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Notice for Willful Trademark Infringement

Posted by James Juo | Aug 25, 2023 | 0 Comments

Although willfulness is not a necessary condition for awarding an infringer's profits under the Lanham Act for trademark infringement, it nonetheless “is a highly important consideration in determining whether an award of profits is appropriate.” Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct. 1492, 1497 (2020).

Sailboat Plaques Bearing Kirby's Name

In Kirby v. LaserPerformance (Europe) Ltd., No. 21-519 (2d Cir. Aug. 18, 2023) (nonprecedential), the issue for willfulness in the alleged infringement of Plaintiff's registered “Bruce Kirby” trademark under the Lanham Act was one of timing—when a defendant was on notice that it no longer had consent to use the Kirby mark on the sailboat.

The defendants continued to sell Lasers with plaques bearing Kirby's name, as required by certain Laser sailboat races, until April 2013 when that requirement was lifted by the governing body for those races. The lawsuit had been filed in March 2013.

            Kirby testified at trial that if a boat did not have the required plaques bearing his name it would not be eligible to race in Laser races. He explained that the plaques were always affixed in the same place because people would look for them there. He said, “[A]nyone who knew much about the boat and who wanted to race it looked for the plaque. Because the plaque made the boat authentic, it made it a legal Laser.” Jt. App'x 108. Therefore, customers would look for the plaques to know whether the sailboat was an authentic and legal Laser, capable of participating in the Laser-specific races. Id. at 108.

            This evidence is sufficient to support the district court's conclusion that a jury could rationally infer “that a customer would not have purchased a non-compliant Laser—that is, a Laser that did not bear the Builder Plaque with the Bruce Kirby name”—and thus “that any time [defendant] sold a Laser, [defendant] commercially benefitted through the use of Kirby's name.” Kirby, 2021 WL 328632, at *10.

The district court had relied on a March 2010 letter from Kirby to a third party, International Laser Class Association (“ILCA”), the governing body of the International Sailing Federation (“ISAF”); and defendant's nonpayment of royalties starting on February 2011 to conclude that notice of non-consent at least as early as February 2011.

Because the March 2010 letter was sent to ILCA, and not to the defendants, the Second Circuit held that the March 2010 letter did not support the inference that defendants could have understood the letter as communicating that it was no longer authorized to use the mark.

With respect to the defendant's failure to pay royalties since February 2011, Kirby did not give the defendant written notice of its default and termination of the license until October 2012.

Thus, “[t]he earliest a reasonable factfinder could potentially conclude that [the defendant] began willfully infringing [the] mark was October 2012, when Kirby sent a letter to [the defendant] stating that its right to build the licensed design was terminated.”

Because the district court's findings on when the defendant began infringing the mark were clearly erroneous, the damages award for willfulness was vacated and remanded for the district court to reconsider the Lanham Act claim consistent with the above analysis. See Zervos v. Verizon N.Y., Inc., 252 F.3d 163, 169 (2d Cir. 2001) (explaining that a court exceeds its discretion when it exercises discretion based on a clearly erroneous factual finding).

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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