Articles

Statutory Damages Under the Anticybersquatting Consumer Protection Act

BNA Patent, Trademark & Copyright Journal
June 13, 2008

Kelly, David M.

Article

The Anticybersquatting Consumer Protection Act ("ACPA") applies to any person who "registers, traffics in, or uses a domain name" that is identical or confusingly similar to a distinctive mark, or that is dilutive of a famous mark, and who "has a bad faith intent to profit from that mark."¹ The ACPA applies to all domain names regardless of whether they were registered before, on, or after the enactment of the ACPA on November 29, 1999.² 

ACPA Remedies Generally

The Lanham Act provides for a number of potential remedies to a successful ACPA plaintiff, including injunctive relief,³ forfeiture or cancellation of the disputed domain name or transfer of the name to the plaintiff,⁴ the plaintiff's actual damages, the defendant's profits, costs,⁵ statutory damages of $1,000 to $100,000 per domain name in lieu of actual damages,⁶ and attorney's fees in "exceptional cases."⁷ Courts have the discretion, "according to the circumstances of the case," to increase an award of "actual damages" to a sum not exceeding three times the amount of actual damages found.⁸ Moreover, if a court finds an award based on the plaintiff's "profits" to be either "inadequate or excessive," it may increase or decrease it to "such sum as the court shall find to be just."⁹

However, neither Section 1117(a) nor Section 1117(d), which exclusively govern the monetary remedies for ACPA violations, expressly provides for any discretion in increasing statutory damages.¹⁰ Despite this, one court trebled its award of $40,000 in ACPA statutory damages ($10,000 each for four domain names) to a total of $120,000.¹¹ But the court did not discuss the authority or rationale for doing so under the ACPA. In fact, the court did not even discuss the trebling issue in the part of its opinion where it initially awarded the $40,000 in statutory damages.¹² The only mention of the trebling is in the "Conclusion" where the court ordered, without explanation, the "imposition of treble damages calculated upon the basis of statutory damages of $10,000 for each bad faith registration as set forth above."¹³

As noted above, the Lanham Act provides that courts may award attorneys' fees for  violations of the ACPA in "exceptional cases" under Section 1117(a).¹⁴ Thus far, courts have awarded attorney's fees under Section 1117(a) in addition to statutory damages in many cases.¹⁵ A recent decision in a trademark counterfeiting case, however, raises a question on the ability of an ACPA plaintiff to recover both statutory damages and attorneys' fees. Specifically, the Ninth Circuit recently held that an election to recover statutory damages for trademark counterfeiting under Section 1117(c) foreclosed the award of attorneys' fees under Section 1117(b).¹⁶ The court found that Sections 1117(a) and 1117(b), which together provide counterfeiting plaintiffs the right to recover trebled actual damages, both also specifically provide for attorneys' fees,¹⁷ while Section 1117(c) regarding statutory damages does not.¹⁸ Thus, the plaintiff in that case, who elected to recover statutory damages, had no statutory basis for also recovering attorneys' fees under Section 1117(b). The court noted, however, that it did not decide the issue of whether a counterfeiting plaintiff who elected to receive statutory damages was precluded from an award of attorneys' fees for "exceptional cases" under Section 1117(a).¹⁹ Similarly, Section 1117(d), which grants ACPA plaintiffs the right to elect to recover statutory damages instead of actual damages, also does not specifically provide for attorneys' fees. It thus remains to be seen whether: (a) other courts will follow the Ninth Circuit's strict analysis of Section 1117(c) in counterfeiting cases, (b) courts will apply a similar analysis to ACPA plaintiffs who seek attorneys' fees under Section 1117(d) in addition to statutory damages, and (c) courts will award attorneys' fees in "exceptional" cases under Section 1117(a) to successful counterfeiting and ACPA plaintiffs that elect to recover statutory damages.

ACPA In Rem Remedies

The monetary remedies discussed above are all available in ACPA actions against domain name registrants over whom a court has established personal jurisdiction. The ACPA, however, also permits in rem actions against domain names where the plaintiff is unable to establish personal jurisdiction over, or "through due diligence was not able to find," the registrant.²⁰ Regarding monetary remedies, the ACPA provides that "[t]he remedies in an in rem action shall be limited to a court order for the forfeiture or cancellation of the disputed domain name or the transfer of the name to the [trademark owner]."²¹

One district court, however, recently held that an in rem plaintiff in an ACPA case may also recover the monetary remedies provided under Section 1117(a) for other causes of action under the Lanham Act.²² In that case, even though Section 1125(d)(2)(D)(i) quoted above indicates that only non-monetary remedies are available in in rem actions, the Eastern District of Virginia held that an in rem plaintiff may also recover actual damages, costs, and attorneys' fees.²³ The court noted that Section 1117(a) makes no distinction between in personam and in rem cases, and specifies a violation of Section 1125(d), the ACPA, as a basis for recovering the types of monetary relief provided therein.²⁴ Moreover, the ACPA also states that "the in rem action established under paragraph (2), and any available remedy under [that] Section, shall be in addition to any other civil action or remedy otherwise applicable."²⁵ The court then awarded attorneys' fees because defendant's conduct was "willful, deliberate, and in bad faith," which made the case "exceptional."²⁶

ACPA Statutory Damages Procedural Issues

An ACPA plaintiff "may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages of not less than $1,000 and not more than $100,000 per domain name, as the court considers just."²⁷ It is not necessary for a plaintiff to allege actual damages as a prerequisite to proving cybersquatting or recovering statutory damages.²⁸ Moreover, statutory damages should not be denied even if they are de minimis in relation to the overall litigation costs.²⁹

