Roger Cleveland Golf Company Inc v. Prince et al

Filing 141

REPLY by Bright Builders Inc to 140 Response in Opposition to Motion,,,. (Attachments: # 1 Exhibit Doc. 128, # 2 Exhibit Doc. 129, # 3 Exhibit Doc. 132, # 4 Exhibit Doc. 133, # 5 Exhibit Reply Ex. 1, # 6 Exhibit Reply Ex. 2)(Doolittle, Paul)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
Roger Cleveland Golf Company, Inc.,
Plaintiff,
vs.
Christopher Prince, Sheldon Shelley, Prince
Distribution, LLC, and Bright Builders,
Inc.
Defendants.

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Civil Action No. 2:09-2119-MBS
DEFENDANT BRIGHT BUILDERS,
INC.’S REPLY TO CLEVELAND’S
OPPOSITION TO RENEWED
MOTION FOR JUDGMENT AS A
MATTER OF LAW; MOTION FOR A
NEW TRIAL; AND MOTION FOR
RELIEF FROM JUDGMENT

Cleveland’s main line of attack against Bright Builders’ motions is to state the evidence
in the case as Cleveland wished it was rather than what the evidence actually demonstrated.
Through this tactic, Cleveland argues that there was “ample evidence” that Bright Builders
“actively” participated in the creation of the infringing content on Prince’s website and had
“specific knowledge” that Prince was infringing Cleveland’s mark. The evidence simply cannot
support Cleveland’s argument. From its gross misstatement of the evidence, Cleveland then
directly argues that this Court should adopt a standard of knowledge for service providers
differing from all other courts that have addressed contributory liability of service providers.
Finally, while seemingly acknowledging in its recitation of the evidence that active participation
in or specific knowledge of Prince’s infringement of Cleveland’s mark was necessary for Bright
Builders’ contributory liability, Cleveland nevertheless argues that jury instructions that did not
require the jury to find such were nonetheless “adequate.” 1 None of Cleveland’s arguments are
availing and Bright Builders’ motions should be granted.

1

Bright Builders stands by its statement of the relevant standards of review that this court should
follow under Fed R. Civ. P. 50(b), 59 and 60 outlined in its Memorandum in support of its
motion. However, it should be noted that, in continuing the dubious practice Cleveland initiated

I.

Cleveland’s Inaccurate and Misleading Recitation of the Evidence
Cleveland argues that this Court need not go beyond the product manufacturer cases of

Georgia Pacific and Inwood for the controlling standard of knowledge with which to review the
evidence against this particular service provider because the jury was presented with “ample
evidence” that Bright Builders “actively participated” in the creation of the infringing content of
Prince’s site or knew “specifically” of Prince’s infringement of Cleveland’s mark. However,
Cleveland’s recitation of the evidence is inaccurate, misleading, unsupported by the citations it
provides, and unsupported by the record as a whole.
Cleveland argues that “[t]he record is replete with evidence that Bright Builders was fully
aware that the website being used by Prince was named copycatclubs.com….” (Cleveland’s
Response at 8). What is, of course, missing from Cleveland’s analysis is that Prince did not
register this domain name until August 31, 2008, only weeks before his seven month coaching
period ended. (Ex. H). Cleveland then argues that Bright Builders was “so intimately involved in
the creation of copycatclubs.com,” that it must have known about the specific infringing content
on the copycatclubs site. (Cleveland Response at 9, emphasis added). However, this “intimate
involvement” Cleveland argues is belied by Prince’s testimony that he alone designed the layout
of his golf site, on his own using the general layouts and sales interface, and general website
coaching advice and software (applicable to any sales site) provided by Bright Builders and that

in its Reply to Bright Builders’ Response to the Motion for Fees and Costs, Cleveland’s “Legal
Standard” section in its Response to this motion again relies extensively upon unpublished
opinions issued prior to 2007 in direct violation of the local rules of the 4th Circuit and the local
rules of this District. All statements and material relying on the improper citation to unpublished
cases prior to 2007 should, of course, be disregarded by this Court.
2

