Seattle Trademark Lawyer

HydraMedia Corp. appealed the Central District of California’s finding that Hydra Media Group Inc.’s trademark infringement was not willful.

On Aug. 12, the Ninth Circuit affirmed.

The way the Ninth Circuit tells the story, it’s pretty clear-cut.

“Defendant initially adopted the contested mark, HYDRAMEDIA, before it knew that Plaintiff even existed. When Defendant discovered Plaintiff’s use of a similar mark, it relied on in-house counsel’s opinion that there was little likelihood of confusion based on the companies’ distinct services. Defendant enjoyed a strong reputation and there was no evidence that it sought to mislead consumers or usurp any goodwill associated with Plaintiff’s mark. Under such circumstances, Defendant’s infringement was not willful.”

The Ninth Circuit also affirmed the district court’s refusal to award an accounting of defendant’s profits, which also makes sense given its finding that the infringement was not willful.

“Our decisions regarding an award of profits emphasize the importance of willfulness in the analysis. ‘Indeed, this court has cautioned that an accounting is proper only where the defendant is attempting to gain the value of an established name of another.’ Defendant was not trading off Plaintiff’s name. Defendant’s infringement was not willful. The district court did not abuse its discretion by denying Plaintiff’s motion for an award of profits.”

The case cite is HydraMedia Corp. v. Hydra Media Group Inc., 2010 WL 3190611, Nos. 09-55237, 09-56047, and 09-56050 (9th Cir. Aug. 12, 2010).

Trademark disputes aren’t usually appropriate for being decided on summary judgment.

That’s what the Ninth Circuit reiterated last week in Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc.

In that case, Victoria’s Secret sold or gave away hot pink tank tops with the word “Delicious” printed across the front. The purpose of its efforts was to promote its BEAUTY RUSH beauty products.

Fortune Dynamic sued, alleging that Victoria’s Secret’s use infringed its incontestable registration for DELICIOUS for footwear.

As the Ninth Circuit later summarized, “Victoria’s Secret executives offered two explanations for using the word ‘Delicious’ on the tank top. First, they suggested that it accurately described the taste of the BEAUTY RUSH lip glosses and the smell of the BEAUTY RUSH body care. Second, they thought that the word served as a ‘playful self-descriptor,’ as if the woman wearing the top is saying, ‘I’m delicious.’”

The Central District of California granted summary judgment in Victoria’s Secret’s favor.

Fortune Dynamic appealed to the Ninth Circuit.

The Ninth Circuit reversed and remanded, finding that it was not appropriate for the district court to decide that no likelihood of confusion existed and that the fair use doctrine applied as a matter of law.

“This case is yet another example of the wisdom of the well-established principle that ‘[b]ecause of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena,’” the court said. “We are far from certain that consumers were likely to be confused as to the source of Victoria’s Secret’s pink tank top, but we are confident that the question is close enough that it should be answered as a matter of fact by a jury, not as a matter of law by a court.

“The same is true of Victoria’s Secret’s reliance on the Lanham Act’s fair use defense. Although it is possible that Victoria’s Secret used the term ‘Delicious’ fairly — that is, in its ‘primary, descriptive sense’ — we think that a jury is better positioned to make that determination.”

The case cite is Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc., __ F.3d __, 2010 WL 3258703, No. 08-56291 (9th Cir. Aug. 19, 2010).

Photo credit: Borrowed from The Briefcase: Commentary and Analysis of Ohio Law

Plaintiff’s and defendant’s logos

Plaintiff Mirina Corp. is a Seattle-based biotech firm.

Defendant Marina Biotech is a Bothell, Wash.-based biotech firm.

According to plaintiff’s complaint, both companies promote RNA-based therapeutic research and drug development services.

The complaint alleges that on July 22, defendant’s predecessor changed its company’s name to Marina Biotech. It states that plaintiff warned defendant that the name change would create a conflict with Mirina’s name, which plaintiff claims it started to use in August 2008.

The complaint says the dominant part of both names sounds the same and defendant’s use is likely to cause confusion with plaintiff’s use.

The case cite is Mirina Corp. v. Marina Biotech, No. 10-01322 (W.D. Wash.).

Plaintiff Ashley Gasper is an adult video star who performs under the name Jules Jordan.

Mr. Gasper sued 1444942 Canada Inc., d/b/a Kaytel Video Distribution, and other defendants in the Central District of California for copyright infringement and for violating his right of publicity on the ground that defendants allegedly copied and sold 13 DVDs featuring his performances.

The jury found for Mr. Gasper on both issues, and the court rejected the defendants’ motion for judgment as a matter of law that the Copyright Act preempted Mr. Gasper’s right of publicity claim.

