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Victory: January 2016: Victory in Trademark Jury Trial for DIRECTV

January 2016

The firm recently obtained a complete victory for DIRECTV in an unfair trade practices lawsuit brought by Exclaim Marketing. Exclaim is a marketing service that sells customer leads to third-party satellite television retailers. Part of its business strategy relied on listing its phone number under the name “DIRECTV” in phone books across the country. After DIRECTV instructed its third-party retailers to stop doing business with Exclaim due to the infringement, Exclaim sued DIRECTV for unfair and deceptive business practices.

After a seven-day trial, the jury agreed with our argument that DIRECTV’s instructions to its retailers were true or based on legitimate business interests. Notwithstanding that finding, the jury still awarded Exclaim $760,000 in damages, which was subject to trebling.  The jury however, also found that Exclaim had willfully infringed DIRECTV’s trademark and awarded DIRECTV $25,000 in damages.

In post-trial motions, we argued that Exclaim’s damages award could not stand because, given the jury’s finding that DIRECTV was protecting its business interests, DIRECTV’s conduct was not actionable as a matter of law. We further argued that the court should invoke its equitable discretion to increase the jury’s damages award to DIRECTV and should also issue DIRECTV a permanent injunction against Exclaim.

The court agreed with each of our post-trial arguments. It granted DIRECTV’s motion for judgment as a matter of law and vacated the jury’s $760,000 damages award to Exclaim. It also increased DIRECTV’s damages award from $25,000 to over $600,000, adopting DIRECTV’s argument that it was entitled to Exclaim’s profits. Last, the court granted DIRECTV’s proposed nationwide permanent injunction, which requires Exclaim to affirmatively request removal of any of its listings containing DIRECTV’s mark in any phone book directory in the country.

By the end of the lawsuit, the firm took the case from one where DIRECTV faced $30 million in damages to one where Exclaim got nothing and DIRECTV got over $600,000, as well as a sweeping injunction.