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.