We have left out a detailed recount of the search and seizure of our home on December 8, 2006 as we have filed a lawsuit against the parties involved in that action. Our complaint (read here ...). Related press release (read here ...).
I don't think that one need experience an ex-parte search and seizure of your home first hand in order to appreciate what it must be like. Without any warning, a team of law enforcement, attorneys and perhaps a private investigator or two descend on your home. If you're home, they explain that they have a search and seizure warrant, issued by a Federal Court, and inform you that you have to let them into your home. If you are not at home, they will use 'reasonable force' to gain entry. They (In this case, it was the plaintiff's attorneys and agents that searched and seized) will poke and rifle through every area of your home. Open any drawer, closet or other personal/private space looking at anything they choose. They will make demands. They will stay as long as they like. When they leave, they will take with them, 'seize', anything they choose. It is a unique experience that will evoke many strong feelings and is not easily, if ever forgotten.
I am a software engineer who is able to work from home several days a week. I was working in my home office on December 8th, 2006 as my wife was not feeling well that morning and had gone back to bed after we got our two children off to school. Among other events that day, plaintiff's counsel demanded that they search my office and work computer. I consented to a search of my work computer as they threatened to seize it if I did not consent.
Although I was not named in the complaint or the court's search and seizure warrant ( the plaintiff knew my name, that my wife and I owned a home in Herndon, Virginia based upon their 'thorough' pre-raid investigation) and nothing was found in my office or on my computer to link or associate me with my wife's business, with hours of leaving our home, plaintiff's counsel froze all of our financial assets, checking and savings, individual or jointly held as well as personal credit cards. The raid occurred on a Friday, we were left to face the weekend and the coming weeks without access to funds of any kind. Here begins our brief and unsatisfactory foray into the judicial system.
Monday, March 23, 2009
To Litigate Or Not To Litigate?
When someone demands a six-figure amount and tells you that you "seriously underestimate your exposure in this matter", accompanied by vague threats about financial and "other assets", you tend to pay attention.
Our immediate problem, was that we did not have access to any of our bank accounts and credit cards. So we had to borrow money from friends and family. There was also the fact that we had a mortgage payment due. Up until this time, we had never been late with a payment. There were also utility payments and other bills, checks that had been written and so on.
We were able to find an attorney who agreed to meet with us early the next week. A note about attorneys, and finding the right one for your particular legal situation. It's not easy especially if you've never needed an attorney, you know nothing about the relevant law and you've pressed for time. This was a civil trademark matter and so we needed one with a trademark background. The inherent problem with this is the fact that these attorneys are plaintiff oriented. They represent clients with their trademark issues. We had been sued by a trademark owner, the claims were pretty damning and so we were viewed or considered out of the gate as being in the wrong. He had some sympathy for us as we told him our circumstances and he agreed to represent us for the purposes of settlement. It was not until many months later that we learned that his representation of us had been decidedly less than zealous. He explained that the Plaintiff had made a demand of 100,000 to settle the matter and asked if we could pay it. We were shocked by the amount and he said that this was a serious matter and since they had added me to the lawsuit, we stood to lose our home and other assets and my salary could be garnished for the next 20 years or so. Another shock. Why had they added me to the lawsuit??? we asked. The plaintiff thinks that you were financing your wife's business he replied. He prepared a stipulated preliminary injunction which would free up my salary so that we could pay our bills, but all of our other accounts would remain frozen. He also explained that we would not have to go to the post-seizure hearing on the 22nd. At the time we felt some relief when we signed this stipulated agreement. Of course we should not have signed it and we should have gone to the post-seizure hearing.
Months later I called him to ask him some questions about his initial conversations/communications with the other side. He asked how things were going and among other things, I explained to him that there seemed to be some doubt as to whether of not I was a defendant; my name appearing and disappearing from documents filed with the court. I told him that following a hearing in court earlier in the week, I had followed the plaintiff's attorney into the hall and asked him if I was a defendant in the lawsuit. He seemed taken aback by the question. How did I become a defendant? I asked. You were home the day of the search and seizure he replied. I was home? Are you kidding? I was not named in the complaint, I was never served I replied.
This got a reaction out of him. 'No, no, no, no no. Remember we talked about this and agreed that rather than put them to the trouble of amending their complaint, you agreed to stipulate to being a defendant.' I agreed to become a defendant??? When did I do that? I asked. When you signed the stipulated preliminary injunction he replied. We never had that conversation; who in their right mind would volunteer to become a defendant in a lawsuit??? Plus only by adding me could they threaten us the loss of our home and my future earnings. Unbelievable.
As settlement negotiations dragged on into April, my wife and I discussed how to get out this lawsuit and on with our lives. On the one hand, we were only a few thousand off in terms of plaintiff's demand for compensation. But the plaintiff had also indicated that there would be no further negotiation on the amount to settle. As the months passed and as we learned more about the relevant law, considered some of the abuses we had suffered to date, contemplated the conduct of the plaintiffs attorneys in executing the search and seizure warrant, we found that we were less inclined to settle the matter for any amount of money. That being said, had the plaintiff offered to take a reasonable amount to settle, we quickly would have accepted the offer.
It can be fairly argued that we had no choice but to take our chances in court. We did not have the money to settle (we decided that we would not borrow from friends of family) nor as our assets were frozen, could we hire an attorney and the plaintiff would not budge on the amount to settle. So we began to think about how this lawsuit would be litigated. The plaintiff would have to prove that the dresses we had been selling (although I had never bought nor sold a dress nor at any time had I encouraged my wife or anyone else to do so) were counterfeit. They had not given us notice and the trademark on the dresses does not display the r in a circle. If they did not prove that the dresses they had seized were counterfeit, then the plaintiffs claims against us would become far less threatening, toothless even. An infringement case to defend against maybe. At worst, an injunction and perhaps a small damage award and it would be over. We were also a bit emboldened at this point by the fact that:
Over seven months after the search and seizure of our home, the plaintiff finally got around to deposing my wife and I. During my deposition, I was asked on at least five different occasions, about the 'counterfeit dresses'. Each time the answer was phrased a bit differently; "do you now admit ..." or "don't you think that ...", knowing what you know now ..." aren't the dresses counterfeit? I became a bit annoyed when the question came up yet again. "You keep asking me the same question and I keep responding, that no, I did not, I do not, I don't think or believe that the dresses were/are counterfeit." "Why do you care what I think anyway?" I asked. "Are the dresses counterfeit?" I asked. "Do you have something, somewhere written down on a piece of paper that states the dresses are counterfeit?" I asked, "because if you do, I have not seen it." Of course I did not receive a response to this.
Following our depositions, my wife related that she too had been asked the same question, regarding counterfeit, repeatedly. Why did they care what we thought or believed regarding the dresses? What mattered of course was that they prove the dresses were counterfeit at trial. What we believe or did not believe regarding this fact would hardly matter at that point if we had nothing to refute this fact with. When discovery closed, there was no evidence before the court that the dresses were counterfeit.
Our immediate problem, was that we did not have access to any of our bank accounts and credit cards. So we had to borrow money from friends and family. There was also the fact that we had a mortgage payment due. Up until this time, we had never been late with a payment. There were also utility payments and other bills, checks that had been written and so on.
