# Petition for Rehearing — M2 Software, Inc. v. Viacom, Inc. (No. 07-202)

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Rehearing
- **Published:** January 1, 2007

## Text

h

In the Susciene Court of the Anited States

FILED
@) DEC 21 2007

a No. 07- 202 2 OFFICE OF lal ERK

A
v

M2 SOFTWARE, INC.,
Petitioner,

Vv.

VIACOM, INC., VIACOM INTERNATIONAL, INC.,
MTV NETWORKS COMPANY,
Respondents

ee
-

On Petition for a Writ of Certiorari to the United
States Court of Appeals for the Ninth Circuit

t

PETITION FOR REHEARING OF A DENIAL OF
CERTIORARI

MARK L. PETTINARI

Counsel of Record
LAW OFFICES OF MARK L. PETTINARI
Stock Exchange Tower
155 Sansome Street, Suite 400
San Francisco, CA 94104

Tel (415) 240-4200

Counsel for Petitioner

:

QUESTION PRESENTED

The Lanham Trademark Act of 1946, 15 U.S.C. §
1051 et seq., provides a variety of remedies for
infringement, including injunctive relief, damages
and lost profits. It also authorizes courts to award
the plaintiff some portion of the infringer’s profits
attributable to the infringement. The question
presented is:

Whether a_ trademark owner alleging
infringement of a registered mark must show
willfulness as a precondition to recovering a portion
of the’ infringer’s profits attributable to
infringement.

li

TABLE OF CONTENTS

REASONS FOR GRANTING REHEARING ................... 1
I. STATUTORY BACKGROUND........... 3
es, eet IN I IOI... -ccvncorvvcesusenchecsoovcnncdecs 3

B. The Current 15 U.S.C. § 1117(a), As
Amended in 1999, May Clarify the
EE aM ee oe nO ee ea 4

C. The Ninth Circuit Requires An
Opportunity to Examine the Clarifying
Effect of the Statute ..............cccccccssseees 7

II. A GVR WILL ALLOW THE NINTH
CIRCUIT TO CONSIDER THE CURRENT
STATUTE, 15 U.S.C. § 1117(a), AS AMENDED.9

PETES aE 13
CERTIFICATION OF COUNSEL (RULE 44).............. 14

iii
TABLE OF AUTHORITIES

CASES

ABKCO Music, Inc. v. LaVere, 217 F.3d 684 (9th
<A RES ERARSE Bue ree ses are Meck eee alc Eee 8

Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d
I A I i OO 11

Blau v. YMI Jeanswear, Inc., 129 Fed. Appx. 385
(9th Cir. 2005), cert. denied, 126 S. Ct. 660 (2005)

send teeclendibiendipcigtianiicaiadeidintappnialaticslbie saiaisaiitadatinataneliiniiaaiatiaed: 11
Braxton v. U.S., 500 U.S. 344 (1991) .......... ee 1
Cartier v. Aaron Faber, Inc., 512 F.Supp.2d 165

S.D.IN. 5. SORE. BT, BOGOF) ..ccsvcccssecccscencovseccees passim

Contessa Food Products Inc. v. Lockpur Fish
Processing Co. Ltd., 123 Fed. Appx. 747 (9th Cir.

2005), cert. denied, 126 S. Ct. 472 (20085)........... 11
George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532
er iiaticicisceniialsanctunietinedinclebclebiasinanacnctotunii 6
Griffith v. Kentucky, 479 U.S. 314 (1987).............. 12
K and N Engineering, Inc. v. Bulat, 06-55115 (9th
SN 5 I ind ivicicanladacttilicn Sicdenmalbiscdsebaaians 1
K and N Engineering, Inc. v. Bulat,--- F.3d ---, 2007
WL 4394416 (9th Cir. Dec. 18, 2007) .............00.... 2