nobody else had involvement in the content. (Doc. 128 at 8:9-11, 70:10-16) 2. Prince testified
that all of the content and images for his golf clubs website came by him copying and pasting
from wholesalers’ websites and other third-party websites. (Doc. 128 at 53:14-54:18, 70:5-16).
Misstating the record, Cleveland states that “Bright Builders coached and mentored
Prince in designing this website, that Bright Builders reviewed Prince’s text, and …even
suggested changes to the website and the written text of the website.” (Cleveland Response at 9,
emphasis added). None of the citations support that Bright Builders ever saw any infringing text:
Compare Doc. 128 at 8:9-10:4 (“Like – in the beginning, my home page, I [Prince] had no text
whatsoever. They [Bright Builders] were like, ‘Well, you need to specify on your front page,
and you know, in detail kind of what you are selling and what it’s about.’ And that’s what I did.
….I [Prince] found something and I [Prince] pasted it and copied it and put it right there – I
[Prince] reworded it ….”) (emphasis added); Doc. 128 at 15:6-15 (to counsel’s question on
direct: “Did anyone at Bright Builders ever, after reviewing your web site, tell you that copying
someone else’s golf equipment, copying somebody else’s trademark or golf equipment could
create a potential liability for you?” Prince answers “No, sir.”); Doc. 128 at 77:20-23 (to
counsel’s question on direct: “And those coaches and mentors, it was your understanding had
reviewed your web site and made suggestions on what needed to be on your web site?” Prince
answers “Right”); with (Doc. 128 at 43:5-10 – Prince admits he merely “assumed” Bright
Builders reviewed his site; Doc. 132 at 68:4-20 – printouts of Prince’s website that included
infringing conduct were made on 6/23/2009, after coaching ended but before notification of

2

Bright Builders attaches the portions of the Jury Trial Testimony of Christopher Prince,
Gregory Cole and Stephen Gingrich as Doc. 128, 132 and 133, respectively, and the trial motion
hearings, jury charge and verdict form conferences as Doc. 129, as cited in its initial
memorandum in support of the present motions and this reply.
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infringements; Ex. C at 83:9-21; 88:17-89:4 – showing Prince had developed no particular
content to view while coaching services were being provided to him).
Cleveland goes on to argue that evidence demonstrated Bright Builders’ awareness that
the website’s name “copycatclubs” referred to counterfeit Cleveland golf clubs because the
website contained pictures of Cleveland golf clubs and stated that they were “copied clubs.”
(Cleveland Response at 8-9). Again, what is missing from Cleveland’s recitation of the evidence
is the fact that the exhibit relied upon, consisting of print outs of Prince’s website, were content
that existed only as of the date of printing -- June 23, 2009 – well after all coaching services from
Bright Builders ended. (Exhibit G at 5-6; Reply Exhibit 1) Cleveland provided no evidence that
Bright Builders ever saw this content or was alerted to the fact that Prince had posted this
infringing content as of June 23, 2009. Cleveland produced no evidence of when this content
was first placed on Prince’s website or how long it remained on Prince’s website. Bright
Builders did, however, produce evidence that no content, infringing or otherwise, existed at the
time the lawsuit against Bright Builders was filed in March of 2010, and had been taken down
even prior to the point at which Bright Builders was sued by Cleveland. (Doc. 128 at 71:1772:9; Doc. 132 at 67:24-68:3, 68:14-20).
Cleveland further argues that the record is replete with evidence that Bright Builders
“taught Prince how to use drop shippers from China.” (Cleveland Response at 9, emphasis
added). This is a clear misstatement of the evidence. On direct examination by Cleveland,
Prince testified that Bright Builders representatives “helped us out as far as sending us to
different types of wholesalers and that type thing, trying to find products that would strike your
interest.” (Doc. 128 at 4:4-6). Prince testified that he used drop shippers from China, and when
asked merely if “Bright Builders [was] aware that you were using drop shippers,” Prince

