Intellectual Property Law

Ninth Circuit Affirms Renoir-Guino False Advertising Decision

By Michael Atkins

The Ninth Circuit Dec. 9 affirmed the jury’s verdict and the District of Arizona’s findings in favor of the defendants/counterclaim plaintiffs in the false advertising portion of Societe Civile Succession Richard Guino v. Renoir. The claim involved the alleged marketing of copied statutes as originals.

The Ninth Circuit found the jury had substantial evidence, “including an online advertisement for an exhibition of the Guino reproductions and testimony for Societe members regarding the promotion of the Guino reproductions at the exhibition,” to support its finding that the Societe “falsely advertised about its own or another’s product.”

The court also found that the district court had properly crafted its injunction against Societe. “To prevent the Guino reproductions from being held out to the public as original works (as Societe had done), the district court properly fashioned an injunction that required these works to be labeled as ‘unauthentic and/or unauthorized duplicates of original Renoir-Guino works.’ Notably, the district court limited the scope of relief Renoir requested by permitting the sale of these works as long as they were correctly labeled, an injunction that Societe described as ‘proper.’”

Finally, the court upheld the district court’s award of attorney’s fees to Renoir as the prevailing party in an exceptional case since the plaintiff waited until the last minute to dismiss a Lanham Act claim it was not able to establish. “Societe never tried to prove its Lanham Act claims against Renoir or [co-defendant] Beseder [Inc.] yet waited until trial to abandon them. It presented no evidence of confusion or damages, basic elements of any Lanham Act claim. Its claim was clearly groundless. Societe’s failure to dismiss its claim earlier in the proceeding once it knew that there was no evidence to support it was ‘unreasonable.’”

The opinion is kind of thin on the facts. The companion copyright infringement decision and Rebecca Tushnet’s 43(B)log fills in more background here and here.

The case cite is Societe Civile Succession Richard Guino v. Renoir, 2008 WL 5157719, Nos. 07-15582, 07-15583, 07-17209 (9th Cir. Dec. 9, 2008) (unpublished).

Full post as published by Seattle Trademark Lawyer on December 14, 2008 (boomark / email).