Newport News Holdings Corp. v. Virtual City Vision, Inc.
650 F.3d 423
| 4th Cir. | 2011Background
- NNHC owns multiple Newport News trademarks and the domain newport-news.com; NNHC attempted to acquire newportnews.com but VCV already owned it since 1997.
- VCV operates a locality-domain business; in 2007 its site shifted from city information to prominent fashion advertising, changing its focus away from Newport News.
- ICANN dispute in 2000 concluded VCV’s site was not confusingly similar for NNHC’s mark and that VCV’s site served legitimate city-information purposes.
- NNHC sued VCV in 2008 in district court for trademark, unfair competition, copyright, and related state-law claims; magistrate judge presided with consent.
- VCV sought recusal and later sought to file counterclaims; the court denied recusal and denied leave to amend counterclaims, while NNHC moved for summary judgment on ACPA domain.
- The district court granted NNHC summary judgment on the ACPA domain, pierced Tran as alter ego for personal jurisdiction, awarded statutory damages and fees against VCV, and sanctioned VCV’s counsel; NNHC’s copyright claim was abandoned.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Recusal denial adequacy | VCV argues magistrate judge should have recused. | NNHC contends timeliness and lack of bias; no recusal required. | Denial affirmed; timeliness and no reasonable observer would question impartiality. |
| Personal jurisdiction over Tran | NNHC contends veil-piercing shows alter ego; jurisdiction proper. | VCV challenges findings and scope of jurisdiction. | Yes; district court properly pierced veil and exercised jurisdiction over Tran. |
| ACPA summary judgment on NewportNews.com domain | NNHC argued bad faith and domain confusing similarity. | VCV disputed bad faith and defenses of laches/acquiescence. | Affirmed; bad faith established; laches/acquiescence rejected; domain identical to NNHC mark. |
| Denial of counterclaims | NNHC maintains counterclaims were properly handled. | VCV sought to add counterclaims late with prejudice implications. | Affirmed; district court did not abuse discretion denying late counterclaims due to prejudice and futility. |
| Damages, fees, and sanctions under Lanham Act and ACPA | NNHC seeks statutory damages, attorney's fees, and sanctions for egregious conduct. | VCV challenges amount and basis for fees, damages, and sanctions. | Affirmed; high-end statutory damages and attorney's fees/ sanctions upheld; copyright-related costs not granting prevailing-party status. |
Key Cases Cited
- PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) (ACPA factors and bad-faith intent considerations)
- Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001) (totality of circumstances in bad-faith analysis)
- Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (context of likelihood of confusion differs between ACPA and trademark)
- Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004) (ACPA domain-name identity/confusion standard)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (estoppel by acquiescence in trademark context)
- Lone Star Steakhouse & Slo v. Alpha of Va., Inc., 43 F.3d 922 (4th Cir. 1995) (leave to amend and prejudice considerations in late counterclaims)
- Buckhannon Bd. & Care Home v. W.V. Dept. of Health & Human Resources, 532 U.S. 598 (2001) (prevailing party concept for fee-shifting)