| Trademark Report |
August 11, 2017 |
| Post-Trial Reduction of Damages Does Not Justify Reduction of Attorney Fees Award |
| Following jury trial finding defendants willfully infringed plaintiffs' trademark, the court awarded plaintiffs $365,862.75 in attorney fees, costs, and disbursements and rejected defendants' claim that plaintiffs were not entitled to
fees incurred after trial. "Defendants . . . argue that plaintiffs should not be considered the 'prevailing party' in the post-trial phase of the litigation, in which the Court reduced the monetary component of the Judgment from
a trebled award of defendants' profits to a single award. Yet, even assuming that the Court may isolate the post-trial phase of the proceedings for the purposes of determining the prevailing party, the authority on which defendants
rely fails to demonstrate that the plaintiffs should not be considered the prevailing party at that stage. . . . It is obvious that plaintiffs' defense of the Judgment during post-trial proceedings was necessary to achieve an ultimately
successful outcome on their claim. Defendants have therefore provided no basis for the Court to deny plaintiffs the fees they incurred during post-trial proceedings." |
| 4 Pillar Dynasty LLC et al v. New York & Company, Inc. et al, 1-16-cv-02823 (NYSD 2017-08-09, Order) (Jed S. Rakoff) |
| Read Order ➞
Docket Sheet ➞
|
|
| |
| |
| United States District Courts - New Cases (16) |
|
|
| 8-17-cv-01373 (CACD) |
August 9, 2017 |
|
| Claim |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
| Trademarks |
 |
KMG Trade Dress |
|
SEE ME PERSONALLY FOR A GOOD DEAL! |
|
| |
|
|
|
|
| 2-17-cv-01660 (CAED) |
August 9, 2017 |
|
| Judge |
|
| |
| Claim |
| Counterfeiting |
| Dilution |
| False Designation of Origin |
| Infringement |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
| Trademarks |
 |
The mark consists of a configuration of a grille in the shape of an inverted trapezoid for the front end of an automobile. |
| Reg: 4499913 | Serial: 79118657 |
|
AUDI |
| Reg: 708352 | Serial: 72085460 |
|
|
| Reg: 906525 | Serial: 72336890 |
|
RS4 |
| Reg: 2889135 | Serial: 78270505 |
|
B |
| Reg: 344524 | Serial: 71379179 |
|
| |
|
|
|
| 3-17-cv-01350 (CTD) |
August 10, 2017 |
|
| Judge |
|
| |
| Claim |
| False Designation of Origin |
| Infringement |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
| Trademarks |
|
TRUMOO |
| Reg: 3875009 | Serial: 77980453 |
|
| |
|
|
|
|
| 2-17-cv-12625 (MIED) |
August 10, 2017 |
|
| Judge |
|
| |
| Claim |
| Dilution |
| False Designation of Origin |
| Infringement |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
| Trademarks |
|
LOAD ONE |
| Reg: 4233580 | Serial: 85571635 |
|
LOAD 1 |
| Reg: 4233581 | Serial: 85571752 |
|
LOAD ONE 1 TRANSPORTATION & LOGISTICS |
| Reg: 4241698 | Serial: 85581118 |
|
| |
|
|
|
| 1-17-cv-06049 (NYSD) |
August 10, 2017 |
|
| Claim |
| False Designation of Origin |
| Infringement |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
| Trademarks |
|
CHARLOTTE |
| Reg: 2535454 | Serial: 75857222 |
|
CHARLOTTE |
| Reg: 3922088 | Serial: 78921503 |
|
| |
|
|
|
| 5-17-cv-00759 (TXWD) |
August 10, 2017 |
|
| Claim |
| False Designation of Origin |
| Infringement |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
| Trademarks |
|
WE KNOW WHAT IT MEANS TO SERVE |
| Reg: 2424963 | Serial: 75849876 |
|
USAA WE KNOW WHAT IT MEANS TO SERVE. INSURANCE, INVESTMENTS, BANKING, MEMBER SERVICES |
| Reg: 2424968 | Serial: 75852724 |
|
| |
|
|
|
| 2-17-cv-01214 (WAWD) |
August 10, 2017 |
|
| Claim |
|
| |
| Defendant |
|
| |
| Plaintiff |
|
| |
|
| |
| United States District Courts - Significant Decisions (9) |
|
|
| 4-17-cv-01068 (TXSD) |
August 9, 2017 |
|
| Motion For Protective Order -- Relief from Discovery |
Granted |
| |
Third Party Discovery - Domestic |
 |
|
The court granted defendant's motion for protective order to quash a third party subpoena served by plaintiffs seeking documents regarding the timing of a business relationship between defendant and the third party. "After
considering the motion, request for production, response, reply, the parties’ arguments at the discovery hearing . . . and applicable law, the court finds that the plaintiffs’ relevant discovery requests to [the third party]
can be met by [defendant] and a non-party subpoena is unnecessary. Therefore, [defendant's] motion for a protective order is granted." (page 1) |
| |
|
| |
|
|
|
| 4-16-cv-01534 (MOED) |
August 9, 2017 |
|
| Motion for Permanent Injunction |
Granted |
| |
Injunction on Sale of Counterfeit Goods |
|
| |
Default |
|
|
The court granted plaintiff's motion for a permanent injunction against defaulting defendants to prohibit further sales of games infringing plaintiff's copyrights and trademarks. "When a 'history of continued infringement'
is present and there is 'a significant threat of future infringement,' a permanent injunction is appropriate. An award of a permanent injunction for copyright infringement must also conform to traditional equity principles. .
