Earthquake Sound Corporation v. Bumper Industries, Earthquake Sound Corporation v. Bumper Industries

Opinion by Judge Brunetti; Concurrence by Judge Ferguson

OPINION

These consolidated appeals concern two attorney’s fees orders arising from a trademark infringement suit. For the reasons stated in this opinion, we affirm.

I. Background

A. Prior Proceedings

Appellee Earthquake Sound Corporation (“Earthquake”) and Appellant Bumper In *1212 dustries (“Bumper”) sell car audio equipment. Earthquake sued Bumper in 1995 for trademark infringement in violation of 15 U.S.C. § 1114 , unfair competition in violation of 15 U.S.C. § 1125 (a), and trademark infringement and deceptive trade practices in violation of state law. Earthquake claimed that Bumper’s use of the word “Carquake” on car audio products infringed its “Earthquake,” “Bass-Quake” and “Quake” marks.

Earthquake moved for summary judgment on the questions of liability for infringement and entitlement to attorney’s fees. On October 10, 1997, the district court granted Earthquake’s motion. The district court determined that Bumper was infringing Earthquake’s “Earthquake” and “Bass-Quake” marks, ordered Bumper to pay damages in an amount to be determined later, and imposed a permanent injunction. The district court also…

concurring.

I concur in the decision to affirm the orders of the District Court. However, I do not concur in the analysis set forth by the majority because that analysis fails to acknowledge that “willful and deliberate,” in the context of attorney’s fees awards in exceptional trademark cases, does not mean merely “voluntary” or “intentional.” A competitor has the right — even the duty — to intentionally challenge the monopoly created by a weak trademark. A finding that a trademark case is exceptional enough to permit an award of attorney’s fees requires something more than a voluntary act by the infringing party.

This Circuit has adopted the Committee on the Judiciary’s recommendation that attorney’s fees should be available under the Lanham Act “in exceptional cases, i.e., in infringement cases where the acts of infringement can be characterized as ‘malicious,’ ‘fraudulent,’ ‘deliberate,’ or ‘willful’.” Playboy Enterprises, Inc. v. Baccarat Clothing Co., Inc., 692 F.2d 1272, 1276 (9th Cir.1982) (quoting S.Rep. No. 93-1400 (1974)).

In Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir.1993), we explained that “[wjillful infringement carries a connotation of…

352 F.3d 1210 EARTHQUAKE SOUND CORPORATION, Plaintiff-Appellee, v. BUMPER INDUSTRIES, Defendant-Appellant. Earthquake Sound Corporation, Plaintiff-Appellee, v. Bumper Industries, Defendant-Appellant. No. 00-16532. No. 01-15121. United States Court of Appeals, Ninth Circuit. Argued and Submitted December 3, 2002 — San Francisco, California. Filed December 16, 2003. John H. Pelzer, Koorosh Afshari, Fort Lauderdale, FL, for the appellant. Koorosh Afshari and Gregory N. Owen, Owen, Wickersham & Erickson, P.C., San Francisco, CA, for the appellee. Appeal from the United States District Court for the District of Nevada; Lloyd D. George, District Judge, Presiding. D.C. No.CV-95-00563-LDG(RLH). Before Warren J. Ferguson, Melvin Brunetti, and A. Wallace Tashima, Circuit Judges. Opinion by Judge Brunetti; Concurrence by Judge Ferguson OPINION BRUNETTI, Circuit Judge. 1 These consolidated appeals concern two attorney's fees orders arising from a trademark infringement suit. For the reasons stated in this opinion, we affirm. I. Background A. Prior Proceedings 2 Appellee Earthquake Sound Corporation ("Earthquake") and Appellant Bumper Industries ("Bumper") sell car audio equipment.…