Damages for Trademark Violation Based on Infringing Activity on U.S. Website Not Reduced Became Some Users Accessed Site Form Outside U.S.

The World in U.S. Courts: Fall 2013 - Intellectual Property (IP)

Myplaycity, Inc. v. Conduit Ltd., 2013 U.S. Dist. LEXIS 115598 (S.D.N.Y. Aug. 12, 2013)

Myplaycity develops and sells online games from its website. Conduit maintains an internet platform from which users can download “toolbars” that they can place on their browsers to facilitate access to other websites. Myplaycity entered into an agreement under which a Conduit created a toolbar branded with the registered Myplaycity trademark, with the parties dividing revenue from use of the games that the toolbar generated. Following a dispute Conduit maintained and obtained revenue from the Myplaycity toolbar without permission, thereby infringing Myplaycity’s trademark.

Myplaycity sued conduit for violations of the Lanham Act, among other things, and was awarded damages. After trial, Myplaycity was awarded damages. Certain of the users that downloaded the toolbar were located in the U.S. and some were not. The court later held that the damages should not be apportioned based upon the location of the user. The conduct violating the Lanham Act was Conduit’s illegal offering of the Myplaycity toolbar on its U.S. website, not downloading by the users. In other words, there was no relevant extraterritorial conduct.

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