United States Court of Appeals
Fifth Circuit
F I L E D
IN THE UNITED STATES COURT OF APPEALS
February 24, 2005
FOR THE FIFTH CIRCUIT
Charles R. Fulbruge III
__________________________ Clerk
No. 03-31132
__________________________
DIAL ONE OF THE MID-SOUTH, INC.,
Plaintiff - Appellant-Cross-Appellee,
versus
BELLSOUTH TELECOMMUNICATIONS, INC.; BELLSOUTH ADVERTISING &
PUBLISHING CORPORATION; L. M. BERRY AND COMPANY,
Defendants - Appellees-Cross-Appellants.
___________________________________________________
Appeals from the United States District Court
For the Eastern District of Louisiana
___________________________________________________
Before GARZA, STEWART, and CLEMENT, Circuit Judges.
EDITH BROWN CLEMENT, Circuit Judge:
Local franchisor appeals the ruling of the district court limiting the damage award for
erroneous address listings in telephone company’s directory. Telephone company cross-appeals the
district court’s ruling that the company must pay under the Lanham Act for erroneously mislabeling
ex-franchisee in its directory. We affirm in part, reverse in part and remand.
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I.
The present appeal is part of a long-standing, fractious and frequently litigious relationship
between Dial One of the Mid-South (“Dial One”) and BellSouth Telecommunications (“Bell South”).
Dial One is a franchisor; it has an exclusive agreement with Dial One of Indiana to license the “Dial
One” name to companies in the greater New Orleans area. Those companies, in turn, provide various
maintenance and repair services t o residential and commercial customers. Bell South provides
telecommunications services over parts of Louisiana, including New Orleans, and, through its
subsidiary, BellSouth Advertising & Publishing Corporation (“BAPCO”), Bell South publishes and
distributes a telephone directory.
Bell South and Dial One have had a number of problems over erroneous entries in Bell
South’s directory; in fact, the current litigation is the fourth such suit since 1990. In 1990, Dial One
sued Bell South for publishing the Dial One logo in connection with companies not affiliated with Dial
One; that case was settled out of court. A remote telephone number in Dial One’s name that was
inoperative for several months led to another suit, which also settled. In the most recent case, Dial
One brought suit against Bell South because of the latter’s erroneous listing of a company in its
telephone directory as a Dial One franchisee. The district court awarded over $100,000 in damages,
an amount that this Court upheld. See Dial One of the Mid-South, Inc. v. BellSouth Telecomm., Inc.,
269 F.3d 523, 525 (5th Cir. 2001).
The present case concerns two errors, conceded by Bell South, in BAPCO’s directory. The
first involved six new listings that Dial One ordered at the end of 2000.1 These listings, for Dial One
1
The six were: Dial One Carpeting, Dial One Lock Smith, Dial One Masonry, Dial One
Plumbing, Dial One Roofing, and Dial One Security.
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companies that did not yet exist, were “remote call forwarding” numbers; when dialed, a caller would
actually connect to a Bell South installation, which would then transfer the call to Dial One’s main
office. Each of the six numbers was given the address “4927 Marque Drive, New Orleans, LA”, a
location that did not house any of Dial One’s operations but rather was the address for a concrete,
industrial-type Bell South routing station. Although Dial One made numerous requests upon Bell
South—the first in October, 2001—to fix the error, the mistake went uncorrected. The second error
involved the mislabeling of a franchisee. In December, 2000, Dial One and its air conditioning
franchisee, Help Service Company, dissolved their licensing agreement. Both parties informed Bell
South of the change in their relationship, and requested that the Help Service listing not be
represented as part of the Dial One network. Again, Bell South failed to make the appropriate
adjustment. The combined errors ran in a number of different editions of the phone book from May,
2001 to November, 2002.
In April, 2002, Dial One filed claims against Bell South and BAPCO for federal and state
trademark infringement, unfair competition, and violations of Louisiana Civil Code Article 2315 for
the intentional publication of false information. On a motion for partial summary judgment, Bell
South argued that the General Subscriber Services Tariff it filed with the State of Louisiana (“Tariff”)
limited its liability to $500 per offense with respect to the Marque Drive errors. In an order dated
May 12, 2003, the district court agreed, ruling that the Tariff limited Bell South’s liability as to the
Marque Drive errors. The court also concluded, however, that to the extent that the Tariff conflicted
with federal trademark provisions—which the court interpreted as applying to only the Help Service
claim—the Tariff’s limitation was preempted. See Lanham Act, 15 U.S.C. § 1051 et seq. Six months
later, Dial One filed a motion for reconsideration of the dist rict court’s ruling in which Dial One
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averred that since the court’s ruling it had “discovered” that the Marque Dri ve errors also were a
violation of the Lanham Act, and, therefore, that the Tariff must also be preempted as to those errors.
After a hearing, that motion was denied.
