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Lex Machina Trademark LitigationReport 2016

by Brian C. Howard J.D./M.ALegal Data Scientist & Director of Analytics Services

and Jason Maples J.D./LL.M.Legal Data Expert Published May 2016

Lex Machina – Trademark Litigation Report 2016 i

Executive Summary

Lex Machina’s Trademark Litigation Report showcases the power

of Legal Analytics™ to inform business decisions around trademark

litigation.

From precise timing metrics on injunctions that can improve budgeting

for outside counsel and in-house counsel alike, to trends in the top

trademark parties and law fi rms, Legal Analytics provides, data-

driven, customized insights that supplement traditional research and

accumulated experience. In today’s world, leveraging this data gives

companies and fi rms a competitive edge - companies can choose better

counsel based on their performance, and counsel can increase their

performance by understanding how data infl uences decisions from

motion practice to damages demands and settlement thresholds.

Th is report examines several important metrics (and their interactions)

for trademark litigation in aggregate across cases fi led from January 2009

through the end of the fi rst quarter of 2016.

Areas of focus and key insights for the fi rst part include:

Injunctions and Other Remedies

• Th e median time to a temporary restraining order in trademark cases is 6 days. For prelimininary injunctions, the median time to issuance is just over 1 month. For permanent injunctions, the median is 6 months.

• Cybersquatting cases reach preliminary injunction slightly faster than trademark cases generally (0.8 months median vs 1.1 months median), but false advertising cases tend to take longer to reach both preliminary (2 months to 1.1) and permanent injunction (7.2 months to 6) compared to trademark cases generally.

• Chanel, Deckers, Tiff any, Louis Vuitton, Gucci, and Coach are the most common parties to win relinquishment of a domain name.

Findings and Judgments

• Default judgments happen frequently, often result in fi ndings of a Lanham Act violation, and account for 68.0% of all Lanham Act violation fi ndings.

• Equitable and fair use issues are usually determined on summary judgment more often than not.

Lex Machina’s Trademark Litigation

Report surveys and summarizes the key

trends and insights, and also profi les in

detail a few of the major players.

Based on the same data driving Lex

Machina’s platform, this report exam-

ines timing to remedy, case fi ndings and

resolutions, and damages to showcase

the power of Legal Analytics .

Equitable and fair use issues are usually determined on summjudgment more often than not.

Lex Machina – Trademark Litigation Report 2016 63ii

Damages

• Damages in trademark litigation come almost entirely from default judgments, and majority of the rest come from consent judgments.

• Of damages resulting from decisions on the merits, juries have awarded more damages than judges.

• Chanel has won the most damages ($1 billion) followed by Burberry Limited ($523 million), and Gucci ($208 million).

• Excluding damages resulting from consent or default judgments, Coach ($66 million) won the most damages followed by PODS Enterprises ($60 million) and Neurovision Medical Products ($60 million).

Districts

• Central District of California (4,164 cases) is the most popular district, although it has seen a decline since 2015 corresponding to an overall decline in all trademark cases filings.

• For cases involving allegations of cybersquatting, the Southern District of Florida leads with 486 cases, followed by the Northern District of Illinois (429 cases), and the Central District of California (361 cases).

• For cases involving allegations of false advertising, The Central District of California tops the chart with 785 cases, followed by the Southern District of New York (389 cases) and the Northern District of Illinois (274 cases).

Parties

• Coach is the leading plaintiff in trademark cases filed from January 2009 through March 2016 with 730 cases, followed by Chanel (330 cases) and Microsoft (203 cases).

• The National Football League (NFL) is the top defendant with 548 cases related to a single dispute over use of former players likeness; the other top defendants are Syngenta Seeds (184 cases), Big Bad Limo Service (109 cases), Amazon.com (66 cases), and Walmart (59 cases).

Law Firms

• Top law firms representing plaintiffs include Goldberg, Perksy & White (542 cases), Stephen M. Gaffigan (539 cases), the Blakely Law Group (371 cases), and Kilpatrick Townsend & Stockton (366 cases).

• On the defense side, Greenberg Traurig is the top firm (with 161 cases), followed by Kilpatrick Townsend & Stockton (146 cases), and Lewis Brisbois Bisgaard & Smith (110 cases).

This report provides a starting point for understanding the impact of Legal Analytics on the business and practice of trademark law. It sheds light on the big trends in trademark litigation. But the full power of Legal Analytics is revealed when users engage with the platform to produce actionable and strategic insights tailored to their particular context and circumstance. When users have the ability to “twist the dials,” their results provide them a competitive advantage in landing clients, winning cases, and closing deals by making data-driven decisions.

