Opposition Brief — Super Duper, Inc. v. Mattel, Inc.

No. 10-603

IN THE

upreme Wourt of the Hnited States

Uf

SUPER DUPER, INC..

D/B/A SUPER DUPER PUBLICATIONS,

Petition 4

MATTEL, IN¢

' ;

Re SP raen

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Fourth Circuit

BRIEF FOR RESPONDENT IN OPPOSITION

THOMAS H. DUPREE, JR

Counsel of Record

DACE C. MARTINEZ

GIBSON, DUNN & CRUTCHER LLP

1050 Connecticut Avenue, N.W

Washington, D.C. 20036

(202) 955-8500

TDupree@pgibsondunn.com

7 24

', , ry

Counsel Jor Respondent

QUESTIONS PRESENTED

l Whether review is warranted to resolve issues

that petitioner did not raise below and neither the

district court nor the court of appeals considered;

that depend on purported factual findings the jury

did not render; and where there exists a separate

and independent basis for upholding the judgment

2 Whether a trademark owner must prove

willfulness and actual confusion to recover profit:

from the infringement under 15 U.S.C. § 1117(a)

RULE 29.6 STATEMENT

Mattel, Inc. 1s a publicly held corporation

Mattel does not have any parent corporations, nor 1

ten percent or more of its stock owned by a publicl;

held corporation or other publicly held entity

y

TABLE OF CONTENTS

QUESTIONS PRESENTED

RULE 29.6 STATEMENT

OPINIONS BELOW

JURISDICTION

STATEMENT

REASONS FOR DENYING THE PETITION

The “Questions Presented” Are Not

Act ually Presented

\

Super Duper Did Not Rai Che

Issues Below

he Existence Of The “Question

Presented” Depends On Purported

Factual Findings That The Jury

And The District Court Never

Made

lhe Profits Award Can Be Uphe!

Entirely Based on the Dilution

Finding, So This Court’

Resolution Of The “Question

Presented” Would Not Affect Thi

Judgment Below

re Is No Circuit Split

Congress Has Eliminated Any

Confusion Over Whether Profit

May Be Awarded Absent

Intentional Infringement

The Circuits Are Not Divided O

Whether Actua! Confusion |

Necessary For An Award Of

Profits

CONCLUSION

}

LABLE OF AUTHORITIES

Page(s)

1dicke S.A. Are y (

198 U.S. 144 (1970

Banjo Buddi ; Ini i ad rLOS#

399 F.3d 168 (3d Cir. 2005

Conopco, Inc. v. May Dep’t Stores ¢

16 F.3d 1556 (Fed. Cir. 1994

Duncan Walke?

133 U.S. 167 (2001

Vike, Inc. v. Top Brand (

No. 00-civ-8179-KMW-RLI (Q)

1654859 (S.D.N-Y. July ] 100

j nnsvivania DD pt of Cor) yy }

124 U.S. 206 (1998

I

WL 1202802 (D. Nev. Apr

Feu Ae ai rae f

S86 F.2d 931 (7th Ciy }

‘ {

eCUr » JP

66 F.3d 182 (3d ¢ LYYY

P tie Inter rhe mi j

TABLE OF ».UTHORITIES

(continued)

Page(s)

( ited Stat Cla

O07 U.S. 725 (199

é alia Lape (or) VM {

(;la Warehe iS¢é

40 F.3d 56 (lst ¢

\ dsmith Put ( VJ (

Other Authoriti

BRIEF IN OPPOSITION

Respondent Mattel, Inc. respectfully submits this

bnef in opposition to the petition for a writ) of

certiorari filed by petitioner Super Duper, Inc

OPINIONS BELOW

The opinion of the court of appeals is_ not

published, but is available electronically at 2010 WL

2340250 and is reproduced at Pet. App. la-17a. The

district court’s order awarding profits is not

published, but is available electronically at 2009 WL

866461 and is reproduced at Pet. App. 18a-28a

JURISDICTION

The Court has jurisdiction under 28 U.S.C.

§ 1254(1).

STATEMENT

Super Duper claims that the Fourth Circuit’s

unpublished, per curiam decision presents hidden

questions of trademark law as to which the circuits

have split.

Review 1S unwarranted for many reasons. First,

the purported “Questions Presented” are not actually

presented. Super Duper never’ raised these

arguments below and neither the district court nor

the Fourth Circuit considered them. Moreover, the

existence of the “Questions Presented” depends on

Super Duper’s claim that the jury rendered two

factual findings thal the jury never made. Contrary

to Super Duper’s suggestion, the jury never found

that the infringement was unintentional, nor did the

jury find an_= absence’ of = actual confusion.