We were able to find an attorney who agreed to meet with us early the next week. A note about attorneys, and finding the right one for your particular legal situation. It's not easy especially if you've never needed an attorney, you know nothing about the relevant law and you've pressed for time. This was a civil trademark matter and so we needed one with a trademark background. The inherent problem with this is the fact that these attorneys are plaintiff oriented. They represent clients with their trademark issues. We had been sued by a trademark owner, the claims were pretty damning and so we were viewed or considered out of the gate as being in the wrong. He had some sympathy for us as we told him our circumstances and he agreed to represent us for the purposes of settlement. It was not until many months later that we learned that his representation of us had been decidedly less than zealous. He explained that the Plaintiff had made a demand of 100,000 to settle the matter and asked if we could pay it. We were shocked by the amount and he said that this was a serious matter and since they had added me to the lawsuit, we stood to lose our home and other assets and my salary could be garnished for the next 20 years or so. Another shock. Why had they added me to the lawsuit??? we asked. The plaintiff thinks that you were financing your wife's business he replied. He prepared a stipulated preliminary injunction which would free up my salary so that we could pay our bills, but all of our other accounts would remain frozen. He also explained that we would not have to go to the post-seizure hearing on the 22nd. At the time we felt some relief when we signed this stipulated agreement. Of course we should not have signed it and we should have gone to the post-seizure hearing.
Months later I called him to ask him some questions about his initial conversations/communications with the other side. He asked how things were going and among other things, I explained to him that there seemed to be some doubt as to whether of not I was a defendant; my name appearing and disappearing from documents filed with the court. I told him that following a hearing in court earlier in the week, I had followed the plaintiff's attorney into the hall and asked him if I was a defendant in the lawsuit. He seemed taken aback by the question. How did I become a defendant? I asked. You were home the day of the search and seizure he replied. I was home? Are you kidding? I was not named in the complaint, I was never served I replied.
This got a reaction out of him. 'No, no, no, no no. Remember we talked about this and agreed that rather than put them to the trouble of amending their complaint, you agreed to stipulate to being a defendant.' I agreed to become a defendant??? When did I do that? I asked. When you signed the stipulated preliminary injunction he replied. We never had that conversation; who in their right mind would volunteer to become a defendant in a lawsuit??? Plus only by adding me could they threaten us the loss of our home and my future earnings. Unbelievable.
As settlement negotiations dragged on into April, my wife and I discussed how to get out this lawsuit and on with our lives. On the one hand, we were only a few thousand off in terms of plaintiff's demand for compensation. But the plaintiff had also indicated that there would be no further negotiation on the amount to settle. As the months passed and as we learned more about the relevant law, considered some of the abuses we had suffered to date, contemplated the conduct of the plaintiffs attorneys in executing the search and seizure warrant, we found that we were less inclined to settle the matter for any amount of money. That being said, had the plaintiff offered to take a reasonable amount to settle, we quickly would have accepted the offer.
It can be fairly argued that we had no choice but to take our chances in court. We did not have the money to settle (we decided that we would not borrow from friends of family) nor as our assets were frozen, could we hire an attorney and the plaintiff would not budge on the amount to settle. So we began to think about how this lawsuit would be litigated. The plaintiff would have to prove that the dresses we had been selling (although I had never bought nor sold a dress nor at any time had I encouraged my wife or anyone else to do so) were counterfeit. They had not given us notice and the trademark on the dresses does not display the r in a circle. If they did not prove that the dresses they had seized were counterfeit, then the plaintiffs claims against us would become far less threatening, toothless even. An infringement case to defend against maybe. At worst, an injunction and perhaps a small damage award and it would be over. We were also a bit emboldened at this point by the fact that:
- the plaintiff seemed to want to settle this matter without litigation. Intractable about the amount but in no hurry to move forward. As January passed into February, March and then into April, we began to tire of this black cloud hanging over our heads and began to ignore this issue to some extent. Pay us money or we'll go forward! Alright, go forward already we thought. We never believed or thought for a minute that they wanted to settle out of some concern or interest for our well being.
- there was no proof that the dresses seized from our home were counterfeit. We both believed (still do) that the dresses were in fact genuine. The post-seizure declaration filed by the plaintiff states simply that 54 dresses 'bearing the DVF marks' had been seized from our home. Nothing about examining the dresses, not a word about counterfeit.
Over seven months after the search and seizure of our home, the plaintiff finally got around to deposing my wife and I. During my deposition, I was asked on at least five different occasions, about the 'counterfeit dresses'. Each time the answer was phrased a bit differently; "do you now admit ..." or "don't you think that ...", knowing what you know now ..." aren't the dresses counterfeit? I became a bit annoyed when the question came up yet again. "You keep asking me the same question and I keep responding, that no, I did not, I do not, I don't think or believe that the dresses were/are counterfeit." "Why do you care what I think anyway?" I asked. "Are the dresses counterfeit?" I asked. "Do you have something, somewhere written down on a piece of paper that states the dresses are counterfeit?" I asked, "because if you do, I have not seen it." Of course I did not receive a response to this.
Following our depositions, my wife related that she too had been asked the same question, regarding counterfeit, repeatedly. Why did they care what we thought or believed regarding the dresses? What mattered of course was that they prove the dresses were counterfeit at trial. What we believe or did not believe regarding this fact would hardly matter at that point if we had nothing to refute this fact with. When discovery closed, there was no evidence before the court that the dresses were counterfeit.
Pro Se in the Rocket Docket - Part 1
Things move quickly in the Rocket Docket (read here ...). We filed a motion to dismiss for failure to state a claim on which relief can be granted: Plaintiff did not give us notice and does not display the r in a circle on her trademarks. The language in 1111 is clear, no notice, no r in a circle, no damages. Plaintiff responded with Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., 1999 WL 285883 (E.D. Pa. 1999) (“[C]ongress intended to recognize that counterfeiting, while a subsection of infringement, represents a greater evil than ordinary infringement, and thus allowed an alternative route to damages and a less degree of required notice”).
An interesting case that bases an award of damages on an opinion as to 'Congresses intent' without an examination or analysis as to how the court devined or otherwise came to that opinion.
It is our opinion (read here ...) that an examination and analysis of the Supreme Court thought's on the matter (See Stark Brothers Nurseries v. Stark, 255 U.S. 756 (1921)), the legislative history of The Lanham Act, The Trademark Counterfeiting Act of 1984 and the Anticounterfeiting Consumer Protection Act of 1996 can reasonably and logically lead to a different conclusion. That 1111 remains the controlling section regarding an award of damages for claims brought under 15 USC, Chapter 22 - The Lanham Act.
Our motion to dismiss was denied by the court.
*An interesting note. At the hearing on our motion to dismiss, no fewer than six attorneys for the plaintiff were present and before the court to oppose our motion. An impressive show of force (against two pro se defendants) and no doubt an expensive day for the plaintiff.
