Ninth Circuit Archives

Ninth Circuit

Penny for your characters? Victorian tropes not so striking or protectable

by Anisa Noorassa | Sep 18, 2025 | Copyrights

The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of a copyright infringement claim finding that the plaintiff had not plausibly alleged copying of protected characters. Anna Biani v. Showtime Networks, Inc. et al., Case No. 24-3949 (9th Cir. Sept. 8, 2025) (Nguyen, Mendoza, Kernodle, JJ.)

Biani sued Showtime alleging that the series “Penny Dreadful” infringed on three original characters she created for an online role-playing forum. Biani claimed that Showtime incorporated various aspects of her characters into two of the show’s characters and alleged that the defendants had access to her work because of the similarities between the characters. The district court dismissed the complaint, finding that Biani failed to plausibly allege that Showtime had a reasonable opportunity to copy her work. The district court applied the extrinsic test for protectable material under copyright, filtering out characteristics considered to be stock aspects of the Victorian-era England genre, and found that any remaining similarities were not striking enough to preclude the possibility of independent creation. Biani was granted leave to amend but chose not to, leading to the dismissal of the case with prejudice. Biani appealed.

The Ninth Circuit affirmed the dismissal of Biani’s complaint for failure to state a claim. The Court explained that to state a claim for copyright infringement, a plaintiff must plausibly allege both ownership of a valid copyright and that the defendant copied protected aspects of the work, which includes factual copying and unlawful appropriation. Biani did not challenge the district court’s determination that she failed to plausibly allege evidence of access. Instead she argued that the similarities between the works were so striking as to preclude independent creation. While the panel concluded that the district court improperly filtered out unprotectable elements of the works, it found this error was harmless because Biani’s allegations were insufficient to plausibly infer copying. The Court found that any resemblance between the characters was not extensive enough to preclude the possibility of coincidence, independent creation, or prior common source.

The Ninth Circuit also held that Biani’s claim failed under the “unlawful appropriation” analysis, agreeing with the district court that Biani failed to allege substantial similarity in protectable expression. The Court applied the extrinsic test to assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression. The Court found that many of the characteristics that Biani alleged were unique to her characters (such as their age, strength, beauty, and engagement in witchcraft) were actually unprotectable elements, common in the public domain, and a standard aspect of Victorian-era-based fiction. The Court thus concluded that Biani failed to allege substantial similarity in protectable expression and thus affirmed the district court’s dismissal.

Solidarity: Union’s commercial use may be Lanham Act violation

by Cecilia Choy, PhD | Sep 18, 2025 | Trademarks

The US Court of Appeals for the Ninth Circuit reversed and remanded a district court’s dismissal of a Lanham Act action, finding that this case was not the rare instance where there was no plausible likelihood that a reasonably prudent consumer would be confused about the origin of the goods that allegedly bore the distinctive marks at issue. Trader Joe’s Co. v. Trader Joe’s United, Case Nos. 24-720; -2826 (9th Cir. Sept. 8, 2025) (Sanchez, Thomas, Donato, JJ.)

Trader Joe’s, a US grocery store chain, owns the red typeface logo and sells reusable tote bags and other branded goods bearing its marks. Trader Joe’s United (TJU), a labor union representing certain Trader Joe’s employees, markets (for profit) various products via its website, including reusable tote bags. Its website header features a logo that uses the distinctive red typeface and the concentric circle design in Trader Joe’s logo. The image below shows totes from Trader Joe’s (left) and TJU (right).

TJU allegedly began using Trader Joe’s marks in commerce, and Trader Joe’s sent TJU a cease-and-desist letter. Trader Joe’s noted that its demand was directed solely at TJU’s commercial use of the marks on merchandise sold to consumers on the TJU website, not the reference to Trader Joe’s to identify the union or discuss the union’s cause.