Furthermore, the profits award may be upheld on

the basis of ether trademark infmngement or

trademark dilution. Thus, the jyadgment would not

be affected even if this Court were to resolve the

infringement questions in Super Duper’s favor. For

all of these reasons, a grant of certiorari would be

improvident because neither of the two “Questions

Presented” is actually before the Court and because

the Court’s resolution of these questions would have

no effect on the judgment below.

Second, there is no circuit split. As to the first

“Question Presented” whether a court may award

profits absent proof of intentional infringement

Congress resolved the issue when it) amended the

Lanham Act in 1999. The cases Super Duper rebes

on to support the existence of a circuit split are pre

amendment decisions. ‘There is obviously no need for

this Court to address a question that Congress has

already resolved. As to the second “Question

Presented” -—- whether a court may award profits

absent proof of actual confusion -- there is simply no

circuit split.

1. Super Duper is a South Carolina corporation

that manufactures and sells toys and games. Fourth

Circuit Joint Appendix (JA) 64. Super Duper is

owned and managed by husband and wife Thomas

and Sharon Webber. Mr. Webber serves as_ the

companys chairman and CEQO, as well as_ its

trademark attorney. JA 776, 840-41, 1960. Super

Duper places the marks at issue in this case on toys,

games and other products that are used both to

entertain children and to help them learn to speak.

JA 635-36, 1224-25, 1250-51.

The Mattel marks at issue in this case are among

the most famous and universally recognized marks

on educational toys. Mattel first introduced the SEE

‘N SAY brand in 1965, and its products bearing the

mark have sold an estimated 100 million units since

that time. JA 1091-92. In fact, in some years, the

number of SEE ‘N SAY units sold exceeded the

number of births in the United States. JA 1243. The

SEE ‘N SAY mark has been used most often on the

classic educational toy that, when activated by a

string or lever, triggers a recording (e.2., the cow foes

“moo”") based on where the arrow is aimed. It has

also been used on many types of games, puzzles,

books and learning systems over the years. JA 1065

66, 1082, 1761-66, 1774-90.

Mattel’s other marks at issue include THE

FARMER SAYS, which is famous in its own right

and accounts for approximately one-third of the

estimated 100 million units of SEE ‘N SAY products

sold, JA 1090, 1093, 1242, as well as SKE ‘N SAY

JUNIOR and SEE ‘N SAY BABY, which are smaller

versions of the classic SEE ‘N SAY. JA 1084-87,

1635-36, 1958-59. Like the products manufactured

and sold by Super Duper, Mattel’s SEE ‘N SAY

products are used both to entertain children and to

help them learn to speak. JA 1087-88, 1837.

2. In 2004, Mattel filed an opposition in the U.S.

Patent and Trademark Office seeking to cance!

certain Super Duper marks. JA 336. After the

parties’ efforts to reach a settlement failed, Super

Duper sued Mattel in Super Duper’s hometown of

Greenville, South Carolina, seeking a declaratory

judgment that its marks did not infringe Mattel’s

marks. JA 64-79. Mattel filed compulsory

counterclaims for trademark infringement = and

dilution under 15 U.S.C. § 1125(a) and § 1125(c),

respectively, and sought Super Duper’s profits from

the infringement and dilution as permitted by 15

U.S.C. § 1117(a). JA 222-52.

Super Duper’s lawsuit’ spanned nearly three

years and culminated in a seven-day jury trial. A

central issue at trial was whether Super Duper was

aware of Mattel’s SEK ‘N SAY marks prior to the

parties’ dispute, and thus whether Super Duper

acted intentionally or whether the similarities in the

parties’ marks were merely by chance. Super Duper

argued that it could not have intentionally copied

Mattel’s SEE ‘N SAY marks because it had not even

heard of SEE ‘N SAY until Mattel notified Super

Duper of its potential infringement in 2004. Indeed,

Mr. Webber stated on nine different occasions

leading up to trial in testimony under oath, sworn

interrogatory responses, and requests for admission

that he was not aware of the SEK ‘N SAY marks

until Mattel contacted him in 2004 regarding the

potential infringement. JA 846-78, 1927-45, 1947-55,

1961. But at trial, when Mr. Webber testified on the

stand that he was not aware of SEK ‘N SAY until

2004, his numerous sworn statements were. all

shown to be false and he admitted that he had

actually known of SKE 'N SAY years before.

Mattel introduced a letter into evidence showing

that in 2000, Mr. Webber hired outside counsel to

conduct a trademark search regarding Super Duper’s

SEE IT! SAY IT! mark. Outside counsel wrote back

to Mr. Webber, warning him of the existence and

registration of Mattel’s SEE ‘N SAY mark. JA 847,

1542-43. The following year (in 2001), Super Duper

engaged different outside counsel to conduct a search

regarding Super Duper’s FISH AND SAY mark.

