Jason Scott Collection, Inc. v. Trendily Furniture, LLC ( 2023 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
JASON SCOTT COLLECTION, No. 21-16978
INC., an Arizona corporation,
Plaintiff-Appellee, D.C. No.
2:17-cv-02712-
v. JJT
TRENDILY FURNITURE, LLC, a
Texas limited liability company; OPINION
TRENDILY HOME COLLECTION,
LLC, a Texas limited liability
company; RAHUL MALHOTRA, an
individual,
Defendants-Appellants.
Appeal from the United States District Court
for the District of Arizona
John Joseph Tuchi, District Judge, Presiding
Argued and Submitted December 5, 2022
Phoenix, Arizona
Filed May 30, 2023
Before: Kim McLane Wardlaw and Patrick J. Bumatay,
Circuit Judges, and Karen E. Schreier,* District Judge.
*
The Honorable Karen E. Schreier, United States District Judge for the
District of South Dakota, sitting by designation.
2 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Opinion by Judge Wardlaw
SUMMARY**
Lanham Act
In a case in which defendants Trendily Furniture, LLC,
Trendily Home Collection, LLC, and Raul Malhotra
(collectively, “Trendily”) intentionally copied three unique
high-end furniture designs by plaintiff Jason Scott
Collection (JSC) and sold nearly identical pieces to Texas
retailers, the panel affirmed the district court’s decision,
following a bench trial, holding Trendily liable on trade
dress infringement claims and awarding attorney’s fees.
Trendily did not challenge on appeal the district court’s
summary judgment to JSC on its copyright claim.
To obtain a judgment for trade dress infringement under
the Lanham Act, a plaintiff must prove: (1) that its claimed
trade dress is nonfunctional; (2) that its claimed dress serves
a source-identifying role either because it is inherently
distinctive or has acquired secondary meaning; and (3) that
the defendant’s product or service creates a likelihood of
consumer confusion.
Because the parties stipulated to nonfunctionality, the
district court relied upon that stipulation at trial, and Trendily
did not provide a good reason for disregarding that
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 3
stipulation, the panel accepted that JSC’s claimed trade dress
is nonfunctional.
Because the parties also stipulated that JSC’s trade dress
is not inherently distinctive, JSC needed to prove its trade
dress has secondary meaning. The panel held that the
district court did not clearly err in finding that JSC did
so. The panel wrote that Trendily’s clear intent to copy
nonfunctional features of JSC’s pieces supports a strong
inference of secondary meaning. Noting that copyright and
trademark are not mutually exclusive, the panel rejected
Trendily’s argument that it should be held liable only under
the Copyright Act. The panel held that the district court
properly considered several other factors including that the
JSC pieces were continuously manufactured and sold since
2004, that JSC had a longstanding and well-known presence
in the high-end furniture market, and that JSC’s furniture
was distinctive in the minds of purchasers. The panel
explained that even if it were to disregard JSC’s evidence of
retailer confusion, that evidence is not necessary for JSC to
establish secondary meaning, and direct proof of end-
consumer confusion is not required. Instead, the district
court relied on proof of copying and a substantial amount of
indirect evidence indicating that JSC’s work was
recognizable by both retailers and consumers in the high-end
furniture market, as well as advertisements. The panel wrote
that finding secondary meaning on this basis was not error,
and that the district court’s reliance on retailer confusion was
appropriate in this market. Rejecting Trendily’s argument
that product designs can never be distinctive, the panel
explained that a design is still protectable if it acquires
secondary meaning.
The panel held that the district court did not err in finding
that there was a likelihood of confusion between the JSC
4 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
pieces and the Trendily pieces. Considering similarity,
proximity, and retailer confusion, the panel held that because
the products and marketing channels of the parties were
nearly identical, the district court did not err in its likelihood
of confusion finding.
Turning to remedies, Trendily challenged the district
court’s decision to award reasonably foreseeable damages to
JSC based on its changed relationship with retailer Coyote
Candle. The panel wrote that there is some flexibility in
assessing reasonable foreseeability under the Lanham Act,
and that damaged business relationships are a foreseeable
consequence of trademark infringement. Given the broad
discretion and the plausible causal relationship between
Trendily’s actions and the loss of Coyote Candle’s business,
the panel concluded that the district court did not abuse its
wide discretion when it found that JSC suffered a
compensable harm. The panel held that the district court did
not abuse its discretion in awarding $132,747 of lost annual
profits from Coyote Candle over a period of three years,
which amounts to six times the $19,995 in profits JSC was
awarded for its copyright claim. The panel explained that
the copyright damages were based on Trendily’s
retrospective gross profits from the infringement, while the
trade dress damages were based on JSC’s prospective lost
profits.
The panel held that the district court correctly awarded
attorneys’ fees, as it did not abuse its discretion in
concluding that Trendily’s willful and brazen infringement,
paired with the strength of JSC’s trade dress claim,
constitutes an exceptional case. The panel awarded JSC
attorneys’ fees on appeal, referring determination of the
appropriate amount to the Appellate Commissioner.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 5
COUNSEL
Leighton M. Anderson (argued), Bewley Lassleben & Miller
LLP, Whittier, California, for Defendants-Appellants.
Thomas Dietrich (argued), Dietrich IP PLLC, Tucson,
Arizona, for Plaintiff-Appellee.
OPINION
WARDLAW, Circuit Judge:
Appellee Jason Scott Collection, Inc. (JSC) and
Appellants Trendily Furniture, LLC, Trendily Home
Collection, LLC and Rahul Malhotra (collectively,
“Trendily”) are high-end furniture manufacturers that sell
their products in the Texas market. In 2016, Trendily
intentionally copied three unique furniture designs by JSC
and sold them to Texas retailers. The district court granted
summary judgment to JSC on its copyright claim, and then
held Trendily liable on the trade dress claim following a
bench trial. On appeal, Trendily challenges only the latter
ruling, arguing that trade dress liability is precluded here
because JSC did not demonstrate either secondary meaning
or the likelihood of consumer confusion. Because the
district court did not clearly err in finding JSC’s pieces had
acquired secondary meaning and created a likelihood of
confusion, and did not abuse its discretion in awarding
damages and attorneys’ fees, we affirm.
6 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
I.
In 1998, designer Jason Scott Forsberg (Jason Scott)
started creating hand-carved furniture out of reclaimed teak
in a small village in Indonesia. So began what JSC refers to
as the “Jason Scott story”: Jason Scott worked with local
wood carvers to craft his pieces, and JSC eventually became
the village’s largest employer. He was strongly connected
to the village community, as he helped fund a school, helped
provide electricity, and started his family there.
Jason Scott’s first furniture collection—aptly titled the
“Jason Scott Collection”—featured large, heavy-set pieces
of furniture embellished with detailed wood carvings and
metal designs. In 2003, Jason Scott designed the three pieces
in the Collection that are now at issue in this case: the Sacred
Heart Table (Figure 1), the Iron Star Desk (Figure 3), and the
Borgota Buffet (Figure 5) (collectively, the “JSC Pieces”).
See Appendix A.
