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.

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.

Guru Denim, Inc. v. Hayes, 2010 U.S.Dist. LEXIS 52992 (C.D. Cal. 2010)

Plaintiff filed suit against defendant for allegedly selling a counterfeit “hoodie” bearing plaintiff’s trademark.  Plaintiff failed to prosecute the case diligently- letting it linger for 16 months before seeking a default (which defendant overcame based on questions of appropriate service) and then, at the pretrial conference, complained for the first time of defendant’s failure to participate in discovery and sought a continuance.  The court issued an order to show cause why plaintiff should not be sanctioned.  Plaintiff then informed the court that plaintiff’s counsel had misplaced the allegedly infringing hoodie.  As sanctions, the court dismissed the case with prejudicie, awarded defendant costs as the prevailing party, and sanctioned plaintiff’s counsel for the expenses incurred by defendant in attending the pretrial conference and sanctions hearing (defendant could not be awarded attorneys fees because he appeared pro se).

Yash Raj Films (USA), Inc. v. Daljit Singh Sidhu, 2010 U.S. Dist. LEXIS 25988 (E.D. Cal. 2010)

Plaintiff has the right to distribute Indian films in the United States.  Defendant admitted to copyright infringement in a criminal suit as to 4 of Plaintiff’s titles.  Photographs of the infringing DVDs bore Plaintiff’s trademark.  Plaintiff sought summary judgment as to infringement of 32 of plaintiff’s titles seized from Defendant as part of the criminal investigation based on defendant’s admissions.  Defendant, in the civil action, denied infringement.  The court granted summary judgment as to the 4 titles identified in the plea bargain and awarded plaintiff statutory damages and attorneys fees. (more…)

Coach, Inc. v. Abner’s Fashion, et al., 2009 U.S. Dist. LEXIS 121761 (C.D. Cal. 2009)

The court granted summary judgment to Coach in a case of counterfeit goods.  The defendants were unable to raise any triable issue of fact that the goods were not infringing.