Lone Wolf Distributors, Inc. v. BravoWare, Inc. et al

Filing 119

MEMORANDUM DECISION AND ORDER. IT IS HEREBY ORDERED, that the Court did not instruct the jury regarding the notice requirements of 15 U.S.C. § 1111 for the reasons expressed above. Signed by Judge B. Lynn Winmill. (km)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO

LONE WOLF DISTRIBUTORS, INC.
Case No. 2:15-cv-00016-BLW
Plaintiff,

MEMORANDUM DECISION AND
ORDER

v.
BRAVOWARE, INC. and SOPCOM,
Inc.
Defendant.

INTRODUCTION
During a jury instruction conference, defendants requested an instruction that
plaintiffs had a duty to give notice under 15 U.S.C. § 1111 of the trademark registration
as a precondition to obtaining any damages. The Court refused to give that instruction
and will explain its decision in this Memorandum Decision.
ANALYSIS
After the plaintiff elected to seek only statutory damages, defendants
argued that the Court should give a jury instruction requiring that as a
precondition to obtaining statutory damages, the plaintiff must show that it
gave the notice of trademark registration required by 15 U.S.C. § 1111. That
statute states that a trademark registrant may affix to the mark an indication
that it is registered – like the ® symbol – and that failing to do so means that
“no profits and no damages shall be recovered” in any infringement action
Memorandum Decision & Order – page 1

“unless the defendant had actual notice of the registration.” Defendants argue
that during the time they were allegedly infringing Lone Wolf’s trademark,
Lone Wolf had not affixed any registration notice to its mark, and never
provided actual notice, which should, according to defendants, preclude Lone
Wolf from obtaining any damages.
However, statutory damages are governed by 15 U.S.C. § 1117(c), not § 1111.
Section 1117(c) allows for statutory damages “[i]n a case involving the use of a
counterfeit mark (as defined in section 1116(d) of this title) . . . .” The term “counterfeit
mark” as defined by § 1116(d) means “a counterfeit of a mark that is registered . . .
whether or not the person against whom relief is sought knew such mark was so
registered.”
Under § 1117(c) and § 1116(d), notice is not a precondition to statutory damages.
While notice is generally required for damages under § 1111, the more specific
provisions governing statutory damages override § 1111: “A well- established canon of
statutory interpretation [is that] the specific governs the general.” RadLAX Gateway Hotel
LLC v. Amalgamated Bank, 566 U.S.639, 645 (2012). The leading treatise on trademark
law agrees:
[15 U.S.C. § 1116(b)(1)(B)] states that if the accused mark otherwise
meets the definition, it is a counterfeit mark ‘whether or not the person
against whom relief is sought knew such mark was so registered.’ It has
been held that this phrase controls over [15 U.S.C. § 1111’s]
requirement of statutory notice for the recovery of “damages.” Thus,
damages, including statutory damages, can be recovered for
counterfeiting even if the registered mark’s owner did not comply with
the notice requirements of [15 U.S.C. § 1111].”
Memorandum Decision & Order – page 2

McCarthy on Trademarks & Unfair Competition § 19:144 (4th ed. 2009).
For these reasons, the Court held that no notice was required and refused to
instruct the jury on the notice requirements of § 1111 as requested by the defendants.
ORDER
In accordance with the Memorandum Decision set forth above,
NOW THEREFORE IT IS HEREBY ORDERED, that the Court did not instruct
the jury regarding the notice requirements of 15 U.S.C. § 1111 for the reasons expressed
above.

DATED: January 2, 2019

_________________________
B. Lynn Winmill
Chief U.S. District Court Judge

Memorandum Decision & Order – page 3