Because Texas is JSC’s largest market, and Trendily’s
furniture manufacturing business is based in Dallas,
Trendily and JSC compete in the Texas high-end furniture
market. In September 2016, Rahul Malhotra, Trendily’s
owner and operator, met with Ron McBee, the owner of
retailer Western Heritage Furniture in Weatherford. During
their meeting, McBee gave Malhotra printed photographs of
the JSC Pieces and asked him to manufacture similar pieces
for Western Heritage. Malhotra sent the photographs to
Trendily’s factory and directed carpenters to build the “M.J.
Collection,” a set of nearly identical imitations of the JSC
Pieces comprised of the M.J. Dining Table (Figure 2), the
M.J. Desk (Figure 4), and the M.J. Sideboard (Figure 6)
(collectively, the “Trendily Pieces”). See Appendix A.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 7
Since 2004, JSC has sold its pieces exclusively to
authorized retailers. Under these exclusivity agreements,
JSC agrees to restrict supply of its pieces to a single store
within a certain radius, and the retailer agrees to restrict sales
to end-consumers. Sally Brumbaugh is a co-owner of Fort
Worth retailer Brumbaugh’s Furniture, which has an
exclusive right to market the Jason Scott Collection. A few
months after Trendily created the M.J. Collection, she saw
the Trendily Pieces at Western Heritage, for whom Malhotra
had copied the pieces. Brumbaugh called Jason Scott,
concerned that he was selling furniture to her competitor in
violation of their exclusivity agreement. The Trendily
Pieces were so convincing that even Jason Scott initially
mistook the furniture as his own.
Like Brumbaugh, Ben Aufill, the owner of Lubbock
retailer Coyote Candle—a customer of both JSC and
Trendily—noticed when the Trendily Pieces entered the
market. Aufill was a close friend of Brian Forsberg, Jason
Scott’s brother and JSC’s Texas-based delivery driver.
Trendily had pitched and sold the Trendily Pieces to one of
Aufill’s Lubbock competitors, Hat Creek Interiors. When
Aufill discovered the Trendily Pieces at Hat Creek, he
mentioned to Brian that a retailer was selling JSC knockoffs.
Brian requested the name of the manufacturer, but Aufill
only agreed to disclose the information on very specific
terms. Concerned that he would be considered a “snitch,”
Aufill told Brian, “I’ll tell you but . . . if you mention my
name I’ll kick your ass and stop buying Jason Scott and no
more Tex mex tacos at the race car shop!” Aufill eventually
made good on his promise. After Jason Scott revealed
Aufill’s identity as an integral part of this lawsuit, Coyote
Candle stopped purchasing JSC furniture and Brian lost his
friendship with Aufill.
8 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
In May 2017, Jason Scott registered the JSC Pieces for
copyright protection as “[d]ecorative sculptural designs on
furniture.” His counsel then sent two cease-and-desist letters
to Trendily in May and June of 2017, each explaining that
the Trendily Pieces infringed his copyrights in those designs.
Trendily received the letters, but continued to pitch and sell
the pieces to retailers and display them in its showroom until
JSC filed this lawsuit in August 2017. In total, Trendily
manufactured 18 Trendily Pieces (6 of each item) and sold 6
M.J. Dining Tables, 4 M.J. Office Desks, and 5 M.J. Side
Boards.
JSC sued Trendily for copyright and trade dress
infringement, as well as unfair competition. The district
court granted summary judgment on the copyright claim and
awarded JSC $19,995, the amount of Trendily’s profits on
the infringing sales, permanently enjoined Trendily from
selling any infringing products, and ordered Trendily to
destroy the remaining Trendily Pieces. However, it found a
genuine issue of material fact as to whether the JSC Pieces
had acquired secondary meaning, which required it to hold a
bench trial to resolve the trade dress claim.
Following the bench trial, the district court concluded
that the JSC Pieces had acquired secondary meaning. It
reasoned that “[p]roof of copying strongly supports an
inference of secondary meaning,” adidas Am., Inc. v.
Skechers USA, Inc., 890 F.3d 747, 755 (9th Cir. 2018)
(citation omitted), and it was obvious that Trendily had
intentionally copied the JSC Pieces to capitalize on JSC’s
good will. In addition, the court found several other
indicators of secondary meaning, including that JSC’s
furniture had been on the market for many years; was
featured in advertisements; was displayed at trade shows;
and was recognized by both retailers and end-consumers.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 9
The court also found that likelihood of confusion was “not a
close call” because of the precise similarity between JSC and
Trendily’s designs.
The district court awarded JSC three years of estimated
lost sales from Coyote Candle as reasonably foreseeable
damages from the infringement.1 It explained that, because
Trendily and JSC operate in the same market and share some
of the same customers, Trendily’s precise copying would
foreseeably lead to damaged business relationships.
Moreover, it was Trendily’s refusal to cease and desist—
even after it was sent JSC’s certificates of copyright
registration—that forced JSC’s initiation of this lawsuit,
which was the ultimate reason Aufill’s identity needed to be
revealed. Thus, Aufill’s necessary involvement in the
infringement litigation made damages JSC suffered from
that involvement compensable.2
The district court also awarded JSC statutory attorneys’
fees. It found that this was an “exceptional case” warranting
a fee award because the copying was willful, it continued
after Trendily received cease-and-desist letters, and Trendily
had resisted compliance with the Court’s injunction
requiring destruction of the Trendily Pieces. In total, the
court awarded JSC $132,747 in damages from its lost
1
The district court rejected JSC’s argument that it was entitled to
reasonably foreseeable damages for an inability to increase the price of
its furniture beginning in 2017. It concluded that JSC provided no
evidence that the furniture market would not have supported a price
increase while the Trendily Pieces were on the market. JSC does not
challenge this ruling on appeal.
2
The district court rejected Trendily’s unclean hands defense, and
determined that JSC was not entitled to treble damages under 15 U.S.C.
§ 1117(a). Neither party challenges these determinations on appeal.
10 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
business with Coyote Candle, $132,571.50 in reasonable
attorneys’ fees, and $3,904.04 in non-taxable costs.3 After
the district court denied Trendily’s motion to alter or amend
the district court’s judgment, Trendily appealed.
II.
We have jurisdiction over an appeal from a final
judgment under 28 U.S.C. § 1291. In cases involving the
Lanham Act, 15 U.S.C. §§ 1051 et seq. (1946), “[a] trial
court’s finding of secondary meaning [and likelihood of
confusion] may be reversed only upon a showing of clear
error.” Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d
814, 822 (9th Cir. 1996) (citing Levi Strauss & Co. v. Blue
Bell, Inc., 778 F.2d 1352, 1355 (9th Cir. 1985) (en banc));
Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d
426, 431 (9th Cir. 2017), abrogated on other grounds by San
Diego Cnty. Credit Union v. Citizens Equity First Credit
Union, 60 F.4th 481, 500 (9th Cir. 2023). We address legal
error de novo. Stone Creek, 875 F.3d at 431 (“Although we
review the district court’s findings and determination of no
likelihood of confusion for clear error, we address legal error
de novo.”); Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512,
514 (9th Cir. 1989) (“Issues concerning the correct test to be
used in evaluating trademark infringement are reviewed de
novo.”).4
3
As a remedy for its unfair competition claim, JSC sought corrective
labeling. Because it had issued a permanent injunction against the
manufacture of infringing pieces, the district court dismissed this claim
as moot.
