[ DO NOT PUBLISH] 

## In the 

# United States Court of Appeals For the Eleventh Circuit

____________________ No. 22

- 11374 Non

- Argument Calendar

____________________ INSTANT ONE MEDIA, INC., Plaintiff

- Appellee,

versus EZFAUXDECOR, LLC,

Defendant

- Appellant,

Amber Shank,

Defendant.

____________________ USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 1 of 92 Opinion of the Court 22

- 11374 Appeal from the United States District Court for the Northern District of Georgia D.C. Docket No. 1:19

- cv

- 00540

- WMR

____________________ Before N EWSOM , L AGOA , and B RASHER , Circuit Judges.
PER CURIAM: Instant One Media, Inc. and EZ Faux D e cor, LLC both sell vinyl adhesive products to resurface countertops and appliances. They settled previous litigation in 2017 with an agreement that Instant One would pay EZ $ 175 ,000 and EZ would stop using the
term “instant” within two words of the terms “granite” or “stainless.” Instant One then registered trademarks for “instant granite” and “instant stainless.” By 2018, EZ was violating that agreement and infringing Inst ant One ’ s trademarks. Instant One sued alleging a state

- law breach

- of

- contract claim and a federal

- law trademark

- infringement claim. After receiving notice of the suit, EZ changed its websites without preserving copies. EZ also did not keep or produce c hange logs for its Amazon or EBay content . As a sanction for t he spoliation of its own website, the district court ordered that the jury be instructed with a rebuttable presumption that EZ violated the settlement agreement and infringed the trademark on i ts website. The sanctions didn ’ t extend , however, to EBay or Amazon sales.The district court granted partial summary judgment to Instant One as to liability for breach of contract. The liability for USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 2 of 922

- 11374 Opinion of the Court 3 trademark infringement and damages as to both claims w ent to trial. The trial consisted of only two witnesses. Instant One called its President to testify to the primary issues and its lawyer to testify to his fees. EZ called no witnesses. A jury found EZ liable on the trademark claim . It awarded Instant One three types of damages : $275,000 actual damages for either the breach of contract or trademark infringement ; $500,000 in disgorgement on the trademark claim ; and $260,000 in attorneys ’ fees under a state

- law fee

- shifting statute. The district court t hen denied EZ ’ s renewed motion for judgment as a matter of law and entered judgment for Instant One. EZ appeals that denial with respect to each type of damages

. We review the denial of a renewed motion for judgment as a matter of law de novo. AcryliCon USA, LLC v. Silikal GmbH , 985 F.3d 1350, 1366 (11th Cir. 2021) . We can grant the motion only if “ t here is no legally sufficient evidentiary basis for a reasonable jury to find for the non

- moving p arty.” Id. After careful review, we affirm the disgorgement and attorneys ’

- fees awards

. Because Instant One failed to provide sufficient evidence of lost profits under either claim, we vacate the denial of the renewed judgment as a matter of law with re spect to actual damages and remand that issue for further consideration.
I Instant One ’ s President testified to Instant One ’ s actual damages

— which she claimed were lost profits of $562,368. The jury USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 3 of 94 Opinion of the Court 22

- 11374 returned an award of $250,000. EZ argues the evidence was insufficient to support even this award for two reasons: specificity and causation. Given an error in the district court ’ s ruling on specificity, we remand for further consideration without addressing causation. EZ claims that the lost

- profits calculation was unsupported and speculative. Instant One initially sought to submit an exhibit containing details for the $562,368 calculation along with 199 pages of receipts for advertising and consulting expenses . After a lengthy discussion outside the presence of the jury , including a voir dire examination of the President about the contents of the calculation, the court sustain ed EZ ’ s objection that the exhibit was hearsay. The next day, Instant One proceeded with the President ’ s testimony but used a revised exhibit that included only the receipts

. And Instant One ’ s President never testifie d with specificity about how she arri ved at the calculation. She state d the number multiple times. She testifie d that she provided the calculation to the defendants. But her testimony about the calculation process was limited
to cross

- examination and re

- direct. During cross

- examination, s he discusse d at a high

- level how she estimated lost profits by considering lost sales and their associated expenses

— but never quantifie d those components

. When asked for specifics, she several times responded, “I don ’ t remember.” On redirect, Instant One ’ s attorney solicited testimony confirming that the President knew enough about the company to make an educated estimate and that the USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 4 of 922

- 11374 Opinion of the Court 5 already 199

- page exhibit would have been much longer if they included more detail. In summary, Instant One provided (i) b usiness records showing revenue from Amazon sales for three isolated months in 2017 and 2018, (ii) testimony that sales from the two trademarked products were $2.3 million over the 31⁄2 year period, (iii) testimony that promotional expenses were $300,000 ove r the same period, and (iv) testimony that it calculated $562,368 in estimated losses after subtracting from a forecasted sales number (which it never provided) promotion al expenses ( of which it did provide evidence) as well as costs of goods sold, utiliti es, rent, payroll, and taxes ( for none of which Instant One provided any evidence). Instant One did not provide a single financial statement or financial forecast. When ruling on EZ ’ s renewed motion for judgment as a matter of law, the district court implied that Doc. 160

- 5 w as a “document[] that show[s] . . . [the President ’ s] projected profits calculation” and cited Doc. 170 at 119:9

– 25 as containing the President ’ s testimony about the forecast. Critically, however, that testimony

was from the voir dire about the excluded exhibit. The jury ha d

n either a version of Doc. 160

- 5 containing a projected profits calculation n or the President ’ s detailed testimony about the forecast.
Instan t One , therefore, failed to present sufficient evidence to satisfy Georgia ’ s state