. . The hardship to Plaintiff resulting from the infringement and the possibility of continued infringement, outweighs any burden Defendants face from being enjoined from continuing their infringement, as 'there is no harm to
Defendant inasmuch as an injunction will merely require Defendant to comply with the Copyright Act and Lanham Act.'" (page 12) |
| |
|
| Motion re Damages |
Denied In Part, Granted in Part |
| |
Treble Damages |
|
| |
Statutory Damages (§ 1117(c)) |
|
| |
Cases Finding Willful Infringement |
|
|
The court awarded plaintiff damages from defaulting defendants for trademark infringement but found the requested amount unreasonable. "Plaintiff seeks statutory damages between $3,000 and $6,000,000 for the three willful
trademark infringements. . . . The Court is not convinced that a balance of the factors here points to a maximum award of $6,000,000, as Plaintiff seeks. . . . Upon review of the record and the relevant factors, he Court will
award Plaintiff $20,000 per trademark infringement, for a total award of $60,000. The Court believes this figure compensates Plaintiff in a fashion consistent with the purposes of the Lanham Act and case law by trebling the highest
estimate of Defendants’ sales. The Court further believes that this award of $60,000 in statutory damages under the Lanham Act, in conjunction with the $60,000 award for statutory damages under the Copyright Act, represents a
suitable approximation of actual damages and sufficiently deters future wrong-doing, while avoiding a 'windfall' to the Plaintiff." (page 11) |
| |
|
| |
|
|
|
| 1-16-cv-02823 (NYSD) |
August 9, 2017 |
|
| Order Determining Attorney Fee Amount |
|
| |
Attorney Fees Granted |
|
| |
Calculating Attorney Fees |
|
| |
Prevailing Party |
|
|
Following jury trial finding defendants willfully infringed plaintiffs' trademark, the court awarded plaintiffs $365,862.75 in attorney fees, costs, and disbursements and rejected defendants' claim that plaintiffs were not entitled
to fees incurred after trial. "Defendants . . . argue that plaintiffs should not be considered the 'prevailing party' in the post-trial phase of the litigation, in which the Court reduced the monetary component of the Judgment
from a trebled award of defendants' profits to a single award. Yet, even assuming that the Court may isolate the post-trial phase of the proceedings for the purposes of determining the prevailing party, the authority on which
defendants rely fails to demonstrate that the plaintiffs should not be considered the prevailing party at that stage. . . . It is obvious that plaintiffs' defense of the Judgment during post-trial proceedings was necessary to
achieve an ultimately successful outcome on their claim. Defendants have therefore provided no basis for the Court to deny plaintiffs the fees they incurred during post-trial proceedings." (page 3) |
| |
| |
Calculating Attorney Fees |
|
|
Following a jury trial finding defendants willfully infringed plaintiffs' trademark, the court awarded plaintiffs $365,862.75 in attorney fees, costs, and disbursements but deducted the time spent on a contempt motion. "Defendants
contend, and plaintiffs concede, that work on the contempt motion should not be included in the calculation of fees. Defendants therefore argue that the three entries . . . should be excluded in their entirety. [One entry] pertains
only to work relating to the contempt motion, and the Court will exclude fees from that entry from the calculation. . . . Plaintiffs propose that, rather than excluding [the other] two entries entirely, the Court should merely
deduct from them the time plaintiffs' counsel spent working on the contempt motion. . . . The Court finds plaintiffs' approach reasonable. Defendants have not objected to any of the other time entries submitted by plaintiffs,
nor to the reasonableness of the total number of hours spent on the post-trial motions. There is therefore no basis to conclude that the outcome of plaintiffs' proposed reductions . . . renders plaintiffs' fee calculation unreasonable.