4
JSC argues that the de novo standard of review is inapplicable to any
aspect of this case because the district court’s factual findings, finding of
secondary meaning, finding of likelihood of confusion, and damages
award are reviewed for clear error, and its award of attorney’s fees is
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 11
Both parties argue that the standard of review for
damages awarded under the Lanham Act is clear error, but
we have held that monetary relief awarded under
§ 1117(a)(2) of the Lanham Act is reviewed for abuse of
discretion. Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d 1105,
1110, 1113 (9th Cir. 2012); see also Rolex Watch, U.S.A.,
Inc. v. Michel Co., 179 F.3d 704, 712 (9th Cir. 1999) (“We
review the district court’s award of damages under the
Lanham Act for abuse of discretion.”); Nintendo of Am., Inc.
v. Dragon Pac. Int’l., 40 F.3d 1007, 1010 (9th Cir. 1994)
(same); Intel Corp. v. Terabyte Int’l, Inc., 6 F.3d 614, 621
(9th Cir. 1993) (same).5 The decision to award attorneys’
fees under the Lanham Act is reviewed for abuse of
discretion. See SunEarth, Inc. v. Sun Earth Solar Power Co.,
reviewed for abuse of discretion. However, Trendily is correct that the
appropriateness of the legal standard is reviewed de novo. See Stone
Creek, 875 F.3d at 431; Clamp, 870 F.2d at 514.
5
There appears some tension in our case law as to the standard of review
for remedies awarded under the Lanham Act. For instance, in Nintendo,
we reviewed an award of defendant’s profits under § 1117(a)(1) for
abuse of discretion, 40 F.3d at 1010, whereas in Fifty-Six Hope Rd.
Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059 (9th Cir. 2015), we
reviewed the same issue for clear error, id. at 1076. Outside the
trademark context, we have explained that, generally, “[a] monetary
award following a bench trial is a finding of fact [the court] review[s] for
clear error.” Crockett & Myers, Ltd. v. Napier, Fitzgerald & Kirby, LLP,
664 F.3d 282, 285 (9th Cir. 2011). And in Bergerco, U.S.A. v. Shipping
Corp. of India, Ltd., 896 F.2d 1210 (9th Cir. 1990), we held that what
damages were “reasonably foreseeable” at the time a contract was
formed “is the sort of ‘essentially factual’ inquiry which should be
reviewed under the clearly erroneous standard.” Id. at 1212 (citation
omitted). However, our most recent case to review a claim under
§ 1117(a)(2) of the Lanham Act, Skydive, applied the abuse of discretion
standard, 673 F.3d at 1110, 1113, and we do the same here.
12 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Ltd, 839 F.3d 1179, 1181 (9th Cir. 2016) (en banc) (per
curiam).
III.
The Lanham Act protects against another’s use of “any
word, term, name, symbol, or device, or any combination
thereof . . . which . . . is likely to cause confusion, or to cause
mistake . . . as to the origin . . . of his or her goods. . . .” 15
U.S.C. § 1125(a)(1)(A). This includes a product’s “trade
dress,” which “refers generally to the total image, design,
and appearance of a product and may include features such
as size, shape, color, color combinations, texture or
graphics.” Clicks Billiards, Inc. v. Sixshooters, Inc., 251
F.3d 1252, 1257 (9th Cir. 2001) (internal quotation marks
and citation omitted). To obtain a judgment for trade dress
infringement, a plaintiff must prove: “(1) that its claimed
trade dress is nonfunctional; (2) that its claimed dress serves
a source-identifying role either because it is inherently
distinctive or has acquired secondary meaning; and (3) that
the defendant’s product or service creates a likelihood of
consumer confusion.” Id. (footnote omitted). We address
each element in turn.
A.
“Trade dress protection extends only to design features
that are nonfunctional,” meaning that the product feature is
not “essential to the use or purpose of the article” or so long
as “exclusive use of the feature would [not] put competitors
at a significant, non-reputation-related disadvantage.” Id. at
1258 (citation omitted). In their Joint Pretrial Order, the
parties stipulated that “[JSC’s] trade dress is nonfunctional.”
Facts stipulated in a pretrial order “can[not] be contested in
the district court, nor can they now be contested [on
appeal].” Stranahan v. A/S Atlantica and Tinfos Papirfabrik,
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 13
471 F.2d 369, 373 (9th Cir. 1972). Accordingly, the first
element of infringement is met.
Nevertheless, Trendily argues that the district court
failed to apply the correct legal test in determining
infringement because it did not consider functionality. It
contends that the stipulation was based on the assumption
that the claimed trade dress was limited to “ornamental
furniture designs,” but that during summary judgment
proceedings and in trial, JSC expanded the definition of the
dress to encompass “the overall look of the JSC Pieces.”
Trendily argues that this expanded definition required the
court to reconsider whether the trade dress was
nonfunctional.
In general, “courts agree that the elements of the alleged
trade dress must be clearly listed and described.” 1 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 8:3 (5th ed. 2022). However, we have
clarified that “[a] plaintiff may define its claimed trade dress
as the ‘overall appearance’ of its product.” Blumenthal
Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 865 (9th
Cir. 2020). Still, like other circuits,6 we have been skeptical
of such general descriptions. Thus, “when the claimed trade
dress is an ‘overall appearance,’ [the functionality] tests
must be applied with extra care to prevent ‘semantic
trickery’ from obscuring the functionality of the design the
plaintiff seeks to monopolize.” Id. at 866 (citation omitted).
“We have consistently held that, as a matter of law, a
product’s ‘overall appearance’ is functional, and thus
6
The Second, Tenth, Third, and Sixth Circuits have found trade dress
descriptions consisting exclusively of the “overall look” or “look and
feel” of a product impermissibly vague. See Forney Indus., Inc. v. Daco
of Mo., Inc., 835 F.3d 1238, 1252 (10th Cir. 2016) (collecting cases).
14 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
unprotectable, where the product is ‘nothing other than the
assemblage of functional parts,’ and ‘even the arrangement
or combination of those parts is designed to make the
product more functional.” Id. (citations omitted).
Although JSC’s summary judgment motion used the
words “overall look” to describe the dress of the JSC Pieces,
its other filings—for example, its Complaint and the Joint
Pretrial Order—provide highly specific details of the trade
dress, such as the furniture’s “weathered-teak” appearance,
metal designs, and ornately carved legs. The district court
underscored these descriptions in its findings, explaining
that the Jason Scott Collection “features large-scale furniture
adorned with intricate wood carvings and decorative metal.”
That JSC at times used the phrase “overall look” does
not mean that we should disregard the more detailed
descriptions of trade dress used elsewhere—in fact,
Blumenthal counsels that we do the opposite. See 963 F.3d
at 865–66; see also, e.g., Imagineering, Inc. v. Van Klassens,
Inc., 53 F.3d 1260, 1263–64 (Fed. Cir. 1995) (recognizing
that a furniture line had protectable trade dress where the
“furniture possesse[d] a coherent ‘total image,’ comprising
wide slats, scooped seat boards and arms, rounded edges,
notched and curved legs, and angled backrests, among other
distinctive attributes”). Moreover, because these detailed
design descriptions were alleged in the Complaint, Trendily
was aware of the scope of the claimed trade dress before it
stipulated to nonfunctionality, so there is no persuasive
reason to upend that stipulation.
