author: DIANA E. MURPHY, District Judge.

text:
    TEAM CENTRAL INCORPORATED, a corporation of the State of Minnesota, Plaintiff, v. XEROX CORPORATION, a corporation of the State of New York, Defendant.
    Civ. No. 4-84-318.
    United States District Court, D. Minnesota, Fourth Division.
    April 17, 1985.

      David L. Black, Stacker & Ravich, Minneapolis, Minn., for plaintiff.
    Eugene Johnson, and James Patterson, Dorsey & Whitney, Minneapolis, Minn., for defendant.
   DIANA E. MURPHY, District Judge.

Plaintiff Team Central Incorporated (Team Central) brought this action against defendant Xerox Corporation (Xerox), asserting claims of unfair competition, trademark infringement, trademark dilution, and deceptive trade practices. Jurisdiction is invoked under 15 U.S.C. § 1121, 28 U.S.C. §§ 1338(a) and (b), and pendent and ancillary jurisdiction. On June 4, 1984, this court denied Team Central’s motion for a preliminary injunction. The matter is now before the court upon defendant’s motion for summary judgment.

Background

Many of the pertinent undisputed facts have been set out in the court’s Memorandum Opinion and Order of June 4, 1984 and will be restated here. Team Central also contends that subsequent discovery has revealed other facts relevant to this motion.

Team Central is in the business of franchising and operating full line electronics stores. It has 92 retail store locations in 21 states of the Midwest and West. Eighty-four of such locations are franchised.

Team Central’s stores sell audio, video, computer, and telecommunication equipment. Team Central purchases the products directly from vendors and then warehouses them for sale to its franchisees. Sales of computers and computer related equipment account for over 50% of the company’s business.

Team Central is the owner of all rights, title, and interest in the following United States Trademark Registrations:

A. Registration No. 856,221, registered September 3, 1968, for the service mark “Team”, for distributor services in the field of electronic apparatus, parts, components, equipment, and systems, at wholesale and retail, and including supplying, distributing, and advertising such goods in the electronics field, based on use from July 6, 1967.
B. Registration No. 1,004,101, registered February 4, 1975, for the service mark “Team Electronics”, for distributor services in the field of electronic apparatus, parts, components and equipment, based on use from July 5, 1973 and July 6, 1967, as to “Team”.
C. Registration No. 1,017,172, registered July 29, 1975 for the service mark “Team Electronics”, for distributorship services in the field of electronic apparatus, parts, components, and equipment, based on use from at least as nearly as 1968.
D. Registration No. 1,130,151, registered January 29,1980, for the service mark “Team Commercial Electronics”, for distributorship services in the field of electronic apparatus, parts, components and equipment, based on use from July 1, 1976.

Pursuant to 15 U.S.C. §§ 1065 and 1115(a) and (b), Team Central contends that all of these trademark registrations were incontestable by the date of the summary judgment hearing. Team Central argues therefore that it is conclusively presumed either that the mark is nondescriptive or, if descriptive, has acquired secondary meaning. Thus Xerox cannot defend this action by claiming that the mark is invalid because it is descriptive. Team Central further asserts that its trademarks are the cornerstone of its franchising system.

Defendant Xerox is a multi-national corporation which sells a full line of information and communication related products, including copiers, duplicators, facsimile transceivers, personal computers, professional work stations, word processors, and typewriters under the Xerox brand name. The products are sold through a variety of marketing approaches, including a direct sales force, direct mail, telemarketing, three company-operated retail stores (“The Xerox Store”) and third-party resellers.

Xerox has been involved in the sponsorship of various Olympic Games since 1960, and Xerox was an official sponsor for the summer 1984 Olympics. In 1983, as part of a promotional effort for a new series of copiers, Xerox sponsored 15 major marathon events around the world and assembled “Team Xerox” consisting of Xerox employees and a group of world-class runners. The promotional effort was designed to emphasize the endurance capability of the copiers through the use of the marathon race theme.

The promotional effort was eventually expanded to include other Xerox products including its personal computers. Much of Xerox’s advertising promotes the theme of Xerox equipment and Xerox employees working together as a team to satisfy customer needs. This theme has been captured in the slogan “Team Xerox”, which appears to have been derived from an athletic context. Many of Xerox’s ads draw an anology between “Team Xerox” and athletic teams. Moreover, Xerox’s “Team Xerox” advertising effort focused heavily on the summer and winter Olympics. Team Central contends that Xerox is impermissably using the slogan “Team Xerox” and its logo as its alternate company name and as an identifying symbol.

