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.
Defendant’s admissions in the criminal case gave rise to a non-mutual offense collateral estoppel claim by the plaintiff because defendant had a full and fair opportunity to litigate the issue and an incentive to do so at the criminal phase. However, the estoppel only applied to the titles to which defendant actually admitted infringement in the plea bargain. Because photos of the 4 infringing DVDs bore plaintiff’s trademark, summary judgment on plaintiff’s Lanham Act claim was also appropriate.
The court granted statutory damages in an amount just less than defendant’s total net worth, which fell within the range of statutory damages permitted, would adequately compensate plaintiff and would have an adequate detterent effect on defendant. The court also awarded attorneys fees reduced by an amount clearly connected to pursuing the claim for infringement on the titles not part of the plea bargain and therefore not awarded at summary judgment.