FILED
NOT FOR PUBLICATION AUG 12 2010
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U .S. C O U R T OF APPE ALS
FOR THE NINTH CIRCUIT
HYDRAMEDIA CORPORATION, a Nos. 09-55237
Washington corporation,
D.C. No. 2:06-cv-05293-DDP-JTL
Plaintiff - Appellant,
v. MEMORANDUM *
HYDRA MEDIA GROUP INC., a
California corporation erroneously sued as
HydraMedia LLC, DBA Hydramedia,
Defendant - Appellee.
HYDRAMEDIA CORPORATION, a Nos. 09-56047 & 09-56050
Washington corporation,
D.C. No. 2:06-cv-05293-DDP-JTL
Plaintiff - Appellee - Cross-
Appellant,
v.
HYDRA MEDIA GROUP INC., a
California corporation erroneously sued as
HydraMedia LLC, DBA Hydramedia,
Defendant - Appellant -
Cross-Appellee.
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
Appeal from the United States District Court
for the Central District of California
Dean D. Pregerson, District Judge, Presiding
Argued and Submitted August 4, 2010
Pasadena, California
Before: REINHARDT and SILVERMAN, Circuit Judges, and SINGLETON,
Senior District Judge.**
Plaintiff HydraMedia Corporation appeals the district court’s ruling that
Defendant’s trademark infringement was not willful. Plaintiff also appeals the
district court’s denial of its motions for profits and attorney fees and the scope of
the district court’s injunction. Defendant cross-appeals the district court’s denial
of its motion for attorney fees. We have jurisdiction pursuant to 28 U.S.C. § 1291,
and we affirm.
Plaintiff first argues that the district court erred in granting Defendant’s
motion for summary judgment as to willfulness. We review a grant of summary
judgment de novo, viewing the evidence in the light most favorable to the non-
moving party. Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 675–76 (9th
Cir. 2005). Defendant initially adopted the contested mark, HYDRAMEDIA,
before it knew that Plaintiff even existed. When Defendant discovered Plaintiff’s
** The Honorable James K. Singleton, United States District Judge for
the District of Alaska, sitting by designation.
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use of a similar mark, it relied on in-house counsel’s opinion that there was little
likelihood of confusion based on the companies’ distinct services. Defendant
enjoyed a strong reputation and there was no evidence that it sought to mislead
consumers or usurp any goodwill associated with Plaintiff’s mark. Under such
circumstances, Defendant’s infringement was not willful. See Lindy Pen Co, Inc.
v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993).
Plaintiff next argues that the district court abused its discretion by refusing
to award an accounting of Defendant’s profits. Our decisions regarding an award
of profits emphasize the importance of willfulness in the analysis. See Lindy, 982
F.2d at 1405–06 (9th Cir. 1993) and Playboy Enter., Inc. v. Baccarat Clothing Co.,
Inc., 692 F.2d 1272, 1274–76 (9th Cir. 1982). “Indeed, this court has cautioned
that an accounting is proper only where the defendant is attempting to gain the
value of an established name of another.” Lindy, 982 F.2d at 1406 (internal
quotation omitted). Defendant was not trading off Plaintiff’s name. Defendant’s
infringement was not willful. The district court did not abuse its discretion by
denying Plaintiff’s motion for an award of profits.
Plaintiff also argues that the district court abused its discretion by only
enjoining Defendant’s use of “Hydramedia” and not any of the “hydra” variants.
The decision to grant an injunction is “‘an act of equitable discretion by the district
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court.’” Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 1126, 1137–38 (9th Cir.
2006) (quoting eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).
Defendant had used marks similar to Hydramedia since its inception, without
complaint from Plaintiff. Weighing the hardships, the district court found that
Plaintiff would not suffer irreparable injury if the injunction were limited to the use
of Hydramedia, while Defendant would be substantially prejudiced by an
injunction that broadly covered all of the hydra variations. These findings are not
clearly erroneous and the court was within its discretion in limiting the scope of the
injunction.
Finally, both parties appeal the district court’s denial of their motions for
attorney fees. We review a fees determination for an abuse of discretion under
both 15 U.S.C. § 1117(a), Earthquake Sound Corp. v. Bumper Indus., 352 F.3d
1210, 1216 (9th Cir. 2003), and 12 U.S.C. § 1927, Smith v. Lenches, 263 F.3d 972,
979 (9th Cir. 2001). Defendant’s infringement was not willful or malicious.
Therefore, this is not an “exceptional case” where fees are warranted. Earthquake,
352 F.3d at 1216. The district court was within its discretion in ruling that neither
party acted in bad faith in responding to discovery requests, and thus was within its
discretion in denying both parties’ motions for attorney fees.
AFFIRMED.
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