Trademark Law Briefs

Lous Vuitton Malletier S.A. v. Akanoc Solutions, Inc. et al., 2011 U.S.App. LEXIS 18815 (9th Cir. 2011)

Malletier sued the server hosts of websites that sold counterfeit goods in the US.  At jury trial, all defendants were found guilty of contributory copyright and trademark infringement.*  The jury awarded the maximum statutory damages against each defendant without making a finding of joint and several liability.  The two defendants were the web host and the manager of the web host (not clear if this was alter ego liability or just a separate count).  In any event, the infringement claims were single acts of infringement, for which each defendant was liable, not separate acts of infringement by separate defendants brought together in one case.

The court first confirmed that contributory infringers are subject to statutory damage awards for trademark and copyright infringement. 

As for the cap on statutory damages, it can not be multiplied per defendant where the defendants are jointly and severally liable.  ”Statutory damages reach a maximum based on the number of protected works, not the number of  defendants.” 

* The trial court did let one defendant off the hook, finding the jury verdict couldn’t be supported based on the facts presented because the defendant only leased server equipment and did not actually offer hosting services.

In re Forchion 2011 (2011) Cal.App.LEXIS 1144

Marijuana activist Forchion who goes by the moniker “NJWeedman” attempted to officially change his name to “NJWeedman.com.”  The Court of Appeal says no go- partially on trademark grounds.  The court said it would cause confusion to allow someone to change their personal name to a name they use as a business website, especially since someone else could end up owning the website down the road.  The court seems to be saying there’s a potential future trademark infringement problem because if the court allowed the name change no one could stop Forchion from using NJWeedman.com even if he was infringing by doing so.

This argument seems odd to me- as personal names and surnames are used as trademarks all the time.  Also how does this differ from Mr. Chad Ochocinco’s name change? (well, obviously it occurred in California and not Ohio for one thing)

Two recent Northern District of California cases have applied the new Winter preliminary injunction standard in the trademark context.

Before 2008, the plaintiff in a trademark infringement case was entitled to a presumption of irreparable harm upon a showing of likelihood of success on the merits.   But in Winter v. NRDC, Inc. 129 S. Ct. 365, 374 (2008), a non-trademark case, the Supreme Court held that the 9th Circuit’s standard of the likelihood of irreparable injury in granting preliminary injunctions was too lenient and held that plaintiff must demonstrate that irreparable injury is “likely in the absence of an injunction.”

In CytoSport, Inc. v. Vital Pharmaseuticals, Inc. 2009 U.S. Dist. LEXIS 38343, the court held that because trademarks serve as the identity of their owners and in them resides the reputation and goodwill of their owners, if another person infringes the marks, the owner loses quality control thus creating th epotitntial for damages to its reputation.

This is neither a trademark case nor a California case, but I think the folks at techdirt raise some interesting food for thought…

What What (In the Butt)? What What (Fair Use Doesn’t Need a Trial)?

Rodriguez-Valencia v. Holder, 99 U.S.P.q.2D (BNA) 1476 (9th Cir. 2011)

The 9th circuit upheld an immigration judge’s order finding defendant removable after he was convicted for “‘willfully manufacturing, intentionally selling, and knowingly possessiong for sale more than 1,000 articles bearing a counterfeit trademark,’ in violation of California Penal Code section 350(a)(2)…”  Counterfeit trademarks are included in the definition of generic counterfeiting referenced in INA section 101(a)(43)’s list of aggrevated felonies.