We were shut out of discovery and the plaintiff other than deposing my wife and I (seven months after the fact), did not bother to discover anything. They did not need to as they had removed and copied nearly every personal and financial document from our home in December 2006. As we were unable to discover anything, we informed the Plaintiff that we were contemplating a motion to compel. Plaintiff responded that a motion to compel would in all likelihood result in a motion for sanctions. We never expected that we would be able to discover anything useful in discovery anyway and so we let this go.
We filed a motion to exclude witnesses and exhibits. There was nothing, no evidence before the court regarding 'counterfeit' dresses. Plaintiff's COO had submitted an affidavit in December 2006 attesting that a dress purchased from my wife had been examined and found to be counterfeit. She stated that ordinary consumers (would be confused) would not readily be able to determine a genuine dress from a counterfeit as it required "a trained eye". She went into some detail, providing specific facts as to how her trained eye was able to discern that the dress was a counterfeit. She had not been disclosed as an expert witness and so we wanted her excluded. Plaintiff responded that she was not an expert witness but a fact witness. She would be testifying about Plaintiff's trademarks.
Our motion was denied.
An interesting case that bases an award of damages on an opinion as to 'Congresses intent' without an examination or analysis as to how the court devined or otherwise came to that opinion.
It is our opinion (read here ...) that an examination and analysis of the Supreme Court thought's on the matter (See Stark Brothers Nurseries v. Stark, 255 U.S. 756 (1921)), the legislative history of The Lanham Act, The Trademark Counterfeiting Act of 1984 and the Anticounterfeiting Consumer Protection Act of 1996 can reasonably and logically lead to a different conclusion. That 1111 remains the controlling section regarding an award of damages for claims brought under 15 USC, Chapter 22 - The Lanham Act.
Our motion to dismiss was denied by the court.
*An interesting note. At the hearing on our motion to dismiss, no fewer than six attorneys for the plaintiff were present and before the court to oppose our motion. An impressive show of force (against two pro se defendants) and no doubt an expensive day for the plaintiff.
We were shut out of discovery and the plaintiff other than deposing my wife and I (seven months after the fact), did not bother to discover anything. They did not need to as they had removed and copied nearly every personal and financial document from our home in December 2006. As we were unable to discover anything, we informed the Plaintiff that we were contemplating a motion to compel. Plaintiff responded that a motion to compel would in all likelihood result in a motion for sanctions. We never expected that we would be able to discover anything useful in discovery anyway and so we let this go.
We filed a motion to exclude witnesses and exhibits. There was nothing, no evidence before the court regarding 'counterfeit' dresses. Plaintiff's COO had submitted an affidavit in December 2006 attesting that a dress purchased from my wife had been examined and found to be counterfeit. She stated that ordinary consumers (would be confused) would not readily be able to determine a genuine dress from a counterfeit as it required "a trained eye". She went into some detail, providing specific facts as to how her trained eye was able to discern that the dress was a counterfeit. She had not been disclosed as an expert witness and so we wanted her excluded. Plaintiff responded that she was not an expert witness but a fact witness. She would be testifying about Plaintiff's trademarks.
Our motion was denied.
Pro Se in the Rocket Docket - Part 2 - Summary Judgment
My wife had been working on a motion for summary judgment. Our thinking was that there was nothing in the court record to prove counterfeiting. It seemed worth a try. But it was a bit daunting as the issue of summary judgment is confusing, not being attorneys we had to study this, read allot of cases and that takes time. Just as we had a reasonable (under the circumstances) motion ready to go, the Plaintiff filed a motion for summary judgment.
The summary judgment standard is well established in this and other circuits. The Supreme Court has even weighed in on this subject. Usually it is the defendant that moves for summary judgment. If the motion is properly supported, in response, the plaintiff cannot come back with mere denials or assertions but with specific facts as would be admissible at trial. When the defendant moves for summary judgment, this circuit and others have long held that the plaintiff cannot respond with a conclusory affidavit. Specific facts as would be admissible at trial are required to defeat a properly supported motion for summary judgment.
It follows I think, that were the plaintiff moving for summary judgment, as was the case here, that a wholly conclusory affidavit would not be able to support, to properly support a motion for summary judgment. The affidavit that the plaintiff submitted to the court in support of it's summary judgment motion, dated one day prior to the motion, contains not one fact, specific or otherwise as to how the dresses were determined to be counterfeit. The dresses had been examined and were counterfeit. Period.
And this seems curious. The affiant states that the dresses had been sent to New York for examination three days prior to plaintiff's filing its motion for summary judgment. Nowhere is it stated that these were the same dresses that had been thoroughly examined after having been seized from our home in December 2006 nearly nine months previously. Wasn't this the same person who had examined the dresses following the seizure? And if so, why not attest then that the dresses were counterfeit? Knock out an affidavit and throw it into a file for future use. Or did no one between December 2006 and August 2007 bother to examine the dresses to determine whether or not they were counterfeit? What if they had been genuine? (not to say that they weren't) Plaintiff has prosecuted a counterfeiting case for nine months without bothering to determine if the seized items were counterfeit?
Plaintiff responded that "There had never been any dispute that the dresses were counterfeit." Which is true except for the fact that in our answer, we denied/disputed that the dresses were counterfeit. That in every court document where this 'fact' was raised, we disputed it. That we both denied this repeatedly in our depositions. That until the plaintiff moved for summary judgment, there was no evidence to proof of counterfeiting. That the affidavit submitted to support the motion for summary judgment was wholly conclusory.
Plaintiff's motion for summary judgment uses the word 'counterfeit', in some form, eighty-four times. Then there are the words 'damage' and 'harm' used in every imaginative and creative form possible. It is a very dramatic read. But if one strips away all of the sound and fury, the facts seem a little thin:
The court finds for the plaintiff on infringement of two marks against my wife and sets aside the claim against me and the issue of damages for a jury trial. Interestingly, the court in its opinion, does not make any reference to the conclusory affidavit regarding the seized dresses. The court grants a permanent injunction to plaintiff against both my wife and I.
* The court also grants that plaintiff may destroy the dresses. This is interesting as at the hearing on summary judgment, the dresses had not been brought into the court. We filed a motion for the court to reconsider allowing the plaintiff to destroy the dresses. This motion was denied.
The summary judgment standard is well established in this and other circuits. The Supreme Court has even weighed in on this subject. Usually it is the defendant that moves for summary judgment. If the motion is properly supported, in response, the plaintiff cannot come back with mere denials or assertions but with specific facts as would be admissible at trial. When the defendant moves for summary judgment, this circuit and others have long held that the plaintiff cannot respond with a conclusory affidavit. Specific facts as would be admissible at trial are required to defeat a properly supported motion for summary judgment.
It follows I think, that were the plaintiff moving for summary judgment, as was the case here, that a wholly conclusory affidavit would not be able to support, to properly support a motion for summary judgment. The affidavit that the plaintiff submitted to the court in support of it's summary judgment motion, dated one day prior to the motion, contains not one fact, specific or otherwise as to how the dresses were determined to be counterfeit. The dresses had been examined and were counterfeit. Period.