Team Central claims that the history of the Xerox campaign is central to this motion. Xerox first ran an ad containing the phrase “Introducing Team Xerox” for its Ethernet networking system in April of 1983. Before using the ad, a Xerox advertising employee checked with in-house counsel to determine whether the use of “Team Xerox” would pose any problems. Team Central claims that in-house trademark counsel for Xerox did not adhere to his usual practice of undertaking a trademark search before labelling “Team” generic. Xerox asserts, however, that its in-house counsel had no duty to investigate and that it was not his policy to search generic terms in any case.

Some time later in 1983, Xerox ran an ad for its 8010 Star Workstation which apparently used the logo form of “Team Xerox” for the first time. With the exception of these printed ads, Team Central states that Xerox kicked off its “Team Xerox” advertising campaign in February 1984, with its “Manifesto” ad and associated television commercials shown during the winter Olympics. It contends that because the Xerox campaign was actually in its infancy when this action was filed, it could not find evidence of market confusion. Team Central asserts that subsequent to the preliminary injunction hearing, it has encountered instances of actual confusion. It has specified twelve such episodes in its supplemental answer to interrogatory No.-11 of Xerox’s interrogatories.

Xerox spent approximately $2,800,000 in 1983 on the “Team Xerox” campaign and $53,721,200 in 1984. It has budgeted $70,-000,000 in 1985 for the campaign. “Team Xerox” ads have appeared in national print media, such as the Wall Street Journal, Time, and Sports Illustrated, and in network advertising during both regular and special programming.

Team Central first became aware of Xerox’s ad campaign on January 30, 1984. Team Central immediately wrote to Xerox and requested that the campaign be discontinued. When Xerox did not respond, Team Central commenced this suit on April 10, 1984.

Xerox argues that it is entitled to summary judgment because the record shows that its use of the word “team” is a noninfringing, generic use. To prove that use of the word “team” in the “team (proper name)” format is commonly accepted to indicate “team” in the generic sense, it has introduced over forty examples of such use. The examples include trademark registrations and trademark applications for registration, phone listings, advertisements, and newspaper clippings. In addition to this evidence, Xerox contends that the court is entitled to take judicial notice of common usage of the English language when resolving “genericness” questions. It notes that Team Central has conceded that “The Xerox Team” would be a generic use of “team” and argues that the placement of the word “team” should not change the result. Additionally, Xerox maintains that the use of “Team Xerox” in a logo format does not extend the use of “team” beyond its dictionary definition. Finally, Xerox argues that Team Central’s trademark attorney, in an earlier, unrelated controversy, indicated in a letter that “team” is used in a descriptive, generic sense in phrases such as “Team Sports for athletic wear or Team-70 for a team architectual practice.”

Team Central contends, by contrast, that summary judgment is inappropriate since the issue of “genericness” is a question of fact to be decided by the trier of fact. It relies on the opinion of Professor J. Thomas McCarthy who states that the ultimate issue is not whether the word “team” is generic, but whether “Xerox’s use of the word ‘team’ is likely to cause confusion as to source, sponsorship, affiliation or connection.” Declaration of Professor J. Thomas McCarthy, ¶ 4. In addition, Team Central asserts that Xerox is not using the dictionary definition of “team” because it includes machines in its group and “team” in the dictionary does not. Moreover, it charges that Xerox uses “Team Xerox” in the logo format to identify the Xerox corporation and to show affiliations with another company. It also argues that depositions of Xerox advertising personnel show that the “team (proper name)” format was not common in the United States when Xerox began its campaign. Further, Team Central notes that the third parties who sought and obtained a federal trademark registration for use of the “team (proper name)” format did not disclaim the word “team” as generic.

Discussion

The principles of Fed.R.Civ.P. 56 govern in a trademark action just as in any other suit. Nestle Co., Inc. v. Chesters Market, Inc., 571 F.Supp. 763, 768 (D.Conn.1983). In passing upon a summary judgment motion, the court is required to view the facts in the light most favorable to the nonmoving party, and the movant has the burden of establishing that no genuine issue of material fact remains and that the case may be decided as a matter of law. Butter v. Buechler, 706 F.2d 844, 846 (8th Cir.1983); Ralph’s Distributing Co. v. AMF, Inc., 667 F.2d 670 (8th Cir.1981). The non-moving party is entitled to the benefit of all reasonable inferences to be drawn from the underlying facts disclosed in pleadings and affidavits. Vette Co. v. Aetna Casualty & Surety Co., 612 F.2d 1076 (8th Cir.1980). The nonmoving party may not merely rest upon allegations or denials of the party’s pleadings, however, but must set forth specific facts by affidavits or otherwise showing that there is a genuine issue for trial. Burst v. Adolph Coors Co., 650 F.2d 930, 932 (8th Cir.1981).

