuit’s decision, we held 

in Georgia-Pacific II that the North Carolina district court 

erred in setting aside the jury verdict and awarding judgment in 

favor of von Drehle. We first concluded that von Drehle waived 

the preclusion defenses by not asserting them in a timely manner 

and, therefore, the district court abused its discretion by 

considering them. As we explained, von Drehle’s counsel had been 
38

immediately notified of the 2009 Arkansas district court 

decision in Myers Supply, but von Drehle waited approximately 

480 days before attempting to amend its answer to assert 

preclusion as an affirmative defense.

More pertinent to the comity issue on which the majority 

relies, we also held that the North Carolina district court 

erred by considering the preclusion defenses sua sponte. 

Notably, von Drehle specifically argued to us that the district 

court was empowered to act sua sponte “where, as here, all 

relevant data and legal records are before the court and the 

demands of comity, continuity in the law, and essential justice 

mandate judicial invocation of the principles of res judicata.” 

Brief of Appellee, No. 12-1444, at 30 (4th Cir. Sept. 6, 2012) 

(emphasis added) (internal punctuation and citation omitted). 

Further, von Drehle argued that “[i]n raising preclusion on its 

own motion as an independent ground for dismissal, the trial 

court was protecting not just itself, but also the entire 

judiciary. . . .” Id. at 31.

We recognized that sua sponte consideration of a preclusion 

defense may be appropriate in “‘special circumstances,’” such as 

when a court is on notice that it has previously decided the 

issue in another case and raises the defense to avoid 

“‘unnecessary judicial waste.’” Georgia-Pacific II, 710 F.3d at 

535 (quoting Ariz. v. Calif., 530 U.S. 392, 412 (2000)). 
39

However, despite von Drehle’s invocation of the doctrine of 

comity and the need to protect “the entire judiciary,” we found 

that “von Drehle [had] not identified [any] ‘special 

circumstance’ justifying the district court’s unusual action.” 

Georgia-Pacific II, 710 F.3d at 535. We explained that “this 

case was particularly ill-suited for sua sponte consideration of 

preclusion defenses that were known long before trial, given 

that the issue of trademark infringement already had been 

decided by the jury. Thus, the district court’s sua sponte 

consideration of the preclusion defenses actually wasted 

judicial resources, rather than sparing them.” Id.

Finally, we also observed that by relying on Myers Supply

as grounds for setting aside the jury verdict, the district 

court violated the mandate rule because it failed to “implement 

both the letter and spirit” of the mandate of Georgia-Pacific I. 

Georgia-Pacific II, 710 F.3d at 536 n.13. For all of these 

reasons, we remanded this case “with the specific instruction 

that the district court reinstate the jury verdict in favor of 

Georgia–Pacific and consider Georgia–Pacific’s requests for 

injunctive and other appropriate relief.” Id. at 536.

Von Drehle petitioned for panel rehearing or rehearing en 

banc arguing, among other things, that “[a]voiding conflict with 

sister circuits is especially important,” and the panel’s waiver 

analysis “violates principles of comity, fairness, and justice.” 
40

Pet. for Reh’g or Reh’g En Banc, No. 12-1444, at 10 (4th Cir. 

Mar. 28, 2013) (emphasis added). Further, von Drehle again 

invoked “the demands of comity” in seeking to justify the 

district court’s sua sponte consideration of the preclusion 

defenses, and it noted that “[u]nder the panel’s holding, there 

will now be years of litigation as [Georgia-Pacific] invokes the 

result here and seeks to apply it to new and pending cases, 

seeking to undo the decisions in Myers, Four-U, and the two 

Courts of Appeals that have affirmed those decisions.” Id. at 

15. Von Drehle concluded that it “is difficult to imagine a 

result less conducive to judicial efficiency or less respectful 

of the decisions of coordinate courts that have previously 

addressed the identical dispute.” Id. The rehearing petition was 

denied. Von Drehle subsequently asserted comity as a ground 

warranting review in its unsuccessful petition for certiorari 

review of the Georgia-Pacific II decision. See Pet. for Writ of 

Cert., No. 13-41, at 22-25 (U.S. July 8, 2013).

