Yes, there can be progressive #trademark law.
"Black D.C. church vandalized by #ProudBoys awarded control of group’s name"
https://www.washingtonpost.com/dc-md-va/2025/02/04/dc-black-church-proud-boys-name-trademark-rights
In a windfall for property owners, the Supreme Judicial Court of Massachusetts upheld a liquidated damages clause in a five year lease even though the landlord found a new tenant for the last four years.
A short version of my review of @KimKrawiec and @nate_oman's forthcoming @IowaLawReview piece on specific performance is up for your Labor Day amusement. Longer version forthcoming in @IowaLawReview Online.
‘Remedies’ - #RSThomas
(H'm, Macmillan)
#Rhwymediau #Remedies
#Bardd #Barddoniaeth #Cerdd
#Poet #Poetry #Poem
Court denies plaintiff's request for an asset freeze in a (non-Schedule A) trademark & trade secret case.
REBECCA BAMBERGER WORKS, LLC v. REBECCA BAMBERGER, No. 3:24-cv-00706, 2024 WL 2805323, at *20 (S.D. Cal. May 31, 2024).
And the underlying decision (by Judge Seeger): https://storage.courtlistener.com/recap/gov.uscourts.ilnd.422932/gov.uscourts.ilnd.422932.51.0.pdf
"The Court declines the request to award profits because Plaintiff offered evidence of revenue, not profits. Revenue and profits are not the same thing. The Court declines the invitation to assume that all of the revenue equals profits."
Note that the disgorgement provision of the Lanham Act expressly addresses burden shifting (unlike the Copyright Act and § 289 of the Patent Act): "In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed."
https://www.law.cornell.edu/uscode/text/15/1117
So this provision provides the best support for the #ScheduleA "we can't prove their profits so give us the whole account" argument.
The substance of the design patent infringement claims are not yet publicly-available but, judging from the prayer for relief....I'm not optimistic as to their quality:
https://storage.courtlistener.com/recap/gov.uscourts.ilnd.454648/gov.uscourts.ilnd.454648.1.0.pdf
(For anyone who doesn't know, this allegation makes two deep, fundamental errors of law. You can't get both profits AND damages and profits cannot be trebled.)
This discussion of the burden of proof and design patent damages is good so I'll forgive the "patent design" part. Kyjen v. ScheduleA, 2024 WL 1421126, at *7. #ScheduleA #Remedies
![In every case, “[t]he patent owner bears the burden of proving the amount of damages.” Evriholder Prod. LLC v. Simply LBS Ltd. Co., No. 17-cv-4329 (RA) (BCM), 2020 WL 7060336, at *5 (S.D.N.Y. Apr. 21, 2020) (citing ALAN Sportartikel GmbH v. Ultra Fitness Equip., Inc., No. 09-cv-4909 (ADS) (ARL), 2011 WL 13305254, at *2 (E.D.N.Y. Feb. 10, 2011)). Although the Defaulting Defendants are in default and have not produced documents demonstrating profits, Plaintiff does not provide the Court with any evidence of approximation of revenue or profits earned by Defaulting Defendants through their patent infringement. Therefore, Plaintiff is entitled to the statutory minimum of $250.00 for patent design infringement.](https://files.mastodon.social/media_attachments/files/112/218/630/929/661/488/original/07bbc355dad7655c.jpg "In every case, “[t]he patent owner bears the burden of proving the amount of damages.” Evriholder Prod. LLC v. Simply LBS Ltd. Co., No. 17-cv-4329 (RA) (BCM), 2020 WL 7060336, at *5 (S.D.N.Y. Apr. 21, 2020) (citing ALAN Sportartikel GmbH v. Ultra Fitness Equip., Inc., No. 09-cv-4909 (ADS) (ARL), 2011 WL 13305254, at *2 (E.D.N.Y. Feb. 10, 2011)). Although the Defaulting Defendants are in default and have not produced documents demonstrating profits, Plaintiff does not provide the Court with any evidence of approximation of revenue or profits earned by Defaulting Defendants through their patent infringement. Therefore, Plaintiff is entitled to the statutory minimum of $250.00 for patent design infringement.")
AA sought statutory damages of $6M per defendant (the maximum amount); the judge awarded $3M/defendant.
AA also asked for anything left in the frozen accounts as equitable damages and the judge refused, noting that "defrauded jobseekers might also have potential claims to those funds."
