The aff doesn’t solve uniformity either – litigants will just court shop

it is interesting here to note the correlation between the states with the greatest remedies/sanctions available to plaintiffs suing for trademark infringement/counterfeit and states with the greatest number of filings of online trademark infringement claims. Charting this data out in terms of civil and criminal index quadrants shows that the states with the highest civil remedies and criminal sanctions include: Alaska, Arizona, California, Florida, Georgia, Hawaii, Iowa, Illinois, Indiana, Kansas, Kentucky, Massachusetts, Minnesota, Missouri, Mississippi, Montana, New Jersey, New York, Oregon, Pennsylvania, South Carolina, Tennessee, and Washington.  Of these states listed, three of them (California, Florida, and New York) are also the states with the greatest volume of online trademark counterfeiting suits filed. In contrast, the states with the lowest civil remedies and criminal sanctions include: Colorado, Louisiana, Maine, North Dakota, Nebraska, South Dakota, and Vermont.  None of these states had anywhere near the volume of online trademark counterfeit filings as the three states with the highest volume of filings. Louisiana had four cases, Colorado had eight cases, Maine and Nebraska each had one case, North Dakota and South Dakota both had no cases, and Vermont had two cases. 

These numbers illustrate that some states see an overwhelmingly higher volume of cases compared to other states, but that does not seem to be the end of the story. First, Louisiana (with eight) and Colorado (with five) both had more cases than some states in even the circuits with some of the highest volume of online trademark counterfeiting suits filed. Second, although some states have a remarkably higher number of cases filed compared to other states, that still does not account for the fact that some districts have a higher volume of cases within the states themselves. Indeed, personal jurisdiction would seem to lie in most any jurisdiction where the counterfeit goods are sold, and many trademark owners are not filing in their state of incorporation. In fact, Delaware, which has high criminal sanctions but low civil remedies for trademark infringement,  had only had one case filed for online trademark counterfeiting over the past eighteen years.  Thus, there seems to be something other than either the remedies available to each state or where the brand happens to be incorporated.

 [*324]  4. Understanding Why Online Trademark Counteeiting Cases are Filed Predominately in Florida: A Closer Look at Tiffany (NJ) LLC v. Benefitfortiffany.com. In order to understand why trademark owners are filing their online trademark counterfeit suits in some federal district courts over others, it is best to start with the statutes and case law of those particular jurisdictions. A comparison of the different statutes helps to elucidate how or why some states are more favorable than others. Unfortunately, such an examination does not explain why some districts within those states are also more favorable than others. The best way to understand why certain districts are more favorable than others is to look at the different courts' application of the state and federal statutes' language concerning remedies; this can illuminate how even with virtually identical laws (both federal and state) being applied, different courts can award vastly different statutory damage awards for similar cases based on the discretion afforded to them in the Lanham Act's language. Such an analysis can bring to light whether there is a level of predictability in how some courts award either higher or lower damage awards in comparison to courts in other jurisdictions.

Plaintiff brought the action for default judgment under both federal and common law after the defendants failed to file any answer or appear in court for this case. In addition to the default judgment, plaintiff requested a permanent injunction pursuant to the transfer of the domain names from the defendants' control to plaintiff, statutory damages of $ 100,000 under the Lanham Act, and other statutory damages ($ 10,000) for cyber-squatting.  In response, the court granted the plaintiff's motion for full relief--including the statutory damages and transfer of domain names. 

To support its grant of relief, the court cited to both the broad discretion afforded by the language and purpose of the Lanham Act, as well as to cases previously decided in the district. In terms of injunctive relief and the transfer of control of the domain names, the court noted that the Lanham Act gives the court broad discretion, stating that "[t]he Court's broad equity powers allow it to fashion injunctive relief necessary to stop Defendants' infringing activities. District courts are expressly authorized to order the transfer or surrender of domain names in an in rem action against a domain name."  Similarly, the court reasoned that it can give the full $ 100,000 in statutory damages requested by the plaintiff because "...Congress enacted a statutory damages remedy in trademark counterfeiting cases because evidence of a defendant's profits in such cases is almost impossible to ascertain."  The court further reasoned that long-standing precedent made such an amount reasonable in light of the circumstances of the case."  Although the court cited to the purpose of the statute and to previous cases which have been decided similarly, it is important to note that the court does not explain why it chose the particular amount of statutory damages any further.

The growing number of online trademark counterfeiting claims demonstrates that this is an area of the law that warrants more discussion if the problem is ever to be solved. To best illustrate the problem and how it should be resolved, it is useful to return to the analogy of Hercules fighting the Hydra. When we last saw our hero, his defeat seemed inevitable. Hercules was staring into the eyes of his enemy with no way of defeating the Hydra on his own. Tired, frantic, and on the verge of death, Hercules cried out in desperation for his nephew, Iolaus, to come to his aid. As Iolaus rushed towards the beast with his torch, he began to cauterize each of the severed necks almost as soon ashm Hercules could cut off one of the Hydra's heads. The two worked tirelessly until finally, with only one immortal head remaining, the goddess Athena appeared from the heavens and handed Hercules a golden sword. It was only with this golden sword that a mortal could slay the last remaining head of the Hydra. Armed with this new weapon, the determined Hercules took one last heroic lunge at the Hydra and slashed its sole remaining head. The heroic battle between beast and man had finally come to an end.

As in the tale of Hercules and the Hydra, the trademark owners who face these anonymous online counterfeiters must rely on the court's discretion of awarding remedies under the Lanham Act much in the same way that Hercules relied on his nephew, Iolaus, to help defeat the Hydra. As one can see from this analogy, while lolaus' efforts certainly aided Hercules' mission to defeat the Hydra, his help could only do so much. It was not until Athena appeared with the golden sword that Hercules was able to destroy his enemy. Similarly, although courts such as the Southern District of Florida or the Southern District of New York have exercised their discretion in a way that is favorable to trademark owners seeking relief, the analogy nevertheless elucidates how such efforts on behalf of the court only solve part of the problem.

As the numbers concerning forum shopping illustrate, the Lanham Act's failure to provide more particularized instructions on how courts should award damages has led to a majority of all online trademark counterfeiting claims to be filed in only a handful of jurisdictions. On the whole, this small handful of courts are ultimately the ones providing the most consistently favorable results to trademark owners. As a result, these courts have been forced to carry the burden of taking on a more substantial caseload while trademark owners have been forced to file claims in courts that are not always the most convenient for them. While these two realities are enough to illustrate the problems of the Lanham Act's remedial scheme for counterfeit trademarks, the biggest problem appears to lie in the Act's failure to adequately deter online counterfeiting of trademarks.