A number of courts have addressed the retroactivity of the ACPA's statutory damages provision. Trademark owners are not entitled to statutory damages in cases where the defendant did not register, use, or traffic in the domain name after November 29, 1999.³⁰ However, persons registering domain names before November 29, 1999 may still be liable for actual or statutory damages as long as they also used or trafficked in the name after November 29, 1999.³¹

ACPA's Guidance on Statutory Damages

The ACPA does not provide courts with any guidelines or criteria for determining when statutory damages are to be awarded, or how much should be awarded, other than the award should be "as the court considers just."³² The legislative history of the ACPA similarly does not provide any guidance regarding statutory damages, except that the recovery of statutory damages is "both to deter wrongful conduct and to provide adequate remedies for trademark owners who seek to enforce their rights in court."³³

Although there have been many decisions under the ACPA in the more than eight years since its enactment, there have been a relatively small number of cases in which courts have discussed issues relating directly to statutory damages. And there have been an even smaller number of cases in which courts have awarded statutory damages. The authors are aware of only one case that has found an ACPA violation but refused to award statutory damages for substantive reasons.³⁴ There are a few cases in which courts found an ACPA violation but did not award statutory damages for procedural or timing reasons.³⁵

Statutory Damages in Other IP Cases

The ACPA is not the only trademark cause of action providing for statutory damages that does not give courts meaningful guidance in determining statutory damages. The trademark counterfeiting provision of the Lanham Act also allows parties to elect to receive statutory damages instead of actual damages or profits, but similarly fails to provide guidelines to courts for determining an appropriate award.³⁶ Faced with this lack of statutory guidance, courts in trademark counterfeiting cases have often looked to analogous case law interpreting the Copyright Act, by which a copyright owner has long been able to elect to recover, in lieu of actual damages and profits, statutory damages for copyright infringement.³⁷ Under the Copyright Act, copyright owners may recover between $750 and $30,000 in statutory damages per infringement,³⁸ or, if the infringement is willful, statutory damages may be awarded up to $150,000 per infringement.³⁹ Courts assessing statutory damages in copyright cases have looked to factors such as (1) the expenses saved and the profits reaped, (2) the revenues lost by the plaintiff, (3) the value of the copyright, (4) the deterrent effect on others besides the defendant, (5) whether the defendant's conduct was innocent or willful, (6) whether a defendant has cooperated in providing particular records from which to assess the value of the infringing material produced, and (7) the potential for discouraging the defendant.⁴⁰

Several courts have also looked to copyright case law in determining statutory damages under the ACPA. In the earliest case to do so, the Fifth Circuit held that the purpose of the ACPA's statutory damages provision is similar to the statutory damages provision in the Copyright Act, which was intended not only to compensate the rights owner, but also to discourage wrongful conduct.⁴¹ In a later case, a district court noted that statutory damages not only deterred wrongful conduct, but also provided adequate remedies for trademark owners to enforce their rights.⁴² It described statutory damages as "essential," agreeing with another district court's statement that "actual damages suffered by a plaintiff as a result of lost customers and goodwill is incalculable."⁴³

ACPA Cases Awarding Statutory Damages

In the cases where courts have awarded statutory damages in cybersquatting cases, they typically do not discuss in any detail their rationale for awarding statutory damages.⁴⁴ Nor do the courts typically provide detailed reasons for awarding a particular amount of statutory damages. A review of the cases in which courts have awarded statutory damages, however, shows that the courts have identified or discussed a wide variety of factors that play a role in determining the amount of statutory damages they awarded under the ACPA.⁴⁵ These factors include:

• whether the defendant used the domain name(s);⁴⁶
• the egregiousness or willfulness of the defendant's conduct;⁴⁷
• whether the defendant has a history of cybersquatting, including prior adverse decisions in UDRP and/or civil proceedings;⁴⁸
• whether the defendant tried to extort money in return for transfer of the domain name;⁴⁹
• whether the defendant provided false contact information concerning his registration and use of the domain names;⁵⁰
• whether the defendant used the site to sell plaintiff's copyrighted materials;⁵¹
• a comparison of the defendant's conduct to other cases awarding statutory damages;⁵²
• whether the defendant registered additional domain names after the suit was filed;⁵³
• whether the defendant registered domain names similar to the name of plaintiff's counsel;⁵⁴
• whether the defendant registered additional domain names after receiving a demand letter;⁵⁵
• whether the defendant continued to use an infringing domain name after receiving a demand letter;⁵⁶
• whether the defendant transferred the domain name to another person after suit was filed;⁵⁷
• whether there was a business relationship between the parties;⁵⁸
• whether the initial registration of the domain names was made pursuant to a then-existing business relationship between the parties;⁵⁹
• whether the defendant was a competitor, sold competitive products or services, or linked to competitive products and services;⁶⁰
• whether the defendant's use of a domain name caused actual confusion;⁶¹
• whether the content of the defendant's Web site could tarnish the reputation of the plaintiff;⁶²
• the limited financial resources of the defendant;⁶³
• the amount of money, if any, the defendant made from his cybersquatting activities;⁶⁴
• the amount of harm, if any, suffered by the plaintiff;⁶⁵
• the actual damages suffered by the plaintiff were not calculable;⁶⁶
• the amount of other monetary relief, if any, awarded to the plaintiff;⁶⁷
• whether an injunction satisfied the equities of the case;⁶⁸
• the procedural context of the case;⁶⁹
• the amount of statutory damages requested by the trademark owner (i.e., where the owner has asked for less than the statutory maximum of $100,000);⁷⁰
• whether the defendant interfered with the public welfare;⁷¹ and
• whether the defendant failed to satisfy its discovery obligations.⁷²

Survey of ACPA Statutory Damages Cases

The chart published at the end of this article is a survey of the 32 cases awarding statutory damages that the authors have located.⁷³ For each case, the chart provides:

(a) the case citation,

(b) the procedural context in which the statutory damages were awarded (e.g., motion for summary judgment, default judgment),

(c) the amount of statutory damages awarded, and

(d) whether the court awarded any other monetary relief.