Each trademark case must be decided upon its particular facts and where it seems that a trial is not likely to develop additional evidence, summary judgment is appropriate. Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 498 F.Supp. 805, 810 (D.Mass.1980), aff'd, 657 F.2d 482 (1st Cir.1981); United States Jaycees v. San Francisco Jr. Chamber of Com., 354 F.Supp. 61 (N.D.Cal.1972), aff'd, 513 F.2d 1226 (9th Cir.1975); James Burrough Limited v. Beef/Eater Restaurants, Inc., 272 F.Supp. 489 (N.D.Ga.1967), aff'd, 398 F.2d 637 (5th Cir.1968). In particular, several courts have found that issues of genericness may be properly addressed upon a motion for summary judgment. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir.1983); S.S. Kresge Co. v. United Factory Outlet, Inc., 634 F.2d 1 (1st Cir.1980); Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990 (7th Cir.1979), cert. denied, 444 U.S. 1102, 100 S.Ct. 1067, 62 L.Ed.2d 787 (1980).

As stated in the Memorandum Opinion and Order of June 21, 1984, only marks which are distinctive may be appropriated by one business to the exclusion of all others. 3 Callman, Unfair Competition, Trademarks & Monopolies, § 18.01. To be distinctive, a mark must have three characteristics: (1) the mark must be sufficiently unique to be distinguishable from others; (2) the mark must not describe or signify characteristics which the designated goods or services share with those emanating from other sources; and (3) the mark must be recognizable as an indicium of source, rather than as a decorative symbol or pattern or as a sample of text conveying information other than source identity. Id.

Marks which are merely generic or descriptive are not subject to trademark protection unless they have acquired a secondary meaning. Id. Generic marks are marks which include “[wjords which embrace an entire class of products or services, not all of which necessarily emanate from the same source____” Id. at § 18.03. Descriptive marks are “[wjords, phrases, signs or pictures which refer to any feature of the product or service — its peculiarities, appearance, fragrance, character or quality, its effect or purpose, or the manner of its use and which, as a consequence, might not be considered by the public as indicia of indentification ____” Id. A common source of evidence on genericness is the dictionary. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir.1983). For instance, the court in Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978), relied heavily upon the dictionary to find that “light” or “lite”, was a generic term in relation to low-calorie beer. See 561 F.2d at 80-81. The Miller court also noted that the court is entitled to take judicial notice of common usage of the English language to determine whether a use is generic. Id.

In the instant case, the dictionary shows that “team” is a generic term. Its primary meaning is as a noun designating “a number of persons associated together in work or activity.” Webster’s Ninth New Collegiate Dictionary, 1983. Accordingly, “team” may not be protected as a trademark unless it, either by itself or in conjunction with other words or symbols, has acquired a secondary meaning. Furthermore, even if a generic word has acquired secondary meaning through use in conjunction with a specific mark, others may continue to use the word in a manner that conveys its primary meaning. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976); Stephen F. Whitman & Son, Inc. v. Christy Cosmetics, Inc., 140 F.2d 1001 (C.C.P.A.1944); John Morrell & Co. v. Hauser Packing Co., 20 F.2d 713 (9th Cir.1927). Team Central’s rights to the marks “Team” and “Team Electronics” do not prevent others from using the word “team” in its primary or generic sense.

Team Central contends, however, that the test for genericness requires consideration of more than just the dictionary definition. It argues that direct evidence of what the public understands by use of the term “Team Xerox” is necessary. It asserts that the documented instances of public confusion as to whether Team Central and Xerox are related is evidence that Xerox is using “Team Xerox” as a trademark, i.e., to identify the source of its products.

Team Central’s argument does not recognize that evidence of public understanding is not an issue of fact in the case of a common word used in accordance with its accepted meaning. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 905 (7th Cir.1983); Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990, 995 (7th Cir.1979). For example, while “Apple” is a distinctive mark as applied to computers, the word “apple” can be used by anyone in association with the fruit “apple”. Even if persons could be found to testify that every time they saw “apple” as applied to apples they formed the impression that the seller was somehow connected with Apple Computer, such testimony would not prevent a finding that “apple” was used generically. “Once a term is provén to be generic, evidence of purported buyer association of the term with a single source will not change the result.” McCarthy, Trademarks and Unfair Competition, § 12:15 (2d Ed.1984).

In the instant case, the record shows that “team” is being used by Xerox in its generic sense. Team Central has conceded that Xerox properly uses the word “team” in its primary dictionary sense when ads refer to a team of Xerox employees or the fundamental concept of teamwork. It argues, however, that Xerox strays from this definition when it includes machines.

The court is unpersuaded that the dictionary definition must be adhered to so literally when the central idea of teamwork — a togetherness, pulling toward one goal — albeit by a team which includes machines, is present. The majority of Xerox’s ads specifically define its use of “team” in the text. For example:

[Wje’ve created TEAM XEROX. A team of people and office machines, all working together____
Team Xerox, a wide array of products, people and services to help meet all your information needs.