On appeal, the Ninth Circuit summarized Mr. Gasper’s right of publicity claim as the unauthorized reproduction of his performance on the DVDs.

“Gasper’s claim that the Kaytel defendants misappropriated his name and persona is based entirely on the misappropriation of the DVDs and Gasper’s performance therein. Indeed, the complaint alleged that ‘Defendants have willfully and systematically infringed Plaintiffs’ copyrights and rights of publicity (directly and by assignment) by the repeated unauthorized reproduction, counterfeiting, and sale of such counterfeit copies of Plaintiffs’ copyrighted works to third parties.’ In the amended Pre-Trial Conference Order Gasper again listed the evidence in support of his right of publicity claim as ‘Mr. Gasper’s name, likeness, photograph and voice appear in the counterfeit Gasper Films without his authorization.’ Thus, throughout the litigation Gasper has claimed that the factual basis of his right of publicity claim was the unauthorized reproduction of his performance on the DVDs.”

When Mr. Gasper’s right of publicity claim is framed as overlapping with his copyright claim, the result seems obvious.

“In the instant case, we conclude that Gasper’s right of publicity claim falls within the subject matter of copyright, and that the rights he asserts are equivalent to the rights within the scope of §106 of the Copyright Act. The essence of Gasper’s claim is that the Kaytel defendants reproduced and distributed the DVDs without authorization. His claim is under the Copyright Act. Accordingly, we reverse the district court and vacate Gasper’s judgment against the Kaytel defendants for violation of his right of publicity under California law.”

The case cite is Jules Jordan Video, Inc. v. 144942 Canada Inc., __ F.3d __, 2010 WL 3211818, Nos. 08-55075 and 08-55126 (9th Cir. Aug. 16, 2010).

National Products, Inc., sued Gamber-Johnson LLC in the Western District for false advertising. At issue in the suit, discussed here and here, was Gamber-Johnson’s promotional video that favorably compared the safety benefits of Gamber-Johnson’s emergency vehicle laptop mounting system with one developed by National Products (NPI).

The case was tried to a jury in April 2010. Trial lasted four days. The jury deliberated less than three hours. It returned a verdict finding that Gamber-Johnson had deliberately engaged in false advertising and awarded National Products $10 million in damages.

The next day, Western District Judge James Robart ordered the parties to submit supplemental briefing on Gamber-Johnson’s motion for judgment as a matter of law addressing the jury’s award of damages.

On August 13, the court reduced the jury’s award to $492,332.

Key to the court’s decision was its finding that National Products did not seek actual damages for lost sales. Given that finding, the court only considered damages based on an unjust enrichment theory or disgorgement of Gamber-Johnson’s profits and did not consider whether substantial evidence existed to support a finding of actual damages to the tune of $10 million.

The court particularly considered that: “(1) a remedy should not be granted as a matter of right; (2) the remedy must represent compensation for damages and not a punishment to the defendant; (3) NPI is not entitled to a windfall; (4) there must be some evidence of damage attributable to the false advertisement; (5) the court must look to the ‘totality’ of the circumstances; and (6) the court should consider the jury’s findings that Gamber-Johnson engaged in deliberate false advertisement.”

Applying these principles, the court accepted the testimony of Gamber-Johnson’s damages expert but applied the higher Gamber-Johnson profit margin that National Product’s damages expert calculated.

Gamber-Johnson’s expert “opined that NPI’s lost profit from sales during this time period of approximately $365,000 was the best indication of Gamber-Johnson’s gained profit from a diverted sales that would have gone to NPI. This calculation is also consistent with [NPI’s expert’s] trend analysis of NPI’s lost sales during the relevant time period. [Gamber-Johnson’s expert], alternatively, performed a trend analysis on Gamber-Johnson’s profits to determine if it made a profit during the relevant time period. [Gamber-Johnson’s expert] first assumed that there were no other factors that could have increased Gamber-Johnson’s profits other than diverted sales from NPI. He then calculated Gamber-Johnson’s revenue over the relevant period and identified an increase in sales of $1,183,492, in relation to Gamber-Johnson’s historical revenue trend. Using the lower profit margin he calculated of 29.8%, [Gamber-Johnson’s expert] determined that based on the historical trend analysis, Gamber-Johnson’s additional profits during this time were $352,796. NPI did not offer additional evidence to refute this calculation. However, the court notes that had [Gamber-Johnson’s expert] used the higher profit margin posited by [NPI’s expert] of 41.6%, Gamber-Johnson’s net profit during the relevant time-period, based on a trend analysis, would have been approximately $492,332.”

The case cite is National Products, Inc. v. Gamber-Johnson LLC, No. 08-0049 (W.D. Wash. Aug. 13, 2010) (Robart, J.).