Opposition Brief — Contessa Premium Foods, Inc. v. Berdex Seafood, Inc.

()

No. 04-1693

3n The

Supreme Court of the Anited States

Vv

CONTESSA PREMIUM FOODS, INC.,

Petitioner,

vs.

BERDEX SEAFOOD, INC., ET AL.,

Respondents.

¢

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Ninth Circuit

,

a

RESPONDENTS BERDEX SEAFOOD, INC. AND

COAST TO COAST SEAFOOD, INC.’S

BRIEF IN OPPOSITION

+

MITCHELL C. TILNER*

NINA E. SCHOLTZ

Horvitz & LEvy LLP

15760 Ventura Boulevard, 18th Floor

Encino, California 91436

(818) 995-0800 ¢ FAX (818) 995-3157

ROBERT F. HELFING

SEDGWICK, DETERT, MORAN & ARNOLD

801 South Figueroa Street, 18th Floor

Los Angeles, California 90017-5556

(213) 426-6900 ¢ FAX (213) 426-6921

*Counsel of Record for Respondents

Berdex Seafood, Inc. and

Coast to Coast Seafood, Inc.

COCKLE LAW BRIEF PRINTING CO. (800) 225-6964

OR CALL COLLECT (402) 342-2831

QUESTIONS PRESENTED

1. Is proof of willfulness a prerequisite for an award

of profits for trademark infringement under section 43(a)

of the Lanham Act, 15 U.S.C.A. § 1125(a) (West 1998 &

West Supp. 2905)?

2. Should this matter be remanded to the Ninth

Circuit for reconsideration in light of this Court’s decision

in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125

S. Ct. 2764 (2005)?

CORPORATE DISCLOSURE STATEMENT

Respondent Berdex Seafood, Inc. has no parent

corporation and no publicly held corporation owns 10

percent or more of its stock.

Respondent Coast to Coast Seafood, Inc. has no parent

corporation and no publicly held corporation owns 10

percent or more of its stock.

ill

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ................. CLR ARETE i

CORPORATE DISCLOSURE STATEMENT................ ii

ETAL, OE CASO a OS isi gases ccaceiacesssadvsbtezsiesascacienss iii

PRB Aae SPE PASS FAGP OLR LUD icos cates sonssessscsrcermeccvstadnsetsanse Vv

STATEMENT OF THE CASE.............ccecesssecesseeeceseseeee 1

SUMMARY OF ARGUMENT. ...........ccccceseececeeeeeseeeeeeees 5

REASONS FOR DENYING THE PETITION .............. 8

I. CERTIORARI IS UNWARRANTED ON THE

TRADEMARK INFRINGEMENT ISSUE FOR

PRCT TIGA BOING 5 sncsscncicvsscsistsanveissacass 8

A. The issue Contessa now raises was not

raised in the district court or the court of

B. The current version of section 35(a) of the

Lanham Act, on which Contessa relies in

its petition, does not apply to this case.

The alleged infringement occurred before

the current version was enacted................. 11

C. There is no conflict in the cases that have

construed the current version of section

35(a) of the Lanham Acct ......................c0cee0s 14

D. Contessa overstates the supposed conflict

in the cases that construed the pre-1999

version of section 35(a) of the Lanham Act.

In any event, a decision by this Court con-

struing the pre-1999 version of the statute

would be of mere historical interest........... 16

lv

TABLE OF CONTENTS -— Continued

Page

E. The district court’s grant of summary

judgment was correct on the alternative

ground that there was no basis in equity

for an award of profits ................ccseeeseeseeeees 18

II. CONTESSA HAS NEVER EXPLAINED WHY

THIS COURTS DECISION IN METRO-

GOLDWYN-MAYER STUDIOS INC. V. GROK-

STER, LTD. REQUIRES THAT THIS CASE

BE REMANDED FOR RECONSIDERATION... 20

CADENA hak PRRO PEN ssn ssiscsnsn cbcivesnassslippaniceotantaneenualiane aaa abana 21

TABLE OF AUTHORITIES

Page

CASES

ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d

RN CINE, GN ROI ciclo ah asic ckes cnivunksuusndeeen nberaieee 12, 16

Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d

a a a 12, 14, 15

Bishop v. Equinox Intl Corp., 154 F.3d 1220 (10th

RI sah sca cosicchibotang ccsgcad a axe caacichcrs salleaicg subohadeadod 12, 16

Estate of Bishop v. Equinox Int'l Corp., 256 F.3d

Se IA Weis ST ah sistas atebccadccingscacendisecdrentbiedacncees 18

Burger King Corp. v. Mason, 855 F.2d 779 (11th Cir.

