Opinion
Case No. CV 09-3783-VBF(MANx)
09-20-2011
CONSUMERINFO.COM, INC., a California corporation, Plaintiff, v. ONE TECHNOLOGIES LP, a Delaware limited partnership; ADAPTIVE MARKETING LLC, a Delaware corporation; and DOES 1-50, inclusive, Defendants. AND RELATED COUNTERCLAIMS
SECOND AMENDED JUDGMENT AND PERMANENT INJUNCTION
Hon. Valerie Baker Fairbank
On September 23, 2010, this Court granted in part and denied in part Defendants' Joint Motion for Partial Summary Judgment of ConsumerInfo's Claims and granted in part and denied in part Plaintiff ConsumerInfo.com, Inc.'s Motion For Partial Summary Judgment Against Adaptive Marketing. Based upon the Court Order re Motions for Partial Summary Judgment, docket number 403, (1) defendants One Technologies LP ("One Tech") and Adaptive Marketing LLC ("Adaptive") are entitled to final judgment against plaintiff ConsumerInfo.com, Inc. ("Consumerlnfo") on Consumerlnfo's trade dress, counterfeiting, copyright infringement, vicarious copyright infringement and contributory copyright infringement claims; and (2) ConsumerInfo is entitled to final judgment against Adaptive on Adaptive's false advertising counterclaim.
On January 12, 2011, the jury in this case issued a verdict as to the legal claims still at issue between the parties, docket number 722, as follows:
"VERDICT FORM
SECTION A: Consumerlnfo's Trademark Infringement Claim - FREECREDITREPORT.COM
1. Is FREECREDITREPORT.COM a valid and protectable trademark?
Yes X No ___
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section B.
2. Does Consumerlnfo own FREECREDITREPORT.COM as a trademark?
Yes X No ___
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section B.
3. Did the Defendant use FREECREDITREPORT.COM, or a similar term, without the consent of ConsumerInfo in a manner that is likely to cause confusion among ordinary purchasers as to the source of the goods?
Adaptive Marketing Yes ___ No X
One Technologies Yes ____ No X
If you answered "yes" to this Question as to either Defendant, proceed to the next Question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section B as to that Defendant. SECTION B: ConsumerInfo's Trademark Infringement Claim - TRIPLE ADVANTAGE
1. Is TRIPLE ADVANTAGE a valid and protectable trademark?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section C.
2. Does Consumerlnfo own TRIPLE ADVANTAGE as a trademark?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section C.
3. Did the Defendant use TRIPLE ADVANTAGE, or a similar term, without the consent of ConsumerInfo in a manner that is likely to cause confusion among ordinary purchasers as to the source of the goods?
Adaptive Marketing Yes ____ No X
One Technologies Yes ____ No X
If you answered "yes" to this Question as to either Defendant, proceed to the next
Question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section C as to that Defendant. SECTION C: Consumerlnfo's Cybersquatting Claim
Answer the questions in this Section C only if you found FREECREDITREPORT.COM is a valid and protectable trademark owned by ConsumerInfo.
1. Did the Defendant have a bad faith intent to profit from the FREECREDITREPORT.COM mark?
Adaptive Marketing Yes X No ____
One Technologies Yes X No ____
If you answered "yes" to this Question as to either Defendant, proceed to the next question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section D as to that Defendant.
2. Did the Defendant register, traffic in, or use a domain name that:
a) If the FREECREDITREPORT.COM mark was valid and protectable at the time the domain name was registered, was identical or confusingly similar to the FREECREDITREPORT.COM mark; or
b) If the FREECREDITREPORT.COM mark was famous at the time the domain name was registered, was identical, confusingly similar or dilutive of the FREECREDITREPORT.COM mark?
Adaptive Marketing Yes X No ____
One Technologies Yes X No ____
If you answered "yes" to this Question as to either Defendant, proceed to the next question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section D as to that Defendant.
3. Was the Defendant's use of FREECREDITREPORT.COM, or a similar term, a fair use?
Adaptive Marketing Yes ____ No X
One Technologies Yes ____ No X
If you answered "yes" to this Question as to either Defendant, proceed to Section D as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to the next question as to that Defendant.
4. Has Defendant's cybersquatting caused Consumerlnfo damage?
Adaptive Marketing Yes X No ____
One Technologies Yes X No ____
If you answered "yes" to this Question as to either Defendant, proceed to the next Question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section D as to that Defendant.
5. Did Defendant earn any profits that are attributable to cybersquatting?
Adaptive Marketing Yes X No ____
One Technologies Yes X No ____
Proceed to the next question.
