Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 1 of 71
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`ATARI INTERACTIVE, INC.,
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`Plaintiff,
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`v.
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`REDBUBBLE, INC.,
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`Defendant.
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`Case No. 18-cv-03451-JST
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`DRAFT JURY INSTRUCTIONS
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`Following are the jury instructions the Court currently intends to give in this matter. These
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`instructions are very much in draft form, and the Court welcomes the parties’ help in identifying
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`errors and omissions.
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`Contrary to the Court’s statement from the bench, and subject to further discussion, the
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`Court does not intend to give Redbubble’s requested instruction on expressive works.
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`Redbubble’s instruction is taken from Ninth Circuit Model Instruction 15.19A, which places the
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`burden on the plaintiff to show that a work is not expressive and not on the defendant to show that
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`a work is expressive. The Ninth Circuit Jury Instructions Committee explains the reasons for this
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`as follows:
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`No case has explicitly decided whether the question of First
`Amendment protection is to be decided by the court in all instances
`or whether it is a mixed question of fact and law. This instruction
`assumes that the court has already determined that the allegedly
`infringing work is protected by the First Amendment, as was the
`case in Gordon [v. Drape Creative, Inc. 909 F.3d 257, 264 (9th Cir.
`2018)]. In a case in which the court concludes there are factual
`findings a jury must make before deciding the threshold question of
`First Amendment protection, this instruction should be modified
`accordingly.
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`Because the Court has not “already determined that [any] allegedly infringing work is protected by
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 2 of 71
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`the First Amendment,” there is no predicate for this instruction. No party has proposed a different
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`instruction on this topic.
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`IT IS SO ORDERED.
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`Dated: November 2, 2021
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`______________________________________
`JON S. TIGAR
`United States District Judge
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 3 of 71
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`1.4 DUTY OF JURY
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`Members of the Jury: Now that you have heard all of the evidence, it is my duty to instruct
`you on the law that applies to this case. Each of you has received a copy of these instructions that
`you may take with you to the jury room to consult during your deliberations.
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`It is your duty to find the facts from all the evidence in the case. To those facts you will
`apply the law as I give it to you. You must follow the law as I give it to you whether you agree
`with it or not. And you must not be influenced by any personal likes or dislikes, opinions,
`prejudices, or sympathy. That means that you must decide the case solely on the evidence before
`you. You will recall that you took an oath to do so.
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`Please do not read into these instructions or anything that I may say or do or have said or
`done that I have an opinion regarding the evidence or what your verdict should be.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 4 of 71
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`1.6 BURDEN OF PROOF—PREPONDERANCE OF THE EVIDENCE
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`When a party has the burden of proving any claim or affirmative defense by a
`preponderance of the evidence, it means you must be persuaded by the evidence that the claim or
`affirmative defense is more probably true than not true.
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`You should base your decision on all of the evidence, regardless of which party presented
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 5 of 71
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`1.9 WHAT IS EVIDENCE
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`The evidence you are to consider in deciding what the facts are consists of:
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`the sworn testimony of any witness;
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`the exhibits that are admitted into evidence;
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`any facts to which the lawyers have agreed; and
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`any facts that I have instructed you to accept as proved.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 6 of 71
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`1.10 WHAT IS NOT EVIDENCE
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`In reaching your verdict, you may consider only the testimony and exhibits received into
`evidence. Certain things are not evidence, and you may not consider them in deciding what the
`facts are. I will list them for you:
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`1.
`Arguments and statements by lawyers are not evidence. The lawyers are not
`witnesses. What they have said in their opening statements, closing arguments and at other times
`is intended to help you interpret the evidence, but it is not evidence. If the facts as you remember
`them differ from the way the lawyers have stated them, your memory of them controls.
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`2.
`Questions and objections by lawyers are not evidence. Attorneys have a duty to
`their clients to object when they believe a question is improper under the rules of evidence. You
`should not be influenced by the objection or by the court’s ruling on it.
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`3.
`Testimony that is excluded or stricken, or that you have been instructed to
`disregard, is not evidence and must not be considered. In addition, some evidence was received
`only for a limited purpose; when I have instructed you to consider certain evidence only for a
`limited purpose, you must do so and you may not consider that evidence for any other purpose.
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`4.
`Anything you may have seen or heard when the court was not in session is not
`evidence. You are to decide the case solely on the evidence received at the trial.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 7 of 71
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`1.11 EVIDENCE FOR LIMITED PURPOSE
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`Some evidence may be admitted only for a limited purpose.