Lawrence v. Chater, 516 U.S. 163 (1996)..... 9, 11, 12
Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th
Cir.), cert. denied, 510 U.S. 815 (1999)......... 3, 6, 7
Louisiana v. Hays, 512 U.S. 1230 (1994).......0000.... 10
Malletier v. Dooney & Bourke, Inc., 500 F.Supp.2d
a ares hk Se BE, Fe iciniensncvnsitonetnieeveiiets 6, 7
Moseley v. V Secret Catalogue, Inc., 537 U.S. 418
RTE LER eee Ce eke Padre CORLEONE DP en eee MEE a 4
Quick Technologies v. Sage Group, 313 F. 3d 338
SU IE. SHEED lnsictiauseasadsbiscticniacedonciaaiehs a 11

iv
Sands, Taylor & Wood Co. v. Quaker Oats Co., 978
F.2d 947 (7th Cir. 1992), cert denied 113 S Ct

ITE Saditaitidianespticeaidsadidlictdisbstidicncropsseciimentes 4
Schmidt v. Espy, 513 U.S. 801 (1994)................. 10
Sioux Tribe of Indians v. United States, 329 U.S.

RS a i a a 10
Synergistic Intl, LLC v. Korman, 470 F.3d 162 (4th

I tn as salu icbualibes 11
Thomas & Betts Corp. v. Panduit Corp. 108

PB. 20 STS CN.D.1E1. BOO) ocvvcessvsvescvecccsccccsesssee 9
U.S. v. Jannotti, 673 F.2d 578 (3d Cir. 1982).......... 8
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529

Se Se ID iui tirndciensaibntsindenttiictisanubvonuionabbuseladetens 9
Youngblood v. West Virginia, 126 S.Ct. 2188 (2006)

Fe SEL ec NU Rte Re DS INS RA SI 10

STATUTES
i ie ie. in ssi icipondecdsousbacebelaniitiovtees 3
I a i as taileris eudiesinnimnmnanion 2
ois seals cdiotienigidccseactinosaodions 3, 5, 9
pope SR Lp ESR unmee meee 3, 4, 5
St i cuubciseeuniniobepneuees 10
Trademark Amendments Act of 1999, Pub. L. No.

106-43, § 3(b), 113 Stat. 218, 219 .....................006 5

RULES
Na a llibaneeennnien 2
Supreme Court Rule 29. ..........s0ccccrcercsvesssorseresoseses 1
CG BIN GE oo ccibesevcsccsecvsccccccoceuseseveesseenes 1
Sepwemie Court Bade 46.2 .......cccscssccvccessesscvsvcsscessese 14

OTHER AUTHORITIES

Conway-Jones, D. Remedying Trademark
Infringement: The Role of Bad Faith in Awarding
an Accounting of Defendant’s Profits, 42 Santa
Clara 1. Rev. 86S, SOG (BOOZ) ....ccrecccesseccsscesceeseeses 7

1

Pursuant to Rule 44, Petitioner M2 Software,
Inc. respectfully submits a petition for rehearing
of our Petition for Certiorari (“P-Cert.”)! docketed
August 14, 2007 and denied November 26, 2007.

REASONS FOR GRANTING REHEARING

A rehearing of an order denying certiorari is
available where either: (i) there are “intervening
circumstances of a substantial or controlling
effect,” or: (il) the petition raises “other
substantial grounds not previously presented.”
R. 44.2. Both are presented here. Substantial
grounds not previously presented demonstrate
that a GVR procedure is proper to allow the
Ninth Circuit to examine the current, clarified
statute, 15 U.S.C. § 1117(a), with no
retrospective concerns. Respondents have
changed their position, and now acknowledge the
clarification potential of the 1999 amendment:

“Congress itself can eliminate a conflict
concerning a statutory provision by making
a clarifying amendment to the statute[.]”

Opp. 17, quoting Braxton v. U.S., 500 U.S. 344,
347-49 (1991) (emphasis added). In addition, on
December 18, 2007, the Ninth Circuit addressed
the question presented in the trademark case of
K and N Engineering, Inc. v. Bulat, 06-55115
(9th Cir., Dec. 18, 2007) (R-App. 1r-3r). The
Bulat court determined it was proper to consider
a variety of equitable factors other than a bright-

1 See P-Cert. ii (Rule 29.6 Corporate Disclosure Statement).
Other abbreviations herein: Petition Appendix (“P-App.”),
Brief in Opposition (“Opp.”), Reply of Petitioner (“P-Rep.”);
Rehearing Appendix (attached hereto) (“R-App.”).