In addition, the generic use of team is further emphasized by the frequent use of athletics as a background or by reference to athletic themes, such as winning. Team Central itself pointed to the connection between the “Team Xerox” campaign and the summer and winter Olympics. Xerox focused its advertising campaign on those games and this concentration further demonstrates the generic use of “team”.

Team Central has also conceded that “The Xerox Team” is a generic use of “team”. Such a concession makes it difficult to assert that “team” loses its generic definition merely by its placement, especially when the “team (proper name)” format is commonly used in business and athletics to connote a team effort or approach. Furthermore, the letter of Team Central’s attorney suggests that it recognizes that some uses of the “team (proper name)” format are generic. Team Central argues that the advertising person who created the “Team Xerox” campaign has testified that the “team (proper name)” format was not widely accepted in the United States at the beginning of the “Team Xerox” campaign. While Robert Cox admitted that the format was derived mainly from European athletic usage, he also stated that he had seen the format used here, as in “Team Nike”. Depo. of Robert Cox at p. 45. Xerox has also submitted affidavits and advertisements containing examples of other sports teams, such as “Team U.S.A.”, “Team Canada”, “Team America”, “Team New Canaan”, and “Team Nabisco”.

In addition, Xerox has shown extensive use of the “team (proper name)” format by businesses to connote a team effort. Team Central argues that the examples of federal trademark registrations are inconclusive because the word “team” is not disclaimed. Section 6 of the Lanham Act, 15 U.S.C. § 1056, however, makes a disclaimer discretionary. Team Central also argues that many of these “team (proper name)” format exhibits are inconclusive because they occurred at a date after the “Team Xerox” campaign began and refer to businesses outside the area of electronics and computer sales. Priority and field of use arguments are not pertinent to the issue of whether the “team (proper name)” format is used generically. Even assuming arguendo that priority is relevant to genericness, many of Xerox’s exhibits show first use dates prior to introduction of “Team Xerox”. See Xerox’s Memorandum in Support of Motion for Summary Judgment, Appendix A. The numerous third party use of the “team (proper name)” format shows the wide-spread and well-accepted use of “team” to connote a team approach in the traditional sense.

The record also demonstrates that Xerox uses the “Team Xerox” logo in a manner consistent with the dictionary definition. The fact that Xerox may be using “team” in conjunction with “Xerox” as a service mark does not alter its primary meaning. The Lanham Act specifically provides that a registrable mark may contain a generic and therefore unregistrable component. 15 U.S.C. § 1056. Courts have long recognized the use of generic terms in connection with a valid trade or service mark. M.B.H. Enterprises, Inc. v. Woky, Inc., 633 F.2d 50 (7th Cir.1980); Jean Patou, Inc. v. Jacqueline Cochran, Inc., 312 F.2d 125 (2d Cir.1963); Dixie-Cola Laboratories, Inc. v. The Coca-Cola Co., 117 F.2d 352 (4th Cir.1941), cert. denied, 314 U.S. 629, 62 S.Ct. 60, 86 L.Ed. 505 (1941). The “Team Xerox” logo is merely a shorthand way to communicate the primary meaning of a group of people, machines, and services all working to meet the customer’s information needs.

Team Central has raised other factual issues concerning the policies of Xerox’s trademark attorney and the sophistication of computer purchasers. The court need not address these issues because they are immaterial to the primary issue of genericness.

In light of the dictionary definition of “team”, Xerox’s specific definition of “Team Xerox” in accordance with this common meaning within the majority of its ads, the concessions by “Team Central” that certain uses are permissible, the extensive third party use of the “team (proper name)” format, and the court’s entitlement to take judicial notice of commonly-accepted English usage, the court finds as a matter of law that Xerox’s use of the word “team” is not an infringement of Team Central’s trademark rights. Since the use of “team” in its ordinary dictionary meaning is a defense to Team Central’s claims of trademark dilution, unfair competition and deceptive trade practices, Xerox has demonstrated that summary judgment is appropriate on every count.

ORDER

Accordingly, based upon the above and all the files, records, and proceedings herein,

IT IS HEREBY ORDERED that the motion of Xerox Corporation for summary judgment in its favor is granted and the amended complaint of Team Central Incorporated is dismissed.

LET JUDGMENT BE ENTERED ACCORDINGLY.

      . 15 U.S.C. § 1065 provides for the incontestability of a registered mark when the mark has been in continuous use for five consecutive years subsequent to the date of its registration. This section contains certain exceptions, however. Subparagraph 4 provides as follows:
      (4) No incontestable right shall be acquired in a mark which is the common descriptive name of any article or substance, patented or otherwise.
      15 U.S.C. § 1115(a) provides that any registration issued under the act is prima facie evidence of the registrant’s exclusive right to the use of the registered mark. 15 U.S.C. § 1115(b) provides that if the registered mark has become incontestable under section 1065, the registration is conclusive evidence of the registrant’s right to exclusive use.