And this seems curious. The affiant states that the dresses had been sent to New York for examination three days prior to plaintiff's filing its motion for summary judgment. Nowhere is it stated that these were the same dresses that had been thoroughly examined after having been seized from our home in December 2006 nearly nine months previously. Wasn't this the same person who had examined the dresses following the seizure? And if so, why not attest then that the dresses were counterfeit? Knock out an affidavit and throw it into a file for future use. Or did no one between December 2006 and August 2007 bother to examine the dresses to determine whether or not they were counterfeit? What if they had been genuine? (not to say that they weren't) Plaintiff has prosecuted a counterfeiting case for nine months without bothering to determine if the seized items were counterfeit?
Plaintiff responded that "There had never been any dispute that the dresses were counterfeit." Which is true except for the fact that in our answer, we denied/disputed that the dresses were counterfeit. That in every court document where this 'fact' was raised, we disputed it. That we both denied this repeatedly in our depositions. That until the plaintiff moved for summary judgment, there was no evidence to proof of counterfeiting. That the affidavit submitted to support the motion for summary judgment was wholly conclusory.
Plaintiff's motion for summary judgment uses the word 'counterfeit', in some form, eighty-four times. Then there are the words 'damage' and 'harm' used in every imaginative and creative form possible. It is a very dramatic read. But if one strips away all of the sound and fury, the facts seem a little thin:
- Plaintiff offers no evidence of sales, advertising and related expenditures, media/press coverage of any kind. No certified copy of the mark (or marks ...) in question. Not even a single copy/photo of the mark (or marks) in question. No evidence of prior enforcement of the mark (or marks) in question. No evidence of actual damages.
- Sixty-four dresses.
- A wholly conclusory affidavit upon which their whole case rests, to proof of counterfeiting.
The court finds for the plaintiff on infringement of two marks against my wife and sets aside the claim against me and the issue of damages for a jury trial. Interestingly, the court in its opinion, does not make any reference to the conclusory affidavit regarding the seized dresses. The court grants a permanent injunction to plaintiff against both my wife and I.
* The court also grants that plaintiff may destroy the dresses. This is interesting as at the hearing on summary judgment, the dresses had not been brought into the court. We filed a motion for the court to reconsider allowing the plaintiff to destroy the dresses. This motion was denied.
Pro Se in the Rocket Docket - Part 3 - Going to Trial?
So we began the task of preparing for trial. Studying the rules of evidence, preparing exhibits. Very time consuming and as it would turn out, time completely wasted. Except for the time spent reviewing the jury instructions. We could not find anything, any instructions regarding damage awards that was not controlled by section 1111. So we were curious to see how this might play out in court before a jury.
One week before the jury trial on damages, we received a call from the court to schedule a 'telephone conference'. We were given no explanation as to why. We learned the following day, that the plaintiff wanted to voluntarily dismiss certain claims. The claim of contributory infringement against me and the claim of willfulness against my wife.
In the first of three conferences (Sept 21, 2007), plaintiff's attorney explained that they wanted to nonsuit the claim of willfulness as "there is only a limited amount that my client could hope to recover." The claim against me; "Now it's a little less easy but basically the same with respect to the contributory infringement claim against Richard Snyder. It just seemed to us it didn't merit taking a jury and the Court's time for these issues that didn't seem to us to have a --" At this point the Court jumps in with both feet cutting him off. "So the only issue would be the statutory damages?"
Really wish the Court had allowed plaintiff's attorney to finish his thought. "...issues that didn't seem to us to have a --" What? A contributory infringement claim has three elements and the plaintiff was not remotely warm on one, let alone all three. In December 2006, you searched my home, my personal office, my computer and found nothing to tie me to my wife's business in any way. You added me to the lawsuit anyway, you waited nearly eight months to depose my wife and I and found out that I occasionally carried boxes upstairs for her. You threaten my wife and I, our two sons with the loss of our home and 'other assets' and now to avoid going before a jury, you voluntarily want to dismiss your claim against me? These claims were dismissed with prejudice.
The conference continues with plaintiff's counsel explaining to the court that a jury is not needed for statutory damages "... the amount of statutory damages is a question solely for the Court." The Court responds, "Okay, do you want to get me something by Tuesday telling me why we don't need a jury?" Here it gets interesting.
Plaintiff's counsel: "Does your honor have -- certainly, I can do that. Did your honor receive -- we filed a motion yesterday." The Court: "We haven't gotten it yet. It's probably downstairs." We are having a phone conference, which was scheduled the day before the plaintiff had filed its motion, the judge is fully briefed and yet the motion is still downstairs. Or maybe this type of thing happens all the time.
The second 'phone conference' (September 26, 2007) begins on an issue that we had raised at summary judgment. Throughout this whole action, beginning with the various documents filed with the court in bringing suit, the Plaintiff had maintained infringement of marks, always in the plural. We did not catch this until summary judgment as we we thought that they were referring to one mark and the fact they seized fifty-four dresses from our home. But it turns out that plaintiff was claiming infringement of two distinct marks. The 'Diane Von Furstenberg' and 'DVF' marks. There was never any evidence of use of the DVF mark. This mark was not on the dress purchased in November 2006 nor on any of the dresses seized from our home in December 2006. Yet at summary judgment, plaintiff was requesting an award of one million dollars for the use of this mark. At the summary judgment hearing, we introduced into evidence, a copy of this mark and explained to the court that we had never seen, much less infringed on this mark and there was no evidence before the court that we had.
The Court: "... are you going to put on evidence of the infringing mark DVF and Diane Von Furstenberg or just Diane Von Furstenberg?" "We would put on evidence of both. I think -- I thought we had evidence of both in our summary judgment brief."
At this point, we know that there is no evidence of the DVF mark. The court seems to be aware of this as well: The Court: "Okay, I don't know that you do as to DVF. So you may have to present some evidence as to that." Never mind that discovery closed two months previously and that the damages trial before a jury is now three days away (this was Wednesday and the trial is the coming Monday) but the court is nothing if not fair and gives Plaintiff's counsel some additional time to sort this out. The Court: "Well, let us know tomorrow. What time can you let us know?" But another interesting part here...
Plaintiff's counsel: "What I might do -- and I'd have to think this through your honor. I'm just throwing this out as a possibility. Perhaps we move -- if it's not there, we move for summary judgment on it. If we don't get it, that's the end of it. It's either there or it's not."
Again, we are not attorneys but it seems that to move for summary judgment on this, the very idea itself to be a strange one. Plaintiff's counsel is proposing to move for summary judgment on plaintiff's claim for infringement of the 'DVF' mark for which they have no evidence of infringement and then we would have to come back with specific facts as would be admissible at trial, that plaintiff does not have any evidence that we infringed on the 'DVF' mark? That's overly confusing.
Also, that would be a motion that has to be filed and a hearing set. And then the trial date being just a few (three) short days ahead. Wouldn't an emergency motion for another trial date have to be filed? And a hearing noticed and then we would surely oppose this motion. And what would the grounds be for an extension of time? Plaintiff's counsel in this matter are the experts in trademark law. The law firm ranked number one in Intellectual Property representation. They have had better part of a year to put this case together and prosecute it against two pro se defendants.
We remain curious as to how this would have played out. It's like being forced to watch a movie. In spite of yourself, you get caught up in the plot and after having set through three quarters of the movie, you're now forced to leave before you see how it turns out. The court likely would have granted any motion that the plaintiff filed regardless of our opposition; but then at the jury trial on damages how would statutory damages been awarded (no notice, no r in a circle)?
