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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_1048%3A6

## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2005
- **Citation:** 546 U.S. 957

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_1048%3A6. Public record. Not legal advice.