2

line willfulness rule — the sole grounds for
dismissal of this case below. The Ninth Circuit
affirmed consideration of:

“* * *a wide range of [equitable] factors,
including the defendants’ financial
situation, their naiveté, their failure to
resolve the trademark violation through
settlement, and the extent of the
infringement.”

R-App. 3r. .As Petitioner had argued here, see P-
Cert. 21, 22 n. 11, 23 n.13, the new Ninth Circuit
decision does not treat willfulness as a bright-
line requirement under § 1114(1)(a) and
distinguishes the willfulness requirement under
the “innocent printer” exceptions of § 1114(1)(d)
and § 1114(2).2. The Ninth Circuit’s failure to
make this distinction in prior precedent has been
noted as a plain judicial error from which the
Ninth Circuit's willfulness requirement
originally evolved. See P-Cer. 23 n. 13.

2 The Bulat case corrects that error in distinguishing “use
in commerce” [§ 1114(1)(a)] from mere printing (see P-Cert.
22 n.11): “Because [Defendants] sold decals with K&N
marks * * * they were not engaged solely in the business of
printing the mark or violating matter for others, and thus
were neither innocent infringers nor innocent violators
capable of raising the innocent printer defense under 15
U.S.C. § 1114(2)(A).” R-App. 3r. (emph. added). The Ninth
Circuit decided this issue in a unpublished memorandum
on the same date as it decided the remainder of the issues
on appeal in a published opinion. See K and N
Engineering, Inc. v. Bulat,--- F.3d ---, 2007 WL 4394416, *1
n.1 (9th Cir. Dec. 18, 2007). Nonetheless, the unpublished
decision can be cited. FRAP Rule 32.1(a).

Finally, another’ intervening decision
demonstrates the fatal flaw in the Ninth Circuit’s
decision to overlook the possibility that the
current statute clarifies, rather than changes,
pre-existing law. See Cartier v. Aaron Faber,
Inc., 512 F.Supp.2d 165 (S.D.N.Y. Sept. 27,
2007). Rehearing is appropriate to issue a GVR
to permit the Ninth Circuit the opportunity to
consider 15 U.S.C. § 1117(a), as amended.

I. STATUTORY BACKGROUND
A. The Issue Presented

Under the statute for trademark infringement
(15 U.S.C. § 1114(1)(a)) and monetary recovery
for trademark infringement (15 U.S.C. § 1117(a)),
some Circuit Courts require “willfulness” as a
requirement for monetary relief. Other Circuit
Courts do not. P-Cert. 12-19.

The controlling case in the Ninth Circuit,
Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400,
1405 (9th Cir.), cert. denied, 510 U.S. 815 (1993),
see P-App. 3a, defines willfulness as “willfully
calculated to exploit the advantage of an
established mark.” TJd., quoting Playboy
Enterprises, Inc. v. Baccarat Clothing Co., Inc.,
692 F2d 1272, 1274 (9th Cir. 1982) (emphasis
added). That strict and contested requirement
(akin to the original language of a different
dilution section for famous marks)’ creates a

3 Cf. 15 U.S.C. § 1125(c)(2) (prior to October 2006
amendment) (‘willfully intended to trade on the owner's
reputation”).

4

paradox‘ that entirely forecloses relief for many
small and growing companies. It ignores other
deliberate or bad faith infringement of a
registered trademark that, while not “willful”
under this definition, is equally destructive of a
company’s identity. Sands, 978 F.2d at 961.

B. The Current 15 U.S.C. § 1117(a), As
Amended in 1999, May Clarify the Issue

The “dilution” cause of action under § 1125(c)
was created by the Federal Trademark Dilution
Act of 1995, amending the Lanham Act. See
Moseley v. V Secret Catalogue, Inc., 537 U.S. 418,
420 (2003). “Dilution” arises when a junior user’s
similar mark dilutes the commercial
effectiveness of a famous mark even if used in a
completely different industry (like “Kodak
hamburgers’). Jd. This contrasts with trademark
“infringement” (at issue here) applicable to even
non-famous marks, arising when a junior user
causes a likelihood of confusion by adopting a
confusingly similar or identical mark in the same
or related field. 15 U.S.C. § 1114(a).