6. Please write in the amount, if any, of damage to Consumerlnfo caused by Defendant's cybersquatting.
Adaptive Marketing $450,000
One Technologies $120,000
Proceed to the next question.
7. Please write in the amount, if any, of Defendant's profits that are attributable to cybersquatting.
Adaptive Marketing $1,050,000
One Technologies $280,000
Proceed to the next question.
8. Did ConsumerInfo fail to mitigate damages?
Adaptive Marketing Yes ____No X
One Technologies Yes ____No X
If you answered "yes" to this Question as to either Defendant, proceed to the next question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section D as to that Defendant. SECTION D: Consumerlnfo's Dilution Claim
Answer the questions in this Section D only if you found FREECREDITREPORT.COM is a valid and protectable trademark owned by ConsumerInfo.
1. Is FREECREDITREPORT.COM famous?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question. If you answered "no" to this Question, proceed to Section E.
2. Did the Defendant use FREECREDITREPORT.COM in commerce?
Adaptive Marketing Yes X No ____
One Technologies Yes X No ____
If you answered "yes" to this Question as to either Defendant, proceed to the next question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section E as to that Defendant.
3. Did the Defendant begin using FREECREDITREPORT.COM after it became famous?
Adaptive Marketing Yes ____ No X
One Technologies Yes ____ No X
If you answered "yes" to this Question as to either Defendant, proceed to the next question as to that Defendant.
If you answered "no" to this Question as to either Defendant, proceed to Section E as to that Defendant. SECTION E: Consumerlnfo's Contributory Liability Claim Against Adaptive Marketing
1. Did One Technologies infringe Consumerlnfo's FREECREDITREPORT.COM or TRIPLE ADVANTAGE trademarks?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section F.
2. Did Adaptive Marketing intentionally induce One Technologies to infringe ConsumerInfo's FREECREDITREPORT.COM or TRIPLE ADVANTAGE?
Yes ____ No X
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section F. SECTION F: Consumerlnfo's Vicarious Liability Claim Against Adaptive Marketing
1. Did One Technologies infringe Consumerlnfo's FREECREDITREPORT.COM or TRIPLE ADVANTAGE trademarks?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section G.
2. Do you find that Adaptive had the authority to bind One Technologies in transaction with third parties and that One Technologies had the authority to bind Adaptive in transactions with third parties; or that Adaptive and One Technologies exercise joint ownership or control over the infringing conduct?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section G.
3. Was ConsumerInfo damaged by the infringement?
Yes X No ____
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section G.
4. Please write in the amount, if any, of damage to Consumerlnfo casued by One Technologies' infringement of FREECREDITREPORT.COM and/or TRIPLE
ADVANTAGE??
$120,000
Proceed to the next Question.
5. Please write in the amount, if any, of One Technologies' profits that are attributable to the infringement of FREECREDITREPORT.COM and/or TRIPLE ADVANTAGE.
$280,000
6. Did ConsumerInfo fail to mitigate damages?
Yes ___ No X
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section G. SECTION G: One Technologies' Claim for Fraud on the United States Patent and Trademark Office
1. Did ConsumerInfo make a false representation to the PTO trademark examiner regarding a material question?
Yes ____ No X
If you answered "yes" to this Question, proceed to the next Question.
If you answered "no" to this Question, proceed to Section H. SECTION H: One Technologies' Claim for Cancellation
1. Do you find that FREECREDITREPORT.COM is generic?
Yes ____ No X "
Based upon the parties' oral stipulation after the verdict was entered, Adaptive is entitled to judgment notwithstanding the verdict on Consumerlnfo's claim for vicarious trademark infringement.
On February 9, 2011, the Court granted Adaptive's motion to voluntarily dismiss with prejudice its counterclaims of trademark infringement under the Lanham Act and common law trademark infringement, docket number 767.
On February 10, 2011, One Technologies' counterclaim for monopolization and attempted monopolization was orally dismissed with prejudice on the record.
On February 10, 2011, the Court held a bench trial on Defendants' equitable affirmative defenses and to determine the scope of injunctive relief, if any, to be awarded to ConsumerInfo. Following this bench trial, the Court issued a Memorandum of Decision and Findings of Fact and Conclusions of Law After Court Trial, docket number 791, setting the amount of monetary relief ConsumerInfo is entitled to, and ordering an injunction to issue, as described below.
On June 30, 2011, the Court granted in part Defendant One Tech's Motion For Judgment As A Matter Of Law Pursuant To FRCP 50(B), docket number 872, reducing the amount of damages awarded against One Technologies.
On ____, 2011, the Court granted the Joint Motion by ConsumerInfo.com, Inc. and One Technologies LP to Partially Vacate the Amended Judgment, docket number ____.
