Friday, November 13, 2009

Trademark Infringement: Attorney’s Fees

Welding Servs. v. Forman, 2008 U.S. App. LEXIS 24402 (11th Cir. Ga. Dec. 2, 2008)

NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The District Court entered a summary judgment in favor of the defendant/appellee and ordered the plaintiff/appellant to pay attorneys fees. The court of appeals examined whether the district court abused its discretion when awarding attorneys fees to the defendant/appellee. In awarding attorneys fees to the defendant/appellee, the district court cited the following factors (1) the trademark holder waited until three of its former employees acquired the alleged infringer, even though the alleged infringer had used the mark two years prior to the lawsuit commencing; (2) The alleged infringer tried to resolve the dispute without litigation, and responded to the holder’s cease and desist letter by volunteering to change the mark; and (3) Despite offers of settlement, including a pre-discovery offer of judgment, the trademark holder pursued the litigation. The court of appeals found that the district court did not abuse its discretion in awarding attorneys fees to the defendant/appellee. Also, the plaintiff/appellant waived its challenge of the attorneys fees award because the plaintiff/appellee did not challenge the amount at the district court level.

On another issue, the court of appeals did find that the district court erred in one respect. The court of appeals ruled contrary to the district court’s finding that the defendant/appellee had volunteered to change the allegedly offending mark in offer of settlement.

The district court’s judgment was reversed in part, affirmed in part, and remanded.

Monday, November 9, 2009

Trademark Counterfeiting Act: Parallel Brands, The Helms-Burton Act, Cuban Cigars

United States v. Penton, 2008 U.S. App. LEXIS 25373 (11th Cir. Fla. Dec. 17, 2008)

NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The Defendant appealed from a judgment that found him in violation of 18 U.S.C.S. § 2320(a), the Trademark Counterfeiting Act. The defendant was caught when an undercover officer went to his shop and purchased cigar boxes that looked similar to trademarked “Cuban” cigar boxes. The defendant contended that the trademarks of the “Cuban” cigars were not valid United States trademarks because of the Helms-Burton Act, at 22 U.S.C.S. § 6032(h). However, the companies at issue, although originally from Cuba, had set up independently in the United States after the owner families fled from Cuba. The companies had established trademarks in the U.S. by common law. In the meantime, back in Cuba, there were still the other separate brands with the same marks, now run by the Cuban government. Consequently, parallel brands had developed, with the Cuban government selling Cuban style cigars made in Cuba to the rest of the world, and the Cuban exile company selling Cuban style cigars made in the United States distributing them in the U.S. The trademarks for the company owned by the Cuban government are not U.S. trademarks and not entitled to U.S. trademark protection. However, the companies at issue here were the companies based in the United States which own common law U.S. trademarks. Therefore, the trademarks in question are U.S. trademarks, the Helms-Burton Act does not apply here, and these U.S. trademarks are protected. Also, testimony of consumers and experts was not necessary to prove confusion.

Monday, November 2, 2009

Anticybersquatting Consumer Protection Act (ACPA) and Lanham Act: Not Duplicative Damages

St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1193 (11th Cir. Fla. 2009).

At trial, Plaintiff St. Luke's sued Dr. Sanderson and his LLC, alleging that Dr. Sanderson made unauthorized use of the domain names laserspecialist.com and lasereyelid.com, and the website the LaserSpecialist.com to promote his practice after he had resigned from practicing with St. Luke’s.

The jury found for Dr. Sanderson on a copyright infringement claim, but for St. Luke’s on claims of service mark infringement and ACPA. The United States District Court for the Middle District of Florida declared the ACPA damages should be reduced as duplicative of the service mark damages. Both parties appealed.

The appellate court disagreed with the reduction in ACPA damages. The appeals court found that that ACPA at 15 U.S.C.S. § 1125(d)(3) provided for damages even if duplicative of other damages because the text explicitly states that damages for cyberpiracy are “in addition to” any other available civil remedies.

The appellate court further explained that the damages for ACPA cannot be duplicative for damages for service mark infringement under the Lanham Act because ACPA requires the additional showing of bad faith intent to profit from a domain name.