Ninth Circuit Finds $10 Infringement Award Was Adequate

Tuesday, November 13, 2018

Page 3

Ninth Circuit Finds $10 Infringement Award Was Adequate

By a MetNews Staff Writer

The Ninth U.S. Circuit Court of Appeals decided Friday that plaintiff Oleg Pogrebnoy—who brought a trademark infringement action eight years ago, to the day, and has twice before had appeals heard in the case—is entitled to no more than the $10 a District Court judge awarded him.

He sought damages of $1.7 million.

Pogrebnoy had started a Russian-language newspaper in New York in 1992 called “KYPbEP” which, in English, is “Courier.” In 1994, he entered into an arrangement with Vitaly Matusov under which he began producing a Los Angeles version of KYPbEP.

In 1996, the words, “ ‘Kurier’ Russian Weekly Newspaper” were added to the mastheads of both newspapers.

On Nov. 26, 2007, Pogrebnoy terminated the license to use the word, “KYPbEP,” but the use continued. He brought an action in 2008 against Matusov and others, which he lost because the rights to the mark were now owned by Radony, Inc.

—AP

A man who started a newspaper in New York in 1992 with the name appearing above on Friday lost his appeal in the Ninth U.S. Circuit Court of Appeals from a judgment awarding him nominal damages of $10 for use of the name on a publication in Los Angeles.

Brings Present Action

Pogrebnoy gained assignment of Radony’s rights and, on Nov. 9, 2010, he brought the present suit against Russian Newspaper Distribution, Inc., Matusov, and others based on infringement of the unregistered trademark, “Kurier.” The defendants had, meanwhile, gained trademark registration of their website, “LAKurier.com.”

Judge Percy Anderson of the Central District of California on June 28, 2011, granted summary judgment to the defendants, holding that, following a series of transfers of ownership of the trademark, it was not clear that Pogrebnoy was the present proprietor. The Ninth Circuit on Nov. 14, 2013, issued a mandate ordering that the judgment be vacated.

A bench trial was commenced on Feb. 25, 2014 and after more than six month, resumed on Sept. 2, 2014, concluding the following day.

Anderson’s Decision

Anderson found, the following Dec. 18, that Pogrebnoy did show “a cognizable interest in the allegedly infringed intellectual property to establish his standing to pursue his claims that Defendants have infringed his intellectual property rights.”

However, he declared:

“The Court concludes that Pogrebnoy has failed to establish by a preponderance of the evidence that he either expressly or implicitly granted to Defendants a license to use the trademarks and trade dress at issue in this litigation.”

He found that Pogrebnoy did not establish that he, rather than Matusov, was the first to use “KYPbEP,” in commerce, in Los Angeles, and also found that “Kurier” is an unprotectible generic term.

The judge commented:

“The Court, having observed Pogrebnoy during his testimony, finds that Pogrebnoy is not a credible witness. He was evasive and combative while testifying. He also asserted his Fifth Amendment rights against self-incrimination when he initially declined to answer several questions….The Court also finds that Pogrebnoy frequently failed to observe corporate formalities, and has not always conducted his business dealings in an entirely ethical manner.”

(The U.S. District Court for the Southern District of New York in 1995 barred the Kurier from continuing to pirate articles and photographs from Itar-Tass Russian New Agency, the newspaper, Pravda, and others.)

Second Opinion

The Ninth Circuit, on July 13, 2017, partially reversed. The memorandum opinion said:

“[W]e reverse and remand for the district court to give further consideration to Pogrebnoy’s trademark infringement claim. On remand, the district court should also reconsider whether Pogrebnoy expressly or implicitly granted Matysov a license to use the Курьер mark and whether Pogrebnoy is entitled to damages or injunctive relief.”

On remand, Anderson awarded Pogrebnoy $10. That was more than he had previous been willing to grant, having said in the 2014 ruling:

“[T]he Court, in its discretion, would award $0.00 in damages even if Pogrebnoy were otherwise entitled to a damages award.”

In affirming on Friday, a three-judge panel said:

“The district court’s finding that Pogrebnoy failed to prove the fact of his damages was not error, given the scant evidence he offered—aside from his own assertions—of any lost sales. The finding that Pogrebnoy failed to prove the amount of his damages was also appropriate.”

The opinion goes on to say:

“The district court determined the relative credibility of Pogrebnoy and Vitaly Matusov based on observations of their testimony. Pogrebnoy has offered no reason to suggest the district court’s credibility determinations, which are owed ‘even greater deference’ than other factual findings, were ‘internally inconsistent.’…In view of the record, the finding that the New York iteration of KYPbEP ceased publication in 2011 was not clearly erroneous.

“Finally, we need not decide whether the district court erred when it concluded it lacked jurisdiction over Pogrebnoy’s claim for cancellation of the LAKurier.com mark’s registration. Pogrebnoy could have raised this issue in his previous appeal but failed to do so, so he has waived the argument.”

The case is Pogrebnoy v. Russian Newspaper Distribution, Inc., No. 17-56583.