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`If I have instructed you that an item of evidence was admitted only for a limited purpose,
`you must consider it only for that limited purpose and not for any other purpose.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 8 of 71
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`1.12 DIRECT AND CIRCUMSTANTIAL EVIDENCE
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`Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact, such as
`testimony by a witness about what that witness personally saw or heard or did. Circumstantial
`evidence is proof of one or more facts from which you could find another fact. By way of
`example, if you wake up in the morning and see that the sidewalk is wet, you may find from that
`fact that it rained during the night. However, other evidence, such as a turned-on garden hose,
`may provide a different explanation for the presence of water on the sidewalk. Therefore, before
`you decide that a fact has been proved by circumstantial evidence, you must consider all the
`evidence in the light of reason, experience and common sense.
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`You should consider both kinds of evidence. The law makes no distinction between the
`weight to be given to either direct or circumstantial evidence. It is for you to decide how much
`weight to give to any evidence.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 9 of 71
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`1.13 RULING ON OBJECTIONS
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`There are rules of evidence that control what can be received into evidence. When a
`lawyer asks a question or offers an exhibit into evidence and a lawyer on the other side thinks that
`it is not permitted by the rules of evidence, that lawyer may object. If I overrule the objection, the
`question may be answered or the exhibit received. If I sustain the objection, the question cannot
`be answered, and the exhibit cannot be received. Whenever I sustain an objection to a question,
`you must ignore the question and must not guess what the answer might have been.
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`Sometimes I may order that evidence be stricken from the record and that you disregard or
`ignore that evidence. That means when you are deciding the case, you must not consider the
`stricken evidence for any purpose.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 10 of 71
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`1.14 CREDIBILITY OF WITNESSES
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`In deciding the facts in this case, you may have to decide which testimony to believe and
`which testimony not to believe. You may believe everything a witness says, or part of it, or none
`of it.
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`In considering the testimony of any witness, you may take into account:
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`the opportunity and ability of the witness to see or hear or know the things testified
`to;
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`the witness’s memory;
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`the witness’s manner while testifying;
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`the witness’s interest in the outcome of the case, if any;
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`the witness’s bias or prejudice, if any;
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`whether other evidence contradicted the witness’s testimony;
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`the reasonableness of the witness’s testimony in light of all the evidence; and
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`any other factors that bear on believability.
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`Sometimes a witness may say something that is not consistent with something else he or
`she said. Sometimes different witnesses will give different versions of what happened. People
`often forget things or make mistakes in what they remember. Also, two people may see the same
`event but remember it differently. You may consider these differences, but do not decide that
`testimony is untrue just because it differs from other testimony.
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`However, if you decide that a witness has deliberately testified untruthfully about
`something important, you may choose not to believe anything that witness said. On the other
`hand, if you think the witness testified untruthfully about some things but told the truth about
`others, you may accept the part you think is true and ignore the rest.
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`The weight of the evidence as to a fact does not necessarily depend on the number of
`witnesses who testify. What is important is how believable the witnesses were, and how much
`weight you think their testimony deserves.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 11 of 71
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`1.20 BENCH CONFERENCES AND RECESSES
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`From time to time during the trial, it became necessary for me to talk with the attorneys out
`of the hearing of the jury, either by having a conference at the bench when the jury was present in
`the courtroom, or by calling a recess. Please understand that while you were waiting, we were
`working. The purpose of these conferences was not to keep relevant information from you, but to
`decide how certain evidence was to be treated under the rules of evidence and to avoid confusion
`and error.
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`Of course, we have done what we could to keep the number and length of these
`conferences to a minimum. I did not always grant an attorney’s request for a conference. Do not
`consider my granting or denying a request for a conference as any indication of my opinion of the
`case or of what your verdict should be.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 12 of 71
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`2.2 STIPULATIONS OF FACT
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`The parties have agreed to certain facts [to be placed in evidence as Exhibit __] [that will
`be read to you]. You must therefore treat these facts as having been proved.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 13 of 71
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`2.4 DEPOSITION IN LIEU OF LIVE TESTIMONY
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`A deposition is the sworn testimony of a witness taken before trial. The witness is placed
`under oath to tell the truth and lawyers for each party may ask questions. The questions and
`answers are recorded.
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`Insofar as possible, you should consider deposition testimony, presented to you in court in
`lieu of live testimony, in the same way as if the witness had been present to testify.