aad cael on tle cicecccadidnscsoetiomuadts usvergceanininatakeaasn 12, 17

George Basch Co., Inc. v. Blue Coral, Inc., 968 F.2d

PE INN, OID osvicai cect cca anlissncininisabcioabaanmives 12, 16, 18

Gucci America, Inc. v. Daffy’s, Inc., 354 F.3d 228 (3d

Te eae. caaeeeacs kanes 14

Kaiser Aluminum & Chem. Corp. v. Bonjorno, 494

U.S. 827 [110 S.Ct. 1570, 108 L.Ed.2d 842] (1990)....... 13

Landgraf v. USI Film Prods., 511 U.S. 244 [119

S.Ct. 1483, 128 L.Ed.2d 229] (1994) ....................cc020000. 13

Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400

NE Ce ES ee 3, 5, 9, 12, 16, 18

Maier Brewing Co. v. Fleischmann Distilling Corp.,

Pe ee Et Cee CE, BGG) sn ivicsiccicccscscsescinciveversscacccsacioes 19

Metro-Goldwyn-Mayer Studios Inc. v. Grokster,

Ag eee is Rs Cana icrccecasasacinis cencnens 7, 8, 20

Milier v. Florida, 482 U.S. 423 (107 S.Ct. 2446, 96

Si ME AU PEE RIES Po cssesnicasesnthicg akdahes cesaniachedioutecnessvcese 13

TABLE OF AUTHORITIES — Continued

Page

Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc.,

My oe ee Ce Ce I ino sakes ick ced ccc 18

Playboy Enters., Inc. v. Baccard Clothing Co., Inc.,

Oe Ee Fe Ce CR BND vosceinsccscsnshclensecincscsecscceass 16

Quick Technologies, Inc. v. Sage Group PLC, 313

ek ere CPRAR 6 a ON aba isc n snc ladics babes cbicesidssAtsidces tens 14

Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931 (7th

RE I aici esa dcecses sce cpt sen Lee wa site abies 16, 17

SecuraComm Consulting Inc. v. Securacom Inc.,

166 F.3d 182 (Sd Cir. 1999)...0..0..cccccccccccccceee 12, 14, 15, 16

Tamko Roofing Prods., Inc. v. Ideal Roofing Co.,

Ee, Dee ek BO CIR Cie FED icine coeiciccncscss 14, 15,18

Tex. Pig Stands, Inc. v. Hard Rock Cafe Int'l, Inc.,

Oi Fe GUS (Othe Cie SOE hires 19

United States v. Estate of Romani, 523 U.S. 517

[118 S.Ct. 1978, 140 L.Ed.2d 710] (1998)............0....00.. 8

United States v. United Foods, Inc., 533 U.S. 405

[121 S.Ct. 2334, 150 L.Ed.2d 438] (2001) ..................0000 8

Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595

a i Rie es Se aeons 16, 17

STATUTES

Section 35(a) of the Lanham Act,

By Mae ce Be PU iis chic akan beach avmebencbdens passim

Section 43(a) of the Lanham Act,

RAG Toe BS i |S ae tha aOR Ne Ree pene" 6, 9, 11, 12

Section 43(c) of the Lanham Act,

15 U.S.C.A. § 1125(c)

vii

TABLE OF AUTHORITIES — Continued

COURT RULES

Eas tne FU is eh Ak 15

1

STATEMENT OF THE CASE

Contessa packages and distributes frozen shrimp. 1

CA ER 2.’ In December 1986, Contessa created what it

calls the Boiling Shrimp image, a photograph of a partially

cooked shrimp in boiling water. CA SER 14; see 1 CAER

214. Contessa used the Boiling Shrimp image on its

packages of individually quick-frozen shrimp from 1988

through 1999. CA SER 34. Individually quick-frozen

shrimp is marketed to consumers because the shrimp are

individually frozen, affording the consumer the conven-

ience of using as much or as little as needed. CA SER 59.

Berdex and Coast are both U. S. seafood distributors.

In 1997 and 1998, they purchased ship containers of block-

frozen shrimp from defendant Lockpur Fish Processing

Co., Ltd., a Bangladeshi supplier. CA SER 58, 65; Pet. App.

26a. Each ship container held about 1,500 master cartons

of shrimp. CA SER 58. Each master carton, made of

corrugated cardboard and marked only with stenciled

black lettering, contained six individually wrapped four-

pound blocks of frozen shrimp. Jd. Because biock-frozen

shrimp must be completely thawed for use all at once, the

four-pound blocks produced by Lockpur were inconvenient

for individual consumers. Id. at 59. Therefore, Berdex and

Coast sold the shrimp only to distributors and professional

food and host industry buyers representing hotels, restau-

rants, food service organizations, supermarkets, and the

like. Id. at 59, 65. Individual consumers saw the shrimp

only after it had been removed from the package and

thawed. Jd.

* “CA ER” refers to the Excerpt of Records Contessa filed in the

court of appeals. “CA SER” refers to the Supplemental Excerpt of

Records Berdex and Coast filed in the court of appeals.

