111 F.4th 125
1st Cir.2024Background
- D'Pergo Custom Guitars, Inc. creates and sells custom electric guitars and owned a photograph it posted on its website depicting its proprietary guitar headstocks.
- Sweetwater Sound, Inc., an online guitar retailer, used D'Pergo's photo in an educational buying guide on its website, without authorization.
- D'Pergo discovered the use in 2015, subsequently registered the copyright for the photo, and notified Sweetwater, which then removed it.
- D'Pergo later registered the headstock design as a trademark and sued Sweetwater in 2017 for copyright infringement, trademark infringement, and violation of the New Hampshire Consumer Protection Act (CPA).
- After cross-motions for summary judgment, the district court ruled for Sweetwater on the trademark claim and CPA claim, and for D'Pergo on copyright liability. A jury awarded only actual damages (about $75,000), not infringing profits. Both sides appealed on multiple grounds.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| CPA Claim – Intent Requirement | Sweetwater’s use was deceptive and intentional under CPA | Use was inadvertent and lacked required intent | Affirmed for Sweetwater; no reckless or intentional deception |
| Trademark: Protectability of Headstock Shape | Headstock shape protected as trademark, not just trade dress | Overlap between trade dress/trademark prevents dual protection | Reversed summary judgment; viable trademark claim allowed |
| Copyright: Profits - Jury Instruction | “Causal relationship” instruction overstates burden; too strict | Instruction correctly stated plaintiff's burden of proof | Reversed; new trial required, should use “reasonable relationship” |
| Copyright: Commingling Instruction | Jury should have received commingling profits instruction | Instruction unnecessary and misstated applicable law | Affirmed; requested instruction incorrect and charge sufficient |
| Copyright: Actual Damages – Expert Testimony | Expert methodology sound, supports damages award | Expert's damages multipliers speculative and based on identities | Affirmed admission of expert; damages award upheld |
Key Cases Cited
- Data General Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147 (1st Cir. 1994) (sets burden-shifting framework for copyright infringer’s profits)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (addresses when product design is entitled to trademark protection)
- On Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001) (addresses copyright damages and fair market value of hypothetical license)
- Bruce v. Weekly World News, Inc., 310 F.3d 25 (1st Cir. 2002) (discusses expert testimony and evidence for actual copyright damages)
- Jarvis v. K2 Inc., 486 F.3d 526 (9th Cir. 2007) (market value evidence, and hypothetical license in copyright damages context)