Lex Machina – Trademark Litigation Report 2016 iii

Lex Machina’s Data and MethodologyThis report draws on data from Lex Machina’s proprietary intellectual property litigation database. Although some of our data is derived from litigation information publicly available from PACER (the federal court system’s document website), Lex Machina applies additional layers of intelligence to bring consistency to, and ensure the completeness of, the data. Beyond the automation, key areas of Lex Machina’s data are either human-reviewed or hand-coded by a dedicated team of attorneys to ensure accuracy. Lex Machina’s trademark content covered in this report focuses on U.S. district court cases pending from January 1, 2009 through March 31, 2016. Cases are identified as trademark based on the primary filing codes Nature of Suit (NOS) 840 and Cause of Action codes for Trademark Infringement and then verified; additional cases with trademark claims are found from cases filed as NOS 820 and NOS 830. Terminated cases are coded for injunctive relief, merits decisions on the claims brought and defenses raised, and damages awarded for Lanham Act violations. Damages may be compensatory (including defendant’s profits, plaintiff’s actual damages, reasonable royalties, and statutory damages) or non-compensatory (including attorneys’ fees, costs, and prejudgment interest). Damages enhanced for willfulness are also distinguished. Lex Machina considers a trademark case to be a case with one or more claims involving violations of the Lanham Act (the federal trademark statute) including for trademark infringement, trademark dilution, unfair competition or cybersquatting. This definition excludes cases with only state claims of infringement or unfair competition, trademark ownership disputes, and appeals from TTAB or USPTO decisions. Two primary sub-categories of trademark cases are presented in this report, in addition to analysis of all trademark cases (comprising all charts not specifically labeled with one of the two sub-categories below): • Cybersquatting Cases: Trademark cases involving claims of cyberpiracy prohibited under 15 U.S.C. § 1125

(d) of the the Lanham Act.

• False Advertising Cases: Trademark cases involving claims of false advertising prohibited under 15 U.S.C. §

1125 (a)(1)(B) of the Lanham Act.

A trademark finding is defined as a court-enforceable finding regarding one of the claims or defenses listed below. Findings may also include negatives like “No Lanham Act Violation,” when such is found in a granted order (denied orders do not rule one way or the other and are not counted).

• Lanham Act Violation – Activity of trademark / trade dress infringement, trademark / trade dress dilution, unfair competition, or cybersquatting prohibited by the Lanham Act.

• Trademark Ownership / Validity – Proof that the party enforcing the trademark or trade dress owns the right to do so and that the trademark or trade dress is valid.

• Equitable Defense – A defense against a claim of Lanham Act Violation involving license, acquiescence or laches.

• Fair Use Defense – An affirmative defense permitting the limited use of a protected trademark under the Lanham Act, including statutory fair use, nominative use, comparative advertising, and parody.

Lex Machina’s data is focused on the U.S. District Courts and does not include appeals or modifications of judgments on appeal.

Lex Machina – Trademark Litigation Report 2016 63iv

Table of Contents

Lex Machina’s Data and Methodology iii

Injunction and Remedy Timing

Fig. 1: Timing for permanent and preliminary injunctions granted, for cases filed Jan 2009 - Mar 2016 1

Fig. 2: Timing for temporary restraining orders granted, for cases filed Jan 2009 - Mar 2016 1

Fig. 3: Total number of injunctions and temporary restraining orders, for cases filed Jan 2009 - Mar 2016 1

Fig. 4: Total cases filed for trademark subtypes with granted injunction, for cases filed Jan 2009 - Mar 2016 3

Fig. 5: Time to grant of permanent injunction in cybersquatting cases, for cases filed Jan 2009 - Mar 2016 3

Fig. 6: Time to grant of permanent injunction in false advertising cases cases, for cases filed Jan 2009 - Mar 2016 3

Fig. 7: Number of granted of permanent injunction in cybersquatting cases, for cases filed Jan 2009 - Mar 2016 3

Fig. 8: Time to grant of permanent injunction in false advertising cases cases, for cases filed Jan 2009 - Mar 2016 3

Fig. 9: Top parties (10 or more cases with grant of relinquishment of domain name), for cases filed Jan 2009 - Mar 2016 4

Fig. 10: Time to grant of relinquishment of domain name, for cases filed Jan 2009 - Mar 2016 4

Fig. 11: Number of grants of domain name relinquishment, for cases filed Jan 2009 - Mar 2016 4


Fig. 12: Judgment type by finding, in cases terminated Jan 2009 - Mar 2016 5

Fig. 13: Finding by judgment event, in cases terminated Jan 2009 - Mar 2016 6

Fig. 14: Findings and judgments table, in cases terminated Jan 2009 - Mar 2016 7

Fig. 15: Case resolutions, in cases terminated Jan 2009 - Mar 2016 7

Damages

Fig. 16: Top parties by damages won, Jan 2009-March 2016 in cases filed Jan 2005 - Mar 2016 8

Fig. 17: Top parties by damages won (omitting consent and default judgments), Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 8

Fig. 18: Damages by judgment type, damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 9

Lex Machina – Trademark Litigation Report 2016 v

Fig. 19: Damages and judgment types chart (damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 9

Fig. 20: Top parties winning mass counterfeiter default damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 9

Fig. 21: Mass counterfeiter default damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 (showing amounts with at least 3 cases) 10

Fig. 22: Average mass counterfeiter default damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 10

Districts

Fig. 23: Top districts for all Lanham Act cases, by cases filed Jan 2009 - Mar 2016 11Fig. 24: Top districts 2011-2016 Q1, all Lanham Act cases, by cases filed Jan 2009 - Mar 2016 11Fig. 25: Top districts for cybersquatting cases, by cases filed Jan 2009 - Mar 2016 12Fig. 26: Top districts 2011-2016 Q1, cybersquatting cases, by cases filed Jan 2009 - Mar 2016 12Fig. 27: Top districts for false advertising cases, by cases filed Jan 2009 - Mar 2016 13Fig. 28: Top districts 2011-2015 Q1, false advertising cases, by cases filed Jan 2009 - Mar 2016 13Fig. 29: All trademark cases filed Jan 2009 - Mar 2016 14