On remand to the North Carolina district court, the parties 

briefed and argued whether Georgia-Pacific is entitled to 

injunctive relief and, if so, what the scope of that relief 

should be. Regarding the scope, von Drehle argued (among other 

things) that any injunction “should be narrowly tailored to 

protect the legitimate rights of von Drehle and its 

distributors” and “must account for the rulings of the Eighth 
41

and Sixth Circuits and for [Georgia-Pacific’s] position that 

each distributor and each state are different.” von Drehle 

Corp.’s Response in Opp. to Georgia-Pacific’s Renewed Mot. for 

Perm. Inj., No. 5:05cv478-BO(1), at 16 (E.D.N.C. May 24, 2013). 

However, despite specifically arguing in the Georgia-Pacific II

appeal and petition for certiorari review that the doctrine of 

comity factors in this case, von Drehle does not appear to have 

specifically invoked comity as a basis for denying or limiting 

injunctive relief.4

Following full briefing and a hearing, the North Carolina 

district court granted Georgia-Pacific’s motion for injunctive 

relief. Applying the proper legal test, which it gleaned from 

eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), the court 

found: (1) Georgia-Pacific “suffered irreparable injury to its 

trademark and the reputation of its enMotion brand” by von 

Drehle’s infringing activities, which prevented Georgia-Pacific 

“from controlling the quality of paper towels dispensed from its 

enMotion dispensers and further confused and deceived 

customers;” (2) the jury award is inadequate as it would not 

 4

In addition to not arguing comity per se before the North 

Carolina district court, von Drehle did not cite to any 

authority holding that comity warranted denial or limitation of 

injunctive relief. This fact stands in contrast to von Drehle’s 

argument to us. See Appellant’s Opening Brief, at 50-56 (citing 

Va. Soc’y for Human Life, Inc. v. FEC, 263 F.3d 379 (4th Cir. 

2001), and arguing that the injunction “violates this Court’s 

precedent and basic principles of comity”). 
42

prevent von Drehle “from continu[ing] to infringe in the future, 

policing [von Drehle’s] sales of its paper towels would be 

onerous, and [von Drehle] has asserted throughout that its 

actions did not constitute trademark infringement;” (3) the 

balance of hardship favors Georgia-Pacific as von Drehle’s 

“activities have been found to have infringed [GeorgiaPacific’s] trademarks and [von Drehle] has no equitable interest 

in perpetrating trademark infringement;” and (4) “the public 

interest is best served by a permanent injunction that would 

prevent further trademark infringement.” J.A. 854 (internal 

punctuation and citations omitted). Based on these findings, the 

court enjoined von Drehle “from interfering directly or 

indirectly” with Georgia-Pacific’s trademark rights and 

specified that “any deliberate or purposeful placement” of von 

Drehle’s paper towels in Georgia-Pacific’s enMotion dispensers 

“shall constitute a violation of this permanent injunction.” 

J.A. 855.

II

“A federal court has broad power to restrain acts which are 

of the same type or class as unlawful acts which the court has 

found to have been committed or whose commission in the future 

unless enjoined, may fairly be anticipated from the defendant’s 

conduct in the past.” NLRB v. Express Pub. Co., 312 U.S. 426, 

435 (1941). As a general rule, a federal court’s injunctive 
43

order “operate[s] continuously and perpetually upon the [party] 

in relation to the prohibited conduct,” and it extends 

“throughout the United States.” Leman v. Krentler-Arnold Hinge 

Last Co., 284 U.S. 448, 451 (1932).

The Lanham Act reflects this broad power, authorizing 

federal courts to issue injunctive relief to a prevailing 

plaintiff “according to the principles of equity and upon such 

terms as the court may deem reasonable.” 15 U.S.C. § 1116(a). 

When trademark infringement has been proven, “an injunction is 

the preferred remedy to insure that future violations will not 

occur,” Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., 

Inc., 43 F.3d 922, 939 (4th Cir. 1995) (internal punctuation and 

citation omitted), and it should be crafted to provide complete 

relief to the plaintiff, PBM Prods, LLC v. Mead Johnson & Co., 

639 F.3d 111, 128 (4th Cir. 2011). The “scope of injunctive 

relief is dictated by the extent of the violation established,” 

Califano v. Yamasaki, 442 U.S. 682, 702 (1979), and the Lanham 

Act authorizes a district court to enter a nationwide injunction 

prohibiting trademark infringement, see Majority Op., at 11. 

A trademark plaintiff who is entitled to injunctive relief 

“is entitled to effective relief; and any doubt in respect of 

the extent thereof must be resolved in its favor as the innocent 

producer and against the [defendant], which has shown by its 

conduct that it is not to be trusted.” William R. Warner & Co. 
44

v. Eli Lilly & Co., 265 U.S. 526, 532 (1924). “The decision to 

grant or deny permanent injunctive relief is an act of equitable 

discretion by the district court, reviewable on appeal for abuse 

of discretion.” eBay, Inc., 547 U.S. at 391. Under this 

standard, we are not at liberty to disturb an injunction simply 

because we would have decided the matter differently in the 

first instance. Centro Tepeyac v. Montgomery County, 722 F.3d 

184, 188 (4th Cir. 2013) (en banc). Instead, we may find an 

abuse of discretion only if the court applied an incorrect 

injunction standard, rested its decision on a clearly erroneous 

finding of a material fact, or misapprehended the law with 

respect to underlying issues in litigation. Id.

Viewing this appeal properly and under this standard, the 

district court did not abuse its discretion. The court applied 

the correct injunction standard, did not rely on a clearly 

erroneous finding of material fact, and did not misapprehend the 

law with respect to the underlying issues of this case. Notably, 

the majority does not challenge the court’s determination that 

injunctive relief is necessary to provide complete relief to 

Georgia-Pacific for von Drehle’s infringing activities; does not 

quarrel with the language of the injunction order prohibiting 

von Drehle “from interfering directly or indirectly” with 

Georgia-Pacific’s trademark rights and specifying that “any 

deliberate or purposeful placement” of von Drehle’s paper towels 
45

in Georgia-Pacific’s enMotion dispensers “shall constitute a 

violation of this permanent injunction;” and does not assert 

that the evidence presented below fails to support the court’s 

determination that a nationwide injunction is warranted.

Instead, relying on the doctrine of comity, the majority 

holds that the nationwide scope of the injunction is overbroad 

under the circumstances of this case. In the majority’s view, 

the injunction should not extend to the Eighth and Sixth 

Circuits, which (respectively) decided Myers Supply and Four-UPackaging, because that “would amount to a direct and unseemly 

affront to those courts” and would “create a direct and perhaps 

irreconcilable conflict as to Georgia-Pacific’s trademark rights 

[in those circuits], leaving litigants and others in those 

States confused.” Majority Op., at 13. The majority extends its 

limitation on the injunction to the remainder of the federal 

circuits (other than the Fourth Circuit) because courts in those 

circuits – when presented with litigation involving GeorgiaPacific’s trademarks – “would be faced with the question of 

whether to follow the Fourth Circuit on the one hand or the 

Eighth and Sixth Circuits on the other.” Id. at 13-14.

The doctrine of comity is “not a rule of law, but one of 

practice, convenience, and expediency.” Mast, Foos, & Co. v. 

Stover Mfg. Co., 177 U.S. 485, 488 (1900). “It is something more 

than mere courtesy, which implies only deference to the opinion 
46

of others, since it has a substantial value in securing 

uniformity of decision, and discouraging repeated litigation of 

the same question. But its obligation is not imperative.” Id.

(emphasis added). Although “comity governs relations between 

courts of the same sovereign,” Ulmet v. United States, 888 F.2d 

1028, 1031 (4th Cir. 1989), the rule is rarely applied in this 

context, and only when it is essential to avoid “an unnecessary 

burden on the federal judiciary” and to prevent “the 

embarrassment of conflicting judgments.” In re Naranjo, 768 F.3d 

332, 348 (4th Cir. 2014) (internal punctuation and citation 

omitted).

In this context, comity is closely akin to the doctrines of 

issue and claim preclusion, see Allen v. McCurry, 449 U.S. 90, 

95-96 (1980) (explaining that “res judicata and collateral 

estoppel not only reduce unnecessary litigation and foster 

reliance on adjudication, but also promote the comity between 

state and federal courts that has been recognized as a bulwark 

of the federal system”). Like those doctrines, “[c]omity works 

most efficiently where previously filed litigation is brought 

promptly to the attention of the district court, and the court 

defers,” Church of Scientology of Cal. v. U.S. Dept. of Army, 

611 F.2d 738, 750 (9th Cir. 1980). 
47

III

The majority’s limitation of the scope of the injunction to 

the five states within this circuit deprives Georgia-Pacific of 

the complete and effective relief to which it is entitled. I 

have concerns generally about utilizing the doctrine of comity 

in this manner. See United States v. Gillock, 445 U.S. 360, 373 

(1980) (noting that “where important federal interests are at 

stake, . . . comity yields”); Nelson v. Berry, 59 F.2d 351, 353 

(Ct. Cust. and Pat. App. 1932) (noting that when applying the 

doctrine of comity, “courts are not at liberty to disregard 

rights which the law assures to litigants”). However, I will 

limit my discussion to two specific reasons why I believe the 

majority has erred.

First, in Georgia-Pacific II, we rejected application of 

the comity doctrine in this litigation. As noted, by the time we 

decided Georgia-Pacific II, both the Eighth and Sixth Circuits 

had resolved the Myers Supply and Four-U-Packaging cases, and we 

were presented squarely with the question of whether “special 

circumstances” existed to warrant the district court’s sua 

sponte consideration of von Drehle’s preclusion defenses based 

on those cases. Despite von Drehle’s invocation of the comity 

doctrine, we held that no “special circumstances” justified the 

district court’s action. In other words, in what some could 

consider to have been the creation of an “embarrassment of 
48

conflicting judgments,” see In re Naranjo, 768 F.3d at 348, and 

“a direct and unseemly affront” to the Sixth and Eighth 

Circuits, Majority Op., at 13, we rejected “the demands of 

comity,” Brief of Appellee, No. 12-1444, at 30 (4th Cir. Sept. 

6, 2012), allowed the jury verdict in favor of Georgia-Pacific 

to stand, and remanded the case for the district court to 

consider Georgia-Pacific’s request for injunctive and other 

relief.

Of course, the injunction per se was not then before us, 

but the same comity concerns now raised by von Drehle and the 

majority were. Given that we had previously admonished the 

district court of its obligation to “implement both the letter 

and spirit” of our mandate, Georgia-Pacific II, 710 F.3d at 536 

n.13, it is hardly surprising that the court determined that the 

comity doctrine had no bearing on the scope of injunctive relief 

to which Georgia-Pacific is entitled. Indeed, our rejection of 

the comity doctrine arguably had become – and remains - the law 

of the case. See Winston v. Pearson, 683 F.3d 489, 498 (4th Cir. 

2012) (explaining law of the case doctrine). Under these 

circumstances, where von Drehle barely argued (if at all) comity 

in opposition to the injunction request and the court’s 

injunction order is entirely consistent with our mandate, the 

court did not abuse its discretion.
49

Second, and in any event, the comity doctrine applied by 

the majority simply has no bearing in this case. Georgia-Pacific 

proved at trial that von Drehle infringed on its trademark 

rights on a national scale, we affirmed that judgment in 

Georgia-Pacific II, and the nationwide injunction prohibits von 

Drehle – and no one else – from further infringement. Like all 

injunction cases, the district court retains the power to 

enforce its injunction against von Drehle by contempt 

proceedings, but it has no authority under the injunction to 

command any other party (or any court) with respect to GeorgiaPacific’s trademarks.5

Nothing about this rather ordinary process undermines the 

law in any other circuit, where any party other than von Drehle 

is currently permitted (at their own risk) to “stuff” GeorgiaPacific’s dispensers. If Georgia-Pacific chooses to litigate its 

trademark rights against other parties in other circuits, the 

nationwide injunction will not preclude courts in those circuits 

from deciding all pertinent issues, including trademark and 

 5

Under the majority’s rationale, I cannot help but wonder 

when my colleagues would ever uphold a nationwide injunction. 

Anytime such an injunction is entered, the argument could be 

made that the injunction interferes with other courts’ ability 

to decide the matter at issue.
50

preclusion issues.6 Of course, those courts will be presented 

with the so-called “embarrassment” of the conflicting circuit 

court judgments, but that circumstance arose when we filed 

Georgia-Pacific II, not when the district court enjoined von 

Drehle, and it remains in existence regardless of whether the 

injunction is limited or not.7

The facts and circumstances of this case differ from 

Virginia Society for Human Life, a case in which we vacated a 

nationwide injunction based on the comity doctrine. There, an 

issue advocacy group sued the Federal Election Commission 

(“FEC”) seeking a declaration that a particular regulation was 

unconstitutional. The district court held that the regulation 

was unconstitutional and issued a nationwide injunction 

preventing the FEC from enforcing the regulation. We found the 

injunction to be overbroad for two reasons. First, we concluded 

 6

In that event, under the generally prevailing “last in 

time” rule, the later judgment – i.e., Georgia-Pacific II -

would likely be accorded preclusive effect. See, e.g., Fresenius

USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1347 n.14 (Fed. 

Cir. 2013) (noting that where final judgments conflict, “the 

settled rule is that the later judgment, not the earlier, has 

preclusive force going forward”).

7

Contrary to the majority’s concern, the “conflict” between 

the various judgments is not necessarily unseemly. As the 

Supreme Court has explained: “Although the application of a 

federal statute such as the Lanham Act by judges and juries in 

courts throughout the country may give rise to some variation in 

outcome, this is the means Congress chose to enforce a national 

policy to ensure fair competition.” POM Wonderful, LLC v. CocaCola Co., 134 S.Ct. 2228, 2239 (2014).
51

that the injunction was “broader than necessary to afford full 

relief” to the advocacy group because a limited injunction 

adequately protected the group. 263 F.3d at 393. Second, we 

concluded that the injunction had “the effect of precluding 

other circuits from ruling on the constitutionality” of the 

regulation because it prohibited the FEC from attempting to 

enforce it. Id. Unlike Virginia Society for Human Life, the 

nationwide injunction before us is necessary to provide complete 

relief to Georgia-Pacific, and as I have explained, the 

injunction does not preclude other courts from ruling on the 

propriety of the “stuffing” practice of parties other than von 

Drehle in relation to Georgia-Pacific’s trademarks. 

IV

One final observation is in order. Even though I believe 

that it is unfair to deny Georgia-Pacific the nationwide 

injunctive relief to which it is entitled, I question whether 

the limitation of injunctive relief to the states within this 

circuit ultimately will protect von Drehle from liability in 

future litigation.

As noted, von Drehle is a North Carolina corporation that 

operates out of Hickory, North Carolina. Georgia-Pacific has 

proven in this case that von Drehle’s manufacturing and 

marketing activities, that emanated from North Carolina but 

caused infringement nationally, constitute contributory 
52

trademark infringement. Presumably, if von Drehle is freed from 

the nationwide constraints of the injunction, it will resume its 

North Carolina-based activities of manufacturing paper towels 

and marketing them to distributors with knowledge that the 

towels will be stuffed into Georgia-Pacific’s dispensers. 

Although von Drehle may limit its distribution of paper towels 

to entities outside of the Fourth Circuit in an effort to comply 

with a limited injunction, it will nonetheless be engaging in 

the very conduct (i.e., manufacturing and marketing) that gave 

rise to its liability in this case, and it will be doing so 

within the Fourth Circuit, where such conduct is prohibited.

Therefore, unless von Drehle relocates its manufacturing 

and marketing activities outside of this circuit, it seems 

reasonable to believe that any future distribution of paper 

towels for the purpose of stuffing Georgia-Pacific’s dispensers 

anywhere would violate even the limited injunction called for by 

the majority, and Georgia-Pacific would be entitled to seek 

contempt relief. Moreover, even assuming that such conduct would 

not violate a limited injunction, there seems to be no reason 

that Georgia-Pacific could not file another lawsuit similar to 

this one seeking damages, and the lack of a nationwide 

injunction would not preclude Georgia-Pacific from recovering 

all of the profits von Drehle earned anywhere in the nation as a 

result of its infringing activities.
53

V

Georgia-Pacific is entitled to complete and effective 

injunctive relief to prevent von Drehle from continuing to 

infringe on its trademarks. The district court considered the 

proper factors and concluded that a nationwide injunction is 

necessary to provide this relief. Because the district court did 

not abuse its discretion in reaching this conclusion, and 

because we should accord proper respect to our decision in 

Georgia-Pacific II, we should affirm the injunction. 

Accordingly, I concur in part and dissent in part.