2024 WL 945262, at *9.
Also, IIRC from my practice days, the Seventh Circuit applies the disgorgement provision of the Lanham Act quite literally, w/r/t burdens of proof. I don't know offhand what the Seventh Circuit case law for copyright profits looks like these days but I wouldn't necessarily assume the same rules apply. #Remedies
15 U.S.C. § 1117(a):
Judge Kendall REFUSES to maintain the asset freeze in a utility patent #ScheduleA case because § 284 does not provide a remedy of equitable disgorgement:
https://www.scribd.com/document/698200535/ABC-v-Schedule-A-23-cv-04131-Order-denying-asset-freeze (h/t @hewittlaw)
![In their complaint, ABC Products requests damages under 35 U.S.C. § 284 for utility patent infringement. (Dkt 1 at 8–9). Upon trial, ABC Products would be entitled to damages consisting of a “reasonable royalty” of “the value of what was taken,” which would be the “value of the infringing features of an accused product.” 35 U.S.C. § 284; Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). This statute, unlike the trademark and design patent context, does not provide for the equitable relief of accounting and profits. Compare 15 U.S.C. § 1117 with 35 U.S.C. § 284. Therefore, the Court declines to enforce the provisions of the preliminary injunc-tion enforcing an asset freeze, Dkt. 39 ¶¶ 2, 6(b), as to all Defendants.
CONCLUSION
For the foregoing reasons, the Court grants ABC Products’s motion for preliminary injunc-tion in part. Defendant BonWeiry is enjoined per the conditions set forth in the Court’s prior order [28] granting ABC Products’s motion for preliminary injunction, absent paragraphs 2 and 6(b) regarding the asset freeze.](https://files.mastodon.social/media_attachments/files/111/737/439/800/437/296/original/f6c9167acd3cc780.jpg "In their complaint, ABC Products requests damages under 35 U.S.C. § 284 for utility patent infringement. (Dkt 1 at 8–9). Upon trial, ABC Products would be entitled to damages consisting of a “reasonable royalty” of “the value of what was taken,” which would be the “value of the infringing features of an accused product.” 35 U.S.C. § 284; Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). This statute, unlike the trademark and design patent context, does not provide for the equitable relief of accounting and profits. Compare 15 U.S.C. § 1117 with 35 U.S.C. § 284. Therefore, the Court declines to enforce the provisions of the preliminary injunc-tion enforcing an asset freeze, Dkt. 39 ¶¶ 2, 6(b), as to all Defendants.
CONCLUSION
For the foregoing reasons, the Court grants ABC Products’s motion for preliminary injunc-tion in part. Defendant BonWeiry is enjoined per the conditions set forth in the Court’s prior order [28] granting ABC Products’s motion for preliminary injunction, absent paragraphs 2 and 6(b) regarding the asset freeze.")
November 7: A group of defendants in a utility patent #ScheduleA case point out the #GrupoMexicano issue.
https://www.scribd.com/document/697952319/AJ-s-Nifty-Prods-v-Schedule-A-PI-Opp-n
November 27: Those defendants are summarily dismissed.
Judge Scola grants a preliminary injunction, including an asset freeze, in a utility patent #ScheduleA case filed by Shenzhen Hengzechen Technology Co., Ltd.
https://storage.courtlistener.com/recap/gov.uscourts.flsd.653608/gov.uscourts.flsd.653608.22.0.pdf
The briefs are under seal so we can't evaluate the merits of the infringement claims.
Lots of interesting things going on in this new declaratory judgment complaint, which alleges wrongful use of the Amazon takedown process: https://design-law.tumblr.com/post/732248452264820736/does-this-glove-anticipate-this-design-patent
Complaint: https://storage.courtlistener.com/recap/gov.uscourts.insd.210681/gov.uscourts.insd.210681.1.0.pdf
Docket: https://www.courtlistener.com/docket/67912135/excelnecia-importing-pty-ltd-dba-kennels-kats-v-leng/
A #Trump spox also disputed claims by James’ office in a statement: “The Attorney General filed this case under a consumer protection statute that denies the right to a jury. There was never an option to choose a jury trial. It is unfortunate that a jury won’t be able to hear how absurd the merits of this case are & conclude no wrongdoing ever happened.”
Acc/to MSNBC #legal analyst Lisa Rubin, the #remedies sought by the AG are primarily of a kind that can be awarded ONLY by a #judge.
This plaintiff seems to be confused about how design patent damages work.
To recap: You can get an accounting of profits OR actual damages. But only the latter can be trebled.
This is a well-established and long-standing rule.
But you have to actually do a little research. Not just make assumptions.
For more on design patent damages, including the special "total profits" remedy: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3033231
#Remedies friends: What are your favorite teaching cases for copyright & trademark (bonus points if the case involves trade dress) remedies?
Note also that in #ScheduleA cases, #ImproperDisgorgementDemands are even more problematic than in other cases.
Why?
The plaintiffs who've actually had to justify their claims for preliminary asset seizures argue that it's okay under #GrupoMexicano
(https://www.oyez.org/cases/1998/98-231) because they're seeking a disgorgement remedy.
But utility patent owners aren't entitled to a disgorgement remedy.
Not that courts seem to be noticing--let alone pressing plaintiffs--on this point.
#SRIPLAW again tells a court that their client is are entitled to treble damages when they aren't.
For those who don't know: "Total profits" awards can't be trebled. That's well established. https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3033231
This is the second time I've seen this law firm ask for trebled § 289 damages on behalf of this client. I wonder how many other times they've asked--and how many times judges have granted it.