Parties and Law Firms

Fig. 30: Top plaintiffs, by cases filed Jan 2009 - Mar 2016 15Fig. 31: Top plaintiffs, by cases filed Jan 2015 - Mar 2016 15Fig. 32: Top defendants, by cases filed Jan 2009 - Mar 2016 17Fig. 33: Top defendants, by cases filed Jan 2015 - Mar 2016 17Fig. 34: Top law firms representing plaintiffs, by cases filed Jan 2009 - Mar 2016 18Fig. 35: Top law firms representing plaintiffs, by cases filed Jan 2015 - Mar 2016 18Fig. 36: Top law firms representing defendants, by cases filed Jan 2009 - Mar 2016 19Fig. 37: Top law firms representing defendants, by cases filed Jan 2015 - Mar 2016 19

Using Boxplots to Understand Timing 21

Lex Machina – Trademark Litigation Report 20161

Injunction and Remedy Timing

Fig. 1: Timing for permanent and preliminary injunctions granted, for cases filed Jan 2009 - Mar 2016

Note: All charts reflect trademark litigation in the U.S. District Courts unless otherwise stated. The charts in this section only show injunctions and temporary restraining orders granted through March 31, 2016.

Preliminary Injunction Permanent Injunction

0

2

4

6

8

10

12

14

16

18

20

22

24

Tim

e to

rem

edy (

mon

ths)

0.61.1

2.63.2

6.0

10.8

Fig. 2: Timing for temporary restraining orders granted, for cases filed Jan 2009 - Mar 2016

Temporary Restrainin..

0

2

4

6

8

10

12

14

16

18

20

22

24

26

28

30

32

34

time

to re

med

y day

s

2.0

7.0

15.0

Fig. 3: Total number of injunctions and temporary restraining orders, for cases filed Jan 2009 - Mar 2016

0K 1K 2K 3K 4K 5K 6K 7K 8KCases

Temporary Restraining OrderPreliminary InjunctionPermanent Injunction

1,8096,854

1,281

Lex Machina – Trademark Litigation Report 2016 2

Time to Injunction

Understanding the timing of injunctive relief can help practioners form expectations of when the relief will be granted and to budget accordingly.

Nation-wide data on injunctions and remedies from 2009 through the first quarter of 2016 show some interesting trends:

• The median time to a temporary restraining order in trademark cases is 6 days.

• For prelimininary injunctions, the median time to issuance is just over 1 month. For permanent injunctions, the median is 6 months.

• Cybersquatting cases reach preliminary injunction slightly faster than trademark cases generally (0.8 months median, 50% between 0.6 and 1.5 vs 1.1 months median, 50% between 0.6 and 2.6).

• False advertising cases tend to take longer to reach both preliminary and permanent injunction compared to trademark cases generally:

Preliminary injunction: Permanent injunction:False advertising: 2 months median,

50% between 0.8 and 4.8 7.2 months median, 50% between 3.8 and 13

Trademark generally: 1.1 months median, 50% between 0.6 and 2.6

6 months median, 50% between 3.2 and 10.8

• Getting a domain name relinquished takes a median of 4.6 months (50% between 2.4 and 8.0) and the parties most frequently winning include Chanel, Deckers, Tiffany, Louis Vuitton, Gucci, and Coach.

The data shown in this section and the insights below provide only an example of what is possible with Lex Machina’s timing data, which combines timing data with other criteria to, for example, let in-house counsel choose faster lawyers and outside counsel find the fastest districts. The real power of analytics is the ability to interactively harness the data relevant to your specific context to tailor an answer to your specific question.


Fig. 4: Total cases filed for trademark subtypes with granted injunction, for cases filed Jan 2009 - Mar 2016

Fig. 5: Time to grant of permanent injunction in cybersquatting cases, for cases filed Jan 2009 - Mar 2016

All Lanham Act Cybersquatting False Advertising0K

5K

Cas

es7,765 cases

1,709 cases 1,508 cases


0

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

Tim

e to

rem

edy (

mon

ths)

0.60.8

1.5

2.5

4.8

8.7

Fig. 6: Time to grant of permanent injunction in false advertising cases cases, for cases filed Jan 2009 - Mar 2016


0

2

4

6

8

10

12

14

16

18

20

22

24

26

28

Tim

e to

rem

edy (

mon

ths)

0.8

2.0

4.8

3.8

7.2

13.0

Fig. 7: Number of granted of permanent injunction in cybersquatting cases, for cases filed Jan 2009 - Mar 2016

Fig. 8: Time to grant of permanent injunction in false advertising cases cases, for cases filed Jan 2009 - Mar 2016

0 200 400 600 800 1000 1200 1400 1600Cases

Preliminary InjunctionPermanent Injunction 1,484

700

0 200 400 600 800 1000 1200 1400Cases

Preliminary InjunctionPermanent Injunction 1,346

269


Fig. 9: Top parties (10 or more cases with grant of relinquishment of domain name), for cases filed Jan 2009 - Mar 2016

Relinquish Domain Name

0

2

4

6

8

10

12

14

16

18

Tim

e to

rem

edy (

mon

ths)

2.4

4.6

8.0

Fig. 10: Time to grant of relinquishment of domain name, for cases filed Jan 2009 - Mar 2016

0 20 40 60 80 100 120 140Cases

Chanel, Inc.Deckers Outdoor Corporation

Tiffany (NJ), LLCLouis Vuitton Malletier, S.A.