Accordingly, IT IS HEREBY ORDERED, ADJUDGED AND DECREED as follows:
1. Judgment is entered in favor of One Technologies and Adaptive and against ConsumerInfo
a. On ConsumerInfo's first claim for relief for trademark infringement of FREECREDITREPORT.COM and TRIPLE ADVANTAGE under the Lanham act;
b. On Consumerlnfo's first claim for relief for trade dress infringement under the Lanham Act;
c. On Consumerlnfo's second claim for relief for dilution of FREECREDITREPORT.COM under the Lanham Act;
d. On ConsumerInfo's third claim for relief for counterfeiting of FREECREDITREPORT.COM under the Lanham Act;
e. On ConsumerInfo's sixth claim for relief for common law trademark infringement of FREECREDITREPORT.COM and TRIPLEADVANTAGE;
f. On ConsumerInfo's seventh claim for relief for unfair competition under the Lanham Act;
g. On ConsumerInfo's eighth claim for relief for vicarious liability under the Lanham Act;
h. On ConsumerInfo's ninth claim for relief for contributory liability under the Lanham Act;
i. On ConsumerInfo's tenth claim for relief for copyright infringement;
j. On ConsumerInfo's eleventh claim for relief for vicarious copyright infringement;
k. On ConsumerInfo's twelfth claim for relief for contributory copyright infringement.
2. Judgment is entered in favor of ConsumerInfo and against One Technologies
a. [VACATED]
b. On One Technologies' first counterclaim for cancellation of federal trademark registration under the Lanham Act;
c. On One Technologies' second counterclaim for monopolization and attempted monopolization;
d. On One Technologies' third counterclaim for trademark infringement under the Lanham Act;
e. On One Technologies' fourth counterclaim for false advertising and unfair competition under the Lanham Act;
f. On One Technologies' fifth counterclaim for common law trademark infringement;
g. On One Technologies' seventh counterclaim for declaratory judgment of unenforceability;
h. On One Technologies' eighth counterclaim for contributory liability under the Lanham Act;
3. Judgment is entered in favor of Consumerlnfo and against Adaptive
a. On Consumerlnfo's fourth claim for relief for cybersquatting and fifth claim for relief for cybersquatting of a famous mark Adaptive's registering, trafficking in, and/or use of the domain names freetriplecreditreport.com, freecreditreport2009.com, freecreditreport2010.com, freecreditreport2011.com, freecreditreport2012.com, freecreditreport2013.com, freecreditreport2014. com, freecreditreport2015.com, freecreditreport2016.com, freecreditreport2017.com, freecreditreport2018.com, freecreditreport2019.com and freecreditreport2020.com;
b. On Adaptive's first counterclaim for trademark infringement under the Lanham Act;
c. On Adaptive's second counterclaim for false advertising and unfair competition under the Lanham act;
d. On Adaptive's third counterclaim for common law trademark infringement.
4. [VACATED]
5. Damages are awarded in favor of Consumerlnfo and against Adaptive in the amount of $450,000.
6. Adaptive, together with its officers, directors, agents, servants, employees and attorneys, and other person who are in active concert or participation with Adaptive, are hereby enjoined and restrained from further registering, trafficking in or otherwise using the following domain names: freetriplecreditreport.com, freecreditreport2009.com, freecreditreport2010.com, freecreditreport2011.com, freecreditreport2012.com, freecreditreport2013.com, freecreditreport2014.com, freecreditreport2015.com, freecreditreport2016.com, freecreditreport2017.com, freecreditreport2018.com, freecreditreport2019.com, and freecreditreport2020.com.
7. Adaptive, together with its officers, directors, agents, servants, employees and attorneys, and other person who are in active concert or participation with Adaptive, are hereby ordered, to the extent possible and to the extent they maintain any rights, title and interest in the following domains (1) to relinquish all rights, title and interest in the following domain names: freetriplecreditreport.com, freecreditreport2009.com, freecreditreport2010.com, freecreditreport2011.com, freecreditreport2012.com, freecreditreport2013.com, freecreditreport2014.com, freecreditreport2015.com, freecreditreport2016.com, freecreditreport2017.com, freecreditreport2018.com, freecreditreport2019.com, and freecreditreport2020.com; and (2) to transfer all domains listed in this paragraph to Consumerlnfo or its authorized representative within fourteen (14) days of entry of this permanent injunction.
8. [VACATED]
9. [VACATED]
10. The registrar or registrars of record are hereby authorized to transfer the aforementioned domains to Consumerlnfo or its authorized representative at Consumerlnfo's request accompanied by a copy of this permanent injunction.
IT IS SO ORDERED.
Honorable Percy Anderson
United States District Court Judge