Acrylicon USA, LLC v. Silikal GMBH

USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 1 of 44

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT
__________________________

No. 17-15737
__________________________

D.C. Docket No. 1:14-cv-01072-TWT

ACRYLICON USA, LLC,
a Delaware limited liability company,

Plaintiff-Appellee,

versus

SILIKAL GMBH,
a foreign corporation,
Defendant-Appellant.

__________________________

Appeal from the United States District Court
for the Northern District of Georgia
__________________________

(January 26, 2021)

Before JORDAN and TJOFLAT, Circuit Judges, and SCHLESINGER,* District
Judge.

TJOFLAT, Circuit Judge:

*
Honorable Harvey Erwin Schlesinger, United States District Judge for the Middle
District of Florida, sitting by designation.
USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 2 of 44

2
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 3 of 44

This case involves the breach of an agreement between two parties who

shared a trade secret, AcryliCon USA, LLC (“AC-USA”), and Silikal GmbH

(“Silikal”). The trade secret consisted of the formula for 1061 SW, a flooring resin

Silikal manufactured and sold (along with other flooring resins). The agreement

provided that AC-USA and its affiliate, AcryliCon International, Ltd. (“AC-

International”), would be Silikal’s exclusive distributors of 1061 SW and that

Silikal would not sell the resin without AcryliCon’s 1 written permission.

According to AC-USA, Silikal breached the agreement by selling 1061 SW

without its written permission, so it sued Silikal under common law for breach of

contract (“Contract” claim) and under the Georgia Trade Secrets Act of 1990

(“GTSA”)2 for misappropriation of the shared trade secret (“Misappropriation”

claim).3 A jury awarded AC-USA damages of $1.5 million on each of the two

claims, and the District Court awarded AC-USA $3 million in punitive damages on

the Misappropriation claim. The District Court thereafter denied Silikal’s post-

1
Throughout this opinion, we will refer to the Plaintiff as “AC-USA” and to AcryliCon
International, Ltd. as “AC-International.” To refer to both entities, we will simply say
“AcryliCon.”
2
O.C.G.A. § 10–1–760 et seq.
3
AC-USA’s Second Amended Complaint, the operative complaint here, contained seven
claims, each in a separate count, as indicated infra. Only the claims for breach of contract
(Count Seven) and misappropriation of trade secret (Count One) were adjudicated in the District
Court’s judgment.
3
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 4 of 44

verdict motion for judgment as a matter of law on the Misappropriation and

Contract claims and entered a final judgment for AC-USA for $5,861,415.4

Silikal appeals. It argues first that the District Court erred in denying its

motion to dismiss the case for lack of personal jurisdiction. It argues alternatively

that the Court erred in denying its motion for judgment as a matter of law on the

Misappropriation and Contract claims.5 We reject Silikal’s argument that the

District Court lacked jurisdiction over its person, and therefore affirm the Court’s

denial of Silikal’s motion to dismiss. We are persuaded, though, by Silikal’s

argument that AC-USA failed to prove its Misappropriation claim. We also agree

that AC-USA failed to prove that it sustained cognizable damages on its Contract

claim. We therefore reverse the District Court’s judgment on the Misappropriation

claim and vacate the damages awarded on the Contract claim. We also hold that

AC-USA is entitled to nominal damages and attorney’s fees on its Contract claim

in a sum to be determined by the District Court on remand.

4
The final judgment consists of $1.5 million in damages, $3 million in punitive damages,
and $1,361,415 in attorney’s fees.
5
Silikal does not challenge the District Court’s decision on summary judgment that it
breached the parties’ contract by selling 1061 SW without AC-USA’s written consent. As a
result of that decision, the Contract claim was tried to the jury on the issue of damages only.
4
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 5 of 44

I.

A.

At the center of this dispute is an industrial flooring resin called 1061 SW.

A flooring resin is a liquid that settles into a solid floor when it is combined with

other chemicals and spread over a surface. The 1061 SW resin is unique for two

reasons: It forms a floor with roughly twice the compressive strength of other

resins, and it is a valuable trade secret. The 1061 SW resin is used to make

commercial floors in restaurants, manufacturing facilities, hospitals, schools,

grocery stores, and the like.

Although the parties shared the formula for the purpose of their

manufacturer-distributor relationship, AC-USA and Silikal each claim to own the

1061 SW formula, to the exclusion of the other. Silikal traces its ownership back

to 1987, when it claims to have invented the formula. AC-USA, meanwhile,

claims ownership by virtue of a 2010 Global Settlement Agreement (“GSA”)

entered into by the parties and their affiliates. The GSA resolved a lawsuit

between AC-International and Silikal America—entities affiliated with but distinct

from the parties before us today.

B.

The 1061 SW formula was invented in 1987. While Silikal claims to have

invented the formula on its own, AC-USA insists that Silikal merely participated in

5
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 6 of 44

its invention, and that Bjorn Hegstad, a chemical engineer who founded AC-

International, came up with the idea. According to AC-USA, Hegstad and Silikal

agreed 6 at the time of the formula’s invention that the formula belonged to Hegstad

and AC-International, and that Silikal possessed the formula for the sole purpose of

manufacturing the 1061 SW resin for Hegstad and AC-International.

From 1987 to 1997, Hegstad sold 1061 SW in Norway under an agency

agreement between Hegstad and Silikal. In 1997, AC-International and Silikal

executed an agency agreement establishing AC-International as the exclusive

distributor of 1061 SW resin. 7

In 2008, AC-USA was incorporated. That same year, AC-USA entered into

a licensing agreement with two affiliates of AC-International—Raliz AG and

AcryliCon Distribution Est.—that gave AC-USA the right to import, market, and

sell “AcryliCon Systems”8 in the United States, including the 1061 SW resin. AC-

USA was not permitted to sell AcryliCon Systems outside of the United States

without permission from AC-International.

6
Hegstad testified to the existence of an oral and written agreement, but no written
agreement was actually introduced.
7
While the 1997 agency agreement is referenced in the record, the agreement itself is not
part of the record.
8
The phrase “AcryliCon Systems” refers to the industrial flooring products sold by
AcryliCon, including the floors made from the 1061 SW resin.
6
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 7 of 44

Shortly after AC-USA was formed, disputes between AC-International and

Silikal resulted in a lawsuit between the two parties.9 The lawsuit was resolved in

2010 when the parties entered into the GSA. Although AC-USA was not a party to

the lawsuit, it was a party to the GSA.10

The GSA created a contract that accomplished several objectives (“GSA

Contract”). First, it terminated the 1997 agency relationship between AC-

International and Silikal. Second, it settled all present and future claims relating to

the parties’ business relationship, except for claims arising from the GSA Contract

itself. Third, Silikal promised that it would “preserve the secrecy” of the 1061 SW

formula. Fourth, Silikal promised that it would not sell the 1061 SW resin to

anyone other than AcryliCon without AcryliCon’s written consent.11 Fifth, Silikal

9
AC-International filed the lawsuit against Silikal because Silikal had allegedly used
pictures of AC-International’s floors in its sales materials.
10
The parties to the GSA are Silikal GmbH, Silikal USA, Inc., AcryliCon International,
Ltd., AC-USA, LLC, Alpenstock Holding, Ltd., AcryliCon Distribution Est., and Bjorn Hegstad.
11
AC-USA’s Contract claim is based on Paragraph 5 of the GSA Contract, titled
“Confidentiality and Use of 1061 SW.” Paragraph 5 provides in full:
Silikal represents and warrants that it has not disclosed the formula for 1061 SW
resin or sold or distributed 1061 SW resin, directly or indirectly, to anyone other
than AcryliCon during the pendency of the Silikal/AcryliCon relationship. Silikal
hereby covenants and agrees that it will preserve the secrecy of the formula for the
1061 SW resin. Silikal will not disclose or use in any way, directly or indirectly,
the 1061 SW resin or formula for the 1061 SW resin. Silikal further covenants and
agrees NOT to sell or distribute 1061 SW resin to anyone other than AcryliCon, or
as expressly permitted in writing by AcryliCon. Within 10 days of this Settlement
Agreement, Silikal shall ship by DHL to Bjorn Hegstad . . . all laboratory records
and other available documents regarding the formulation and development of the
1061 SW resin.
7
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 8 of 44

promised to ship “all laboratory records and other available documents regarding

the formulation and development of the 1061 SW resin” to Bjorn Hegstad. Finally,

Silikal promised that it would “make no statements or representations . . .

regarding the formula for 1061 SW,” and all parties agreed not to make statements

or representations “that Silikal Products and AcryliCon Systems are the same.”

