Internet Trademark Case Summaries
Roger Cleveland Golf Co., Inc. v. Price (sic)
2010 WL 5019260 (D.S.C. Dec. 3, 2010) (denying defendant Bright Builders’ motion for summary judgment); No. 09-02119 (D.S.C. Mar. 14, 2011) (judgment against defendant Prince for trademark counterfeiting and infringement; judgment against defendant Bright Builders for contributory trademark counterfeiting and infringement) (See discussion of case in Nondomain Name Trademark Infringement - Cases Finding Infringement section above.)
Roger Cleveland Golf Co., Inc. v. Price (sic), 2010 WL 5019260 (D.S.C. Dec. 3, 2010) (denying defendant Bright Builders’ motion for summary judgment); No. 09-02119 (D.S.C. Mar. 14, 2011) (judgment against defendant Prince for trademark counterfeiting and infringement; judgment against defendant Bright Builders for contributory trademark counterfeiting and infringement). Plaintiff Roger Cleveland Golf Company, Inc. (“RC Golf”) manufactured and distributed golf clubs, equipment, and apparel. Defendants Christopher Prince, Sheldon Shelley, and Prince Distribution LLC (collectively, “Prince”) sold golf equipment through a website located at the domain names copycatclubs.com, worldtimegolf.com, and legacygolfclubs.com. Prince advertised his online store as “your one stop shop for the best COPIED and ORIGINAL golf equipment on the internet.” In 2009, RC Golf purchased several CLEVELAND-branded golf clubs from www.copycatclubs.com. RC Golf determined, however, that they were counterfeits. RC Golf sued Price for trademark infringement. During discovery, RC Golf learned about defendant Bright Builders, Inc. (“Bright Builders”), Prince’s web hosting company, and its involvement with Prince’s website. RC Golf filed an amended complaint charging Bright Builders with contributory and/or vicarious trademark infringement. Bright Builders filed a motion for summary judgment.
The district court denied Bright Builders’ motion for summary judgment. First, Bright Builders’ motion did not comply with Rule 56 and various local rules for summary judgment motions, which the court noted was reason alone to deny the motion. Notwithstanding these technical errors, the court held that there were several genuine issues of material fact about Bright Builders’ participation in Prince’s business. Bright Builders argued that summary judgment should be granted because it solely served as Prince’s web-hosting entity and was unaware that Prince sold counterfeit CLEVELAND golf clubs. Bright Builders claimed that no case law extended liability to a web host for activities directed by its users, and that no factual evidence supported RC Golf’s allegations. However, Bright Builders did not cite any authority supporting its claims or any references to the record in its motion. RC Golf argued that Bright Builders was much more than a web host, citing deposition testimony and other evidence regarding Bright Builders’ involvement in Prince’s business. RC Golf claimed that Bright Builders specifically encouraged Prince to sell golf clubs on his website, instructed him to “drop ship” his merchandise, and designed the website, and that Prince paid Bright Builders $10,000 for this business “coaching.” RC Golf also argued that the name of Prince’s website, www.copycatclubs.com, and the site’s language about the “best COPIED and ORIGINAL golf equipment on the internet,” should have put Bright Builders on notice that Prince intended to sell counterfeit golf equipment on the site. The court held that there were genuine issues of material fact as to whether Bright Builders participated in Prince’s business to such an extent as to warrant liability for trademark infringement, and denied Bright Builders’ motion for summary judgment.
After a trial, the jury found that Prince was liable for willful trademark counterfeiting and infringement and awarded statutory damages in the amount of $28,250. The jury found Bright Builders was liable for willful contributory trademark counterfeiting and infringement and ordered it to pay RC Golf $770,750 in damages.