Gucci America, Inc.Coach Services, Inc.

Coach, Inc.Oakley, Inc.

River Light V, L.P.Tory Burch LLC

Abercrombie & Fitch Trading Co.American Automobile Association, Inc.

Michael Kors, L.L.C.Adidas AG

Adidas America, Inc.Adidas International Marketing B.V.

Reebok International Ltd.Montblanc-Simplo GMBH

Sports Licensed Division of the adida..Zynga Game Network, Inc.

123 cases68 cases

44 cases40 cases

26 cases24 cases24 cases24 cases

23 cases23 cases

17 cases16 cases16 cases



Fig. 11: Number of grants of domain name relinquishment, for cases filed Jan 2009 - Mar 2016

0 500 1000 1500Cases

Relinquish Domain Name 1,332



Fig. 12: Judgment type by finding, in cases terminated Jan 2009 - Mar 2016

Consent Judgment

1,057findings

Default Judgment

3,365findings

Judgment on thePleadings

55findings

Summary Judgment

1,207findings

Trial

558findings

JMOL

38findings

5.9%

89.5%

3.8%

98.0%

0.2%1.4%

7.3% 5.5%

41.8%41.8%

6.5%6.5%4.1%

30.5%45.3%

4.6%

9.3%5.7%4.5%

36.4%34.8%

7.5%

10.5%2.6%7.9%

28.9%47.4%

2.6%

Finding TypeOwnership / ValidityNo Ownership / ValidityLanham Act ViolationNo Lanham Act ViolationEquitable DefenseNo Equitable DefenseFair Use DefenseNo Fair Use Defense

Note: percentage labels for small slices may be omitted in this and the next figure.


Ownership /Validity

207findings

No Ownership/ Validity

127findings

Lanham ActViolation

4,848findings

No LanhamAct Violation

869findings

EquitableDefense

83findings

No EquitableDefense

105findings

Fair UseDefense

20findings

No Fair UseDefense

21findings

3.9%

1.9%30.0%

1.0%38.2%

25.1%

2.4% 7.1%

62.2%

25.2%

7.6% 19.5%

68.0%

4.2%

4.6% 5.4%2.6%22.3%

62.9%2.4% 4.8%

59.0%

30.1%

3.6%

3.8%2.9%

52.4%

40.0%

1.0%

5.0%

90.0%

5.0%

57.1%

42.9%

Judgment TypeConsent JudgmentDefault JudgmentJudgment on the PleadingsSummary JudgmentTrialJMOL

With Lex Machina, you can drill down on the data shown here for findings, judg-ments, and resolutions (as well as the data in the next section for damages) by any number of other criteria including judges or courts, parties, particular kinds of cases (e.g. cybersquatting or declara-tory judgment), law firms and lawyers, various date ranges, and much more!

Fig. 13: Finding by judgment event, in cases terminated Jan 2009 - Mar 2016


Fig. 14: Findings and judgments table, in cases terminated Jan 2009 - Mar 2016

ConsentJudgment

DefaultJudgment

Judgmenton the

Pleadings

SummaryJudgment

Trial JMOL

Ownership / ValidityNo Ownership / ValidityLanham Act ViolationNo Lanham Act ViolationEquitable DefenseNo Equitable DefenseFair Use DefenseNo Fair Use Defense

1 cases3 cases

18 cases11 cases

1 cases4 cases

9 cases1 cases

40 cases25 cases

170 cases183 cases

32 cases48 cases


510 cases358 cases

78 cases77 cases

4 cases

23 cases15 cases

3 cases2 cases

4 cases47 cases

3,149 cases8 cases8 cases


38 cases841 cases

3 cases51 cases

Default judgments happen frequently, often result in findings of a Lanham Act violation, and account for 68.0% of all Lanham Act violation findings. Consent judgments are slightly less frequent, but account for another 19.5% of all Lanham Act violation findings. Ownership / Validity is most often resolved on consent judgment (30.0% of those findings), while No Ownership / Validity was most found on summary judgment (62.2% of those findings).

Equitable and fair use issues are usually determined on summary judgment (in each of the four findings shown at bottom on the previous page, summary judgments accounts for 50% or more).

Fig. 15: Case resolutions, in cases terminated Jan 2009 - Mar 2016

0K 5K 10K 15K 20K 25KCases

All Lanham Act ClaimDefendant Win

Claimant Win

LikelySettlement

Procedural

Cybersquatting ClaimDefendant Win

Claimant Win

LikelySettlement

Procedural

False Advertising ClaimDefendant Win

Claimant Win

LikelySettlement

Procedural

17,238 cases

8,272 cases

2,496 cases

536 cases

1,715 cases

2,293 cases

293 cases

60 cases

1,631 cases

3,778 cases

121 cases

576 cases


Damages

Fig. 16: Top parties by damages won, Jan 2009-March 2016 in cases filed Jan 2005 - Mar 2016

Fig. 17: Top parties by damages won (omitting consent and default judgments), Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016

Damages in trademark litigation come almost entirely from default judgments, and majority of the rest come from consent judgments. Of damages resulting from decisions on the merits, juries have awarded more damages than judges. Chanel has won the most damages ($1 billion) followed by Burberry Limited ($523 million), and Gucci ($208 million).