Since its 1995 inception, the dilution
subsection, § 1125(c), has always required
willfulness for monetary relief. This contrasts
with the infringement subsection, § 1114(1)(a),
which does not specify a willfulness requirement.
P-Cert. 5, 15. The damage provision of the Act,

4 “In a reverse confusion case, of course, the defendant by
definition is not palming off or otherwise attempting to
create confusion as to the source of his product. Thus, the
‘intent’ factor * * * is essentially irrelevant * * *.” Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 961
(7th Cir. 1992), cert denied 113 S Ct 1879 (1993) (emphasis
in original).

0

§ 1117(a), is qualified by the phrase “subject to
the principles of equity.” In 1995, when the
“dilution” provision was added to the Lanham
Act, Congress did not add reference to § 1125(c)
within § 1117(a).

In 1999, Congress amended § 1117(a) to cross-
reference the § 1125(c) dilution subsection added
in 1995.5 P-Cert. 24. In so doing, as a practical
matter Congress ultimately juxtaposed — in the
same single sentence for the first time — the
§ 1125(c) dilution requirement of “a _ willful
violation” (a requirement already present in §
1125(c)) against the § 1114(a) requirement of “a
violation.” The text of § 1117(a) now reads:

When a violation of any right of the
registrant of a mark registered in the
Patent and Trademark Office fe.g. §
1114(1)(a)} , 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 Act, 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 plaintiff, and (3)
the costs of the action.

15 U.S.C. § 1117(a) (emphasis added). The
intervening Cartier court determined that the
Second Circuit’s interpretation requiring

2 The 1999 amendment is the Trademark Amendments Act
of 1999, Pub. L. No. 106-43, § 3(b), 113 Stat. 218, 219.

6

willfulness to recover monetary relief is
irreconcilable with the text of the statute. The
district court in Cartier thus discarded the
Second Circuit’s “willfulness” precedent of George
Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d
Cir.1992) — the analog of the Ninth Circuit’s
Lindy Pen precedent at issue here, P-App. 3a.

Petitioner referenced the test microcosm of
the conflict (within district courts in the Second
Circuit) in both the petition and reply. P-Cert.
18; P-Rep. 6. The intervening decision
demonstrates the clarifying effect of the current
statute, not examined below. Cartier effectively
overruled the Malletier decision of April 2007,
cited in the reply. P-Rep. 6-7 (Malletier v. Dooney
& Bourke, Inc., 500 F.Supp.2d 276 (S.D.N.Y. Apr.
24, 2007)). Malletier had found that the Second
Circuit’s prior precedent remained good law. Id.,
500 F.Supp.2d at 280. There, as here (until
Respondents changed their position in opposition
to certiorari, Opp. 17-19), “the parties vigorously
dispute[d] whether, in light of the amendment,
Blue Coral’s willfulness requirement remains
good law.” Id. at 279-80. Malletier found that the
willfulness requirement was still good law
because the 1999 amendment for dilution “did
not alter or even address the relevant
su ion of the federal trademark
infringement statute.” Id, at 280. (emph. added).

What Malletier did not consider is that,
though it found the pre-existing law remained
the same, the Second Circuit’s original
interpretation of that law may have been
incorrect. The original interpretation in the
Ninth Circuit, for example, appears to have

7

evolved from a plain judicial error in the mid-
1990’s_ misreading standards of adjoining
sections.§

C. The Ninth Circuit Requires An
Opportunity to Examine the Clarifying
Effect of the Statute

Petitioner had argued (as Respondents now
do, Opp. 17) that the 1999 amendment clarified
the statute. P-App. 4a (“M2 Software argues that
the 1999 amendments to the Lanham Act “make
clear” that there is no willfulness requirement”)
(emphasis added). The Ninth Circuit, like
Malletier, did not consider this clarifying effect:

Whatever the effects of the 1999
amendments may be, they do not apply to
this suit, which was filed in October 1998.
Even on the shaky assumption that the
1999 amendments did expand the remedies
available for violations of § 1114 by
negating the willfulness requirement, these
expansions would not be retroactive.

