`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`ATARI INTERACTIVE, INC.,
`
`Plaintiff,
`
`v.
`
`REDBUBBLE, INC.,
`
`Defendant.
`
`
`
`
`
`Case No. 18-cv-03451-JST
`
`
`JURY INSTRUCTIONS
`
`
`
`
`
`Following are the jury instructions the Court currently intends to give in this matter,
`
`subject to further discussion with the parties regarding how to address the issue of compilation.
`
`IT IS SO ORDERED.
`
`Dated: November 2, 2021
`
`
`
`______________________________________
`JON S. TIGAR
`United States District Judge
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 2 of 70
`
`
`
`
`
`1.4 DUTY OF JURY
`
`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.
`
`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.
`
`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.
`
`
`
`
`
` 2
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 3 of 70
`
`
`
`
`
`1.6 BURDEN OF PROOF—PREPONDERANCE OF THE EVIDENCE
`
`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.
`
`You should base your decision on all of the evidence, regardless of which party presented
`
`it.
`
`
`
`
`
` 3
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 4 of 70
`
`1.9 WHAT IS EVIDENCE
`
`The evidence you are to consider in deciding what the facts are consists of:
`
`1.
`
`the sworn testimony of any witness;
`
`the exhibits that are admitted into evidence;
`
`any facts to which the lawyers have agreed; and
`
`any facts that I have instructed you to accept as proved.
`
`2.
`
`3.
`
`4.
`
`
`
`
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 5 of 70
`
`
`
`
`
`1.10 WHAT IS NOT EVIDENCE
`
`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:
`
`
`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.
`
`
`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.
`
`
`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.
`
`
`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.
`
`
`
`
`
`
`
`
` 5
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 6 of 70
`
`
`
`
`
`1.11 EVIDENCE FOR LIMITED PURPOSE
`
`Some evidence may be admitted only for a limited purpose.
`
`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.
`
`
`
`
`
`
`
` 6
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 7 of 70
`
`
`
`
`
`1.12 DIRECT AND CIRCUMSTANTIAL EVIDENCE
`
`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.
`
`
`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.
`
`
`
`
`
` 7
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 8 of 70
`
`
`
`
`
`1.13 RULING ON OBJECTIONS
`
`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.
`
`
`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.
`
`
`
`
`
` 8
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 9 of 70
`
`
`
`
`
`1.14 CREDIBILITY OF WITNESSES
`
`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.
`
`
`In considering the testimony of any witness, you may take into account:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`the opportunity and ability of the witness to see or hear or know the things testified
`to;
`
`the witness’s memory;
`
`the witness’s manner while testifying;
`
`the witness’s interest in the outcome of the case, if any;
`
`the witness’s bias or prejudice, if any;
`
`whether other evidence contradicted the witness’s testimony;
`
`the reasonableness of the witness’s testimony in light of all the evidence; and
`
`any other factors that bear on believability.
`
`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.
`
`
`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.
`
`
`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.
`
`
`
`
`
` 9
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 10 of 70
`
`
`
`
`
`1.20 BENCH CONFERENCES AND RECESSES
`
`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.
`
`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.
`
`
`
`
`
`
`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 11 of 70
`
`
`
`
`
`2.2 STIPULATIONS OF FACT
`
`The parties have agreed to certain facts to be placed in evidence as Exhibit No. 300. You
`must therefore treat these facts as having been proved.
`
`
`
`
`
`
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 12 of 70
`
`
`
`
`
`2.4 DEPOSITION IN LIEU OF LIVE TESTIMONY
`
`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.
`
`
`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.
`
`Do not place any significance on the behavior or tone of voice of any person reading the
`questions or answers.
`
`
`
`
`
`
`12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 13 of 70
`
`
`
`
`
`2.13 EXPERT OPINION
`
`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.
`
`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.
`
`
`
`
`
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 14 of 70
`
`
`
`
`
`2.14 CHARTS AND SUMMARIES NOT RECEIVED IN EVIDENCE
`
`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.
`
`
`
`
`
`
`14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 15 of 70
`
`
`
`
`
`2.15 CHARTS AND SUMMARIES RECEIVED IN EVIDENCE
`
`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.
`
`
`
`
`
`
`15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 16 of 70
`
`
`
`
`
`2.16 EVIDENCE IN ELECTRONIC FORMAT
`
`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.
`
`
`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.
`
`
`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.
`
`
`
`
`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 17 of 70
`
`
`
`
`
`4.2 LIABILITY OF CORPORATIONS
`
`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.
`
`
`
`17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 18 of 70
`
`
`
`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 markete, or by
`using it before the alleged infringer. Rights in a trademark are obtained only through commercial
`use of the mark.
`
`
`Trademark Interests
`
` A
`
` trademark owner may enforce the right to exclude others in an action for infringement
`and/or false designation of origin.
`
`
`Trademark Licensing
`
`
`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
`
`
`18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 19 of 70
`
`
`
`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.
`
`
`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.
`
`
`The Defendant’s Burden of Proof
`
`
`The defendant, Redbubble, contends that, even if Atari meets its burden of proof, the
`affirmative defense of fair use 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 persons as that term is used in these instructions.
`
`
`
`
`
`
`
`19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 20 of 70
`
`
`
`
`
`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
`
`
`
`
` person who uses the trademark of another may be liable for damages.
`
`
`
`
`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 21 of 70
`
`
`
`
`
`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 varies 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:
`
`
`1.
`
`2.
`
`
`
`
`
`
`
`infringing plaintiff’s registered trademark rights, by using a trademark in a manner
`likely to cause confusion among consumers; and
`
`counterfeiting plaintiff’s registered trademarks.
`
`
`
`
`21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 22 of 70
`
`
`
`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.
`
`The ATARI “Fuji” logo and PONG are valid, protectable trademarks;
`
`
`
`
`
`2.
`
`3.
`
`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.
`
`
`
`
`
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 23 of 70
`
`
`
`
`
`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 81 (the ATARI mark) and 82 (the PONG mark) 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.
`
`
`
`
`
`
`23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 24 of 70
`
`
`
`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 appearance, sound,
`or meaning, there is a greater chance that consumers are likely to be confused. Similarities in
`appearance, sound or meaning weigh more heavily than differences in finding the marks are
`similar.
`
`(4) Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to
`instances of actual confusion, this strongly suggests a likelihood of confusion. However actual
`confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not
`occur, the challenged use of the trademark may still be likely to cause confusion. As you consider
`whether the challenged use creates for consumers a likelihood of confusion with the plaintiff’s
`trademark, you should weigh any instances of actual confusion against the opportunities for such
`confusion. If the instances of actual confusion have been relatively frequent, you may find that
`there has been substantial actual confusion. If, by contrast, there is a very large volume of sales,
`but only a few isolated instances of actual confusion you may find that there has not been
`substantial actual confusion.
`
`(5) Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify
`similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s
`mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the
`absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify
`similar goods may indicate a likelihood of confusion.
`
`(6) Marketing/Advertising Channels. If the plaintiff’s goods and the allegedly infringing
`products listed on Redbubble are likely to be sold in the same or similar stores or outlets, or
`advertised in similar media, this may increase the likelihood of confusion.
`
`
`
`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`
`
`Case 4:18-cv-03451-JST Document 244 Filed 11/02/21 Page 25 of 70
`
`
`
`(7) Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods
`or the more costly the goods, the more careful and discriminating the reasonably prudent
`purchaser exercising ordinary caution may be. They may be less likely to be confused by
`similarities b