[D O NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

F O R THE ELEVENTH CIRCUIT FILED

U .S . COURT OF APPEALS

E L E V E N T H CIRCUIT

February 14, 2007

N o . 06-14432 T H O M A S K. KAHN

N o n - A r g u m e n t Calendar CLERK

D . C. Docket No. 04-03260-CV-TWT-1

O P T IM U M TECHNOLOGIES, INC.,

Plaintiff-Appellant,

versus

HOME DEPOT U.S.A., INC.,

ACE HARDWARE CORPORATION,

Defendants-Appellees.

A p p e al from the United States District Court

fo r the Northern District of Georgia

(F eb ru a ry 14, 2007)

B efo re BLACK, MARCUS and WILSON, Circuit Judges.

P E R CURIAM:

O p tim u m Technologies, Inc. ("Optimum") filed suit against Home Depot, In c. ("Home Depot") alleging that Home Depot committed trademark infringement in violation of the Lanham Act, 15U.S.C. § 1114, and false advertising in violation o f 15U.S.C. § 1125(a). Home Depot sought partial summary judgment as to O p tim u m 's claim for monetary damages under the Lanham Act and for Optimum's claim of false advertising. The district court granted Home Depot's motion. The d is tr ic t court found that Optimum's claim for monetary damages, which consisted o f Home Depot's profits, attorney fees, and enhanced damages, were not ap p ro p riate under the facts of this case. Optimum appeals the district court's d ecisio n concerning Optimum's claim for monetary damages. Optimum does not ap p eal the court's order dismissing the false adverting claim.

BACKGROUND O p tim u m is a family owned company that sells a variety of floor related p ro d u cts. Optimum's best selling product is the Lok-Lift Gripper ("Lok-Lift").

This product is applied in strips to the back of rugs and mats to secure them in p la ce and prevent slippage on hard floors and carpets. Optimum is the registered o w n er of the Lok-Lift mark.

From 1994 until January 2003, Optimum sold the Lok-Lift product to Home D e p o t through a joint venture partnership between Optimum and Henkel Consumer A d h esiv es, Inc. ("Henkle"). Pursuant to this partnership, Henkle purchased the L o k -L ift product from Optimum then distributed it to various retailers, including H o m e Depot. In 1998, Henkle began developing its own material that could be u s e d to hold carpets and mats in place on floors. Henkle's product, which was la te r named Hold-It for Rugs ("Hold-It"), is similar to Optimum's Lok-Lift p ro d u ct; however, the Hold-It product is not intended to be used to hold rugs in p lace on carpets, only floors.

In October 2002, Henkle provided Home Depot with notice that it intended to substitute its Hold-It product in the place of the Lok-Lift product. Henkle began th e announced product change sometime between December 2002 and January 2 0 0 3 . As the product change over occurred, Henkle sent Home Depot Hold-It with th e same product number and tracking information as the Lok-Lift product.

Therefore, Home Depot's computer system did not reflect that the products had c h a n g e d . Accordingly, Home Depot did not update its shelf tags, which still bore th e name Lok-Lift, and Home Depot's cash register receipts reflected that Lok-Lift h ad been purchased even if Hold-It had actually been purchased. However, the H o ld -It product that was sold at Home Depot was packaged and marked with the n am e Hold-It and had no reference to Lok-Lift or Optimum.

In April 2004, Optimum sent Home Depot a courtesy copy of the complaint th at it had filed against Henkle for breach of confidential relationship, breach of fid u ciary duty, fraud, fraudulent concealment, negligent misrepresentation, and tr ad e m a rk and trade dress infringement. (Doc. No. 69, exhibit 8). The letter in fo rm ed Home Depot that one issue in the suit concerned the products Home D e p o t sold through Henkle. The letter also noted that Home Depot was not named as a defendant in the litigation and did not request that Home Depot take any actio n .1 Optimum claims that when it visited Home Depot stores, it pointed out to H o m e Depot store personnel that Home Depot was improperly using the Lok-Lift m ark . In September 2004, counsel for Optimum sent Home Depot another letter.

In this letter, Optimum stated that Home Depot was continuing to infringe upon O p tim u m 's Lok-Lift mark by having shelf tags that bore the Lok-Lift name and cash register receipts reflecting a purchase of the Lok-Lift product when the HoldIt product was the product actually purchased. In response to this letter, Home D ep o t sent out an emergency maintenance request to try and rectify these concerns.

(Doc. 69, exhibit 16). Home Depot also requested that Henkle coordinate visits to each Home Depot store to make sure that the Hold-It product was being properly d isp layed . On November 5, 2004, Optimum filed this lawsuit against Home D e p o t. In its partial motion for summary judgment, Home Depot argued that even if it had infringed upon Optimum's mark, Home Depot's actions did not justify an a w a rd of its profits, attorney fees, or enhanced damages. The district court agreed an d granted Home Depot's motion.2 S T A N D A R D OF REVIEW W e review a district court's grant of summary judgment de novo. Vason v. C ity of Montgomery, Ala., 240 F.3d 905, 906 (11th Cir. 2001) (per curiam). The L an h am Act confers broad discretion upon the district court to fashion a remedy an d determine the proper relief due an injured party. See 15U.S.C. § 1117(a); B u r g e r King v. Weaver, 169 F.3d 1310, 1315 (11th Cir. 1999). We review the trial co u rt's exercise of its discretion for an abuse of discretion. Id.

DISCUSSION U n d er its claim for trademark infringement, Optimum sought, in addition to in ju n ctiv e relief, monetary relief in the form of profits, attorney fees and costs, and en h an ced damages.3 The Lanham Act provides that, subject to the principles of e q u ity , a successful plaintiff may recover: (1) defendant's profits, (2) any damages s u s ta in e d by the plaintiff, and (3) costs of the action. 15U.S.C. § 1117(a).4 In an ex cep tio n al case, the district court may award attorney fees to the prevailing party.