That outside counsel also wrote back to Mr. Webber

to warn him of the existence and registration of

Mattel’’s SEE ‘N SAY mark. JA 849, 1583-85.

Despite these repeated warnings from its outside

counsel, Super Duper chose to forge ahead and to

manufacture and sell products containing its) very

similar marks

When these letters were introduced at trial and

Mr. Webber's testimony was exposed as false, the

district court suggested to Mr. Webber that he might

wish to change his testimony. Mr. Webber replied

“Absolutely not.”) JA 856.) The distrmet court again

cautioned Mr. Webber and gave him a_s second

opportunity to change his testimony. JA 874-75

Only then did Mr. Webber finally admit that all of

his prior statements were “wrong” and “inaccurate,”

and that he had been aware of Mattel’s Skike ‘N SAY

marks well before 2004. JA 873-75 Indeed, Mr

Webber confessed that, he had used Mattel’s SKE ‘N

SAY product when he was a child and even had one

in his home for his own children. JA 846-47. The

culmination of this) remarkable chain ef events

occurred when Super Duper’s lawyer began his

closing argument by acknowledging his” chent’s

repeated false statements under oath, and by

imploring the jury to blame Super Duper’s lawyers

for failing to ensure that their client testified

truthfully. JA 1378-80

Although Mr. Webber’s credibility was in tatters,

Super Duper attempted to convince the jury that 1

was 4 legitimate business that did not sell knock-offs

of well-known toys and games. But the jury heard

extensive testimony and saw numerous” exhibits

demonstrating that many of Super Duper’s toys and

games bear a stmking resemblance to well-known

toys and games of other companies. For example,

Super Duper’s SILLY SNAKES AND LADDERS ts

an obvious knockoff of the famous board game

CHUTES AND LADDERS, simply changing the

chutes into snakes

SILLY SNAKES CHUTES AND

AND LADDERS LADDERS

JA 2529-30, 626-27, 882-86

Similarly, Super Duper’s MARTHA MOUSE is a

copy of Disney’s) famous mark and character

MINNIE MOUSE, right down to the identical red

dress with white polka dots accompanied by a

matching headband:

MARTHITA MOUSE MINNIE MOUSE

JA 2527, 629-30, 879-81. When asked by Mattel’s

counsel at trial whether she saw any simularities

between the two, Mrs. Webber replied, “Only so

many ways to dress a mouse, Mr. Holleman, but I

guess | could see a polka dot on there.” JA 629

Mattel introduced other evidence of Super

Duper’s pattern and practice of copying others’

marks and products, including: MIGHTY MOUTH

(a knock-off of MIGHTY MOUSE); MR. TWISTER (a

knock-off of TWISTER); TOKEN TOWER (a knock-

off of TOLKIEN TOWER); and DRESS-A-BEAR (a

knock-off of BUILD-A-BEAR). JA 627-34, 886-87,

891-92.

Super Duper noted that many of the marks at

issue in the lawsuit involved the word “say,” and

argued that a ruling in Mattel’s favor would amount

to granting Mattel a monopoly over a common word.

JA 1383, 1400-01. But Mattel pointed out in

response that establishing unlawful infringement

requires far more than two marks having a single

word in common. JA 1408. The test for trademark

infringement is whether there is a likelihood of

consumer confusion: a determination that requires a

seven-factor analysis that looks to the strength or

distinctiveness of the plaintiffs mark; the similarity

of the two marks; the similarity of the goods the

marks identify; the similarity of the facilities the

parties use in their businesses; the similarity of the

parties’ advertising; the defendant’s intent; and the

existence of actual confusion. See Pizzeria Uno Corp.

v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984); JA

1453-65 Gury instructions outlining seven factors).

Because a_ trademark infringement finding

depends on numerou, factors other than the words

used in the mark, a ruling in Mattel’s favor obviously

e)

would not prevent other companies from using

marks containing the word “say,” just as (for

example) a finding that the “PIZZA HU'T” trademark

was infringed would not mean that other companies

cannot use the word “pizza” in their marks.

The jury agreed with Mattei. It determined that

Super Duper’s marks infringed and intentionally

diluted Mattel’s marks, and awarded $400,000 in

profits to Mattel. Pet. App. 42a-46a.

3. In denying Super Duper’s post-trial motions,

the district court stated that it “wholly agrees with

the jury’s opinion” regarding the unlawfulness of

Super Duper’s marks. Pet. App. 22a. The court

therefore upheld the jury’s two independent findings

of hability: trademark infringement and trademark

dilution.

The district court also granted Mattel’s motion to

increase the profits award under 15 U.S.C. § 1117(a).