Trader Joe’s sued TJU, asserting several claims, including trademark infringement, and sought to permanently enjoin TJU from using Trader Joe’s trademarks in connection with the sale of commercial merchandise on the TJU website. Trader Joe’s also sought the destruction of all infringing merchandise and recovery of damages. TJU moved to dismiss, arguing that Trader Joe’s filed its trademark infringement complaint in retaliation over an ongoing labor dispute and asserting that there was no plausible likelihood that a consumer would believe that products sold on TJU’s website were sponsored, endorsed, or approved by Trader Joe’s.

Applying the Sleekcraft likelihood-of-confusion factors, the district court agreed with TJU and noted several differences between the marks. The district court also explained that Trader Joe’s does not sell many of the products sold on TJU’s website, including buttons, t-shirts, and mugs. The district court concluded that confusion about the origin of these products was unlikely for a reasonable consumer because TJU’s website clearly identified itself as a website of a labor union and was openly critical of Trader Joe’s labor practices. Trader Joe’s appealed.

The Ninth Circuit concluded that when the allegations were viewed in the light most favorable to Trader Joe’s, the district court erred when applying the fact-specific likelihood-of-confusion test. To prevail on a trademark infringement claim, Trader Joe’s would need to establish that it had a protectible ownership interest in the mark and that TJU’s use of the mark was likely to cause consumer confusion. To determine whether a reasonably prudent consumer [...]

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Striking a chord: Ninth Circuit revives copyright suit over liturgical music

by Hannah Hurley | Sep 11, 2025 | Copyrights

In a copyright case involving liturgical music, the US Court of Appeals for the Ninth Circuit affirmed in part, reversed in part, and remanded a district court summary judgment after finding triable issues of fact regarding access and similarity between two musical compositions. The Court upheld the exclusion of the plaintiff’s late-disclosed evidence on access. Ambrosetti v. Or. Cath. Press, et al., Case No. 24-2270 (9th Cir. Aug. 27, 2025) (Thomas, Smith, Rayes, JJ.)

Vincent Ambrosetti, a prolific composer of sacred music, alleged that Bernadette Farrell copied his 1980 composition “Emmanuel” when writing her 1993 hymn “Christ Be Our Light.” Both works are widely used in Catholic liturgy, and Farrell’s song has become a staple in worship settings around the globe. Ambrosetti claimed that Farrell had access to “Emmanuel” through her association with Oregon Catholic Press (OCP), which published her work and had received copies of Ambrosetti’s music in the 1980s. He also pointed to striking musical similarities between the two compositions.

The district court excluded key evidence (letters from OCP’s then-publisher Owen Alstott acknowledging receipt of Ambrosetti’s music) as a sanction for late disclosure and barred Ambrosetti from arguing that Farrell accessed “Emmanuel” through those letters. Without that theory of access, and finding no striking similarity, the district court granted summary judgment for OCP. Ambrosetti appealed.

The Ninth Circuit affirmed the exclusion of the letters, finding that the sanctions were not “claim dispositive” since Ambrosetti could still pursue other theories of access and striking similarity. However, the panel reversed the summary judgment ruling, concluding that triable issues of fact existed as to whether Farrell had access to “Emmanuel” based on her and Alstott’s attendance at music conventions where Ambrosetti performed.

The Ninth Circuit also found that there was a genuine issue of material fact as to whether “Emmanuel” and “Christ” were substantially similar. According to Ambrosetti’s expert, 23 similarities in pitch, rhythm, and melodic development supported a finding of substantial similarity, with the district court noting that while individual elements may not be protectable, the unique combination could be. In vacating the summary judgement, the Ninth Circuit noted that summary judgment is “not highly favored” in copyright cases involving musical works where the evidence relied on is primarily competing expert testimony.

The Ninth Circuit upheld the exclusion of Alstott’s letters as a discovery sanction but found a genuine issue of material fact on the issue of access remained, thus precluding summary judgement.