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`Do not place any significance on the behavior or tone of voice of any person reading the
`questions or answers.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 14 of 71
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`2.11 USE OF INTERROGATORIES
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`Evidence was presented to you in the form of answers of one of the parties to written
`interrogatories submitted by the other side. These answers were given in writing and under oath
`before the trial in response to questions that were submitted under established court procedures.
`You should consider the answers, insofar as possible, in the same way as if they were made from
`the witness stand.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 15 of 71
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`2.13 EXPERT OPINION
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`You have heard testimony from witnesses who testified to opinions and the reasons for
`their opinions. This opinion testimony was allowed because of the education or experience of this
`witness.
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`Such opinion testimony should be judged like any other testimony. You may accept it or
`reject it, and give it as much weight as you think it deserves, considering the witnesses’ education
`and experience, the reasons given for the opinions, and all the other evidence in the case.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 16 of 71
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`2.14 CHARTS AND SUMMARIES NOT RECEIVED IN EVIDENCE
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`Certain charts and summaries not admitted into evidence have been shown to you in order
`to help explain the contents of books, records, documents, or other evidence in the case. Charts
`and summaries are only as good as the underlying evidence that supports them. You should,
`therefore, give them only such weight as you think the underlying evidence deserves.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 17 of 71
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`2.15 CHARTS AND SUMMARIES RECEIVED IN EVIDENCE
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`Certain charts and summaries have been admitted into evidence to illustrate information
`brought out in the trial. Charts and summaries are only as good as the testimony or other admitted
`evidence that supports them. You should, therefore, give them only such weight as you think the
`underlying evidence deserves.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 18 of 71
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`2.16 EVIDENCE IN ELECTRONIC FORMAT
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`Those exhibits received in evidence that are capable of being displayed electronically will
`be provided to you in that form, and you will be able to view them in the jury room. A computer,
`projector, printer and accessory equipment will be available to you in the jury room.
`
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`A court technician will show you how to operate the computer and other equipment; how
`to locate and view the exhibits on the computer; and how to print the exhibits. You will also be
`provided with a paper list of all exhibits received in evidence. You may request a paper copy of
`any exhibit received in evidence by sending a note through the courtroom deputy. If you need
`additional equipment or supplies or if you have questions about how to operate the computer or
`other equipment, you may send a note to the courtroom deputy, signed by your foreperson or by
`one or more members of the jury. Do not refer to or discuss any exhibit you were attempting to
`view.
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`If a technical problem or question requires hands-on maintenance or instruction, a court
`technician may enter the jury room with courtroom deputy present for the sole purpose of assuring
`that the only matter that is discussed is the technical problem. When the court technician or any
`nonjuror is in the jury room, the jury shall not deliberate. No juror may say anything to the court
`technician or any nonjuror other than to describe the technical problem or to seek information
`about operation of the equipment. Do not discuss any exhibit or any aspect of the case.
`
`The sole purpose of providing the computer in the jury room is to enable jurors to view the
`exhibits received in evidence in this case. You may not use the computer for any other purpose.
`At my direction, technicians have taken steps to ensure that the computer does not permit access to
`the Internet or to any “outside” website, database, directory, game, or other material. Do not
`attempt to alter the computer to obtain access to such materials. If you discover that the computer
`provides or allows access to such materials, you must inform the court immediately and refrain
`from viewing such materials. Do not remove the computer or any electronic data from the jury
`room, and do not copy any such data.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 19 of 71
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`4.2 LIABILITY OF CORPORATIONS
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`Under the law, a corporation is considered to be a person. It can only act through its
`employees, agents, directors, or officers. Therefore, a corporation is responsible for the acts of its
`employees, agents, directors, and officers performed within the scope of authority.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 20 of 71
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`15.1 PRELIMINARY INSTRUCTION—TRADEMARK
`
`
`The plaintiff, Atari, seeks damages against the defendant, Redbubble, for trademark
`infringement and counterfeiting. Redbubble denies infringing or counterfeiting the trademarks.
`To help you understand the evidence that will be presented in this case, I will explain some of the
`legal terms you will hear during this trial.
`
`
`Definition and Function of a Trademark
`
` A
`
` trademark is a word, name, symbol, or device, or any combination of these items that
`indicates the source of goods. The owner of a trademark has the right to exclude others from
`using that trademark or a similar mark that is likely to cause confusion in the marketplace. The
`main function of a trademark is to identify and distinguish goods or services as the product of a
`particular manufacturer or merchant and to protect its goodwill.
