Disgorgement of profits
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Gentlemen, Start Your Engines: Even Bland Works Support Copyright

The US Court of Appeals for the Sixth Circuit affirmed an award of profit disgorgement and attorneys’ fees in a copyright infringement case, holding that even “workaday” or “humdrum” subject matter can support a valid copyright. Premier Dealer Servs. Inc. v. Allegiance Adm’rs LLC, Case No. 23-3394 (6th Cir. Feb. 26, 2024) (Sutton, C.J.; Clay, Bloomekatz, JJ.)

Premier and Allegiance both administered car dealers’ loyalty programs. Customers enrolled in these programs were required to meet certain conditions (such as changing the car’s oil at predetermined intervals), and if a part under warranty broke, the dealer would help the car owner initiate a claim through the loyalty program administrator. In conjunction with administering these programs, Premier created a loyalty certificate. The certificate collected the customer’s personal information and provided the program’s terms and conditions. Premier registered its certificate for copyright protection in 2008.

In 2018, Tricolor – one of Premier’s large, long-standing customers – switched its program to Allegiance. When Allegiance took over, it repurposed Premier’s loyalty certificate by simply updating the administrator’s contact information. Allegiance and Tricolor continued to use the otherwise unaltered certificate. Premier sued for copyright infringement.

The district court found that the certificate’s “dull” subject matter did not preclude copyright protection, enjoined Allegiance from further copyright infringement, and awarded Premier disgorgement of Allegiance’s profits as well as attorneys’ fees, totaling more than $1 million. Allegiance appealed, challenging the certificate’s copyrightability and the damages calculations.

As to the copyrightability of the certificate, the Sixth Circuit explained that while copyright requires originality, it is a low threshold that can be shown by making “non-obvious choices” or evidencing some creative spark. “[A]rtistic merit” is not necessarily required. The Court noted three categories that copyrights will not cover:

  • Facts that already exist in the world (although the expression of facts may be copyrightable)
  • Merger, “when there is only a single way to express a given set of facts” and
  • Scenes a faire, in which industry norms require expressing facts in a particular way.

Premier’s copyright was registered and therefore presumed valid, meaning the burden was on Allegiance to rebut that presumption. The Sixth Circuit rejected Allegiance’s challenge to the originality of Premier’s copyright, primarily because copyrights “protect all manner of works – mundane or lofty . . . so long as they satisfy the modest imperatives of originality.” Allegiance argued that Premier’s forms collected client information in a way that was unoriginal, because there was only one way to collect the information (merger) and because the layout was typical for the industry (scenes a faire). The Court looked to areas in which Premier indicated creativity, noting that its forms differed from other loyalty program certificates in evidence. Further, Premier made the creative choice to allow program members to select from various schedules for oil changes, instead of a single predetermined timetable. This and other evidence suggested choice, ideas and creativity, despite the functionality of the loyalty certificates.

The Sixth Circuit hinted at how Allegiance might have better established the [...]

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Bling It On: Laches Prevents Profit Disgorgement in Diamond-Studded Trademark Battle

In a dispute involving allegedly counterfeit luxury watches, the US Court of Appeals for the Fifth Circuit affirmed a district court’s finding of trademark infringement and its finding that a laches defense prevented disgorgement of profits. Rolex Watch USA, Incorporated v. BeckerTime, L.L.C., Case No. 22-10866 (5th Cir. Jan. 26, 2024) (Douglas, King, Willett, JJ.)

Rolex is a luxury watch seller with legally protectable interests in numerous trademarks. BeckerTime modifies Rolex-branded watches by adding diamonds, aftermarket bezels, and bands not authorized by Rolex and then sells them as “Genuine Rolex” watches. Rolex filed a lawsuit against BeckerTime, alleging trademark infringement and seeking an injunction and disgorgement of profits. After a bench trial, the district court concluded that BeckerTime infringed Rolex’s trademark but refused to order disgorgement of profits based on BeckerTime’s laches defense. This appeal followed.

On the issue of infringement, BeckerTime argued that the district court erroneously applied the traditional likelihood of confusion analysis without considering the Supreme Court’s decision in Champion Spark Plug v. Sanders (1947). In Champion, the Supreme Court held that a defendant in a trademark infringement case was not obligated to remove trademarks from repaired or reconditioned products. This ruling was grounded in the distinction that these products were distinctly marketed as “repaired or reconditioned” as opposed to brand new items. The Supreme Court clarified that a misnomer exception would only be applicable if the extent or nature of the repair or reconditioning was so profound that using the original name would be misleading, even if terms such as “used” or “repaired” were added to describe the item.