Guided by principles of equity, the district court found that even if Home Depot h ad infringed upon Optimum's Lok-Lift mark, Optimum was not entitled to any of th e s e forms of monetary relief. For the reasons stated herein, we agree.

A. P r o f its T h is Court has determined that an accounting of a defendant's profits is ap p ro p riate where: (1) the defendant's conduct was willful and deliberate, (2) the d efen d an t was unjustly enriched, or (3) it is necessary to deter future conduct. See H o w a rd Johnson Co., Inc. v. Khimani, 892 F.2d 1512, 1521 (11th Cir. 1990).

There is scant evidence in the record that would suggest that Home Depot's c o n d u c t was willful. We have described a willful violation of a trademark o ccu rrin g where the infringer was "knowingly and deliberately cashing in upon the g o o d will of [the infringed].'" Burger King v. Mason, 855 F.2d 779, 781 (11th Cir. 1 9 8 8 ) (per curiam)(quoting Wolf v. Nation Lead Co., 272 F.2d 867, 871 (9th Cir. 1 9 5 9 ). Home Depot's action consisted of having outdated shelf tags with O p tim u m 's Lok-Lift mark and store receipts erroneously reflecting that a customer h ad purchased Lok-Lift when that customer actually purchased Henkle's Hold-It.

Optimum argues that Home Depot's actions were willful because after Home D ep o t was put on notice that it was infringing upon Optimum's mark, Home Depot in itially took no steps to rectify the situation. Optimum argues that when Home D ep o t did take steps to rectify the situation, those steps came about too slowly.

However, the record shows that Home Depot began to change its outdated store tag s and cash register receipts after Optimum sent Home Depot a letter directly accu sin g it of infringing upon the Lok-Lift mark. Home Depot began to rectify the s itu a tio n before this lawsuit was filed and continued the process until all outdated s to r e tags were changed and the cash register receipts reflected the proper item b e in g sold. While Optimum may have wanted this process to progress at a more r ap id pace, this is not evidence that Home Depot's alleged infringement was w illfu l. Furthermore, there is no evidence that the existence of outdated store tags an d inaccurate store receipts was based on Home Depot's attempt to deliberately c as h in on Optimum's good will. Therefore, Home Depot's actions of alleged in frin g em en t were not willful.

We also agree with the district court that there is no evidence of unjust e n r ic h m e n t. Unjust enrichment occurs when an infringer has "enriched themselves b y tapping the reputation and good will of [the infringed]." Khimani, 892 F.2d at 1 5 2 1 n.9. There is no evidence that any of Home Depot's sales of Hold-It are attrib u tab le to its alleged infringement of Optimum's Lok-Lift mark.5 F u r th e r m o r e , the facts of this case do not present a situation where there is a need to deter future conduct. There is no evidence that Home Depot was improperly u s in g the Lok-Lift mark to its financial advantage, and Home Depot has rectified th e allegedly infringing conduct in all of it stores. Based on the specific facts of th is case, the district court did not abuse its discretion in finding that an accounting o f Home Depot's profits was not an appropriate remedy.

B. A tto r n e y Fees I n "exceptional cases," the district court has the discretion to "award reaso n ab le attorney fees to the prevailing party." 15U.S.C. § 1117(a). An ex cep tio n al case is "where the infringing party acts in a malicious, fraudulent, d e lib e r ate , or willful manner." Burger King v. Pilgrim's Pride Corp., 15 F.3d 166, 1 6 8 (11th Cir. 1994) (internal quotation marks omitted). There is no evidence to su g g est that this is an exceptional case. Therefore, the district court did not abuse its discretion in finding that attorney fees was not an appropriate remedy.6 C. E n h a n c ed Damages T h e district court may, in its discretion, reduce or enhance the resulting a w a rd up to three times the amount of profits or damages, whichever is greater, as ju stice shall require. 15U.S.C. § 1117(a). "Such an award is discretionary, but it m ay not be punitive, and must be based on a showing of actual harm." Babbit E lectro n ics. Inc. v. Dynascan Corp., 38 F.3d 1161, 1183 (11th Cir. 1994) (per cu riam ). Since Optimum is not entitled to Home Depot's profits and has not sh o w n any actual harm, it is not entitled to any enhanced damages.

Accordingly, upon review of the parties' briefs and the record, we discern no rev ersib le error and affirm the decision of the district court.

A F F IR M .

1 On August 5, 2004, Optimum also issued a subpoena decus tecum to Home Depot in connection with Optimum's lawsuit against Henkle.

2 On July 26, 2006, parties stipulated to the dismissal with prejudice of Optimum's prayer for injunctive relief. On July 27, 2006, the district court directed that final judgment be entered in favor of Home Depot.

3 Optimum did not seek to recover actual damages.

4 Optimum also brought a claim for trademark infringement under Georgia common law. The district court did not separately analyze the state law claim in its order granting summary judgment. However, this Court has noted that a trademark infringement claim under Georgia law is reviewed under the same standards as a claim under the Lanham Act. See University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1539 n.11 (11th Cir. 1985).

5 Optimum claims that it is worried about the company going into bankruptcy. However, there is no evidence that any of Optimum's financial troubles were attributable to Home Depot's use of outdated shelf tags and inaccurate cashier receipts.

6 The district court also found that Optimum was not entitled to costs. An award of costs is also within the discretion of the district court, and we find no abuse of this discretion in finding that an award of costs was not an appropriate remedy. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1205 (11th Cir. 2001).