`
`How a Trademark is Obtained
`
` A
`
` person acquires the right to exclude others from using the same mark or a similar mark
`that is likely to cause confusion in the marketplace by being the first to use it in the marketplace,
`or by using it before the alleged infringer. Rights in a trademark are obtained only through
`commercial use of the mark.
`
`
`Trademark Interests
`
` A
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` trademark owner may enforce the right to exclude others in an action for infringement
`and/or false designation of origin.
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`Trademark Licensing
`
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`The owner of a trademark may enter into an agreement that permits another person to use
`the trademark. This type of agreement is called a license, and the person permitted to use the
`trademark is called a licensee.
`
`
`Trademark Registration
`
`
`After the owner of a trademark has obtained the right to exclude others from using the
`trademark, the owner may obtain a certificate of registration issued by the United States Patent and
`Trademark Office. Thereafter, when the owner brings an action for infringement, the owner may
`rely solely on the registration certificate to prove that the owner has the right to exclude others
`from using the trademark or a similar mark that is likely to cause confusion in the marketplace in
`connection with the type of goods specified in the certificate. These presumptions in favor of the
`owner created by the certificate of registration can be overcome or rebutted only by certain types
`of evidence that I will describe to you later as appropriate.
`
`Likelihood of Confusion
`
`
`To prove infringement, the plaintiff must prove, by a preponderance of the evidence, that
`the defendant, without the plaintiff’s consent, used in commerce a reproduction, copy, counterfeit
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 21 of 71
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`
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`or colorable imitation of plaintiff’s mark in connection with the distribution or advertisement of
`goods, such that the defendant’s use of the mark is likely to cause confusion as to the source of the
`goods. It is not necessary that the mark used by the defendant be an exact copy of the plaintiff’s
`mark. Rather, the plaintiff must demonstrate that, viewed in its entirety, the challenged use is
`likely to cause confusion in the minds of reasonably prudent purchasers as to the source of the
`product in question.
`
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`The Plaintiff’s Burden of Proof
`
`
`In this case, the plaintiff, Atari, contends that the defendant, Redbubble, has infringed or
`counterfeited the plaintiff’s trademark. The plaintiff has the burden of proving by a
`preponderance of the evidence that the plaintiff is the owner of a valid trademark and that the
`defendant infringed or counterfeited that trademark. Preponderance of the evidence means that
`you must be persuaded by the evidence that it is more probably true than not true that the
`defendant infringed the plaintiff’s trademark.
`
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`The Defendant’s Burden of Proof
`
`
`The defendant, Redbubble, contends that, even if Atari meets its burden of proof, the
`affirmative defenses of fair use and laches prevent a finding in favor of the plaintiff, Atari, or limit
`the remedies to which Atari is entitled. Redbubble has the burden of proving these affirmative
`defenses by a preponderance of the evidence.
`
`Preponderance of the evidence means that you must be persuaded by the evidence that it is
`more probably true than not true that the affirmative defenses apply.
`
`Both parties, Atari and Redbubble, are is a persons as that term is used in these
`instructions.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 22 of 71
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`15.2 DEFINITION—TRADEMARK (15 U.S.C. § 1127)
`
`A trademark is any word, name, symbol, device, or any combination thereof, used by a
`person to identify and distinguish that person’s goods from those of others and to indicate the
`source of the goods , even if that source is generally unknown.
`
` A
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` person who uses the trademark of another may be liable for damages.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 23 of 71
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`15.5 TRADEMARK LIABILITY—THEORIES AND POLICIES (15 U.S.C. §§ 1114(1),
`1125(a))
`
`The trademark laws balance three often-conflicting goals: (1) protecting the public from
`being misled about the nature and source of goods and services, so that the consumer is not
`confused or misled in the market; (2) protecting the rights of a business to identify itself to the
`public and its reputation in offering goods and services to the public; and (3) protecting the public
`interest in fair competition in the market.
`
`The balance of these policy objectives varyies from case to case, because they may often
`conflict. Accordingly, each case must be decided by examining its specific facts and
`circumstances, of which you are to judge.
`
`
`In these instructions, I will identify types of facts you are to consider in deciding if the
`defendant is liable to the plaintiff for violating the trademark law. These facts are relevant to
`whether the defendant is liable for:
`
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`1.
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`2.