- law standard. In order to recover lost profits for a breach of contract, Instant One needed to “provide ‘ information or data sufficient to enable [the trier of fact] to est imate the amount of the loss with reasonable certainty. ’ ” AcryliCon USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 5 of 96 Opinion of the Court 22

- 11374 USA, LLC v. Silikal GmbH , 985 F.3d 1350, 1370 (11th Cir. 2021) (quoting Bearoff v. Craton , 830 S.E.2d 362, 373 (Ga. App. 2019)) (alteration in original). Where, as here, a plaintiff fail s to show both “a track record of profitability” and “ figures showing

. . . anticipated revenues and expenses ,” id. at 1371 (quoting Bearoff , 830 S.E.2d at 373), the plaintiff cannot recover. Recovery for the state

- law contract claim, therefore, is limite d to actual expenses incurred

— such as those documented in Doc. 160

- 5

— which a jury could have concluded were caused by the breach. Instant One also failed to satisfy the Lanham Act ’ s lower standard for establishing lost profits. Actual damages under the La nham Act “are not rendered uncertain because they cannot be calculated with absolute exactness.” Ramada Inns, Inc. v. Gadsden Motel Co. , 804 F.2d 1562, 1565 (11th Cir. 1986) (quoting Borg

Warner Corporation v. York

- Shipley, Inc. , 293 F.2d 88, 95 (7th Cir. 1961) ). “It is sufficient if a reasonable basis of computation is afforded.” Id. (quoting Borg

- Warner , 293 F.2d at 95). Conclusory testimony about the estimated amount of profits and generic comments on her calculation process do not provide a suff icient “ basis of computation” for a jury to determine actual damages under the Lanham Act.
W e remand for the district court to consider whether actual damages other than lost profits adequately support the jury ’ s actual damages award and to consider, in the first instance, EZ ’ s causation arguments

. USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 6 of 922

- 11374 Opinion of the Court 7

I I EZ also challenges the disgorgement award. At trial, Instant One produced evidence estimating gross revenue for EZ on its website, on EBay, and on Amazon. EZ challenges whether these

s ales were “attributable to” infringing conduct. In effect, EZ claims Instant One failed to carry its alleged burden to demonstrate gross sales from infringing products . But EZ misunderstands Instant One’s burden. “In assessing profits the plaintiff sha ll be required to prove defendant ’ s sales only; defendant must prove all elements of cost or deduction claimed.” 15 U.S.C. § 1117(a). The plaintiff ’ s burden is merely to establish business

- wide gross sales and some instances of infringement. Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 F.2d 1484, 1488 (11th Cir. 1987). Consistent with the Eleventh Circuit pattern charges, that is how the district court instructed the jury in this case : In determining EzFauxDecor, LLC ’ s profits, Instant One Media, Inc. is only required to prove EzFauxDecor, LLC ’ s gross sales. EzFauxDecor, LLC may then prove the amount of sales made for reasons other than the infringement.
Doc. 171 at 212 ; see also Eleventh Circuit Pattern Jury Instructio ns (CIVIL) § 5.13 at 1 1 (2022) (same). EZ failed to introduce evidence that any sales were not due to infringement. In its reply brief, it argues that the product titles USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 7 of 98 Opinion of the Court 22

- 11374

in Instant One ’ s exhibits show that the products weren ’ t infringing. But given th at infringement could occur outside a product title and EZ ’ s failure to track changes to product listings on Amazon and EBay, the evidence to which EZ points wouldn’t preclude a reasonable jury from disagreeing with EZ. We therefore affirm the district co urt ’ s denial of the renewed motion for judgment as a matter of law with respect to the disgorgement award. 1 I I I Georgia law allows juries to award attorneys ’ fees when the plaintiff requests them and “the defendant has acted in bad faith,has been stubbornly litigious, or has caused the plaintiff unnecessary trouble and expense.” O.C.G.A. § 13

- 6

- 11. In reviewing this claim on appeal, we respect Georgia ’ s dec ision to “place[] the question of attorneys ’ fees within the province of the jury , ” and we “should not vacate such an award unless there was absolutely no evidence to support it.” LaRoche Indus

. , Inc. v. AIG Risk Mgmt., Inc. , 959 F.2d 189, 193 (11th Cir. 1992); see Am. Med. Transp. Grp., Inc. v. Glo

- An, Inc. , 509 S.E.2d 738, 741 (Ga. App. 1998). Here, the jury determined that EZ ’ s use of the trademarks

— in breach of the contract

— was willful. This determination was based on evidence of bad faith in the unde rlying transactions

— for

1 Instant One ’ s disgorgement award is not affected by the ruling on actualdamages. Lanham Act disgorgement is available without showing actual damages. See Hard Candy, LLC v. Anastasia Beverly Hills, Inc. , 921 F.3d 1343, 13 52 (11th Cir. 2019)

. USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 8 of 922

- 11374 Opinion of the Court 9 example, emails stating a desire to hide their use of the terms. We therefore affirm the district court ’ s denial of the motion for judgment as a matter of law with respect to attorneys ’ fees. 2 IV
B ecause evidence supports the ju ry ’ s disgorgement and attorneys ’

- fees awards but the district court erred in ruling on the actual damages award, we affirm in part, vacate in part, and remand for further proceedings. AFFIRMED in part, VACATED in part, and REMANDED

.

2 We only address EZ ’ s argument that there was insufficient evidence of bad faith. We do not address

— and leave for subsequent proceedings

— the issue whether our ruling on actual damages affects the attorneys ’ fees award. See, e.g. , Steele v. Russell , 424 S.E.2d 272, 273 (Ga. 19 93) (“[E]xpenses of litigation recoverable pursuant to OCGA § 13

– 6

– 11 are ancillary and may only be recovered where other elements of damage are also recoverable.”). USCA11 Case: 22-11374 Document: 33-1 Date Filed: 03/09/2023 Page: 9 of 9