Section 1117 Infringer’s Profits Not a Claim for “Actual Damages” Supporting a State Punitive Damages Request

The court granted defendant’s motion to strike plaintiff’s state law request for punitive damages because plaintiff’s request for defendant’s profits under § 1117 was not a claim for actual damages. “The Court finds that accounting of profits does not constitute actual damages. This conclusion is further supported by Plaintiff’s Complaint and its 30(b)(6) deposition, both of which make the distinction between accounting of profits and actual damages. First, Plaintiff’s Prayer for Relief seeks an order awarding ‘⁠[plaintiff] damages and ordering [defendant] to account and pay to [plaintiff] all profits realized by its wrongful acts and also awarding [plaintiff] its actual damages, and also directing that such profits or actual damages be trebled pursuant to 15 U.S.C. § 1117.’ Second, Plaintiff . . . testified that [it] is not claiming any actual or out-of-pocket damages, but instead is only seeking Defendant’s profits from the [defendant’s product]. Accordingly, the Court finds that Plaintiff’s claim for punitive damages should be struck.”

Luci Bags LLC v. Younique, LLC, 4-16-cv-00377 (TXED 2018-01-08, Order) (Amos L. Mazzant, III)

2018-01-10T12:51:04+00:00 January 10th, 2018|Docket Report, Trademark|