P-App. at 4a-5a (emph. added). By addressing
whether it could consider a change in law
without considering the potential of a
clarification, the Ninth Circuit committed the

§ “In citing to [Lindy Pen] * * * the Ninth Circuit started in
1995 to offend its own precedents * * * by misreading the
standards set for trademark infringement actions under §
1114(1)(a), which do not make willful infringement a
prerequisite * * *.” Conway-Jones, D. Remedying
Trademark Infringement: The Role of Bad Faith in
Awarding an Accounting of Defendant’s Profits, 42 Santa
Clara L. Rev. 863, 898 (2002).

8

same error of Malletier, now effectively overruled
by Cartier. 1

The Ninth Circuit instead posed what it
characterized as a “shaky” assumption that the
law had changed, finding retroactivity concerns.
P-App. 4a-5a. That “assumption” is either true
or false. If false, as the “shaky” qualifier
suggests, with no new law there can be no
retroactivity concerns. The Ninth Circuit should
be allowed to consider whether the statute, as
amended, clarifies pre-existing law.

The Ninth Circuit “[has] long recognized that
clarifying legislation is not subject to any
presumption against retroactivity and is applied
to all cases pending as of the date of its
enactment[.]” ABKCO Music, Inc. v. LaVere, 217
F.3d 684, 691 (9th Cir. 2000). While a new
inference may supersede the interpretation of a
Circuit, it does not supersede the pre-existing
law (that here, other Circuits already interpreted
not to require willfulness). P-Cert. 13. By failing
to examine the current statute for its clarifying
effect, the Ninth Circuit failed to “apply the law
in effect at the time it renders its decision.”
Bradley v. Richmond School Bd., 416 U.S. 696,

7 The Ninth Circuit thus accepted Respondents’ “change of
law” answer to the “clarification” question, detouring into
the logic error of ignoratio elenchi. See U.S. v. Jannotti,
673 F.2d 578, 622 (3d Cir. 1982) (Aldisert, J., dissenting)
(“{iJnstead of proving point A * * *, argument proves
unrelated point B * * *”).

9

714 (1974). This failure extended even to
prospective application. P-Rep. 7-8.

The Ninth Circuit must be given the same
opportunity as Cartier and the Ninth Circuit’s
peer Courts of Appeal to consider the clarifying
effect of the current statute. Even if the Ninth
Circuit finds that retroactivity concerns would
prevent application, it must at minimum be
allowed to consider the statute for any clarifying
effects. This Court should grant rehearing so
that it may invoke GVR to grant, vacate, and
remand to the Ninth Circuit for consideration of
15 U.S.C. § 1117(a), as amended.

II. AGVR WILL ALLOW THE NINTH CIRCUIT
TO CONSIDER THE CURRENT STATUTE, 15
U.S.C. § 1117(a), AS AMENDED

The GVR mechanism allows this Court to
grant certiorari, vacate the decision below, and
remand to a Court of Appeals for consideration of
a recent legal development it did not consider.
The procedural option “conserves the scarce
resources of [the] Court” while promoting
effective judicial resolution. Lawrence v. Chater,
516 U.S. 163, 167 (1996). GVR is appropriate
where there have been “intervening
developments, or recent developments [the Court
has] reason to believe the court below did not

§ In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205 (2000), this Court referenced other sections of the 1999
amendment for a case “filed years before the Amendment
was enacted.” Thomas & Betts Corp. v. Panduit Corp. 108
F.Supp.2d 976, 9°1 (N.D.IIl. 2000). Two of the Courts of
Appeal that have addressed the issue also did so in cases
filed before the 1999 amendment. Infra, n. 9, 10.

10

fully consider [that] reveal a_ reasonable
probability that the decision below rests on a
premise that the lower court would reject if given
the opportunity for further consideration.”
Lawrence, 516 U.S. at 167 (emphasis added).
This Court has GVR’d in light of “new federal
statutes,” Jd., citing, e.g., Sioux Tribe of Indians
v. United States, 329 U.S. 685 (1946), in light of
“administrative reinterpretations of federal
statutes,” 516 U.S. at 167, citing, e.g., Schmidt v.
Espy, 513 U.S. 801 (1994), and in light of “new
state statutes.” 516 U.S. at 167, citing, e.g.,
Louisiana v. Hays, 512 U.S. 1230 (1994). The
Lanham Act, as amended, has a sufficiently
substantial impact on the national issue to
warrant a remand for consideration.