Dial One subsequently filed a motion for summary judgment asking the court to find Bell
South liable for both errors. In ruling on that motion on September 25, 2003, the district court found,
first, that Bell South had conceded liability as to the Marque Drive errors, and second, that Bell South
was liable under the Lanham Act for the Help Service error. As to this second holding, the court
concluded that under Dial One, Bell South could not avail itself of the innocent infringer defense
because its conduct with respect to the Help Service error was not objectively reasonable. Finally,
the district court rejected Bell South’s contention that Dial One was legally barred from seeking treble
damages under the Lanham Act, although the court acknowledged that it would have to weigh the
evidence before determining the extent, if any, of the damages.
After a bench trial, the district court awarded $31,500 in damages to Dial One for Bell
South’s violation of the federal trademark statute with respect to the Help Service errors, and allowed
for $3000 in damages for the Marque Drive errors (six errors at the tariff-capped $500 each). Dial
One appeals the district court’s judgment with respect to the Marque Drive errors; Bell South cross-
appeals with respect to damages awarded for the Help Service error.
II.
A. Marque Drive Errors
(1) Dial One’s appeal
Dial One appeals the denial of its motion for reconsideration of the district court’s May 12,
2003 order. In the motion, Dial One argued that the district court should have considered whether
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the Marque Drive errors were violations of the Lanham Act and, therefore, preempted the Tariff’s
$500 per-error limitation. Because Dial One’s motion was filed on September 15, 2003, more than
10 days after the judgment order, it is treated as a Rule 60(b) motion for relief of judgment. See Teal
v. Eagle Fleet, Inc., 933 F.2d 341, 347 n.3 (5th Cir. 1991); FED. R. CIV. P. 60(b).
Relief under Rule 60(b) may be granted for, inter alia, “mistake, inadvertence, [or] surprise.”
FED. R. CIV. P. 60(b). We review a denial of relief under Rule 60(b) for abuse of discretion. See,
e.g., McCorvey v. Hill, 385 F.3d 846, 848 (5th Cir. 2004). “‘Motions for a new trial or to alter or
amend a judgment must clearly establish either a manifest error of law or fact or must present newly
discovered evidence. These motions cannot be used to raise arguments which could, and should, have
been made before the judgment issued. Moreover, they cannot be used to argue a case under a new
legal theory.’” Simon v. United States, 891 F.2d 1154, 1159 (5th Cir. 1990) (quoting Fed. Deposit
Ins. Corp. v. Meyer, 781 F.2d 1260, 1268 (7th Cir. 1986)). There is nothing in Dial One’s motion
which indicates that it is based on newly discovered evidence. Moreover, despite Dial One’s
insistence that it made a “startling discovery”—language, we note, that is better suited to the
appearance of new facts, and not for the recognition of established law—as to federal preemption of
the Tariff after the court’s order, its motion was plainly no more than a new legal theory. As the
docket shows, Bell South and Dial One both had the opportunity to file briefs in support of the
motions for summary judgment, and the district court’s order itself establishes that preemption under
the Lanham Act was a substantial issue. The district court did not abuse its discretion in denying a
motion for relief of judgment that was six months tardy and which “could, and should” have been
raised before, or shortly after, the initial decision. Id.
(2) Bell South’s cross appeal
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Although, as noted, Bell South concedes liability for the Marque Drive errors, it challenges
the amount of the monetary penalty under the Tariff. The district court awarded Dial One $500 for
each listing for a total of $3,000. Bell South argues that Dial One paid only $222 per year for each
listing, which, under the Tariff, would amount to a total award of $666 (one half of $222 for each of
six listings).
Dial One does not contest the factual record. Instead, Dial One’s argument, sparsely briefed
but reinforced at oral argument, is that this Court is precluded from considering Bell South’s appeal
for two related reasons. The first is that Bell South failed to submit evidence of the lower damages
on its motion for summary judgment dated January 21, 2003, and that because Bell South did not
offer such evidence at trial, Bell South waived its argument. Second, Dial One contends that, to the
extent that Bell South properly raised these arguments, it is not contesting them on appeal.
While it is true that Bell South did not offer evidence of damages in its summary judgment
motion, that motion was limited to the specific issue of whether the Tariff’s limitation provision
applied. As the conclusion of Bell South’s supporting memo shows, that party did not concede $500
in liability. Furthermore, according to the trial transcripts Bell South pressed this particular damages
argument before the district judge, relying on the statements of Carmelia McCrear as to the monthly
amount that Dial One paid for the Marque Drive listings. Finally, Bell South’s notice of appeal
explicitly challenges the district court ruling as to damages; it has briefed, and therefore preserved,
its argument as to this issue on appeal. Because Bell South has briefed an argument that it raised
before the trial court and which is supported by evidence in the record, we see no reason to deem this
argument waived.
The Tariff, in relevant part, states:
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The Co mpany’s liability for damages arising from errors in or omissions of listings in its
directories and or directory assistance records for which no additional charge is made . . . in
no event shall exceed one-half the amount of the charge to the subscriber for Local Exchange
Service during the period covered by the directory or during the period that the directory
assistance records remain in error after notice to the Company by the subscriber, or $500.00,
whichever is less.
