Seattle Trademark Lawyer

The Ninth Circuit yesterday addressed the question: “whether an award of statutory damages for trademark counterfeiting under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under 15 U.S.C. § 1117(b).” Reversing the Central District of California in the case of K and N Engineering, Inc. v. Bulat, the Ninth Circuit found that it does.

K&N makes aftermarket air filters and related products. In 2004, K&N learned that Sarah Bulat and Steve Wandel were selling unauthorized decals bearing K&N’s registered design mark on eBay. In all, Ms. Bulat and Mr. Wandel sold 89 sets of the decals (with two decals per set) for $267. K&N brought suit and the Central District of California granted it summary judgment on its infringement, counterfeiting, and dilution claims. K&N elected statutory damages under 15 U.S.C. § 1117(c). The Central District awarded it statutory damages in the amount of $20,000 and attorney’s fees in the amount of $100,000.

On appeal, Ms. Bulat and Mr. Wandel argued that K&N’s election to receive statutory damages precluded an award of fees. The Ninth Circuit’s three-judge panel unanimously agreed. It found:

“[A] plaintiff may eschew actual damages under § 1117(a) and elect to seek statutory damages under § 1117(c). Section 1117(c) provides: ‘In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a) of this section, an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of — (1) not less than $500 or more than $100,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $1,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.’

“Section 1117(c) makes no provision for attorney’s fees; nor does 15 U.S.C. § 1117(b) authorize such fees for a plaintiff seeking statutory damages under  § 1117(c). Section 1117(b)’s attorney’s fees provision applies only in cases with actual damages under § 1117(a).

“In this case, K&N elected to recover statutory damages under § 1117(c). Because of K&N’s election, the court did not assess or award K&N actual damages or profits under § 1117(a). Therefore, there is no statutory basis to award K&N attorney’s fees under § 1117(b).”

This seems like a strange result. Injured trademark owners opt for statutory damages because counterfeiters don’t keep records needed for the injured owners to prove damages or the counterfeiters’ profits. If a counterfeiter keeps good records, Section 1117(b) generally enables the injured trademark owner to obtain a judgment for “three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee….” But if a counterfeiter doesn’t keep good records, the injured owner only gets statutory damages? I suppose the statute says what it says, but from a policy standpoint, this conclusion makes no sense.

The case cite is K and N Engineering, Inc. v. Bulat, No. 06-55393, __ F.3d __, 2007 WL 4394416 (9th Cir.).

California’s new trademark statute, the Model State Trademark Law, replaces the state’s Trademark Law with new provisions adapted from the model bill endorsed by the International Trademark Association. As with the version it replaces, the trademark statute remains codified at Section 14200 of the California Business and Professions Code.

The new statute:

• Reduces to five from ten years the term for which a mark may be registered or successively renewed;
• Brings the concepts of abandonment and dilution in line with federal case law; and
• Includes in the application a declaration of accuracy that subjects the declarant to a civil penalty of up to $10,000 for willfully stating as true any material fact he or she knows to be false.

I was particularly interested to learn of another revision that authorizes the secretary of state to require applicants to disclose if the Patent and Trademark Office had refused to register the mark:

“The secretary may also require a statement as to whether an application to register the mark, or portions or a composite thereof, has been filed by the applicant or a predecessor in interest with the United States Patent and Trademark Office and, if so, the applicant shall provide full particulars with respect thereto, including the filing date and serial number of each application, the status thereof, and, if any application was finally refused registration or has otherwise not resulted in a registration, the reasons for the refusal or result.”

This strikes me as a big change. It certainly doesn’t reflect the law in my home state, where a refusal by the PTO would have no effect on a subsequent application to obtain a state registration. Indeed, a state registration is something of a fallback position here. Without examining attorneys in Olympia, registration of almost any mark in Washington is virtually assured. 

Even though California adopted INTA’s model, disclosing prior PTO activity is not part of the language INTA endorses. I wonder if California’s more aggressive approach will influence how other states approach registration.

Washington State University has caused a Texas high school to change its school logo, the Spokesman-Review stated yesterday. WSU believes Albilene, Tex.’s Cooper High School’s cougar head logo is too similar to its own cougar head logo. The high school has agreed to make the change.