The courts in these cases awarded statutory damages after a trial (4), contested motion for summary judgment (10), unopposed motion (2), and default judgment (16). The cases in the chart below are ordered by the amount awarded per name, from the maximum of $100,000 to the minimum of $1,000.

Statutory Damages and Cybersquatting Duration

The Fifth Circuit has provided some guidance on awarding statutory damages in relation to the duration of the cybersquatting. Specifically, the Fifth Circuit held that the duration of the offending use of the domain name did not have to be considered when calculating statutory damages.⁷⁴ In Gallo, the registrant's use of the disputed domain name for only six months did not preclude an award of statutory damages.⁷⁵

The Gallo decision could be an important weapon in trademark owners' escalating battles with domain tasters, i.e., cybersquatters who systematically register thousands or even millions of domain names containing another's trademark or variations thereof, monetize them with pay-per-click ads for a few days, and then drop the names that are unprofitable. As long as the domain name is dropped within five days, the cybersquatter will recover all of his initial registration costs under current rates. According to various reports, millions of domain names registered every month are dropped after being tasted, and only a small percentage of names are permanently registered.⁷⁶

Trademark owners should be able to rely on Gallo to support a claim of statutory damages even for tasted names registered for only a few days. This is significant because even the $1,000 minimum in statutory damages under the ACPA is likely to far exceed the profit made on a single domain name during the tasting period, and thus could serve as an effective deterrent against the tasting of trademark-related domain names.

ACPA Statutory Damages and Bankruptcy

The ACPA was enacted to deter cybersquatters from unfairly capitalizing on the goodwill created by trademark owners and to prevent the confusion of Internet users. One of ACPA's primary deterrents is the threat of large statutory damage awards.⁷⁷ If potential cybersquatters can discharge those awards in bankruptcy, or use the threat of bankruptcy to discourage trademark owners from filing or continuing to pursue litigation to obtain and collect statutory damages, they will be less deterred from continuing their cybersquatting activities. Cybersquatters, however, may no longer be able to hide behind the bankruptcy laws. In a case of first impression, the United States Bankruptcy Court of the Central District of California held in In re Wright that a violation of ACPA would preclude litigation over the issue of "willful and malicious injury ... to the property of another" and categorically deny the discharge of ACPAincurred debts under §523(a)(6) of the Bankruptcy Code.⁷⁸ Section 523(a)(6) excepts from discharge debts resulting from "willful and malicious injury by the debtor to another entity or to the property of another entity."⁷⁹ The court reasoned that a finding of "bad faith intent to profit from [a protected] mark," a necessary element of a cybersquatting claim under ACPA, "constituted a categorically harmful activity which necessarily caused injury to [plaintiff] within the scope of §523(a)(6)."⁸⁰

Without In re Wright, trademark owners would have to litigate two cases: (1) the ACPA case to obtain the statutory damages award, and (2) a bankruptcy proceeding to prove that the bankrupt cybersquatter intentionally and maliciously harmed their intellectual property to except that debt from discharge. Under In re Wright, however, trademark owners need only litigate the ACPA case. This decision will hopefully deter cybersquatting while at the same time making it easier for trademark owners to collect on statutory damage awards under the ACPA.

Conclusion

Although the ACPA was enacted more than eight years ago, and the registration of domain names worldwide has exploded, we still have relatively little insight into how courts determine a particular amount of statutory damages. This is no doubt due in part to the lack of guidance in the ACPA and its legislative history. In examining the cases that have awarded statutory damages, however, the courts have based their awards on a wide range of factors. Moreover, a few trends are discernible. First, courts have not been shy in awarding large amounts of statutory damages. Eleven of the 32 reported cases awarded the maximum $100,000 per domain name, and three of those cases awarded $100,000 each for multiple names. Two cases awarded $75,000 per name and three awarded $50,000 per name. Thus, half of the cases awarded $50,000 or more per name. Second, several courts have expressly recognized the importance of the deterrent effect of statutory damages, which should help in situations where cybersquatters own or use domain names for only a short time, even cybersquatters who monetize domain names with click-through advertising for just a few days. Finally, many courts appear to do a good job of balancing the pertinent facts and equities of a case to award an amount of statutory damages that is "just" under the circumstances.

