Intellectual Property Law

Ninth Circuit Affirms Infringement Finding Against Clothing Maker

By Michael Atkins

In Quiksilver, Inc. v. Kymsta Corp., a Central District of California jury initially found the defendant clothing maker was liable for infringing plaintiff’s ROXY trademark but did not find it liable for false designation of origin.

Since the tests are essentially the same, the court resubmitted the special verdict form with supplemental instructions. The jury then found defendant Kymsta liable on both counts, and the court imposed a permanent injunction.

Kymsta appealed. On Dec. 30, the Ninth Circuit affirmed, finding the district court acted within the scope of its discretion. At issue were the district court’s instructions as to the meaning of “ordinary purchasers” and the relevance of past harm to Quicksliver’s trademark infringement and false designation of origin claims.

The Ninth Circuit found: “In this case, the district court properly resubmitted the verdict due to a potential inconsistency in the jury’s responses — the jury found a likelihood of confusion for trademark infringement, but not for false designation of origin, despite a marked similarity between the questions. As Quiksilver argues, the inconsistency may have been due to jury confusion as to the meaning of ‘ordinary purchasers.’ Accordingly, the district court acted within its discretion in clarifying ‘ordinary purchasers’ on resubmission.

“In addition, the district court properly determined that past harm was irrelevant to the claims. See, e.g., Ninth Circuit Model Civil Jury Instructions 15.5 (2008) (excluding harm as an element of 15 U.S.C. § 1114(1) trademark infringement and § 1125(a)(1) false designation of origin claims). The district court, thus, acted within its discretion in instructing the jury to ignore the harm questions on redeliberation.”

The case cite is Quiksilver, Inc. v. Kymsta Corp., 2009 WL 5184066, No. 02-05497 (9th Cir. Dec. 30, 2009).

Full post as published by Seattle Trademark Lawyer on January 10, 2010 (boomark / email).