USCA11 Case: 22-10926 Document: 58-3 Date Filed: 08/22/2023 Page: 1 of 6
[DO NOT PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 22-10926
Non-Argument Calendar
____________________
TOP TOBACCO, L.P.,
REPUBLIC TECHNOLOGIES (NA), LLC,
REPUBLIC TOBACCO, L.P.,
Plaintiffs-Appellees,
versus
GABSONS NOVELTIES,
et al.,
Defendants,
DIAMOND J. WHOLESALE, LLC,
d.b.a. Gabsons Novelties,
USCA11 Case: 22-10926 Document: 58-3 Date Filed: 08/22/2023 Page: 2 of 6
2 Opinion of the Court 22-10926
Defendant-Appellant.
____________________
Appeal from the United States District Court
for the Northern District of Georgia
D.C. Docket No. 1:19-cv-02148-LMM
____________________
Before JORDAN, NEWSOM, and ED CARNES, Circuit Judges.
PER CURIAM:
Diamond J Wholesale, LLC, and Raj Solomon, its sole
owner and member, appeal a judgment of $11 million in statutory
damages in favor of the plaintiffs (Top Tobacco, L.P., Republic
Technologies (NA), LLC, and Republic Tobacco, L.P.) on their
claims of willful trademark infringement under the Lanham Act,
15 U.S.C. §§ 1114 et seq. Following review of the parties’ briefs and
the record, we affirm.1
Evidentiary Rulings. The appellants contend that the district
court erred in excluding certain evidence (witness testimony and
invoices) which purportedly would have shown that they and their
suppliers had purchased the counterfeit products from a legitimate
1 As we write for the parties, we assume their familiarity with the case and set
out only what is necessary to explain our decision. The panel unanimously
determined that this appeal should be removed from the oral argument calen-
dar and decided on the briefs. See 11th Cir. R. 34-3(b).
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22-10926 Opinion of the Court 3
wholesaler named Star Importers. According to the appellants, this
evidence would have shown that they and their suppliers believed
that Star Importers was a large and reputable seller of the plaintiffs’
products. And that, the appellants say, would have helped them
defeat the plaintiffs’ claim that the trademark infringement was
willful.
Reviewing for abuse of discretion, see Chrysler Int’l Corp. v.
Chemaly,
280 F.3d 1358, 1362–63 (11th Cir. 2002), we discern no er-
rors. First, the district court did not abuse its discretion in exclud-
ing the testimony of Steve Kent—one of the appellants’ suppliers—
because, among other things, Mr. Kent did not purchase products
from Star Importers during the time period relevant to this suit.
See D.E. 172 at 38–39. Second, the district court did not abuse its
discretion in excluding the invoices under Rule 37 because the ap-
pellants did not turn them over in discovery and only brought them
to the district court’s attention a year or so after the discovery dead-
line ended. See D.E. 154 at 17–19. In any event, even if the exclu-
sion of the invoices constituted an abuse of discretion, any error
was harmless because the invoices were not for transactions be-
tween Diamond J and Star Importers—they were between Quick
Save Food Mart (a convenience store owned by Mr. Solomon) and
Star Importers. The invoices therefore do not bear on the appel-
lants’ purported good faith in obtaining the counterfeit products at
issue, and any error in excluding them was harmless. See Luxottica
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4 Opinion of the Court 22-10926
Grp., S.p.A. v. Airport Mini Mall, LLC,
932 F.3d 1303, 1319 (11th Cir.
2019);
28 U.S.C. § 2111. 2
Judicial Notice. The appellants complain that the district
court failed to take judicial notice of the definition of the word
“culpability.” See D.E. 172 at 36, 39–40. If there was any error un-
der Federal Rule of Evidence 201, it was harmless because the dis-
trict court permitted the appellants to include their definition of
“culpability” in the jury instructions. See
id. at 39–40. The appel-
lants acknowledged that including the definition in the jury instruc-
tions would basically accomplish the same thing as judicial notice,
see
id. at 40, but they chose not to place the definition in the instruc-
tions. Given that course of action, any error in declining to take
judicial notice of the definition was invited, is procedurally barred,
or was harmless, or a combination of those three things.
Mr. Solomon’s Individual Liability. Mr. Solomon challenges
the district court’s grant of summary judgment holding him indi-
vidually liable for trademark infringement. He asserts that
knowledge of infringement is required for individual liability under
the Lanham Act, and that—as the district court originally
thought—there are genuine issues of fact about his state of mind.
We conclude that the district court did not err. Under
15
U.S.C. § 1114(1)(a)—which in relevant part prohibits the use in
2 With respect to the matter of financial data about Diamond J and its compet-
itors, the appellants were able to testify and comment on Diamond J’s small
size and the restrictive effect that its size had on purchasing directly from Top
Tobacco. Any error respecting that evidence was therefore also harmless.
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22-10926 Opinion of the Court 5
commerce of counterfeit marks—a “showing of intent or bad faith
is unnecessary to establish a violation[.]” Chanel, Inc. v. Italian Ac-
tivewear of Fla., Inc.,
931 F.2d 1472, 1476 (11th Cir. 1991). And an
individual is liable under that provision if he “actively and know-
ingly caused the infringement.” See
id. at 1477.
In Chanel we affirmed a district court’s summary judgment
order holding a corporate official individually liable because he (1)
was the president and CEO of the infringing company, (2) pur-
chased the infringing goods, (3) advertised those goods as legiti-
mate, and (4) operated the showroom where the goods were sold.
See
id. at 1478. Here Mr. Solomon was the owner and sole member
of Diamond J, and he stipulated that he was “chiefly responsible for
buying and selling the counterfeit products and therefore ‘actively
caused the infringement as a moving, conscious force.’” D.E. 130–
6 at ¶ 3. This was sufficient for the district court to grant summary
judgment against him on the issue of individual liability. See Chanel,
931 F.2d at 1478 n.8 (explaining that an individual is liable if he “ac-
tively participated as a moving force in the decision to engage in
the infringing acts, or otherwise caused the infringement as a
whole to occur”) (emphasis omitted). See also Edmondson v. Velvet
Lifestyles, LLC,
43 F.4th 1153, 1164 (11th Cir. 2022) (“In other words,
a corporate officer who directs, controls, ratifies, participates in, or
is the moving force behind the infringing activity is personally lia-
ble for that infringement.”) (internal quotation marks and citation
omitted).
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6 Opinion of the Court 22-10926
Simply stated, we held in Chanel, 931 F.2d at 1476, that intent
is not necessary to demonstrate a violation of § 1114(1)(a). Given
this underlying principle, individual liability under that provision
does not demand proof of scienter. Any issues of fact relating to
Mr. Solomon’s state of mind were therefore not material. See 87
C.J.S. Trademarks, Etc. § 296 (Aug. 2023 update) (“Actual intent to
infringe is not necessary for liability under the Lanham Act, and,
therefore, individual liability may be imposed on a corporate of-
ficer who had no knowledge of the infringement, but who had (1)
the right and ability to supervise the infringing activity, and (2) a
direct financial interest in [that] activity. In determining whether a
corporate officer’s acts render the officer individually liable under
the Lanham Act, it is immaterial whether the officer knows that the
acts will result in infringement.”) (citations omitted). 3
We affirm the district court’s judgment.
AFFIRMED.
3 Knowledge of infringement is required for the remedy of treble damages and
attorney’s fees under § 1117(b) of the Lanham Act, and such knowledge is usu-
ally a matter for the fact-finder. See Chanel, 931 F.2d at 1476–78. Here the jury
found that Mr. Solomon acted willfully. See D.E. 191.
