Seattle Trademark Lawyer

This year’s Annual District CLE looks promising. It will include a report from Western District federal judges on the state of the court in the Western District as well as an update about the Ninth Circuit from the newest member of that bench, Circuit Judge N. Randy Smith.

The CLE has three components: “The Financial Crisis,” “A Shrinking World,” and “Changing Privacy.” The second component sounds particularly interesting to trademark practitioners. It’s a panel session that will focus on cultural differences affecting civil litigation, criminal extradition from overseas jurisdictions, and effects of the global economic recession. Counterfeiting and enforcing trademark rights abroad would certainly fit under this umbrella. The panel will be moderated by Prof. Helen Stacy, Senior Fellow at the Center for Democracy, Development, and the Rule of Law at Stanford University’s Freeman Spogli Institute for International Studies.

The program is scheduled for 12:45 to 5 p.m. on May 1. It will be held at the U.S. Courthouse in Seattle. Cost is $100.

More information here; register here.

On April 7, Western District Judge John Coughenour entered a default judgment and permanent injunction against Fernando Lopez, d/b/a Computer Service, for selling counterfeit Microsoft software.

The court’s factual findings illustrate Microsoft’s buy-bust process for investigating a counterfeit case. “According to Microsoft’s Complaint, Defendant Fernando Lopez, a California citizen, distributes counterfeit computer software using the Internet, through such means as the website www.craigslist.org (“Craigslist”). After Microsoft investigators purchased a counterfeit copy of Microsoft Windows XP operating system software through Defendant, Microsoft sent Defendant a cease and desist letter notifying him that the purported Microsoft Windows software he distributed was counterfeit, that he could be subject to civil liability for violation of federal copyright and trademark laws — up to $150,000 for each willful copyright infringement and up to $1,000,000 for willful trademark infringement — and that if he had any questions, he could contact Microsoft. Despite receiving the cease and desist letter on October 2, 2008, Defendant allegedly continued to distribute the counterfeit software; Microsoft investigators again purchased counterfeit copies of Windows XP from Defendant, via telephone and through direct email.”

Microsoft then sued; Mr. Lopez failed to answer; Microsoft moved for an order of default, which the court granted; and then Microsoft brought the instant motion for entry of default judgment. The court granted Microsoft’s motion, imposed a permanent injunction against Mr. Lopez, and awarded $30,000 in statutory damages under the Copyright Act. Microsoft did not seek damages under the Lanham Act.

There’s a good lesson here. Don’t sell counterfeit goods. If you do, don’t get caught. If you get caught, immediately stop. If you get sued, hire an attorney and answer the complaint. Ignoring each bit of this advice will probably result in the court’s awarding a large judgment against you, which can (and should) haunt you for a long time.

The case cite is Microsoft Corp. v. Lopez, No. 08-1743, 2009 WL 959219 (W.D. Wash. April 7, 2009) (Coughenour, J.).

When it comes to protective orders, Seattle courts are stricter than most.  As previously noted, this includes the Western District. On April 7, Western District Judge Benjamin Settle illustrated this bent when he denied the parties’ stipulated protective order in the trademark infringement case of American Automobile Association v. AAA Insurance Inc. on the ground the proposed order went too far in limiting public access to court records. (Previous STL coverage of the case here.)

The court explained: “The parties request an expansive protective order for all ‘confidential information’ that may be disclosed during the discovery phase of this proceeding. The parties have agreed to mark as ‘confidential’ all material ‘that contain[s] or embod[ies] proprietary, commercial, financial, or otherwise confidential information….’ The parties dictate a procedure for the disclosure of designated material. Finally, the parties ‘agree to be bound by [the proposed order’s] terms as of the date first submitted to the Court for execution.’