That section provides: “If the court shall find that

the amount of the recovery based on profits is either

inadequate or excessive the court may in its

discretion enter judgment for such sum as the court

shall find to be just, according to the circumstances

of the case.” In concluding that the profits award

should be increased from $400,000 to $999,113, the

district court considered six equitable factors,

including whether Super Duper intended to confuse

or deceive. Pet. App. 26a-27a. The court determined

that a heightened award was warranted,

emphasizing that the record was “replete with

(Super Duper’s] apparent proclivity in generously

borrowing, without permission or payment, the ideas

of others.” Pet. App. 27a. The court based its profits

award on both the infringement finding and the

willful dilution finding — either of which permits an

Y

award of profits under 15 U.S.C. § 1117(a). Pet. App.

25a; see also JA 2704 (“the evidence overwhelmingly

validates the jury’s verdict” on dilution as well as

infringement).

The court also entered an injunction, which does

not enjoin Super Duper from manufacturing or

selling the products in question (which together

iccount for only 7 percent or so of Super Duper’s

overall sales, JA 791, 1228). Rather, the injunction

simply requires that Super Duper choose a different

name for the _ products. Pet. App. 21a. The

injunction further provides that, rather than destroy

any products bearing the unlawful marks, Super

Duper may simply rename and relabel them. /d. at

21a, 39a.

4. Super Duper appealed. Although it raised

numerous challenges to the jury’s verdict and the

rulings of the district court, it never argued that the

alleged absence of willfulness and actual confusion

precluded an award of profits. See Super Duper

Fourth Circuit Opening Br. at 53-57; Super Duper

Fourth Circuit Reply Br. at 32-33. Nor could Super

Duper have raised such arguments before the Fourth

Circuit, as it never made them in the district court

and they were obviously waived. In fact, the

proposed jury instructions that Super Duper

submitted to the district court authorized the jury to

award profits even absent a finding of willfulness or

actual confusion. JA 460.

The Fourth Circuit found “no error requiring

reversal” and affirmed the district court’s judgment

in its entirety in an unpublished, per curiam opinion.

Pet. App. 3a.

With respect to the profits award, the Fourth

Circuit explained that to recover profits for

10

trademark dilution under the Trademark Dilution

Revision Act of 2006 (TDRA), the plaintiff must show

that “the mark ... that is likely to cause dilution by

blurring ... was first used in commerce by the

person against whom [relief] is sought after October

6, 2006,” 15 U.S.C. § 1125(c)(5)(A), and in this case

Super Duper’s marks were in use prior to that date.

Pet. App. 13a.

But the Fourth Circuit held that it would not set

aside the district court’s award of profits on this

basis because “Super Duper failed to raise anything

remotely resembling this argument in its Rule 50(a)

motion for judgment as a matter of law,” and

“lulnder the facts of this case, we decline to exercise

our discretion to correct the error.” Pet. App. 13a.

Thus, the Fourth Circuit let stand the district court’s

determination that either the dilution finding or the

infringement finding was a sufficient basis for the

award of profits. Id.

5. Super Duper sought rehearing or rehearing

en banc. In its rehearing petition, Super Duper did

not raise either of the arguments it presents to this

Court. See Super Duper Pet. for Reh’g or Reh’g En

Banc. The Fourth Circuit denied rehearing. Pet.

App. 29a. No judge requested a poll. Jd.

REASONS FOR DENYING THE PETITION

Super Duper identifies two questions for this

Court’s review. Neither was raised below; neithe1

has ever been considered by any court at any stage of

this litigation; neither is actually presented by this

case; and the Court’s resolution of those questions

would have no effect on the underlying judgment in

any event. Nor, for that matter, is there any circuit

split warranting this Court’s review.

1]

It is important to note what Super Duper is not

challenging. It is not challenging the finding that it

infringed Mattel’s trademarks; it is not challenging

the finding that it willfully diluted Mattel’s

trademarks; and it is not challenging the propriety of

the injunction or the award of attorneys’ fees. !

I. THE “QUESTIONS PRESENTED” ARE NOT

ACTUALLY PRESENTED.

Neither of Super Duper’s purported “Questions

Presented” is properly before this Court. As shown

below, there are three different reasons why a grant

of certiorari would be improvident and why Super

Duper’s vetition should be denied.

A. Super Duper Did Not Raise These Issues

Below.