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responded: “They suggest you use drop shippers.” (Doc. 128 at 16:23-25). Moreover, Prince
testified that Bright Builders had “some that they recommended that [he] use” (Doc. 128 at17:34). However, while Bright Builders recommended certain drop-shippers, Prince testified that he
did not use the drop shippers recommended because he would not be able to make the amount of
money he wanted. (Doc. 128 at 4:4-6, 38:3-9). Instead, Prince used various drop shipping
“companies in China” to obtain the products he sold. (Doc. 128 at 16:8-17). Prince also
admitted that he may have sold golf clubs on eBay prior to his ever finding or utilizing Bright
Builders in 2008. (Doc. 128 at 49:15-50:12). Prince said he would go on eBay during the use of
his eBay account and look at where he could find the cheapest clubs to sell in order to reap the
largest profit margin, and he found them at the Chinese drop shipper websites he eventually used
to supply his copycatclubs site (Doc. 128 at 50:17-25). Moreover, Prince’s prior testimony
confirmed that he would have both bought and sold golf clubs on eBay during this earlier time
(prior to his involvement with Bright Builders). (Doc. 128 at 49:15-50:12). Prince also admitted
that he could not recall telling Bright Builders about the Chinese web sites he was using to
supply his sale of golf clubs or the fact that the clubs he was selling were counterfeit. (Doc. 128
at 52:1-6, 68:11-14). Hence, the evidence showed that Bright Builders taught Prince to use
“drop shippers” generally, and even suggested certain drop shippers, but not drop shippers from
China, let alone those from which Prince obtained his infringing products!
Finally, Cleveland argues that the evidence showed Bright Builders had specific
knowledge that Prince was infringing because Prince told a Bright Builders coach that he was
“selling copied golf clubs” (Cleveland Response at 9). Cleveland actually argues that while it
was not “common sense” to Prince that copied clubs were necessarily illegal or “counterfeit” at
the time he was discussing his plan with Bright Builders (Doc 128 at 52:1-9, 68:11-14),

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nevertheless, this discussion should somehow require Bright Builders’ to assume “copied” meant
“counterfeit” – rather than what Bright Builders actually thought it meant (“generic” golf clubs,
Ex. C at 111:18-23, 112:2-5; or “things like when you go to the store and buy generic Advil, you
know, it's a kind of a copy of the Advil brand, or ibuprofen; acetaminophen, Tylenol, Doc. 132 at
66:7-14). 3 And, there is no particular trademark, Cleveland’s, or anyone else’s, mentioned in
any of the evidence of discussions Prince had with Bright Builders or in the domain name itself.
Nevertheless, despite absolutely no evidence that Bright Builders knew or even could have
known that any particular trademark was infringed or would be infringed by Prince, that
somehow Bright Builders can be charged, as a matter of law, with knowledge that Prince had
utilized “a non-genuine, copy of the plaintiff’s [Cleveland’s] trademark.” (Ex. J, Instruction 9.1,
emphasis added; Cleveland Response at 8). There can be no such conclusion from the evidence.
It is only by adding into the actual evidence new evidence Cleveland now wishes it
could have presented that Cleveland claims, seemingly regardless of the standard of knowledge
applied, that there was sufficient evidence that Bright Builders was either “actively involved” in
creating Prince’s infringing content, or “specifically” knew of Prince’s infringement of
Cleveland’s mark. As demonstrated above, this conclusion simply cannot be reached on the
evidence Cleveland presented at trial.

3

While Cleveland would have the Court believe that there are simply no such things as
legitimate “copied” golf clubs – there is an entire legal industry built, much like generic drugs,
around what are known as “cloned” or reverse-engineered golf clubs, slightly different than their
name-brand counterparts but advertised and marketed as performing very close to name-brand
golf clubs – just like generic versions of name-brand drugs. This is perhaps why Cleveland did
not produce any evidence as to the meaning of the term “copy” in relation to golf clubs
generally, because an expert opining that it would only be understood to mean “counterfeit”
would be hard to acquire. Nevertheless, as the Tiffany court noted, it is not for the service
providers to bear the burden of acquiring such expertise in particular products in order to ferret
out counterfeits – it is the trademark owner’s burden to do so.
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II.