No specifics, no case? DTSA trade secret disclosure timing differs from CUTSA

by Jodi Benassi | Aug 21, 2025 | Trade Secrets

The US Court of Appeals for the Ninth Circuit found that a district court abused its discretion by striking several of the plaintiff’s trade secrets, concluding that the court improperly relied on Rule 12(f) and failed to support dismissal as a discovery sanction under Rule 37. The Court emphasized that the fact-specific question of “reasonable particularity” in Defend Trade Secrets Act (DTSA) cases is generally reserved for summary judgment or trial, not for resolution at the discovery stage. Quintara Biosciences, Inc. v. Ruifeng Biztech, Inc., et al., Case No. 23-16093 (9th Cir. Aug. 12, 2025) (VanDyke, Johnstone, JJ., Christensen, Dist. J.)

Quintara and Ruifeng are DNA sequencing analysis companies that engaged in a business arrangement. The relationship soured when Quintara alleged that Ruifeng locked Quintara out of its office, took possession of its equipment, and hired Quintara employees. Quintara sued Ruifeng under the DTSA for misappropriating nine trade secrets.

During discovery, Ruifeng moved for a protective order to pause proceedings until Quintara identified its trade secrets with reasonable particularity, as required by the California Uniform Trade Secrets Act (CUTSA), Cal. Civ. Pro. Code § 2019.210, the California version of the DTSA. The district court agreed with Ruifeng and ordered Quintara to disclose each allegedly misappropriated trade secret with reasonable particularity. Quintara filed an amended trade secret disclosure, but Ruifeng found it deficient and again moved to halt discovery. To resolve the impasse, the district court gave Ruifeng a choice: either accept the disclosure and proceed with discovery, or move to strike the disclosure, withhold discovery, and risk consequences if the motion failed. Ruifeng chose the latter and moved to strike Quintara’s trade secrets in the disclosure under Fed. R. Civ. Pro. 12(f).

Citing its broad discretion over discovery and Fed. R. Civ. Pro. 16, the district court granted Ruifeng’s motion, holding that Quintara failed to comply with § 2019.210. As a result, the court struck nine of the 11 trade secrets from the disclosure, effectively dismissing Quintara’s misappropriation claims as to those trade secrets. Quintara appealed.

The question before the Ninth Circuit was when in the litigation, and with what level of particularity, a plaintiff under the DTSA must identify its alleged trade secrets. The Court began by noting that CUTSA requires a plaintiff to identify the alleged trade secret with “reasonable particularity” before discovery begins. In contrast, the federal DTSA imposes no such requirement regarding the timing or scope of trade secret identification. Instead, DTSA cases proceed under the Federal Rules of Civil Procedure, which do not require plaintiffs to specify their trade secrets with particularity at the outset of the case. The Court explained that under the DTSA, a plaintiff must demonstrate that the claimed trade secret is described with sufficient particularity to distinguish it from general knowledge in the industry or from the specialized knowledge of those skilled in the trade. At an early stage of litigation, particularly when no discovery has yet occurred, it is not fatal to a plaintiff’s claim if the trade secret disclosure [...]

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It’s not monkey business: NFTs can be trademarked

by Ashley K. Justice | Jul 31, 2025 | Trademarks

The US Court of Appeals for the Ninth Circuit concluded that a non-fungible token (NFT) is a “good” under the Lanham Act but reversed the district court’s grant of summary judgment for trademark infringement because the owner did not prove as a matter of law that the defendants’ use was likely to cause confusion. The Ninth Circuit also affirmed the district court’s dismissal of the defendants’ counterclaim for declaratory relief regarding copyright ownership. Yuga Labs, Inc. v. Ryder Ripps and Jeremy Cahen, Case No. 24-879 (9th Cir. July 23, 2025) (Bade, Forrest, Curiel, JJ.)

Yuga Labs is the creator of the Bored Ape Yacht Club (BAYC) NFT collection. Yuga created this collection through a smart contract recorded on the blockchain Ethereum. Each BAYC NFT has a cartoon of a bored ape and a sequential unique identifier called an ape ID. Per its terms and conditions, BAYC NFT consumers receive commercial and personal rights free of royalty fees.

