Entrepreneur Media Inc. v. Scott Smith dba EntrepreneurPR
Published: Sep. 9, 2003 | Result Date: Jul. 10, 2003 | Filing Date: Jan. 1, 1900 |Case number: CV983607FMC Bench Decision – $1,397,860
Judge
Court
USDC Central
Attorneys
Plaintiff
Mark A. Finkelstein
(Umberg Zipser LLP)
Defendant
Jeffrey Kravitz
(Alternative Resolution Centers )
Experts
Plaintiff
Robert Knudsen
(technical)
Virginia A. Mann
(technical)
Defendant
Patrick Farrell
(technical)
Facts
The plaintiff had used its "Entrepreneur" trademark on its flagship magazine, Entrepreneur, since 1978 and used its trademark on its website. In addition to the well-established use of the trademark, the plaintiff had registered its mark, as well as several related marks, with the U.S. Patent and Trademark office. In 1995, the defendant launched ICON Publications, which focused on providing public relations services to small businesses. In 1997, he started a magazine called Yearbook of Small Business Icons. As part of the plaintiff's effort to promote small business, it listed ICON Publications on the small business links portion of its web site in 1996. Soon after, Smith changed the name of his company to EntrepreneurPR, the name of his magazine to Entrepreneur Illustrated and his domain name to entrepreneurpr.com. In 1998, the plaintiff filed the subject suit against the plaintiff seeking to protect its trademark from illegal use. In 2000, a federal court granted Entrepreneur Media summary judgment, awarding a broad injunction prohibiting the defendant from continued use of the Entrepreneur mark and $337,280 in damages. The defendant appealed and the 9th Circuit Court of Appeals upheld part of the trial court's injunction against Smith and sent the case back to district court for a trial on questions of fact. At trial, the court found that there was substantial evidence of actual confusion and that a significant number of the defendant's clients, whom the court found to be very credible had been misled by the defendant into believing that there was an affiliation betwen Entreprenur Media and EntrepreneurPR. The court concluded that these third-party witnesses were almost uniform in their position that they never would have paid any money to the defendant had they known that he was not connected with the plaintiff. The plaintiff prevailed in the subject suit against the defendant and the court found that the defendant intentionally infringed upon the plaintiff's Entrepreneur trademark and committed unfair competition under federal and California laws.
Result
The plaintiff was granted a permanent injunction, damages of $669,656 and attorneys' fees and costs of $728,203.
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