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Healthmate International, LLC v. French

United States District Court, W.D. Missouri, Western Division

October 31, 2017

HEALTHMATE INTERNATIONAL, LLC, Plaintiff,
v.
TIMOTHY W.T. FRENCH, and RAMPANT LION LLC, Defendants.

          ORDER AND OPINION DENYING (1) PLAINTIFF'S MOTION FOR ACCOUNTING, PERMANENT INJUNCTION, AND DESTRUCTION AND (2) DEFENDANT'S MOTION TO STRIKE.

          BETH PHILLIPS, JUDGE UNITED STATES DISTRICT COURT.

         Plaintiff Healthmate International, LLC initiated this suit, asserting three claims of copyright infringement against Defendants Timothy French and Rampant Lion LLC. Rampant Lion asserted counterclaims for false advertising under the Lanham Act, tortious interference with contract or business expectancy, and unfair competition. The Court granted summary judgment to Healthmate on Rampant Lion's Lanham Act claim, (Doc. 176), and the remaining claims were tried to a jury. As relevant to the pending motion, the jury found that Rampant Lion infringed on two of the three copyrights and awarded Healthmate $750 on each of those two claims. (Doc. 241, pp. 1-3.)[1] However, the jury found that French did not infringe on any of the copyrights. (Doc. 241, pp. 4-6.)

         Healthmate has filed a Motion for Accounting, Permanent Injunction, and Destruction. (Doc. 243.) The motion asks the Court to “enter an order of accounting, permanent injunction, impounding and destruction” of certain of Rampant Lion's products. (Doc. 243, p. 1.) For the following reasons, Healthmate's motion is DENIED in its entirety.[2]

         I. BACKGROUND

         Healthmate and Rampant Lion are in the business of selling TENS units. “TENS” stands for Transcutaneous Electrical Nerve Stimulation, and generally speaking TENS units administer electrical current to portions of the body in order to relieve pain. Plaintiff has a Certificate of Registration for three copyrights for graphical displays used on TENS units it sells. All three displays contain a series of picture-based icons that symbolize the TENS unit's various functions. Healthmate alleged that the Defendants infringed on all three copyrights by copying them for use on their TENS units.

         The three copyright Registrations at issue bore the following numbers and titles:

• Registration No. VA 1-878-383 titled “Twelve Mode Stimulator”, (“the '383 Registration”);
• Registration No. VAu 1-145-453 titled “Twelve Mode Stimulator, ” (“the '453 Registration”); and
• Registration No. VAu 1-145-456 titled “Twenty-Four Mode Stimulator, ” (“the '456 Registration”).

         The “modes” referenced in the titles to the three registrations relate to the number of functions that could be performed by the TENS unit in question (and, therefore, the number of functions depicted on each of the displays). Thus, both the '383 Registration and the '453 Registration had twelve modes or functions. The distinguishing feature between these two Registrations was the configuration for the twelve functions: one Registration is for a configuration of three columns of four modes (sometimes referred to by the parties as the “wide” design), and the other Registration is for a configuration of two columns of six modes (sometimes referred to by the parties as the “narrow” or “skinny” design). Unfortunately, Healthmate presented conflicting evidence as to which Registration corresponded to each design. During French's testimony, Healthmate elicited evidence and discussed documents (including its Complaint, which was later entered into evidence) establishing that the '383 Registration was the wide design and the '453 Registration was the narrow design. (E.g., Doc. 245, pp. 54-65; 78-81.) Healthmate later presented conflicting testimony from its co-owner, Shawn Chen, who testified that the previously introduced testimony and documents were incorrect; that the '383 Registration was the narrow design and the '453 Registration was the wide design. (Doc. 246, pp. 134-42.)

         The jury found that Rampant Lion infringed the '383 Registration and the '456 Registration, but not the '453 Registration. Thus, the jury found that Rampant Lion infringed one of the Twelve Mode designs and that it did not infringe on the other Twelve Mode design - but nothing in the jury instructions or the verdict form establishes whether the jury found that Rampant Lion infringed on the “wide” or “narrow” design.

         Healthmate now seeks an “accounting, permanent injunction, impounding and destruction of the infringing TENS units” sold by Rampant Lion, which it identifies as any model number “7t212x, where ‘x' is any combination of letters, numbers or symbols including but not limited to ‘a' and ‘si, ” and any model number “7t424x, where ‘x' is any combination of letters, numbers or symbols including but limited to ‘a'” or any other model with screens derived from these models. (Doc. 243, p. 1.) Rampant Lion interprets the jury's verdict as finding that it infringed the copyright on the wide design and opposes Healthmate's motion because some of the models affected by Healthmate's request (notably, the 7t212si) are narrow designs. Healthmate relies on Chen's testimony to argue that the jury found Rampant Lion infringed on the narrow design. The Court resolves the parties' arguments below.

         II. DISCUSSION

         The Court “may . . . grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). The Court also “may order the impounding” of copies that violate a copyright owner's exclusive rights. Id. § 503(a)(1)(A). Both statutes use the word “may, ” signifying that the decision to order the specified relief is discretionary. E.g., Toro Co. v. R&R Products Co.,787 F.2d 1208, 1210 n.1 (8th Cir. 1986); see also eBay v. MercExchange, LLC,547 U.S. 388, 392-93 (2006) (“[T]his Court has consistently rejected invitations to [adopt] a rule that an injunction automatically follows a determination that a copyright has been infringed.”). Equitable relief is typically ordered when liability has been established, there is a history of continuing infringement, and ...


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