Ryder Ripps and Jermey Cahen created the Ryder Ripps Bored Ape Yacht Club (RR/BAYC) using the same ape images and ape IDs. The collection was also hosted on an Ethereum blockchain smart contract. They criticized Yuga for “using neo-Nazi symbolism, alt-right dog whistles, and racist imagery” and alleged that they created RR/BAYC as satire and criticism. Ripps made the RR/BAYC smart contracts’ names “Bored Ape Yacht Club” and made the smart contract symbol “BAYC.” Ripps’ website includes an artist statement that the artwork is a “new mint of BAYC imagery.” NFT marketplace websites for RR/BAYC displayed a large header “Bored Ape Yacht Club” and in a smaller text “@ryder_ripps.”

Yuga sued Ripps and Cahen for several claims, including trademark infringement based on a false designation of origin theory, false advertising, and cybersquatting. In response, the defendants asserted that Yuga did not have enforceable trademark rights, and even if it did, the defendants’ use was protected by fair use and the First Amendment. The defendants asserted several counterclaims, including knowing misrepresentation of infringing activity under the Digital Millenium Copyright Act (DMCA), and sought declaratory judgment of no copyright ownership.

The district court granted Yuga’s motion for summary judgment on its false designation of origin and cybersquatting claims. Yuga withdrew its remaining claims, so the trial proceeded only for equitable remedies on the false designation of origin and cybersquatting. At trial, the district court found that Yuga’s BAYC marks were unregistered trademarks. The district court awarded Yuga disgorgement of the defendants’ profits, maximum statutory damages, and attorneys’ fees after finding that the case was exceptional due to the defendants’ willful infringement, bad faith intent to profit, and litigation conduct. The defendants were also permanently enjoined. The defendants appealed the grant of summary judgment and sought vacatur of the remedies.

The Ninth Circuit first addressed the defendants’ argument that NFTs are not goods protected by the Lanham Act. The Court concluded that NFTs are goods under the Lanham Act based on a US Patent & Trademark Office report that determined them as such. The Court also [...]

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Clean bill of health: Only domestic activities count when analyzing likelihood of confusion

by Hannah Hurley | Jul 24, 2025 | Trademarks

Affirming a summary judgment decision finding no trademark infringement under the Lanham Act, the US Court of Appeals for the Ninth Circuit determined that the district court properly focused on domestic activity with regard to the allegedly infringing trademark. Doctor’s Best, Inc. v. Nature’s Way Products, LLC, Case No. 24-2719 (9th Cir. July 15, 2025) (Paez, Ikuta, Nelson, JJ.) (Ikuta, J., concurring).

Doctor’s Best (DB) manufactures nutritional supplements under the mark NATURE’S DAY at its California facility. Although the products bear English labels compliant with US regulations, they are marketed and sold exclusively in China, South Korea, and Taiwan.

Nature’s Way Products (NWP), owner of the long-standing US trademark NATURE’S WAY, opposed DB’s attempt to register NATURE’S DAY in the United States, citing potential consumer confusion. After NWP sent a cease-and-desist letter, DB preemptively sued for a declaratory judgment of noninfringement. NWP counterclaimed for trademark infringement under Sections 32 and 43(a) of the Lanham Act.

In June 2023, the Supreme Court held in Abitron Austria GmbH v. Hetronic Int’l, Inc. that the Lanham Act’s infringement provisions apply only to domestic “use in commerce.” DB moved for summary judgment, arguing that its only domestic activity – transporting products within the US – did not create a likelihood of confusion among US consumers. The district court agreed, finding that DB’s domestic transport of Nature’s Day products was insufficient to support a claim of infringement. The court concluded that no reasonable jury could find that this conduct would confuse US consumers and granted summary judgment in favor of DB. NWP appealed.

NWP argued that any domestic use in commerce, however minimal, triggered the full likelihood-of-confusion analysis, even if confusion occurred abroad. The Ninth Circuit rejected this interpretation, holding that Abitron requires courts to first identify domestic use before evaluating confusion. The Court found that DB’s manufacturing and transport activities were the only relevant domestic conduct.