The GSA Contract also contains a forum-selection provision. The provision

states that disputes arising from activities in the United States shall be governed by

“the laws of the United States and the State of Georgia,” and that jurisdiction shall

be exclusive in the Northern District of Georgia. The parties also waived any

objections to personal jurisdiction and to the location of venue in the Northern

District of Georgia as to all disputes relating to the GSA Contract and arising from

activities in the United States. As to disputes arising outside of the United States,

the GSA states that they shall be governed according to the laws of the place of the

dispute.

C.

AC-USA filed this lawsuit in 2014, claiming that Silikal breached the GSA

Contract by manufacturing the 1061 SW resin, selling it on a global scale, and

taking credit for AcryliCon Systems in its marketing. AC-USA pled seven counts

8
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 9 of 44

in its complaint: misappropriation of trade secrets, 12 trademark infringement,13

unfair competition, 14 state statutory trademark infringement and unfair

competition, 15 common law trademark infringement and unfair competition,16

deceptive trade practices,17 and breach of contract.18

AC-USA filed its complaint in the United States District Court for the

Northern District of Georgia.19 Silikal responded with a motion to dismiss for lack

of personal jurisdiction. According to Silikal, the Northern District of Georgia

lacked jurisdiction over its person because Silikal had not sold 1061 SW in the

United States to anyone other than AcryliCon. Accordingly, the GSA, which

designates the Northern District of Georgia as the jurisdiction for claims arising

from activities in the United States, did not apply. For the same reason, Silikal

also asserted that the Court could not exercise jurisdiction under any applicable

long-arm statute.

12
O.C.G.A. § 10–1–760 et seq. (Count One).
13
15 U.S.C. § 1125 (Count Two).
14
Id. §§ 1125–1126 (Count Three).
15
O.C.G.A. § 23–2–55 (Count Four)
16
(Count Five)
17
Id. § 10–1–372(a)(1), (3), (5), (7), (8) (Count Six).
18
Specifically, AC-USA argued that Silikal breached the GSA Contract (Count Seven).
19
AC-USA amended its complaint twice, first as a matter of course and second with
leave of the District Court in order to cure issues raised in Silikal’s first motion to dismiss. We
refer to the Second Amended Complaint as the “complaint.”
9
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 10 of 44

AC-USA countered that the Northern District of Georgia could exercise

personal jurisdiction over Silikal under the GSA because Silikal had sold 1061 SW

resin in the United States under the label “R 61 H.” The parties produced

competing affidavits on the issue. AC-USA submitted an affidavit from Bernd

Diel, who supervised operations at a Silikal factory in Germany.20 Diel stated that

Silikal had sold 1061 SW to customers other than AcryliCon in the United States,

and that when it did so, it labeled the 1061 SW as R 61 H. Silikal produced an

affidavit from Hubert Weimann, Silikal’s Managing Director.21 According to

Weimann, Silikal “never sold 1061 SW or any product containing the formulation

1061 SW to any customer in the United States, other than directly to Acrylicon.”

Weimann acknowledged that Silikal had sold a resin called R 61 in the United

States, but insisted that R 61 was distinct from 1061 SW.

The District Court denied Silikal’s motion to dismiss, finding that it had

personal jurisdiction over Silikal under the GSA. According to the District Court,

Diel’s affidavit, together with Silikal’s admission that it sold R 61 in the United

20
Diel worked at Silikal for 25 years. In 2009, he was moved to S&H Flooring Consult
GmbH, which is fully controlled by Silikal. He worked at S&H Flooring until January 2014. He
signed his affidavit in November 2014.
21
Weimann has worked at Silikal since 1983. He became the Managing Director in
2008. He held that position in 2017 when he signed his affidavit for this case.
10
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 11 of 44

States, was a sufficient basis on which to exercise personal jurisdiction over

Silikal.22

Following the District Court’s ruling, Silikal answered AC-USA’s

complaint. The answer essentially denied liability on all claims.23 Then, after

limited discovery, AC-USA filed a motion for partial summary judgment on its

Contract claim, 24 and for a permanent injunction barring Silikal from producing or

selling 1061 SW. The Court granted AC-USA’s motion and issued a permanent

injunction25 against Silikal, in no small part because “[p]revious counsel for

22
After the District Court denied Silikal’s motion to dismiss, Silikal filed a motion for
reconsideration arguing that the Court’s ruling was based on the misimpression that R 61 and R
61 H were the same product. Since there was no evidence that R 61—as opposed to R 61 H—
was 1061 SW, Silikal argued that there was no evidence that it sold 1061 SW to anyone other
than AC-USA in the United States. Accordingly, Silikal concluded that the GSA did not supply
a jurisdictional basis. The District Court denied Silikal’s motion as untimely and without merit.
23
Silikal’s answer asserted eleven affirmative defenses, including failure of the complaint
to state a claim for relief. None of these affirmative defenses are relevant here.
24
AC-USA sought summary judgment solely on the issue of liability—whether Silikal
breached the GSA Contract by selling 1061 SW resin without AC-USA’s written consent.
25
While the District Court called the injunction permanent, it was in fact preliminary.
The injunction therefore dissolved when the Court entered its final judgment. See U.S. Philips
Corp. v. KBC Bank N.V., 590 F.3d 1091, 1093 (9th Cir. 2010); United States ex rel. Berger v.
Lawrence, 848 F.2d 1502, 1512 (10th Cir. 1988). “The purpose of a preliminary injunction is
merely to preserve the relative positions of the parties until a trial on the merits can be held.”
Univ. of Texas v. Camenisch, 451 U.S. 390, 395, 101 S. Ct. 1830, 1834, 68 L. Ed. 2d 175 (1981).
A preliminary injunction only becomes a permanent injunction when the district court includes a
permanent injunction in its final judgment. See Associated Builders & Contractors Fla. E. Coast
Chapter v. Miami-Dade Cnty., 594 F.3d 1321, 1323–24 (11th Cir. 2010) (per curiam) (“Once an
order of permanent injunction is entered, any preliminary injunction merges with it . . . .”).

Here, the District Court entered the injunction against Silikal when it granted AC-USA’s
partial motion for summary judgment on the Contract claim. The Court’s entry of summary
judgment decided only the issue of liability, not damages. For that reason, it was not a final
judgment, and the injunction was preliminary. See Fort v. Roadway Express, Inc., 746 F.2d 744,
11
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 12 of 44

[Silikal] admitted . . . at a status conference before [the District Court] that ‘there

have been sales of [1061 SW] in violation of the global settlement agreement’” and

that Silikal did not “dispute that there [had] been a breach of contract.”

Silikal filed an interlocutory appeal challenging the permanent injunction. 26

Silikal argued that the District Court erred by (1) denying its motion to dismiss for

lack of personal jurisdiction and (2) entering a permanent injunction. AcryliCon

USA, LLC v. Silikal GmbH & Co. (AcryliCon I), 692 F. App’x 613, 615 (11th Cir.

2017) (per curiam).

We declined to exercise our pendent jurisdiction to consider Silikal’s

personal-jurisdiction argument on interlocutory appeal. Id. We did so because

“the issue of personal jurisdiction is neither inextricably intertwined with nor

necessary to ensure meaningful review of the district court’s grant of a permanent

injunction.” Id. at 616.

