Court-Ordered Restitution Vacated in Criminal Copyright Infringement Case, Based on Lack of Relevant Evidence

On November 9, 2012, the United States Court of Appeals for the District of Columbia Circuit (D.C. Cir.) vacated a district court’s decision to impose a restitution penalty against Defendant Gregory Fair (“Defendant Fair”) in favor of Adobe Systems in the amount of $734,098. U.S.A. v. Gregory William Fair, No. 09-3120, slip op. at 2 (D.C. Cir. Nov. 9, 2012) (appealing from Crim. A. No. 1:09-cr-00089-1 (D.D.C.)Pacer login required). The D.C. Circuit concluded that the district court had abused its discretion by awarding restitution, when the government failed to meet its burden to prove the amount of Adobe’s losses.

The Mandatory Victims Restitution Act (18 U.S.C. § 3663A) (“MVRA”) – upon which this restitution award was based – provides that victims of certain crimes may be awarded restitution to compensate them for their actual losses that resulted from the defendant’s crime. In this case, however, the government only introduced evidence of what Defendant Fair’s actual sales were – and based its request for restitution on that amount. It did not introduce any evidence that Adobe Systems had lost sales as a result of this criminal activity, or that its sales were diverted to Defendant Fair.

Underlying Facts

Defendant Fair pled guilty to charges of criminal copyright infringement (18 U.S.C. § 2319, 17 U.S.C. § 506(a)(1)(a)) and mail fraud (18 U.S.C. § 1341), after spending more than six years (Feb. 2001-Sept. 2007) selling counterfeit copies of outdated Adobe software and upgrade codes on eBay, which allowed his customers to obtain full copies of the current versions of these programs at a fraction of the regular price. Opinion at 3. “For example, a customer could first buy a pirated copy of outdated PageMaker software and an upgrade code from [Defendant] Fair for around $125 and then pay around $200 to Adobe Systems to upgrade to the most current version. The total price paid, around $325, would be less than half of the retail price of the authentic up-to-date Adobe program (approximately $700).” Id. at 2.

According to evidence presented at trial of the completed eBay transactions that filtered through PayPal, “[Defendant] Fair received, and he admitted receiving, approximately $1.4 million from his sales of pirated software on eBay.” Id. at 3. When Defendant Fair objected to the restitution claim, he initially sought a reduction to $455,000, the amount which he had actually withdrawn in currency from the PayPal account. Id.
Following the plea agreement, the district court sentenced Defendant Fair to 41 months’ imprisonment and three years’ supervised release – and ordered the $743,098.99 restitution payment to Adobe Systems (the balance of the amount identified on the government’s spreadsheet, less the $24,367 that the Postal Service had already released to Adobe Systems). Id. at 5.

Defendant Fair’s counsel argued that Adobe Systems was capable of distinguishing between its regular customers, and those who sought upgrades as a result of Defendant Fair’s scheme, and instead “chose as a ‘corporate strategy’ to permit [Defendant] Fair’s customers to purchase upgrades but to give no tech support to Fair’s software.” Id. at 5. This suggests two things: 1) that evidence of lost sales could have been available if the government requested it; and 2) that Defendant Fair may have had an argument that Adobe had acquiesced by its conduct (in part) to the so-called “criminal scheme.”

However, the government did not introduce any evidence that Adobe lost any sales due to Defendant Fair’s criminal activities. Instead, the government presented a spreadsheet tallying Defendant Fair’s eBay sales and “unsubstantiated, generalized assertions of government counsel regarding Adobe Systems’ lost sales.” Id. at 11. When presented with the opportunity to present such evidence, the government attorney attempted to shift the burden set forth in the MVRA to the defendant, arguing that because he “created an potential uncertainty in calculating pecuniary harm by selling outdated counterfeit software.” Id. at 12. The government also argued that the lost-profits rationale “makes no sense in the present context because Adobe Systems no longer sells the versions of the software that Fair sold.” Id. The appellate court was unpersuaded.  

On Appeal

The appellate court reviewed the record – and particularly the absence of any evidence of Adobe Systems’ actual losses, and agreed with the analysis of a Tenth Circuit opinion that commented, “we are very skeptical of the implicit suggestion that customers’ purchase of a certain number of copies of low-priced counterfeit software proves that those customers would have agreed to purchase the same number of copies from the legitimate seller for many times more.” Id. at 11 (quoting United States v. Hudson, 483 F.3d 707, 710 (10th Cir. 2009)) (internal quotations omitted). The Fair court also concluded that the government’s evidence in support of its claim for retribution was “merely speculative.” Id. at 12.

The appellate court also recognized that there were other avenues of recovery of restitution: specifically, under the “actual damages” provision for copyright infringement, the copyright owner can recover both actual damages and “any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.” 17 U.S.C. § 504(b). These damages were not claimed in this (criminal) case.

Finally, the appellate court also considered whether a remand of any degree was warranted in this case – and concluded that it was not. The appellate court declined to give the government “‘a second bite at the apple’ absent special circumstances,” especially in light of the fact that the government had the explicit opportunity to introduce this type of evidence, and had declined to do. Id. at 15-16.

In summary, it appears that the prison sentence (and 3 years of supervised release) remains, but that the award of restitution alone has been vacated.

Rosetta Stone and Google Announce Settlement of Trademark Infringement Suit

On Oct. 31, 2012, Rosetta Stone and Google announced their decision to settle their trademark infringement case relating to the sale and use of AdWords in Google’s search engine results. Rosetta Stone’s 10/31/12 Press Release.  The companies have agreed to work together to “combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” Id. The companies hope that by working together, they can “improve detection methods, and better protect from abuse brands like Rosetta Stone, advertising platforms like Google AdWords, and ultimately consumers on the Internet.” Id.

As a consequence of the settlement, the lawsuit Rosetta Stone Ltd. v. Google, Inc., Civ. A. No. 1:09-cv-00736-GBL-TCB (filed July 10, 2009) has been dismissed. Doc # 238 (Oct. 31, 2012) (Order and Stipulation to Dismiss), available on Justia. The complaint originally alleged claims of direct trademark infringement (15 U.S.C. § 1114(1)(a)); contributory trademark infringement; vicarious trademark infringement; trademark dilution (15 U.S.C. § 1125(c)(1)); and unjust enrichment.

Related Information

Recent E.D. Pa. Case: No “Likelihood of Confusion” from Competitor’s Marks in AdWords

In CollegeSource, Inc. v. AcademyOne, Inc., Civ. A. No. 2:10-cv-03542 (MAM), slip op. (E.D. Pa. Oct. 25, 2012), the U.S. District Court for the Eastern District of Pennsylvania analyzed a claim of trademark infringement based on the purchase and use of a competitor’s trademarks in AdWords to increase search engine results. (The case dealt with other issues such as contract formation under Pennsylvania law, trademark cancellation due to fraud on the PTO, false advertising, violation of the Computer Fraud and Abuse Act, and others. This blog post will focus solely on the AdWords issue.)

The court ultimately concluded that in an environment of increasingly sophisticated Internet advertising, a claim of trademark infringement based on the use of a competitor’s marks in sponsored links fails, when those marks do not appear in the actual advertisement and when the advertisements are set off in a separate section of the search results (under the heading “Sponsored Links,” set off with a different color than the rest of the search engine results). In these cases, modern Internet users are unlikely to be confused by this type of use.

In order to prove trademark infringement and unfair competition under the Lanham Act, plaintiffs must demonstrate that they own the mark in question, that the mark is valid and legally protectable, and that the defendant’s use of its own mark is likely to create confusion. Id. at 39 (citing Checkpoint Systems, Inc. v. Check Point Software Tech., Inc., 269 F.3d 270, 279 (3d Cir. 2001)). In the CollegeSource case, the defendant did not dispute the ownership of the mark or its validity, but instead challenged whether its mark was likely to create confusion.

The Lapp Factors

In the Third Circuit, the likelihood of confusion analysis is governed by Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983) – the so-called “Lapp Factors.” These factors are: 

(1) the degree of similarity between the owner’s mark and the alleged infringing mark;
(2) the strength of the owner’s mark;
(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
(4) the length of time the defendant has used the mark without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
(8) the extent to which the targets of the parties’ sales efforts are the same;
(9) the relationship of the goods in the minds of consumers because of the similarity of function; and
(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market, or that he is likely to expand into that market.

Id. at 463. Originally adapted from Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), these factors were applied in the Lapp case for the very limited purpose of considering likelihood of confusion where the products did not directly compete. Id. at 462-63; see also A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 206 (3d Cir. 2000) (“In Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983), this Court established a ten-factor test (the ‘Lapp’ test) to determine the likelihood of confusion for direct confusion claims between goods that do not directly compete in the same market, but we have never decided what factors should be considered in the case of directly competing goods.”). 

In a later opinion, the Third Circuit applied these factors more broadly, including in cases where the goods competed in the same channels of trade. A&H Sportswear, 237 F.3d at 207 (“Though a court need not look beyond the marks when goods are directly competing and the marks virtually identical, we conclude that the factors we have developed in the noncompeting goods context are helpful tools and should be used to aid in the determination of the likelihood of confusion in other cases.”). The Third Circuit made clear, however, that the “ten-factor Lapp test [was developed] only as a guide” and the Lanham Act does not require that each of the ten factors must be evaluated in every case. Id.

Application of the Lapp Factors to Use of Competitor’s Trademarks as AdWords
In the CollegeSource case, the court relied on a Ninth Circuit opinion that identified the “key” factors to consider in cases where the goods directly compete and where a competitor’s trademarks were purchased as AdWords to generate search engine hits. Id. at 40 (discussing Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011). Specifically, the Network Automation case held that in the context of AdWords cases, four of these factors were most relevant: “[1] strength of the mark, [2] evidence of actual confusion, [3] types of goods and degrees of care likely to be exercised by the typical purchaser, and [4] the labeling and appearance of the advertisements.” Network Automation, 638 F.3d at 1154.