Case	Procedural Context	Statutory Damages	Other Monetary Relief
Lahoti v. Vericheck, Inc., 2007 WL 4269791 (W.D. Wash. Dec. 3, 2007)	Bench Trial	Per Name: $100,000 Total: $100,000	Attorney’s fees and costs in amounts to be determined
Biocryst Pharms., Inc. v. Namecheap.com, No. CV 05-7615 JFW (C.D. Cal. Nov. 21, 2006)	Default judgment	Per Name: $100,000 Total: $300,000	Attorney’s Fees: $71,373.58
Medline Indus. v. Medline Prods., 2004 U.S. Dist. LEXIS 12741 (N.D. Ill. 2004)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney’s Fees: $35,570.26
Graduate Mgmt. Admission Council v. Raju, 267 F. Supp. 2d 505 (E.D. Va. 2003)	Default judgment	Per Name: $100,000 Total: $200,000	Statutory damages for copyright infringement of 22 works: $3,300,000
Yahoo! v. Shapiro, No. C-02-05620 CW (N.D. Cal. 2003)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney’s Fees: $36,984.22
Mirage Resorts v. Cybercom, 228 F. Supp. 2d 1141 (D. Nev. 2002)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney’s Fees: $13,762.51 Corrective Advertising: $1,000
Louis Vuitton Malletier & Oakley, Inc. v. Veit, 211 F. Supp. 2d 567 (E.D. Pa. 2002), amended by 2002 U.S. Dist. LEXIS 13336 (E.D. Pa. 2002)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney's Fees: $46,504.88 Statutory damages for willful trademark counterfeiting: $1,500,000
V Secret Catalogue v. Zdrok, 2002 U.S. Dist. LEXIS 14286 (S.D. Ohio July 1, 2002)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney’s Fees: $32,727 Other sanctions and fees yet to be determined
Bellagio v. Denhammer, 2001 U.S. Dist. LEXIS 24764 (D. Nev. 2001)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney's fees: $6,211.45 Corrective Advertising: $1,000
Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705 (E. D. Pa. 2000), aff’d, 33 Fed. Appx. 647 (3rd Cir. 2002)	Uncontested motion for permanent injunction & statutory damages	Per Name: $100,000 Total: $500,000	Attorney’s Fees: $30,653.34
Aztar v. MGM Casino, 59 U.S.P.Q.2d 1460 (E.D. Va. Mar. 12, 2001)	Default judgment	Per Name: $100,000 Total: $100,000	Attorney's fees in an amount to be determined
Choice Hotels Int’l, Inc. v. Wright, No. CV-03-3785-RGK (C.D. Cal. May 11, 2004) (granting plaintiff’s motion for summary judgment); 355 B.R. 192 (Bankr. C.D. Cal. 2006) (excepting award of ACPA statutory damages from discharge in defendant’s bankruptcy)	Summary judgment (unopposed)	Per Name: $75,000 Total: $525,000	Royalty Fees for trademark infringement: $45,720 Costs for trademark infringement: $2,445.80
Yahoo! v. Yahoo Moving and Storage, No. C-03-0012 CW (N.D. Cal. 2003)	Default judgment	Per Name: $75,000 Total: $225,000	Attorney’s Fees: $20,000
A1 Mortg. Corp. v. A1 Mortg. and Fin. Servs., LLC, 82 U.S.P.Q.2d 1440 (W.D. Pa. 2006)	Bench trial	Per Name: $50,000 Total: $50,000	Attorney’s fees in amount to be determined
Petmed Express v. Medpets.com, 336 F. Supp. 2d 1213 (S.D. Fla. 2004)	Default judgment	Per Name: $50,000 Total: $100,000	Statutory damages for counterfeiting: $800,000 ($400,000 per mark) Attorney’s Fees: $16,553.10
Pinehurst v. Wick, 256 F. Supp. 2d 424 (M.D.N.C. 2003)	Summary judgment	Per Name: $50,000 Total: $100,000	Attorney's fees in an amount to be determined
E. & J. Gallo Winery v. Spider Webs, 192 F. Supp. 2d 1033 (S.D. Tex. 2001), aff’d, 286 F.3d 270 (5th Cir. 2002)	Summary judgment	Per Name: $25,000 Total: $25,000	None
Silpada Designs, Inc. v. O’Malley, 2006 U.S. Dist. LEXIS 76301 (D. Kan. Oct. 19, 2006) (Default Judgment), 2007 U.S. Dist. LEXIS 30580 (D. Kan. Apr. 24, 2007) (Awarding attorney’s fees).	Default judgment	Per Name: $10,000 Total: $10,000	Reasonable Attorney’s Fees Court later ordered attorney’s fees of $78,362.05
Ford Motor Co. v. Cross, 441 F. Supp. 2d 837 (E.D. Mich. 2006)	Default judgment	Per Name: $10,000 Total: $10,000	Statutory Damages for trademark counterfeiting: $100,000 Attorney’s Fees: $28,288.89
NCAA v. BBF, 2001 U.S. Dist. LEXIS 11774 (E.D. Va. 2001)	Default judgment	Per Name: $10,000 Total: $10,000	Attorney's fees and costs in an amount to be determined Court later ordered attorney’s fees and costs of $91,994.79
Shields v. Zuccarini, 2000 U.S. Dist. LEXIS 15223 (E.D. Pa. 2000), aff’d, 254 F.3d 476 (3d Cir. 2001)	Summary judgment	Per Name: $10,000 Total: $50,000	Attorney’s Fees: $35,798.50 Costs: $3,310.96
Victoria’s Cyber Secret v. V Secret Catalogue, 161 F. Supp. 2d 1339 (S.D. Fla. 2001)	Summary judgment	Per Name: $10,000 (trebled) Total: $120,000	Reasonable attorney's fees and costs. Parties later stipulated that plaintiff was entitled to attorney’s fees of $100,000
Baylor Univ. v. Int’l Star, 61 U.S.P.Q.2d 1700 (W.D. Tex. 2001)	Summary judgment	Per Name: $10,000 Total: $10,000	Reasonable attorney’s fees and costs Court later ordered attorney’s fees and costs of $43,296.63
Popular, Inc. v. Stout, 2007 WL 44777 (M.D. Fla. Jan. 5, 2007).	Default judgment	Per Name: $10,000 Total: $10,000	None
Panda Herbal Int’l v. Luby, 2007 WL 44023 (E.D. Pa. Jan. 9, 2007).	Jury trial	Per Name: $5,000 (1 name) $1,000 (11 names) Total: $16,000	Trademark infringement damages: $200,000
Dameware Dev. v. N. Software, 2003 U.S. Dist. LEXIS 3982 (E.D. La. 2003)	Summary judgment	Per Name: $5,000 Total: $5,000	Attorney’s Fees: $19,295.65
Ford Motor v. Catalanotte, 342 F.3d 543 (6th Cir. 2003)	Bench trial	Per Name: $5,000 Total: $5,000	None
Int’l Bancorp v. Etrangers A Monoco, 192 F. Supp. 2d 467 (E.D. Va. 2002), aff’d, 329 F.3d 359 (4th Cir. 2003)	Summary judgment	Per Name: $5,000 (2 names) $1,000 (41 names) Total: $51,000	None
Anlin Indus., Inc. v. Burgess, 2007 WL 715687 (E.D. Cal. Mar. 5, 2007)	Summary judgment	Per Name: $2,500 Total: $12,500	None
United Greeks v. Klein, 2000 U.S. Dist. LEXIS 5670 (N.D.N.Y. 2000)	Default judgment	Per Name: $2,000 Total: $10,000	Attorney's Fees: $5,950
Mattel v. Adventure Apparel, 2001 U.S. Dist. LEXIS 13885 (S.D.N.Y. 2001)	Summary judgment	Per Name: $1,000 Total: $2,000	None
AT&T v. ATT&T, 2002 U.S. Dist. LEXIS 24079 (D. Del. 2002)	Summary judgment	Per Name: $1,000 Total: $2,000	None