Regarding AC-USA’s case for the injunction, Silikal argued that AC-USA

failed to comply with a GSA Contract provision requiring a nonbreaching party to

747 (11th Cir. 1984) (“A final judgment is generally recognized as being an order of the court
which ‘leaves nothing for the court to do but execute on the judgment.’”) (citation omitted);
Warren Publishing, Inc., v. Microdos Data Corp., 115 F.3d 1509, 1511 n.1 (11th Cir. 1997) (en
banc); see also Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 742, 96 S. Ct. 1202, 1206 (1976).
The Court did not include a permanent injunction in its final judgment, and the preliminary
injunction therefore dissolved when the Court entered its final judgment. AC-USA has not filed
a cross-appeal challenging the Court’s failure to include a permanent injunction in its final
judgment, so we will not address the issue on appeal.
26
We had jurisdiction to review the injunction as an interlocutory order pursuant to 28
U.S.C. § 1292(a)(1).
12
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 13 of 44

take certain steps before filing suit. Id. Pursuant to the GSA Contract, a

nonbreaching party must provide written notice to the breaching party and an

opportunity to cure the breach within ten days; if it is not cured, the parties must

attempt mediation within 30 days. Id. If both steps fail to cure the breach, the

nonbreaching party may file suit. Id.

Silikal argued, and AC-USA did not dispute, that AC-USA failed to give

written notice or provide a chance at mediation before it filed its initial complaint.

Id. at 616–17. We nevertheless upheld the injunction because, after AC-USA filed

its initial complaint, it satisfied these GSA Contract requirements. Id. at 617.

Before we issued our opinion in AcryliCon I, this case went to trial before a

jury. AC-USA called three live witnesses: Jason Bye, director of sales and ten

percent owner of AC-USA; Dawn Bye, director of operations and 84 percent

owner of AC-USA; and Patrick Gannon, a damages expert. AC-USA presented

the testimony of seven witnesses via videotaped depositions: Bjorn Hegstad; Bernd

Diel; Hubert Weimann; Henning Simon, director of sales and exports of Silikal;

Hermann Huber, production manager of Silikal; Bjoern Hundshammer, assistant

production manager of Silikal; and Harald Schmidt, former managing director and

part owner of Silikal. Finally, AC-USA presented the written deposition testimony

of Bettina Waldecker, managing director of Silikal. The testimony of these

witnesses established that Silikal sold 1061 SW in several foreign countries, but

13
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 14 of 44

none in AC-USA’s licensed territory. Gannon, based on Silikal’s business records,

calculated the revenues and profits Silikal made from selling 1061 SW, including

convoyed sales (that is, sales including both 1061 SW and other products).

After presenting the testimony of these witnesses, AC-USA rested its case

and Silikal moved the District Court for judgment as a matter of law on all of AC-

USA’s claims. 27 Silikal noted AC-USA’s failure to present any evidence that

Silikal had sold 1061 SW in the United States, and argued that AC-USA had

therefore failed to show that it suffered any compensable harm.

AC-USA responded by informing the Court that it was withdrawing five of

its seven claims,28 leaving only the Misappropriation claim and damages on the

Contract claim. 29 The Court granted Silikal’s motion as to the withdrawn claims

27
Fed. R. Civ P. 50(a)(1).
28
The five claims were asserted in Counts Two through Six of the complaint. AC-USA
argued that its withdrawal of the five claims should be treated as a motion to amend its complaint
(to delete the claims), and that Counts Two through Six should be dismissed without prejudice.
The Court rejected AC-USA’s argument and, as indicated in the following text, granted Silikal’s
motion for judgment as a matter of law on those five counts. The Court also entered judgment
for Silikal on Count Seven, the Contract claim, to the extent that Count Seven sought attorney’s
fees under O.C.G.A. § 13–6–11. That section provides:
The expenses of litigation generally shall not be allowed as a part of the damages;
but where the plaintiff has specially pleaded and has made prayer therefor and
where the defendant has acted in bad faith, has been stubbornly litigious, or has
caused the plaintiff unnecessary trouble and expense, the jury may allow them.
O.C.G.A. § 13–6–11.
29
These claims were asserted in Counts One and Seven of the complaint. Only the
matter of damages remained to be litigated on the Count Seven claim because Silikal conceded
that the Court’s order granting AC-USA a permanent injunction based on its breach of the GSA
Contract resolved all Count Seven issues except the matter of damages.
14
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 15 of 44

and denied it as to the Misappropriation and Contract claims, which were then sent

to the jury.

The jury found for AC-USA, awarding $1.5 million on the Misappropriation

claim and $1.5 million on the Contract claim. Post-verdict, AC-USA moved the

District Court to award punitive damages on the Misappropriation claim.30 Over

Silikal’s objection, the Court granted the motion and awarded AC-USA $3 million.

Silikal challenged the jury’s verdicts and the District Court’s punitive damages

decision by renewing its motion for judgment as a matter of law. 31 Silikal also

moved the Court to grant a new trial.32

In its renewed motion, Silikal reiterated its earlier argument that the Court

lacked personal jurisdiction. The Court rejected the argument on two grounds.

First, Diel’s trial testimony indicated that Silikal had distributed a sample of 1061

30
O.C.G.A. § 10–1–763(b) gives the district court discretion to award “exemplary
damages” for “willful and malicious misappropriation.” The jury verdict included a specific
finding that Silikal’s conduct constituting misappropriation was “willful.”
31
Fed. R. Civ P. 50(b).
32
Id.
15
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 16 of 44

SW in the United States.33 Second, Silikal had admitted that it breached the GSA

Contract, which harmed AC-USA in the United States. 34

After it resolved the jurisdiction issue, the District Court denied Silikal’s

motions for judgment as a matter of law and for a new trial. The Court concluded

that the evidence was sufficient to establish that Silikal had misappropriated AC-

USA’s trade secret and that AC-USA had suffered cognizable harm.

33
The District Court drew on Diel’s testimony, presented at trial via video:
Q. When did you first tell Mr. Hegstad or Mr. Fischer or anyone else associated with
AcryliCon that you believed that Silikal had been using 1061 [SW] in its sales of R 61 H?
A. It was in February or March 2014. And I didn’t believe, but I knew that they did that.
Q. Do you have any knowledge that R 61 H was ever sold by Silikal to anyone in the
United States?
A. At least as a sample to Sika.
Q. That’s what I mean, whether – no matter what was in it, are you aware of any Silikal R
61 H ever being indirectly shipped to or used in the United States?
A. Yes.
Q. Okay. What knowledge do you have on that basis – in that regard?
A. I know that Sika ordered R 61 H that was determined – or that was supposed to be
shipped into the U.S. from there.
Q. I thought you just told me that the only – that the only knowledge you had that R 61 H
had ever been sold to anyone in the United States was that Sika had been provided with a
sample.
A. Yes, there were samples that officially went to Sika but that went – actually went to
the USA.
34
As we discussed above, prior counsel admitted that “there have been sales of the
product in violation of the [GSA]” and that Silikal does not “dispute that there’s been a breach of
the [GSA].”
16
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 17 of 44

After the District Court disposed of Silikal’s motions, AC-USA moved for

attorney’s fees, and the Court awarded $1,361,415. The Court then entered a final

judgment of $5,861,415.

Silikal appealed the District Court’s judgment. Among other things, Silikal

argued that the Court’s $1.5 million damages judgment was only for the

Misappropriation claim and not for the Contract claim. AC-USA disagreed,

arguing that the judgment awarded the same $1.5 million for both the

Misappropriation and Contract claims. Finding the judgment ambiguous, we

issued a limited remand while retaining jurisdiction, instructing the District Court

to clarify its judgment. The District Court promptly entered a revised final

judgment, which gave AC-USA $1.5 million on both the Misappropriation and

Contract claims. We then ordered supplemental briefing on the Contract-claim

award.

Silikal appeals the revised final judgment. We consider four issues. First,

whether the District Court properly exercised personal jurisdiction over Silikal.

Second, whether the District Court erred in denying Silikal’s motion for judgment

as a matter of law on the Misappropriation claim. Third, whether the District

Court erred when it entered its revised final judgment awarding AC-USA $1.5

million in damages on the Contract claim. Fourth, whether AC-USA is entitled to

attorney’s fees. We address each issue in turn.

