994 F. Supp. 2d 192
D.N.H.2014Background
- Coach sues Sapatis, Londonderry Marketplace, Paul, and TABA for injunctive relief and damages over counterfeit goods at the Londonderry Flea Market.
- Asset Purchase Agreement shows Paul bought the Flea Market from Londonderry Marketplace in 2008 for $100,000 and assigned her interest to TABA.
- Sale did not include the land; a five-year lease of the land to Paul allowed operation of an outdoor flea market.
- Londonderry Marketplace dissolved in 2011-2011; Sapatis has no formal employee relationship with Paul or TABA and acts primarily through Morrow and other vendors.
- Coach presents evidence of Sapatis’s substantial involvement in Flea Market operations, including management, correspondence, and handling rents and policies.
- Court addresses whether Sapatis and Londonderry Marketplace can be held liable under federal trademark/copyright and state-law claims based on control and involvement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Contributory trademark infringement liability of Sapatis | Coach asserts Sapatis controlled infringing activity at the Flea Market. | Sapatis argues ownership alone is insufficient for contributory liability without control. | Deny: Sapatis liable for counts I-II; substantial control shown. |
| Contributory trade dress infringement, false designation of origin, and dilution | Coach contends Sapatis knowingly contributed to infringing activity and related claims. | Sapatis contends insufficient control over infringing activity. | Deny: Sapatis liable on III–V consideration of control; issues reserved for fact-finder. |
| Contributory copyright infringement | Coach asserts Sapatis’s material contribution to infringing activities supports liability. | Sapatis argues contributory copyright liability is not clearly established. | Deny: If Inwood standard met, also satisfies material contribution standard; deny summary judgment on VI. |
| State-law contributory trademark infringement or unfair competition | Coach relies on state-law theories aligned with Inwood-style control analysis. | Sapatis argues NH would not recognize contributory liability; unfair competition lacks material deception evidence. | Londonderry Marketplace: grant summary judgment on all counts; Sapatis: VIII granted, VII unresolved. |
| Londonderry Marketplace liability post-2008 | Coach claims continuing involvement through Sapatis’s actions; marketplace entity liable. | Londonderry Marketplace ceased activity by 2009; Sapatis acted independently thereafter. | Londonderry Marketplace granted summary judgment on all counts; not liable for post-2008 conduct. |
Key Cases Cited
- Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (U.S. 1982) (contributory liability for aiding infringing activity)
- Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) (control and contribution over infringing activity)
- Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143 (7th Cir. 1992) (illustrates limits of control in contributory liability)
- Visa, Inc. v. Am. Exp. Inc., 494 F.3d 792 (9th Cir. 2007) (importance of monitoring and policing infringing activity on premises)
- Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (concept of material contribution to infringement)
- Pacamor Bearings, Inc. v. Minebea Co., Ltd., 918 F. Supp. 491 (D.N.H. 1996) (Restatement-based unfair competition framework in NH)
- Wilcox Indus. Corp. v. Hansen, 870 F. Supp. 2d 296 (D.N.H. 2012) (Restatement-based unfair competition approach)
- Nordic Inn Condo. Owners' Ass'n v. Ventullo, 864 A.2d 1079 (N.H. 2004) (state trademark claims; reliance on federal doctrine)