Because the parties stipulated to nonfunctionality, the
district court relied upon that stipulation at trial, and Trendily
does not provide a good reason why we should disregard that
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 15
stipulation, we accept that JSC’s claimed trade dress is
nonfunctional.
B.
Because the parties also stipulated that JSC’s trade dress
is not inherently distinctive, JSC must prove its trade dress
has secondary meaning. See Wal-Mart Stores v. Samara
Bros., 529 U.S. 205, 211–12 (2000) (explaining that a
showing of secondary meaning is required where a product
is not inherently distinctive). Secondary meaning is “a
mental recognition in buyers’ and potential buyers’ minds
that products connected with the [trade dress] are associated
with the same source.” Japan Telecom, Inc. v. Japan
Telecom America Inc., 287 F.3d 866, 873 (9th Cir. 2002)
(citation omitted); Fuddruckers, Inc. v. Doc’s B.R. Others,
Inc., 826 F.2d 837, 843 (9th Cir. 1987) (“The trade dress of
a product or service attains secondary meaning when the
purchasing public associates the dress with a particular
source.”). Secondary meaning can be established in a
variety of ways, including “direct consumer testimony;
survey evidence; exclusivity, manner, and length of use of
mark; amount and manner of advertising; amount of sales
and number of customers; established place in the market;
and proof of intentional copying by the defendant.” P & P
Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953, 961
(9th Cir. 2022) (quoting Art Attacks Ink, LLC v. MGA Ent.,
Inc., 581 F.3d 1138, 1145 (9th Cir. 2009)). The district court
did not clearly err in finding that JSC established secondary
meaning.
1.
As we have recently reiterated, “[p]roof of copying
strongly supports an inference of secondary meaning.” Id.(quoting Vision Sports, Inc. v. Melville Corp., 888 F.2d 609,
16 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
615 (9th Cir. 1989)); see also adidas, 890 F.3d at 755. This
is because “[t]here is no logical reason for the precise
copying save an attempt to realize upon a secondary
meaning that is in existence.” Audio Fid., Inc. v. High Fid.
Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960).
Trendily admits that it intentionally copied the JSC
Pieces, and there is ample additional evidence that it did so.
Trendily’s owner, Malhatra, saw the JSC designs before he
copied them. Trendily and JSC share as customers two of
the same largest retailers—Brumbaugh’s Furniture and Hill
Country Interiors. JSC’s products make up 80 percent of the
showroom at Brumbaugh’s and 40 percent of the showroom
at Hill Country. Malhotra testified that he had been to both
stores, and Trendily’s exclusive sales representative, Chris
Sanders, testified that he knew of JSC’s work within months
of starting his job, including having viewed the furniture on
the showroom floors. Thus, Trendily was familiar with
JSC’s work, and likely understood JSC’s significant market
share with these retailers.
Then, Malhotra, at the request of the owner of Western
Heritage, a potential retail customer, ordered his factory in
India to manufacture exact copies of the JSC Pieces based
on photographs of them to gain Western Heritage’s business.
Malhotra proceeded to offer the Trendily Pieces to other
retailers. In other words, “[t]here is no logical reason for the
precise copying” of the JSC Pieces other than to capitalize
on JSC’s good will. Audio Fid., 283 F.2d at 558.
Trendily cites to a handful of district court decisions to
suggest that “intentional copying supports a finding of
secondary meaning only where the defendant intended to
confuse consumers and pass off its product as the
plaintiff’s,” an intention which was not present here.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 17
Mercado Latino, Inc. v. Indio Prods., No. 13-01027, 2018
WL 3490752, at *5 (C.D. Cal. July 17, 2018) (quoting Cont’l
Lab. Prods. v. Medax Int’l Inc., 114 F. Supp. 2d 992, 1010
(S.D. Cal. 2000). Trendily is correct that, in some circuits,
courts have imposed this “intent to confuse” requirement
when considering the intentional copying factor in the
secondary meaning analysis.7 This requirement accounts for
the fact that “[c]ompetitors may intentionally copy product
features for a variety of reasons”—for example, they may
“choose to copy wholly functional features that they
perceive as lacking any secondary meaning because of those
features’ intrinsic economic benefits.” Fuddruckers, 826
F.2d at 844–45. However, “[t]hough some circuits have
adopted . . . an intent to confuse requirement, we have not
done so.” P & P Imports, 46 F.4th at 962 (citation omitted).
Accordingly, under our precedent, Trendily’s clear intent to
copy nonfunctional features of JSC Pieces supports a strong
inference of secondary meaning.
7
See Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir.
1995) (“Copying is only evidence of secondary meaning if the
defendant’s intent in copying is to confuse consumers and pass off his
products as the plaintiff’s.”); Yankee Candle Co., Inc. v. Bridgewater
Candle Co., LLC, 259 F.3d 25, 45 (1st Cir. 2001) (same); Groeneveld
Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 514
(6th Cir. 2013) (same). By contrast, the Fourth Circuit has gone so far
as to hold that copying creates a rebuttable presumption of secondary
meaning, see M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421, 448
(4th Cir. 1986) (explaining that “evidence of intentional, direct copying
establishes a prima facie case of secondary meaning”), but our circuit
has rejected that approach, see Fuddruckers, 826 F.2d at 844(reaffirming that deliberate copying is relevant to secondary meaning,
and “in appropriate circumstances . . . may suffice to support an
inference of secondary meaning”).
18 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Trendily also argues that because copying is at times a
necessary aspect of competition, it should be held liable only
under the Copyright Act, not under the Lanham Act.
However, nothing in the case law indicates that copyright
and trademark claims are mutually exclusive. See, e.g., Wal-
Mart, 529 U.S. at 208 (involving claims for both copyright
and trade dress infringement); Art Attacks, 581 F.3d at 1142(same); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d
792, 796 (9th Cir. 2003) (same); Rachel v. Banana Republic,
Inc., 831 F.2d 1503, 1504 (9th Cir. 1987) (same). That
copying must be proven to establish copyright infringement
and may be relevant to the analysis of secondary meaning to
prove trade dress infringement does not mean that the
trademark and copyright laws remedy the same wrongs. See
Nintendo, 40 F.3d at 1011 (“Congress created two separate
statutory schemes to govern copyrights and trademarks; in
order to effectuate the purposes of both statutes, damages
may be awarded under both.”).
2.
The district court properly considered several other
factors in finding secondary meaning. For instance, the JSC
Pieces were continuously manufactured and sold since 2004.