17
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 18 of 44

II.

Silikal argues that the District Court erred in denying its motion to dismiss

for lack of personal jurisdiction. We hold that Silikal has waived its personal-

jurisdiction challenge by appealing the District Court’s pre-trial jurisdictional

ruling instead of its final disposition. In other words, Silikal appealed the Court’s

denial of its motion to dismiss when it should have appealed the Court’s denial of

its post-verdict motion for judgment as a matter of law.

A.

We review a district court’s exercise of personal jurisdiction de novo and its

factual findings for clear error. Nippon Credit Bank, Ltd. v. Matthews, 291 F.3d

738, 746 (11th Cir. 2002) (per curiam).

“A federal court sitting in diversity undertakes a two-step inquiry in

determining whether personal jurisdiction exists: the exercise of jurisdiction must

(1) be appropriate under the state long-arm statute and (2) not violate the Due

Process Clause of the Fourteenth Amendment to the United States Constitution.”

Diamond Crystal Brands, Inc. v. Food Movers Intern., Inc., 593 F.3d 1249,1257–

58 (11th Cir. 2010) (quoting United Techs. Corp. v. Mazer, 556 F.3d 1260, 1274

(11th Cir. 2009)).

When a defendant challenges personal jurisdiction in a Rule 12(b)(2) motion

to dismiss, the district court must hear and decide the issue “before trial unless the

18
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 19 of 44

court orders a deferral until trial.” Fed. R. Civ. P. 12(i). Rule 12(i) affords the

district court discretion on how to proceed at this stage. While the plaintiff bears

the burden of establishing personal jurisdiction, the plaintiff’s burden of proof

varies according to how the district court chooses to proceed. Oldfield v. Pueblo

De Bahia Lora, S.A., 558 F.3d 1210, 1217 (11th Cir. 2009); see also Forsythe v.

Overmyer, 576 F.2d 779, 781 (9th Cir. 1978) (“Upon a motion to dismiss for lack

of personal jurisdiction, the burden varies according to the nature of the pre-trial

proceedings in which the jurisdictional question is decided.”).

No matter how the district court proceeds, the plaintiff must eventually—by

the close of evidence—establish personal jurisdiction by a preponderance of the

evidence. General Elec. Credit Corp. v. Scott’s Furniture Warehouse Showroom,

Inc., 699 F. Supp. 907, 910 (N.D. Ga. 1988); see also In re DePuy Orthopaedics,

Inc., Pinnacle Hip Implant Prod. Liab. Litig., 888 F.3d 753, 778 (5th Cir. 2018);

Grayson v. Anderson, 816 F.3d 262, 268 (4th Cir. 2016). The district court can

impose the preponderance-of-the-evidence standard right away, during the pre-trial

phase, by conducting an evidentiary hearing. If it holds a hearing, the court

“adjudicate[s] the issue of whether the court has jurisdiction over the defendant’s

person” by “determin[ing] the credibility of the witness testimony, weigh[ing] the

evidence, and find[ing] the relevant jurisdictional facts.” PVC Windoors, Inc. v.

Babbitbay Beach Constr., N.V., 598 F.3d 802, 810 (11th Cir. 2010). Because the

19
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 20 of 44

court is making factual determinations and reaching a final decision on

jurisdiction, a preponderance-of-the-evidence standard applies. E.g., Resolution

Trust Corp. v. Pharaon, 915 F. Supp. 351, 358 (S.D. Fla. 1996); Grayson, 816

F.3d at 269; Schneider v. Hardesty, 669 F.3d 693, 697 (6th Cir. 2012); Boit v. Gar-

Tec Products, Inc., 967 F.2d 671, 676 (1st Cir. 1992).

Alternatively, the district court can wait to impose a preponderance-of-the-

evidence standard until trial. If the court chooses this course, then it reviews the

motion to dismiss under a prima facie standard. In such a case, the district court

decides the motion to dismiss based solely on the complaint and affidavits. The

plaintiff meets its burden if it presents enough evidence to withstand a motion for

judgment as a matter of law. Stubbs v. Wyndham Nassau Resort & Crystal Palace

Casino, 447 F.3d 1357, 1360 (11th Cir. 2006). The court accepts as true all

unchallenged facts in the plaintiff’s complaint, and then considers all affidavit

evidence proffered by the parties. To the extent that “the plaintiff’s complaint and

supporting evidence conflict with the defendant’s affidavits, the court must

construe all reasonable inferences in favor of the plaintiff.” Diamond Crystal, 593

F.3d at 1257. Whether the plaintiff satisfies the prima facie requirement is a purely

legal question; the district court does not weigh evidence or make credibility

determinations.

20
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 21 of 44

If the district court applies the prima facie standard and denies the motion to

dismiss, “it is implicitly, if not explicitly, ordering ‘that hearing and determination

[of the motion to dismiss] be deferred until the trial.’” Boit, 967 F.2d at 676

(alteration in original) (quoting Fed. R. Civ. P. 12(d)). 35 After trial, if the

defendant still believes personal jurisdiction is lacking, it may invite the district

court to revisit personal jurisdiction in light of the evidence produced at trial, at

which time the court will impose a preponderance-of-the-evidence standard.

Personal jurisdiction is a waivable defect. Palmer v. Braun, 376 F.3d 1254,

1259 (11th Cir. 2004) (per curiam). A defendant who does not object to personal

jurisdiction in a responsive pleading or a Rule 12 motion, or who raises personal

jurisdiction for the first time on appeal, waives the defect. Id.

B.

Silikal did not request, and the District Court did not conduct, an evidentiary

hearing to decide the personal jurisdiction issue before trial. Rather, based on AC-

USA’s complaint and supporting affidavits, as well as Silikal’s affidavits, the

35
The language quoted in Boit comes from an older version of Rule 12. The rule was
amended in 2007 for stylistic purposes only. Fed. R. Civ. P. 12 advisory committee’s note to
2007 amendment. The current version reads:
If a party so moves, any defense listed in Rule 12(b)(1)-(7)–whether made in a
pleading or by motion–and a motion under Rule 12(c) must be heard and decided
before trial unless the court orders a deferral until trial.
Fed. R. Civ. P. 12(i).
21
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 22 of 44

Court decided that AC-USA satisfied the prima facie standard for personal

jurisdiction.

By denying Silikal’s motion to dismiss, the District Court implicitly deferred

the jurisdictional determination until trial. Post-trial, as part of its renewed motion

for judgment as a matter of law, Silikal asked the District Court to revisit the

personal jurisdiction issue in light of the evidence. 36 In so doing, Silikal subjected

AC-USA to the heightened preponderance-of-the-evidence standard.

When the District Court revisited the issue post-trial, it offered two new

grounds for finding personal jurisdiction. Both came to light during the trial and

were not included in the Court’s pre-trial order denying the motion to dismiss. The

District Court’s post-trial ruling was its final disposition of the personal

jurisdiction issue. If the Court considered the record incomplete when it denied the

motion to dismiss pre-trial, the record of the trial afforded it the opportunity to

make a more informed jurisdictional ruling.

Silikal has waived its challenge to personal jurisdiction because it only

appeals the District Court’s pre-trial denial of its motion to dismiss, rather than the

Court’s post-trial disposition of the jurisdiction issue. In essence, Silikal asks us to

36
Instead of raising the personal jurisdiction issue in its motion for judgment as a matter
of law, Silikal should have raised it in a motion to revisit personal jurisdiction. For the purposes
of this discussion, we treat Silikal’s request as if it appeared where it belonged—in a motion to
revisit.
22
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 23 of 44

review the motion-to-dismiss record to determine whether the District Court erred

at that juncture, despite the fact that the Court, in its pre-trial order, deferred its

final jurisdictional ruling until trial. Because Silikal makes no argument about the

post-trial order, we do not review it.