GVR is proper where the previously-enacted
statute not examined is central to the case. See
Youngblood v. West Virginia, 126 S.Ct. 2188
(2006) (GVR wkere dissent noted Brady
violation, but majority did not examine). While
most GVR decisions arise from an intervening
decision or statute, the underlying authority
giving rise to the GVR procedure, 28 U.S.C. §
2106, does not impose a temporal limitation on
an applicable statute deserving consideration.
Id. (Court “may remand the cause * * * or
require such further proceedings to be had as
may be just under the circumstances.”) The
particular layout of this case calls for GVR here:

First, the practical application of the 1999
amendment is a recent development. Only one
Court of Appeals, the Fifth Circuit, had
considered the amendment when opening briefs
were prepared for the Ninth Circuit, and the

11

Fifth Circuit only reaffirmed its _ prior
interpretation.2 Since that time, the Third and
Fourth Circuits have weighed in, considering the
amendment as a clarification of pre-existing law
to adopt. new intra-circuit rules rejecting a
willfulness requirement.12

Second, the issue presented is recurring and
the subject of a long-standing Circuit split. P-
_ Cert. 12-20. Despite the relative rarity of
trademark cases proceeding through an entire
appeal, including the present case there have
been three petitions for certiorari from the Ninth
Circuit since 2005 on the issue of whether willful
trademark infringement is necessary _for
monetary relief.'. The GVR _ procedure is
designed in part to aid the Court by “procuring
the benefit of the lower court’s insight before we
rule on the merits...” Lawrence, 516 U.S. at 167.
Similarly, this Court can benefit from the Ninth

2 Quick Technologies v. Sage Group, 313 F. 3d 338, 348-49
(5th Cir. 2002) (lawsuits filed May 22, 1998 and April 22
1999, rejecting per se willfulness “[i]n accordance with our
previous decisions, and in light of the plain language of §
1117(a)’).

19 Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d Cir.
Feb. 22, 2005) involved an action first instituted April 1999
[Id. at 172], decided (but not available on databases) two
days prior to the appellant’s brief. Synergistic Intl, LLC v.
Korman, 470 F.3d 162 (4th Cir. Nov. 30, 2006) was not yet
decided when the Ninth Circuit heard oral argument on
October 16, 2006.

11 Contessa Food Products Inc. v. Lockpur Fish Processing
Co. Ltd., 123 Fed. Appx. 747 (9th Cir. 2005), cert. denied,
126 S. Ct. 472 (2005); Blau v. YMI Jeanswear, Inc., 129
Fed. Appx. 385 (9th Cir. 2005), cert. denied, 126 S. Ct. 660
(2005).

12

Circuit’s insight on the issue before it rules on
the merits.

Third, to the extent that Congress clarified
pre-existing law, the GVR procedure “conserves
the scarce resources of this Court” while
effectively allowing the current law to apply as
broadly as possible to pending cases. Lawrence,
516 at 167, citing Griffith v. Kentucky, 479 U.S.
314, 323 (1987) (“[W]e fulfill our judicial
responsibility by instructing the lower courts to
apply the new rule retroactively to cases not yet
final”).

Finally, Respondents have changed their
position, and now concede that courts now find
the Lanham Act does not intend a per se
willfulness requirement for monetary relief — the
very premise of dismissal of this case below. See
e.g., Cartier, 512 F.Supp.2d at 172. See Opp. 17,
18, 19 n.6. P-App. 3a. Thus, there is a
“reasonable probability that the decision below
rests on a premise that the lower court would
reject if given the opportunity for further
consideration.” Lawrence, 516 U.S. at 166.

A GVR will aid in the resolution of a long-
standing Circuit split. It allows the Court to ask
the Ninth Circuit, without the finding of any
error, to consider the current statute to
determine what, if any, clarifying effects are
presented. In the event the Ninth Circuit
adheres to prior precedent after completing such
examination, the Court will have before it a more
fully defined issue should that issue be presented
for certiorari.

13

CONCLUSION

This Court should grant rehearing to invoke
GVR to grant, vacate, and remand to the Ninth
Circuit for consideration of the current statute,
15 U.S.C. § 1117(a), as amended, and all
intervening decisions.

