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IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
____________________
No. 90-5567 and 91-5510
____________________
TEXAS PIG STANDS, INC.,
Plaintiff-Appellant-
Cross-Appellee,
v.
HARD ROCK CAFE INTERNATIONAL, INC.,
Defendant-Appellee-
Cross-Appellant.
TEXAS PIG STANDS, INC.,
Plaintiff-Appellee,
v.
HARD ROCK INTERNATIONAL, INC.,
Defendant-Appellant.
____________________
Appeals from the United States District Court
for the Western District of Texas
____________________
(Opinion Jan. 29, 1992, 5th Cir., 1992_____F.2d_____)
(July 9, 1992)
BEFORE BROWN, JOHNSON and BARKSDALE, Circuit Judges.
PER CURIAM:
ON SUGGESTION FOR REHEARING EN BANC
In the suggestion for rehearing en banc, Texas Pig Stands
contends that the Court's decision is inconsistent with and in

conflict with this Court's earlier decision in Maltina Corp.
v. Cawy Bottling Co., Inc., 613 F.2d 582 (5th Cir. 1980).
Nothing in the Court's opinion affords any basis for this
attack. In the first place, the opinion does not slight the
case since Maltina was cited twice. See 951 F.2d at 695 and
951 F.2d at 699. This Court recognizes Maltina to be the law
of the Fifth Circuit in its holding that (i) absence of
competitors or (ii) failure of proof showing diversion of the
mark owner's sales is no defense to the claim for Defendant's
profits under 15 U.S.C. § 1117.
The reason why Hard Rock Cafe's profits were not awarded
was not based on (i) absence of competitors or (ii) no
evidence of diversion; it was, rather, based solely on the
lack of evidence showing that any of Defendant's profits were
the result of its infringement of the mark.
The trial court in granting j.n.o.v. on unjust enrichment
expressly found:
Hard Rock 'would have sold just as many
pig sandwiches by any other name' and
that 'there is no basis for inferring
that any of the profits received by [Hard
Rock] from the sale of pig sandwiches are
attributable to infringment.'
951 F.2d at 696.1
1 The trial court made specific findings to the effect that
"there was no proof as to the value of plaintiff's good will in
Dallas today." 951 F.2d at 696.
2

The overriding principle comes from the Supreme Court
that as to recovery of infringer's profits:
The plaintiff, of course, is not entitled
to profits demonstrably not attributable
to the unlawful use of his mark.
Mishawaka Rubber & Woolen Mfg. Co. v. S.
S. Kresge Co., 316 U.S. 203, 206, 62
S.Ct. 1022, 1024, 86 L.Ed. at 1385
(1941).
Mishawaka has been followed and cited numerous times in
many federal courts, including the Ninth Circuit in its
decision in Maier Brewing Co. v. Fleischmann Distilling Corp.,
390 F.2d 117 (9th Cir. 1968), adopted in Maltina.
If it can be shown that the infringment
had no relation to profits made by the
defendant, that some purchasers bought
goods bearing the infringing mark because
of the defendant's recommendation or his
reputation or for any reason other than a
response to the difused appeal of the
plaintiff's symbol, the burden of showing
this is upon the poacher. The plaintiff,
of course, is not entitled to profits
demonstrably not attributable to the
unlawful use of his mark. (Emphasis
added).
Maier, 390 F.2d at 124 (quoting Mishawaka, 316 U.S. at 206, 62
S.Ct. at 1024, 86 L.Ed. at 1385).2
Treating the suggestion for rehearing en banc as a
2 See also Burndy Corp. v. Teledyne Indus., Inc., 748 F.2d
767, 772 (2d Cir. 1984); Comidas Exquisitos, Inc. v. Carlos
McGee's Mexican Cafe, Inc., 602 F.Supp. 191, 199 (S.D. Iowa),
aff'd, 775 F.2d 260 (8th Cir. 1985) and Alpo Petfoods, Inc. v.
Ralston Purina Co., 913 F.2d 958, 966 (D.C. Cir. 1990).
3

petition for panel rehearing, it is ordered that the petition
for panel rehearing is DENIED. No member of the panel nor
Judge in regular active service of this Court having requested
that the Court be polled on rehearing en banc (Federal Rules
of Appellate Procedure and Local Rule 35), the suggestion for
Rehearing En Banc is DENIED.

4

JOHNSON, Circuit Judge, dissenting.
Because the majority's opinion denying rehearing in no
way resolves the majority's central error, I continue to
disagree with the majority and respectfully dissent from the
denial of rehearing.
In this writer's view, the central tenet of Maltina Corp.
v. Cawy Bottling Co., Inc., 613 F.2d 582 (5th Cir. 1980), is
that if the trademark laws are to effectively protect economic
property rights, violation of those laws must be rendered
unprofitable. In this case, as noted in the original dissent,
951 F.2d at 699, there were two avenues by which Hard Rock's
willful, knowing, and deliberate infringement could be
rendered unprofitable: Texas Pig Stands might have been
awarded Hard Rock's profits, or Texas Pig Stands might have
been awarded its attorneys' fees. While the majority has now
reinforced its blockading of one of these avenues (awarding
Hard Rock's profits to Texas Pig Stands), the majority has not
said anything further about the district court's award of
attorneys' fees to Texas Pig Stands, or why that award should
be reversed. The entire burden of Hard Rock's willful,
knowing, and deliberate infringement continues to be borne
solely by Texas Pig Stands, the innocent victim. The
majority's resolution of this case thus remains irreconcilable
with the teaching of Maltina, and I must continue to dissent.
5