Stated generally, we now hold that when a district court denies a motion to

dismiss for lack of personal jurisdiction, and then revisits personal jurisdiction

post-trial in light of the record as it exists at that time, the defendant must appeal

the post-trial disposition in order to preserve the issue of personal jurisdiction on

appeal.

III.

Silikal argues that the District Court erred in denying its motion for

judgment as a matter of law on AC-USA’s Misappropriation claim. We agree, and

accordingly reverse the judgment.

We review the denial of a renewed motion for judgment as a matter of law

de novo. EEOC v. Exel, Inc., 884 F.3d 1326, 1329 (11th Cir. 2018). “Under Rule

50, a party’s motion for judgment as a matter of law can be granted at the close of

evidence or, if timely renewed, after the jury has returned its verdict, as long as

there is no legally sufficient evidentiary basis for a reasonable jury to find for the

non-moving party.” Chaney v. City of Orlando, 483 F.3d 1221, 1227 (11th Cir.

2007) (quotation marks omitted) (alteration adopted).

23
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 24 of 44

To prove a claim for misappropriation of trade secrets under the GTSA, a

plaintiff must show that “(1) it had a trade secret and (2) the opposing party

misappropriated the trade secret.” Penalty Kick Mgmt. Ltd. v. Coca Cola Co., 318

F.3d 1284, 1290–91 (11th Cir. 2003).

AC-USA claims that Silikal’s manufacture and sale of the 1061 SW resin

without its prior written consent constituted misappropriation under the GTSA.

The parties agree that the 1061 SW formula is a trade secret, but disagree as to

whether the evidence was sufficient for the jury to decide that the trade secret was

AC-USA’s and that Silikal misappropriated it. We find it unnecessary to decide

whether AC-USA had the trade secret, because the evidence that Silikal

misappropriated it is insufficient as a matter of law.

Misappropriation, in the sense relevant here, means:

Disclosure or use of a trade secret of another without express or implied
consent by a person who . . . [a]t the time of disclosure or use, knew or
had reason to know that knowledge of the trade secret was . . .
[a]cquired under circumstances giving rise to a duty to maintain its
secrecy or limit its use.

O.C.G.A. § 10–1–761(2)(B) (emphasis added).37

37
O.C.G.A. § 10–1–761(2) reads in full:
(2) “Misappropriation” means:
(A) Acquisition of a trade secret of another by a person who knows or has reason
to know that the trade secret was acquired by improper means; or
(B) Disclosure or use of a trade secret of another without express or implied consent
by a person who:

24
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 25 of 44

It is undisputed that Silikal used the formula without AC-USA’s consent.

Thus, assuming arguendo that AC-USA had the trade secret, AC-USA had to show

that (1) Silikal owed AC-USA a duty to maintain the formula’s secrecy or limit its

use, and (2) that this duty arose at the time Silikal acquired the formula. AC-USA

failed to make this showing.

At most, the evidence showed that Silikal and Hegstad developed the 1061

SW formula together in 1987. Furthermore—if we are generous to AC-USA—it

showed that Silikal agreed with Hegstad that the formula would be the property of

Hegstad and AC-International.38 AC-USA could not have been a party to this

(i) Used improper means to acquire knowledge of a trade secret;
(ii) At the time of disclosure or use, knew or had reason to know that knowledge of
the trade secret was:
(I) Derived from or through a person who had utilized improper means to acquire
it;
(II) Acquired under circumstances giving rise to a duty to maintain its secrecy or
limit its use; or
(III) Derived from or through a person who owed a duty to the person seeking relief
to maintain its secrecy or limit its use; or
(iii) Before a material change of position, knew or had reason to know that it was a
trade secret and that knowledge of it had been acquired by accident or mistake.
38
We note two significant problems with this factual theory. First, it is in tension with
the terms of the GSA Contract. If Hegstad were the developer and owner of the formula, one
would expect him to possess it. Yet the GSA required Silikal to ship the 1061 SW formula to
Hegstad, suggesting Hegstad did not already possess it. AC-USA has not explained why this
inconsistency does not rebut its factual theory. Second, the theory that the formula belonged to
AcryliCon rather than Silikal is in tension with the nature of the parties’ manufacturer-distributor
relationship. A “distributorship” is defined as “[a] company that has an arrangement to sell the
products of another company.” Distributorship, Black’s Law Dictionary (11th ed. 2019)
(emphasis added). AcryliCon was Silikal’s exclusive distributor of 1061 SW resin, and the GSA
did nothing to alter the essence of this relationship. Accordingly, the natural expectation would
be that Silikal owned the formula, since it was the entity that actually manufactured the resin. If
25
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 26 of 44

agreement because AC-USA did not exist at the time the formula was developed.39

At most, therefore, the evidence showed that Silikal owed AC-International a duty

at the time Silikal acquired the formula. Silikal owed no such duty to AC-USA.

It was not until the parties entered the GSA Contract in 2010 that Silikal

incurred any duty to AC-USA with respect to the formula. Under the GSA

Contract, Silikal agreed to “preserve the secrecy of the formula for the 1061 SW

resin.” It also promised it would not “disclose or use in any way . . . the 1061 SW

resin or the formula for the 1061 SW resin” and that it would not “sell or distribute

1061 SW resin to anyone other than AcryliCon” without AcryliCon’s permission.

To prove misappropriation, however, AC-USA had to show that Silikal owed these

duties to AC-USA at the time Silikal acquired the formula. Proof that these duties

arose by contract thirteen years later was insufficient as a matter of law. Because

AC-USA did not exist at the time 1061 SW was developed and Silikal acquired it,

it was factually impossible for AC-USA to prove what the GTSA requires.

Silikal’s violation of the duties created by the GSA Contract gave AC-USA a claim

for breach of contract, not for misappropriation of a trade secret.

it were otherwise, AC-USA, by definition, would not be Silikal’s distributor. Nonetheless, for
the purpose of reviewing the District Court’s denial of Silikal’s motion for judgment as a matter
of law, we will overlook these problems.
39
AC-USA did not come into existence until 2008.
26
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 27 of 44

In sum, the District Court erred in denying Silikal’s motion for judgment as

a matter of law on AC-USA’s Misappropriation claim. In addition to entering

judgment for Silikal on the Misappropriation claim, the Court should have struck

the $3 million punitive damages award that was based on that claim. The award is

therefore vacated.

IV.

We now address whether the $1.5 million damages award can be sustained

on the basis of AC-USA’s Contract claim. We hold that it cannot, and we

therefore vacate the award.

The jury returned a verdict for AC-USA awarding $1.5 million on the

Misappropriation claim and $1.5 million on the Contract claim. The District Court

then ordered the clerk to enter judgment for AC-USA in the sum of $4.5 million

($1.5 million in compensatory damages and $3 million in punitive damages).

Finding the judgment ambiguous, we issued a limited remand to the District Court

for clarification about whether the judgment was based on the Misappropriation

claim only, or whether it was also based on the Contract claim.40 In response, the

Court issued a revised final judgment stating that each claim was an independent

ground for the award.

40
The judgment stated merely that “judgment is entered . . . in favor of the Plaintiff and
against the Defendant in the sum of $4.5 million.”
27
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 28 of 44

We then allowed the parties to submit supplemental briefing regarding the

Court’s revised judgment. Silikal argues in its supplemental brief that the District

Court erred in entering the revised judgment for AC-USA on its Contract claim

because AC-USA failed to prove actual damages from Silikal’s breach. We agree,

and hold that AC-USA is instead entitled only to an award of nominal damages.

A.

To explain the District Court’s error, we must first distinguish between the

remedies of restitution and actual damages. The remedy of restitution applies

when a plaintiff confers a benefit on a defendant, and the defendant would be

unjustly enriched at the expense of the plaintiff if it were allowed to keep the

benefit. Restatement (Third) of Restitution and Unjust Enrichment § 1 cmt. a (Am.