Excluding damages resulting from consent or default judgments, Coach ($66 million) and PODS Enterprises ($60 million) have won the most damages followed by Neurovision Medical Products ($60 million).

Party

0M 200M 400M 600M 800M 1000M 1200MAmount

Chanel, Inc. 160Burberry Limited 8Burberry Limited UK 4Gucci America, Inc. 26Sprint Communications Company L.P. 37Coach Services, Inc. 160Coach, Inc. 148Nike, Inc. 26Converse, Inc. 1Cartier International, B.V. 5Sprint Solutions, Inc. 28Maurer Rides USA, Inc. 1Maurer Rides, GmbH 1Maurer Sohne 1Zamperla, Inc. 1Zamperla, SpA 1

$999,160,728$523,100,000

$416,600,000$207,670,601

$186,007,862$180,833,339$180,301,339

$170,567,500$166,200,000

$151,326,233$150,416,574

$138,867,795$138,867,795$138,867,795$138,867,795$138,867,795

Cases

Party Cases

0M 10M 20M 30M 40M 50M 60M 70M 80MAmount

Coach, Inc. 24PODS Enterprises, LLC 1Neurovision Medical Products Inc. 1Coach Services, Inc. 21Cartier 1Cartier International, B.V. 1Van Cleef & Arpels, S.A. 1River Light V, L.P. 1Tory Burch LLC 1Louis Vuitton Malletier, S.A. 3Fendi North America, Inc. 2Fendi S.R.L. 2Fendi Adele S.R.I. 1

$65,816,188$60,700,000$60,000,000

$52,229,188$43,168,500$43,168,500$43,168,500

$38,850,530$38,850,530

$36,600,000$32,383,811$32,383,811

$29,855,043


Fig. 18: Damages by judgment type, damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016

Fig. 19: Damages and judgment types chart (damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016

Damages TypeJudgment Type

Consent Judgment Default Judgment Judge Jury TrialStatutoryDamages

StatutoryDamages - Willful

CorrectiveAdvertising

Infringer's Profits

TrademarkOwner's ActualDamagesOther / MixedDamage Types

$53,706,80222 cases

$65,265,39926 cases

$113,055,52931 cases

$41,471,5006 cases

$9,204,0005 cases

$84,784,43145 cases

$33,686,73716 cases

$39,258,15349 cases

$88,8846 cases

$106,520,03537 cases

$22,641,45057 cases

$369,182,388325 cases

$103,591,523132 cases

$300,213,42287 cases

$1,460,26228 cases

$2,700,060,913551 cases

$614,379,250514 cases

$319,352,007223 cases

$12,784,18518 cases

$583,0614 cases

$67,075,21224 cases

$36,273,48333 cases

Judgment Type

Consent Judgment Default Judgment Judge Jury Trial$0B

$1B

$2B

$3B

$4B

$5B

Dam

ages

awa

rded

1,525 cases80.3% of damages

$4,088,887,757

301 cases8.6% of damages

$436,067,948191 cases

5.6% of damages$286,979,690

71 cases5.5% of damages

$282,703,231

Note: The damages charts in this section exclude damages in cases including one or more claims for infringement of a non-design patent.

Fig. 20: Top parties winning mass counterfeiter default damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016Party Name

0 10 20 30 40 50 60 70Cases with awards of mass counterfeiting default damages

Deckers Outdoor CorporationRiver Light V, L.P.

Tory Burch LLCOakley, Inc.

Coach Services, Inc.Coach, Inc.

Chanel, Inc.Michael Kors, L.L.C.Gucci America, Inc.Luxottica USA LLC

2525

231717

13

70

14

1010


Fig. 21: Mass counterfeiter default damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016 (showing amounts with at least 3 cases)

Judgment TypeDefault Judgment

0 20 40 60 80 100 120 140 160 180 200Number of cases (showing award amounts with at least 3 cases)

MassCounterfeiterDefaultDamages

Cybersquatting $10,000$20,000$30,000$40,000$50,000$60,000$70,000$80,000$90,000$100,000

Other LanhamAct grounds

$100,000$150,000$200,000$250,000$500,000$600,000$1,000,000$2,000,000$4,000,000$6,000,000

50 cases34 cases

16 cases12 cases

11 cases

8 cases5 cases


186 cases

26 cases11 cases

26 cases

20 cases3 cases

3 cases5 cases

7 cases3 cases

Fig. 22: Average mass counterfeiter default damages awarded Jan 2009 - Mar 2016 in cases filed Jan 2005 - Mar 2016

Judgment TypeDefault Judgment

MassCounterfeiterDefaultDamages

Cybersquatting

Other Lanham Act grounds 292 cases$1,894,679

62 cases$41,939

Lex Machina has introduced Mass Counterfeiter Default Damages as a type of trademark damages to capture scenarios where plaintiffs are awarded statutory damages on default judgment en masse against many defendants accused of counterfeiting. Typically, the defendants are websites, paypal accounts, aliases, or other entities, often with overlapping identity, provided by plaintiffs in a list or schedule, and the damages award are awarded as a rate (e.g. $2,000,000 per defendant, where each defendant is separately liable) instead of as a lump sum (e.g. $10,000,000 against all defendants, where defendants are jointly and severally liable).

Due to the nature of these cases, the total amount of damages is often very high but almost never collected. Moreover, because the actual number of defendants is unknown or unclear from the court record, the total amount of damages awarded in the case cannot be reliably calculated. Consequently, these damages have been isolated in the new damages type, which helps prevent the other totals from becoming artificially inflated.

