Intellectual Property Law

Damages Denied On Counterfeit Default: Pointer On Pleading The Obvious

By Marty Schwimmer

This is why lawyers are neurotic.

Chanel and Vuittton sue an alleged counterfeitor on trademark, copyright and patent. Defendant defaults. A supporting paper for the default motion is reproduced below. It is a long catalog of the plantiffs' extensive trademarks, copyrights and patents, and reproductions of the infringing items. Take a look, and see if you find the problem.

Time's up. Bearing in mind that in a default, pleadings as to liabilitywill be deemed admitted, but allegations as to damages must be proven with certainty, the Court denied Vuitton damages on copyright and patent (trademark damages and an injunction were awarded). In affirming the magistrate's report and recommendations denying copyright and patent damages,, the Court finds:

Judge Orenstein was properly frustrated by plaintiff's failure to provide a clear indication in their pleadings, motion for default judgment, and additional submissions as to which of plaintiff's copyrights defendant specifically violated. Instead, the plaintiffs placed the burden on the court to determine which bags and images from various website printouts correlated to which registered copyrights, a burden the Magistrate Judge properly declined to shoulder. The Magistrate Judge was thus unable to establish the amount of damages with reasonable certainty.

Plaintiffs apparently attempted to remedy this failure, when, responding to the Magistrate's report, they submitted a chart, but the Court found the chart to be merely 'a summary of evidence already submitted' and refused to receive it.

Practice pointer: The blindingly obvious is never readily apparent, especially to a court that has much less time to spend on something than you do. Connect ALL the dots.

Motion for Default Chanel Vuitoon

Decision Chanel Default Pleading Copyright

Full post as published by Trademark Blog on December 14, 2009 (boomark / email).