Blog Title: Understanding Jurisdiction and Damages in Trademark Infringement Cases

Published on: December 27, 2022

Summary of the Case

This blog discusses a case involving a dispute over jurisdiction and damages awarded in a lawsuit against the defendants for trademark infringement. The plaintiffs accused the defendants of infringing on their patents and selling their products globally, including in the United States.

Jurisdiction Issue

One of the main issues in this case is the jurisdiction of the court. While two of the petitioners did not contest personal jurisdiction, the remaining petitioners did not seek review of personal jurisdiction with the Supreme Court.

Damages Awarded

The court below awarded $90 million in damages to the plaintiffs, corresponding to all foreign sales made by the defendants. However, it is unclear if the court properly considered the extraterritorial nature of the defendants' sales.

Request for Review

The petitioners are seeking review of the damages awarded and the court's consideration of extraterritorial sales. They argue that the court below did not properly analyze the issue and that the damages awarded should be limited to sales made within the United States.

Response to Suggestion for Reformulation

In response to the Solicitor General's suggestion to reformulate the question presented in order to focus the presentations of the parties and amici, the petitioners stated that they do not believe issues beyond extraterritoriality need to be addressed.

Conclusion

The petitioners in this case are seeking review of the damages awarded and the court's consideration of extraterritorial sales. They argue that the court below did not properly analyze the issue and that the damages should be limited to sales made within the United States.

Blog Title: Precedents Set in Trademark Cases

Published on: December 27, 2022

Summary of Trade-Mark Cases, 100 U.S. 82 (1879)

In the case of Trade-Mark Cases, 100 U.S. 82 (1879), the Supreme Court ruled on various trademark disputes. The court's decision in this case set important precedents for trademark law in the United States.

Summary of Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016)

Trader Joe's Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016) is a notable trademark case that involved a dispute between Trader Joe's and a Canadian businessman named Michael Hallatt. Hallatt operated a store in Canada called "Pirate Joe's," which sold products purchased from Trader Joe's stores in the United States. Trader Joe's sued Hallatt for trademark infringement, claiming that his use of the Trader Joe's name and logo created confusion among consumers.

Summary of United States v. Baston, 818 F.3d 651 (11th Cir. 2016)

United States v. Baston, 818 F.3d 651 (11th Cir. 2016) is a criminal case that involved drug trafficking charges. The defendant, Baston, was convicted of conspiracy to distribute cocaine and other drug-related offenses. The case raised important legal issues regarding the admissibility of evidence and the sufficiency of the government's proof.

Summary of United States v. Bollinger, 798 F.3d 201 (4th Cir. 2015)

United States v. Bollinger, 798 F.3d 201 (4th Cir. 2015) is a criminal case that involved charges of wire fraud and money laundering. The defendant, Bollinger, was accused of operating a Ponzi scheme that defrauded investors out of millions of dollars. The case raised important legal questions regarding the elements of wire fraud and the application of money laundering statutes.

Summary of United States v. Durham, 902 F.3d 1180 (10th Cir. 2018)

United States v. Durham, 902 F.3d 1180 (10th Cir. 2018) is a criminal case that involved charges of bank fraud and identity theft. The defendant, Durham, was accused of using stolen identities to obtain loans from various financial institutions. The case raised important legal issues regarding the definition of bank fraud and the admissibility of evidence obtained through identity theft.

Overall, these cases highlight the diverse range of legal issues that can arise in trademark disputes, criminal prosecutions, and other areas of law. The decisions in these cases have had a significant impact on the development of legal principles and the interpretation of statutes.

Blog Title: Considerations and Limitations in Trademark Infringement Remedies

Published on: December 27, 2022

Summary

This article discusses the considerations and limitations surrounding remedies for trademark infringement under the Lanham Act. It suggests that a one-size-fits-all approach does not work well when it comes to determining liability and damages in trademark infringement cases. Instead, courts should have broad discretion in applying the law.

Considerations for Liability

The article mentions the "diversion of sales" theory, which is adopted by the Tenth Circuit. This theory takes into account the impact of trademark infringement on sales and considers it as a factor in determining liability. However, the article acknowledges that diversion of sales is a complex and fact-intensive issue that requires careful consideration.

Discretion under the Lanham Act

The Lanham Act provides courts with broad discretion in determining liability and remedies for trademark infringement. This allows them to consider various factors and circumstances specific to each case. The article argues that this discretion is necessary because a one-size-fits-all rule would not be effective in addressing the complexities of trademark infringement.

Limitations on Monetary Relief

Section 29 of the Lanham Act limits monetary relief for registered trademark infringement unless the defendant had actual or constructive notice of the registration. This means that damages may be limited if the defendant was not aware of the trademark registration. Additionally, Section 32 limits monetary relief under Section 43(a)(1)(A) against "innocent" printers and others. These limitations serve as guardrails to prevent excessive damages in certain situations.

Trademark First Sale Doctrine

The article briefly mentions the trademark first sale doctrine, which may apply in certain cases. This doctrine allows the resale of trademarked goods without infringing on the trademark owner's rights. It is an important consideration when determining liability and remedies in trademark infringement cases.

Overall, the article emphasizes the need for courts to have broad discretion in applying the Lanham Act to trademark infringement cases. It highlights the complexities involved in determining liability and damages and suggests that a one-size-fits-all approach would not be effective. The limitations on monetary relief and the application of the trademark first sale doctrine further shape the remedies available in these cases.