Proof of substantial and continuous use of a mark in
commerce for five years is prima facie evidence of
secondary meaning. See 15 U.S.C. § 1052(f). The Pieces
were also advertised: they were prominently displayed at
trade shows; were featured in various retailers’ magazines,
social media, and email advertisements; and were the subject
of numerous presentations Jason Scott made to customers at
retail stores, which were advertised beforehand under JSC’s
mark and with photographs of the furniture. Retailers were
trained on the “Jason Scott story” and used those brand
elements in sales conversations with end consumers. Some
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 19
stores, like Fiesta Furnishings, played a video of the “Jason
Scott story”—which depicted Jason Scott working with the
villagers in Indonesia—on repeat in their showrooms. In
addition, Jason Scott won several awards for his furniture,
including Master of the Southwest, a designation Phoenix
Home & Garden gives to leaders in Southwest design.8 His
designs were featured in other national and regional
magazines. This longstanding and well-known presence in
the high-end furniture market supports the district court’s
finding of secondary meaning. See P & P Imports, 46 F.4th
at 961.
Moreover, the record shows that JSC’s furniture was
distinctive in the minds of purchasers. Various retailers and
sales representatives generally recognized JSC’s furniture
pieces as unique and distinctive, and specifically recognized
the JSC Pieces as clearly associated with that distinctive
look. Retailers testified that end-consumers also have brand
recognition of JSC products, stating that their customers
“often ask for [JSC] by name” and that “[p]eople who see
Jason Scott usually know what it is.” Taken together with
Trendily’s intentional, direct copying—as well as the highly
deferential standard of review—this evidence is sufficient to
indicate that the district court correctly found that JSC
established that its trade dress has secondary meaning.
Trendily argues that the district court erred because JSC
failed to show significant evidence that end-consumers
associated JSC’s trade dress with its source. According to
Trendily, the court’s reliance on the retailer’s confusion is
8
See Phoenix Home & Garden 30th Annual Masters of the Southwest
2020 Awards, Phoenix https://www.phoenixmag.com/event/phoenix-
home-garden-30th-annual-masters-of-the-southwest-2020-awards/ (last
visited Oct. 13, 2022).
20 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
irrelevant because the “chief inquiry” remains “whether in
the consumer’s mind the mark has become associated with a
particular source.” Co-Rect Prods. v. Marvy! Advert.
Photography, Inc., 780 F.2d 1324, 1332–33 (8th Cir. 1985)
(emphasis added). The district court rejected this argument,
citing Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277(7th Cir. 1998), for the proposition that the opinions of
retailers are relevant in ascertaining whether a product’s look
identifies its source. Id. at 295 (“[W]hen, as here, the
relevant market includes both distributors and ultimate
purchasers, the state of mind of dealers is important in
determining if secondary meaning exists.”).
To be sure, in cases involving mass distribution of a
product by retailers, some courts have found that testimony
from dealers and wholesalers is of little value because it is
unlikely to reflect the views of the consumer class. See, e.g.,
Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC,
259 F.3d 25, 43 n.14 (1st Cir. 2001) (“The opinions of
retailers and distributors active in the scented candle field
and extremely familiar with Yankee products is hardly
evidence of whether the ‘consuming public’ forms the same
association.”).9 This stems from the principle that, in certain
markets, “retailers, who know full well from whom they are
buying . . . cannot serve to establish that members of the
purchasing public, who come to the marketplace without
such specialized knowledge, would in fact recognize the
9
See also Clairol Inc. v. Gillette Co., 389 F.2d 264, 271 n.17 (2d Cir.
1968) (attaching “no particular significance” to evidence indicating that
“those in the trade” have a brand association because “[i]t is the
purchasing public, after all, to whom the trademark message is
addressed”); Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 907 (7th
Cir. 1983) (same); Sharper Image Corp. v. Target Corp., 425 F. Supp.
2d 1056, 1073 (N.D. Cal. 2006) (same).
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 21
designation as an indication of origin.” In re Semel, 189
U.S.P.Q. 285, at *4 (T.T.A.B. 1975).
But even if we were to disregard JSC’s evidence of
retailer confusion, that evidence is not necessary for JSC to
establish secondary meaning. Direct proof of end-consumer
confusion is not required. Although direct evidence of
secondary meaning—such as testimony or survey evidence
showing end-consumer recognition—might be the “most
persuasive,” Levi Strauss, 778 F.2d at 1358, it is “not a
requirement,” Yost, 92 F.3d at 822. See also 1 McCarthy,
supra, § 8:8.50 (“Evidence can be direct (testimony of
customers or a survey) or indirect (evidence of the seller’s
efforts in advertising the mark throughout a wide group of
prospective buyers).”). Instead, the district court relied on
proof of copying and a substantial amount of indirect
evidence indicating that JSC’s work was recognizable by
both retailers and consumers in the high-end furniture
market, as well as advertisements. See Yost, 92 F.3d at 822–
23 (upholding a district court’s reliance on advertising as the
primary evidence of secondary meaning); see also
Restatement Third, Unfair Competition § 13, comment e
(“Advertising and other promotional efforts resulting in
increased public exposure for the designation may also
support an inference of secondary meaning.”). Finding
secondary meaning on this basis was not clear error.
Moreover, while a court’s reliance on retailer confusion
might be misplaced in some cases, it was appropriate in this
particular market, where retailers play a significant role in
hand-selecting pieces for their showrooms. “[I]f the relevant
buyer class consists of both dealers and ultimate consumers,
then the state of mind of the dealers is obviously important.”
2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 15:46 (5th ed. 2022). For instance, in
22 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Thomas & Betts, the Seventh Circuit held that testimony of
store personnel was probative of secondary meaning because
in the market at issue—cable ties for electrical wires—the
plaintiff sold its products primarily through specialized
distributors, and therefore “the state of mind of [the] dealers
[was] important.” 138 F.3d at 294–95.
So too here, the high-end furniture market involves
specialized distributors. High-end furniture sellers attend
trade shows and select certain furniture pieces for sale in
their stores. These pieces are often expensive investments
that take up significant real estate in a showroom, and only
a small number of them are sold each year. As a result,
retailers in the high-end furniture market functionally
operate as consumers: They must be selective when they
purchase pieces for their showrooms, as they have a
substantial interest in ensuring that the products they stock
will sell. Thus, furniture manufacturers must develop a
brand recognizable to dealers in addition to the end-
consumer to get their pieces displayed and eventually
purchased.
Relying on Wal-Mart’s discussion of inherent
distinctiveness, Trendily alternatively argues that product
design acquires secondary meaning only rarely or not at all.
529 U.S. at 212–14. However, we think Trendily
misconstrues Wal-Mart’s primary holding. Trade dress is
protectable only if it is distinctive. Id. at 210. A mark can
be distinctive in one of two ways—either the mark is
“inherently distinctive” because it intrinsically identifies a
source, or the mark has “acquired distinctiveness, even if it
is not inherently distinctive, [because] it has developed
secondary meaning.” Id. at 210–11 (citations omitted). Wal-
Mart stands for the proposition that product-design trade
dress, unlike product-packaging trade dress, cannot be
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 23
inherently distinctive because product designs are “intended
not to identify the source [of the product], but to render the
product itself more useful or appealing.” Id. at 213. But the
Court did not conclude that product designs can never be
distinctive. See id. at 211, 216. Rather, a design is still
protectable if it acquires secondary meaning. Id. Thus, Wal-
Mart is only relevant to the extent it indicates whether JSC
was required to show secondary meaning,10 which it did.