      . “Team Xerox” is a registered running team with the Athletic Congress. Team Xerox members compete in events around the world wearing "Team Xerox” shirts.

      . Evidence of public understanding may be critical to determine whether a coined word for a commercial product has degenerated from trademark status into a generic term. Team Central is not alleging such a pattern in this case.

      . The dictionary defines teamwork as "work done by several associates with each doing a part but all subordinating personal prominence to the efficiency of the whole.” Webster’s New Collegiate Dictionary, 1977.

      . To be sure, the patent office has the right to force the trademark applicant to make such a disclaimer, but the patent examiners are not always consistent.


source: Caselaw Access Project

author: JAMES C. FOX, District Judge.

license: Public Domain

text:
    Henry Z. SPELL, Plaintiff v. Charles D. McDANIEL, Ind. & as patrolman, City of Fayetteville Police Department; William P. Dalton, Command Sergeant, City of Fayetteville Police Department; Roger T. Holman, Command Sergeant, City of Fayetteville Police Department, William C. Johnson, Director of Internal Affairs Division, City of Fayetteville Police Department; Daniel K. Dixon, Chief, City of Fayetteville Police Department; John P. Smith, City Manager, City of Fayetteville; and the City of Fayetteville, N.C., a municipal corporation, Defendants.
    No. 84-06-CIV-3.
    United States District Court, E.D. North Carolina, Fayetteville Division.
    April 17, 1985.
    See also D.C., 604 F.Supp. 641, D.C., 591 F.Supp. 1090.

      Gerald Beaver, Fayetteville, N.C., for plaintiff.
    Robert C. Cogswell, Jr., Fayetteville, N.C., for Holman, Dalton, Johnson, Smith & City of Fayetteville.
    Bobby G. Deaver, Fayetteville, N.C., for McDaniel.
    Carl A. Barrington, Jr., Fayetteville, N.C., for Dixon.
   ORDER

JAMES C. FOX, District Judge.

On April 4, 1985, the second jury returned its verdict in this action, assessing compensatory damages against defendants McDaniel, Dalton, Holman, Dixon, Johnson, and through the official supervisory defendants, the City of Fayetteville, in the amount of $900,000. As a result of the jury’s verdict, defendants have filed post-trial motions for (1) judgment notwithstanding the verdict and (2) amendment of judgment or, alternatively, a new trial. Plaintiff has responded, thus, these matters are now ripe for disposition and will be addressed seriatim.

A. Defendants’ Motion for Judgment Notwithstanding the Verdict.

Defendants move for judgment notwithstanding the verdict pursuant to F.R.Civ.P. 50(b), arguing there was no evidence to support a finding of $900,000 compensatory damages. Defendants moved for a directed verdict at trial, which was denied, and since Rule 50(b) simply allows a party to renew his motion for a directed verdict, defendants’ motion now requires that the evidence be re-examined to determine whether the court’s prior ruling was correct.

The standard for granting a judgment notwithstanding the verdict is the same as the standard governing the direction of a verdict. Hallmark Industry v. Reynolds Metals Co., 489 F.2d 8, 13 (9th Cir.1973); cert. denied, 417 U.S. 932, 94 S.Ct. 2643, 41 L.Ed.2d 235 (1973); O’Neill v. W.R. Grace & Co., 410 F.2d 908 (5th Cir.1969). A motion for judgment notwithstanding the verdict presents a question of law as to whether or not, when all of the evidence is considered, together with all reasonable inferences therefrom in favor of the opposing party, there exists a failure or lack of evidence to prove any necessary element of the party favored by the verdict’s case. Ries v. Sanders, 34 F.R.D. 468, 470 (N.D.Miss.1964). In reviewing the evidence, the court may not weigh the evidence or the credibility of any witness. Singer Co. v. E.I. duPont de Nemours & Co., 579 F.2d 433 (8th Cir.1978). Essentially, a trial court may only grant a judgment notwithstanding the verdict “when the evidence points all one way and is susceptible to no reasonable inferences sustaining the position of the non-moving party.” Id. at 441; 5A Moore’s Federal Practice § 50.-07(2).

Defendants specifically contend that (1) no evidence was presented of plaintiff’s “mental anguish” so as to support the instruction given by the court allowing the jury to consider “mental anguish” as an element of damages and (2) the evidence of Spell’s pain and suffering was “at best, equally supportive of the fact that plaintiff had no pain and suffering.” Defendants’ April 11, 1985, Memorandum at 2.