Endnotes
¹ 15 U.S.C. §1125(d)(1)(A) (2000).

² ACPA §3010 (codified at 15 U.S.C. §1117 note).

³ 15 U.S.C. §1116(a).

⁴ 15 U.S.C. §1125(d)(1)(C).

⁵ 15 U.S.C. §1117(a).

⁶ 15 U.S.C. § 1117(d).

⁷ 15 U.S.C. §1117(a).

⁸ Id.

⁹ Id.

¹⁰ 15 U.S.C. §1117.

¹¹ Victoria's Cyber Secret v. V Secret Catalogue, 161 F. Supp. 2d 1339 (S.D. Fla. 2001).

¹² Id. at 1356.

¹³ Id. at 1357.

¹⁴ 15 U.S.C. §1117(a).

¹⁵ See Survey of ACPA Statutory Damages Cases Chart below.

¹⁶ K and N Eng'g, Inc. v. Bulat, 510 F.3d 1079 (9th Cir. 2007).

¹⁷ Id. at 1082.

¹⁸ Id.

¹⁹ Id. fn. 5.

²⁰ 15 U.S.C. §1125(d)(2)(A)(ii).

²¹ 15 U.S.C. § 1125(d)(2)(D)(i).

²² Section 1117(a) provides in relevant part that "[w]hen a violation ... under Section 43(a) or (d) [15 USCS §1125(a) or (d)], or a willful violation under Section 43(c) [15 USCS §1125(c)] ... the plaintiff shall be entitled, ... subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action." 15 U.S.C. §1117(a).

²³ Agri-Supply Co., Inc. v. Agrisupply.com, 457 F. Supp. 2d 660 (E.D. Va. 2006).

²⁴ Id. at 665.

²⁵ 15 U.S.C. §1125(d)(2)(D)(3).

²⁶ Agri-Supply, 457 F. Supp. 2d at 667 (awarding costs as well).

²⁷ 15 U.S.C. §1117(d).

²⁸ FieldTurf, Inc. v. Triexe Mgmt. Group, Inc., 69 USPQ 2d 1861, 1863 (N.D. Ill. 2003).

²⁹ Id.

³⁰ March Madness Athletic Ass'n v. Netfire, Inc., 310 F. Supp. 2d 786, 815 (N.D. Tex 2003), aff'd, 120 Fed. Appx. 540 (5th Cir. 2005); Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 500 (2d Cir. 2000).

³¹ Ford Motor Co. v. Catalanotte, 342 F.3d 543, 550-51 (6th Cir. 2003); E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270, 277 (5th Cir. 2002); Shields v. Zuccarini, 254 F.3d 476, 487-88 (3d Cir. 2001).

³² 15 U.S.C. §1117(d).

³³ See S. Rep. No. 106-140, at 8 (1999). See also H.R. Conf. Rep. No. 106-464, at 38 (1999).

³⁴ Audi AG v. D'Amato, 381 F. Supp. 2d 644, 669 (E.D. Mich. 2005) ("The Court finds that although Defendant's infringement was willful, statutory damages are not appropriate in this matter. Defendant alleges that he has not made a profit from www.audisport.com. Under these circumstances, the Court finds that an injunction satisfies the equity of this case."), aff'd, 469 F.3d 534 (6th Cir. 2006).

³⁵ See, e.g., Morrison & Foerster LLP v. Wick, 94 F. Supp. 2d 1125, 1136 (D. Colo. 2000) (rejecting statutory damages because plaintiff failed to "elect" the remedy as required by statute). Several courts have found ACPA violations and determined that statutory damages were appropriate, but deferred a ruling on the amount. See, e.g., Flow Control Indus. Inc. v. AMHI Inc., 278 F. Supp. 2d 1193, 1201 (W.D. Wash. 2003) (deferring a ruling on statutory damages for plaintiff until defendant's counterclaims were decided (court eventually entered permanent injunction and parties voluntarily dismissed all other claims)); Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q.2d 1620, 1626 (S.D.N.Y. 2000) (stating that it would award statutory damages and attorneys' fees unless parties resolved those issues within ten days (court eventually ordered permanent injunction and dismissed all other claims)).