The damages “rate” per defendant tends to be lower when the award is based on cybersquatting (when compared to other Lanham act grounds).


Districts

Fig. 23: Top districts for all Lanham Act cases, by cases filed Jan 2009 - Mar 2016

0 500 1000 1500 2000 2500 3000 3500 4000 4500Cases

C.D.Cal.

S.D.N.Y.

S.D.Fla.

N.D.Ill.

N.D.Cal.

D.Minn.

D.N.J.

M.D.Fla.

E.D.N.Y.

E.D.Mich.

4,164 cases

2,142 cases

1,659 cases

1,478 cases

1,204 cases

1,007 cases

911 cases

846 cases

710 cases

641 cases

Fig. 24: Top districts 2011-2016 Q1, all Lanham Act cases, by cases filed Jan 2009 - Mar 2016

`09 Q1 `09 Q3 `10 Q1 `10 Q3 `11 Q1 `11 Q3 `12 Q1 `12 Q3 `13 Q1 `13 Q3 `14 Q1 `14 Q3 `15 Q1 `15 Q3 `16 Q1Quarter / Year

0

20

40

60

80

100

120

140

160

180

Cas

es fi

led

94

112

182

143146147

148148

110

138

76

111

150

137

151

74

136

36

152

505052

60

72 71 71

154

77

5858

48

56

155

78

132

4241

5959

47 5555

93

79

40

6060

7373

27

6868

68

157

56

44

57

34 34

53

6767

8181

45 4545

3838 38

38

6262

5871

71

54

66 66

159159

82 82

167

37

66

36

30

515151

160

127

42

60

373731

5264

8888

165

4848

61

32 32

51

49 49

63

123

85

164

125

61

4949

49

34 3440

636262

6767

33

48 48

6262

124

DistrictC.D.Cal.N.D.Cal.N.D.Ill.S.D.Fla.S.D.N.Y.


Fig. 25: Top districts for cybersquatting cases, by cases filed Jan 2009 - Mar 2016

Fig. 26: Top districts 2011-2016 Q1, cybersquatting cases, by cases filed Jan 2009 - Mar 2016

0 50 100 150 200 250 300 350 400 450 500 550Cases

S.D.Fla.

N.D.Ill.

C.D.Cal.

S.D.N.Y.

E.D.Va.

N.D.Cal.

M.D.Fla.

E.D.Mich.

D.Nev.

D.Ariz.

486 cases

429 cases

361 cases

235 cases

223 cases

184 cases

149 cases

139 cases

138 cases

114 cases


0

5

10

15

20

25

30

35

Cas

es fi

led

35

15

33

4

29

1817

19

1616

1616 16

1818 18

2020

16 15

28

1212

99

1313

26

8

19

2

2121

21

15

99

99

9

1414

12 11

88 8

14

25

7 76

66

6

1

20 201919

3

67 7

7

14

1010

13

2626

11

1010

10 10

77 7

15

2424

66 65

55

2 2 2

333

18 1818

77

88

88

1010

1010

1313 111010

9

66

16

55555

4 4 43

4

22

1717 17

89 9 9

24

11

DistrictC.D.Cal.N.D.Cal.N.D.Ill.S.D.Fla.S.D.N.Y.


Fig. 27: Top districts for false advertising cases, by cases filed Jan 2009 - Mar 2016

Fig. 28: Top districts 2011-2015 Q1, false advertising cases, by cases filed Jan 2009 - Mar 2016

0 50 100 150 200 250 300 350 400 450 500 550 600 650 700 750 800 850 900Cases

C.D.Cal.

S.D.N.Y.

N.D.Ill.

D.N.J.

N.D.Cal.

S.D.Fla.

E.D.Mich.

S.D.Tex.

N.D.Tex.

N.D.Ga.

785 cases

389 cases

274 cases

256 cases

251 cases

233 cases

202 cases

180 cases

167 cases

164 cases


0

5

10

15

20

25

30

35

40

45

Cas

es fi

led

28

42

272727

2828

28

2626

19

40

29

25

18

39

4

13 1313

1314

242424

99

9

22

1

9 99

17

10 10

88

1212

1212 1212

15

10 1010

1717

37

6

2

8 8

1616

11

1414

3

777

7

32

8888

1616

2222

15

11

20

4

777

10 1010

15

1212

13 13

44 4

66

10

33

77 7 7 7

19

55

35

4

66

11 11 11 11

14

1312

5 5

99

34

6 66 6 6

1818

2020

13

DistrictC.D.Cal.D.N.J.N.D.Cal.N.D.Ill.S.D.N.Y.


The Central District of California (4,164 cases) is the most popular district by cases filed from January 2009 through March of 2016, followed by the Southern District of New York (2,142 cases) and the Southern District of Florida (1,659 cases). However, the number of cases filed in the Central District of California have declined each quarter since the beginning of 2015, roughly tracking the overall decline in filings of all trademark cases (as shown below). On the other hand, the Northern District of Illinois has seen an increase, though less dramatic, each quarter over the same timeframe.

For cases involving allegations of cybersquatting, the Southern District of Florida leads with 486 cases, followed by the Northern District of Illinois (429 cases), and the Central District of California (361 cases). Looking at the historical trend, the Southern District of Florida and the Northern District of Illinois overtook the Central District of California around 2011, but have traded the lead between themselves since.