Turning to likelihood of confusion, the Ninth Circuit applied the eight-factor test set forth in its 1979 decision in AMF Inc. v. Sleekcraft Boats:

Strength of the mark
Proximity or relatedness of the goods
Similarity of the marks
Evidence of actual confusion
Marketing channels used
Type of goods and the degree of care likely to be exercised by the purchaser
Defendant’s intent in selecting the mark
The likelihood of expansion of the product lines

Reviewing the Sleekcraft factors, the Ninth Circuit concluded that no genuine dispute existed as to the likelihood of confusion. DB’s products were sold exclusively overseas while NWP’s products were sold only in the US. The Court emphasized that confusion must occur among domestic consumers to be actionable under the Lanham Act, and that did not occur here.

In a concurring opinion, Judge Ikuta agreed with the outcome but clarified that DB’s transport of products constituted a domestic use in commerce. However, she found no genuine issue of material fact regarding whether that use caused domestic confusion, reiterating that Abitron excludes extraterritorial confusion from the analysis.

Running on Empty: ‘Stang’ With No Anthropomorphic Characteristics Isn’t Copyrightable Character

by Taylor MacDonald | Jun 5, 2025 | Copyrights

The US Court of Appeals for the Ninth Circuit affirmed a district court’s denial of copyright protection for a car that had a name but no anthropomorphic or protectable characteristics. Carroll Shelby Licensing, Inc. v. Denice Shakarian Halicki et al., Case No. 23-3731 (9th Cir. May 27, 2025) (Nguyen, Mendoza, JJ.; Kernodle Dist. J., sitting by designation).

In 2009, Denice Shakarian Halicki and Carroll Shelby Licensing entered into a settlement agreement resolving a lawsuit concerning Shelby’s alleged infringement of Halicki’s asserted copyright interest in a Ford Mustang known as “Eleanor,” which appeared in a series of films dating back to the 1970s. Under the agreement, Shelby, a custom car shop, was prohibited from producing GT-500E Ford Mustangs incorporating Eleanor’s distinctive hood or headlight design. Shortly thereafter, Shelby licensed Classic Recreations to manufacture “GT-500CR” Mustangs, a move Halicki viewed as a breach of the settlement agreement. Halicki contacted Classic Recreations and demanded it cease and desist in the production of the GT-500CRs.

Shelby filed a lawsuit alleging breach of the settlement agreement and seeking declaratory relief. Halicki counterclaimed for copyright infringement and breach of the agreement. Following a bench trial, the district court ruled in Shelby’s favor on both the breach and infringement claims but declined to grant declaratory relief. Shelby appealed.

The Ninth Circuit began by addressing whether “Eleanor” qualified for copyright protection as a character under the Copyright Act. Although the act does not explicitly list characters among the types of works it protects, the Ninth Circuit has recognized that certain characters may be entitled to such protection. The applicable standard, articulated in 2015 by the Ninth Circuit in DC Comics v. Towle, sets forth a three-pronged test, under which the character must:

Have “physical as well as conceptual qualities”
Be “sufficiently delineated to be recognizable as the same character whenever it appears” with “consistent, identifiable character traits and attributes”
Be “especially distinctive” and have “some unique elements of expression.”

The Ninth Circuit concluded that Eleanor failed to satisfy any of the three prongs of the Towle test. As to the first prong, the Court found that Eleanor functioned merely as a prop and lacked the anthropomorphized qualities or independent agency associated with protectable characters. Regarding the second prong, the Court noted that Eleanor’s appearance varied significantly across the films in terms of model, colors, and condition. Under the third prong, the Court found that Eleanor lacked the distinctiveness necessary to elevate it beyond the level of a generic sports car commonly featured in similar films. Thus, the Court concluded that Eleanor did not qualify as a character, let alone a copyrightable one.

The Ninth Circuit next turned to the parties’ settlement agreement. While California law permits the use of extrinsic evidence to aid in contract interpretation, the Court found the language sufficiently unambiguous to render such evidence unnecessary. Notably, the parties did not include “Eleanor” as a defined term in the agreement, and the term was used in varying contexts throughout the document, conveying different meanings [...]

