Actual Damages

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Flava Works, Inc. v. Wyche d/b/a DGSource.com, No. 10 C 748, Slip Op. (N.D. Ill. Jun. 28, 2010) (Gottschall, J.).
Judge Gottschall denied plaintiff Flava Works’ motion for default judgment based upon Flava Works’ proof of damages. Flava Works accused defendants (collectively “DGSource”) of copyright infringement and Lanham Act false designation of origin based upon a series of websites that allegedly used and sold Flava Works’ copyrighted content. DGSource never answered the complaint, and the Court entered a default order. In response, Flava Works submitted a proof of damages seeking approximately $1.3M. As an initial matter, the Court held that because both claims stem from the same operative facts, Flava Works was required to choose either copyright or Lanham Act damages. Flava Works also had to choose actual or statutory damages to the extent it chose copyright damages.
With respect to actual damages, the difference between the copyright and Lanham Act claims was that the Lanham Act provided for trebling damages. Regardless of the calculation, Flava Works’ estimates of its losses and DGSource’s profits were “conclusory” and provided without context. For example, Flava Works did not set out how much of DGSource’s website content was infringing and, therefore, would be relevant to a damages calculation.
Flava Works was not required to present evidence if it chose statutory damages, but without evidence the Court was required to adjust the award down, and the Court noted that it would benefit from additional evidence. The Court also noted that Flava Works was only entitled to statutory damages as to the two registered copyrights.
Finally, Flava Works did not prove the elements necessary for a permanent injunction. And Flava Works offered no authority for its requested remedy of transferring DGSource’s domain names to Flava Works.
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Continue Reading Plaintiff Must Choose Between Lanham Act or Copyright Damages in Default Judgment

Loufrani v. Wal-Mart Stores, Inc., No. 09 C 3062, Slip. Op. (N.D. Ill. Nov. 12, 2009) (Kendall, J.).
Judge Kendall denied counterclaim defendants’ (collectively “Smiley Company”) Fed. R. Civ. P. 12(b)(6) motion to dismiss counterclaim plaintiff Wal-Mart’s Lanham Act and related state law declaratory judgment claims related to Smiley Company’s potential use of Wal-Mart’s Mr. Smiley Mark, from Wal-Mart’s well-known roll back campaign, after the Trademark Trial and Appeal Board (“TTAB”) held that Smiley Company’s mark was not distinctive and that the mark would create a likelihood of confusion with Wal-Mart’s Mr. Smiley Mark.
First, the Court held that Wal-Mart had plead sufficient facts to establish a controversy existed warranting Wal-Mart’s declaratory judgment claims. All of Wal-Mart’s claims related to likelihood of confusion. And the parties had developed “clear positions” on likelihood of confusion through their TTAB proceedings. Furthermore, Smiley Company had already raised numerous claims against Wal-Mart, evidencing an actual controversy. The Court also noted that this case was not like Geisha v. Tuccilli, 552 F. Supp. 2d 1002 (N.D. Ill. 2007) (click here to read more about the case in the Blog’s archives). In that case, the Court held there was no controversy, but declaratory judgment defendant had never used its mark and if he did use it by opening a restaurant, it would have been easy for declaratory judgment plaintiff to identify the use and alleged infringement. Smiley Company, however, admitted to using its mark internationally since the 1970s. Furthermore, Geisha was a summary judgment decision where the parties and the Court had the benefit of discovery.
Smiley Corp. also argued that the Court should only address its appeal of the TTAB decision and not Wal-Mart’s broader claims. The Court, however, held that a district court is free to decide infringement and likelihood of confusion issues as part of reviewing a TTAB decision. The TTAB review instituted by Smiley Company was both an appeal and a new action which allowed the Court to address new issues and to admit new evidence.
Finally, Wal-Mart’s Illinois Consumer Fraud and Deceptive Business Practices Act claim was not insufficient for failing to plead actual damages. While actual damages were required, they could not exist in a declaratory judgment claim seeking to prevent future acts and, therefore, future damages.
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Continue Reading Trademark Appeal is Both a New Case & an Appeal