C.
The district court did not err in finding that there was a
likelihood of confusion between the JSC Pieces and the
Trendily Pieces. To demonstrate a likelihood of confusion,
JSC had to show that “a reasonably prudent consumer would
be confused about the source of the goods bearing the
marks.” adidas, 890 F.3d at 755 (citing Dreamwerks Prod.
Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.
1998)). We turn to the Sleekcraft factors to evaluate whether
a product creates a likelihood of confusion, assessing: (1)
strength of mark; (2) proximity of the goods; (3) similarity
of the marks; (4) evidence of actual confusion; (5) marketing
channels used; (6) type of goods and the degree of care likely
to be exercised by the purchaser; (7) defendant’s intent in
selecting the mark; and (8) likelihood of expansion of the
product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348–49 (9th Cir. 1979). However, “[t]his list is not
exhaustive,” and “[o]ther variables may come into play
depending on the particular facts presented.” Id. at 348 n.11;
10
Because the parties stipulated that JSC’s trade dress is not inherently
distinctive, whether JSC’s trade dress constitutes product design or
product packaging is irrelevant, see Wal-Mart, 529 U.S. at 214–215, as
JSC is required to prove secondary meaning to gain trade dress
protection regardless. See id. at 211–12.
24 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
see also Fortune Dynamic v. Victoria’s Secret, 618 F.3d
1025, 1030 (9th Cir. 2010) (“This eight-factor analysis is
‘pliant,’ illustrative rather than exhaustive, and best
understood as simply providing helpful guideposts.”
(citation omitted)).
The similarity factor is “of considerable importance to
the likelihood of confusion analysis, given that ‘the greater
the similarity between the two marks at issue, the greater the
likelihood of confusion.’” adidas, 890 F.3d at 755 (quoting
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206
(9th Cir. 2000)). As the district court found, Trendily
“admittedly, intentionally, and precisely copied the JSC
Pieces in look, color, size, and detail.” The photographs of
the pieces depict a nearly exact match between the two lines
of products. See Appendix A. Several witnesses—all of
whom were professionals in the high-end furniture
business—could not distinguish the Trendily Pieces from the
JSC Pieces, indicating that ordinary consumers would also
face the same difficulty. Although retailer confusion is
arguably of less significance to the secondary meaning
analysis because professional expertise makes it more likely
that a brand will have meaning to a retailer than a consumer,
the opposite should be true for likelihood of confusion—if a
seasoned retailer cannot tell the difference between the
original and the knockoff, it is likely that an end-consumer
would not be able to do so either.
In addition, the proximity of the goods is high here.
“There can be little doubt that the [pieces of furniture] in
question here are similar goods, and that, if the [furniture]
were sold under the same mark, the public would reasonably
think they came from the same source.” adidas, 890 F.3d at
755–56. And the district court correctly highlighted
evidence of significant overlap in the marketing channels, as
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 25
Trendily and JSC both sell pieces in the Texas high-end
furniture market. Because “the products and marketing
channels of the parties were nearly identical,” Fuddruckers,
826 F.2d at 846, the district court did not err in its likelihood
of confusion finding.
Trendily contends that the district court erred by failing
to consider whether there was evidence of actual consumer
confusion. Trendily asserts that, because copying is a
natural part of a competitive market, evidence of actual
consumer confusion is required, and evidence of retailer
confusion is insufficient. However, “courts almost
unanimously presume a likelihood of confusion based on a
showing of intentional copying.” Id. at 846 (citing M.
Kramer Mfg., 783 F.2d at 448 n.24); see also Restatement
Third, Unfair Competition § 22, comment c (“[I]f there is
proof of intentional copying with no alternative explanation,
an intent to benefit from the other’s good will through
confusion may be inferred.”). And the copying in this case
is so blatant that it is hard to imagine any other reason for it
than Trendily’s desire to take advantage of JSC’s good will.
Moreover, in Sleekcraft itself, the court considered evidence
of “confusion . . . in the trade”—like the confusion the
furniture retailers experienced here—as evidence of actual
confusion. 599 F.2d at 352. Plus, “the failure to prove
instances of actual confusion is not dispositive against a
trademark plaintiff, because actual confusion is hard to
prove; difficulties in gathering evidence of actual confusion
make its absence generally unnoteworthy.”
Perfumebay.com, Inc. v. eBay, Inc., 506 F.3d 1165, 1176
(9th Cir. 2007) (citation omitted).
Trendily also argues that the marketing channels factor
weighs in its favor because the evidence demonstrates that
retailers maintained their exclusivity agreements, and
26 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Trendily’s Pieces were marketed only to stores that did not
carry the JSC line. There are three problems with this
reasoning. First, Trendily stipulated before trial that “[t]he
Parties are direct competitors, selling the same types of
goods through the same marketing channels, to the same
types of consumers.” Second, the record contains evidence
that Trendily pitched its knockoffs to several of JSC’s
exclusive retailers, including Runyon’s, Calamity Jane’s,
and Hill Country.
Third, even if Trendily had not agreed to the stipulation
and there was no evidence Trendily pitched to JSC retailers
in the record, Trendily oversimplifies the dynamics of the
market. JSC’s exclusivity agreements exist to ensure that its
retailers will not have to compete against another retailer in
the same area for buyers of JSC furniture. If the Trendily
Pieces are available at other competitors in a given area, the
JSC exclusive retailer would no longer be the sole supplier,
which was Sally Brumbaugh’s concern. Thus, because
Trendily and JSC share geographic proximity and offer the
same product, they are in the same marketing channel.
In any event, “only a subset of the Sleekcraft factors are
needed to reach a conclusion as to whether there is a
likelihood of confusion.” GoTo.com, 202 F.3d at 1206.
Accordingly, the district court correctly held that JSC
established all three elements required to demonstrate trade
dress infringement.
IV.
We now turn to remedies. Trendily challenges the
district court’s decision to award reasonably foreseeable
damages to JSC based on its changed relationship with
retailer Coyote Candle. We hold that the district court did
not abuse its discretion in fashioning this award.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 27
Under the Lanham Act, the district court, “in its
discretion” and “subject to the principles of equity,” may
award the plaintiff “(1) defendant’s profits, (2) any damages
sustained by the plaintiff, and (3) the costs of the action” for
a defendant’s violation of a trademark right. 15 U.S.C.
§ 1117(a). In awarding damages under § 1117(a)(2), as was
the case here,11 “[t]he trier of fact must distinguish between
proof of the fact of damages and the amount of damages
because a mark holder is held to a lower standard in proving
the exact amount of actual damages.” Skydive, 673 F.3d at
1112.
A.
We assess trademark damages “in the same manner as
tort damages: the reasonably foreseeable harms caused by
the wrong.” Id. (citing DSPT Int’l, Inc. v. Nahum, 624 F.3d
1213, 1222 (9th Cir. 2010)); see also Ramada Inns, Inc. v.
Gadsden Motel Co., 804 F.2d 1562, 1563–64 (11th Cir.
