Seattle Trademark Lawyer

On Oct. 16, the Eastern District of California awarded Microsoft Corp. $100,000 in statutory damages for defaulted defendant Matthew Evans’ trademark infringement. Magistrate Judge Sandra Snyder concluded Microsoft’s allegations that Mr. Evans had sold counterfeit software bearing Microsoft’s registered trademarks in February and October 2006 adequately stated a claim for trademark infringement.

Microsoft sought $100,000 in statutory damages for each of the three trademarks at issue. The court addressed the issue as follows:

“Here, profits, expenses, and lost revenues are matters only of speculation. Plaintiff has not given the Court even the most basic information regarding its loss, such as the price or value of the goods or services subject to the violations. The precise scope of Defendant’s business is not clear. All that the allegations of the complaint indicate is that the Defendant used multiple counterfeit marks in [one] instance in February 2006 and in another after 2006; further, he continued to infringe upon the marks at the time of the filing of the complaint (December 2006). It appears that the Defendant did so willfully, intentionally, and with a purpose unjustly to benefit from the efforts of Plaintiff in promoting and selling goods and/or services. Specific evidence of willfulness includes the failure to respond to requests to cease and desist contained in a letter dated July 31, 2006, which was alleged to be notification to Defendant of the wrongfulness of his conduct, and a failure to respond to the complaint and the motion for default judgment, of which it is established that Defendant had notice. The Court notes that § 1111 provides that no damages shall be recovered against an infringer of a registered mark unless the defendant had actual notice of the registration.

“Under the circumstances, the Court concludes that because there is some evidence that the use of the confusing mark was [willful] and repeated, even in the absence of the extent of Plaintiff’s loss or the Defendant’s profits, it is appropriate to award damages for the purpose of deterrence.”

In fixing the amount of the award, the court found: “This is not a case in which the defendant has been shown to have engaged in the promotion and sale of multiple counterfeit goods over the internet for an extended period of time, imported millions of infringing products, or unjustly gained huge amounts of profits. It may thus be distinguished from some of the reported cases in which extremely large awards have been made…. Given that the only probative evidence available to the Court in the present case demonstrates [willful] conduct of relatively short duration and of uncertain extent or effect, the Court exercises its discretion and concludes that pursuant to 15 U.S.C. § 1117(c)(1), an award of $100,000 in damages is appropriate.”

The case cite is Microsoft Corp. v. Evans, No. 06-1745, 2007 WL 3034661 (E.D. Calif).