Reversing the order of defendants’ arguments the court finds no merit in defendants’ assertion regarding plaintiff’s pain and suffering. Plaintiff presented three (3) witnesses at trial, including plaintiff’s treating physician and his former attorney, along with fourteen (14) documents, all tending to prove plaintiff’s intense pain and suffering, which increased as his testicular sac swelled. The testimony of Doctors Rochman and Proctor and the reasonable inferences derived therefrom clearly buttressed plaintiff’s theory of damages. To suggest that plaintiff simply suffered “mild discomfort” after the McDaniel assault is to disregard the reality of plaintiff’s injury. See, e.g., plaintiff’s Exhibits 7, 8, 9A, 11B and 12.

Defendants’ argument concerning the “mental anguish” element of damages is predicated on the fact that plaintiff did not testify at the second trial. Defendants contend that Spell’s failure to testify created, ipso facto, a lack of evidence of mental anguish. The court disagrees with defendants’ logic.

Plaintiff suffered a brutal and extremely traumatic injury. From the nature and extent of the injury alone, a rupture of plaintiff’s right testicle, mental anguish associated with plaintiff’s pain and suffering could readily be inferred by the jury. See Baskin v. Parker, 602 F.2d 1205, 1209-1210 (5th Cir.1979). However, the circumstances under which the blow was inflicted which caused the injury were also extraordinary. The second jury was instructed that plaintiff was handcuffed in the basement of the LEC and, while in that position, was assaulted by defendant McDaniel, without justification, resulting in serious and permanent bodily injury. Further, the jury learned that plaintiff remained confined in the Cumberland County jail for three days as his pain and suffering increased. Thus, not only could the jury infer mental anguish from the rupture, but they could also reasonably infer mental anguish or emotional distress from the unusual circumstances surrounding the delivery of the injury and its aftermath.

Further support for any award by the jury as to mental anguish can be based upon Spell’s permanent loss of his right testicle and resulting irreversible sterility. Although mental anguish might have been more easily demonstrated through direct testimony by the plaintiff, it could also be reasonably inferred by the jury from all of the above circumstances. See Halperin v. Kissinger, 606 F.2d 1192, 1207-1208 (D.C.Cir.1979).

In conclusion, the evidence in support of plaintiff’s allegations, taken in a light most favorable to the plaintiff, was substantial. The jury’s verdict on the issue of compensatory damages was fully supported by the anecdotal and documentary evidence at trial and was clearly reasonable. See infra at 1419-1420. Accordingly, defendants’ motions for judgment notwithstanding the verdict if DENIED.

B. Defendants’ Motion for Amendment of Judgment of a New Trial

In the alternative, defendants have moved for amendment of the judgment and for a new trial, pursuant to F.R.Civ.P. 59, on the grounds that (1) the verdict is against the substantial or clear weight of the evidence; (2) it would be unjust for the defendants to be required to pay the verdict in light of the lack of evidence supporting the verdict; and (3) the court erred in restricting defendants in their prospective cross-examination of the plaintiff by preliminarily barring evidence of plaintiffs prior trafficking convictions, if defendants called plaintiff as a hostile witness, unless plaintiff embellished his prior deposition or trial testimony.

F.R.Civ.P. 59(a) requires that the trial court set aside the verdict and order a new trial, even if the verdict is supported by substantial evidence, if the verdict is: (1) against the clear weight of the evidence; or (2) based on false evidence; or (3) will result in a miscarriage of justice. Wyatt v. Interstate & Ocean Transport Co., 623 F.2d at 891. The trial court is not required to take that view of the evidence most favorable to the verdict winner. Indeed, the court is required to weigh the evidence for itself.

Defendants having made the motion for a new trial, the court is obligated to briefly weigh the evidence and assess the credibility of the key witnesses at trial. The court, having listened intently to all the testimony at trial and having carefully reviewed its trial notes, finds the evidence in support of the jury’s verdict substantial and further holds that allowing the $900,-000 verdict to stand will not result in a miscarriage of justice.

Plaintiff’s initial physical condition on the night of November 19, 1983, and on November 20, 1983, was established by plaintiff’s Exhibits 6, 7, 8, 9A, 9B and 9C, all of which were admitted without objection. These jail and emergency room reports indicate “intense pain” and extreme swelling of plaintiff’s right testicle within approximately twenty-four hours of the McDaniel assault.

Dr. Stephen Rochman, plaintiff’s treating physician testified, as he did at the first trial, that plaintiff’s testicular sac was swollen over five times its normal size, due to the rupture of the right testicle and the accompanying blood and clotting. Such an injury, he testified, was bound to cause significant pain. As Dr. Rochman’s reports indicate, plaintiff suffered a “traumatic rupture of the right testicle and hematocele.” Plaintiff’s Exhibit 11B. “The testicular parenchyma was. seen lying fragmented and in pieces within the tunica vaginalis. There was a laceration through the tunica albuginea of the testicle throughout its whole length. ... There was no way to salvage the testicle.” Plaintiff’s Exhibit 11A. Dr. Rochman’s testimony and his medical records established the severity of plaintiff’s injury, the pain and suffering associated with it, and the need for immediate surgery resulting in the loss of part of plaintiff’s body.

