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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2705%3A3

## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2011
- **Citation:** 562 U.S. 1179

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2705%3A3. Public record. Not legal advice.