From Its Inaccurate and Misleading Recitation of the Evidence, Cleveland Asks This
Court To Adopt A Standard of Knowledge For Service Providers Differing from All
Other Courts Addressing the Question
In an interesting twist, Cleveland argues that the standard of liability for Bright Builders,

unquestionably an internet service provider, should be determined by the allegedly “ample”
evidence it claims it presented that Bright Builders was not just any service provider, but was
akin to the product manufacturers in Georgia Pacific Consumer Products, LP v Von Drehle
Corp., 618 F.3d 441 (4th Cir. 2010) and Inwood Labs., Inc. v. Ives Lab., Inc., 456 U.S. 844
(1982). However, no court has held that any service provider, particularly internet service
providers, can be held under the same standard of contributory liability as product manufacturers
for good reason – where users can add and delete website content and conduct potentially
infringing transactions thousands of times per day (let alone over the course of a year), a
ridiculously huge burden would be placed on internet service providers to police websites
continually and in perpetuity for infringing content. See Tiffany v. eBay, 76 F.Supp.2d 463, 475
(S.D.N.Y. 2008), affirmed in part and remanded in part, 600 F.3d 93 (2d Cir. 2010) (observing
that “more than six million new listings are posted on eBay daily, and at any given time, some
100 million listings appear on the website.”).
The courts have specifically distinguished the liability faced by product manufacturers
from that faced by service providers. While Inwood clearly applies to manufactures who have a
hands-on involvement in making the particular product that is then “passed off” under another’s
trademark, Inwood, 456 U.S. at 853-54 (drug manufacturer sold generic versions of brand-name
drug in identically colored pill capsules with the knowledge that pharmacists would place the
pills in brand-name packaging), Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1381-1382 (9th
Cir. 1984) (manufacturer of foundations with identical fabric covering or “ticking” of Sealy

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mattresses that bore no identifying labels but which it knew would be sold as a set with Sealy
mattresses), all courts addressing non-product manufacturing or distributing defendants have
faced a harder question. In Hard Rock Café Licensing Corp. v. Concession Services, Inc., 955
F.2d 1143 (7th Cir. 1992), the court acknowledged that
it is not clear how the doctrine applies to people who do not actually
manufacture or distribute the good that is ultimately palmed off as made
by someone else. A temporary help service, for example, might not be
liable if it furnished [the infringing seller] the workers he employed to
erect his [flea market] stand, even if the help service knew that [the
infringing seller] would sell counterfeit goods. Thus we must ask whether
the operator of a flea market is more like the manufacturer of a mislabeled
good or more like a temporary help service supplying the purveyor of
goods.
Id. at 1148. 4
Cases specifically addressing service providers have not failed to account for the level of
involvement the providers at issue had with the service transactions at issue. Neither did the
courts in Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010) and Rosetta Stone Ltd. v. Google Inc., 730
F.Supp.2d 531 (E.D. Va 2010), find that eBay and Google were merely “passive” providers – far
from it. The Tiffany court spent a considerable portion of the opinion addressing the plaintiffs’
evidence that eBay actively promoted and advertised the sale of Tiffany items on its site,
“advised its sellers to take advantage of the demand for Tiffany merchandise as part of a broader
effort to grow the Jewelry & Watches category, and purchased sponsored-link advertisements on
various search engines to promote the “Tiffany” items sellers were posting Tiffany, 600 F.3d at
100-101. Moreover, eBay generated revenue by charging sellers individual “insertion fees”

