## Facts

- Banff Ltd. (Banff), a knitwear manufacturer, designed an Aran-style fisherman’s sweater featuring a combination of cabled patterns, traditional stitching, and hand-crocheted roses.
- Banff obtained copyright protection for the sweater design and sold wool and cotton versions through upscale retailers (including Neiman Marcus, Bergdorf Goodman, and Bloomingdale’s).
- Express, Inc. (Express), a retail clothing chain, sold sweaters that the jury found were knockoffs of Banff’s copyrighted sweater.
- Banff sued Express in the Southern District of New York for copyright infringement and for violations of Lanham Act § 43(a), including trade dress infringement and false designation of origin.
- After a six-day jury trial, the jury found for Banff on copyright infringement and awarded $200,685 in actual damages and $1,017,240 in Express’s profits.
- The jury also found that Express violated § 43(a), but it did not find Express acted in a “willfully deceptive” manner and therefore awarded no damages on the Lanham Act claims.
- Express moved under Fed. R. Civ. P. 50(b) for judgment as a matter of law (JMOL) on (a) Banff’s copyright actual damages, (b) the amount of profits awarded, and (c) the Lanham Act § 43(a) liability findings; alternatively, Express sought a new trial under Rule 59 (including remittitur).

## Issues

1. Whether the evidence was legally sufficient to support the jury’s award of copyright actual damages based on Banff’s theory that it lost sales to Express.
2. Whether the evidence was legally sufficient to support the jury’s calculation of Express’s profits recoverable under 17 U.S.C. § 504(b).
3. Whether Express was entitled to JMOL (or a new trial) on Banff’s Lanham Act § 43(a) claims for trade dress infringement and false designation of origin.

## Decision

- The court granted Express’s post-trial motions in part and denied them in part.
- On copyright actual damages, the court found the jury’s award rested largely on speculation because Banff presented little proof that Express would have purchased the sweaters from Banff and the record raised doubts about Banff’s ability to meet Express’s volume and timing needs; the court ordered post-trial relief (including remittitur/conditional new-trial relief) to bring the award within the range supported by the evidence.
- On infringer’s profits, the court concluded the jury’s profits figure exceeded what the evidence could support under § 504(b) and ordered a reduction through post-trial relief (including conditional new-trial/remittitur mechanisms) rather than allowing the unsupported amount to stand.
- The court rejected Express’s request to overturn the jury’s Lanham Act § 43(a) liability findings as a matter of law, concluding that the record permitted a reasonable jury to find protectable trade dress and a likelihood of confusion/false designation, even though the jury awarded no Lanham Act damages due to its no-willfulness finding.

## Legal Principles

- A copyright plaintiff seeking actual damages on a lost-sales theory must offer non-speculative proof that the infringement caused the claimed losses; a factfinder may not assume that the infringer’s sales would automatically have been made by the plaintiff.
- Evidence relevant to lost-sales causation includes whether the defendant would have bought from the plaintiff and whether the plaintiff had the capacity (including production lead times and quantities) to supply what the defendant sold.
- Under 17 U.S.C. § 504(b), the copyright owner must first show the infringer’s gross revenues reasonably related to the infringement; the infringer then bears the burden to prove deductible expenses and to show any portion of profit attributable to factors other than the copyrighted work.
- Even with burdens shifting under § 504(b), profits awards must rest on the trial record; courts may reduce awards that exceed the maximum amount a reasonable jury could find on the evidence.
- For Lanham Act § 43(a) trade dress and false designation claims, the plaintiff must show a protectable (non-functional, source-identifying) trade dress and a likelihood of consumer confusion; a defendant is not entitled to JMOL if a reasonable jury could find those elements on the record.
- Under Rule 50(b) and Rule 59, a court may set aside legally insufficient verdict components and may order a new trial or conditional remittitur to correct damages that are not supported by the evidence while leaving supported liability findings intact.

## Conclusion

After a jury found Express liable for copying Banff’s copyrighted sweater design and for § 43(a) trade dress/false-origin violations, the court upheld the core liability determinations but granted post-trial relief on money awards, concluding that the copyright actual-damages figure and the profits figure exceeded what the evidence could support and requiring reductions through conditional new-trial/remittitur procedures.


Banff Ltd. v. Express, Inc., 921 F. Supp. 1065 (1995)