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Plausibly Alleging Access Requires More Than Social Media Visibility

by Amit Kumar Saha, PhD | May 29, 2025 | Copyrights

The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of a copyright action, finding that the plaintiff failed to plausibly allege either that the defendant had “access” to the work in question merely because it was posted on social media, or that the accused photos were substantially similar to any protectable elements of plaintiff’s photographs. Rodney Woodland v. Montero Lamar Hill, aka Lil Nas X, et al., Case No. 23-55418 (9th Cir. May 16, 2025) (Lee, Gould, Bennett, JJ.)

The dispute arose between Rodney Woodland, a freelance model and artist, and Montero Lamar Hill, also known as Lil Nas X, a well-known musical artist. Woodland alleged that Hill infringed on his copyright by posting photographs to his Instagram account that bore a striking resemblance to images Woodland had previously posted. Woodland claimed that the arrangement, styling, and overall visual composition of Hill’s photos closely mirrored his own, asserting that these similarities constituted unlawful copying of his original work.

Woodland’s original images had been publicly shared on his Instagram account, where he maintained a modest following. He did not allege any direct contact or interaction with Hill or his representatives, nor did he claim that Hill had acknowledged or referenced his work. Instead, Woodland’s claim rested on the contention that the similarities between the two sets of photographs were so substantial that copying could be inferred. In his complaint, Woodland asserted that Hill had access to his publicly posted images and that the degree of similarity supported a finding of unlawful copying. The district court dismissed the complaint, holding that Woodland failed to plausibly allege either access or substantial similarity. Woodland appealed.

The Ninth Circuit affirmed, agreeing with the district court that Woodland failed to satisfy the pleading standard necessary to survive a motion to dismiss. The Ninth Circuit explained that to state a viable claim for copyright infringement, a plaintiff must alleged both the fact of copying and the unlawful appropriation of protected expression. The Court found that Woodland failed to establish either element.

The Ninth Circuit considered two principal legal issues:

Whether Woodland sufficiently alleged that Hill had access to Woodland’s copyrighted works
Whether the photographs posted by Hill were substantially similar to Woodland’s photographs in their protectable elements under copyright law

On the issue of access, the Ninth Circuit found that the merely alleging availability of Woodland’s photos on Instagram did not, by itself, plausibly demonstrate that Hill had seen them. The Court noted that in the era of online platforms, “the concept of ‘access’ is increasingly diluted.” And while that might make it easier for plaintiffs to show “access,” there must be a showing that the defendants had a reasonable chance of seeing that work under the platform’s policies. The mere fact that Hill used Instagram and Woodland’s photos were available on the same platform raised only a “bare possibility” that Hill viewed the photos. Woodland had not plausibly alleged that Hill “followed, liked, or otherwise interacted” with Woodland’s posts [...]

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Paint It White: No Sovereign Immunity in Economic Espionage Case

by Hannah Hurley | May 8, 2025 | Trade Secrets

The US Court of Appeals for the Ninth Circuit affirmed a district court’s denial of foreign sovereign immunity to a Chinese company accused of stealing trade secrets related to the production of proprietary metallurgy technology. United States v. Pangang Grp. Co., Ltd., Case No. 22-10058 (9th Cir. Apr. 29, 2025) (Wardlaw, Collins, Bress, JJ.)

Pangang is a manufacturer of steel, vanadium, and titanium. E.I. du Pont de Nemours (DuPont) had a proprietary chloride-route technology used for producing TiO₂, a valuable white pigment used in paints, plastics, and paper. Pangang allegedly conspired with others to obtain DuPont’s trade secrets related to TiO₂ production through economic espionage in order to use the stolen information to start a titanium production plant in China. The US government filed a criminal lawsuit.

In defense, Pangang invoked the Foreign Sovereign Immunities Act (FSIA) and federal common law, arguing that it was entitled to foreign sovereign immunity from criminal prosecution in the United States because it was ultimately owned and controlled by the government of the People’s Republic of China (PRC). In a prior appeal, the Ninth Circuit had found that Pangang failed to make a prima facie showing that it fell within the FSIA’s domain of covered entities. On remand, the district court again rejected Pangang’s remaining claims of foreign sovereign immunity, including its claims based on federal common law.

