Willful ignorance cannot be considered a defense in an infringement claim


Luxottica Group is an Italian company based in Washington. The company is engaged in the business of luxury eyewear manufacturers and holds registered trademarks. The company sued for contributory trademark infringement under the Lanham Act Airport mini mall, who owned a discount mall whose lodgers sold fake glasses, the mall owner, the mall manager, the landlord, and the landlord’s property manager. The defendants have appealed United States Court of Appeals for the Eleventh Circuitafter their petition was rejected in United States District Court for the Northern District of Georgia.

The defendants, Jerome et al Jenny Yes own accused Yes Assets, LLC. In 2004, Yes Assets acquired the Old National Village Shopping Center in College Park, Georgia. The particular mall contained approximately 30 storefronts and approximately 70-000 square feet of indoor space referred to as “The Mall” containing between 120 and 130 booths for rental to individual vendors. defendant Alice Jamison Yehs daughter ran the mall. Her duties included reviewing leases, collecting rents, and visiting the mall and Yes Assets tenants, including renting the mall. from December 1, 2009Yes Assets leases the mall to the defendant Airport Mini Mall, LLC (“AMM”), a company that Jerome and Jenny founded and later passed to their son, the Defendant donald yesand then the mall was known as International discount mall, trade name of AMM. During AMM’s tenure as the mall’s lessor, there were three law enforcement raids at the mall, during which officers executed search warrants, arrested tenants and seized alleged counterfeits Luxottica Glasses and other branded products. Luxottica twice sent letters informing the defendants that their lodgers were not authorized to sell glasses of their brands and that any brand resembling Ray-Ban or Oakley would indicate the glasses were counterfeit. Jamison and Donald both knew letters.

Luxottica then sued the defendants for contributory trademark infringement pursuant to S. 32 of the Lanham Act, 15 USC S 1114. The district court denied the defendant’s motions, and after an 11-day trial, the jury issued a special verdict finding all defendants liable for contributory trademark infringement and evaluating them $100,000 Compensation for each trademark infringed, total $1.9 million in case of damage.

The Court of Appeals affirmed the District Court on each challenged issue. The district court correctly found that the evidence was sufficient, nor did the district court commit a reversible error in the direction of the jury. First the court of appeal said that Luxottica provided sufficient evidence to support the jury’s finding of contributory trademark infringement. Under the Lanham Act, the owner of a registered mark can hold someone responsible for a mark infringement if that person causes the infringement. Defendants argued that the district court should have followed the reasoning of another case, which they believe imposed a stricter knowledge requirement for contributory trademark infringement claims. The defendants argued that the evidence was insufficient. However, the appeals court disagreed on the defendants’ side, noting that the evidence was sufficient to support the jury’s verdict because the defendants had at least constructive knowledge of their lodgers’ direct violations.

Second the court of appeal decided on the landlord’s liability for indirect trademark infringement. The defendants in this case provided services such as space, utilities, and parking that facilitated the direct sale of counterfeit goods by infringers. In this case, defendants do not dispute that the contributory trademark infringement cause of action can be applied to the landlord-tenant context. therefore, the court of appeal assumed without ruling that a landlord may be jointly responsible for direct trademark infringement by the tenant while providing a service (such as space, utilities, or maintenance) that makes it possible.

Last the court of appeal stated that the evidence was sufficient to show that the defendants had at least constructive knowledge of certain infringing acts. pursuing a knowledge theory of contributory trademark infringement, Luxottica sought to prove that the defendants knew or had reason to believe that their lodgers were selling counterfeit items but continued to provide services that enabled the lodgers to sell their goods. The question before the court is whether the knowledge theory of complicity requires the plaintiff to show that the defendant had actual or factual knowledge of certain infringing acts. The court held that they need not answer that question, however, because even if liability for contributory trademark infringement requires the defendant to have knowledge of specific acts of direct infringement, the evidence in this case was sufficient for a reasonable jury to determine that the defendants had at least constructive knowledge of concrete direct infringement actions by their subtenants.

Finally the court of appeal affirmed the district court’s decision, noting that “the district court made no reversible error with respect to the questions submitted for review by the defendants.”

Willful ignorance cannot be considered a defense in an infringement claim

The content of this article is intended to provide a general guide to the topic. Professional advice should be sought in relation to your specific circumstances.

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