Oral argument tomorrow at the Second Circuit – Guggenheim Capital v. Birnbaum

Tomorrow morning I will appear before the United States Court of Appeals for the Second Circuit, which will hear argument on a case in which I got involved after a final judgment for trademark counterfeiting was entered.  I participated in certain post-trial proceedings and later submitted the brief embedded below.

Naturally I don’t want to editorialize about a pending matter, but it seems reasonable to quote from the brief’s preliminary statement:

This appeal concerns the question of whether it is proper for a court to enter, as a sanction for litigation non-compliance, a default judgment and a seven-figure statutory damages award against a penurious individual facing related (but ultimately abandoned) criminal charges arising from the same claims; who is unrepresented by civil counsel during the pendency of the default motion but has been advised by assigned criminal counsel not to do more than assert his Fifth Amendment right against self-incrimination in the civil case; and who is accused of the “crime” of “wrongfully” using his own family name by the institutional holder of a registered trademark historically based on that same family name – conduct which, even upon the default entered against him, the district court acknowledged made him no money and regarding which there was no proof that it ever harmed the plaintiffs.

That individual is appellant-defendant David Guggenheim Birnbaum, who respectfully submits that, in light of all the circumstances, the answer to the above question cannot possibly be in the affirmative. He seeks this Court’s rectification of a series of interrelated and highly prejudicial legal errors and a reversal of the judgment referred to so that he may have an opportunity to clear his name – and to use it, as the law provides.

And —

STATEMENT OF THE ISSUES PRESENTED FOR REVIEW

1. Did the district court, in light of the circumstances facing the unrepresented appellant-defendant, including a pending criminal investigation and a prima facie claim of right to use plaintiff’s trademark, abuse its discretion in entering a default judgment of liability, and substantial statutory damages, for trademark infringement as a litigation sanction?

2. Did the district court commit plain error by failing to even analyze defendant-appellant’s prima facie claim of right to utilize the main trademark claimed by appellees, and the central component of their other trademarks, as a fair use under 15 U.S.C.A. § 1115(b)(4), or to otherwise ensure that the pleadings properly stated a claim for trademark infringement even based on the facts alleged and deemed admitted?

UPDATE:  No dice.  News story here.

Originally posted 2013-04-11 16:41:06. Republished by Blog Post Promoter