The issue of the DVF mark was resolved in a decidedly anti-climatic manner. No motion for summary judgment. No motion for a new trial date. In the third phone conference (September 27, 2007) , when asked how plaintiff wanted to proceed on the DVF mark, plaintiff's counsel simply stated "One, we did not find what I thought had been there. So take that one out." 'Take that one out' is not a legal term that we are familiar with; reserved no doubt for use in only limited and very unique circumstances.
The court winds things up telling my wife that she is not entitled to a jury trial on damages. The Court: "... you won't need them now if it's statutory damages, you're not entitled to a jury trial. So unfortunately, both of you are going to have to let me decide it."
Regarding a right to a jury trial on statutory damages, the Supreme Court actually weighed in on this subject in 1998 and unanimously decided that the Seventh Amendment provides that parties have a constitutional right to jury trials in suits seeking statutory damages. (See article here ...).
It should also be noted that when Diane Von Furstenberg studios filed their complaint, they demanded a jury trial on all issues.
In addition to the Supreme Court opinion on the right to a jury trial on statutory damages, the Federal Rules of Civil Procedure Rule 38: "Right to a Jury Trial; Demand"
38 (a) reads: "The right of trial by jury as declared by the Seventh Amendment to the Constitution — or as provided by a federal statute — is preserved to the parties inviolate."
38 (b) reads: "A proper demand may be withdrawn only if the parties consent."
The third phone conference (September 27, 2007) concludes with:
Mrs. Snyder: "So what are we doing on Monday?" The Court: "Damages." Mrs. Snyder: "Just a hearing on damages?" The Court: "Yes, ma'am."
One week before the jury trial on damages, we received a call from the court to schedule a 'telephone conference'. We were given no explanation as to why. We learned the following day, that the plaintiff wanted to voluntarily dismiss certain claims. The claim of contributory infringement against me and the claim of willfulness against my wife.
In the first of three conferences (Sept 21, 2007), plaintiff's attorney explained that they wanted to nonsuit the claim of willfulness as "there is only a limited amount that my client could hope to recover." The claim against me; "Now it's a little less easy but basically the same with respect to the contributory infringement claim against Richard Snyder. It just seemed to us it didn't merit taking a jury and the Court's time for these issues that didn't seem to us to have a --" At this point the Court jumps in with both feet cutting him off. "So the only issue would be the statutory damages?"
Really wish the Court had allowed plaintiff's attorney to finish his thought. "...issues that didn't seem to us to have a --" What? A contributory infringement claim has three elements and the plaintiff was not remotely warm on one, let alone all three. In December 2006, you searched my home, my personal office, my computer and found nothing to tie me to my wife's business in any way. You added me to the lawsuit anyway, you waited nearly eight months to depose my wife and I and found out that I occasionally carried boxes upstairs for her. You threaten my wife and I, our two sons with the loss of our home and 'other assets' and now to avoid going before a jury, you voluntarily want to dismiss your claim against me? These claims were dismissed with prejudice.
The conference continues with plaintiff's counsel explaining to the court that a jury is not needed for statutory damages "... the amount of statutory damages is a question solely for the Court." The Court responds, "Okay, do you want to get me something by Tuesday telling me why we don't need a jury?" Here it gets interesting.
Plaintiff's counsel: "Does your honor have -- certainly, I can do that. Did your honor receive -- we filed a motion yesterday." The Court: "We haven't gotten it yet. It's probably downstairs." We are having a phone conference, which was scheduled the day before the plaintiff had filed its motion, the judge is fully briefed and yet the motion is still downstairs. Or maybe this type of thing happens all the time.
The second 'phone conference' (September 26, 2007) begins on an issue that we had raised at summary judgment. Throughout this whole action, beginning with the various documents filed with the court in bringing suit, the Plaintiff had maintained infringement of marks, always in the plural. We did not catch this until summary judgment as we we thought that they were referring to one mark and the fact they seized fifty-four dresses from our home. But it turns out that plaintiff was claiming infringement of two distinct marks. The 'Diane Von Furstenberg' and 'DVF' marks. There was never any evidence of use of the DVF mark. This mark was not on the dress purchased in November 2006 nor on any of the dresses seized from our home in December 2006. Yet at summary judgment, plaintiff was requesting an award of one million dollars for the use of this mark. At the summary judgment hearing, we introduced into evidence, a copy of this mark and explained to the court that we had never seen, much less infringed on this mark and there was no evidence before the court that we had.
The Court: "... are you going to put on evidence of the infringing mark DVF and Diane Von Furstenberg or just Diane Von Furstenberg?" "We would put on evidence of both. I think -- I thought we had evidence of both in our summary judgment brief."
At this point, we know that there is no evidence of the DVF mark. The court seems to be aware of this as well: The Court: "Okay, I don't know that you do as to DVF. So you may have to present some evidence as to that." Never mind that discovery closed two months previously and that the damages trial before a jury is now three days away (this was Wednesday and the trial is the coming Monday) but the court is nothing if not fair and gives Plaintiff's counsel some additional time to sort this out. The Court: "Well, let us know tomorrow. What time can you let us know?" But another interesting part here...
Plaintiff's counsel: "What I might do -- and I'd have to think this through your honor. I'm just throwing this out as a possibility. Perhaps we move -- if it's not there, we move for summary judgment on it. If we don't get it, that's the end of it. It's either there or it's not."
Again, we are not attorneys but it seems that to move for summary judgment on this, the very idea itself to be a strange one. Plaintiff's counsel is proposing to move for summary judgment on plaintiff's claim for infringement of the 'DVF' mark for which they have no evidence of infringement and then we would have to come back with specific facts as would be admissible at trial, that plaintiff does not have any evidence that we infringed on the 'DVF' mark? That's overly confusing.
Also, that would be a motion that has to be filed and a hearing set. And then the trial date being just a few (three) short days ahead. Wouldn't an emergency motion for another trial date have to be filed? And a hearing noticed and then we would surely oppose this motion. And what would the grounds be for an extension of time? Plaintiff's counsel in this matter are the experts in trademark law. The law firm ranked number one in Intellectual Property representation. They have had better part of a year to put this case together and prosecute it against two pro se defendants.
We remain curious as to how this would have played out. It's like being forced to watch a movie. In spite of yourself, you get caught up in the plot and after having set through three quarters of the movie, you're now forced to leave before you see how it turns out. The court likely would have granted any motion that the plaintiff filed regardless of our opposition; but then at the jury trial on damages how would statutory damages been awarded (no notice, no r in a circle)?
The issue of the DVF mark was resolved in a decidedly anti-climatic manner. No motion for summary judgment. No motion for a new trial date. In the third phone conference (September 27, 2007) , when asked how plaintiff wanted to proceed on the DVF mark, plaintiff's counsel simply stated "One, we did not find what I thought had been there. So take that one out." 'Take that one out' is not a legal term that we are familiar with; reserved no doubt for use in only limited and very unique circumstances.
The court winds things up telling my wife that she is not entitled to a jury trial on damages. The Court: "... you won't need them now if it's statutory damages, you're not entitled to a jury trial. So unfortunately, both of you are going to have to let me decide it."
