Opinion
00 CIV. 7909 (DLC)
February 16, 2001
John P. Bostany, New York, NY, for Plaintiff.
Thomas A. Canova, Gianni P. Servodidio, Pennie Edmonds LLP, New York, NY, for Defendant Jansport, Inc.
MEMORANDUM OPINION AND ORDER
This dispute arises out of defendants' alleged infringement of plaintiff's unregistered trademark. Plaintiff Momentum Luggage Leisure Bags ("Momentum") alleges unfair competition, trade dress infringement, dilution, and trademark infringement pursuant to 15 U.S.C. § 1125(a) and (c) of the Lanham Act, and related state law doctrines. Defendant Jansport, Inc. ("Jansport") moves to dismiss plaintiff's claim for statutory damages pursuant to Rule 12(b)(6), Fed.R.Civ.P. For the reasons stated below, defendant's motion to dismiss the claim for statutory damages is granted.
DISCUSSION
The complaint demands that Momentum "at its option be awarded statutory damages of $1 million in lieu of actual damages." Momentum does not own and has not alleged ownership of a federal trademark registration for the designation Momentum.
Section 35(c) of the Lanham Act provides for statutory damages of up to one million dollars in cases involving the use of a counterfeit of a federally registered trademark. Section 35(c) provides:
(c) In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a) of this section, an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of —
(1) not less than $500 or more than $100,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or
(2) if the court finds that the use of the counterfeit mark was willful, not more than $1,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.15 U.S.C. § 1117(c) (emphasis supplied). A "counterfeit mark" as defined in Section 1116(d) is "a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold . . . ." 15 U.S.C. § 1116(d)(1)(B)(i) (emphasis supplied). See also Playboy Enters., Inc. v. Universal Tel-A-Talk, Inc., No. CIV. A. 96-CV-6961, 1998 WL 288423, at *4 (E.D.Pa. June 3, 1998) ("[A] claim for trademark counterfeiting lies only against a defendant's counterfeit uses of a mark on the same goods or services as are covered by the plaintiff's registration of that mark.").
Momentum does not dispute that Section 35(c) limits recovery of statutory damages to cases involving federally registered trademarks. Rather, it argues that its complaint seeks statutory damages under Section 35(a) of the Lanham Act, even though its complaint does not specify any particular section of the Lanham Act as a basis for an award of statutory damages. Section 35(a) has its own damages provisions, however, and they do not include statutory damages. A reading of the plain language of Section 35 makes clear that statutory damages are only available under Section 35(c), 15 U.S.C. § 1117(c). See Edward G. Biester, III, Anticounterfeiting Consumer Protection Act Introduces RICO to IP, 4 No. 5 Andrews Intell. Prop. Litig. Rep. 3 (Oct. 1, 1997) ("With the passage of the ACPA, litigants may choose statutory damages in the place of actual damages in Lanham Act cases involving use of a counterfeit mark. The ACPA, however, does not provide for statutory damages in all trademark infringement actions, only those involving use of a counterfeit mark as defined in 15 U.S.C. § 1116(d)."). Indeed, the only authorities cited by Momentum relate to recovery of other, non-statutory damages under Sections 35(a) or 35(b) of the Lanham Act.
Momentum filed an amended complaint without the Court's leave on December 20, 2000, adding seven additional defendants and changing Paragraph K of its Prayer for Relief to seek statutory damages pursuant to Section 35(a) of the Lanham Act. Momentum sought leave nunc pro tunc to amend the complaint. On January 23, 2001, the Court denied Momentum's request to amend the complaint.
The Anticounterfeiting Consumer Protection Act of 1996, Pub.L. No. 104-153, 110 Stat. 1386 (ACPA), amended the Lanham Act by adding Section 35(c), 15 U.S.C. § 1117(c).
See United Phosphorus, Ltd. v. Midland Fumigant, Inc., No. CIV. A. 91-2133-GTV, CIV. A. 95-2267-GTV, 1997 WL 756602, at *2 (D.Kan. Dec. 1, 1997) (discussing damages under Section 35(b)); Resorts Int'l, Inc. v. Greate Bay Hotel and Casino, Inc., 830 F. Supp. 825, 839 (D.N.J. 1992) (addressing recovery of defendants' profits under Section 35(a)); and Yeshiva Univ. v. New England Educ. Inst., Inc., 631 F. Supp. 146, 147 (S.D.N Y 1986) (addressing attorney's fees for prevailing defendant).
Momentum further argues that the Court has the "discretion" to award statutory damages under Section 35(c). Momentum fails to cite any direct authority, however, to support its novel argument that the Court may in its discretion award statutory damages under the Lanham Act in the absence of a federal registration.
CONCLUSION
Jansport's motion to dismiss Momentum's claim for statutory damages pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is granted.
SO ORDERED: