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

5

of material fact that any of the Defendants knew

or had reason to know of Lockpur’s infringement.

Pet. App. 4a-5a (footnotes omitted).

With regard to Contessa’s trademark infringement

claim, the Ninth Circuit assumed arguendo that the

Boiling Shrimp image was a protectable trademark. See

id. at 6a. The court held, however, that Contessa had “not

introduced any evidence supporting a reasonable inference

that five of the eight Defendants ever used the Image in

commerce,” id. at 6a, and therefore those parties could not

be held liable for trademark infringement as a matter of

law, id. at 7a. As to the other three defendants,

|allthough Contessa has introduced evidence sup-

porting a reasonable inference that defendants

Fishery Products, Berdex and Coast to Coast did

distribute product in packaging containing the Im-

age, we deny Contessa’s request for disgorgement of

profits because of an absence of any evidence sup-

porting a reasonable inference that any of the De-

fendants willfully infringed its alleged trademark.

Id. at 7a (citing Lindy, 982 F.2d at 1406).

The court of appeals denied Contessa’s petition for

rehearing. Contessa then petitioned this Court for a writ

of certiorari.

r.%

4

; SUMMARY OF ARGUMENT

This Court should deny Contessa’s petition on the

trademark infringement issue for any of several reasons.

First, Contessa raises the issue far too late. This

Court does not ordinarily allow a petitioner to assert new

6

issues not raised in the lower courts. In neither the district

court nor the court of appeals did Contessa argue, as it

now does, that willfulness is not a prerequisite for an

award of profits for violation of section 43(a) of the

Lanham Act. On the contrary, in both courts, Contessa

assumed willfulness was a prerequisite and atiempted to

show that the evidence created a triable issue of fact

whether defendants’ infringement was willful. Conse-

quently, the court of appeals’ Memorandum decision did

not address or discuss the issue Contessa now raises, and

neither should this Court.

Second, Contessa relies on the August 1999 amend-

ments to section 35(a) of the Lanham Act, 15 U.S.C.A.

§ 1117(a), and cases construing the statute as amended, to

support its position that the courts are in conflict on the

question whether willfulness is a prerequisite for an

award of profits for violation of section 43(a) of the Act, 15

U.S.C.A. §1125(a). But the 1999 amendments, which

changed the statutory requirement of willfulness, do not

apply here. The conduct of which Contessa complained

occurred in 1997 and 1998; it was governed by the pre-1999

version of section 35(a). Most courts construed the pre-1999

version of section 35(a) to require proof of willfulness as a

prerequisite for an order requiring defendant to disgorge

profits. The court of appeals here correctly decided the case

under the pre-1999 version of section 35(a). Any perceived

conflict in the decisions construing the pre- and post-1999

versions of the statute is a false conflict, explainable by

the 1999 change in the statutory language.

Third, the cases that have construed the current

version of section 35(a) are not in conflict. Two circuits

have considered whether willfulness is a prerequisite for

- an award of profits under the current version of section

35(a), and they reached consistent results. So this Court

7

has no reason to construe the current version of the

statute.

_Fourth, with respect to decisions construing the pre-

1999 version of section 35(a), which applies here, Contessa

overstates the supposed circuit conflict. Most of the cir-

cuits interpreted the pre-1999 version of the statute to

require willfulness as a prerequisite for disgorgement;

none held that a defendant who was ignorant of the

infringement (which is the case here) could be ordered to

disgorge profits. In any event, this Court has little reason

to settle a perceived conflict in the interpretation of a

statute that was amended in material respects six years

ago and that consequently has little or no current legal

significance for the issue presented. The Court’s interpre-

tation of the now-superseded version of the statute would

be of mere historical interest.

Finally, regardless of whether willfulness is a prereq-

uisite for an award of profits, the court of appeals correctly

affirmed the judgment because the district court did not

abuse its discretion in denying Contessa an award of

profits under the facts of this case.

~ Tacked on to the end of Contessa’s petition is a sug-

gestion that remand and reconsideration of Contessa’s

copyright infringement claim might be appropriate in light

of this Court’s decision in Metro-Goldwyn-Mayer Siudios

Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005), which had yet

to be filed by the time Contessa filed its petition. Contessa

promised to “supplement its petition as appropriate when

the opinion in Grokster is handed down.” Pet. Writ Cert.

24. The opinion in Grokster was handed down on June 27,

2005, but Contessa never supplemented its petition. It has

apparently abandoned any contention that Grokster

8

justifies remand and has offered no explanation why

Grokster affects this case. Accordingly, the petition on this

issue should be denied as well.

,

of

REASONS FOR DENYING THE PETITION

I. CERTIORARI IS UNWARRANTED ON THE

TRADEMARK INFRINGEMENT ISSUE FOR

NUMEROUS REASONS.

A. The issue Contessa now raises was not

raised in the district court or the court of

appeals. :

This Court does not ordinarily allow a petitioner to

present a new issue it never raised in the lower courts.

United States v. United Foods, Inc., 533 U.S. 405, 417

(2001) (“Although in some instances we have allowed a

respondent to defend a judgment on grounds other than

those pressed or passed upon below, see, e.g., United States

v. Estate of Romani, 523 U.S. 517, 526, n.11, 118 S.Ct.

1478, 140 L.Ed.2d 710 (1998), it is quite a different matter

to allow a petitioner to assert new substantive arguments

attacking, rather thar. defending, the judgment when

those arguments were not pressed in the court whose

opinion we are reviewing, or at least passed upon by it.”).

The trademark infringement issue Contessa frames in

its petition was not raised in either the district court or

the court of appeals.

In the district court, Berdex and Coast moved for

summary adjudication of Contessa’s claim for an account-

ing of profits and attorneys’ fees for trademark infringe-

ment, on the ground Contessa could not establish the

9

-infringement was willful. Pet. App. 32a, n.10. In opposi-

tion, Contessa did not dispute that willfulness was a

prerequisite to an award of profits. Instead, Contessa

argued that “‘the requisite intent is found in [Defendants’]

willful blindness.’” Jd. at 33a.

Likewise on appeal, Contessa did not dispute that

willfulness was a prerequisite to an award of profits for

violation of section 43(a) of the Lanham Act. Rather,

Contessa framed the question as whether the evidence

was “sufficient to create an issue of fact regarding Appel-

lees’ willfulness in infringing Contessa’s trademark in-

fringement [sic] that defeated summary judgment.” CA

AOB 2; see id. at 39 (“[T]he only remaining issue is

whether Contessa’s evidence supporting an inference of

willfulness in Appellees’ infringement is sufficient to reach

a jury.”). Contessa itself relied on the Ninth Circuit’s

decision in Lindy, which held willfulness was a prerequi-

site to an award of profits for violation of section 43(a) of

the Lanham Act. Contessa asserted it would be entitled to

profits if, in fact, defendants’ conduct was willful:

Although profits disgorgement for willful trade-

mark infringement is subject to principles of eq-

uity, it is a per se abuse of discretion to fail to

‘order disgorgement adequate to make willful

trademark infringement unprofitable. “Where

trademark infringement is deliberate and willful,

[the Ninth Circuit] has found that a remedy no

greater than an injunction ‘slights’ the public.”

CA AOB 39-40 (citations omitted) (quoting Lindy, 982 F.2d

at 1405).

Again in its petition for rehearing of the court of

appeals’ decision affirming the judgment, Contessa ac-

cepted the proposition that willfulness is a prerequisite for

10

an award of profits. Contessa simply argued it had satis-

fied that prerequisite: “The Opinion’s asserted absence of

evidence supporting a reasonable inference that any

Defendant willfully infringed Contessa’s trademark is

demonstrably false.... All these items fof evidence]

combine to support inference [sic] of willfulness through

affirmative acts or willful blindness.” Pet. Reh’g. 6.

Because Contessa consistently framed the issue as

whether it had established willfulness, the parties never

briefed the issue Contessa now raises ~- whether willfulness

is required at all. For the same reason, neither the district

court nor the Ninth Circuit had occasion to consider whether

the Ninth Circuit’s Lindy decision survived the 1999

amendments to section 35(a) of the Lanham Act, an inquiry

Contessa now asks this Court to undertake for the first time.

Had Contessa raised this issue in the lower courts, not

only would they have considered the issue, but Berdex and

Coast would have pressed an alternative argument to

support the judgment in their favor — even if willfulness is

not a prerequisite, the facts did not support an award of

profits. Instead, ever since Berdex and Coast moved for

summary adjudication in 2001, the parties have been

briefing and arguing the issue whether Berdex and Coast

willfully infringed Contessa’s claimed trademark. If that is

not the issue, then Contessa has wasted four years,

consumed scarce judicial resources, and caused Berdex

and Coast to incur fees for thousands of hours of attorney

time on the wrong issue.

Consistent with its usual practice, this Court should

decline to consider Contessa’s newly minted trademark

infringement issue, which the lower courts had no oppor-

tunity to consider because Contessa never raised it.

li

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.

Before August 1999, the first sentence of section 35(a)

of the Lanham Act, 15 U.S.C.A. § 1117(a), provided:

When a violation of any right of the registrant of

a mark registered in the Patent and Trademark

Office, or a violation under section 1125(a) of this

title, shall have been established in any civil ac-

tion arising under this chapter, the plaintiff shall

be entitled, subject to the provisions of sections

1111 and 1114 of this title, and subject to the

principles of equity, to recover (1) defendant’s

profits, (2) any damages sustained by the plain-

tiff, and (3) the costs of the action.

15 U.S.C.A. § 1117(a) (West 1998). Section 1125(a) (section

43(a) of the Lanham Act) prohibits trademark infringe-

ment by “any false designation of origin, false or mislead-

ing description of fact, or false or misleading

representation of fact.”

In August 1999, Congress amended the first sentence

of-section 35(a) to read as follows (new language in italics):

When a violation of any right of the registrant of

a mark registered in the Patent and Trademark

Office, a violation under section 1125(a) or (d) of

this title, or a willful violation under section

1125(c) of this title, shall have been established

in any civil action arising under this chapter, the

plaintiff shall be entitled, subject to the provi-

sions of sections 1111 and 1114 of this title, and

subject to the principles of equity, to recover (1)

12

defendant’s profits, (2) any damages sustained by

the plaintiff, and (3) the costs of the action.

15 U.S.C.A. § 1117(a) (West Supp. 2005) (emphasis added).

Congress’s addition of the term “willful violation”

changed the meaning of the statute. Before the 1999

amendments, most courts had construed the statute to

require proof of willfulness as a prerequisite for an award

of defendant’s profits for violation of 15 U.S.C.A. § 1125(a).

See, e.g., SecuraComm Consulting Inc. v. Securacom Inc.,

166 F.3d 182, 190 (3d Cir. 1999); Bishop v. Equinox Int'l

Corp., 154 F.3d 1220, 1223 (10th Cir. 1998); Lindy, 982

F.2d at 1405; George Basch Co., Inc. v. Blue Coral, Inc.,

968 F.2d 1532, 1534 (2d Cir. 1992); ALPO Petfoods, Inc. v.

Ralston Purina Co., 913 F.2d 958, 968 (D.C. Cir. 1990);

Burger King Corp. v. Mason, 855 F.2d 779, 781 (11th Cir.

1988).

As amended, the statute requires proof of willfulness

as a prerequisite for an award of defendant’s profits for

violation of 15 U.S.C.A. §1125(c) but not 15 U.S.C.A.

§ 1125(a). See Banjo Buddies, Inc. v. Renosky, 399 F.3d

168, 175 (3d Cir. 2005) (holding that 1999 amendments to

section 35(a) of Lanham Act superseded Third Circuit’s

earlier decision in SecuraComm, 166 F.3d 182, which

required willfulness as prerequisite for profits award for

violation of 15 U.S.C.A. § 1125(a)).

In making its case for certiorari, Contessa relies on

the current version of section 35(a) of the Lanham Act,

claiming the circuits disagree whether the current version

requires proof of willfulness before a defendant may be

ordered to disgorge profits for violating 15 U.S.C.A.

§ 1125(a). Pet. Writ Cert. 8-13. But the current version

does not apply to this case.

13

/

Legislation is considered retroactive if it changes the

legal consequences of acts that were completed before the

law’s effective date. Miller v. Florida, 482 U.S. 423, 430

(1987). Courts always presume that legislation is not

retroactive:

[T]he presumption against retroactive legislation

is deeply rooted in our jurisprudence, and embod-

ies a legal doctrine centuries older than our Re-

public. Elementary considerations of fairness

dictate that ifdividuals should have an opportu-

nity to know what the law is and to conform their

conduct accordingly; settled expectations should

not be lightly disrupted. For that reason, the

“principle that the legal effect of conduct should

ordinarily be assessed under the law that existed

when the conduct took place has timeless and

universal appeal.”

Landgraf v. USI Film Prods., 511 U.S. 244, 265 (1994)

(footnotes omitted) (quoting Kaiser Aluminum & Chem.

Corp. v. Bonjorno, 494 U.S. 827, 855 (1990)).

Nothing in the legislation enacting the 1999 amend-

‘ments to section 35(a) of the Lanham Act suggests they

were intended to apply retroactively. Nor does Contessa

argue the amendments should apply retroactively.

At issue in this case is conduct by Berdex and Coast

that occurred in 1997 and 1998. That conduct was gov-

erned by the version of section 35(a) in ei ct in 1997 and

1998. Contessa’s reliance on the post-1999 version of the

statute is misplaced.

Any perceived conflict in the decisions construing the

pre- and post-1999 versions of the statute is a false conflict,

explainable by the 1999 change in the statutory language.

14

C. There is no conflict in the cases that have

construed the current version of section

35(a) of the Lanham Act.

Two circuit courts of appeals have decided the issue

whether willfulness is a prerequisite for an award of

profits under the current version of section 35(a) of the

Lanham Act — and their decisions are consistent.

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

F.3d 338, 349 (5th Cir. 2002), the Fifth Circuit “decline[d]

to adopt a bright-line rule in which a showing of willful

infringement is a prerequisite to an accounting of profits.”

The court relied on the 1999 amendments to section 35(a),

noting that “the decisions of our sister circuits are of

limited utility to the decision we are faced with today”

because before the 1999 amendments the statute con-

tained no references to “willful.” Jd. at 348.

More recently, in Banjo Buddies, 399 F.3d at 175, the

Third Circuit followed Quick Technologies and held that,

in light of the 1999 amendments to the statute, proof of

willfulness was no longer a prerequisite to an accounting

of the infringer’s profits. The court noted that its earlier

decision to the contrary in SecuraComm, 166 F.3d 182, had

been superseded by the 1999 amendments. 399 F.3d at

175; see also Gucci America, Inc. v. Daffy’s, Inc., 354 F.3d

228, 239-43 (3d Cir. 2003) (noting Quick Technologies’

holding that 1999 amendment supersedes SecuraComm’s

requirement of willfulness but not reaching issue).

Contessa cites Tamko Roofing Prods., Inc. v. Ideal

Roofing Co., Ltd., 282 F.3d 23 (1st Cir. 2002), another case

postdating the 1999 amendments. But Tamko does not

conflict with Quick Technologies or Banjo Buddies. In

Tamko, the district court ordered an accounting of profits.

15

On appeal, the defendant argued an award of profits was

not warranted. The appellate court rejected the defen-

dant’s argument because the jury found willfv] infringe-

ment and the infringing product directly competed with

the trademarked product. Jd. at 36-37. The court specifi-

cally stated it was not reaching the issue whether willful-

ness is a prerequisite for an award of profits. Jd. at 36. In

dictum, it cited SecuraComm, 166 F.3d at 190, for the

proposition that “when the rationale for an award of

defendant's profits is to deter some egregious conduct,

willfulness is required.” Tamko, 282 F.2d at 36 n.11. But,

as noted, the Banjo Buddies court later determined Secu-

raComm has been superseded by the 1999 Lanham Act

amendments. Banjo Buddies, 399 F.3d at 175. The Tamko

court did not discuss the 1999 amendments.

Nor does the Ninth Circuit’s decision in the present

case create a conflict among the circuits. First, it is unpub-

lished and therefore cannot be cited or relied on in the

Ninth Circuit. 9th Cir. R. 36-3. Second, the decision states

and applies the rule articulated in Lindy, which applied to

events that occurred in 1997 and 1998. The Ninth Circuit

did not purport to construe or apply the current version of

section 35(a) of the Lanham Act. Under these circum-

stances, the decision will have no effect on current law

pertaining to disgorgement of profits for trademark

infringement.

In short, there is no conflict in the decisions interpret-

ing the current version of section 35(a) of the Lanham Act

and thus no reason for this Court to consider the statute’s

meaning.

16

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.

The decisions of the courts of appeals under former

section 35(a) of the Lanham Act reflected a range of views

on what the “principles of equity” required to justify an

award of profits. As noted above, however, most courts

held that at least willfulness was required. SecuraComm,

166 F.3d at 190 (“a plaintiff must prove that an infringer

acted willfully before the infringer’s profits are recover-

able”); Bishop, 154 F.3d at 1223; George Basch, 968 F.2d at

1534 (“we hold that in order to justify an award of profits,

a plaintiff must establish that the defendant engaged in

willful deception”); ALPO Petfoods, 913 F.2d at 968 (“an

award based on a defendant’s profits requires proof that

the defendant acted willfully or in bad faith”); Lindy, 982

F.2d at 1405 (an accounting of profits is appropriate

“where the infringement is ‘willfully calculated to exploit

the advantage of an established mark.’”) (quoting Playboy

Enters., Inc. v. Baccard Clothing Co., Inc., 692 F.2d 1272,

1274 (9th Cir. 1982)).

Among the pre-1999 cases Contessa cites that suppos-

edly did not require proof of willfulness are Roulo v. Russ

Berrie & Co., Inc., 886 F.2d 931 (7th Cir. 1989) and Wynn

Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595 (6th Cir.

1991). The Roulo court stated that the Lanham Act had

“no express requirement that the parties be in direct

competition or that the infringer wilfully infringe the

trade dress to justify an award of profits.” Roulo, 886 F.2d _.

at 941. But it affirmed the trial court’s instruction that an

17

award of profits was appropriate “[gliven the evidence of

intentional imitation and the substantial similarity

between the two [products]... .” Jd. (emphasis added).

The Wynn court quoted the Roulo court’s statement

that there was no express requirement of willfulness or

direct competition. Wynn, 943 F.2d at 606-07. But contrary

to Contessa’s suggestion, Pet. Writ Cert. 12, whether

willfulness was a prerequisite to an award of profits was

not at issue in Wynn. The trial court had found that the

infringement was willful, a finding that the appellate

court determined was not clearly erroneous. Wynn, 943

F.2d at 604-05.

Contessa also cites the pre-1999 decision in Burger

King, 855 F.2d at 781, for the proposition that willfulness

is not a prerequisite for an award of profits. Pet. Writ Cert.

12. But the Burger King court did not discuss whether

“willfulness” is a prerequisite. Instead, it held that a

defendant who is “purposely using the trademark” may be

subject to disgorgement of profits, but no showing of bad -

faith is required. Burger King, 855 F.2d at 781.

While the courts interpreting the pre-1999 version of

section 35(a) differed to some extent on the degree of

willfulness necessary to support an award of profits, none

held that a defendant who was ignorant of the infringe-

ment (which is the case here) could be compelled to dis-

gorge profits. Accordingly, certiorari is not warranted by

any supposed conflict among the circuits construing the

pre-1999 version of section 35(a).

In any event, little purpose would be served by this

Court addressing a perceived conflict in the cases constru-

ing an outdated version of the statute, the current version

of which has been uniformly interpreted by the courts of

18

appeal. The pre-1999 version of the statute has little or no

current legal significance since it applies only to conduct

that occurred more than six years ago. This Court’s opin-

ion on the subject would be a matter of mere historical

interest.

E. The district court’s grant of summary judg-

ment was correct on the alternative ground

that there was no basis in equity for an

award of profits.

The Ninth Circuit’s decision affirming the judgment

was correct. The district court correctly granted summary

judgment because, setting aside any willfulness require-

ment, the facts did not support an award of defendants’

profits. Indeed, the court would have erred had it ordered

disgorgement of profits.

The courts of appeals “have articulated three justifica-

tions for awarding to plaintiff an accounting of the defen-

dant’s profits: (1) as a rough measure of the harm to

plaintiff; (2) to avoid unjust enrichment of the defendant;

or (3) if necessary to protect the plaintiff by deterring a

willful infringer from further infringement.” Tamko, 282

F.3d at 36; see Estate of Bishop v. Equinox Int'l Corp., 256

F.3d 1050, 1054 (10th Cir. 2001); Minn. Pet Breeders, Inc.

v. Schell & Kampeter, Inc., 41 F.3d 1242, 1247 (8th Cir.

1994); George Basch, 968 F.2d at 1537. The facts here do

not support an award of profits under any of the three

justifications.

The first justification, that the defendant’s profits

roughly measure the harm to the plaintiff, requires that the

plaintiff have suffered harm. Lindy, 982 F.2d at 1408. Here,

the district court granted Berdex and Coast summary

19

judgment on Contessa’s claim for damages because Con-

tessa could not establish the fact of injury. 4 CA ER 950.

Contessa did not challenge the court’s ruling on appeal.

Since Contessa could prove no harm from the alleged

infringement, an award of profits would not serve a

compensatory purpose.

The rationale behind the second justification, that an

award of profits may prevent unjust enrichment of the

defendant, is that “the infringer has taken the plaintiff’s

property as represented by his trade-mark and has util-

ized this property in making a profit, and that if permitted

to retain the profit, the infringer would be unjustly en-

riched.” Maier Brewing Co. v. Fleischmann Distilling

Corp., 390 F.2d 117, 121 (9th Cir. 1968). Accordingly, for

the second justification to apply, the defendant must have

used-the trademark to make a profit. Here, however, the

record contains “unchallenged evidence that Lockpur’s

choice of packaging did not affect the purchasing decisions

of Defendants’ customers.” Pet. App. 36a. Thus, whatever

profits Berdex and Coast made from the sale of infringing

packaging cannot be attributed to the packaging itself,

and Berdex and Coast were not unjustly enriched. See Tex.

Pig Stands, Inc. v. Hard Rock Caje Int'l, Inc. ; 951 F.2d 684,

696 (5th Cir. 1992) (holding that accounting of profits was

not justified by unjust enrichment theory where the

defendant “‘would have sold just as many pig sandwiches

by any other name’ and that ‘there is no basis for inferring

that any of the profits received by [Hard Rock] from the

sale of pig sandwiches are attributable to infringement’ ”).

The third justification, deterrence,-does not support

an award of profits here because the district court found —

and the Ninth Circuit agreed — there was nothing to deter.

In affirming the district court’s denial of a permanent

20

injunction, the Ninth Circuit explained the district court

“did not abuse its discretion in concluding ... that where

Defendants had permanently terminated business rela-

tions with Lockpur and had neither commercial interest

nor motivation to use the allegedly infringing Image, there

was not a reasonable likelihood that any allegedly infring-

ing behavior would recur.” Pet. App. 7a.

Thus, setting aside willfulness, the district court’s

judgment and the Ninth Circuit’s decision were correct on

the alternative ground that no justification exists for an

award of profits to Contessa. Accordingly, a writ of certio-

rari is not warranted.

IL CONTESSA HAS NEVER EXPLAINED WHY

THIS COURT’S DECISION IN METRO.-

GOLDWYN-MAYER STUDIOS INC. V. GROK-

STER, LTD. REQUIRES THAT THIS CASE BE

REMANDED FOR RECONSIDERATION.

Contessa suggests that this Court consider remanding

this case for further consideration of the copyright in-

fringement issue in light of the Court’s decision in Metro-

Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 S. Ct.

2764 (2005). Because the Court had yet to file its opinion

in Grokster by the time Contessa filed its petition, Con-

tessa assured the Court and respondents it would “sup-

plement its petition as appropriate when the opinion in

Grokster is handed down.” Pet. Writ Cert. 24.

The opinion in Grokster was handed down on June 27,

2005, but Contessa has yet to file any supplemental

briefing. Since Contessa has offered no explanation or

argument why Grokster supports a grant of certiorari in

21

this case, Contessa’s petition on this ground should be

denied.

4

CONCLUSION

For the foregoing reasons, the petition for certiorari

should be denied.

Respectfully submitted,

MITCHELL C. TILNER*

NINA E. SCHOLTZ

Horvitz & Levy LLP

15760 Ventura Boulevard,

18th Floor

Encino, California 91436

Telephone: (818) 995-0800

Facsimile: (818) 995-3157

ROBERT F. HELFING

SEDGWICK, DETERT, MORAN &

ARNOLD

801 South Figueroa Street,

18th Floor

Los Angeles, California 90017-5556

Telephone: (213) 426-6900

Facsimile: (213) 426-6921

*Counsel of Record for Respondents

Berdex Seafood, Inc. and Coast to

Coast Seafood, Inc.

MOTION FILED

AUG 3 1 2005 QO).

No. 04-1693

IN THE

Supreme Court of the United States

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

MOTION OF INTERNATIONAL TRADEMARK

ASSOCIATION FOR LEAVE TO FILE

BRIEF AMICUS CURIAE IN SUPPORT OF

PETITIONER AND BRIEF OF AMICUS CURIAE

INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF PETITIONER

SALLY M. ABEL

TYLER G. NEWBY

CHRISTOPHER C. LARKIN

ALICE C. RICHEY

THEODORE H. DAVIS JR.*

* Counsel of Record

INTERNATIONAL TRADEMARK ASSOCIATION

655 Third Avenue, 10th Floor

New York, New York 10019

Telephone: (212) 768-9887

Attorneys for Amicus Curiae

International Trademark Association

No. 04-1693

IN THE

Supreme Court of the United States

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

MOTION OF INTERNATIONAL TRADEMARK

ASSOCIATION FOR LEAVE TO FILE

BRIEF AMICUS CURIAE IN SUPPORT OF

PETITIONER AND BRIEF OF AMICUS CURIAE

INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF PETITIONER

Pursuant to Supreme Court Rule 37.2(b), the Interna-

tional Trademark Association (“INTA’’) moves for leave to

file the attached Brief Amicus Curiae in support of the Peti-

tion for Certiorari. Counsel for Petitioner Contessa Premium

Foods, Inc. and ali respondents but one have consented or

stated no objection to the filing of INTA’s brief. Specifi-

cally, Respondent Fishery Products International Ltd. has

withheld consent, and Mazetta Co. LLC, Hanwa American

Corporation, and Admiralty Island Fisheries, inc. have indi-

cated that they do not object to INTA’s filing.’ Copies of the

' Consistent with footnote five in the petition, which identifies- only

Fishery Products Int'l, Inc., Berdex Seafood, Inc., and Coast to Coast ~

]

consent letters have been filed with the Clerk of the Court

concurrently with this motion.