Regarding a right to a jury trial on statutory damages, the Supreme Court actually weighed in on this subject in 1998 and unanimously decided that the Seventh Amendment provides that parties have a constitutional right to jury trials in suits seeking statutory damages. (See article here ...).
It should also be noted that when Diane Von Furstenberg studios filed their complaint, they demanded a jury trial on all issues.
In addition to the Supreme Court opinion on the right to a jury trial on statutory damages, the Federal Rules of Civil Procedure Rule 38: "Right to a Jury Trial; Demand"
38 (a) reads: "The right of trial by jury as declared by the Seventh Amendment to the Constitution — or as provided by a federal statute — is preserved to the parties inviolate."
38 (b) reads: "A proper demand may be withdrawn only if the parties consent."
The third phone conference (September 27, 2007) concludes with:
Mrs. Snyder: "So what are we doing on Monday?" The Court: "Damages." Mrs. Snyder: "Just a hearing on damages?" The Court: "Yes, ma'am."
Pro Se in the Rocket Docket - Part 4 - Hearing on Damages
The hearing on damages turned out to be a 'bench trial'; much as the 'phone conferences' of Sept 21, 26 & 27 we later found out were 'hearings'. Anyway, we had been to a number of hearings. Brief appearances before the court, quickly over. We we're not prepared for a bench trial and I had to run home and get our exhibits and other documents. The court later remarked to being 'stymied' that we had not been prepared for a bench trial. So the day got off to a bad start and only went downhill from there.
The seized dresses were in the courtroom that day hanging on a clothes rack to one side of the court. Even though as I relate in an earlier post (Pro Se in the Rocket Docket - Part 2 - Summary Judgment) the court had given the dresses to plaintiff to destroy. We had motioned to the court to reconsider this and the court had denied this motion. But here were the dresses which we had not seen since they had been seized in December 2006. The hearing concluded and the judge left the bench and went to his chambers.
My wife went over with one of the baliffs and began to match up numbered pictures of the dresses with the actual dresses. I was sitting and waiting for this day to finally be over when I heard my wife say: "Wait a minute, something is wrong here." At this point there were still a number of people in the courtroom packing up their things, making preparations to leave. Several baliffs, the court reporter, court clerks and plaintiff's counsel (two). We all began to take note of what was going on over where the dresses were. What my wife had discovered as she and the baliff matched a numbered photocopy of a picture of a dress with an actual numbered exhibit/dress, the 'something being wrong' that my wife was commenting on was that:
The hearing two days later was a short one. The court was clearly not happy about the hearing growling from the bench "the appellate court is not going to want to see any dresses!". The 'dresses' were given over to the plaintiff's attorneys and that was it. Our days as pro se litigants, defending ourselves in federal court were over. No more late nights learning about the law, procedure and rules. Endless hours spent finding and reading cases, drafting documents and rushing to the court to file. Thankfully done with that.
The seized dresses were in the courtroom that day hanging on a clothes rack to one side of the court. Even though as I relate in an earlier post (Pro Se in the Rocket Docket - Part 2 - Summary Judgment) the court had given the dresses to plaintiff to destroy. We had motioned to the court to reconsider this and the court had denied this motion. But here were the dresses which we had not seen since they had been seized in December 2006. The hearing concluded and the judge left the bench and went to his chambers.
My wife went over with one of the baliffs and began to match up numbered pictures of the dresses with the actual dresses. I was sitting and waiting for this day to finally be over when I heard my wife say: "Wait a minute, something is wrong here." At this point there were still a number of people in the courtroom packing up their things, making preparations to leave. Several baliffs, the court reporter, court clerks and plaintiff's counsel (two). We all began to take note of what was going on over where the dresses were. What my wife had discovered as she and the baliff matched a numbered photocopy of a picture of a dress with an actual numbered exhibit/dress, the 'something being wrong' that my wife was commenting on was that:
- there were not sixty-four exhibits/dresses in the courtroom but only sixty. Of the sixty exhibits:
- two were clearly slips, not dresses and bore no trademark of any kind
- one was clearly a 'coat'
- one was a detachable collar of some sort bearing no trademark of any kind
The hearing two days later was a short one. The court was clearly not happy about the hearing growling from the bench "the appellate court is not going to want to see any dresses!". The 'dresses' were given over to the plaintiff's attorneys and that was it. Our days as pro se litigants, defending ourselves in federal court were over. No more late nights learning about the law, procedure and rules. Endless hours spent finding and reading cases, drafting documents and rushing to the court to file. Thankfully done with that.
Pro Se in the Rocket Docket - Part 5 - Post Bench Trial
Have to come back to the 'dresses'. Per plaintiff's post seizure declaration, plaintiff's attorneys seized 54 (fifty-four) dresses from our home in Dec 2006. We delivered to plaintiff's attorneys an additional 9 (nine) dresses in the days following the seizure for a total of 63 (sixty-three) dresses. Plaintiff's COO attested in her Aug 8th 2007 affidavit that plaintiff's counsel had sent her 64 (sixty-four) dresses on August 7, 2007. She then thoroughly examined these 64 dresses and without disclosing a single fact as to how she had determined the dresses were counterfeit, stated that the dresses were counterfeit. Again (as she had in her November 2006 affidavit) she states that "it takes a trained eye", to discern the subtle differences between a 'genuine' and a 'counterfeit' dress.
The exact number of dresses remains elusive. Plaintiff's counsel did not have 63 dresses in their control to send to New York for thorough examination. Yet the affiant declares that she examined 64 dresses. Plaintiff's counsel only brought 60 dresses into the courtroom for the damages bench trial. Plaintiff's counsel concedes that four of the dresses were not dresses at all leaving them with 56 dresses.
So there are some obvious questions regarding the 'ultimate issue' in this case and we think that they are hard to explain away. Again, we did not go to law school but you seize counterfeit items, in this case 'dresses', not clothing, not garments but 'dresses'. You count the dresses. Someone examines the dresses (they had to be examined prior to the post seizure declaration to the court ...) and then you throw them into a box, labeled "63 dresses/evidence/Snyder/06cv1356-VA" or something to that effect and you're done. Eight months later you send them to someone to examine (re-examine?). The box is opened and the dresses scrutinized with a 'trained eye'. Write your affidavit, close up the box to be returned to plaintiff's counsel and again, your done. How hard is that?
But it would seem clear after some simple arithmetic, that plaintiff's counsel did not have 64 dresses to send to New York. Or they had 64 'items', dresses, slips, a coat and a detachable collar and the 'trained eye' failed to note that a slip is not a dress, a coat is not a dress and that a collar is not a dress. Or she did note this but failed to ..., what? Be precise in her affidavit? Possible I guess. But why did plaintiff's counsel bring only 60 dresses/items into court for the damages bench trial. 4 of the dresses not being dresses, leaving them with only 56 dresses?
In plaintiff's response to our apellate court brief, regarding the dresses, we were assured that "precise number is irrelevant." It could be 64, 60, 54 "or some similar number".