WMS Gaming Inc. v. WPC Gaming Prods. Ltd., No. 07-3585, Slip Op. (7th Cir. Sep. 8, 2008) (Wood, J.).*
Judge Wood delivered the Seventh Circuit’s opinion reversing and revealing Judge Manning’s damages award. Plaintiff-Appellant WMS Gaming (“WMS”) alleged that defendants (collectively “PartyGaming”) infringed its JACKPOT PARTY and SUPER JACKPOT PARTY marks. Defendants chose not to participate in the suit. The Northern District, therefore, entered a default judgment for WMS and a permanent injunction. WMS sought $287M in damages, an amount equal to PartyGaming’s reported U.S. revenues during the relevant period. The Court, however, held that WMS was entitled to damages, not an equitable accounting of all of defendants revenues and awarded approximately $900K per year, or $2.7M total. As an initial matter, the Seventh Circuit held that Fed. R. Civ. P. 54(c) requires that in the case of a default judgment the award cannot differ from or exceed the type and amount of requested damages. Because WMS’s complaint and its subsequent pleadings all requested both an equitable accounting and actual damages, either were an allowable damages award.
Having determined that an equitable accounting was an appropriate remedy, the Court explained that WMS was entitled to an award of PartyGaming’s revenues attributable to PartyGaming’s trademark infringement. Further, WMS’s burden was only to prove PartyGaming’s revenue. WMS did that by proving PartyGaming’s $287M of U.S. revenues during the relevant period. The burden then shifted to PartyGaming to prove which portions of its revenue were not attributable to its infringement. The Seventh Circuit, therefore, reversed and remanded to the Northern District.
* Click here for the opinion and click here for a podcast of the oral argument.
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Continue Reading Trademark Plaintiff Entitled to All Defendants’ Revenue

RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, Slip Op (N.D. Ill. May 27, 2007) (Coar, J.).
Judge Coar denied defendant Sears, Roebuck & Co.’s (“Sears”) Fed. R. Civ. P. 50(b) motion for judgment as a matter of law and Fed. R. Civ. P. 59(a) motion for a new trial or a remittitur. And the Court granted plaintiff RRK Holding Co.’s (“RRK”) motion for pre-judgment and post-judgment interest. A jury previously returned a verdict finding Sears liable for breach of a nondisclosure agreement and misappropriation of RRK’s trade secret related to its spiral saw – click here for much more on this case in the Blog’s archives. The jury awarded RRK approximately $21M, including $11.6M in actual damages, $1.6M for unjust enrichment and $8M in punitive damages.
First, Sears argued that RRK offered insufficient evidence showing that Sears’ alleged misappropriation caused RRK’s damages. But the Court held that there was sufficient evidence to support the jury’s verdict. The fact that Sears’s price for its spiral saw was lower than RRK’s explained why customers purchased Sears’s saws over RRK’s, but the trade secret causation was shown by the fact that Sears sold the combination tool instead of selling the components separately.
Second, Sears argued that RRK’s damages should be limited to the traditional “head start” period (an estimate of the time it would take for defendant to develop the trade secret on its own). But the Court held that Illinois law limits injunctive relief to a head start period, but not monetary relief.
Third, the Court held that RRK’s damages expert was sufficiently credible and held that Sears had sufficient opportunity to challenge the expert’s methodologies during cross examination.
Fourth, Sears argued that the jury’s award was in error because it awarded damages based on the entire sales price of the spiral saws, instead of apportioning just that portion of the sales price related to RRK’s trade secrets. But the Court held that a rational jury could have determined that the reason the spiral saw was a success was because of the trade secret and that, therefore, apportionment was not required.
Fifth, Sears argued that RRK’s lost profits damages should have been cut-off when third party competitor Dremel entered the market with a competing spiral saw. But the Court held that it was unclear whether Dremel’s tool was similar enough to RRK’s trade secret to be a substitute for it.
The Court also held that the jury’s award was not excessive. But the Court did find that the jury erred in by using the wrong figure from RRK’s expert for actual lost profits. RRK also conceded that the jury used the wrong number. The Court, therefore, reduced the jury’s actual damages award from $11.6M (the incorrect figure) to $11.2M (the correct figure).
Finally, the Court awarded RRK both pre-judgment and post-judgment interest. Pre-judgment interest, which is awarded on equitable grounds, was appropriate because of the intentional nature of trade secret misappropriation. Additionally, the Court held that pre-judgment interest was appropriate even though RRK was also awarded punitive damages. The Court did, however, suggest that had the punitive damages award been multiples of the actual damages, pre-judgment interest might not have been appropriate. Sears did not challenge RRK’s motion for post-judgment interest.
The Court added $3.7M in pre-judgment interest to the $21M award and assessed post-judgment interest of $1,931.50 per day until the award was paid.
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Continue Reading RRK v. Sears: Judge Adds Interest to Jury Award

As promised last week, the jury instructions are now available — click here for a copy. Additionally, although the verdict form is not available electronically, the Court’s minute order (click here for a copy) gave some additional detail. The jury found for plaintiff RRK on each of eleven counts and awarded damages as follows:
Damages Award RRK’s Actual Losses $11,664,105
Sears’s Unjust Enrichment $1,688,136
Punitive Damages $8,011,344
Total Damages $21,363,585
For more on this case, click here for the Blog’s archives.
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Continue Reading RRK v. Sears: Jury Instructions