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.

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)

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.

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

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.

Plaintiff sued defendant for trademark infringement, including claims based on trade dress and California unfair business practices.  Defendant moved to dismiss these claims.  The court granted in part and denied in part. (more…)

Apple sued Samsung for trade dress infringement on its iPhone and iPad product line.  Apple sought expedited discovery before a hearing for a preliminary injunction.  Samsung asked for reciprocal expedited discovery.  While the court agreed that Samsung was entitled to parity, this did not allow Samsung to seek discovery on Apple’s future products.  Apple had based its preliminary injunction motion on its current product line and so the tradedress of future products is irrelevant (therefore not worthy of expedited discovery treatment) to the upcoming motion.

Some more direction on keyword cases.  Both companies sell directly competing software programs.  Network Automation used Advanced System’s registered trademark as a keyword for sponsored link advertisements for its own product.  The trial court applied the internet “troika” factors from Brookfield Communications v. West Coast Entertainment (174 F.3d 1036) and issued a preliminary injunction based on success on the merits.  The Court of Appeals reversed- holding that considering the troika factors alone is not sufficient for a keywords case.

“In determining the proper inquiry for [keyword] infringement claim, we adhere to two long stated principles: the Sleekcraft factors (1) are non-exhaustive, and (2) should be applied flexibly, particularly in the context of internet commerce.  Finally, because the sine qua non of trademark infringement is consumer confusion, when we examine initial interest confusion, the owner of the mark must demonstrate likely confusion, not mere diversion.”

The court offered an apt brick & mortar analogy of a customer who enters Macy’s looking for clothing by Calvin Klein.  Just because the customer is diverted by a Charter Club display before reaching the Calvin Klein section does not mean there is initial interest confusion (or confusion at all).

Because the trial court relied solely on the internet “troika” and not all relevant sleekcraft factors, it abused its discretion in issuing the preliminary injunction.  The case was remanded to consider the other factors.

After Plaintiff, TWG, sued defendant, LR, for trademark infringement, LR brought a counterclaim for cancellation of TWG’s registration based on priority of use.  TWG answered with an affirmative defense that LR’s use prior to TWG’s registration was unlawful because they violated sales and labeling rules for alcohol products.  LR then filed a motion to stike.  The court denied the motion to strike stating:

“for purposes of trademark priority, lawful use may require compliance with labeling requirements.  (citation) As a result, TWG’s defense is not clearly invalid as a matter of law.  Further, any legal challenge to the legal sufficiency of the Second Affirmative Defense presents a disputed and substantial question of law that should not be resolved through a motion to strike.”

You know, I usually wouldn’t bother posting on a case like this, but 9th cir. trademark related cases have been a little light lately…

So in brief, you can’t plead that your trademark was conversion of property under state law.  Conversion covers tangible goods.  Trademarks are intangible.  That means the Lanham Act is the appropriate law.