Intellectual Property Law

Ninth Circuit Finds Infringement Not Willful, Refuses Award of Profits

By Michael Atkins

HydraMedia Corp. appealed the Central District of California’s finding that Hydra Media Group Inc.’s trademark infringement was not willful.

On Aug. 12, the Ninth Circuit affirmed.

The way the Ninth Circuit tells the story, it’s pretty clear-cut.

“Defendant initially adopted the contested mark, HYDRAMEDIA, before it knew that Plaintiff even existed. When Defendant discovered Plaintiff’s use of a similar mark, it relied on in-house counsel’s opinion that there was little likelihood of confusion based on the companies’ distinct services. Defendant enjoyed a strong reputation and there was no evidence that it sought to mislead consumers or usurp any goodwill associated with Plaintiff’s mark. Under such circumstances, Defendant’s infringement was not willful.”

The Ninth Circuit also affirmed the district court’s refusal to award an accounting of defendant’s profits, which also makes sense given its finding that the infringement was not willful.

“Our decisions regarding an award of profits emphasize the importance of willfulness in the analysis. ‘Indeed, this court has cautioned that an accounting is proper only where the defendant is attempting to gain the value of an established name of another.’ Defendant was not trading off Plaintiff’s name. Defendant’s infringement was not willful. The district court did not abuse its discretion by denying Plaintiff’s motion for an award of profits.”

The case cite is HydraMedia Corp. v. Hydra Media Group Inc., 2010 WL 3190611, Nos. 09-55237, 09-56047, and 09-56050 (9th Cir. Aug. 12, 2010).

Full post as published by Seattle Trademark Lawyer on August 25, 2010 (boomark / email).