995 F. Supp. 2d 251
S.D.N.Y.2014Background
- Plaintiffs Schatzki and BPP sue WCM, WeiserMazars, and Michel for trademark infringement, conversion, breach of contract, civil conspiracy, and unjust enrichment.
- Counts II and V were tried to a jury; Counts I and VI were tried to the court, with trial in January 2014.
- Schatzki was terminated from WCM on May 3, 2010, around which events the claims arise.
- Schatzki’s SmartOffice data was copied to ACT! without approval, and data was later partitioned but retained by WCM.
- WCM and WeiserMazars retained Schatzki data; the court found no proven unjust enrichment from retention.
- Court entered judgment for Plaintiffs on Count I and for WCM/WeiserMazars on Count VI; damages for trademark infringement set at $15,000.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether WCM infringed BPP marks | Schatzki/Pltf show marks used in commerce without consent. | WCM argues no valid use or confusion; data handling not infringing. | Yes; WCM infringed the service marks. |
| Whether WCM/WeiserMazars were unjustly enriched | Defendants retained Schatzki data and benefited from it. | No demonstrable benefit to WCM/WeiserMazars from retention. | No unjust enrichment; no measureable benefit. |
| Whether damages for trademark infringement were proper | Statutory damages apply; lost profits not required. | Damages should reflect actual harm; not guaranteed by statute. | $15,000 statutory damages awarded. |
Key Cases Cited
- Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir. 2004) (unjust enrichment requires benefit, expense, and equity)
- Kaye v. Grossman, 202 F.3d 611 (2d Cir. 2000) (benefit plus obligation to compensate required)
- Old Republic Natl. Title Ins. Co. v. Cardinal Abstract Corp., 14 A.D.3d 678 (2d Dep’t 2005) (plaintiff must show defendant benefited and should compensate)
- Clark v. Daby, 300 A.D.2d 732 (3d Dep’t 2002) (burden to show unjust enrichment is with plaintiff)
- 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005) (elements for infringement in service marks)