In a hotly disputed case involving dozens of claims and counterclaims, the firm recently obtained a complete victory for its client, including a permanent injunction, millions in damages, and more than $1 million in attorneys’ fees, all without the expense of a trial.
In 2012, the firm was retained to represent American Rena International Corporation—distributor of cosmetics products under the RENA and RENA BIOTECHNOLOGY trademarks—against a former sales agent who started selling competing products under a copycat brand called “aRena.” Within weeks of being engaged, the firm had obtained a far-reaching preliminary injunction from the Central District of California enjoining defendants from selling their infringing products and requiring them to turn those products over to the firm. The Ninth Circuit affirmed that injunction.
Defendants responded by upping the ante: they claimed for the first time that they had actually used their mark before American Rena, giving them priority and rendering American Rena the infringer. Defendants provided three consumer declarations attesting to early purchases of “aRena” products to substantiate this allegation.
The firm immediately took focused discovery into these declarations—and obtained proof that they were fabrications. The first came from an individual who does not exist. The second came from an individual who testified that she did not sign it and had never seen it. The third came from a witness who testified that she was tricked into signing the declaration, which she could not read. None of the witnesses had purchased defendants’ products at the points in time that defendants claimed.
Armed with this (and much more) evidence of 11 litigation misconduct, the firm moved for terminating sanctions—the most severe sanctions a court can impose. The district court granted that motion in full, and recently entered a final judgment dismissing defendants’ counterclaims, entering judgment against defendants on all of American Rena’s affirmative claims, awarding American Rena $1.2 million in attorneys’ fees, awarding American Rena millions more in damages, and making the preliminary injunction barring sales of defendants’ products permanent. It is very unusual for a federal court to grant relief of this magnitude in sanctions.
It took a year of tenacious efforts by the firm to obtain proof of defendants’ misconduct notwithstanding their efforts to cover up their tracks. Those efforts were clearly worthwhile.