³⁶ 15 U.S.C. §1117(c).

³⁷ See, e.g., Diane Von Furstenberg Studio v. Snyder, 2007 U.S. Dist. LEXIS 78915, at *11-19 (E.D. Va. Oct. 23, 2007) (applying Copyright Act to determine an award of $100,000 for the infringed mark based on finding that all of the copyright factors weighed in plaintiff's favor); Commercial Law League of Am., Inc. v. George, Kennedy & Sullivan, LLC, 2007 U.S. Dist. LEXIS 68182, at *10-11 (S.D. Tex. Sept. 14, 2007) (applying Copyright Act factors to determine an award of $10,000 where "[t]here is no evidence of the value of the infringing material or any loss to [plaintiff] other than its attorneys' fees and costs in this suit"); Nike, Inc. v. B&B Clothing Co., 2007 U.S. Dist. LEXIS 37195, at *6-8 (E.D. Cal. May 22, 2007) (applying Copyright Act factors to award $100,000 for four counterfeit mark as "at least commensurate with the value of plaintiff's famous marks"); Tiffany (NJ) Inc. v. Luban, 282 F. Supp. 2d 123, 125 (S.D.N.Y. 2003) (applying Copyright Act factors to find an award of $550,000 for multiple infringements to be just, given the defendants' willfulness and use of the Internet to make sales); Louis Vuitton Malletier & Oakley, Inc. v. Veit, 211 F. Supp. 2d 567, 583-85 (E.D. Pa. 2002) (applying Copyright Act factors to find that the "case certainly calls for a high damage award, given the egregious conduct of the Defendants and the use of the Internet").

³⁸ 17 U.S.C. §504(c)(1).

³⁹ 17 U.S.C. §504(c)(1).

⁴⁰ See Fitzgerald Pub. Co. v. Baylor Pub. Co., 807 F.2d 1110, 1117 (2d Cir. 1986). See generally, 4 Melville Nimmer and David Nimmer, Nimmer on Copyright §14.04(B)(1)(a) (2003).

⁴¹ E. & J. Gallo Winery v. Spider Webs, Ltd., 286 F.3d 270, 278 (5th Cir. 2002) (citing F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228 (1952)).

⁴² A1 Mortg. Corp. v. A1 Mortg. and Fin. Servs., LLC, 82 U.S.P.Q.2d 1440, 1452 (W.D. Pa. 2006).

⁴³ Id. (quoting Electronics Boutique Holding Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705, 1712 (E.D. Pa. 2000)).

⁴⁴ See, e.g., Medline Indus. v. Medline Prods., 2004 U.S. Dist. LEXIS 12741 (N.D. Ill. 2004); V Secret Catalogue v. Zdrok, 2002 U.S. Dist. LEXIS 14286 (S.D. Ohio 2002); NCAA v. BBF, 2001 U.S. Dist. LEXIS 11774 (E.D. Va. 2001); Victoria's Cyber Secret v. V Secret Catalogue, 161 F. Supp. 2d 1339 (S.D. Fla. 2001); Baylor Univ. v. Int'l Star, 61 U.S.P.Q.2d 1700 (W.D. Tex. 2001).

⁴⁵ It is possible that the amount of statutory damages awarded by any particular court was influenced by factors other than those expressly stated or discussed by the courts.

⁴⁶ See Panda Herbal Int'l v. Luby, 2007 WL 44023, at *2 (E.D. Pa. Jan. 9, 2007) (awarding $5,000 for one domain name that defendant used and only $1,000 each for eleven names defendant did not use).

⁴⁷ See Lahoti v. Vericheck, Inc., 2007 WL 4269791, at *14 (W.D. Wash. Dec. 3, 2007) (basing $100,000 award in part on the registrant's "bad faith and his deliberate and knowing acts"); Ford Motor Co. v. Cross, 441 F. Supp. 2d 837 (E.D. Mich. 2006) (granting plaintiff's request for $10,000 as appropriate, "based on Defendants' counterfeiting and willful infringement of Ford's ... trademark"); Biocryst Pharms., Inc. v. Namecheap.com, No. CV 05-7615 JFW, at *3 (C.D. Cal. Nov. 21, 2006) (finding that defendant knowingly and willfully used domain names that infringed plaintiff's trademarks in awarding $100,000 per name); Graduate Mgmt. Admission Council v. Raju, 267 F. Supp. 2d 505, 512-13 (E.D. Va. 2003) (finding that defendant willfully and blatantly used plaintiff's mark in awarding $100,000 per name); Yahoo! v. Yahoo Moving and Storage, No. C-03-0012 CW, at *4-5 (N.D. Cal. May 28, 2003) (finding that defendants "attempted to improperly and illegally benefit from Yahoo's known intellectual property" in awarding $75,000 per name); Louis Vuitton Malletier & Oakley, Inc. v. Veit, 211 F. Supp. 2d 567, 585 (E.D. Pa. 2002), amended by 2002 U.S. Dist. LEXIS 13336 (E.D. Pa. 2002) (basing award of $100,000 for one name on defendants' "egregious acts in blatantly using [plaintiff's] registered mark to sell counterfeit Louis Vuitton products"); Bellagio v. Denhammer, 2001 U.S. Dist. LEXIS 24764, at *12 (D. Nev. July 16, 2001) (basing award of $100,000 for one name on "egregiousness and willfulness of [d]efendants' conduct in first refusing to transfer ownership of the infringing domain name to plaintiff, and subsequently transferring its ownership to a foreign individual" after suit was filed); Aztar v. MGM Casino, 59 U.S.P.Q.2d 1460, 1465 (E.D. Va. Mar. 12, 2001) (basing award of $100,000 for one name on "[d] efendant's bad faith attempt to deceive Internet customers and profit from the good will [p]laintiff has generated in the famous TROPICANA mark"); Shields v. Zuccarini, 2000 U.S. Dist. LEXIS 15223, at *2 (E.D. Pa. July 18, 2000) (finding that defendant's conduct was "utterly parasitic and in complete bad faith" in awarding $10,000 per name), aff'd, 254 F.3d 476 (3d Cir. 2001).