INTA requests leave to file the attached Brief Amicus

Curiae because the issue presented by the petition concerns

an aspect of trademark law of importance to INTA’s mem-

bership — the standard for the recovery of a trademark in--

fringer’s profits. Although the availability of monetary

remedies to trademark owners is governed by section 35 of

the Lanham Act, 15 U.S.C. § 1117, a three-way split has

evolved among the Circuit Courts of Appeal on whether a

plaintiff must prove willful infringement as a prerequisite to

recovering an infringer’s profits from the sale of goods bear-

ing an infringing mark. This split in authority directly af-

fects INTA’s membership by depriving trademark owners of

the nationwide, uniform rights that the Lanham Act was de-

signed to guarantee.

INTA is a not-for-profit organization whose more than

4,300 members have a special interest in trademarks. These

members include trademark owners, law firms, advertising

agencies, package design firms, and professional associa-

tions from the United States and 170 other countries. All

share the goals of emphasizing the importance of trademarks

and trademark protection, and of promoting an understand-

ing of the essential role trademarks play in fostering in-

formed decisions by consumers, effective commerce, and

fair competition.

INTA members frequently are participants in trademark

litigation, and therefore are interested in the development of

clear and consistent principles of trademark and unfair com-

petition law. INTA has substantial expertise in trademark

law and, as set forth in the attached brief, has selectively par-

ticipated as an amicus cumae in cases involving significant

trademark issues.

In keeping with INTA’s interest in promoting national

uniformity in the application of federal trademark law,

INTA’s brief requests that the Court resolve a three-way split

Seafood as the only respondents with an interest in the petition, counsel

for Sea Port Products Corp. has informed INTA that Sea Port is not a

party to the petition for certioran.

2

in authority among the Circuit Courts of Appeal on whether

a trademark owner must first prove willful infringement as a

prerequisite to recovering a trademark infringer’s profits.

This split frustrates Congress’s purpose of providing uni-

form, nationwide rights for owners of federally-registered

trademarks when it enacted the Lanham Act in 1946. Uni-

form rights are particularly important to INTA’s membership

in a marketplace increasingly characterized by brands with

national and global reach.

The current split in authority also exposes INTA’s mem-

bership to forum shopping. Owners of federally-registered

trademarks have an incentive to bring infringement suits in

circuits that do not require trademark holders to prove willful

infringement as a prerequisite to the recovery of an in-

fringer’s ill-gotten profits. Similarly, parties that have been

accused of trademark infringement — but have not yet been

sued — have an incentive to file declaratory relief actions in

those circuits that require trademark holders to clear the high

evidentiary bar of proving willful infringement before a

court may consider whether to force the infringer to disgorge

its profits. This Court’s announcement of a clear, uniform

standard as to the relevance of willfulness to the disgorge-

ment of profits in a trademark case is the most effective way

to solve this problem.

For these reasons, INTA respectfully requests leave to

file the attached brief, and urges this Court to grant the peti-

tion for-certiorari and restore national uniformity to federal

trademark law on this important issue.

Respectfully submitted,

SALLY M. ABEL

TYLER G. NEWBY

CHRISTOPHER C. LARKIN _

ALICE C. RICHEY

THEODORE H. DAVIS JR.*

* Counsel of Record

INTERNATIONAL TRADEMARK ASSOCIATION

655 Third Avenue, 10th Floor

New York, New York 10019

Telephone: (212) 768-9887

Attorneys for Amicus Curiae

International Trademark Association

TABLE OF CONTENTS

Page

a8 RN RO Ae ee Geir oR en eee wre 1

INTEREST OF AMICUS CURIAE.............c.ccccccsessssccee acece

AG GP PR IE a sekassssctacecscesepsvesainsccdccnsscndacs 2

Fg METER SERRE EE Stn epee RU Rae NN TR 4

I. There Is a Clear Split in the Circuits

on the Relevance of an Infringer’s

Willfulness to the Availability of

Defendant’s Profits as a Remedy for

Trademark Infringement ................0:..:ceeese- 4

Il. The Court Should Grant Certiorari to

Restore Uniformity to Federal

BING MIU piicicctst chachpewiesssiicctancbigsdcesdaosines 8

III. Resolution of the Split Will

Discourage Forum Shopping ...................... 10

RRM MINUET suis siicratieadickeaaicl tiiacetidis iia cin siestsamocniniecadesion’ 11

