The Nutty Ninth
The Ninth Circuit yesterday addressed the question: “whether an award of statutory damages for trademark counterfeiting under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under 15 U.S.C. § 1117(b).” Reversing the Central District of California in the case of K and N Engineering, Inc. v. Bulat, the Ninth Circuit found that it does. . . .
This seems like a strange result. Injured trademark owners opt for statutory damages because counterfeiters don’t keep records needed for the injured owners to prove damages or the counterfeiters’ profits. If a counterfeiter keeps good records, Section 1117(b) generally enables the injured trademark owner to obtain a judgment for “three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee….” But if a counterfeiter doesn’t keep good records, the injured owner only gets statutory damages? I suppose the statute says what it says, but from a policy standpoint, this conclusion makes no sense.
Michael is right on. This ridiculous holding is contrary to many cases, including one I was involved in, Louis Vuitton Malletier v. Veit. What are these guys thinking?!
UPDATE: For what they’re thinking, read the insightful comments below from Ryan Fountain, the successful attorney for the appellants.
Originally posted 2007-12-21 11:32:26. Republished by Blog Post Promoter