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Damages Not Duplicative Under Lanham Act and Anti-Cybersquatting Consumer Protection Act, Eleventh Circuit Rules

In a ruling that clarified laws important to our Chicago and Wheaton internet trademark infringement and business trial lawyers, the Eleventh U.S. Circuit Court of Appeals ruled July 9 that actual damages for service mark infringement under the Lanham Act do not duplicate statutory damages under the Anti-Cybersquatting Consumer Protection Act. In St. Luke’s Cataract and Laser Institute v. Sanderson, No. 08-11848 (11th Cir. July 9, 2009), the court also found that a lower court did not err in denying a motion for a new trial on copyright claims by the clinic and a motion for judgment as a matter of law by Dr. James Sanderson.

Sanderson worked at St. Luke’s, a private clinic, as its only cosmetic eye surgery specialist between 1995 and 2003. In 1998, they launched a Web site advertising Sanderson’s services at St. Luke’s, at lasereyelid.com and laserspecialist.com, using LaserSpecialist.com as a logo and service mark. Both the doctor and the clinic contributed content to the site, and a copyright notice attributed the site to the clinic. St. Luke’s paid directly for the site’s creation and maintenance, although Sanderson testified that these costs were deducted from his pay as “overhead,” which St. Luke’s disputed. The clinic’s webmaster provided backup disks to Sanderson.

Sanderson left St. Luke’s in June of 2003 to start a solo practice. The webmaster transferred ownership of the domain names into Sanderson’s name at his request. Sanderson later testified that he did not ask anyone else at St. Luke’s for permission to take ownership of the site. A few months later, Sanderson relaunched the site without references to St. Luke’s or links to its main site. The clinic noticed this in 2005 and removed links from its own site to Sanderson’s site. In January of 2006, it registered a copyright to a version of the site from 2003, claiming ownership of all of the content.

A month later, it sued Sanderson for copyright infringement, Lanham Act and Digital Millennium Copyright Act claims, Anti-Cybersquatting Consumer Protection Act (ACPA) claims, unfair competition, unfair business practices and misappropriation of the domain names. Sanderson counterclaimed for a declaratory judgment that the copyright was unenforceable. The jury found that the copyright was indeed unenforceable, but found for St. Luke’s on all other counts, awarding $150,000 in damages and about $587,000 in attorney fees and costs. The court later reduced the damages award to $98,000, saying the statutory damages under the ACPA duplicated the actual damages awarded for service mark infringement. Both parties appealed on multiple grounds. The Eleventh took up the questions of the duplicative damages; the issue of whether Sanderson should have succeeded on his motion for a judgment as a matter of law on the unfair competition and service mark claims; and the issue of a new trial for St. Luke’s on the copyright claims.

The Eleventh affirmed the trial court on every issue but the duplicative damages, which it found were not duplicative, for several reasons. The Anti-Cyberpiracy Act explicitly says that damages should be awarded in addition to any other civil action or remedy available. Furthermore, the court argued, the laws allow damages for different purposes — the ACPA awards them as sanctions against bad faith conduct, while the Lanham Act awards them as compensation for losses. The Lanham Act allows plaintiffs to choose a statutory damages award rather than an award of actual damages, the court noted. E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270, 278 (5th Cir. 2002). Thus, it remanded that part of the case, with instructions to reinstate the cyberpiracy damages award.

However, it affirmed the trial court on the new trial issue and the judgment as a matter of law issue. Citing extensive evidence from the trial, it found that the jury had good reason to find that the clinic’s copyrights to the site may not be valid. One copyright was not registered until months after the clinic filed its suit, the court noted, which violates well-established precedent saying that a valid copyright is a necessary prerequisite for suing. The other copyright was registered beforehand, it said, but with overly broad claims that attempted to copyright stock photos, material Sanderson provided and copy from Botox manufacturers. The court noted that intentional misrepresentations and omissions can render a copyright invalid. Original Appalachian Artworks,
Inc. v. Toy Loft, Inc.
, 684 F.2d 821, 828 (11th Cir. 1982). Because there was evidence that St. Luke’s may have intentionally misrepresented information on its application for the earlier copyright, the court found that it was not entitled to a new trial on that claim.

Finally, the court denied Sanderson’s claim that the trial court should have granted judgment as a matter of law on the service mark infringement and unfair competition claims. There was sufficient evidence to show that the name “LaserSpecialist.com” was a service mark for St. Luke’s, the opinion said, and that it was worthy of protection. Furthermore, the court said, there was sufficient evidence to show that the term had acquired a secondary meaning, as the law requires. St. Luke’s had advertised it extensively for several years, and evidence showed that patients both used it and were referred to it frequently. Thus, there was a clear likelihood of confusion, as required by the law — meaning that the trial judge did not err in denying judgment as a matter of law.


The Joilet, Waukegan< Wheaton, Naperville and Aurora trademark infringement lawyers and business trial attorneys at DiTommaso Lubin Austermuehle have more than two decades of experience representing businesses and individuals in internet trademark infringement cases like these, as well as other claims of online and offline unfair competition and trade libel. Based in Chicago and Oakbrook Terrace, Illinois, our Illinois online trade libel attorneys handle cases throughout the state of Illinois as well as in Wisconsin, Indiana and throughout the Midwest. We are proud of our strong record of recovery in business cases, including cases involving small and privately held businesses as well as partnerships and corporations. If you are involved in an online trademark dispute or product defamation case and you would like to learn more about your options, please contact us through our Web site or call toll-free at 1-877-990-4990 for a consultation.