4

At various places in its Response, Cleveland inserts language that Bright Builders provides
both “products and services” – however, the only “product” Bright Builders provides is its
various coaching and hosting services – there is no question that Bright Builders did not supply
the counterfeit golf clubs Prince palmed off, such as to fit this into a product manufacturer or
distributor case.
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based on the starting price of the particular good listed and for any completed sale charges a
“final value fee” based on the final sale. Id. at 97. Finally, eBay also generated revenue through
ownership of PayPal which it allows sellers to use to process purchases and gains a fee per
transaction – giving “eBay an added incentive to increase both the volume and the price of the
goods sold on its website.” Id.
Nevertheless, the Tiffany court was “not persuaded by Tiffany’s proposed interpretation
of Inwood. Tiffany understands the ‘lesson of Inwood’ to be that an action for contributory
trademark infringement lies where ‘the evidence [of infringing activity] – direct or
circumstantial, taken as a whole --…provide[s] a basis for finding that the defendant knew or
should have known that its product or service was being used to further illegal counterfeiting
activity.’” Id. at 107. The Tiffany court rejected this reading of Inwood – almost identical to the
reading proposed by Cleveland now – as “too broad[]” as applied to service providers. Tiffany,
600 F.3d at 107-108. Rather, the court in Tiffany required that, to satisfy the knowledge prong of
Inwood, Tiffany was required to “demonstrate that eBay was supplying its service to individuals
who it knew or had reason to know were selling counterfeit Tiffany goods.” Id. at 109.
Rosetta Stone also specifically stated that “[a]lthough facially applicable to manufacturers
and distributors of goods, courts have applied Inwood’s test for contributory trademark
infringement ‘to a service provider if he or she exercises sufficient control over the infringing
conduct.’” Rosetta Stone, 730 F.Supp.2d at 547, quoting Tiffany, 600 F.3d at 104. In discussing
the proof required to show sufficient control for service providers, the court held that Rosetta
Stone was required to show that Google “had specific contemporary knowledge of which
particular listings were infringing or would infringe in the future,” which Rosetta Stone failed to
do. Rosetta Stone, 730 F.Supp.2d at 548 (emphasis added). The Court addressed that Google

9

was providing a tool “that assists advertisers in optimizing their advertisements” that “operates
by searching or indexing the particular website identified by an advertiser and returning a limited
number of keyword ideas for websites not affiliated with the URL.” Id. at 547. However, before
providing these “keyword ideas,” or assistance, just like Bright Builders, “Google informs
[users] that they are responsible for the keywords selected and for ensuring that their use of the
keywords does not violate any applicable laws.” Id. at 547-548. Moreover, “like eBay’s
inability to detect which vendors were genuine, Google ha[d] no mechanism for detecting which
advertisers sold counterfeit Rosetta Stone products.” Id. at 548. Absent such a showing that
Google knew of particular instances of infringement by particular sellers, no liability for
contributory infringement could be found in this service provider context. Id.
Hence, despite their less-than-passive involvement in providing a service, neither the
Tiffany nor Rosetta Stone court found that such involvement and profit therefrom was sufficient
evidence to sustain liability against these service providers for contributory trademark
infringement absent knowledge that a particular individual user was infringing a specific
product.
Ignoring this very distinction, Cleveland goes so far as to argue without any support that
Georgia Pacific applies to defendants that “continued to provide products and services”
(Cleveland Response at 4 and again at 5, emphasis added). Georgia Pacific did not extend its
holding to service providers, nor indeed even mentions “services” in the opinion. A review of
the citations provided by Cleveland merely reveals that the court quoted the language of Inwood
at 853-54 precisely (“if a manufacturer or distributor …continues to supply its product to one
whom it knows or has reason to know is engaging in trademark infringement, the manufacturer
or distributor is contributorially responsible for any harm done as a result of the deceit”)

