Jane Coleman addressed the lower court opinion in her recent update to her secondary liability treatise and Claudia Ray, the head of the Trademark and Unfair Competition Committee of the New York City Bar Association, just sent around the Court of Appeals decision in an email to committee members. This pithy squib she credits to her evidently very able colleague Josh Simmons:
In Louis Vuitton Malletier v. Akanoc Solutions, Inc., et al., the Ninth Circuit issued a decision last Friday vacating a jury award of $10.5 million in statutory damages for willful contributory trademark infringement of 13 marks (which brought the total award to $31.5 million on the trademark claims plus $1.2 million for the willful infringement of two copyrighted works). The Ninth Circuit vacated the damage awards because they exceeded the statutory maximums, but affirmed in all other respects and remanded to the district court with instructions to award $10.5 million for contributory trademark infringement and $300K for contributory copyright infringement.
This result comes as no great surprise. I thought that under the facts here — very specific facts about a very specific level of knowledge on the part of the server company — the case for secondary liability was a strong one. But I had a lot of trouble with the massive statutory damages award, which in general I have trouble with in terms of what happens to these candy-dispenser laws in the hands of juries.
I think the Ninth has probably done the right thing here. I promise to read the decision in full and to augment, supplement or entirely reverse myself as appropriate. For now, I’m just reporting the news and pushing the old agenda.