There is one last area of confusion regarding the dresses. Also in plaintiff's response to our appellate court brief, plaintiff states the dresses were "precise copies, down to the cut, style and fabric" But in the two affidavits submitted by plaintiff's COO, as well as scattered through the various documents filed throughout this action, it was stated that the dresses were of shoddy workmanship, poor copies of a genuine dress. So which is it? Precise copies requiring a trained eye or shoddily constructed knockoffs?
It makes sense that they were 'precise copies'. But that raises the question again as to whether or not plaintiff's COO was an expert or lay witness. If it requires a 'trained eye' to distinguish between genuine and counterfeit dresses, then clearly she has some 'specialized knowledge' that an ordinary consumer would not. By definition, that would have made her an expert witness.
Perhaps others may be in a better position to consider these lingering questions. Are we being to hard on the plaintiff and her counsel here? This is only counterfeit trademark infringement after all. One mark or two marks allegedly infringed upon. Does the number of marks really matter? Maybe the precise number of dresses is irrelevant. Pick a number between 54 and 64. I guess that we expected that a high level of precision would be required when one is seeking millions of dollars in statutory damages under the Lanham Act. Or maybe pursuing infringement actions in federal court is really not that demanding after all. Be reasonably precise, fairly accurate in your claims and related proof to those claims. The other side will just have to get over it.
The exact number of dresses remains elusive. Plaintiff's counsel did not have 63 dresses in their control to send to New York for thorough examination. Yet the affiant declares that she examined 64 dresses. Plaintiff's counsel only brought 60 dresses into the courtroom for the damages bench trial. Plaintiff's counsel concedes that four of the dresses were not dresses at all leaving them with 56 dresses.
So there are some obvious questions regarding the 'ultimate issue' in this case and we think that they are hard to explain away. Again, we did not go to law school but you seize counterfeit items, in this case 'dresses', not clothing, not garments but 'dresses'. You count the dresses. Someone examines the dresses (they had to be examined prior to the post seizure declaration to the court ...) and then you throw them into a box, labeled "63 dresses/evidence/Snyder/06cv1356-VA" or something to that effect and you're done. Eight months later you send them to someone to examine (re-examine?). The box is opened and the dresses scrutinized with a 'trained eye'. Write your affidavit, close up the box to be returned to plaintiff's counsel and again, your done. How hard is that?
But it would seem clear after some simple arithmetic, that plaintiff's counsel did not have 64 dresses to send to New York. Or they had 64 'items', dresses, slips, a coat and a detachable collar and the 'trained eye' failed to note that a slip is not a dress, a coat is not a dress and that a collar is not a dress. Or she did note this but failed to ..., what? Be precise in her affidavit? Possible I guess. But why did plaintiff's counsel bring only 60 dresses/items into court for the damages bench trial. 4 of the dresses not being dresses, leaving them with only 56 dresses?
In plaintiff's response to our apellate court brief, regarding the dresses, we were assured that "precise number is irrelevant." It could be 64, 60, 54 "or some similar number".
There is one last area of confusion regarding the dresses. Also in plaintiff's response to our appellate court brief, plaintiff states the dresses were "precise copies, down to the cut, style and fabric" But in the two affidavits submitted by plaintiff's COO, as well as scattered through the various documents filed throughout this action, it was stated that the dresses were of shoddy workmanship, poor copies of a genuine dress. So which is it? Precise copies requiring a trained eye or shoddily constructed knockoffs?
It makes sense that they were 'precise copies'. But that raises the question again as to whether or not plaintiff's COO was an expert or lay witness. If it requires a 'trained eye' to distinguish between genuine and counterfeit dresses, then clearly she has some 'specialized knowledge' that an ordinary consumer would not. By definition, that would have made her an expert witness.
Perhaps others may be in a better position to consider these lingering questions. Are we being to hard on the plaintiff and her counsel here? This is only counterfeit trademark infringement after all. One mark or two marks allegedly infringed upon. Does the number of marks really matter? Maybe the precise number of dresses is irrelevant. Pick a number between 54 and 64. I guess that we expected that a high level of precision would be required when one is seeking millions of dollars in statutory damages under the Lanham Act. Or maybe pursuing infringement actions in federal court is really not that demanding after all. Be reasonably precise, fairly accurate in your claims and related proof to those claims. The other side will just have to get over it.
Opinion on Damages
We had to wait a month for the court to render its opinion on damages. As each week passed, I thought that it might mean that the court would come back in our favor with a small damage award to the plaintiff. But my wife was fairly certain that that would not be the case. As usual, she was right. The court ordered the maximum statutory award under 1117(c) for non willful infringement.
We had motioned to dismiss plaintiffs claims (see Pro Se in the Rocket Docket - Part 1) because we had not been given notice and because plaintiff does not use the r in a circle on her marks. 1111 is clear, no notice, no r in a circle, no damages. But plaintiff had responded with Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., 1999 285883 (E.D. Pa. 1999), an alternate route to damages circumventing 1111 and the court had denied our motion.
In the courts opinion on damages, it awarded damages pursuant to 1111 stating that we overlooked the fact the we had received 'constructive notice' (1072) and so the plaintiff was entitled to damages. What happened to Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc.? Damages awarded without having to go through 1111? The 'evil of counterfeiting' and divining Congress's intent?
Section 22 of the Lanham Act reads:
§1111. Notice of registration; display with mark; recovery of profits and damages in infringement suit
Notwithstanding the provisions of section 22 hereof [15 USC 1072], a registrant of a mark registered in the Patent Office, may give notice that his mark is registered by displaying with the mark the words "Registered in U. S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus (R); and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.
The court awarded damages under 1111 ignoring or seeming not to understand the meaning of the word 'notwithstanding'. Definitions of the word notwithstanding include "Nevertheless, all the same; In spite of, despite, even so". The court, even though denying our motion to dismiss for failure to state a claim under which relief can be granted (damages) by citing Playboy Enterprises, Inc. v. Universal Tel-A-Talk, awards damages under 1111 by ignoring the plain and well understood legal definition of the word 'notwithstanding'. This was a good issue to appeal on and we thought that the appellate court would set aside the lower court's damage award.
We also thought that perhaps the judge had finally decided to throw us a bone and of course we were again wrong.
We had motioned to dismiss plaintiffs claims (see Pro Se in the Rocket Docket - Part 1) because we had not been given notice and because plaintiff does not use the r in a circle on her marks. 1111 is clear, no notice, no r in a circle, no damages. But plaintiff had responded with Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., 1999 285883 (E.D. Pa. 1999), an alternate route to damages circumventing 1111 and the court had denied our motion.
In the courts opinion on damages, it awarded damages pursuant to 1111 stating that we overlooked the fact the we had received 'constructive notice' (1072) and so the plaintiff was entitled to damages. What happened to Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc.? Damages awarded without having to go through 1111? The 'evil of counterfeiting' and divining Congress's intent?
Section 22 of the Lanham Act reads:
§1111. Notice of registration; display with mark; recovery of profits and damages in infringement suit
Notwithstanding the provisions of section 22 hereof [15 USC 1072], a registrant of a mark registered in the Patent Office, may give notice that his mark is registered by displaying with the mark the words "Registered in U. S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus (R); and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.