1986); Aladdin Mfg. Co. v. Mantle Lamp Co. of Am., 116
11
In its briefing, Trendily appears to equate “defendant’s profits” under
§ 1117(a)(1) with “any damages sustained by the plaintiff” under
§ 1117(a)(2). However, the two forms of damages are distinct.
“Defendant’s profits” are a form of disgorgement and are typically
calculated based on the infringer’s overall gross revenue from the
infringement less the infringer’s expenses. See Fifty-Six Hope Road
Music, 778 F.3d at 1075. By contrast, “any damages sustained by the
plaintiff” include compensatory damages arising from any “reasonably
foreseeable harms” caused by the wrong. Skydive, 673 F.3d at 1112(citation omitted). The damages arising from Coyote Candle’s lost
business are necessarily not “defendant’s profits” because they are
measured by JSC’s projected revenue from Coyote Candle, not
Trendily’s earned revenue from the infringement. The district court
properly categorized the award as other “damages sustained by the
plaintiff” under § 1117(a)(2).
28 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
F.2d 708, 716 (7th Cir. 1941). “Damages are typically
measured by any direct injury which a plaintiff can prove, as
well as any lost profits which the plaintiff would have earned
but for the infringement.” Lindy Pen Co. v. Bic Pen Corp.,
982 F.2d 1400, 1407 (9th Cir. 1993), abrogated on other
grounds by SunEarth, 839 F.3d at 1180.
Few circuits have addressed the precise meaning of
foreseeability in the trademark context, but those that have
tend to award damages even for future or speculative harm.
See Skydive, 673 F.3d at 1112–13; Taco Cabana Intern., Inc.
v. Two Pesos, Inc., 932 F.2d 1113, 1125–26 (5th Cir. 1991),
aff’d on other grounds, 505 U.S. 763 (1992); Broan Mfg.
Co., Inc. v. Assoc. Distributors, Inc., 923 F.2d 1232, 1236
(6th Cir. 1991); cf. Brunswick Corp. v. Spinit Reel Co., 832
F.2d 513, 526 (10th Cir. 1987). For instance, in Broan, the
Sixth Circuit held that uncertainty in a chain of causation “is
not fatal” to awarding damages. 923 F.2d at 1237. There,
the trademark holder sought to recover lost business it
claimed it would have earned from future sales but for the
infringement. Id. The Sixth Circuit explained that, even
though there was “[s]ome uncertainty regarding what might
have happened in the absence of a copying scheme,” one
could make a “reasonable inference” that the infringement
had a “tendency to injure [Broan’s] business,” and therefore
damages were warranted. Id. at 1237, 1238.
Similarly, in Taco Cabana, the Fifth Circuit affirmed a
damages award based on the “headstart” theory, which
posits that a trade dress holder should be compensated for
losses caused by the infringer’s use of the trade dress in the
market that was the trade dress holder’s next logical area of
expansion. 932 F.2d at 1126. In Taco Cabana, infringer
Two Pesos used Taco Cabana’s signature restaurant design
to open locations in the Houston market, “one of the most
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 29
affluent Mexican food markets in the country.” Id. The
court held that Two Pesos’ infringement foreclosed Taco
Cabana from expanding into this lucrative market, and
therefore Taco Cabana was entitled to compensation for this
lost opportunity. Id. at 1226–27. Thus, it appears that that
there is some flexibility in assessing reasonably foreseeable
damages under the Lanham Act. After all, § 1117(a)(2)
permits the district court to award “any damages sustained
by the plaintiff.” 15 U.S.C. § 1117(a)(2) (emphasis added).
Damaged business relationships are a reasonably
foreseeable consequence of trademark infringement. Here,
Aufill disclosed Trendily’s identity to Brian Forsberg on the
condition that his own identity would not be revealed to
avoid harming his own business relationships in the high-
end furniture market. Earning a reputation as a “snitch”
could reasonably have harmed Aufill’s ability to work with
certain suppliers. Moreover, it was Trendily’s intransigence
that ultimately pushed JSC to reveal Aufill’s identity.
Trendily ignored JSC’s cease-and-desist letters, which
forced JSC to file suit. Aufill was not disclosed as the source
until it was necessitated by the litigation—his identity was
relevant as to how he recognized the JSC furniture knock-
offs, the discovery of the infringement, and the likelihood of
confusion even seasoned retailers had as to the products’
source. Thus, JSC was required to reveal Aufill’s identity as
an integral part of his claim against Trendily. And, since the
litigation, JSC has lost all of its Coyote Candle business.
JSC had rarely lost customers over the course of its history,
which increases the likelihood that the infringement was the
cause of the lost business.
Trendily argues that the infringement was not the direct
cause of JSC losing Coyote Candle’s business. While the
infringement may have been a “but for” cause of Aufill’s
30 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
decision to stop doing business with JSC, Trendily maintains
that his actions were not foreseeable because JSC made an
independent decision to reveal Aufill’s identity. Further,
Aufill created the ultimatum because he “didn’t want to be a
snitch”—JSC did not lose Coyote Candle’s business for a
reason more traditionally associated with infringement, such
as Trendily offering lower prices for its copycat pieces. See
Fishman Transducers, Inc. v. Paul, 684 F.3d 187, 194 (1st
Cir. 2012) (“The most straightforward theory of damages
would be that the infringement had diverted specific sales
away from [the trademark holder].”).
However, the law does not appear to confine the nature
of compensable loss as narrowly as Trendily suggests. Here,
Trendily infringed; refused to cease doing so short of
litigation; litigation ensued and Aufill’s actions and
involvement were both relevant and necessary to prove
JSC’s claim. An “infringer-tortfeaser is liable for all injuries
caused to the plaintiff by the wrongful act.” Lindy Pen, 982
F.2d at 1407 (citation omitted). To assess the appropriate
scope of liability resulting from a wrong, tort principles
“require[] consideration, at an appropriate level of
generality, of: (a) the risks that made the actor’s conduct
tortious, and (b) whether the harm for which recovery is
sought was the result of any of those risks.” Restatement of
Torts (Third): Phys. & Emot. Harm § 29 (2010), comment d.
Trendily’s actions poisoned the business relationship
between JSC and Coyote Candle, a risk within the scope of
Trendily’s infringement.
Additionally, § 1117(a) “confers a wide scope of
discretion upon the district judge in fashioning a remedy.”
Skydive, 673 F.3d at 1113 (quoting Maier Brewing Co. v.
Fleischmann Distilling Corp., 390 F.2d 117, 121 (9th Cir.
1968)). “[T]he preferred approach allows the district court
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 31
in its discretion to fashion relief, including monetary relief,
based on the totality of the circumstances.” Southland Sod
Farms v. Stover Seed Co., 108 F.3d 1134, 1146 (9th Cir.
1997). This is because “it is essential that trial courts
carefully fashion remedies which will take all the economic
incentive out of trademark infringement.” Playboy
Enterprises, Inc. v. Baccarat Clothing Co., Inc., 692 F.2d
1272, 1275 (9th Cir. 1982). For instance, we have held that
a court may grant “a just monetary award” under § 1117
even where a plaintiff cannot prove actual damages, “so long
as it constitutes compensation for the plaintiff’s losses or the
defendant’s unjust enrichment and is not simply a penalty
for the defendant’s conduct.” Southland Sod, 108 F.3d at
1146 (internal quotation marks and citation omitted); see
also Restatement (Third) of Unfair Competition § 36,
comment h (1995) (a defendant may be held liable “even for
unanticipated consequences of its wrongful conduct”). And
while a court may not impose a penalty, “[w]hen the
defendant intentionally seeks to confuse or deceive,” as was
the case here, “the court may accept less certain proof of loss
in order to discourage similar behavior in the future.”
