Introduction

Apple Corps Limited and Subafilm's Limited collectively owned trademarks for popular English rock band The Beatles. In their lawsuit, Apple Corps Limited claimed that the defendants Lockalita.com infringed on their trademarks by selling Beatles merchandise, which contained "Beatles" logos and "Yellow Submarine" imagery.

Discussion

The lawsuit named nearly eighty different entities. It claimed that these sellers were counterfeiting, infringing, promoting items that consumer's believed were authentic, unfairly competing, and breaking joint trademark infringement. They were doing this by selling unauthorized Beatles merchandise.

The 77 entities that sold Beatles merchandise on Lockalita.com, however, never responded to the lawsuit. Because they failed to respond, Apple Corps asked for the court to provide a final judgment while also limiting the seller's actions in the future. Providing damages for the profit, Apple lost due to the counterfeit goods.

Apple Corps had several demands for the defendants that never appeared in court, including:

  • For Lockalita.com to stop producing and selling Beatles merchandise that infringed on Apple Corp's trademarks.
  • That the court cancel or transfer the domain name Lockalita.com to Apple Corps.
  • For the listings and images containing trademark infringing property to be removed from the website.
  • That Lockalita.com surrender the infringing goods to Apple Corps.
  • To receive statutory damages, which would pay for the loss of profits Apple incurred for Lockalita infringing on the trademarks and counterfeiting the items.

In return, the district court accepted all of Apple Corp's requests. This ruling came under the condition that they could prove that they held trademarks to the Beatles' property and that Lockalita had infringed on those rights.

As a result, Apple Corps was able to demonstrate the following points and win the case:

  • That they suffered injury that couldn't be repaired by actions from Lockalita.com.
  • That the law had no remedy for the actions taken by Lockalita.com which negatively impacted Apple Corps.
  • Because of the actions of Lockalita.com, Apple Corps needed an appropriate solution from the court.
  • And finally, that preventing Lockalita.com from selling the infringing property would benefit the public, who may have thought they were purchasing authentic Beatles merchandise.

The court found that Apple Corps' arguments showed that the actions of Lockalita.com could confuse the general public and consumers. They also felt that a monetary award would not remedy the total damage Lockalita.com caused to Apple Corp's reputation and goodwill. Because the court believed that Apple Coups would continue losing sales and experience a loss of reputation, Lockalita.com was not allowed to continue its actions.

In addition to all the actions taken by the court to prevent Lockalita.com from continuing to infringe on Apple Corp's trademarks, they also provided a monetary award to Apple. The Lanham Act allows the court to award damages up to $2,000,000 per counterfeit mark whenever someone willingly counterfeits products.

Conclusion

Even though Lockalita and the 77 defendants never responded to the suit, the court felt it could award statutory damages without an evidentiary hearing based on Apple Corp's evidence. As a result, the court awarded damages of $1 million against each defendant, therefore bringing this case to a close. 

Source: https://www.govinfo.gov/content/pkg/USCOURTS-flsd-0_19-cv-62853/pdf/USCOURTS-flsd-0_19-cv-62853-0.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C. 

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