Pirkey Barber PLLC successfully defended a trial judgment for its client, Anastasia Beverly Hills, Inc., in the U.S. Court of Appeals for the Eleventh Circuit. Pirkey Barber member Travis Wimberly authored the appellate brief and orally argued the case to the Eleventh Circuit.
The dispute involved Anastasia’s use of the words Hard Candy as a makeup shade name. A Miami-based cosmetics company, Hard Candy, LLC, sued Anastasia claiming that the shade name infringed its trademark rights. The case was tried before the Honorable Kathleen M. Williams, in the U.S. District Court for the Southern District of Florida (Miami, FL), in January 2018.
Judge Williams found no trademark infringement and entered a complete judgment for Anastasia. Hard Candy appealed, and the Eleventh Circuit heard oral argument on March 13, 2019. It announced its decision on April 23, 2019, affirming the district court’s judgment in a 36-page published opinion.
The Eleventh Circuit held that Hard Candy had no constitutional right to a jury trial after waiving its claim for actual damages and seeking only equitable relief, including disgorgement of Anastasia’s profits. The Eleventh Circuit affirmed the district court’s finding of no infringement on two separate grounds. First, Hard Candy had failed to prove that consumers were likely confused by Anastasia’s shade name. Second, Anastasia also established a “fair use” affirmative defense under the Lanham Act.