2

Four-pound block-frozen shrimp is a commodity in the

seafood business. Jd. at 59, 65. Berdex’s and Coast’s

customers generally did not request any particular brand

when purchasing block-frozen shrimp. Jd. Berdex and

Coast sold and delivered the shrimp in the sealed, un-

opened master cartons in which it arrived from Bangla-

desh. Id. at 60, 61. Berdex’s vice president saw a sample of

the inner packaging only once, in March 1997. 4 CA ER

858-62. On no other occasion did either Berdex or Coast

ever examine the inner packaging. CA SER 59, 65.

In September 1998, Contessa came to believe that

Berdex and Coast were infringing its claimed copyright

and trademark in the Boiling Shrimp image. 3 CA ER 724-

25. When Berdex and Coast learned that Contessa was

claiming infringement, they immediately isolated their

Lockpur product inventory, halted all pending and future

transactions involving Lockpur shrimp, thoroughly in-

spected the inventory, and removed the allegedly infring-

ing packaging. CA SER 66, 72. Out of 3,343 cartons in

Coast’s inventory, only 10 had any packaging bearing a

shrimp image. Jd. at 66. After taking those steps, neither

Berdex nor Coast ever saw or heard that any Lockpur

packaging bearing the shrimp image was found in its

inventory. Id. at 66, 72.

On October 2, 1998, Contessa sued Coast in the

district court for the Western District of Washington. 1 CA

ER 1-29. Six days later, Contessa sued Lockpur and Berdex

in the district court for the Central District of Califormia. Id.

at 30-62. The case against Coast was transferred to the

Central District of California and consolidated with the case

against Berdex and Lockpur. Jd. at 174-84. Contessa

amended its complaint to name other seafood distributors

as defendants. Id. at 70. Contessa alleged that Berdex and

3

Coast infringed its copyright and trademark in the Boiling

Shrimp image. Id. at 1-62.

Contessa moved for summary judgment on its trade-

mark infringement claim. Pet. App. 24a. The district court

denied the motion, finding triable issues of fact whether

Contessa’s alleged trademark was protectable and

whether there was a likelihood of confusion between

Contessa’s and Lockpur’s marks. 2 CA ER 364-83.

In 2000, Berdex and Coast moved for partial summary

judgment on Contessa’s copyright infringement claim. Pet.

App. 10a. On August 29, 2000, the district court granted

the motion, cc~*luding Contessa had published the image

without the requisice copyright notice, thus invalidating

its copyright. Id. at 9a-22a.

Berdex and Coast then moved for partial summary

judgment on Contessa’s right to profits and attorneys’ fees for

trademark infringement. Pet. App. 24a. They contended that,

if they infringed a protectable trademark, Contessa could not

establish that the infringement was willfully calculated to

exploit the advantage of an established mark, the standard

set by the Ninth Circuit in Lindy Pen Co., Inc. v. Bic Pen

Corp., 982 F.2d 1400, 1405 (9th Cir. 1993). Pet. App. 32a,

n.10. In response, Contessa argued that Berdex and

Coast’s “‘willful blindness’” supporved a finding of know-

ing infringement. Jd. at 33a. On March 12, 2001, the trial

court granted this motion. Jd. at 23a-39a.

Finally, Berdex and Coast moved for summary judg-

ment on the only remaining remedies available, damages

4

and injunctive relief. CR 353.’ On November 26, 2001, the

district court granted that motion as well. 4 CA ER 941-

954. The district court then entered judgment in favor of

Berdex and Coast. Id. at 955-56.

Contessa obtained a default judgment against two

defendants, Lockpur and Niamar International, Inc., and

the remaining defendants obtained summary judgment.

CR 588, 624. The case was not finally resolved as to all

defendants until January 30, 2003. CR 622.

Contessa appealed. CR 626. It contended the district

court erred by granting summary judgment because there

were genuine issues of material fact whether Contessa had

forfeited its copyright claim and whether defendants had

willfully infringed Contessa’s claimed trademark. CA AOB

38-51.° Contessa did not dispute that willfulness was a

prerequisite for an award of profits for trademark in-

fringement.

The Ninth Circuit affirmed the judgment in an unpub-

lished Memorandum. Pet. App. la-8a. With regard to

Contessa’s copyright infringement claim, the court held:

Assuming, arguendo, that Contessa does have a

protectable copyright in the Image, ... Contessa

cannot succeed on a theory of contributory [copy-

right} liability against any of these Defendants

because it has failed to establish a genuine issue

* “CR 353” refers to document no. 353 in the district court clerk’s

record of this matter.

* “CA AOB” refers to the November 28, 2003, Brief of Plaintiff-

Appellant Contessa Food Products, Inc. that Contessa filed in the court

of appezls.