Full title: TOMMY HILFIGER LICENSING, INC., Plaintiff, v. GOODY’S FAMILY CLOTHING…
Court: United States District Court, N.D. Georgia, Atlanta Division
Date published: May 9, 2003
Facts
Plaintiff Tommy Hilfiger Licensing, Inc. (“Hilfiger”) filed suit against the defendant, Goody’s Family Clothing, Inc. (“Goody’s”), alleging violations of the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. § 1051-1127, as well as various state statutes. Hilfiger claims that Goody’s violated its trademarks when it sold counterfeit Hilfiger t-shirts and jeans bearing labels similar to Hilfiger’s trademarks. At the end of the discovery period, Hilfiger moved for partial summary judgment [Doc. No. 68-1], and the court granted Hilfiger’s motion in part [Doc. No. 89-1]. Namely, the court found that Goody’s had sold counterfeit Hilfiger t-shirts. However, the court held that genuine issues of material fact remained regarding whether the sale of the counterfeit t-shirts was intentional, and whether Goody’s jeans infringed on Hilfiger’s trademarks.
Issue
Whether the sale of the counterfeit t-shirts was intentional, and whether Goody’s jeans infringed on Hilfiger’s trademarks.
Decision
In sum, the court finds that Goody’s acted with willful blindness when it purchased counterfeit Hilfiger t-shirts. Given Goody’s willful actions, Hilfiger is entitled to recover treble profits under 15 U.S.C. § 1117 (b), in the amount of $2,066,985.57. However, in the alternative, Goody’s is also entitled to an award of statutory damages under 15 U.S.C. § 1117 (c), in the amount of $2,100,000.00. Hilfiger has ten (10) days from the issuance of this order to make an election regarding statutory damages. If no election is made, the court will enter judgment for the profits award assessed under 15 U.S.C. § 1117 (b).
Likewise, Hilfiger is entitled to prevail on its federal and state claims for trademark infringement, unfair competition, and false designation of origin regarding Goody’s private label denim products. Under 15 U.S.C. § 1117 (a), Hilfiger is entitled to an award of profits in the amount of $8,976,440.58. Further, Hilfiger is also entitled to an award of reasonable attorneys’ fees and costs. Hilfiger must submit applications for attorneys’ fees and costs within twenty (20) days of the issuance of this order. Goody’s is entitled to file responses to these applications.
However, Hilfiger’s claim for trademark dilution under 15 U.S.C. § 1125 (c) fails as a matter of law. Therefore, the dilution claim is dismissed, and the court denies Hilfiger’s request for a permanent injunction. No injunction shall issue.
IT IS SO ORDERED,