IP Law Daily, TRADEMARK—8th Cir.: District court’s judgment affirmed in HVAC company’s copyright and trademark action against former family partners, (Sep 10, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

District court did not abuse its discretion with jury instructions and properly denied attorney fees.

A federal district court in Missouri did not abuse its discretion with jury instructions in an action for copyright and trademark infringement, unfair competition, and breach of contract against Hoffmann Air Conditioning & Heating LLC, the U.S. Court of Appeals for the Eighth Circuit has held. The appellate court also affirmed the district court’s denial of attorneys fees (Hoffmann Brothers Heating and Air Conditioning, Inc. v. Hoffmann Air Conditioning & Heating, LLC, No. 24-1289 (8th Cir. Sept. 8, 2025)).

Background. Tom and Robert Hoffmann, along with their father, were partners in Hoffmann Brothers Heating and Air Conditioning Inc. (Hoffmann Brothers). Decades later, Robert decided to buy out Tom and they ended up in state court. However, they settled and entered into a settlement agreement. The settlement agreement included a non-disparagement clause, a non-solicitation clause, and a prohibition on Tom’s use of the “Hoffmann” name for four years in any heating, ventilation, and cooling (HVAC) business. After the litigation ended, Tom started a company called “Engineered Solutions.” After four years, he began using the name “Hoffmann Air Conditioning & Heating, LLC” (Hoffmann AC).

Robert and Hoffmann Brothers filed suit against Tom and Hoffmann AC. The claim for copyright infringement arose out of Hoffmann AC’s social-media ads where an advertising agency mistakenly used pictures of uniformed Hoffmann Brothers employees in them. Hoffmann Brothers believed that Hoffmann AC must have profited from the use of those images. On the other hand, the trademark-infringement, unfair-competition, and breach-of-contract claims primarily focused on Tom’s use of the Hoffmann name. Evidence at trial showed that customers sometimes called the wrong company. Hoffmann Brothers customers would call for service, only to discover their mistake when the other company arrived.

However, due to lack of evidence supporting the copyright claim, the district court granted summary judgment to Tom and Hoffmann AC. The others claims went to trial and the jury reached a mixed verdict, with Hoffmann AC mostly coming out on top, including on the trademark-infringement claims. Both Tom and Robert sought attorney fees for the claims they had won, but the district court denied the request. Unhappy with the mixed outcome and the denial of fees, Robert and Hoffmann Brothers appealed the parts of the case they lost.

Copyright claim. The district court had concluded that Hoffmann Brothers did not sufficiently prove damages from Hoffmann AC’s use of the photographs. The Eighth Circuit noted that if a work is unregistered, like these photographs were, a plaintiff in a copyright-infringement case must prove actual damages, profits of the infringer that are attributable to the infringement, or both.

Hoffmann Brothers’ only evidence was the monthly fee Hoffmann AC paid to its marketing agency, with no explanation of why it was a reasonable estimate of what it lost. It did not reflect the “value of the infringer’s use,” which would be the benefit to Hoffmann AC from posting the photographs. Nor did it measure the harm to Hoffmann Brothers from their use. The Eighth Circuit concluded that this would have been too big of a leap for the jury to estimate the effect of the infringement on either party from Hoffmann AC’s marketing fees.

The Eighth Circuit noted that although the statute requires the copyright owner to present proof only of the infringer’s gross revenue, the evidence must also connect the infringement to the gross revenue earned. Hoffmann Brothers provided an expert report documenting Hoffmann AC’s revenue over a two-year time frame, which it then used to estimate the approximate revenue for the month that the infringement allegedly occurred. However, it did not link the ads to the gross revenue earned that month. Thus, the Eighth Circuit determined that the Hoffmann Brothers failed to meet the causal-nexus requirement.

Trademark claims. The question to the jury was whether the names of the two companies were so similar that they caused customer confusion. The jury said no, but Hoffmann Brothers believed the instructions led it astray. The Eighth Circuit noted that the district court’s instruction to the jury made recovery for initial-interest confusion contingent on the level of sophistication of the average Hoffmann Brothers customer. Though the Eighth Circuit had reservations about whether the presumption in the instruction ought to be conclusive, given how fact-dependent trademark-infringement claims are. However, it concluded that here, it was a correct statement of the law because since Sensient Tech. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 763 n.3 (8th Cir. 2010) it has recognized that initial-interest confusion does not apply when customers are sophisticated and exercise a high degree of care in making their purchasing decisions.

Use of Hoffmann name. The district court also allowed the jury to decide whether the settlement agreement had given Tom the right to call his company Hoffmann AC after four years. The settlement agreement stated that, “in exchange for $600,000, Tom agreed that for four years after the date of execution of the agreement, he would not use the Hoffmann name within the business name of an HVAC business.” For Tom and Hoffmann AC, it reflected acquiescence to use of the Hoffmann name after four years. Hoffmann Brothers, by contrast, interpreted it as a four-year ban followed by a return to ordinary trademark protection.

The Eighth Circuit noted that the ambiguity arises out of what the settlement agreement does not say. The settlement agreement does not discuss what happens to the Hoffmann name after four years, nor does it mention trademark or unfair-competition law. The Eighth Circuit noted that one way to reasonably interpret it, given the omissions, is that Tom was free to use the name once four years had passed. Another is that it prohibited Tom from using the name for four years, after which any future right to it would depend on the application of other legal rules. However, it was up to the jury to figure out which meaning the parties intended.

Attorney fees. The Eighth Circuit noted that the settlement agreement said that, in “any legal action under or arising out of, or to enforce, this agreement, the prevailing party shall be entitled to recover its reasonable attorney’s fees, costs, and expenses.” Robert, who won a breach-of-contract counterclaim involving the settlement agreement’s non-disparagement clause, believed he should receive them. The Eighth Circuit determined that a prevailing party only gets “its” attorney fees, but Hoffmann Brothers, which did not sign the settlement agreement, paid every cent for Robert. Therefore, without any fees of his own, he has nothing to recover.

Accordingly, the judgment of the district court was affirmed.

The Case is No. 24-1289.

Judge: Stras, D.

Attorneys: Joseph Leslie Goff, Jr. (Armstrong & Teasdale) for Hoffmann Brothers Heating and Air Conditioning, Inc., Robert J. Hoffmann, Chris Hoffmann, and Robert Joseph Hoffmann, Jr. Daniel Alexander Garcia (Thompson Coburn LLP) for Hoffmann Air Conditioning & Heating, LLC and Thomas E. Hoffmann.

Companies: Hoffmann Brothers Heating and Air Conditioning, Inc.; Hoffmann Air Conditioning & Heating, LLC

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