Summary
The United States District Court for the Northern District of Alabama grants in part and denies in part Defendants’ motions for partial summary judgment in a trademark infringement action under the Lanham Act. The court grants summary judgment against the plaintiff on damages and an accounting of profits because it failed to disclose computations, and grants Dr. Spellmon summary judgment because there was no evidence that he participated in or was responsible for the alleged infringement. The court denies summary judgment on injunctive relief, concluding that geographic separation does not categorically bar such relief before liability and likelihood of confusion are determined.
Topics
Practice areas
Questions Presented
- Whether geographically distinct markets and the absence of a demonstrated likelihood of expansion barred Perfect Body from seeking injunctive relief under the Lanham Act at the summary-judgment stage.
- Whether Perfect Body was entitled to pursue damages or an accounting of Defendants’ profits after failing to disclose computations for those remedies under the Federal Rules of Civil Procedure.
- Whether Dr. Spellmon could be held personally liable for PBLW’s alleged trademark infringement as a corporate officer or participant in contributory infringement.
- Whether the undisclosed damages and profits evidence could be used at summary judgment when the failure to disclose was neither substantially justified nor harmless.
Holdings
- Geographic separation does not independently bar a Lanham Act plaintiff from seeking injunctive relief. The court must first determine whether infringement and a likelihood of confusion exist, and injunctive relief may be entered wherever that likelihood exists.
- A trademark plaintiff that fails to provide computations for claimed damages and an accounting of profits as required by Rule 26(a)(1)(A)(iii), and whose failure is neither substantially justified nor harmless, may not use that evidence to establish entitlement to those remedies at summary judgment.
- A corporate officer is personally liable for the corporation’s Lanham Act infringement only if the officer actively participated as a moving force in the infringing design or otherwise caused the infringement as a whole to occur. An employee who merely performs medical services, without evidence of inducing infringement or supplying an instrumentality or supporting service that enables continued infringement, is not liable for contributory infringement.
Key quotations
“Dawn Donut does not create a separate additional burden for plaintiffs seeking injunctive relief.” (Section II.1.a)
“These cases are straightforward applications of the Lanham Act, which requires courts to (1) determine if there is a likelihood of confusion, and (2) enjoin use wherever that likelihood exists.” (Section II.1.a)
“Holding Dr. Spellmon liable for PBLW’s actions would expand the contributory liability framework beyond its purpose by holding an employee liable for continuing to perform the service he is employed to do.” (Section II.2)
Factual background
Perfect Body Image operates a laser-aesthetics business in New York and owns registered marks including “Perfect Body Laser and Aesthetics” and a corresponding logo. Perfect Body Laser and Wellness operates a single laser-services location in Alabama under a similar name and logo; online searches returned results for both businesses, and at least one customer confused an advertisement for the Alabama business with Perfect Body. Perfect Body had no physical location in Alabama, had not targeted Birmingham advertising, and had no plan to expand there. Dr. Spellmon served as PBLW’s medical director and oversaw medical procedures but was not involved in its advertising, branding, marketing, or trademark selection.
Procedural history
Perfect Body sued Perfect Body Laser and Wellness, LLC, Chandra C. Bowen, and Dr. Calvin Spellmon, Jr., alleging infringement of its registered trademarks under 15 U.S.C. § 1114(1). After discovery closed, Defendants moved for summary judgment concerning injunctive relief, damages, and an accounting of profits, while Dr. Spellmon separately sought summary judgment on liability. The court denied summary judgment as to injunctive relief, granted summary judgment against Perfect Body on damages and an accounting of profits, and granted Dr. Spellmon summary judgment on the infringement claims against him.