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15.27 Trademark Damages—Intentional Infringement

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If you find that the defendant infringed the plaintiff’s trademark, you must also determine whether the defendant used the trademark intentionally, knowing it was an infringement.

[Please answer the following question on the special interrogatory form: Do you find that the defendant intentionally used the trademark knowing it was an infringement?]


It is not clear whether this question, or the question of extenuating circumstances, must be submitted to the jury. 15 U.S.C. § 1117(b). Any award of treble damages depends on these findings. Id.

In the area of patent and copyright infringement, there is some authority for submitting the issue of willfulness to the jury. See, e.g., Shiley, Inc. v. Bentley Lab., 794 F.2d 1561, 1568 (Fed. Cir.1986) (applying 35 U.S.C. § 284), cert. denied, 479 U.S. 1087 (1987).

"Willful infringement carries a connotation of deliberate intent to deceive. Courts generally apply forceful labels such as ‘deliberate,’ ‘false,’ ‘misleading,’ or ‘fraudulent’ to conduct that meets this standard." Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir.1993) (also citing cases in other circuits regarding elements of a willfulness claim). See also Committee for Idaho’s High Desert, Inc., v. Yost, 92 F.3d 814, 825 (9th Cir.1996) (the term "exceptional" in 15 U.S.C. § 1117(a) for purposes of imposing treble damages, generally means the infringement was "malicious, fraudulent, deliberate or willful") (citing Lindy Pen Co., 928 F.2d at 1408); Nintendo of America, Inc. v. Dragon Pacific Int’l, 40 F.3d 1007, 1010 (9th Cir.1994) (where defendant willfully infringes trademark, trebling the damages is appropriate);VMG Enters. v. F. Quesada & Franco, Inc., 788 F. Supp. 648, 662 (D. Puerto Rico 1992) (treble damages granted when defendant’s infringing actions are deemed to have been made "knowingly and willfully"); Polo Fashions v. Rabanne, 661 F. Supp. 89, 98 (S.D. Fla.1986) (in absence of extenuating circumstances, profits are to be trebled where counterfeiting is intentional and knowing).

Regarding willful blindness, see Hard Rock Café Licensing Corp. v. Concession Servs., 955 F.2d 1143, 1149 (7th Cir.1992) (to be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate); Chanel, Inc. v. Italian Activewear of Florida, 931 F.2d 1472, 1476 (11th Cir.1991) (willful blindness could provide requisite intent or bad faith; determination of willful blindness depends on the circumstances and will generally be a question of fact for the factfinder after trial).

A court may enter judgment for a damage award under 15 U.S.C. § 1117(a) upon a finding of willfulness as well. See Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1384 (9th Cir.1984) (district court found that conduct constituted willful and deliberate bad faith infringement of plaintiff’s trademarks that was intended to and in fact did result in deception of the public); Friend v. H.A. Friend & Co., 416 F.2d 526, 534 (9th Cir.1969) (defendant’s acts must be willful and calculated to trade upon the plaintiff’s goodwill). See also Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1042 (9th Cir.2003) ("Exceptional cases include cases in which the infringement is malicious, fraudulent, deliberate, or willful) andGracie v. Gracie, 217 F.3d 1060, 1068 (9th Cir.2000).