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`infringing plaintiff’s registered trademark rights, by using a trademark in a manner
`likely to cause confusion among consumers; and
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`counterfeiting plaintiff’s registered trademarks.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 24 of 71
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`15.6 INFRINGEMENT—ELEMENTS AND BURDEN OF PROOF— TRADEMARK
`(15 U.S.C. § 1114(1))
`
`
`On the plaintiff’s claim for trademark infringement, the plaintiff has the burden of proving
`each of the following elements by a preponderance of the evidence:
`
`1.
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`The ATARI “Fuji” logo and PONG are valid, protectable trademarks;
`
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`2.
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`3.
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`Atari owns the ATARI “Fuji” logo and PONG as trademarks; and
`
`Redbubble used marks similar to the ATARI “Fuji” logo and PONG without the
`Atari’s consent in a manner that is likely to cause confusion among ordinary
`consumers as to the source, sponsorship, affiliation, or approval of the goods.
`
`
`You may find that Redbubble “used” the plaintiff’s mark only if you find that Redbubble
`itself either: (1) was the seller of any infringing goods; (2) was the one offering any allegedly
`infringing goods for sale; or (3) advertised any allegedly infringing goods through advertisements
`that themselves infringed the plaintiff’s trademarks. If you find that Redbubble’s role was instead
`to act as an intermediary, or as a facilitator of sales made by others, you may not find that
`Redbubble “used” the plaintiff’s mark.
`
`If you find that each of the elements on which the plaintiff has the burden of proof has
`been proved, your verdict should be for the plaintiff. If, on the other hand, the plaintiff has failed
`to prove any of these elements, your verdict should be for the defendant.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 25 of 71
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`15.8 INFRINGEMENT—ELEMENTS—PRESUMED VALIDITY AND OWNERSHIP —
`REGISTERED TRADEMARK (15 U.S.C. §§ 1057, 1065 and 1115)
`
`I gave you instruction number 15.6 that requires the plaintiff to prove by a preponderance
`of the evidence that the trademark is valid and protectable and that the plaintiff owns the
`trademark. A valid trademark is a word, name, symbol, device, or any combination of these, that
`indicates the source of goods and distinguishes those goods from the goods of others. A
`trademark becomes protectable after it is used in commerce.
`
`One way for the plaintiff to prove trademark validity is to show that the trademark is
`registered. An owner of a trademark may obtain a certificate of registration issued by the United
`States Patent and Trademark Office and may submit that certificate as evidence of the validity and
`protectability of the trademark and of the certificate holder’s ownership of the trademark covered
`by that certificate.
`
`
`Exhibits ___, ___, & ___ are certificates of registration from the United States Patent and
`Trademark Office. They were submitted by the plaintiff as proof of the validity of the trademark
`and that the plaintiff owns the trademark in the marks covered by those registrations.
`
`The facts recited in this certificate are: (1) USPTO Reg. No. 4,214,210: the ATARI “Fuji”
`logo mark was registered on September 25, 2014 and “consists of the word ‘Atari’ with a Fuji
`design above the word within a box.” (2) USPTO Reg. No. 4,324,638: the word PONG was
`registered on April 23, 2013 and “consists of standard characters without claim to any particular
`font, style, size, or color.”
`
`You must consider these two trademarks to be conclusively proved as valid and owned by
`the plaintiff.
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`Case 4:18-cv-03451-JST Document 236 Filed 11/02/21 Page 26 of 71
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`15.18 INFRINGEMENT—LIKELIHOOD OF CONFUSION—FACTORS— SLEEKCRAFT
`TEST (15 U.S.C. §§ 1114(1) and 1125(a))
`
`
`You must consider whether the challenged use of the trademark is likely to cause
`confusion about the source of the allegedly infringing products.
`
` I
`
` will suggest some factors you should consider in deciding this. The presence or absence
`of any particular factor that I suggest should not necessarily resolve whether there was a likelihood
`of confusion, because you must consider all relevant evidence in determining this. As you
`consider the likelihood of confusion you should examine the following:
`
`(1) Strength or Weakness of the Plaintiff’s Mark. The more the consuming public
`recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more
`likely it is that consumers would be confused about the source of an allegedly infringing product if
`the product bears a similar mark.
`
`(2) Defendant’s Use of the Mark. If the challenged use appears on the same, related, or
`complementary kinds of goods to the plaintiff’s goods, there may be a greater likelihood of
`confusion about the source of the goods than otherwise.
`
`(3) Similarity to Plaintiff’s Marks. If the overall impression created by the plaintiff’s
`trademark in the marketplace is similar to that created by the challenged use in appearan