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(emphasis added), Georgia Pacific, 618 F.3d at 450, and then asked, “apply[ing] the teachings of
Inwood to the facts of the present case” whether the defendant “continued to supply its product
to distributors knowing that such infringement was taking place.” Id. at 451. Indeed, Georgia
Pacific, even more so than Inwood itself, is so far afield from having to reach any question
regarding the knowledge prong for contributory liability, because the defendant in Georgia
Pacific was clearly a product manufacturer who “candidly admit[ted]” that it intended its
product to be “passed off” in that “it developed its 810-B Toweling for the specific purpose of
end-user customers stuffing [GP’s] [enMotion] Dispensers, which dispensers were the only ones
on the market at the time to accept ten-inch wide toweling.” Id. at 451.
There is simply no support in the case law, and perhaps this is why Cleveland provides
no citation to the case law, to justify Cleveland’s argument that this Court should depart from the
standard of knowledge for contributory trademark infringement by service providers set forth
and followed by courts across the country, and by at least one court in this jurisdiction.
III. While Instructions Were Adequate for Product Manufacturers, The Instructions
Were Insufficient for Service Provider Liability
Again, in arguing that the jury instructions in this case were “adequate,” Cleveland
misstates Georgia Pacific as applying to those providing “products and services” (Cleveland
Response at 12, emphasis added) – as noted in section II above, Georgia Pacific does not once
mention “services” or “service providers” in the language of the case. Cleveland then goes on to
say that under Georgia Pacific and Inwood, the instructions are “adequate” because the jury need
not be instructed that they must find Bright Builders’ knowledge of an individual infringer’s
(clearly, in this case, Prince’s) specifically infringing listings (listings infringing Cleveland’s
mark). There is no question that this issue was the subject of a specific objection. For the
reasons set forth in Bright Builders’ initial memorandum in support of its motions, the jury
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instructions were not “adequate” precisely because they simply articulated the Inwood standard
without particularized instruction on the knowledge element as applied to service providers – (1)
requiring the jury to find knowledge that Prince was infringing Cleveland’s specific mark in
particular listings or (2) notice that particular listings are infringing and failure to investigate
such noticed listings.
Nor can these defects in allowing the jury to find liability on a lesser standard be
somehow cured simply by a generic “willfulness” instruction given later in the charge in the
context of a damage enhancing instruction or even in a different claim.
It is because the instruction incorrectly allowed the jury to find Bright Builders, as a
service provider, liable even in the absence of its knowledge of the particular listings of the
particular mark that the statement “Ignorance is no defense” is so damaging. It implies that
ignorance of specific infringing listings is somehow “okay” – which it is not – rather than
ignorance of the law (aka “the Lanham Act” or “trademark law”). Finally, and again without
citation, Cleveland argues that where a specific objection was not raised to the jury instructions
at issue, those issues are “waived” and need not be reached. This is not correct. Again, even
when Fed. R. Civ. P. 51 (to make a contemporaneous objection) is not followed, an appellate
court can nevertheless reverse when the error is “plain” or “fundamental” in that the instructions
“must necessarily have caused the jury to act in complete ignorance of, or to have misapplied,
fundamentally controlling legal principles to the inevitable prejudice of an aggrieved party.”
Spell v. McDaniel, 824 F.2d 1380, 1398-99 (4th Cir. 1987).
IV. Cleveland’s Wandering SCUTPA Claims
Finally, in no more than a footnote, Cleveland again changes its theory of its South
Carolina Unfair Trade Practices Act (“SCUTPA”) claim. First, in its complaint, Cleveland

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alleged only that “Defendants' infringement of Plaintiff's trademarks with the intent to deceive
and defraud the public into believing that counterfeit golf clubs were manufactured by, approved
by, sponsored by or affiliated with Cleveland Golf, constitute unfair and deceptive acts or
practices in the conduct of trade or commerce in violation of S.C. Code Ann. § 39-5-10 et seq.
(the South Carolina Unfair Trade Practices Act).” (Complaint at 17, ¶ 73, Reply Exhibit 2).
Then, after all evidence at the trial was presented, and after Bright Builder’s counsel specifically
objected to allowing a verdict against Bright Builders under the South Carolina Unfair Trade
Practices Act Claim unless there was a finding of liability under the Lanham Act, (Doc. 129 at
54:10-55:20), Cleveland then turned down another path and argued that Bright Builders could in
fact be liable under the Unfair Trade Practices Act claim on both infringement of Plaintiff’s mark
and failing to monitor twenty thousand websites for illegal activity. (Doc. 129 at 55:21-57:2;
58:10-15).
To this new and belated adjustment, Bright Builders argued during the verdict form
conference and again in its initial memorandum in support of the present motions that plaintiff
neither plead any cause of action alleging violation of the Unfair Trade Practices Act for failing
to monitor other websites other than Prince, (Doc. 129 at 60:2-17; 60:6-13), nor could testimony
regarding other websites be found as a basis for liability for the claim as this would require a
showing that failing to monitor sites other than Prince’s cause some damage to Cleveland in
order to prevail – a fact neither proved or supported by any evidence. (Doc. 128 at 11:11-12:4,
62:19-63:21). Moreover, Bright Builders argued in its initial memorandum that a remand of the
South Carolina Unfair Trade Practices Act Claim would be justified and necessary under this
new argument as the verdict form did not require and we have no way of ascertaining whether or
not the jury found separate independent actions of Bright Builders in violation of SCUTPA.