In drawing a comparison to Champion, the Fifth Circuit differentiated BeckerTime’s actions from mere repairs or reconditioning. Unlike the defendant in Champion, BeckerTime went beyond restoration, actively modifying Rolex watches by incorporating diamonds, aftermarket bezels and bracelets or straps. Consequently, the watches BeckerTime sold were materially distinct from those offered by Rolex. The Court reasoned that BeckerTime’s alterations amounted to customization rather than mere restoration, as was the case in Champion. Applying the misnomer exception from Champion, the Fifth Circuit affirmed the district court’s decision, asserting that BeckerTime’s customized watches created a likelihood of confusion among consumers and thereby infringed upon Rolex’s trademark.

On the issue of disgorgement of profits, the Fifth Circuit affirmed the district court’s application of laches to deny an award of disgorgement. Rolex argued that BeckerTime’s deliberate counterfeiting precluded laches, while BeckerTime responded that Rolex had failed to show the required unclean hands or undue prejudice to justify disgorgement. The Fifth Circuit agreed with the district court that Rolex had failed to establish unclean hands by BeckerTime, as the evidence did not show intentional infringement. The Court also agreed that the delay in filing the lawsuit caused undue prejudice to BeckerTime by enabling it to build a successful business.

While Rolex sought a complete ban on BeckerTime’s use of non-genuine bezels and dials on its modified Rolex watches, the Fifth Circuit only partially agreed. Recognizing the potential for consumer confusion, the Court ordered [...]

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Trademark Claim for Profit Damages Means No Jury Trial

The US Court of Appeals for the Ninth Circuit affirmed a denial of a jury trial demand in a trademark infringement lawsuit where only a claim of disgorgement of profits was at issue. JL Beverage Company, LLC v. Jim Beam Brands Co., Beam Inc., Case No. 18-16597 (9th Cir. May 27, 2020) (Wallace, J.) (Friedland, J., concurring).

JL sued Jim Beam for trademark infringement. JL manufactured and sold vodka in bottles featuring stylized depictions of lips. Jim Beam also sells vodka in bottles featuring stylized depictions of lips. JL alleged that consumers would confuse its “Johnny Love Vodka” lip mark with Jim Beam’s Pucker line of flavored vodka products.

After JL failed to provide a computation of actual damages during discovery, Jim Beam sought to limit the damages JL could seek at trial. The district court found that JL’s failure prevented Jim Beam from preparing a responsive case and granted Jim Beam’s motion to exclude JL’s claims for actual damages. Jim Beam further argued that JL may not recover a royalty because 1) it is not appropriate in situations, like this one, where the parties did not have a previous royalty agreement and 2) as with actual damages, JL never identified a means of calculating a reasonable royalty or produced evidence upon which a fact finder could determine such a royalty. Again, the court agreed, and limited JL’s damage claims to equitable disgorgement of Jim Beam’s profits, as provided under the Lanham Act.

Without claims for actual damages or royalties, Jim Beam moved to strike JL’s demand for a jury trial. Since the Lanham Act does not afford the right to a jury trial, the district court considered whether the Seventh Amendment affords such a right in a trademark dispute. The Seventh Amendment provides that “[i]n Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.” The district court found controlling law in Ninth Circuit precedent Fifty-Six Hope Road Music, which held that that the Seventh Amendment does not afford the right to a jury calculation of profits for two reasons: disgorgement is an equitable remedy, and the specific issue of profit determination cannot be said to be traditionally tried by a jury. The district court denied JL’s demand for a jury trial, held a two-day bench trial and ultimately determined that Jim Beam did not infringe JL’s marks. JL appealed the district court’s order granting Jim Beam’s motion to strike its jury trial demand and the district court’s judgment.

The Ninth Circuit affirmed the district court’s order and judgment, finding no error in the court’s likelihood of confusion analysis on any of the factors, nor in its denial of the jury trial.

In a concurring opinion, Judge Friedland wrote separately to address the tension between the Court’s holdings in Fifty-Six Hope Road Music (a trademark case) and Sid & Marty Krofft (a copyright case). In Krofft, the Ninth Circuit found a right to a jury trial in a copyright case where there was only a claim [...]

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No Disgorgement When Injunction is Sufficient Remedy

Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC and Aleksey Silenko v. Discount Party Bus, Inc., Party Bus MN LLC, and Adam Fernandez, Case No. 18-2990 (8th Cir. Apr. 6, 2020) (Smith, J.).

In 2000, Alex Fernandez started Party Bus MN, which was the first party-bus company in the Twin Cities region. In 2004, Fernandez formed Discount Party Bus Co., LLC (DPB).  Fernandez also used the names “Rent My Party Bus” and “952 Limo Bus” in print advertising before 2008.

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