Top Plaintiffs' Verdicts by Impact: QS Wholesale Inc. v. World Marketing Inc.

Covington & Burling LLP guided World Marketing Inc. to a trademark infringement trial victory in July that eventually resulted in $500,000 in damages and more than $1.8 million in attorney fees against beach apparel retailer Quiksilver Inc.

The Covington team, led by San Francisco-based partner Clara J. Shin, convinced an eight-person jury that Quiksilver's VSTR line, championed by professional surfer Kelly Slater, infringed World Marketing's VISITOR mark. QS Wholesale Inc. v. World Marketing Inc., 12-451 (C.D. Cal., filed Mar. 21, 2012).

World Marketing, a New York-based consumer goods producer, registered the VISITOR mark for men's and women's clothing in 1998 and renewed the mark in 2008.

"What was very affirming and validating for us as counsel was that we had litigated this case responsibly and effectively," Shin said. "We won on every ground and on every single claim."

In a post-trial order issued last month, U.S. District Judge David O. Carter in Santa Ana imposed a permanent injunction barring Quiksilver from using VSTR, VISITOR or any other "deceptively similar" mark in connection with clothing. Quiksilver announced in May that it was discontinuing its VSTR clothing line.

Carter also reduced the jury's original $3.5 million punitive damages award, but he granted World Marketing's motion for attorney fees and an additional $197,833 in attorney costs.

Quiksilver argued that Covington had engaged in unnecessary lawyering, but Carter replied that Quiksilver had filed "duplicative motions" that contributed to World Marketing's legal tab.

"Quiksilver's implication - that perhaps WMI should have followed Quiksilver's example and staffed the case with the same resources that Quiksilver itself used - ignores the fact that Quiksilver lost on all claims at trial and WMI won," Carter wrote.

- KEVIN LEE

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