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Ignoring the latter argument entirely, Cleveland has found yet another fork in the road on
which its SCUPTA claim seems to be traveling. For now, Cleveland argues that there was an
“abundance of evidence presented to the jury of Bright Builders unfair trade practices, ….For
example, the evidence that Bright Builders told Prince to take images from Cleveland’s website
to put them on his own website is sufficient evidence to support the jury’s finding of liability
under the SCUTPA.” (Cleveland Response at 7, n.3). All of the same arguments Bright
Builders made at the verdict form conference, as well as in its initial memorandum on these
motions with regard to SCUTPA claims based on alleged “independent actions” apply with equal
severity to this newest claim and are hereby proffered.
Moreover, Cleveland again plays very “fast and loose” with the evidence to support this
apparent basis for its SCUTPA claim. Prince’s testimony could not support such an allegation
that Bright Builders “told Prince to take images from Cleveland’s website.” Compare: Doc. 128
at 10:5-10 (“Q: Did they tell you anything with regard to pictures on your web site? A: Find a
picture, and if you like it copy and paste it. Q: And when they say find a picture, where did they
tell you you are supposed to find these pictures? A: No specific area.”); Doc. 128 at 43:22-24
(Prince was told to copy and paste “from wherever”); Doc. 128 at 54:21-22 (“I was told to copy
and paste, so that’s what I did.”); Doc. 128 at 75:20-23 (Bright Builder never told Prince to “go
and copy and paste trademark images onto [his] web site”). The evidence simply does not
support that Bright Builders directed Prince or anyone else to “copy and paste” Cleveland’s or
any other trademarked images. Moreover, the evidence does not support, again, that Cleveland
could have suffered any harm from Prince trying to copy and paste from its website, even
without Bright Builders’ direction. Prince testified that when he alone went to Cleveland’s

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website, he was unable to copy and paste images because they were encrypted. (Doc. 128 at
53:22-54:20).
Regardless of the ever-changing path that Cleveland takes in trying to support (without
evidence) differing bases for its SCUTPA claims, the bottom line in this case is that, because
Bright Builders did not itself create the infringing content of Prince’s site or itself sell the
infringing products, Cleveland’s claims against Bright Builders “must be analyzed under the
judicially created doctrine of contributory trademark infringement, derived from the common
law of torts.” Georgia Pacific at 449 (citations omitted). “Accordingly,” all SCUTPA claims
“rise or fall, …upon whether [Cleveland] has proffered sufficient evidence for a reasonable jury
to find that [Bright Builders] is liable for contributory trademark infringement” where both
claims must be “based upon the same intentional conduct by [Bright Builders].” Id. at 449.
V.

Conclusion
Cleveland proffers no facts or law that support why Bright Builders’ motions should not

be granted reversing the verdict and judgment against it. Accordingly, Bright Builders asks that
this court grant Bright Builders’ present motions.
Respectfully submitted,
s/ Paul J. Doolittle
___________________________
Paul J. Doolittle, Esquire
Federal Bar No.: 6012
Jekel-Doolittle, LLC
Post Office Box 2579
Mt. Pleasant, SC 29465
[phone]
Facsimile: [phone]
[e-mail]
Mt. Pleasant, SC
Dated: May 16, 2011

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