Moreover, to the extent that one might question whether plaintiffs have accurately allocated the total time of the entries between the post-trial motion and the contempt motion, the description of the entries suggests that plaintiffs
have done so. . . . At the hourly rates used by plaintiffs' counsel (to which defendants do not object), the above-mentioned reductions in the entries . . . result in a reduction of $1704.50 from the $367,567.25 that plaintiffs
request. The Court therefore awards plaintiffs $365,862.75 in attorneys' fees, costs, and disbursements." (page 6) |
| |
|
| Motion for Pre-Judgment Interest |
Denied In Part, Granted in Part |
| |
Pre-Judgment Interest |
|
|
Following a jury trial finding defendants willfully infringed plaintiffs' trademark, the court granted plaintiffs' motion for pre-judgment interest and rejected defendants' assertion that pre-judgment interest should be calculated
starting after the filing of the complaint. "Plaintiffs propose pre-judgment interest of $131,116.54. This figure reflects interest accruing on the entire amount of defendants' stipulated gross profits beginning on . . .
the date defendants began selling infringing products, at the prime rates applicable between that date and the date the Amended Judgment was entered. . . . Defendants . . . contend . . . the Court only found that defendants'
infringement was willful because defendants continued to sell goods that infringed plaintiffs' trademark after plaintiffs had sued. . . . [D]efendants conclude that defendants' infringement was not willful before the filing of
the complaint, and, therefore, that plaintiffs are only entitled to interest on profits that were earned after the complaint was filed. This argument fails because defendants' . . . premise is false. While defendants' continued
infringement after the filing of the complaint factored into the Court's finding of willfulness, that was not the only basis for the finding. . . . [T]he Court noted that the infringement was blatant on its face, and the Court
drew an adverse inference from defendants' failure to put on certain witnesses who, defendants represented at the outset of the trial, could have testified to defendants' awareness of plaintiffs' trademark at the time defendants
adopted their infringing mark." (page 8) |
| |
| |
Pre-Judgment Interest |
|
|
Following a jury trial finding defendants willfully infringed plaintiffs' trademark, the court granted plaintiffs' motion for pre-judgment interest but agreed with defendants that pre-judgment interest should be calculated starting
after the date of sale for the infringing goods. "Defendants also argue that pre-judgment interest should only begin to accrue at the time profits were earned, rather than, as plaintiffs propose, calculating interest on
the entire sum of profits from the first date an infringing good was sold. The Court agrees with defendants. . . . Plaintiffs do not provide authority demonstrating that interest on an award of profits should be calculated on
the entire award beginning on the date when the first profits were earned. . . . The [Fendi Adele S.R.L. v. Burlington Coat Factory Warehouse Corp., 689 F. Supp. 2d 585, 622-24 (S.D.N.Y. 2010)] court explains that where,
as in that case, 'the disgorgement principal encompasse[d] profits made over more than fourteen years, it would be unfair to defendants to award interest on the entire disgorgement amount from the date of the earliest known sale.'
While the profits in this case were earned over a shorter time span, the same principle nonetheless applies. Thus, the Court concludes that pre-judgment interest accrues on defendants' profits at the time those profits were earned.
. . . The Court therefore awards pre-judgment interest on defendants' gross profits from the infringing goods, beginning to accrue on the first day of each week in which defendants earned those profits, as reflected in defendants'
declarations. The resulting sum of pre-judgment interest, as calculated by defendants and confirmed by the Court, is $110,950.91." (page 9) |
| |
|
| |
|
|
|
| 4-16-cv-03573 (TXSD) |
August 9, 2017 |
|
| Motion for Summary Judgment -- Other |
Denied |
| |
Corporate Veil |
|
| |
Default |
|
|
The court denied plaintiff's motion for summary judgment that individual defendant was liable for the default judgment awarded plaintiff against corporate defendant because plaintiff failed to pierce the corporate veil. "To
impose liability on [individual] based on the judgment against [corporate defendant], [plaintiff] must prove that (1) the corporate charter was forfeited for noncompliance with the Texas Tax Code; (2) a judgment exists against
[corporate defendant]; and (3) [individual defendant] was an officer or director of [corporate defendant] at the time the corporate debt was incurred. In this case, it is undisputed that [corporate defendant's] corporate charter
was forfeited [almost 13 years ago] for failure to comply with the Texas Tax Code. It is also undisputed that a default judgment exists against [corporate defendant]. There is no evidence, however, that [individual defendant]
was an officer or director of [corporate defendant five months ago] when default judgment was entered and the debt was created. . . . Plaintiff has not demonstrated that no genuine issue of material fact exists regarding whether
[individual defendant] was an officer or director of [corporate defendant at the time of default judgment]." (page 2) |
| |
|
| |
|
|
|
| 4-17-cv-01068 (TXSD) |
August 9, 2017 |
|
|