Cooper Principal Gail Gregg said the school’s lawyers advised they didn’t have much of a chance to win the dispute.

“They advised us that if we fought it, there’s a slim chance we’d win, and if we got there it’d cost us more in legal fees than it would to replace all the logos.”

Confusingly similar? Cooper High School’s logo (left)
and WSU’s logos c.1964 (middle) and today

The cost to change the logo nonetheless will be big.

Mr. Gregg told the Abilene Reporter-News: “I’m going to shoot from the hip and say that it could be $40,000 to $50,000. [A]s you come on the campus, it’s just everywhere. It’s on just about every piece of our uniforms. It’s on our IDs. It’s on our trash cans. It’s on the gym floor. It’s on the gym wall. It’s on the scoreboard at Shotwell [Stadium].”

WSU reportedly adopted its logo in 1964, which it revised by adding the letters “WSU” in 1995. Cooper reportedly first used its logo in the 1960s, discontinued it for a time, and then brought it back in the early 1990s. WSU also reportedly discontinued its original logo for a time, though details are unclear.

Patent and Trademark Office records show WSU owns a registration for its current logo, which it obtained in 1984. WSU claims a first-use date of November 1959. I did not find any registration for its reportedly earlier design without the “WSU” lettering.

Mr. Gregg said he did not know who designed his school’s logo but thought the person must have had “strong ties to Washington State.”

WSU will give Cooper time to make the change. Both sides said they understand each other’s perspective and described their relationship as being cooperative.

In October, STL reported on a Seattle doctor who had been sued by the American Board of Anesthesiology, Inc., for allegedly passing himself off as a board-certified anesthesiologist by using the ABA’s certification mark on credentialing documents. Today, Ray P. Liao, M.D., consented to the entry of judgment in favor of the ABA. 

Dr. Liao also agreed to a permanent injunction enjoining him from “Directly or indirectly using or infringing upon the Plaintiff’s certification marks”; “Engaging in any acts or activities directly or indirectly calculated to trade upon the Plaintiff’s certification marks, or the reputation and goodwill of the Plaintiff”; and “Making any representation, including any use of brochures, letterhead, business cards, curriculum vitae or other written information indicating or implying that [he] is certified by the Plaintiff or is a Diplomate of the American Board of Anesthesiology unless and until the Defendant hereafter properly and lawfully becomes certified as a Diplomate by the Plaintiff by taking and passing all oral and written examinations and meeting all other criteria necessary for certification.”

Dr. Liao previously had stipulated to a preliminary injunction containing similar terms.

The case cite is American Board of Anesthesiology, Inc. v. Liao, No. 07-1458 (W.D. Wash.).

The Los Angeles Times today reported that Hollywood’s striking writers have acquired the amptp.com and amptp.net domain names and launched a Web site that protests the Alliance of Motion Picture and Television Producers, which represents the studios in the parties’ labor dispute. AMPTP’s official site is associated with amptp.org.

The story begins with the observation: “When the Hollywood studios say they don’t know enough about the Internet to pay writers what they seek for the streaming and downloading of their shows, they might not be kidding.”

The protest site, which looks like the producers’ official site, states the Alliance was “heartbroken” that negotiations with the writers had failed “despite our best efforts, including sending them a muffin basket, making them a mixed CD and standing outside their window with a boombox blasting Peter Gabriel songs.” It also features links to news stories supporting the writers.

The story quotes me as saying I didn’t see a problem with the writers using the Alliance’s trademark in a domain name as long as the Web site is a protest site and doesn’t cause consumer confusion: “It’s perfectly defensible for a disgruntled party to use someone else’s trademark if the purpose is to protest. It would be improper only if the writers were attempting to confuse the public or sell something.”

Having now had the chance to see the site, it’s clear the site is protected as free speech. And, since it doesn’t sell anything, it does not even implicate the Lanham Act because it is not “commercial.” Even if it were commercial, I don’t think confusion is likely given the site’s lampooning content. If the writers nonetheless wanted to minimize possible liability, they could provide a disclaimer and link to the Alliance’s official site, per Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003). As a non-commercial site, however, likelihood of confusion shouldn’t enter into the analysis.