“The Court need not enter the proposed order as an order of the Court because the proposed order contains provisions that are more appropriate for an agreement between the parties instead of an expansive protective order and the attorneys for both parties have executed the agreement. Moreover, the parties have already been ordered to redact dates of birth, social security numbers, and financial accounting information pursuant to the General Order of the court regarding Public Access to Electronic Case Files. If a party chooses to submit confidential documents with the Court, the party may file a motion to seal the material pursuant to Local Rule CR 5(g) and note the motion according to Local Rule CR 7(d)(2). ‘The law requires, and the motion and the proposed order shall include, a clear statement of the facts justifying a seal and overcoming the strong presumption in favor of public access.’ Local Rule CR 5(g)(2); see also Valley Broadcasting Co. v. U.S. Dist. Court for Dist. of Nevada, 798 F.2d 1289 (9th Cir. 1986). If the party that chooses to submit the material is not the party that designated the material ‘confidential,’ it may state so in the motion to seal and, in response, the designating party may articulate facts in support of sealing the submitted material.”

The case cite is American Automobile Association v. AAA Insurance Inc., No. 08-5515 (W.D. Wash. April 7, 2009) (Settle, J.).

Remember Starbucks’ TTAB tangle with the Rat City Rollergirls? (See STL posts here and here.) Looks like another roller-rink trademark dispute may get going.

Roller derbier Colleen Bell, a/k/a “Crackerjack,” applied to register her nickname as a trademark with the U.S. Patent and Trademark Office in connection with “Entertainment services, namely, participation in roller derby competitions; Entertainment services, namely, personal appearances by a roller derby competitor.”

On April 8, Frito-Lay North America, Inc., filed a notice of opposition with the Trademark Trial and Appeal Board opposing her application. Frito-Lay cited its prior registrations for CRACKER JACK and opposes on grounds of likelihood of confusion and dilution.

Frito-Lay also argues that the applied-for mark is merely descriptive, alleging: “The word CRACKERJACK is defined as ‘a person or thing that shows market ability or excellence.’”

The Starbucks-Rat City case never went anywhere. It’ll be interesting to see if this one goes a few laps around the track.

The case cite is Frito-Lay North America, Inc. v. Bell, No. 91189641 (TTAB).

In 2006, the District of Hawaii granted summary judgment in favor of World Triathlon Corporation on its trademark infringement claims against John Dunbar and a number of other individual defendants doing business as the “Hawaiian Ironman Triathlon Organizing Committee.” The court found the case was exceptional and awarded the plaintiff $161,147.05 in attorney’s fees.

Pro se defendants John Dunbar and Archie Hapai appealed.

On April 2, the Ninth Circuit dismissed Mr. Hapai’s appeal because he did not sign his notice of appeal. It affirmed the district court’s award of fees on the merits against Mr. Dunbar. 

The Ninth Circuit found: “The district court properly determined that this case is ‘exceptional’ under 15 U.S.C. § 1117(a), because the record shows that Dunbar’s infringement was ‘willful and deliberate, and therefore, sufficient to justify an award of attorneys’ fees.’ Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1042 (9th Cir. 2003); see Earthquake Sound Corp. [v. Bumper Indus.,] 352 F.3d [1210] at 1042 [(9th Cir. 2003)](affirming award of attorneys’ fees under section 1117(a) because the infringement ‘was not a particularly close case’ and defendant ‘did not establish that it took reasonable measures … to investigate possible infringement liability’ when it had reason to believe that it may have been infringing on a trademark). Moreover, the district court did not abuse its discretion in awarding attorneys’ fees once it determined that the case was ‘exceptional.’ See Horphag Research, 337 F.3d at 1042 (affirming award of attorneys’ fees where ‘[t]he district court’s findings regarding … trademark infringement [we]re supported fully by the record’ and there was no indication that the district court ‘committed a clear error of judgment in awarding’ the fees).

The case cite is World Triathlon Corp. v. Hapai, Nos. 08-16470, 08-16475, 2009 WL 890911 (9th Cir.) (April 2, 2009).