L. Inst. 2011). The remedy typically compels the defendant to “restore the benefit

in question or its traceable product, or else pay money in the amount necessary to

eliminate unjust enrichment.” Id. Thus, the essence of the remedy is usually “the

reversal of a transfer.” Id. Sometimes, however, “the remedy for unjust

enrichment gives the plaintiff something . . . that the plaintiff did not previously

possess.” Id. This species of restitution is called disgorgement, and it generally

allows a plaintiff to recover the defendant’s “wrongful gain,” even if that gain

exceeds the plaintiff’s provable loss. Id. § 3 cmt. a.

28
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 29 of 44

Actual damages for breach of contract, by contrast, “are given as

compensation for the injury sustained as a result of the breach of a contract.”

O.C.G.A. § 13–6–1 (emphasis added). The fundamental difference between

restitution and actual damages, therefore, is that the former is measured by the

defendant’s gain, while the latter is measured by the plaintiff’s loss. Dan B.

Dobbs, Law of Remedies § 4.1(1), at 555 (2d ed. 1993).

A plaintiff who proves misappropriation of a trade secret under O.C.G.A. §

10–1–763 may recover money for both unjust enrichment and actual damages.

Section 10–1–763 provides:

Damages can include both the actual loss caused by misappropriation
and the unjust enrichment caused by misappropriation that is not taken
into account in computing actual loss.
Accordingly, the District Court instructed the jury that, if it found that

Silikal misappropriated AC-USA’s trade secret, it could award AC-USA money

for actual loss and/or for Silikal’s unjust enrichment. The jury instruction tracked

the language of § 10–1–763 essentially verbatim. The instruction did not define

unjust enrichment, but merely stated that “[u]njust enrichment occurs if Silikal

receives a benefit to which it is not entitled.”

The jury instruction regarding damages for breach of contract, by contrast,

said nothing of unjust enrichment. Instead, the Court instructed the jury that:

Damages recoverable for a breach of contract are such as arise naturally
and according to the usual course of things from the breach and such as

29
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 30 of 44

the parties contemplated when the contract was made as the probable
result of the breach.
In every case of breach of contract, the party not breaching it has a right
to damages. But if there has been no actual damage, the Plaintiff can
recover nominal damages.
Remote or consequential damages are not allowed whenever they
cannot be traced solely to the breach of the contract unless they may be
computed exactly such as the revenues that are the immediate fruit of
the contract and are independent of any collateral enterprises entered
into in contemplation of the contract.

Thus, to obtain a money judgment on its Misappropriation claim, AC-USA

could prove either that it suffered actual damages from Silikal’s conduct, or that

Silikal was unjustly enriched at AC-USA’s expense. On its Contract claim, by

contrast, AC-USA could obtain a money judgment only by proving actual damages

of the sort that “the parties contemplated when the contract was made.” If it failed

to prove this, then AC-USA could only obtain nominal damages.

B.

AC-USA failed as a matter of law to prove that it suffered actual damages

from Silikal’s breach.

Actual damages under Georgia law may be direct or consequential. Direct

damages “arise naturally and according to the usual course of things from [the]

breach.” Denny v. Nutt, 375 S.E.2d 878, 879 (Ga. App. 1988) (quoting Quigley v.

Jones, 334 S.E.2d 664, 665 (Ga. 1985)). Consequential damages, by contrast, arise

“as the probable result of [the] breach.” Id. The key distinction between direct

30
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 31 of 44

damages and consequential damages is that the former compensate for the value of

the promised performance, while the latter compensate for additional losses

incurred as a result of the breach. See Imaging Systems Int’l., Inc. v. Magnetic

Resonance Plus, Inc., 490 S.E.2d 124, 127 (Ga. Ct. App. 1997) (noting that

consequential damages “may include profits which might accrue collaterally as a

result of the contract’s performance,” while direct damages “may include profits

necessarily inherent in the contract”) (quotation marks omitted).

On appeal, AC-USA does not argue that it suffered direct damages from

Silikal’s breach. Rather, AC-USA argues that, by selling the 1061 SW formula in

violation of the GSA, Silikal made profits that would have been AC-USA’s had

there been no breach. Alternatively, AC-USA argues that Silikal’s breach reduced

the value of 1061 SW, and that AC-USA is entitled to damages equal to the

formula’s reduced value. We hold that AC-USA failed as a matter of law to prove

these consequential damages.41

41
We also note that AC-USA’s damages theory on appeal is in conflict with its theory at
trial. AC-USA’s theory at trial was based chiefly on restitution. Patrick Gannon, AC-USA’s
damages expert, calculated damages based on Silikal’s revenues. Jason Bye, when asked what
damages AC-USA was requesting, answered that the damages were from Silikal “selling our
product as their own and profiting from it.” When asked why AC-USA was entitled to Silikal’s
profits, he stated: “I just don’t think it’s fair that they sell our product as their own and make
money off that.” Dawn Bye’s testimony was substantially the same. Finally, at closing
argument, AC-USA’s counsel urged the jury to award AC-USA “the amount of money that
Silikal made from breaching the agreement and misappropriating [AC-USA]’s trade secrets.”
AC-USA also opposed Silikal’s post-verdict motion for judgment as a matter of law—
which argued that AC-USA failed to prove actual damages—by emphasizing its unjust
enrichment theory. AC-USA responded that “Silikal’s focus on the alleged lack of damage to
31
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 32 of 44

A plaintiff may not recover consequential damages for breach unless such

damages are within the contemplation of the parties at the time the contract was

made, are “capable of exact computation,” and “are independent of any collateral

enterprise entered into in contemplation of the contract.” O.C.G.A. § 13–6–8.

Lost profits that are not part of the benefit of the bargain may be recovered

as consequential damages. Imaging Systems Int’l., 490 S.E.2d at 127. However,

“[t]he profits of a commercial business are dependent on so many hazards and

chances, that unless the anticipated profits are capable of ascertainment, and the

loss of them traceable directly to the defendant’s wrongful act, they are too

speculative to afford a basis for the computation of damages.” Johnson Cnty.

School Dist. v. Greater Savannah Lawn Care, 629 S.E.2d 271, 273–74 (Ga. Ct.

App. 2006) (citation omitted). Accordingly, a plaintiff seeking lost profits must

provide “information or data sufficient to enable [the trier of fact] to estimate the

amount of the loss with reasonable certainty.” Bearoff v. Craton, 830 S.E.2d 362,

373 (Ga. Ct. App. 2019) (alteration in original) (quoting Pounds v. Hosp. Auth. Of

Gwinnett Cnty., 399 S.E.2d 92, 94 (Ga. Ct. App. 1990)). “This ‘information or

data’ must include evidence showing that the business claiming lost profits had ‘a

[AC-USA] all but ignores the unjust enrichment theory on which the damages were based.” AC-
USA insisted that evidence regarding its own lost profits, or lack thereof, was irrelevant. By
relying on unjust enrichment in this way, AC-USA effectively abandoned any argument that it
suffered actual damages from Silikal’s breach.

32
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 33 of 44

proven track record of profitability.’” Id. (quoting EZ Green Associates v.

Georgia-Pacific Corp., 770 S.E.2d 273, 277 (Ga. Ct. App. 2015)). “The plaintiff

must also show the expected profit for the relevant time period” including “the

business’[s] projected revenues, as well as its projected expenses, for that time

frame.” Id. (quoting Johnson Cnty., 629 S.E.2d at 274).

Thus, in Bearoff, the Georgia Court of Appeals held that the plaintiffs could

not recover lost profits for the defendants’ breach of a non-compete agreement

because the only evidence of plaintiffs’ loss was defendants’ gross profits earned

from the breach. Id. According to the Court, while the amount a defendant gained

from breaching a contract “may be probative of the plaintiff’s loss,” it is not

dispositive. Id. at 372. Because plaintiffs failed to present evidence of “a track

record of profitability,” or any “figures showing the store’s anticipated revenues

and expenses” for the relevant time period, the Court concluded that the plaintiffs’

lost profits could not be calculated with reasonable certainty. Id. at 373.