Blog Title: Bluetooth SIG Inc. v. FCA US LLC - A Landmark Case in Patent Infringement

Published on: April 6, 2022

Background

Bluetooth SIG Inc. is a technology company that holds patents related to Bluetooth technology. FCA US LLC is an automotive company that manufactures vehicles equipped with Bluetooth technology.

Lawsuit

Bluetooth SIG Inc. alleged that FCA US LLC infringed on its patents by incorporating Bluetooth technology in its vehicles without obtaining the necessary licenses. The company sought damages and an injunction to prevent further infringement.

Court's Decision

The 9th Circuit Court of Appeals ruled in favor of Bluetooth SIG Inc. The court found that FCA US LLC had indeed infringed on the company's patents by using Bluetooth technology without obtaining the necessary licenses. As a result, the court awarded damages to Bluetooth SIG Inc. and issued an injunction to prevent further infringement.

Blog Title: Bourjois & Co. v. Katzel - Copyright Infringement and Exclusive Rights

Published on: 1923

Background

Bourjois & Co. is a cosmetics company that holds copyrights for certain perfume bottle designs. Katzel is a retailer who sold perfume bottles that were similar to those copyrighted by Bourjois & Co.

Lawsuit

Bourjois & Co. filed a lawsuit against Katzel, alleging copyright infringement. The company claimed that Katzel's sale of similar perfume bottles constituted a violation of its exclusive rights as the copyright holder.

Court's Decision

The Supreme Court ruled in favor of Bourjois & Co. The court held that Katzel's sale of the similar perfume bottles did indeed infringe on Bourjois & Co.'s copyrights. The court emphasized that the exclusive rights granted to copyright holders include the right to control the reproduction and distribution of their copyrighted works.

Blog Title: E.E.O.C. v. Arabian Am. Oil Co. - Combating Discrimination in Employment Practices

Published on: Not provided

Background

Arabian American Oil Co. (ARAMCO) is an oil company that employed both American and foreign workers. The Equal Employment Opportunity Commission (E.E.O.C.) is a federal agency responsible for enforcing laws against workplace discrimination.

Lawsuit

The E.E.O.C. filed a lawsuit against ARAMCO, alleging that the company had engaged in discriminatory employment practices. The E.E.O.C. claimed that ARAMCO had discriminated against American workers by favoring foreign workers in hiring and promotion decisions.

Court's Decision

The Supreme Court ruled in favor of the E.E.O.C. The court held that ARAMCO's employment practices did indeed violate anti-discrimination laws. The court emphasized that employers cannot discriminate against employees based on their national origin and must provide equal employment opportunities to all individuals.

Blog Title: Clarifying the Morrison Framework in Trademark Infringement Cases

Published on: Not provided

Summary

This article discusses the similarities between two analyses within the Morrison framework and how they align with the Lanham Act and previous court precedents. It emphasizes that in order to establish liability, the court must determine that the challenged conduct had a significant impact on U.S. commerce. Additionally, the article clarifies that just because the Lanham Act applies to conduct that affects U.S. commerce outside of the country, it does not mean that relief should be granted for the entirety of the defendant's actions. Instead, the remedies should be tailored to the specific situation. The article acknowledges the ambiguity in the previous opinion and addresses it.

Blog Title: AIPLA's Submission on the Scope of Liability and Remedies in Trademark Infringement Cases

Published on: December 27, 2022

Summary

This document is a submission made by the American Intellectual Property Law Association (AIPLA) in a case involving the Lanham Act. The AIPLA is requesting the court to remand the case for further proceedings, with a limitation on the scope of liability to those infringing acts that had a substantial effect on U.S. commerce. They also suggest that remedies should be assessed based on applicable principles of equity.

Background

The AIPLA is submitting this document in light of the anticipated clarification of the Morrison framework as applied to the Lanham Act. The Morrison framework refers to a legal framework established by the Supreme Court in the case of Morrison v. National Australia Bank Ltd. It provides guidance on determining the extraterritorial reach of U.S. securities laws.

Request for Remand

The AIPLA is requesting the court to remand the case for further proceedings. They argue that the court should limit the scope of liability to those infringing acts that had a substantial effect on U.S. commerce. This limitation would ensure that only acts with a significant impact on U.S. commerce are subject to liability under the Lanham Act.

Assessment of Remedies

In addition to limiting the scope of liability, the AIPLA suggests that remedies should be assessed based on applicable principles of equity. This means that the court should consider fairness and justice when determining the appropriate remedies for infringement under the Lanham Act.

Contact Information

The document includes the contact information of Brian H. Batzli, the President of the AIPLA, and Richard S. Stockton, the Counsel of Record at Banner & Witcoff, Ltd. The AIPLA can be reached at 1400 Crystal Drive, Suite 600, Arlington, VA 22202, and their phone number is (703) 415-0780. Richard S. Stockton can be reached at 71 S. Wacker Dr., Suite 3600, Chicago, IL 60606, and his phone number is (312) 463-5000. His email address is rstockton@bannerwitcoff.com.

Date of Submission

The document was submitted on December 27, 2022.

Publication source

See the PDF from which this article has been generated:

PDF source url: https://www.supremecourt.gov/DocketPDF/21/21-1043/250911/20221227154841716_2022-12-26%20AIPLA%20Abitron%20Amicus%20Brief.pdf