Super Duper never raised either question below

and neither the district court nor the Fourth Circuit

passed on them. Tellingly, Super Duper does not

identify where in the record it presented these

arguments, and with good reason: they are being

presented for the first time to this Court. For that

reason alone, this Court should decline review. See,

e.g., Pa. Dep't of Corr. v. Yeskey, 524 U.S. 206, 212-13

| For this reason, the arguments that Mattel anticipates will

be raised by Super Duper’s amici are irrelevant. Mattel has not

seen the amicus brief as of the time this brief is being filed, but

to the extent the amici suggest that the consequence of a

judgment in Mattel’s favor is to limit the use of the word “say,’

those arguments are not only erroneous, but they have

absolutely no relevance to Super Duper’s “Questions

Presented,” which concern the prerequisites for a profits award,

not the standard for infringement or dilution liability

(1998) (“Where issues are neither raised before nor

considered by the Court of Appeals, this Court will

not ordinarily consider them.”) (quoting Adickes ¢

S.H. Kress & Co., 398 U.S. 144, 147, n.2 (1970))

In fact, in the district court, Super Duper took

precisely the opposite of the position that it now

asserts. Super Duper’s proposed jury instructions

did not require a finding of willful infringement or

actual confusion before profits could be awarded. JA

460. Thus, the position that Super Duper took

during trial was that profits could be awarded absent

willful infringement or actual confusion

In post-trial briefing on the profits award, Super

Duper failed to raise either argument. See Brief in

Opposition to Motion for Entry of Judgment,

Permanent Injunction, Order of Cancellation, and

Increased Profits at 11-15. In its brief to the Fourth

Circuit, Super Duper failed to raise either argument,

and in fact effectively conceded that the profits

award could be based on the infringement finding.

See Super Duper Fourth Circuit Opening Br. at 51-

53.“ And in its rehearing petition, Super Duper

failed to raise either argument. See Super Duper

Pet. for Reh’g or Reh’g En Banc at 9-10.

In short, these issues have never been presented

to any court at any stage in this litigation It 1s

~ Mattel’s Fourth Circuit brief pointed out this concession, see

Mattel Fourth Circuit Br. at 54, and Super Duper did not

contest this point in its reply brief. In fact, while Super Duper’s

reply brief argued that profits could not be based on the

dilution finding, it did not argue that profits could not be based

on the infringement finding. See Super Duper Fourth Circuit

Reply Br. at 32

l3

therefore hardly surprising that neither the district

court nor the Fourth Circuit ever considered or

addressed them. Super Duper’s arguments have

long since been waived and forfeited, and should not

be considered in the first instance by this Court

B. The Existence Of The “Questions

Presented” Depends On Purported

Factual Findings That The Jury And

The District Court Never Made.

Super Duper’s claim that its two questions are

actually presented in this case rest on the false

premise that the jury or district court rendered

factual findings that were never made. There is no

basis to simply assume on the basic of a

voluminous and hotly-contested evidentiary record

that the jury or the district court sub silentio

made factual findings that they were never asked to,

and did not, make.

Super Duper’s first “Question Presented”

whether a court may award profits absent proof of

intentional infringement — rests on Super Duper’s

assertion that “[t]he jury found ... that the

infringement was not intentional.” Pet. 7. The jury

made no such finding. Question 3 on the verdict

form asked the jury: “Do you find that Super

Duper’s infringement and unfair competition was

intentional?” Pet. App. 43a (emphasis added). At

the time it answered this question, the jury had

already completed Question 2 on the verdict form

and determined that Super Duper had not engaged

in unfair competition, id., so its answer to Question 3

had to be “no,” regardless of whether it would have

found the infringement was intentional. There is

simply no basis for concluding from the verdict form

14

that the jury found that Super Duper’s infringement

was unintentional.

Indeed, Matte! introduced overwhelming

evidence establishing that the infringement was

intentional. That evidence included Mr. Webber's

many false statements under oath, JA 846-78, as

well as the substantial evidence that Super Duper is

a serial copier, JA 626-34, 879-92, 1878, 1901, 1908,

1916, 1962-63, 2527, 2529-30, 2532; see also Pet.

App. 27a (district court finding that “the record is

replete” with evidence of Super Duper knock-offs).

In sum, the record simply does not permit the

conclusion that profits were awarded absent

intentional infmingement, and therefore the first

“Question Presented” is not in fact presented in this

case.

Super Duper’s second “Question Presented”

whether a court may award profits absent proof of

actual confusion — rests on the false premise that

the jury found an absence of actual confusion. Here

too, the jury was not asked to render a specific

finding as to the presence or absence of actual

confusion. Rather, the jury rendered a general

verdict reflecting its balancing of the seven

likelihood-of-confusion factors. See Pet. App. 42a.

Moreover, Mattel introduced evidence of actual

confusion, JA 1135, Fourth Circuit Br. 35-36, and the

district court instructed the jury on actual confusion

thus indicating that the court determined that

there was sufficient evidence in the record for the

jury to find actual confusion. JA 2013. Likewise, the

Fourth Circuit recognized that there was sufficient

evidence for a jury to have found actual confusion.