The CollegeSource court agreed with this conclusion, and focused primarily on these four factors in determining whether the defendant’s use of the mark was likely to confuse. CollegeSource, No. 2:10-cv-03542, slip op. at 41. With respect to the first two factors, the CollegeSource court concluded: 1) the plaintiff’s mark (COLLEGESOURCE) was suggestive and commercially strong; and 2) plaintiff failed to provide significant evidence of actual confusion. Id. at 40-43. The court addressed the last two factors in reverse order, but these two provided the crux of the court’s analysis.

With respect to factor 4 (labeling and appearance of the advertisements), the court focused on the placement of ads in search engine results, noting that these ads are generally partitioned under a section of “sponsored links” and appeared separately from regular search results, sometimes in shaded boxes. Id. at 43-44. The plaintiff’s mark did not appear in the language of the advertisement. In this context, the court concluded that the offset of sponsored ads decreased the likelihood of confusion. Id.
With respect to factor 3 (types of goods and degrees of care exercised by typical purchasers), the court considered “whether an ordinary consumer seeking college transfer information via the Internet is expected to exercise diligence in his research.” Id. at 44-45. The court concluded that Internet users are exercising increasing care as the “novelty of the Internet evaporates and online commerce becomes commonplace.” Id. at 45. “Modern Internet users ‘are accustomed to such exploration by trial and error.'” Id. This increasing level of experience with search sites (i.e., the increasing sophistication of the targeted consumer) decreases the likelihood of confusion with respect to Internet advertisements like these. Id.

The Court continued to evaluate the remaining Lapp factors, finding that there was no evidence of an intent to confuse, that the Internet is not an obscure marketing channel, and that AdWords are an increasingly prolific form of advertising. Id. at 46-49. The Court ultimately concluded that plaintiff failed to introduce sufficient evidence to demonstrate a likelihood of confusion; the Court then granted defendant’s motion for summary judgment on the trademark infringement claim.

Google and Publishers Reach Settlement Over Google Books Lawsuit

On October 4, 2012, Google and the Association of American Publishers (AAP) announced that the publisher plaintiffs and Google have reached a settlement of their dispute over Google’s mass copying and uploading of books (whether in the public domain or still protected by copyright) to which it had obtained access through agreements with several large libraries. These digitized books were then made available for searching and sometimes downloading (in whole or in part) through Google’s Library project. (The docket for the publisher’s lawsuit was The McGraw-Hill Companies, Inc. v. Google Inc., 05 Civ. 8881 (JES) (SDNY).)

(Details about the 2005 lawsuit and a proposed settlement that was rejected by the Court can be found in earlier posts.)

According to AAP, Google and the publishers agreed that “U.S. publishers can choose to make available or choose to remove their books and journals digitized by Google for its Library Project. Those deciding not to remove their works will have the option to receive a digital copy for their use.” Andi Sporkin, Association of American Publishers, Press Release (Oct. 4, 2012). Notwithstanding this agreement, U.S. publishers can continue to “make individual agreements with Google for use of their other digitally-scanned works.” Id.

The AFP reports that “publishers will have the option to allow Google to display portions or the entire book content, or to sell the work through Google Play.” Rob Lever, “Google, publishers end long-running copyright case,” AFP (Oct. 4, 2012). Users of the service, then, have the ability to browse up to 20% of books, and then purchase a digital copy through Google Play. Id.; Sorkin, Press Release

The remaining terms of the settlement remain confidential, but it appears that the ongoing litigation between Google and the Authors’s Guild (Authors Guild et al. v. Google Inc., No. 05-08136 (SDNY) (trial court); No. 12-2402 (2d Cir.) (on appeal)) is unaffected by this settlement. “‘The publishers’ private settlement, whatever its terms, does not resolve the authors’ copyright infringement claims against Google,’ the Authors Guild said in a statement Thursday. ‘Google continues to profit from its use of millions of copyright-protected books without regard to authors’ rights, and our class-action lawsuit on behalf of U.S. authors continues.'” Michael Liedtke (AP Technology Writer), “Google, publishers shelve book-scanning suit,” AP (Oct. 4, 2012). That lawsuit remains suspended, pending appeal by Google of the Court’s grant of class certification for the authors whose claims were raised in the complaint. Grant McCool, “Authors Guild v. Google Lawsuit In U.S. Suspended Pending Appeal,” Reuters (Sept. 17, 2012).

U.S. PTO Seeks Comments on Draft Examination Guide on Webpage Specimens

The U.S. Patent & Trademark Office has released a draft version of its examination guide on webpage specimens, and seeks user comments before releasing it in final form. The U.S. PTO reports that comments will be accepted through October 31, 2012, using its online collaboration tool, IdeaScale®.

You can also leave comments on the following other sections: The Format of the TMEP; Chapter 500 Change of Ownership; Chapter 900 Use in Commerce; Chapter 1900 Madrid Protocol and the subject of this particular notice: Webpage Specimens as Displays Associated With the Goods (including subsections: Webpage Specimens as Displays Associated With the Goods; Webpage as a Display Associated with the Goods; Picture or Description of the Goods; Show the Mark in Association With the Goods; Ordering Information; Grounds for Refusal; and Appendix: Examples of Webpage Display Specimens).

The U.S. PTO maintains a list of its recent requests for user comments, which can be found here: