IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

____________________

No. 90-5567 and 91-5510

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TEXAS PIG STANDS, INC.,

Plaintiff-AppellantCross-Appellee,

v.

HARD ROCK CAFE INTERNATIONAL, INC.,

Defendant-AppelleeCross-Appellant.

TEXAS PIG STANDS, INC.,

Plaintiff-Appellee,

v.

HARD ROCK INTERNATIONAL, INC.,

Defendant-Appellant.

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Appeals from the United States District Court

for the Western District of Texas

____________________ (Opinion Jan. 29, 1992, 5th Cir., 1992_____F.2d_____)

(July 9, 1992)

BEFORE BROWN, JOHNSON and BARKSDALE, Circuit Judges.

PER CURIAM:

ON SUGGESTION FOR REHEARING EN BANC

In the suggestion for rehearing en banc, Texas Pig Stands

contends that the Court's decision is inconsistent with and in1 The trial court made specific findings to the effect that

"there was no proof as to the value of plaintiff's good will in

Dallas today." 951 F.2d at 696.

2 conflict with this Court's earlier decision in Maltina Corp.

v. Cawy Bottling Co., Inc. , 613 F.2d 582 (5th Cir. 1980).

Nothing in the Court's opinion affords any basis for this

attack. In the first place, the opinion does not slight the

case since Maltina was cited twice. See 951 F.2d at 695 and

951 F.2d at 699. This Court recognizes M altina to be the law

of the Fifth Circuit in its holding that (i) absence of

competitors or (ii) failure of proof showing diversion of the

mark owner's sales is no defense to the claim for Defendant's

profits under 15 U.S.C. § 1117.

The reason why Hard Rock Cafe's profits were not awarded

was not based on (i) absence of competitors or (ii) no

evidence of diversion; it was, rather , based solely on the

lack of evidence showing that any of Defendant's profits were

the result of its infringement of the mark

.

The trial court in granting j.n.o.v. on unjust enrichment

expressly found:

Hard Rock 'would have sold just as m any pig sandwiches by any other name' and

that 'there is no basis for inferring

that any of the profits received by [Hard

Rock] from the sale of pig sandwiches are attributable to infringment.'

951 F.2d at 696. 12 See also Burndy Corp. v. Teledyne Indus., Inc. , 748 F.2d

767, 772 (2d Cir. 1984); Comidas Exquisitos, Inc. v. Carlos

McGee's Mexican Cafe, Inc. , 602 F.Supp. 191, 199 (S.D. Iowa),

aff'd , 775 F.2d 260 (8th Cir. 1985) and Alpo Petfoods, Inc. v.

Ralston Purina Co. , 913 F.2d 958, 966 (D.C. Cir. 1990).

3 The overriding principle comes from the Supreme Court

that as to recovery of infringer's profits:

The plaintiff, of course, is not entitled

to profits demonstrably not attributable

to the unlawful use of his mark.

Mishawaka Rubber & Woolen Mfg. Co. v. S.

S. Kresge Co.

, 31 6 U.S. 203, 206, 62

S.Ct. 1022, 1024, 86 L.Ed. at 1385

(1941).

Mishawaka has been followed and cited numerous times in

many federal courts, including the Ninth Circuit in its

decision in Maier Brewing Co. v. Fleischmann Distilling Corp.

,

390 F.2d 117 (9th Cir. 1968), adopted in Maltina

.

If i t can be shown that the infringment

had no relation to profit s made by the

defendant, that some purchasers bought

goods bearing the infringing mark because

of the defendant's recommendation or his

reputation or for any reason other than a

response to the difused appeal of the

plaintiff's symbol, the burden of showing

this is upon the poacher. The plaintiff,

of course, is not entitled to profits

demonstrably not attributable to the

unlawful use of his mark. (Emphasis

added).

Maier

, 390 F.2d at 124 (quoting Mishawaka

, 316 U.S. at 206, 62

S.Ct. at 1024, 86 L.Ed. at 1385). 2

Treating the suggestion for rehearing en ba nc as a4

petition for panel rehearing, it is ordered that the petition

for panel rehearing is DENIED. No member of the panel nor

Judge in regular active service of this Court having requested

that the Court be polled on rehearing en banc (Federal Rules

of Appellate Procedure and Local Rule 35), the suggestion for

Rehearing En Banc is DENIED.5

JOHNSON, Circuit Judge, dissenting.

Because the majority's opinio n denying rehearing in no

way resolves the majority's central error, I continue to

disagree with the majority and respectfully dissent from the

denial of rehearing.

In this writer's view, the central tenet of Maltina Corp.

v. Cawy Bottling Co., Inc. , 613 F.2d 582 (5th Cir. 1980), is

that if the trademark laws are to effectively protect economic

property rights, violation of those laws must be rende red

unprofitable. In this case, as noted in the original dissent,

951 F.2d at 699, there were two avenues by which Hard Rock's

willful, knowing, and deliberate infringement could be

rendered unprofitable: Texas Pig Stands might have been

awarded Hard Rock's profits, or Texas Pig Stands might have

been awarded its attorneys' fees. While the majority has now

reinforced its blockading of one of these avenues ( awarding

Hard Rock's profits to Texas Pig Stands), the majority has not

said anything further about the district c ourt's award of

attorneys' fees to Texas Pig Stands, or why that award should

be reversed. The entire burden of Hard Rock's willful,

knowing, and deliberate infringement continues to be borne

solely by Texas Pig Stands, the innocent victim. The

majority's resolution of this case thus remains irreconcilable

with the teaching of Maltina

, and I must continue to dissent.