⁴⁸ See Lahoti, 2007 WL 4269791, at *14 (basing $100,000 award in part on registrant's "pattern and practice of registering domain names that incorporate the trademarks of others"); Pinehurst v. Wick, 256 F. Supp. 2d 424, 432-33 (M.D.N.C. 2003) (noting defendant's continued and persistent cybersquatting activities despite several prior adverse rulings in other cases in awarding $50,000 per name); Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705, 1713 (E. D. Pa. 2000), aff'd, 33 Fed. Appx. 647 (3d Cir. 2002) (noting that defendant "victimized a wide variety of people and entities" and "boldly thumb[ed] his nose at the rulings of this court and the laws of our country," even after the same court in another case enjoined him and assessed statutory damages of $10,000 per domain name and attorneys' fees).

⁴⁹ See Lahoti, 2007 WL 4269791, at *14 (basing $100,000 award in part on the registrant's "efforts to extort thousands of dollars in exchange for transfer of the domain name"); Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003) (upholding the district court's award of statutory damages of $5,000 based solely on defendant's offer to sell the domain name to Ford as not clearly erroneous).

⁵⁰ See Biocryst Pharms, Inc. v. Namecheap.com, No. CV 05-7615 JFW, at *4 (C.D. Cal. Nov. 21, 2006).

⁵¹ See Graduate Mgmt. Admission Council, 267 F. Supp. 2d at 512-13.

⁵² See Popular, Inc. v. Stout, 2007 WL 44777, at *4-5 (M.D. Fla. Jan. 5, 2007) (finding the facts of this case to be "less egregious" than other cases and awarded only $10,000); Petmed Express v. Medpets.com, 336 F. Supp. 2d 1213, 1221-22 (S.D. Fla. 2004) (deciding against awarding the maximum amount of $100,000 and instead awarding $50,000 per domain name because defendants did not sell products to which plaintiff holds an exclusive license or counterfeit products, distinguishing this case from other cases awarding the maximum amount); Silpada Designs, Inc. v. O'Malley, 2006 U.S. Dist. LEXIS 76301, at *6 (D. Kan. Oct. 19, 2006) (noting that "where the defendant has been a competitor or sold competitive goods, courts have awarded significant statutory damage awards").

⁵³ Pinehurst, 256 F. Supp. 2d at 433 (basing award of $50,000 per name in part on defendant's registration of additional PINEHURST domain names after plaintiff filed suit and defendant's registration of domain names similar to the name of plaintiff's counsel).

⁵⁴ Id.

⁵⁵ See Silpada, 2006 U.S. Dist. LEXIS 76301, at *7 (D. Kan. Oct. 19, 2006) (noting that defendants registered the "silpadastyle.com" domain name after receiving a demand letter from plaintiff's counsel).

⁵⁶ See Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 853 (E.D. Mich. 2006) (finding that the "circumstances of this case" where defendant "continued to employ [plaintiff's famous] marks after receiving actual notice of the infringing nature of their conduct, and their lack of authority for it" warranted statutory award); Yahoo! v. Yahoo Moving and Storage, No. C-03-0012 CW (N.D. Cal. 2003) (finding that "defendant's conduct in ... continuing to use plaintiff's internationally recognized trademark even after it was on actual notice of plaintiff's interest and in not responding to further correspondence from plaintiff's counsel was egregious").

⁵⁷ Bellagio v. Denhammer, 2001 U.S. Dist. LEXIS 24764, at *12 (D. Nev. July 16, 2001) (noting that defendant transferred the domain name to a foreign individual after suit was filed).

⁵⁸ See Anlin Indus., Inc. v. Burgess, 2007 WL 715687, at *9 (E.D. Cal. Mar. 5, 2007) (noting that defendant's intent was to continue to sell plaintiff's products rather than profiting from the Web site); Panda Herbal Int'l v. Luby, 2007 WL 44023, at *3 (E.D. Pa. Jan. 9, 2007) (noting that plaintiff hired defendant to develop an Internet presence for plaintiff and describing the case as "more akin to a business dispute rather than an infringement case").

⁵⁹ See Anlin, 2007 WL 715687, at *9 (noting that defendant was a reseller of defendant's products in justifying a lower award than plaintiff sought and awarded only $2,500 per name).

⁶⁰ See Lahoti, 2007 WL 4269791, at *14 (basing $100,000 award in part on defendant's use of domain name for commercial Web site offering links to Web sites of plaintiff's competitors); Silpada, 2006 U.S. Dist. LEXIS 76301, at *6 (noting that "where the defendant has been a competitor or sold competitive goods, courts have awarded significant statutory awards").