Dr. Lee Proctor, a pathologist who examined the removed right testicle of the plaintiff, testified that plaintiff’s testicle was crushed much the way a fruit is crushed when it is squeezed and that the remains of plaintiff’ testicle were spread throughout his testicular sac. Again, this testimony clearly supported plaintiff’s claims of pain, suffering, mental anguish, loss of part of the body and permanent injury.

The testimony of Paul Herzog, plaintiff’s attorney for his criminal charges, clearly indicated that two days following the assault, plaintiff was unable to walk in a normal fashion due to the excessive swelling of the testicular sac, and, further, that Spell was pale, unable to talk and appeared to be in a great deal of pain. The court finds the testimony of plaintiff’s professional witnesses to have been credible. Defendants failed to rebut any of this testimony with evidence in their own case-in-chief or by effective cross-examination of plaintiff’s witnesses.

Evidence with regard to plaintiff’s medical expenses is found in plaintiff’s Exhibits 1-3. Evidence as to scarring and disfigurement, as well as loss of part of the body, stems from the surgical removal of the testicle itself. Evidence as to loss of the use of part of the body is likewise predicated on the permanent loss of plaintiffs right testicle and his permanent irreversible sterility. Finally, the violation of plaintiffs constitutional rights was established by the first jury’s verdict and to the extent the second jury’s overall verdict reflects an independent award for that violation, such an award is just and proper. See e.g., Bauer v. Norris, 713 F.2d 408, 413-414 (8th Cir.1983); Green v. Francis, 705 F.2d 846, 848-850 (6th Cir.1983); Lenard v. Argento, 699 F.2d 874, 888-889 (7th Cir.1983); Herrera v. Valentine, 653 F.2d 1220, 1222 (8th Cir.1981).

The amount of time in which the jury deliberated was reasonable (2 hours 41 minutes) and the question posed to the court by the jury on the morning of April 4,1985, clearly indicated a thoughtful and balanced consideration of all the elements of damages as set forth in the court’s instructions. Based on the aforesaid, the court concludes the jury’s verdict on compensatory damages was not against the weight of the evidence and, in fact, was amply supported by the evidence and the prior jury’s findings of liability; to-wit, plaintiff’s permanent loss of his right testicle, permanent irreversible sterility and violation of his constitutional rights. The award of $900,-000 was not “grossly excessive, inordinate, shocking to the judicial conscience, ... or monstrous.” Wilson v. Taylor, 733 F.2d 1539, 1548 (11th Cir.1984). Defendants’ motion for a new trial on the basis that the verdict was against the weight of the evidence or was without foundation and based on speculation is, therefore, DENIED.

Defendants have also moved for a new trial contending the court erroneously restricted defendants’ potential cross-examination of the plaintiff as a hostile witness. At a pre-trial hearing ordered by this court to dispose of all foreseeable evidentiary issues and to settle a final pre-trial order, Magistrate Dixon granted plaintiff’s motion in liminine to exclude all evidence of plaintiff’s prior convictions. On appeal, this court reversed the Magistrate, holding that application of the balancing test set forth in F.R.Evid. 403 led to the conclusion that the probative value of the evidence of plaintiff’s prior convictions, as those convictions related to plaintiff’s credibility as a witness, was not substantially outweighed by the danger of unfair prejudice. Order of April 1, 1985, at 2.

At a pre-trial meeting in chambers on the morning of trial, counsel for plaintiff indicated that they would not call plaintiff to testify. Defendants then suggested they might call plaintiff as a hostile witness and requested the court render a preliminary advisory ruling before the start of trial as to whether defendants would be allowed to impeach plaintiff with his prior narcotics trafficking convictions. After extensive discussion with counsel, the court informed the parties that its inclination would be to bar evidence of plaintiff’s prior trafficking convictions unless he embellished his prior deposition or trial testimony, should plaintiff choose not to testify in his case-in-chief, thereby not placing his credibility in issue, but instead be called by defendants as an adverse witness (applying the balancing test of F.R.Evid. 403 and finding the balance, under these circumstances, tipping slightly to the side of the plaintiff).

