Coach, Inc. v. Asia Pacific Trading Company, et al. 2009 US Dist. LEXIS 110903 (N.D. Cal. 2009)
Plaintiff Coach, Inc. sued Defendant Sunglass Experts, Inc. for selling counterfeit goods. Plaintiff sought summary judgment on the issue of counterfeiting. Defendant sought summary judgment to limit damages. The court granted summary judgment in part for Plaintiff and entirely for Defendant
Defendant conceded that two of its products bore Plaintiff’s “CC” logo, but argued that other goods bore a “CG” mark. The court agreed with Defendant that the “CG” mark was a question of fact and denied summary judgment as to those products.
Defendant argued that Plaintiff was not entitled to statutory damages under the Lanham Act because Plaintiff failed to use the (R) symbol on its products and did not give Defendant actual notice prior to filing the lawsuit (Defendant made no sales after receiving the lawsuit). The court agreed based on a reading of 15 USC sections 1117(a), 1111, and 1125(a). Additionally Plaintiff offered no proof of actual damages after actual notice.
Defendant argued that under comon law, Plaintiff’s damages were capped at $5,183 (Defendant’s net profits from sales). Because Plaintiff’s did not provide evidence of actual damages, such as lost profits, and did not contest Defendant’s calculation of net profits, there was no genuine issue of fact and the court limited compensatory damages as a matter of law.