Intellectual Property Law

Ninth Circuit Affirms Trademark Infringement Fees Award

By Michael Atkins

On March 24, the Ninth Circuit affirmed the District of Nevada’s award of attorney’s fees to the plaintiff trademark owner in Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services.

This is the second time the court has considered the issue. It previously affirmed the propriety of a fees award under the Copyright Act but vacated and remanded the award of fees under the Lanham Act for further explication by the district court. The Ninth Circuit also previously remanded the determination of the amount of fees awarded under the Copyright Act, because the district court had not separately determined the amount of fees attributable to the Copyright and Lanham Act issues.

On remand, the district court stated several bases for its conclusion that the case was exceptional under the Lanham Act. The court also determined that the fees should be allocated 60 percent to to trademark issues and 40 percent to copyright issues. The district court first awarded $104,375 in fees and, subsequently, another $20,000 for fees not previously billed.

The Ninth Circuit found: “On remand, the district court independently found that Invision’s infringement was ‘willful’ in the sense that it was a ‘deliberate and bad faith attempt to trick and deceive consumers, and to trade upon the substantial goodwill Lerner had established in the ONE CALL mark.’ The record evidence, particularly the evidence establishing that Invision itself arranged for an out-of-state attorney to run advertisements using the ONE CALL mark, supports the district court’s conclusion.

“Moreover, the jury found, based on testimony at trial, that Invision’s use of the ONE CALL mark was likely to cause confusion among Nevada’s consumers; the district court, based in part on evidence of actual confusion, found consumer confusion the ‘certain and foreseeable’ result of Invision’s actions. Consumer confusion alone does not make a trademark case ‘exceptional,’ as actions taken consistent with a reasonable claim of ownership in the mark might also cause consumer confusion. But Invision’s ownership claims in the ONE CALL mark are extremely weak. Ownership of trademarks typically inhere in the use of the mark in the sale of goods and services. The record is undisputed that Invision never used the ONE CALL mark itself to promote its own legal services in Nevada. Moreover, as the district court found, Invision’s purported assignment of the registration from a Florida law firm was insufficient to establish ownership rights. Trademarks may only be assigned ‘with the goodwill of the business in which the trademark is used,’ and Invision never claimed to carry forward an association with the Florida law firm.”

The case cite is Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services, No. 07-15778, 2009 WL 766502 (9th Cir.) (unpublished).

Full post as published by Seattle Trademark Lawyer on March 29, 2009 (boomark / email).