Pet. App. 9a (presence of actual confusion in this

case is “a factual matter best left to the jury’s

determination”). In sum, the record simply does not

permit the conclusion that profits were awarded

absent actual confusion, and thus the second

“Question Presented” is not in fact presented.

C. The Profits Award Can Be Upheld

Entirely Based On The Dilution Finding,

So This Court’s Resolution Of The

“Questions Presented” Would Not Affect

The Judgment Below.

Plenary review by this Court would be an empty

exercise. Even if the Court resolved the “Question

Presented” in Super Duper’s favor, the judgment

below would not be affected in the slightest. That 1

because both of Super Duper’s questions addres

when a district court may award profits based on

trademark infringement But in this case, the

district court identified two separate and

independent bases for the profits award

trademark wfringement and trademark dilution

and the Fourth Circuit affirmed in full. Thus, even if

this Court were to hold that profits were incorrectly

awarded based on trademark infringement, th

judgment would still stand in its entirety based on

the finding of trademark dilution i finding that

Super Duper does not challenge

Under the Lanham Act, 15 U.S.C. § 111%

profits may be awarded for infmngement o1

intentional dilution. In this case, the jury awarded

profits solely on the basis of dilution. Pet. App. 44a

46a. In increasing the profits award, the district

court held that the heightened award could be based

on either infringement or dilution. Pet. App. 25a

On appeal, Super Duper argued that, under the

TDRA, profits could not be based on the dilution

finding. The Fourth Circuit rejected this argument

16

and permitted the district court’s determination to

stand. While the court acknowledged that Super

Duper’s reading of the law was correct, the court

held that Super Duper had waived the argument and

that the court would not exercise its discretion to

vacate the determination. See Pet. App. 13a (“Super

Duper failed to raise anything remotely resembling

this argument in its Rule 50(a) motion for judgment

as a matter of law,” and “lulnder the facts of this

case. we decline to exercise our discretion to correct

the error.”).?

The Fourth Circuit thus left intact the award of

profits based on dilution. It explained that “the

decision to correct a forfeited error is within the

sound discretion of the court of appeals, and the

court should not exercise that discretion unless the

error seriously affects the fairness, integrity or public

reputation of judicial proceedings.” Pet. App. 13a

l4a (quoting United States v. Olano, 507 U.S. 725,

732 (1993)) (brackets omitted)

Super Duper does not challenge the Fourth

Circuit's application of the plain error doctrine

Consequently, even if this Court were to hold that

the courts below erred in permitting the profit

Super Duper may argue that the = court plain error

letermination rested = on _ it letermination that — the

infringement finding supported the profits award and thu

there was no need to correct the error. This would be wrong for

two reasons. One, the court's holding was based on Super

Duper’s waiver of any challenge to basing the profits award on

dilution. Pet. App. 13a. Two, even if the court’s holding were

based solely on the infringement finding, Super Duper never

irgued to the Fourth Circuit that profits could not be upheld

based on the infringement finding

award based on the infringement finding, the Fourth

Circuit’s affirmance of the award based on _ the

dilution finding -— a determination that rests on the

Fourth Circuit’s unchallenged finding of waiver and

its application of the plain error doctrine would

still remain. This Court is not in the business of

issuing advisory opiniens that have no bearing on

the underlying judgment.

Il. THERE IS NO CIRCUIT SPLIT.

Even if this Court were somehow to view the

“Questions Presented” as actually presented in this

case, review would still be unwarranted because

there is no circuit split.

A. Congress Has Eliminated Any Confusion

Over Whether Profits May Be Awarded

Absent Intentional Infringement.

The question whether profits may be awarded

absent intentional infringement has already been

answered by Congress, when it passed the

Trademark Amendments Act of 1999. The

amendments make clear that intentional

infringement 1s not a prerequisite to a profits award

See Pub. L. No. 106-43, § 3(b), 113 Stat. 218, 219

(1999) (amending 15 U.S.C. §1117(a)) The

purported circuit split cited by Super Duper is based

on pre-amendment cases. Now that Congress has

answered the question, there is no need for this

Court to weigh in and “resolve” a circuit split that no

longer exists

1. Pnor to the amendments, 15 U.S.C. § 1117(a)

provided that a plaintiff could recover profits if it

established “a violation under section 1125(a)” (the

provision governing trademark infringement). Some

courts interpreted this language as permitting an

1s

award of profits only in cases of intentional or willful

infringement. See, e.g., Securacomm Consulting Inc.

v. Securacom, Inc., 166 F.3d 182, 190 (3d Cir. 1999).