For cases involving allegations of false advertising, The Central District of California tops the chart with 785 cases, followed by the Southern District of New York (389 cases) and the Northern District of Illinois (274 cases).

Fig. 29: All trademark cases filed Jan 2009 - Mar 2016


0

200

400

600

800

1000

1200

1400

Cas

es fi

led

1,412

987977

9981,003

1,0071,012 1,0141,014

795

1,0191,0191,019

949942932932

916914 908

1,061

907

1,1241,069

899849

894868

1,098


Parties and Law Firms

Fig. 30: Top plaintiffs, by cases filed Jan 2009 - Mar 2016

0 100 200 300 400 500 600 700 800 900Cases

Coach Services, Inc.Coach, Inc.

Chanel, Inc.Microsoft Corporation

American Automobile Association, Inc.Boost Worldwide, Inc.

Deckers Outdoor CorporationSlep-Tone Entertainment Corporation

Luscious Limo Service, Inc.Best Western International, Inc.

Chevron Intellectual Property LLCMoroccanoil, Inc.

Disney Enterprises, Inc.Bravado International Group Merchandising Se..

Chevron U.S.A. Inc.Louis Vuitton Malletier, S.A.

BR IP Holder LLC

730 cases676 cases

330 cases203 cases


109 cases107 cases100 cases98 cases96 cases


Fig. 31: Top plaintiffs, by cases filed Jan 2015 - Mar 2016

0 10 20 30 40 50 60Cases

Sream, Inc.Phoenix Entertainment Partners, LLC

Chanel, Inc.Luxottica Group S.p.A.

Deckers Outdoor CorporationAmerican Automobile Association, Inc.

Oakley, Inc.Sprint Solutions, Inc.

Sprint Communications Company L.P.Luscious Limo Service, Inc.

Microsoft CorporationCoach Services, Inc.

Coach, Inc.Adidas AG

Adidas America, Inc.Bayerische Motoren Werke AG

BMW of North America, LLCMichael Kors, L.L.C.

Yeti Coolers, LLC

55 cases54 cases

47 cases38 cases


25 cases23 cases

21 cases21 cases

20 cases20 cases

18 cases18 cases18 cases18 cases18 cases18 cases


Coach is the leading plaintiff in trademark cases filed from January 2009 through March 2016 with 730 cases, followed by Chanel (330 cases) and Microsoft (203 cases). In the last 5 quarters, both Sream (55 cases - the maker of RooR water pipes) and Phoenix Entertainment Partners (54 cases - a theatrical production and management company that licenses karaoke) have filed more cases than Chanel (47 cases), or Coach (20 cases).

The National Football League (NFL) is the top defendant with 548 cases, although many of those cases are related to a single dispute between the NFL and former players over use of player likeness and were filed together in Q3 2014 in the District of Minnesota. After the NFL, the other top defendants are Syngenta Seeds (184 cases), Big Bad Limo Service (109 cases), Amazon.com (66 cases), and Walmart (59 cases). In the last 5 quarters, Syngenta Seeds is the most frequent defendant (140 cases).

Many of the individuals towards the bottom of the defendant charts may be aliases or pseudonyms - the cases attributed to these names may or may not relate to any single identity. They have been included to show the relative magnitude of litigation against such entities against that of the more recognizable names.

Two of the top defendants, WhoisGuard, and Domains by Proxy, are companies that offer anonymity and spam protection to owners of domain names. When registering a domain for a website, one must provide contact information to be included in the Internet’s publically accessible WHOIS database. These companies provide a proxy address and email that customers can list in the WHOIS database. However, counsel attempting to determine the ownership of an infringing website often name them as a party when they appear in the WHOIS data for the website.

Top law firms representing plaintiffs include Goldberg, Perksy & White (542 cases), Stephen M. Gaffigan (539 cases), the Blakely Law Group (371 cases), and Kilpatrick Townsend & Stockton (366 cases). In the last 5 quarters, Stephen M. Gaffigan leads with 115 cases, followed by Greer, Burns & Crain (86 cases).

On the defense side, Greenberg Traurig is the top firm (with 161 cases), followed by Kilpatrick Townsend & Stockton (146 cases), and Lewis Brisbois Bisgaard & Smith (110 cases). In the last 5 quarters, Greenberg Traurig remains the leader (25 cases) with Gorden & Rees (24 cases) close behind.


Fig. 32: Top defendants, by cases filed Jan 2009 - Mar 2016

0 100 200 300 400 500 600Cases

National Football LeagueNFL Productions, L.L.C.

NFL Films, Inc.Syngenta Seeds, Inc.

Syngenta Crop Protection, LLCSyngenta Corporation

Big Bad Limo Service, Inc.Louis DeDriver

Syngenta AGAmazon.com, Inc.

Syngenta Crop Protection AGWal-Mart Stores, Inc.

Google Inc.Target Corporation

Syngenta Biotechnology, Inc.Domains by Proxy, LLC

Ludwig RhysWen Ben ZhouDan Thurston

Nike, Inc.Amy Bloom

Whoisguard, Inc.Yinsi Baohu Yi Kaiqi



109 cases109 cases


46 cases43 cases

31 cases30 cases30 cases29 cases24 cases22 cases21 cases21 cases21 cases

Fig. 33: Top defendants, by cases filed Jan 2015 - Mar 2016

0 20 40 60 80 100 120 140 160Cases

Syngenta Seeds, Inc.Syngenta Corporation

Syngenta Crop Protection, LLCSyngenta AG

Syngenta Crop Protection AGSyngenta Biotechnology, Inc.