TABLE OF AUTHORITIES

CASES

ALPO Petfoods, Inc. v. Ralston Purina Co.,

O13 F.2d 958 (D.C. Cir, 19D) sincccccscsnccnecnccnscsscosses

Anti-Monopoly, Inc. v. Gen. Mills Fun Group,

684 F.2d 1316 (9th Cir. 1982), cert. denied, 459

Be Sree

Banff, Ltd. v. Colberts, Inc.,

PPO BOE es SIA iaiirsisessnsiphanicasnsnensiciuneonns

Banjo Buddies, Inc. v. Renosky,

399 F.3d 168 (3d Cir. 2005) ........eccc.e.e- aT

Bishop v. Equinox Int’l Corp.,

ESO FG Be CR, Naas cicipecsesnnstatecencss

In re Borden, Inc., 92 F.T.C. 669 (1978), aff'd sub

nom. Borden, Inc. v. Fed. Trade Comm'n,

674 F.2d 498 (6th Cir. 1982), vacated and

remanded, 461 U.S. 940 (1983).........ccccccsseeseseeeeees

Burger King Corp. v. Mason,

BOS SoA FFF CER, CI iis cnsncnarronradsiacevirsecsness

Century 2] Real Estate Corp. v. Nev. Real Estate

Advisory Comm’n,

448 F. Supp. 1237 (D. Nev. 1978), aff'd, 440 U.S.

| SSS RTE Gea ea Ca ees

Conopco, Inc. v. May Dep’t Stores Co.,

Me FSU TSG COG, SO. SI issn iscsckiccinsesstasccsarsctin

Dastar Corp. v. Twentieth Century Fox Film Corp.,

De: AED iniatancnstihindsgcssioiistincimarppeaaaiens

Dickinson v. Zurko,

SE APA BE EAE caine ccrttisihaciuaseonbvanbedouniabeemcate

Erie R.R. v. Tompkins,

RES aA ah |.’ et aeennannnnneee musIetrs Aiur e

il

TABLE OF AUTHORITIES

(Continued)

Page

Fla. Prepaid Postsecondary Educ. Expense Bad. |

v. College Sav. Bank,

af a SAE eS LR Ee area RAD Reece sratreueninn 2

Fleischmann Distilling Corp. v. Maier Brewing Co.,

PO PN iii cckias sasasécesosdacisasasnsbsavrocssanncss 7

Frisch’s Rests., Inc. v. Elby’s Big Boy, :

Be Re Be CR i UO iin eh caecickccktdnscdeisasnicko eodcaciae 5

Hanna v. Plumer, ;

Pt iii cassis Se secakecsscctcrssaianiesech 10

Inwood Lab., Inc. v. Ives Lab., Inc.,

DO EF, WG CI ais tances ecespeesbiinabisisactasbsnvnarccnedune 9

K Mart Corp. v. Cartier, Inc.,

et AE BY ctsesine ice cs inccaceacn dens tonedaantinimarnciecs 2

KP Permanent Make-Up, Inc. v. Lasting Impression I

Inc.,

Kn Ee Ry Gs | SOR RR ARSC ae ea SON Seto 2: 7,9

Lindy Pen Co. v. Bic Pen Corp.,

PUR Ae BO Cle NID ahasitcacayuscs ccoacassascpaaycvasiizs 6

Moseley vy. V Secret Catalogue, Inc.,

Br ee A ai witspsaccutsiae 2,9

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,

MO ais NN rt at hs acc eu scacaaers, i Pe

Preferred Risk Mut. Ins. Co. v. United States,

Oe ee FO Ne Ein scsescisnsdstsinsaiennsatedenssveices 2

Qualitex Co. v. Jacobson Prods. Co.,

BE A Re irikisidbn races icceiaycivctasenashcandinds passim

Quick Techs., Inc., v. Sage Group plc,

Se ee ee Cr a asa osha adess site hncnrcaseaniccns 5

Ralston Purina Co. v. On-Cor Frozen Foods, Inc.,

TA a ce OC CE, BG ini iss sicsncceci edna cestnaccnces 2

Redd v. Shell Oil Co.,

a ae Re CE Gh TO aii is dssinccuch css dcowsannsnapr e

111

TABLE OF AUTHORITIES

(Continued)

Page

Roulo v. Russ Berrie & Co.,

PO PUA FOR K TI asscacisnessnnessrcsnsncntccitanstioriensss 5

Rumsfeld v. Padilla,

ET ae TER iia lcecusscnkckdskeiadintocioadushcabsictcnabel 10

S. C. Johnson & Son, Inc. v. Johnson,

CE SEG IEE MOP Pcxrencssuicdasostekebbinskutinsdanesmpenagiiie 8

Southland Corp. v. Keating,

le A ion calncent.ok- dicendedeiishanbanehotsedmausbobeacedaais 10

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

Fe ae EE GAGs OED ects nsnnsnsnnsancesonchgdenensiibaseben 5,7

TrafFix Devices, Inc. v. Mktg. Displays, Inc., .

fg Ne cs | GRETA Saar aeeeearaen mone 2

Two Pesos, Inc. v. Taco Cabana, Inc.,

«RRR REE RAO AAD I EE © 2,9

Walker v. Armco Steel Corp.,

a nleinainiolaal 10

Wal-Mart Stores, Inc. v. Samara Bros.,

ee aE aD ois tcebiachachutckinassbsbountssonotdecestcuasanionars 2

WarnerVision Entm't Inc. v. Empire of Carolina,

Inc.,

ca La caaheguionntgalehiceis 2

Wynn Oil Co. v. Am. Way Serv. Corp.,

ee an I NO acti ics cictcnasivsinunonocstiies 5

STATUTES

aera OY UE UI acct tac eieadishchliennolbieeneeaitntnaans 3

Si Ms RE BO Rtak sb asdabtdircsatinansvnchanctkchashchsoaain caliasbaotecsniniins 6

ie Ae Ce GN icccncsetirecninsyctenicnnnnnneqneunesonh 3, 4,10

I I io Sanna Saas ap pnseoadeeseerabhsion 6

hie 8 ly Bye ~ SRE ERS en aeeu or BAe Joke tlee Depron Pare 6

Pub. L. No. 106-43, § 3(b), 113 Stat. 219 (1999)... 2

1V

TABLE OF AUTHORITIES

(Continued)