⁶¹ See Lahoti, 2007 WL 4269791, at *14 (basing $100,000 award in part on "the actualconfusion ... occurring in the marketplace as a result of [defendant's] use of the domain name in connection with a commercial Web site offering links to third parties that compete with [plaintiff]").

⁶² See E. & J. Gallo Winery v. Spider Webs, Ltd., 286 F.3d 270, 278 (5th Cir. 2002) (finding that defendant's actions put the plaintiff at risk of losing business and of having its business reputation tarnished).

⁶³ See AT&T v. ATT&T, 2002 U.S. Dist. LEXIS 24079, at *8 (D. Del. Oct. 31, 2002) (awarding statutory damages of only $1,000 per name because it was "sympathetic" to defendant's status as a "small business," even though defendant had failed to earlier comply with a preliminary injunction).

⁶⁴ See Audi AG v. D'Amato, 381 F. Supp. 2d 644 (E. D. Mich. 2005) (finding that although the defendant's cybersquatting was willful, statutory damages were not appropriate because defendant had not made a profit from the infringing Web site), aff'd, 469 F.3d 534 (6th Cir. 2006); Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705, 1712 (E. D. Pa. 2000) (noting that defendant admittedly earned between $800,000 and $1,000,000 annually from his cybersquatting activities before awarding $500,000 in statutory damages), aff'd, 33 Fed. Appx. 647 (3d Cir. 2002); Mattel, Inc. v. Adventure Apparel, 2001 U.S. Dist. LEXIS 13885, at *15 (S.D.N.Y. Sept. 7, 2001) (finding that "the need for deterrence is not exceptional in this case ... considering the minuscule number of web hits and the solitary sale of a pair of stockings" before awarding $2,000 in statutory damages). But see Lahoti, 2007 WL 4269791, at *5 (awarding $100,000 in statutory damages despite the registrant earning only $724 in revenue from click-throughs on the links appearing on his Web site).

⁶⁵ See Anlin, 2007 WL 715687, at *9 (awarding statutory damages of $2,500 per domain name instead of $10,000 sought by plaintiff because there were no allegations that plaintiff lost any sales or dealers or that there was any actual diversion); E. & J. Gallo Winery, 286 F.3d at 278 (finding that even though plaintiff did not present any evidence that it actually lost any business, defendant's actions put the plaintiff at risk of losing business and of having its business reputation tarnished and awarded $25,000); Mattel, 2001 U.S. Dist. LEXIS 13885, at *15 (awarding only $1,000 per name because it found that plaintiff suffered minimal harm).

⁶⁶ See A1 Mortg. Corp. v. A1 Mortg. and Fin. Servs., LLC, 82 U.S.P.Q.2d 1440, 1441 (W.D. Pa. 2006); Electronics Boutique, 56 U.S.P.Q.2d 1705, 1712 (E.D. Pa. 2000).

⁶⁷ See Dameware Dev. v. N. Software, 2003 U.S. Dist. LEXIS 3982, at *4 (E.D. La. Mar. 14, 2003) (rejecting plaintiff's request for $20,000 in statutory damages, finding that $5,000 was "appropriate and fair" in view of the approximately $20,000 in attorneys' fees and expenses sought by plaintiff).

⁶⁸ See Audi AG v. D'Amato, 381 F. Supp. 2d 644, 669 (E. D. Mich. 2005) (finding that even though defendant's conduct was willful, an injunction satisfied the equities of the case because he had not made a profit from the infringing Web site); aff'd, 469 F.3d 534 (6th Cir. 2006).

⁶⁹ See United Greeks v. Klein, 2000 U.S. Dist. LEXIS 5670, at *2-3 (N.D.N.Y. May 2, 2000) (holding that while defendant's default is a "concession of all well-pleaded allegations of liability," it is not "an admission of damages").

⁷⁰ See Popular, Inc. v. Stout, 2007 WL 44777, at *4-5 (M.D. Fla. Jan. 5, 2007) (granting plaintiff's specific request for only $10,000 in statutory damages); Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 853 (E.D. Mich. 2006) (finding the "circumstances of this case warrant the granting of" plaintiff's request for $10,000 in statutory damages, "representing 10% of the maximum allowable award"); Dameware, 2003 U.S. Dist. LEXIS 3982, at *4 (lowering plaintiff's request of $20,000 to $5,000 "as appropriate and fair").

⁷¹ See Electronics Boutique v. Zuccarini, 56 U.S.P.Q.2d at 1712-13 (noting that defendant "even interfere[d] with the ability of the public to access health information by preying on hospitals and prescription drugs"), aff'd, 33 Fed. Appx. 647 (3d Cir. 2002).

⁷² Lahoti, 2007 WL 4269791, at *14 (basing $100,000 award in part on defendant's "disregard for the submission of innacurate answers to interrogatories").

⁷³ Some of the decisions listed in the chart are not reported decisions.

⁷⁴ E. & J. Gallo Winery v. Spider Webs, 286 F.3d 270, 278 (5th Cir. 2002).

⁷⁵ Id. at 280-81 (awarding $25,000 in statutory damages for use of one domain name).

⁷⁶ See, e.g., Maria Farrell, Karen Lentz & Patrick Jones, ICANN, GNSO Issues Report on Domain Tasting, 4-5 (2007).

⁷⁷ See S. Rep. No. 106-140, at 8 (1999); see also H.R. Conf. Rep. No. 106-464, at 38 (1999).

⁷⁸ In re Wright, 355 B.R. 192 (Bankr. C.D. Cal. 2006).

⁷⁹ 11 U.S.C. §523(a)(6).

⁸⁰ In re Wright, 355 B.R. at 212.

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