GENERAL SUBSCRIBER SERVICES TARIFF, § A 2.5.9. The Tariff thus contemplates three possible
amounts for Bell South’s liability.
The record shows that Dial One paid $18.50 per month per listing for the Local Exchange
Service.2 Bell South initially published the erroneous Marque Drive listings in the May, 2001,
telephone directory. It repeated those errors in the November, 2001, directory, which ran until
November, 2002. The period from May, 2001, to November, 2002, is eighteen months. The record
also shows, however, that Bell South was not notified about the error until October, 2001. That is
a thirteen-month period. As per the Tariff, therefore, Dial One was entitled to $120.25 (one half of
$18.50 for thirteen months) per listing, for a total of $721.50 for the six listings.
B. Help Service Errors
On cross-appeal, Bell South argues that its mistaken labeling of Help Service Company as a
Dial One corporation is not a violation of the Lanham Act. The district court ruled that Bell South
was liable because the case was indistinguishable from Dial One, focusing primarily on the question
of whether Bell South was an “innocent infringer” under 15 U.S.C. § 1114(2). In holding that it was
not, the district court found that Bell South’s actions were not objectively reasonable.
2
Dial One argues that it deserves damages for each incidence of error—of which there are
23—as opposed to each listing. We reject that argument, simply pointing to the language of the
Tariff, which quite clearly states that the relevant number is “the amount of the charge to the
subscriber for Local Exchange Service.” Because Dial One did not pay more for each additional
incidence, it does not obtain damages for each additional incidence.
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On appeal, Bell South offers two reasons for why this case should be distinguished from Dial
One. We find their arguments unavailing. First, Bell South maintains that this Court should apply
a negligence standard, rather than the objective reasonableness standard. Although it is difficult to
discern the origin of this argument, Bell South nevertheless contends, in its reply brief, that “the issue
here is negligence under Louisiana law, not application of the ‘innocent infringer’ defense under the
Lanham Act.” Bell South was held liable, however, under the Lanham Act.3 Moreover, the
proceedings below made clear that state law negligence was not at issue. The gravamen of Dial
One’s complaint was not negligence under state law; rather, it was trademark infringement and unfair
competition claims under both state and federal law. In its May 12, 2003 order, the district court
explicitly focused on Dial One’s trademark infringement claims under the federal Lanham Act. A plain
reading of its order of September 25, 2003 shows that, with respect to the Help Service error, the
district court was considering only federal law. As such, this Court simply does not have before it
any negligence claims to which Bell South’s argument applies.4
3
That appropriate section states:
Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark in connection with the sale, offering for sale, distribution, or advertising of
any goods or services on or in connection with which such use is likely to cause confusion,
or to cause mistake, or to deceive . . . shall be liable in a civil action.
15 U.S.C. § 1114.
4
The court’s order gives undisputed facts as to the Help Service error. Following the
Fifth Circuit’s ruling in Dial One, the court concluded that Dial One had met its evidentiary
burden for liability. Only then did the court consider the innocent infringer defense. Therefore,
Bell South’s implicit contention that the district court conflated the innocent infringer defense
with the initial determination of liability, is not well taken.
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Second, Bell South argues that in the 2001 litigation, Bell South was able to delete or amend
listings at its discretion. After the 1996 Telecommunications Act, 47 U.S.C. § 251 et seq., a number
of new local exchange services began to provide telephone services. While BAPCO still published
the directory, it obtained numbers not from the customers, but from their providers. Here, Help
Service receives telephone service from WorldCom. Accordingly, Bell South contends, it did not
have the discretion to change the listing, and could only do so at the request of WorldCom. This lack
of discretion, however, is only for permanent changes to the database. Bell South did in fact make
a temporary change to its database without outside authorization. Its claim that it was legally
precluded from making a change to the directory is therefore unavailing.
C. Damages
Finally, Bell South challenges the sufficiency of the damages awarded by the district court for
the Help Service error. The Lanham Act contains a broad remedial provision, which allows the
district court substantial discretion in awarding damages. See 15 U.S.C. § 1117. The limits to its
authority are, primarily, two: it may not provide for punitive damages, and the award must not be
inequitable. Id.; Dial One, 269 F.3d at 527. The district court’s decision to award damage is
reviewed for plain error only. FED. R. CIV. P. 52(a).
Bell South cites no evidence, and we find none, showing that the district court awarded an
amount that was either punit ive or inequitable. The district court considered historical data
concerning the number of annual franchises sold and analyzed general economic conditions. The
district court also showed skepticism with the speculative nature of franchise selling. As in Dial One,
we find that “[t]his demonstrates a weighing of the factors sufficient to support the award.” 269 F.3d
at 527. We affirm the district court’s award.
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III.
We REVERSE the award of $3000 for the Marque Drive errors, and REMAND for an entry
of judgment in the amount of $721.50. In all other respects, the judgment of the district court is
AFFIRMED.
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