Unscrupulous Litigation Tactics and Business Practices Justify $19.2 Million Willful Counterfeiting Award

After finding defendant liable for counterfeiting, the court determined the counterfeiting was willful. “First, [defendant] lied in opposition to [plaintiff’s] motion for preliminary injunction. It said it had implemented procedures to stop infringement from occurring, but [plaintiff] showed that this was untrue. Second, [defendant] violated the Court’s preliminary injunction several times, despite numerous letters from counsel for [plaintiff] regarding continued offerings of infringing goods. . . . [Defendant] claims it is trying its best to develop a more robust anti-infringement protocols. But [defendant] did not come to court on bended knee, like eBay did in Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010), hoping to join in the effort to curb trademark infringement. [Defendant] came in fighting, apparently hoping to defend its business model on legal theories of dubious value. In other words, although eBay sought to defend its reputation as a safe place to do business [defendant] battled for its right to exploit infringement for profit. . . . Rather than roll up its sleeves from the start to develop and implement anti-infringement practices that actually worked, [defendant] tried to avoid liability entirely by pointing the finger at everyone else involved. But trademark law is practical, and its doctrines fit the realities of the marketplace. In law, as in business, cleverness and technicality are poor substitutes for hard work and honesty. [Defendant] willfully counterfeited [plaintiff’s] marks.”

H-D USA, LLC et al v. SunFrog, LLC d/b/a SunFrog Shirts et al, 2-17-cv-00711 (WIED 2018-04-12, Order) (J.P. Stadtmueller)

2018-04-16T13:53:03+00:00April 16th, 2018|Docket Report, Trademark|