Intellectual Property Law

Fifth Circuit affirms injunction against trademark infringement in Saudi Arabia

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award.  Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia.  Even though the products were not sold in the United States, under the Fifth Circuit's decision in American Rice, Inc. v. Arkansas Rice Growers Cooperative Association, enforcement of trademark rights extraterritorially was permitted if it was not an affront to Saudi sovereignty.  Here, there was no such evidence of record (such as a finding by a Saudi court that there was no infringement), so the court determined that jurisdiction was properly exercised.

The court also vacated the district court's award of attorney's fees on the basis that it represented an inconsistent award.  The district court awarded profits, but no attorney fees under the Lanham Act, and attorney's fees, but no other damages under a breach of contract theory.  Because an award of both attorney fees and profits would mean portions of the award would come from different legal theories under Texas law, the court did not permit recovery of both.

More detail of Am. Rice, Inc. v. Producers Rice Mill, Inc. after the jump.

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Full post as published by FileWrapper on February 29, 2008 (boomark / email).