The evidence AC-USA introduced at trial was likewise insufficient to

establish lost profits. Jason Bye testified that Silikal’s extraterritorial sales of 1061

SW hurt AC-USA’s reputation as “the sole provider of the 1061 SW.” Dawn Bye

similarly testified that Silikal’s use of 1061 SW injured AC-USA. When asked

exactly how AC-USA had been injured, Dawn Bye responded that AC-USA was

33
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 34 of 44

“supposed to be the sole provider and sole source of 1061 SW,” and that Silikal’s

profits from 1061 SW were therefore owed to AC-USA as damages.

The foregoing testimony amounted to nothing more than an assumption that

Silikal’s profits would have been AC-USA’s but for Silikal’s breach. AC-USA

failed to introduce any evidence of projected profits, revenues, or expenses. Nor

did AC-USA produce evidence of a “proven track record of profitability.” AC-

USA also did not point to any customers that it would have sold to if not for

Silikal’s breach. The evidence was insufficient to allow the jury to conclude with a

reasonable degree of certainty that, if not for the breach, AC-USA would have

made the 1061 SW sales that Silikal did. Therefore, AC-USA failed as a matter of

law to prove lost profits.

AC-USA argues in the alternative that we should uphold the damages

judgment as a measure of 1061 SW’s lost value. In support of this lost-value

measure of damages, AC-USA cites Fluorine on Call, Ltd. v. Fluorogas Ltd., 380

F.3d 849 (5th Cir. 2004). As an initial matter, we note that the Fifth Circuit in

Fluorine merely discussed this theory of recovery without deciding whether it

applied under Texas law. Fluorine, 380 F.3d at 860. The Fifth Circuit noted that

the theory applies when a defendant’s breach reduces the value of an asset owned

by the plaintiff. Id. In this situation, the plaintiff can recovery consequential

damages equal to the asset’s decreased value. Id. To do so, however, the plaintiff

34
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 35 of 44

must introduce evidence of the “market value of the asset at the time of breach.”

Id. (quoting Schonfeld v. Hilliard, 218 F.3d 164, 176 (2d Cir. 2000)). “[I]n the

absence of a standardized market or exchange,” the Court noted that a plaintiff

may prove market value through expert opinion or “evidence of sales of

comparable assets.” Id. (quoting Schonfeld, 218 F.3d at 178). Ultimately, the

Court found that the plaintiff had failed to make the required showing because the

record contained no evidence of the asset’s market value. Id. at 861.

Even assuming Georgia law recognizes lost-value damages, we find the

evidence legally insufficient under this theory, as well. AC-USA claims that the

value of the 1061 SW formula in its hands was diminished because of Silikal’s

breach. Jason and Dawn Bye said as much at trial. However, AC-USA presented

no evidence of 1061 SW’s market value before or after the breach. Therefore,

there was no legally sufficient basis to award lost-value damages.

C.

As an alternative to its actual-damages theory, AC-USA urges us to uphold

the Contract damages judgment on a theory of disgorgement. We decline to do so

for two reasons. First, disgorgement is not an available remedy for breach of

contract under Georgia law. Second, even supposing disgorgement were available

for breach, the jury was not instructed that it could award this remedy. We would

35
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 36 of 44

therefore run afoul of the Seventh Amendment if we upheld the award on this

basis.

1.

AC-USA argues that disgorgement is available for Silikal’s breach because

“Silikal’s conduct . . . was in the nature of theft,” and disgorgement is an

appropriate remedy for such intentional misconduct. In support of its argument,

AC-USA cites the Restatement (Third) of Restitution and Unjust Enrichment,

which states: “If a deliberate breach of contract results in profit to the defaulting

promisor and the available damage remedy affords inadequate protection to the

promisee’s contractual entitlement, the promisee has a claim to restitution of the

profit realized by the promisor as a result of the breach.” Restatement (Third) of

Restitution and Unjust Enrichment § 39(1). The Restatement’s comments make

clear that § 39 describes a disgorgement remedy—meaning that it permits a

plaintiff to “recover the defendant’s profits from breach, even if they exceed the

provable loss to the [plaintiff] from the defendant’s defaulted performance.” Id.

cmt. a. AC-USA points to no authority suggesting that the Restatement approach

applies in Georgia, however. 42

42
AC-USA cites Kansas v. Nebraska, 574 U.S. 445, 135 S. Ct. 1042 (2015), in support
of its argument that disgorgement is a remedy for breach of contract. In that case, the Supreme
Court enforced a remedy crafted by a special master that included partial disgorgement. Id. at
448–49, 135 S. Ct. at 1049. However, the Court noted that its equitable powers were expanded
beyond what they would be in an ordinary suit between private parties because (1) the Court was
36
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 37 of 44

On the contrary, Georgia’s statutory remedies for breach do not include

anything resembling disgorgement, and AC-USA has not identified any authority

suggesting that disgorgement is available as a matter of Georgia common law.43

On the contrary, a review of Georgia case law strongly suggests that the remedy is

only available for breaches of fiduciary duty. See, e.g., Bearoff, 830 S.E.2d at 372

(upholding trial court’s refusal to award disgorgement for breach of non-compete

agreement because “Plaintiffs had not asserted a breach of fiduciary duty claim”);

McMillian v. McMillian, 713 S.E.2d 920, 922–23 (Ga. Ct. App. 2011) (discussing

Georgia Court of Appeals decisions “suggest[ing] that disgorgement of ill-gotten

revenues or profits may be an appropriate remedy for a breach of fiduciary duty in

some cases,” but refusing to decide whether such a remedy is available for

breaches in a partnership arrangement).

Since disgorgement is not among Georgia’s statutory contract remedies, and

there is no indication that it is available as a matter of common law, we presume

exercising its original jurisdiction to hear suits between states; (2) the case involved a dispute
over water rights; and (3) the case involved a compact that had been given congressional
approval and thereby attained the status of federal law. Id. at 453–56, 135 S. Ct. at 1051–53.
For those reasons, the case has no bearing on an ordinary contract dispute between private
parties.
43
The only case interpreting Georgia law that AC-USA cites is Direct Response Prods.,
Inc. v. Thomas, No. 1:13-CV-1526-WSD, 2013 WL 5890473 (N.D. Ga. Nov. 1, 2013). In Direct
Response, the District Court noted in dicta that an employer may receive an employee’s unjust
gain as a remedy for the employee’s unlawful use of employer information. Id. at *4. This
statement does not support AC-USA’s broad argument that disgorgement is an appropriate
remedy for intentional breaches of contract.
37
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 38 of 44

that the remedy is precluded by the traditional contract-law principle that damages

should put the injured party in the position he would be in had the contract been

performed.44 See Lastinger v. City of Adel, 26 S.E.2d 158, 159 (Ga. Ct. App.

1943); see also E. Allan Farnsworth, Your Loss or My Gain? The Dilemma of the

Disgorgement Principle in Breach of Contract, 94 Yale L.J. 1339, 1341 (1985)

(“[I]t is a principle of the law of contracts that damages for breach should be based

on the injured party’s lost expectation.”). Indeed, The Restatement itself notes that

the “usual presumptions of contract law” limit recovery to the plaintiff’s provable

damages, and that the disgorgement remedy is therefore “anomalous on its face” as

a remedy for breach. Restatement (Third) of Restitution and Unjust Enrichment §

39 cmt. a. Therefore, the $1.5 million judgment cannot stand on a disgorgement

theory.

44
In line with this principle, we note that while Georgia law enforces provisions for
liquidated damages, O.C.G.A. § 13–6–7, it only does so to the extent such provisions are not
penal in nature, Broadcast Corp. of Ga. v. Subscription Television of Greater Atlanta, 338
S.E.2d 775, 776–77 (Ga. Ct. App. 1985). A provision for liquidated damages will be treated as
an unenforceable penalty unless (1) the injury caused by the breach is difficult or impossible to
accurately estimate; (2) the parties intended to provide for damages rather than a penalty; and (3)
the stipulated sum is a reasonable pre-estimate of the probable loss resulting from the breach.
Southeastern Land Fund v. Real Estate World, 227 S.E.2d 340, 343 (Ga. 1976). “Where a
designated sum is inserted into a contract for the purpose of deterring one or both of the parties
from breaching it, it is penalty.” Broadcast Corp. of Ga., 338 S.E.2d at 777 (quoting Florence
Wagon Works v. Salmon, 68 S.E. 866, 866 (Ga. Ct. App. 1910)).
The fundamental contract-law principle that a remedy for breach should be based on the
loss suffered by the non-breaching party, therefore, is strong enough even to overcome the
contracting parties’ contrary intent. The principle should apply with even more force here,
where there is no indication that the parties contemplated a breach remedy without connection to
the non-breaching party’s actual damages.
38
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 39 of 44

2.