Restatement (Third) Unfair Competition § 36, comment j
(1995). Given this broad discretion, and the plausible causal
relationship between Trendily’s actions and the loss of
Coyote Candle’s business, the district court did not abuse its
wide discretion when it found that JSC suffered a
compensable harm.12 See United States v. Hinkson, 585 F.3d
1247, 1251 (9th Cir. 2009) (holding that a district court
12
The district court—by suggestion of the parties—declined to award
defendant’s profits for JSC’s trade dress claim because it had already
awarded defendant’s profits for its copyright claim at the summary
judgment phase. Neither party challenges this determination on appeal.
32 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
abuses its discretion only when its ruling is “illogical,
implausible, or without support in inferences that may be
drawn from facts in the record”).
B.
Once the court establishes that damages are warranted,
“there need only be substantial evidence to permit the [trier
of fact] to draw reasonable inferences and make a fair and
reasonable assessment” as to the amount of damages.
Skydive, 673 F.3d at 1112 (citing La Quinta Corp. v.
Heartland Props. LLC, 603 F.3d 327, 342 (9th Cir. 2010)).
Trendily argues that the $132,747 award of lost annual
profits from Coyote Candle over a period of three years
extends beyond discretion because it amounts to six times
the $19,995 in profits JSC was awarded for its copyright
claim.
The district court did not abuse its discretion in awarding
this damages amount. The copyright damages were assessed
based on Trendily’s retrospective gross profits from the
infringement—the amount of money Trendily made off the
infringing pieces. The trade dress damages were assessed
based on JSC’s prospective lost profits—the amount of
money JSC would have made if it kept Coyote Candle’s
business. Because of these fundamentally different
measures, Trendily’s argument that the lost business from
Coyote Candle is disproportionately larger is inapposite.
The district court found that JSC’s evidence “satisfactorily
demonstrates” it was entitled to that amount, and Trendily
points to no other evidence to show why the award was
unreasonable. Because we “accept crude measures of
damages in cases of intentional infringement,” id. at 1113,
there is no sign that the district court erred in authorizing this
damages amount.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 33
V.
Trendily argues that the district court erred by awarding
attorneys’ fees, while JSC contends those attorneys’ fees
were proper, and that further fees should be awarded on
appeal. We address each fee award in turn.
A.
Section 1117(a) of the Lanham Act permits a plaintiff to
recover attorneys’ fees “in exceptional cases.” 15 U.S.C.
§ 1117(a). A court determines if a case is exceptional by
considering the “totality of the circumstances” and
evaluating whether the case is “one that stands out from
others with respect to the substantive strength of the party’s
litigating position (considering both the governing law and
facts of the case) or the unreasonable manner in which the
case was litigated” based on a preponderance of the
evidence. SunEarth, 839 F.3d at 1180.
Trendily intentionally and precisely copied JSC’s
designs, ignored JSC’s cease and desist letters, and resisted
compliance with the court’s injunction. Trendily told other
retailers that it had copied and intended to continue copying
the JSC Pieces, such that retailers thought the suit was
necessary to protect their investment in JSC products. The
district court did not abuse its discretion in concluding that
such willful and brazen infringement, paired with the
strength of JSC’s trade dress claim, constitutes an
exceptional case. See Earthquake Sound Corp. v. Bumper
Indus., 352 F.3d 1210, 1216–17 (9th Cir. 2003) (collecting
cases).13
13
In 2016, SunEarth altered the test for determining what constitutes an
“exceptional case” within the meaning of the Lanham Act. Previously,
the Ninth Circuit’s test required the plaintiff to show that a defendant
34 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Trendily circularly argues that fees are not warranted
because the district court’s findings on secondary meaning
and likelihood of confusion are legally erroneous. However,
as explained, the district court correctly applied the relevant
legal rules. Trendily also argues that the district court
inappropriately considered Trendily’s decision not to
comply with the injunction because its decision to do so was
reasonable. But regardless of whether Trendily’s actions
were reasonable, they were an attempt to circumvent the full
force of the injunction—an action that weighs in favor of
awarding attorneys’ fees for infringement. Cf. Transgo, Inc.
v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1026–27
(9th Cir. 1985) (affirming the award of attorney’s fees in a
copyright action where there was substantial evidence of
deliberate infringement, including continued infringement in
violation of an injunction). Accordingly, the district court
correctly awarded fees in this case.
B.
We also award JSC attorneys’ fees on appeal.
“Generally, a party that is entitled to an award of attorneys’
fees in the district court is also entitled to an award of
attorneys’ fees on appeal.” Voice v. Stormans Inc., 757 F.3d
1015, 1016 (9th Cir. 2014) (citations omitted). In cases
engaged in “malicious, fraudulent, deliberate or willful infringement.”
Lindy Pen, 839 F.3d at 1409. In SunEarth, the Ninth Circuit broadened
the test to consider the “totality of the circumstances” using a
“nonexclusive list” of factors, including “frivolousness, motivation,
objective unreasonableness (both in factual and legal components of the
case) and the need in particular circumstances to advance considerations
of compensation and deterrence.” Id. at 1180–81 (internal quotation
marks and citations omitted). Because the SunEarth test is less stringent
than the previous “willful infringement” standard, it stands to reason that
this case of willful infringement would satisfy the SunEarth test.
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 35
involving an award of statutory fees, like those under
§ 1117(a), “federal courts have uniformly held that attorneys
are entitled to be compensated for the time reasonably spent
establishing their right to the fee.” Id. at 1016–17 (citing
Orange Blossom P’Ship v. S. Cal. Sunbelt Devs., Inc., 608
F.3d 456, 462–65 (9th Cir. 2010)). And the Ninth Circuit
has awarded attorneys’ fees on appeal in an “exceptional
case” involving willful trademark infringement. Yost, 92
F.3d at 825. Under this clear precedent, attorneys’ fees on
appeal are appropriate here.
VI.
For the reasons given, we affirm the district court’s
judgment against Trendily for trademark infringement, its
award of damages, and its award of attorneys’ fees. We refer
determination of the appropriate amount of appellate
attorneys’ fees to the Appellate Commissioner, who shall
conduct whatever proceedings she deems appropriate, and
who shall have authority to enter an order awarding fees. See
9th Cir. R. 39-1.6, 1.9.
AFFIRMED.
36 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
APPENDIX A
Tables
Figure 1: JSC’s Sacred Heart Table
Figure 2: Trendily’s M.J. Dining Table
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC 37
Desks
Figure 3: JSC’s Iron Star Desk
Figure 4: Trendily’s M.J. Desk
38 JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC
Sideboards
Figure 5: JSC’s Borgota Buffet
Figure 6: Trendily’s M.J. Sideboard