The court awarded damages under 1111 ignoring or seeming not to understand the meaning of the word 'notwithstanding'. Definitions of the word notwithstanding include "Nevertheless, all the same; In spite of, despite, even so". The court, even though denying our motion to dismiss for failure to state a claim under which relief can be granted (damages) by citing Playboy Enterprises, Inc. v. Universal Tel-A-Talk, awards damages under 1111 by ignoring the plain and well understood legal definition of the word 'notwithstanding'. This was a good issue to appeal on and we thought that the appellate court would set aside the lower court's damage award.
We also thought that perhaps the judge had finally decided to throw us a bone and of course we were again wrong.
Our Appeal
Of our appeal, I can only say that given our experience in the lower court, I was and remain highly skeptical that the 'issues' with our appeal were honest 'mistakes' that are common in any process. We filed our intent to appeal in a timely fashion and then filed our brief in a timely fashion as well. A few days after the plaintiff filed it's response, we received a Rule 15 notice that our appeal was going to be dismissed as we had not filed our brief. I looked at the docket and the docket entry for our brief was gone (it had been there the last time I looked). huh? I began to click on the links for the various docket entries and found our brief behind the link for the plaintiff's response. I called the clerks office in Richmond, Va and was able to get a clerk on the phone. She was pleasant and helpful. I gave her the case number and she looked it up. I explained the problem and then she put me on hold for a few minutes. The senior clerk came on the line and I explained the problem to her, both of us looking at the docket entries. 'So you see our brief and the date time stamp', right? She did not reply but put me on hold for a long time. When she came back she was clearly not in a good mood about this. I asked her, nicely, about the missing docket entry. She replied tersely, I'm correcting it now. Great, thanks I said. And about the Rule 15 notice. She replied, I'll send it out. Is there anything else I can help you with? she asked with some real attitude. Uhm, no that's it, I replied. Thanks again.
Months go by and we reviewed the opinions posted by the court a couple of times a week. We then checked the case numbers against the filing dates to get a sense of the timing; how long it takes for a case to make its way before the court. After seven months I believe, it seemed that our case should be close (if not already ...) to being before the court . I called the clerks office again, a nice, pleasant clerk picked up; I asked, in general/rough terms, when our case might be before the court. She said, 'Oh, It looks like this should have been heard (not sure if she used the word 'heard' or something else) already. She put me on hold for several minutes. The clerk I had spoken to months ago regarding the Rule 15, docket entry issue came on the phone. Again, she was not in a good mood. What is your question? she asked. So again, just asking, in general/rough terms when the court might get to our case. She said, we're waiting on the court record. Okay I said. Can you tell me when you think you might receive it from the District Court? No. Well, once you do get the record, can you give me a general/rough guess as to when our case might get before the court? No. Would it help if I called the District Court and asked about the record, when they might get it to you? No, I'll take care of it. Great, thanks I said. Will there be anything else I can help you with she asked. No, thank you again.
So I called the District Court and spoke with the woman who handles these requests and gave her our case number. No, she have not received a request for the record she said. When you do get these requests, how long does it usually take to get the record to Richmond I asked. It depends she said. She said that she would follow up with the court in Richmond. The clerk in Richmond called me the next to tell me that the record had been requested from the District Court. Great I said, thanks for you help. Can you give me a general/rough guess as to when our case might get before the court, once the record arrives I asked. No.
We finally get the appellate court opinion after a nine month wait. It was the standard three paragraph opinion upholding the lower courts decision with an '*'.
The appellate court remedied the lower courts 'harmless error' (damages under 1111) and in a footnote without citing or otherwise referring to Playboy Enterprises, Inc. v. Universal Tel-A-Talk (or any other case) awarded damages based on "*1116(d)(1)(B) & 1117(c)."
So here's what we think happened. The District Court did not want to award damages pursuant to Playboy Enterprises, Inc. v. Universal Tel-A-Talk because then the appellate court would (should) have to consider this award either affirming or denying the reasoning behind the 3rd circuit court decision. It is my opinion that the courts reasoning (and subsequent damage award pursuant to Playboy Enterprises, Inc. v. Universal Tel-A-Talk) amounts to a straw man argument that will eventually be knocked down by another court. The 4th circuit appellate court in 'correcting' the District Court's harmless error in our case, ducks Playboy Enterprises, Inc. v. Universal Tel-A-Talk all together. So anyone researching, looking for trademark cases and damage awards that circumvent 1111 will almost certainly never find this case and it appears that the 4th circuit has not considered this issue when in fact, it has. That seems pretty clever.
Months go by and we reviewed the opinions posted by the court a couple of times a week. We then checked the case numbers against the filing dates to get a sense of the timing; how long it takes for a case to make its way before the court. After seven months I believe, it seemed that our case should be close (if not already ...) to being before the court . I called the clerks office again, a nice, pleasant clerk picked up; I asked, in general/rough terms, when our case might be before the court. She said, 'Oh, It looks like this should have been heard (not sure if she used the word 'heard' or something else) already. She put me on hold for several minutes. The clerk I had spoken to months ago regarding the Rule 15, docket entry issue came on the phone. Again, she was not in a good mood. What is your question? she asked. So again, just asking, in general/rough terms when the court might get to our case. She said, we're waiting on the court record. Okay I said. Can you tell me when you think you might receive it from the District Court? No. Well, once you do get the record, can you give me a general/rough guess as to when our case might get before the court? No. Would it help if I called the District Court and asked about the record, when they might get it to you? No, I'll take care of it. Great, thanks I said. Will there be anything else I can help you with she asked. No, thank you again.
So I called the District Court and spoke with the woman who handles these requests and gave her our case number. No, she have not received a request for the record she said. When you do get these requests, how long does it usually take to get the record to Richmond I asked. It depends she said. She said that she would follow up with the court in Richmond. The clerk in Richmond called me the next to tell me that the record had been requested from the District Court. Great I said, thanks for you help. Can you give me a general/rough guess as to when our case might get before the court, once the record arrives I asked. No.
We finally get the appellate court opinion after a nine month wait. It was the standard three paragraph opinion upholding the lower courts decision with an '*'.
The appellate court remedied the lower courts 'harmless error' (damages under 1111) and in a footnote without citing or otherwise referring to Playboy Enterprises, Inc. v. Universal Tel-A-Talk (or any other case) awarded damages based on "*1116(d)(1)(B) & 1117(c)."
So here's what we think happened. The District Court did not want to award damages pursuant to Playboy Enterprises, Inc. v. Universal Tel-A-Talk because then the appellate court would (should) have to consider this award either affirming or denying the reasoning behind the 3rd circuit court decision. It is my opinion that the courts reasoning (and subsequent damage award pursuant to Playboy Enterprises, Inc. v. Universal Tel-A-Talk) amounts to a straw man argument that will eventually be knocked down by another court. The 4th circuit appellate court in 'correcting' the District Court's harmless error in our case, ducks Playboy Enterprises, Inc. v. Universal Tel-A-Talk all together. So anyone researching, looking for trademark cases and damage awards that circumvent 1111 will almost certainly never find this case and it appears that the 4th circuit has not considered this issue when in fact, it has. That seems pretty clever.
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