Patagonia, Inc. v. Tradition LLC
2:18-cv-07972
| C.D. Cal. | Mar 4, 2019Background
- Patagonia (plaintiff) owns the famous PATAGONIA mark and a copyrighted Fitz Roy mountain design (copyright reg. VA 1-801-788) used on its apparel for decades.
- Tradition LLC (defendant) was served with the complaint alleging copyright infringement, federal and California trademark claims, dilution, unfair competition, and common-law trademark claims; Tradition did not respond and default was entered.
- Plaintiff submitted images and website screenshots showing defendant sold a t-shirt with a design that is virtually identical to Patagonia’s Fitz Roy artwork, replacing "patagonia" with "tradition."
- Plaintiff sought default judgment requesting $30,000 in statutory copyright damages, $3,000 in attorneys’ fees, and a permanent injunction; the requested fee figure was later corrected by the court to $2,400 per Local Rule 55-3.
- The court applied the Eitel factors, found plaintiff’s copyright and Lanham Act claims strong and uncontested, and concluded default judgment and injunctive relief were appropriate.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1. Whether default judgment is appropriate | Tradition ignored suit and plaintiff will be prejudiced without default relief | No response/failed to defend | Court granted default judgment under Eitel factors; default appropriate |
| 2. Copyright infringement (ownership & copying) | Plaintiff holds a valid copyright registration and defendant copied the Fitz Roy design (virtually identical) | No response/denial; no evidence of independent creation | Court found prima facie valid copyright and substantial similarity; likelihood of success on copyright claim |
| 3. Trademark/Lanham Act claims (likelihood of confusion/dilution) | Plaintiff owns registrations and defendant’s similar design creates consumer confusion and dilutes mark | No response | Court found strong likelihood of success on Lanham Act claims |
| 4. Remedies: statutory damages, fees, permanent injunction | Requests $30,000 statutory damages (less than max for willful), attorneys’ fees per Local Rule, and permanent injunction to stop future infringement | No response | Court awarded $30,000 statutory damages, $2,400 attorneys’ fees (Local Rule correction), and a permanent injunction against further infringing activity |
Key Cases Cited
- Eitel v. McCool, 782 F.2d 1470 (9th Cir. 1986) (factors for default judgment)
- Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003) (elements of copyright infringement: ownership and copying)
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (Sup. Ct. 1991) (originality requirement for copyright)
- Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000) (registration as prima facie evidence of copyright validity)
- Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 (9th Cir. 1985) (elements of trademark infringement: ownership and likelihood of confusion)
- Peer Int'l Corp. v. Pausa Records, Inc., 909 F.2d 1332 (9th Cir. 1990) (district court discretion in awarding statutory damages)
- Frank Music Corp. v. Metro-Goldwyn-Mayer Inc., 886 F.2d 1545 (9th Cir. 1989) (prevailing copyright plaintiffs may recover attorneys’ fees)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (Sup. Ct. 2006) (four-factor equitable test for permanent injunctions)