While the appeal was pending, the Supreme Court’s 2023 decision in Turkiye Halk Bankasi v. United States clarified that common law, not the FSIA, governs whether foreign states and their instrumentalities are entitled to foreign sovereign immunity from criminal prosecution in US courts. This led to a rebriefing of the present appeal to focus on the now-controlling issues concerning the extent to which Pangang enjoys foreign sovereign immunity under federal common law. Under federal common law, an entity must satisfy two conditions to enjoy foreign sovereign immunity from suit:

It must be the kind of entity eligible for immunity.
Its conduct must fall within the scope of the immunity conferred.

The Ninth Circuit concluded that Pangang did not make a prima facie showing that it exercised functions comparable to those of an agency of the PRC and therefore was not eligible for foreign sovereign immunity from criminal prosecution. The Court also found that “[t]he mere fact that a foreign state owns and controls a corporation is not sufficient to bring the corporation within the ambit of [sovereign immunity].” Since Pangang’s commercial activities were not governmental functions, there was no evidence that sovereign immunity should be applied. Therefore, the Ninth Circuit affirmed the district court’s denial of the motion to dismiss based on sovereign immunity.

Damages on Default Judgment Not Barred by Absence of Precise Amount in Complaint

by Amit Kumar Saha, PhD | May 8, 2025 | Trademarks

The US Court of Appeals for the Ninth Circuit reversed and remanded a district court decision, allowing collection of actual damages in a default judgment where the complaint only sought damages “in an amount to be determined at trial.” AirDoctor, LLC v. Xiamen Qichuang Trade Co., Ltd., Case No. 24-215 (9th Cir. Apr. 11, 2025) (Friedland, J.) (Berzon, Kennelly JJ., concurring) (per curiam).

AirDoctor produces and sells air purification products, including branded filters designed specifically for its machines. In 2022, AirDoctor discovered that Xiamen Qichuang Trade had sold tens of thousands of unauthorized replacement filters that were marketed as compatible with AirDoctor products. These filters were allegedly labeled with AirDoctor’s registered trademarks, including AIRDOCTOR and ULTRAHEPA, without permission. AirDoctor asserted that these actions constituted trademark infringement, false advertising, and unfair competition under the Lanham Act and related state laws.

AirDoctor filed a complaint seeking injunctive relief and monetary damages “in an amount to be determined at trial.” Xiamen did not respond or appear in the litigation, and the court entered a default judgment against it. AirDoctor subsequently moved for approximately $2.5 million in actual damages, calculated based on the number of infringing units sold, along with $50,000 in attorneys’ fees and costs. The district court entered a default judgment in Air Doctor’s favor but declined to award damages or attorneys’ fees. The court reasoned that Fed. R. Civ. Pro 54(c) barred monetary relief in default judgments unless the complaint demanded a specific sum. Since AirDoctor’s complaint did not include a precise dollar amount, the court concluded that granting the requested monetary relief would exceed what was demanded in the pleadings and thus violate Rule 54(c). AirDoctor appealed.

The issue before the Ninth Circuit was whether the district court erred in interpreting Rule 54(c) to prohibit an award of actual damages in a default judgment where the complaint requested “damages in an amount to be determined at trial” but did not specify a fixed damages amount. Xiamen did not appear on appeal either.

The Ninth Circuit reversed, concluding that Rule 54(c) does not require a complaint to state a specific sum of damages for a court to award actual damages after a default judgment. The Court emphasized that the rule’s purpose is to prevent awards that are fundamentally different in kind or amount from those for which the defendant had been put on notice by the complaint, not to deny recovery when the type of relief was clearly identified, even if the amount was not. The Court noted that AirDoctor had clearly requested actual damages in its complaint and had indicated that the precise amount would be determined later, which was sufficient to give Xiamen fair notice of the relief sought. Relying on its 1974 decision in Henry v. Sneiders, the Court reaffirmed that actual damages may be awarded in default cases even if the complaint does not state a dollar figure, as long as the damages are of the same kind as those demanded.

The Ninth Circuit clarified that Rule [...]

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