Microsoft Corp. v. Buy More, Inc.
703 F. App'x 476
| 9th Cir. | 2017Background
- Microsoft sued Buy More, Inc., Mojdeh Alam, Laptop Outlet Center, Inc., Maryam Sajjad, Vehid Abdullahi, and Shahram Shirazi for selling 60 units of software that contained counterfeit copies of Windows 7 and Microsoft Office 2007.
- Microsoft holds five copyright registrations covering Windows 7 and Office 2007 and valid trademark registrations for nine marks used in the counterfeit units.
- Microsoft’s evidence included an expert declaration analyzing the 60 units, declarations from undercover purchasers, invoices, and photographs linking the purchases to defendants.
- Defendants argued that a business partner (Moshen Ravanbaksh) committed the infringing acts, challenged the admissibility of the expert declaration, and disputed service for some defendants.
- The district court granted summary judgment for Microsoft on claims for copyright infringement, trademark infringement, false designation of origin (Lanham Act), California unfair competition, and a civil claim under the Anti-Counterfeiting Amendments Act (18 U.S.C. § 2318); judgment awarded statutory damages of $1,950,000.
- On appeal, defendants raised additional challenges (excessive statutory damages and judicial bias) for the first time; the Ninth Circuit found those arguments waived and affirmed the district court.
Issues
| Issue | Plaintiff's Argument (Microsoft) | Defendant's Argument | Held |
|---|---|---|---|
| Copyright infringement | Microsoft owns valid copyrights and sold units contained counterfeit software sold by defendants | Infringement was committed by partner Ravanbaksh; expert evidence inadmissible; purchases not tied to defendants | Summary judgment for Microsoft; no genuine dispute of material fact |
| Trademark infringement | Microsoft’s registered marks were used on counterfeit copies, creating likelihood of confusion | Same defenses as copyright claim | Summary judgment for Microsoft; likelihood of confusion presumed |
| False designation of origin & CA unfair competition | Use of counterfeit marks causes likelihood of confusion | Same as trademark defenses | Summary judgment for Microsoft; claims analyzed identically to trademark claim |
| Anti-Counterfeiting Act (18 U.S.C. § 2318) | Microsoft owns copyrights; defendants knowingly trafficked in illicit COAs paired with counterfeit software | No specific challenge beyond prior defenses | Summary judgment for Microsoft; elements satisfied (ownership, knowledge, trafficking) |
| Service of process (Sajjad) | Alternative service by email and on counsel was reasonably calculated to provide notice | Insufficient service (Sajjad in Iran; not served there) | Service under Fed. R. Civ. P. 4(f)(3) was proper; Shirazi’s objection waived for failure to plead |
Key Cases Cited
- Curley v. City of N. Las Vegas, 772 F.3d 629 (9th Cir. 2014) (standard of review for summary judgment)
- Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (elements of direct copyright infringement)
- A&M Records, Inc. v. Napster, Inc., 239 F.3d 1003 (9th Cir. 2001) (copyright infringement elements)
- Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir. 1998) (presumption of ownership from copyright registration)
- Hexcel Corp. v. Ineos Polymers, Inc., 681 F.3d 1055 (9th Cir. 2012) (self-serving affidavits insufficient to create genuine dispute)
- Fraser v. Goodale, 342 F.3d 1032 (9th Cir. 2003) (focus on admissibility of contents at summary judgment)
- Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966 (9th Cir. 2007) (trademark infringement elements)
- Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (registration constitutes prima facie validity)
- Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936 (9th Cir. 2011) (intent to confuse inference from marketing counterfeit goods)
- Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) (Lanham Act and state unfair competition share likelihood-of-confusion test)
- Walter v. Mattel, Inc., 210 F.3d 1108 (9th Cir. 2000) (likelihood-of-confusion standard)
- Rio Props. Inc. v. Rio Int’l Interlink, 284 F.3d 1007 (9th Cir. 2002) (district court discretion for alternative service under Rule 4(f)(3))
- Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S. 306 (U.S. 1950) (due process standard for notice)
- Yamada v. Nobel Biocare Holding AG, 825 F.3d 536 (9th Cir. 2016) (waiver of issues raised first on appeal)