Other courts, however, noted that the statutory

language did not impose a willfulness requirement,

and accordingly held that profits could be awarded

absent willful infringement. See, e.g., Roulo v. Russ

Berrie & Co., 886 F.2d 931, 941 (7th Cir. 1989)

(“there is no express requirement ... that the

infringer willfully infringe to justify an award of

profits”).

In 1999, Congress” resolved the issue by

amending the statute. The amendments modified 15

US.C. §1117(a) to provide that a_ plaintiff can

recover profits if it estabhshes “a violation under

section 1125(a) of this title, or a willful violation

under ection 1125(c)” (the former — provision

prohibits trademark infringement; the latter

prohibits trademark dilution) See 15 U.S.C

§ 1117(a) (Aug. 1999) (emphasis added).4 Thus, the

effect of the amendment was to make clear that

willfulness was not required for profits awards based

4

Congress has ince amended § 1117(a but without

substantive change for purposes of the questions presented

The statute now reads in relevant part: “When a violation of

any night of the registrant of a mark remstered 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 thi

title, shall have been established in any civil action arising

under this chapter, the plaintiff shall be entitled, subject to thi

provisions of sections 1111 and 1114 of this title, and subject to

the principles of equity, to recover (1) defendant's profit

(2) any damages sustained by the plaintiff, and (3) the costs of

the action y to U3.. © 1117(a

19

on infringement, but 1s required for profits awards

based on dilution. See Duncan v. Walker, 533 U.S.

167, 173 (2001) (noting the “well settled” rule that

“where Congress includes particular language in one

section of a statute but omits it in another section of

the same Act, it is generally presumed that Congress

acts intentionally and purposely in the disparate

inclusion or exclusion”) (citations omitted).

2. To the extent there was disagreement in the

circuits over this question, any confusion has

evaporated since the clarifying 1999 amendments.

Some courts have expressly changed their position in

response to the amended statutory language. For

example, prior to the amendments, the Third Circuit

had held that willfulness was a prerequisite to a

profits award. See Securacomm Consulting, 166 F.3d

at 190. But in Banjo Buddies, Inc. v. Renosky, 399

F.8d 168 (3d Cir. 2005), the court changed its rule

and explained

The 1999 amendment replaced “or a violation

under section 43(a) [§ 1125(a)]” with “a

violation under section 43(a) [15 U.S.C.

§ 1125(a)], or a willful violation under section

43(c) [15 U.S.C. § 1i125(c)] ....” The plain

language of the amendment indicates that

Congress intended to condition monetary

awards for § 43(c) violations, but not § 43(a)

violations, on a showing of willfulness

Id. at 174 (emphasis added by Third Circuit).

Accordingly, the Third Circuit held that

“SecuraComm’s bright-line willfulness requirement

has been superseded by statute,” and willfulness is

no longer a prerequisite to obtaining profits in an

infringement action. /d.

20

Likewise, district courts in the Second and Ninth

Circuits have recognized that pmor circuit decisions

requiring willfulness have been superseded by the

amendments. See Nike, Inc. v. Top Brand Co., No.

00-civ-8179-KMW-RLE, 2005 WL 1654859, at *10

(S.D.N.Y. July 13, 2005) (“Without reason to believe

that Congress intended to preserve the Second

Circuit rule {requiring a showing of bad faith or

intentional misconduct to recover profits for

infringement] that preceded the 1999 amendment,

the plain language of the statute should govern.”);

R&R Partners, Inc. v. Tovar, No. 03:040-cev-00145

LRH-PAL, 2007 WL 1202802, at *1 (D. Nev. Apr. 23,

2007) (concluding that, despite the Ninth Circuit's

previous requirement of willful infringement, “[t/he

plain language of [the 1999 Amendment] indicates

that Congress intended to condition monetary

awards for Section 43(c) violations on a finding of

willfulness, but not Section 43(a) violations”)

The Fourth Circuit has also recognized that the

amendments clarified the law. In Synergistic

International, LLC v. Korman, 470 F.3d 162, 175 &

n.13 (4th Cir. 2006), the court held that “liJn light of

ithe 1999 amendments], we agree that willfulness is

not an essential prerequisite for a damages award,

but that it remains a highly pertinent factor.”