Based on this preliminary discussion, counsel chose not to call the plaintiff to the stand. Having made this tactical decision, any complaint defendants had with regard to the court’s preliminary, advisory ruling in chambers was rendered moot. Luce v. United States, — U.S. -, 105 S.Ct. 460, 83 L.Ed.2d 443 (1984). In Luce, the petitioner moved at trial to exclude the government from using a prior state conviction to impeach him if he testified. The District Court denied Luce’s motion in limine, ruling that the prior conviction constituted permissible impeachment under F.R.Evid. 609(a). Luce chose not to testify at trial and was convicted.

On appeal, petitioner argued the District Court abused its discretion in denying the motion in limine. The Sixth Circuit Court of Appeals affirmed, stating that where the defendant fails to testify, the appellate court would not review the District Court’s in limine ruling. The Supreme Court granted certiorari and affirmed the Sixth Circuit.

In Luce, the Court held that to raise and preserve for review the claim of improper impeachment with a prior conviction, a defendant must testify. To perform the balancing required by F.R.Evid. 609(a), a reviewing court must know the precise nature of the defendant’s testimony, which is unknowable when the defendant fails to testify. Under these circumstances, the court said “[a]ny possible harm flowing from a district court’s in limine ruling permitting impeachment by a prior conviction is wholly speculative.” Id. at 463.

The reason for such a rule is obvious. It enables the reviewing court to determine the impact any erroneous impeachment may have had in the context of the entire trial and also tends to discourage motions made solely to “plant” reversible error in the trial. Id. at 464. This court finds the rationale and rule of Luce equally applicable to the situation in the case at bar.

First, because defendants did not call plaintiff as a hostile witness, the court was never required to formally rule on plaintiff’s motion in limine in that context. All that was rendered in chambers was a preliminary, advisory ruling. This cannot form the predicate for error.

Second, as in Luce, any possible harm to the defendants is purely conjectural and speculative. The advisory ruling, by its own words, was subject to change as plaintiff’s testimony unfolded, and defendants would have been allowed to impeach the plaintiff with his trafficking convictions had his trial testimony, in any manner, differed from his prior testimony. See id. at 463. In addition, the court was free, at anytime, in the exercise of its sound judicial discretion, to alter its preliminary ruling. Id. By deciding not to call the plaintiff to testify, the court was given no opportunity to exercise such discretion.

Accordingly, defendants’ motion for a new trial based on the court’s advisory pre-trial ruling regarding evidence of plaintiff’s prior convictions is DENIED.

Finally, with regard to defendants’ motion for remittitur, this court has held that the verdict was neither against the weight of the evidence nor excessive as a matter of law. The court is not free to set aside the verdict merely because it might have awarded a slightly different amount of damages nor may the court arbitrarily reduce plaintiff’s award of damages, even if it were inclined to do so. Given the evidence at trial and the prior jury’s findings of liability, the second jury’s award of $900,000 as compensatory damages fails to shock the conscience of the court. The verdict was not unreasonably high. Therefore, defendants’ motion for remittitur is DENIED.

SO ORDERED.

      . No evidentiary objections were tendered to these exhibits at the pre-trial hearing before Magistrate Dixon or in the Pre-Trial Order signed by counsel.

      . As one of six (6) elements of damages, the court instructed the jury to take into account any "pain, suffering and mental anguish” suffered by the plaintiff as found by a preponderance of the evidence. Jury Instructions at 16-18. The other five elements were: (1) medical expenses; (2) scars and disfigurement; (3) loss of part of the body and loss of use of part of the body; (4) permanent injuries and disability; and (5) violation of constitutional rights.

      . The court will address all of defendants' arguments as part of their motion for a new trial pursuant to F.R.Civ.P. 59(a). Defendants’ motion for amendment of judgment under F.R. Civ.P. 59(e) is inapposite as that subdivision exists solely to address situations such as that arising in Boaz v. Mutual Life Ins. Co. of New York, 146 F.2d 321 (8th Cir.1944).

      . The jury’s question read as follows:
      Should we, as the jury, list the damages in 5 categories for clarification as to how damages were awarded.

      . F.R.Civ.P. 59(a) further allows a motion for a new trial on the basis that substantial errors were committed at trial in the admission or rejection of evidence on the giving or refusal of instructions. Neal v. Carey Canadian Mines, Ltd., 548 F.Supp. 357, 381 (E.D.Pa.1982); Diane Manufacturing Co. v. Sheffield Industries, 514 F.Supp. 185, 186 (S.D.Fla.1981).

      . This pre-trial, in chambers conference was not on the record.

      . Counsel were cognizant of the fact that under any circumstances, plaintiff's conviction stemming from the charges of November 19, 1983, was fully admissible. In fact, the jury received evidence to that effect.

      . Even if Luce was not decisive, the court finds the advisory ruling was correct and in accordance with law, given the information at the court’s disposal when the issue was discussed. See Moore v. Volkswagenwerk, A.G., 575 F.Supp. 919 (D.Md.1983).