Judge Orders John Dewberry's Firm To Pay $43M In Trademark Dispute Over Company Name
A federal judge has slapped Atlanta developer John Dewberry's company with a nearly $43M penalty and is blocking the firm from using various Dewberry business monikers after two years of “willful and intentional infringement” against a Virginia engineering and commercial real estate company with the same name.
Judge Liam O'Grady of the U.S. District Court for the Eastern District of Virginia issued a permanent injunction, preventing Dewberry from using a collection of corporate names currently found on the developer's website, including Dewberry Group, Studio Dewberry and Dewberry Living.
Dewberry Engineers, which is part of a nationwide architectural, construction and engineering firm called Dewberry, filed a lawsuit against John Dewberry and his company in 2020 for trademark infringement.
John Dewberry, a famed former Georgia Tech quarterback and one of Atlanta's most well-known commercial real estate personalities, signed a confidential settlement with Dewberry Engineers, a Fairfax, Virginia-based engineering and construction firm, over a trademark dispute that dates back to 2006. In the 2007 settlement, Dewberry had agreed to forgo the use of the Dewberry brand, other than for Dewberry Capital Corp., according to court documents.
But rather than abide by the previous court settlement, the Dewberry Group "brazenly rolled out and used four separate infringing marks and sought federal trademarks for them" in recent years, O'Grady wrote in a March 2 order in favor of Dewberry Engineers.
Dewberry "barreled ahead with its unlawful, all-encompassing rebranding" to Dewberry Group from Dewberry Capital, despite receiving three cease-and-desist letters from Dewberry Engineers and having its trademark application with the U.S. Patent and Trademark Office rejected, O'Grady wrote.
“The court finds that, in addition to enforcing the already-entered permanent injunction, ordering disgorgement of profits and attorneys' fees shifting is necessary to deter Dewberry Group from continuing its wrongdoing," he said.
O'Grady issued the order granting $42.97M in damages to Dewberry Engineers, 20% less than the firm had requested. The ruling was first reported by the Daily Progress.
In a statement to Bisnow emailed through a spokesperson, Dewberry said the firm will abandon "certain court-ruled infringing marks moving forward," but offered no other details.
“Atlanta based Dewberry Group, Inc., defendant in a trademark litigation case brought by Dewberry Engineers Inc., a Virginia based company, respectfully disagrees with the Virginia court’s recent ruling and will appeal,” Dewberry said in the statement. “The ruling has no impact on The Dewberry Hotel brand, a five-star internationally recognized hotel in Charleston, South Carolina.”
The verdict comes as Dewberry is pushing forward on a plan to add six additional stories to the Campanile Building, the 455K SF office tower he owns at 1155 Peachtree St. in Midtown. The firm hopes to launch the project, which would increase the tower's height from 21 to 27 stories and add 39K SF of retail at its base, this year and expects it to take two years to complete.
In December, Dewberry refinanced Campanile with $75M in debt from ACORE Capital, and Dewberry Executive Vice President of Finance John Freeman told Bisnow at the time the firm had lined up construction financing but offered no further details.
O'Grady ruled that Dewberry Group's name had a negative reputational impact on Dewberry Engineers, since the developer had “a number of negative articles, in both local and national publications” written about him, as well as “instances of actual confusion among the public and both parties' clients and customers.” Bloomberg wrote a profile of Dewberry in 2017, dubbing him "Atlanta's Emperor of Empty Lots."
O'Grady also slammed Dewberry after a three-day bench trial to determine damages, calling out the developer for claiming he was unaware of details of the previous confidential settlement and saying his firm's general counsel, David Groce, likely hid the trademark office's rejection as the firm moved forward on the rebranding.
“The court finds that the testimony of David Groce and John Dewberry throughout trial was not credible,” O'Grady wrote. "At best, their feigned ignorance amounts to willful blindness on behalf of Dewberry Group."
CORRECTION, MAY 23, 6:05 P.M. ET: A previous version of this article misidentified Dewberry Hospitality as one of the names in the injunction. It is not the subject of the trademark lawsuit. The story has been updated. The headline also has been updated to show that Dewberry Group was the defendant in the lawsuit, not John Dewberry.