The Fifth Circuit has reached the same

conclusion, drawing a clear distinction between the

pre-amendment and post-amendment caselaw. In

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

F.3d 338, 349 (5th Cir. 2002), the court began by

canvassing the pre-amendment caselaw. But the

court then stated: “It is important to note, however,

that prior to the amendment of § 1117(a) on August

5, 1999, there were no references to the term ‘willful’

in § 1117(a), thus the decisions of our sister circuits

21

are of limited utility to the decision we are faced with

today.” Jd. at 348. The Fifth Circuit went on to

reject “a bright-line rule in which a showing of willful

infringement is a prerequisite to an accounting of

profits.” Jd. at 349.9

3. Super Duper is asking this Court to “resolve”

a circuit split that no longer exists. This 1s evident

by the telling fact that Super Duper identifies no

circuit court decision since the 1999 amendment that

requires a showing of willful infringement for a

profits award

Cases that imposed a willfulness requirement

based on the old version of the statute are no longer

good law and obviously do not support the existence

of a current split in the circuits. Many courts have

already modified their approach based on the new

version of the statute, and those courts that have not

yet had the opportunity to do so should be allowed to

make the change for themselves and bnng their

caselaw into harmony with the other circuits. There

is simply no need for this Court to answer the

question that Congress has already answered,

particularly when so many courts are already

bringing their caselaw in line with the new version of

the statute

Super Duper cites Tamko Roofing Products, Inc

v. Ideal Roofing Co., 282 F.3d 23 (1st Cir. 2002), to

D Super Duper cites McCarthy on Trademarks and Unfaur

Competition § 30:62 (4th ed. Supp. 2010) for the proposition

that willfulness is still required to obtain profits. Pet. 20. But

Professor McCarthy openly admits that the casclaw is to the

contrary, and no circuit courts have adopted his personal view

See McCarthy, supra, § 30:62

*)*)

support the existence of a split. But in Tamko, the

First Circuit expressly declined to reach the issue of

whether willfulness is required for an award of

profits because the jury in that case found

willfulness. 7d. at 36. The fact that the First Circuit

has not yet addressed the question was made clear in

Venture Tape Corp. v. McGills Glass Warehouse, 540

F.3d 56, 63 (Ist Cir. 2008), cert. dented, 129 S. Ct

1622 (2009), where the court cited Tamko and stated

“We have previously declined to reach the question of

whether ‘willfulness’ is required as a foundation for

(a profits] award and we need not decide the

issue here.”

Finally, Super Duper cites three law review

articles as constituting general “scholarly agreement

that this Court should review the question.” Pet. 17

Two of those articles were published prior to 1999,

the year in which Congress answered the question

And the third article explicitly reyects Super Duper’s

position by concluding that “neither actual confusion

nor willfulness is part of § 1117(a).”. See David 5

Almeling, The Infringement-Plus-Equity Model \

Better Way to Award Monetary Relief in Trademark

Cases, 14 J. Intell. Prop. L. 205, 221 n.82 (2007).®

6

Super Duper asserts that awarding profit ibsent proof of

willfulness and actual confusion “would raise serious dus

process concerns.” Pet. 23. This argument fails for several

reasons. First, Super Duper never raised it below and no court

has passed on it at any stage in this ltigation. Second, Super

Duper is wrong to suggest that absent these requirements, the

award in this case would be unconstitutional, and no court ha

taken this approach

B. The Circuits Are Not Divided Over

Whether Actual Confusion Is Necessary

For An Award Of Profits.

Super Duper admits that the Third, Fourth

Kifth, Sixth, Seventh, Ninth, Tenth, and Eleventh

Circuits do not require actual confusion before

awarding profits. Pet. 11, 15. Super Duper furthe:

admits that “actual confusion is not always a

requirement for an award of profits in the Second

Circuit,” and does not claim that the “certai

circumstances’ where such a showing Is required are

oresent in this case (and they are not). /d. at 14

And Super Duper concedes that the D.C. Circuit “ha

not specifically held that actual confusion

required.” /d. at 16

The only circuit that Super Duper «

requires actual confusion 1s the Federal Circuit. Pet

16 (CciILINL Conopco [ri May Dr pi Store C +h

Ke3d 1556 (Fed. Cu 1994 But in that case, the

federal Circuit was applying substantive law of the

Kighth Circuit Id. at 1563. Moreover, the Eighth

Circuit case cited by the Federal Circuit states that

actual confusion 1s necessary for an award oft actu

lamapes not an award of projits See Woodsmit/

Publ’g Co. v. Meredith Corp., 904 F.2d 1244, 1247

n.5 (8th Cir. 1990 Che two are treated differently

y the caselaw, as well as by the Lanham Act itself

See, e.g., Thompson v. Haynes, 305 F.3d 1369, 1380

Fed. Cir. 2002) (explaining that “by the terms of

Q 1117(a)}, ‘damaves’ ire to he treated separately

from ‘profits”

There is no circuit that requires a finding of

actual confusion before awarding profit Indeed

ucn a requirement vould be directly contrary to tne

_— IT a 11 a

Widll Manvuave Ol i.) | — { iit i/(a : 7

ibviously does not impose such a requirement

CONCLUSION