Ludwig RhysWen Ben ZhouDan Thurston

Big Bad Limo Service, Inc.Louis DeDriver

Amy BloomLirong Shi

Yinsi Baohu Yi KaiqiHao LiLi Lin

OrganizationSan Zhang

Xiao WuXinqian Tyndall

Whoisguard, Inc.Xinqian Rhys


66 cases56 cases

31 cases27 cases

25 cases24 cases

21 cases21 cases


17 cases17 cases17 cases16 cases16 cases16 cases15 cases15 cases


Fig. 34: Top law firms representing plaintiffs, by cases filed Jan 2009 - Mar 2016

0 100 200 300 400 500 600Cases

Goldberg, Persky & WhiteStephen M. Gaffigan

Blakely Law GroupKilpatrick Townsend & Stockton

Johnson & PhamGreenberg Traurig

Greer, Burns & CrainPerkins Coie

Bryan CaveJ Andrew Coombs Law Offices

Carlton Fields Jorden BurtFish & Richardson

Locke Lord EdwardsGordon & ReesHolland & Hart

542 cases539 cases

371 cases366 cases

336 cases320 cases

296 cases287 cases


174 cases172 cases

158 cases151 cases

Fig. 35: Top law firms representing plaintiffs, by cases filed Jan 2015 - Mar 2016

0 20 40 60 80 100 120 140Cases

Stephen M. GaffiganGreer, Burns & Crain

Blakely Law GroupCarlton Fields Jorden Burt

Johnson & PhamKilpatrick Townsend & Stockton

Greenberg TraurigNexio

Perkins CoieLewis & Roca

Davis Wright TremaineLeClairRyan

VenableRobert L. Greener, Law Office

Watts Guerra Craft

115 cases86 cases





Fig. 36: Top law firms representing defendants, by cases filed Jan 2009 - Mar 2016

0 20 40 60 80 100 120 140 160 180 200Cases

Greenberg TraurigKilpatrick Townsend & Stockton

Lewis Brisbois Bisgaard & SmithWentovich Law Offices

Fox RothschildGordon & Rees

Sheppard Mullin Richter & HamptonTingley Law Group

Faegre Baker DanielsDLA Piper

Alston & BirdLocke Lord Edwards

Foley & LardnerHolland & Knight

Davis Wright TremainePerkins Coie

161 cases146 cases


97 cases89 cases



75 cases73 cases

Fig. 37: Top law firms representing defendants, by cases filed Jan 2015 - Mar 2016

0 5 10 15 20 25 30Cases

Greenberg TraurigGordon & Rees

DLA PiperLewis Brisbois Bisgaard & Smith

Wentovich Law OfficesDavis Wright Tremaine

Fox RothschildKilpatrick Townsend & Stockton

Troutman SandersAkerman Senterfitt

Sheppard Mullin Richter & HamptonTingley Law Group

Broad & CasselKirkland & Ellis

Morgan Lewis & BockiusO'Melveny & Myers

Perkins CoieWinston & Strawn

25 cases24 cases

20 cases20 cases

19 cases18 cases

17 cases17 cases




Using Boxplots to Understand Timing

Lex Machina’s analytics use a data visualization known as the boxplot to convey information about the timing of significant events in a case. Knowing how to interpret this data gives you an advantage when it comes to strategy, budgeting, and setting expectations, as well as in other decisions that involve case timing.

Consider a newly filed case: Regardless of whether you’re an outside counsel, say, trying to determine how large of a flat fee to charge or trying to make sure two trials don’t overlap, or an inside counsel estimating legal spend and evaluating a firm’s proposed budget, case timing matters. Knowing the lower and upper bounds of how long it may reasonably take the case to reach injunction can give both kinds of counsel a strategic advantage over opponents lacking such nuanced information. Moreover, knowing the best and worst case scenarios for timing, or exactly how likely it is that a case will be active in 6 months enables more far-sighted contingency planning.

A boxplot summarizes a series of data points to help you understand the shape, or distribution of the values in those points. The boxplot is drawn based on five numbers: the median, the upper and lower quartiles, and the whiskers for a distribution.

Paying attention to these key parts of the plot will help you quickly understand what you need to know. Although boxplots provide a wealth of information, the four observations below, in order from simplest onwards, are all one needs to easily grasp the significance of a boxplot.

Median: the middle dividing line of the box splits the data points evenly so that 50% fall to either side. It’s a form of average that gives a single number representation of what to reasonably expect.

Box bounds: the box encloses the middle-most 50% of the datapoints (from the 25th percentile to the 75th), with 25% of the datapoints falling outside to either side. This makes the box a good representation of the range one can reasonably expect.

Box compressed or elongated: a more compressed box means that more datapoints fall into a smaller range of time and therefore are more consistent; in contrast a longer box means that the datapoints are spread out over a wider time period and are therefore less predictable.

Whiskers: Whiskers are drawn to show the outside bounds of reasonable expectation, beyond which datapoints are considered outliers.1

1 By statistical convention, boxplots define outliers as points beyond more than 1.5 times the width of the box (sometimes called the “interquartile range”).

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