OTHER AUTHORITIES

Bryan M. Otake, The Continuing Viability of the

Deterrence Rationale In Trademark Infringement

Accountings, 5 UCLA ENT. L. REV. 221 (1998) ............ +

Craig Summerfield, Color As A Trademark And The

Mere Color Rule: The Circuit Split For Color

Alone, 68 CHI.-KENT. L. REV. 973 (1993) ..........cceeeeee 10

S. Rep. No. 79-1333 (1946), as reprinted in 1946

Cie ciel hes RII ccecucihnsscrecsch alncaninetiemmaninidamaanidl 8

RULES

a COE TG FF BE) wicecnsccssncnerticsanisicttiiashiintucionteciiiaiaane l

INTRODUCTION

With this Court’s leave, pursuant to Supreme Court Rule

37.2(b),' amicus curiae International Trademark Association

(“INTA”), respectfully submits this brief in support of the

petition for certiorari.

INTA requests the Court to resolve a long-standing split

among the Circuit Courts of Appeal on whether a trademark

owner must prove willful infringement as a prerequisite to

recovering the trademark infringer’s profits from the sale of

goods bearing the infringing mark. INTA does not, in this

brief, recommend a particular resolution to the split in au-

thority.’ Rather, it advocates that the Court take the oppor-

tunity that this case presents to grant certiorari to resolve the

split in the Circuits and restore the national uniformity to

federal trademark law that Congress intended to create in

enacting the Lanham Act in 1946.

INTEREST OF AMICUS CURIAE

INTA is a not-for-profit organization whose more than

4,300 members have a special interest in trademarks. They

include trademark owners, law firms, advertising agencies,

package design firms, and professional associations from the

United States and 170 other countries. All share the goals of

emphasizing the importance of trademarks and trademark

protection, and of promoting an understanding of the essen-

tial role trademarks play in fostering informed decisions by

consumers, effective commerce, and fair competition. INTA

members frequently are participants in trademark litigation,

and therefore are interested in the development of clear and

' All but one of the parties with an interest in the petition has either af-

firmatively consented to INTA’s filing of this Brief or has indicated that

it does not object. The consenting parties’ letters of consent have been

filed concurrently with this brief. No party to this case authored any part

of this bref. No person or entity other than amicus or its counsel has

made any monetary or other contribution to its preparation or submis-

sion. F

? Should the Court grant certiorari, INTA will seek the consent of the

parties to file an amicus curiae brief on the merits.

l

consistent principles of trademark and unfair competition

law. INTA has substantial expertise in trademark law and

has selectively participated as an amicus curiae in cases in-

volving significant trademark issues.”

INTA was founded in 1878 as the United States Trade-

mark Association, in part to encourage the enactment of fed-

eral trademark legislation after the invalidation on constitu-

tional grounds of this country’s first trademark act. Since

that time, INTA has been instrumental in making recom-

mendations and providing assistance to legislators in connec-

tion with federal trademark legislation, including the particu-

lar statutory revision that has exacerbated the split in the Cir-

cuit Courts of Appeal identified by the petition. See Pub. L.

No. 106-43, § 3(b), 113 Stat. 219 (1999).

SUMMARY OF ARGUMENT

INTA submits this Brief Amicus Curiae to request that

the Court resolve a long-standing split in authority among

the Circuit Courts of Appeal on whether a trademark owner

must first prove willful infringement as a prerequisite to re-

> Cases in which INTA has filed amicus briefs include: KP Permanent

Make-Up, Inc. v. Lasting Impression I Inc., 125 S. Ct. 542 (2004); Das-

tar .Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003);

Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003); TrafFix De-

vices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001); Wal-Mart Stores,

Inc. v. Samara Bros., 529 U.S. 205 (2000); Fla. Prepaid Postsecondary

Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627 (1999); Dickinson

v. Zurko, 527 U.S. 150 (1999); Oualitex Co. v. Jacobson Prods. Co., 514

U.S. 159 (1995); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763

(1992); K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988); WarnerVi-

sion Entm’t Inc. v. Empire of Carolina, Inc., 101 F.3d 259 (2d Cir. 1996);

Preferred Risk Mut. Ins. Co. v. United States, 86 F.3d 789 (8th Cir.

1996); Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556 (Fed. Cir.

1994); Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 801

(Fed. Cir. 1984); Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 684 F.2d

1316 (9th Cir. 1982), cert. denied, 459 U.S. 1227 (1983); In re Borden,

Inc., 92 F.T.C. 669 (1978), aff'd sub nom. Borden, Inc. v. Fed. Trade

Comm'n, 674 F.2d 498 (6th Cir. 1982), vacated and remanded, 461 U.S.

940 (1983); Redd v. Sheil Oil Co., 524 F.2d 1054 (10th Cir. 1975); Cen-

tury 21 Real Estate Corp. v. Nev. Real Estate Advisory Comm'n, 448 F.

Supp. 1237 (D. Nev. 1978), aff'd, 440 U.S. 941 (1979).

2