Respectfully submitted,

MARK L. PETTINARI

Counsel of Record

LAW OFFICES OF

MARK L. PETTINARI

Stock Exchange Tower

155 Sansome Street, Suite 400
San Francisco, CA 94104
(415) 240-4200

Counsel for Petitioner

December 2007

14

CERTIFICATION OF COUNSEL (RULE 44)

I certify that the Petition for Rehearing of a
Denial of Certiorari is restricted to the grounds
specified in Supreme Court Rule 44.2 and is
presented in good faith and not for delay.

December 2007

Mark L. Pettinari
Counsel for Petitioner

APPENDIX

lr

UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

No. 06-55115
D.C. No. CV-98-08734-AHM

K AND N ENGINEERING, INC., a California cor-
poration,
Plaintiff — Appellee,

¥V.

SARAH BULAT, individually, d/b/a Incline Design,
a/k/a Incdesign; et al,
Defendants - Appellants

Appeal from the United States District Court
for the Central District of California
A. Howard Matz, District Judge, Presiding

ARGUED AND SUBMITTED SEPTEMBER 24,
2007, PASADENA, CALIFORNIA
FILED DECEMBER 18, 2007

MEMORANDUM*

Before: T.G. NELSON, IKUTA, and N.R. SMITH,
Circuit Judges.

* This disposition is not appropriate for publication and is not
precedent except as provided by 9th Cir. R. 36-3.

2r

The district court granted K&N's motion for
summary judgment on trademark infringement un-
der 15 U.S.C §§ 1114(1) and 1125(a), trademark
counterfeiting under § 1114(1)(a), trademark dilution
under § 1125(c), and related state law statutory and
common law causes of action. Pursuant to 15 U.S.C.
§§ 1116 and 1117(c), the district court awarded
$20,000 in statutory damages and injunctive relief.1
We affirm.

Based on our de novo review, the evidence is
clear that Bulat and Wandel's intentional use of the
K&N mark was likely to cause confusion among con-
sumers and post-purchase observers of the counter-
feit goods. 15 U.S.C. § I 114(1)(a); AuTomotive Gold v.
Volkswagen of Am., Inc., 457 F.3d 1062, 1075-76 (9th
Cir. 2006). The evidence introduced by Bulat and
Wandel that their decals differed in size and color
from K&N's decals, and that one consumer was not
confused as to the source of the decals, is insufficient
to raise a material issue of disputed fact regarding
likelihood of confusion. Because the K&N mark does
not serve an aesthetic purpose wholly independent
from its function of identifying K&N, Bulat and
Wandel's aesthetic functionality defense fails. Au-
Tomotive Gold, 457 F.3d at 1073. Bulat and Wan-
del's nominative fair use defense fails because they
used more of K&N's mark than was necessary to de-
scribe their own product or service. New Kids on the
Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 &
n.7 (9th Cir. 1992). K&N's trademark rights do not
depend on whether or not it has copyright protection
for the same marks. Polar Bear Prods. v. Timex
Corp., 384 F.3d 700, 721 (9th Cir. 2004). Therefore,

‘In a published opinion filed this date, we reverse the district
court's award of attorney's fees under 15 U.S.C. § 1117(b).

3r

we affirm the district court's grant of summary judg-
ment.

In light of the district court's broad discretion
to award statutory damages under 15 U.S.C.
§ 1117(c)(1), the district court did not abuse its dis-
cretion in awarding statutory damages of $20,000.
Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704,
712 (9th Cir. 1999). Nor did the district court abuse
its discretion in considering a wide range of factors,
including the defendants’ financial situation, their
naivete, their failure to resolve the trademark viola-
tions through settlement, and the extent of the in-
fringement, in setting the statutory damage award.
Because Bulat and Wandel advertised and sold decals
with K&N marks (rather than advertising and selling
printing services), they were not engaged solely in the
business of printing the mark or violating matter
for others, and thus were neither innocent infring-
ers nor innocent violators capable of raising the in-
nocent printer defense under 15 U.S.C.
§ 1114(2)(A). :

Affirmed.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386009_1328%3A4. Public record. Not legal advice.