Even supposing disgorgement were an available contract remedy, it would

run afoul of the Seventh Amendment to uphold the award on a basis that was not

submitted to the jury.

The Seventh Amendment declares: “In suits at common law, where the

value in controversy shall exceed twenty dollars, the right of trial by jury shall be

preserved . . . .” U.S. Const. amend. VII. The Supreme Court has “consistently

interpreted the phrase ‘Suits at common law’ to refer to ‘suits in which legal rights

were to be ascertained and determined, in contradistinction to those where

equitable rights alone were recognized, and equitable remedies were

administered.’” Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 41, 109 S. Ct.

2782 (1989) (quoting Parsons v. Bedford, 28 U.S. (3 Pet.) 433, 447, 7 L. Ed. 732

(1830)). Under the test articulated in Granfinanciera, the Seventh Amendment

applies if both the cause of action and the remedy sought are legal, as opposed to

equitable in nature. See id. at 42, 109 S. Ct. at 2790. Where the Seventh

Amendment applies, “issues that are proper for the jury must be submitted to it to

preserve the right to a jury’s resolution of the ultimate dispute.” City of Monterey

v. Del Monte Dunes at Monterey, Ltd., 526 U.S. 687, 718, 119 S. Ct. 1624 (1999)

(quotation marks omitted).

39
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 40 of 44

The Seventh Amendment applies here because breach of contract is a

traditional action at law, and a money judgment, even if based on restitution, is

generally a legal remedy. 45 See Teamsters v. Terry, 494 U.S. 558, 570, 110 S. Ct.

1339 (1990) (“[A]n action for money damages was the traditional form of relief

offered in the courts of law.”) (quotation marks omitted).

AC-USA asks us to uphold the $1.5 million award on a basis that the jury

could not have considered. With respect to the Contract claim, the jury was not

instructed to decide whether AC-USA was entitled to Silikal’s profits as

disgorgement; rather, it was instructed only to consider whether AC-USA was

entitled to actual damages. If we accepted AC-USA’s argument, we would

effectively be swapping out the jury’s actual-damages award for a restitution

award. To be sure, the number would be kept the same, but the nature of the relief

45
Restitution may be a remedy at law or equity, depending on “the basis for [the
plaintiff’s] claim and the nature of the underlying remedies sought.” Great-West Life & Annuity
Insurance Co. v. Knudson, 534 U.S. 204, 212, 122 S. Ct. 708 (2002) (alteration in original)
(citation omitted); see also Restatement (Third) of Restitution and Unjust Enrichment § 4(1). A
restitution remedy in the form of “a judgment imposing a merely personal liability upon the
defendant to pay a sum of money” is generally a remedy at law. Knudson, 534 U.S. at 213, 122
S. Ct. at 714; see also Restatement (Third) of Restitution and Unjust Enrichment § 4 cmt. d. By
contrast, where a plaintiff seeks restitution of property “identified as belonging in good
conscience to the plaintiff” and which can “clearly be traced to particular funds or property in the
defendant’s possession,” the remedy is in equity. Knudson, 534 U.S. at 213, 122 S. Ct. at 714;
see also Restatement (Third) of Restitution and Unjust Enrichment § 4 cmt. d; Dobbs, supra §
4.1(1), at 556 (“Restitution claims for money are usually claims ‘at law.’”).
The judgment here directed Silikal to pay AC-USA $1.5 million—the value of Silikal’s
wrongfully-earned profits—not to return to AC-USA any particular property or funds.
Therefore, the remedy is legal as opposed to equitable.
40
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 41 of 44

would be entirely different. This would run afoul of the Seventh Amendment’s

requirement that “legal rights [are] to be ascertained and determined” by a jury.

Granfinanciera, 492 U.S. at 41, 109 S. Ct. at 2790.

D.

If a plaintiff proves a breach of contract but fails to prove actual damages,

the plaintiff “may recover nominal damages sufficient to cover the costs of

bringing the action.” O.C.G.A. § 13–6–6.

AC-USA established on summary judgment that Silikal breached the GSA.

As already discussed, however, AC-USA failed to prove that it suffered actual

damages as a result of Silikal’s breach. Therefore, AC-USA is entitled to an award

of nominal damages “sufficient to cover the costs of bringing the action.”

O.C.G.A. § 13–6–6.

In sum, AC-USA failed as a matter of law to prove actual damages, and the

$1.5 million award cannot be upheld on any other basis. The District Court

therefore erred in awarding AC-USA damages for breach in its revised final

judgment. We accordingly vacate the award and remand for determination of the

sum of nominal damages to which AC-USA is entitled.

V.

Finally, we address whether AC-USA is entitled to attorney’s fees on its

Contract claim notwithstanding that it failed to prove actual damages. We hold

41
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 42 of 44

that it is entitled to attorney’s fees, and we remand to the District Court for

determination of an appropriate sum.

Georgia law permits recovery of attorney’s fees “where authorized by some

statutory provision or by contract.” Smith v. Baptiste, 694 S.E.2d 83, 87 (Ga.

2010) (citation omitted).

The District Court awarded AC-USA $1,361,415 in attorney’s fees on the

Misappropriation and Contract claims, finding that fees were authorized by both

O.C.G.A. § 10–1–764 and the GSA. Section 10–1–764 permits the court to award

attorney’s fees to the prevailing party where “willful and malicious

misappropriation exists.” Because we hold that AC-USA failed to prove its

Misappropriation claim as a matter of law, it follows that AC-USA is not entitled

to attorney’s fees for that claim under § 10–1–764. However, AC-USA may still

recover attorney’s fees under the GSA as long as it can be considered a “prevailing

party” within the meaning of the GSA’s fee-shifting provision. That provision

states:

If legal proceedings are commenced in connection with this Settlement
Agreement, the Settling Party or Parties that do not prevail in such legal
proceedings shall pay the reasonable attorneys’ fees and other costs and
expenses, including investigation costs, incurred by the prevailing
party in such legal proceedings.

(emphasis added).

42
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 43 of 44

To qualify as a prevailing party under a standard contractual fee-shifting

provision, the Georgia Supreme Court has held that a party must obtain “actual

relief on the merits [that] materially alters the legal relationship between the parties

by modifying the defendant’s behavior in any way that directly benefits the

plaintiff.” Magnetic Resonance Plus, Inc. v. Imaging Systems Int’l., 543 S.E.2d 32,

36 (Ga. 2001) (citation omitted). An award of nominal damages is sufficient to

make the plaintiff a prevailing party. King v. Brock, 646 S.E.2d 206, 207 (Ga.

2007).

Because we hold that AC-USA is entitled to nominal damages on its

Contract claim, AC-USA may also recover attorney’s fees as a prevailing party

under the GSA. Accordingly, we vacate the $1,361,415 attorney’s fees award and

remand to the District Court for determination of the sum of fees to which AC-

USA is entitled.

VI.

For the foregoing reasons, we reverse the District Court’s decision denying

Silikal’s motion for judgment as a matter of law on AC-USA’s Misappropriation

claim; vacate the $3 million punitive damages award, $1.5 million damages award,

and $1,361,415 attorney’s fees award; and remand to the District Court for a

determination of the sum of nominal damages and attorney’s fees to which AC-

USA is entitled.

43
 USCA11 Case: 17-15737 Date Filed: 01/26/2021 Page: 44 of 44

VACATED AND REMANDED WITH INSTRUCTIONS.

44