11th Cir. Pattern Jury Instr. (Civil) 10.6

[Name of plaintiff] claims that [name of defendant] has committed

counterfeiting by unlawfully using [name of plaintiff]’s trademark in the sale, offer

to sell, distribution, or advertising of goods without [name of plaintiff]’s

authorization. To prove a claim for counterfeiting, [name of plaintiff] must prove

the following facts by a preponderance of the evidence:

1. The trademark used by [name of defendant] is a copy that is

identical or substantially indistinguishable from [name of

plaintiff]’s trademark that is registered on the Principal Register of

the United States Patent and Trademark Office;

2. [Name of defendant]’s trademark was affixed without [name of

plaintiff]’s permission; and

3. [Name of defendant] used [name of plaintiff]’s trademark in the

sale, offering for sale, distribution, or advertising of goods that are

covered by [name of plaintiff]’s trademark registration.

_________________

Remedies

[This instruction should be given if [name of plaintiff] seeks actual damages and

[name of defendant]’s profits:

If you find that [name of plaintiff] proved that [name of defendant] engaged

in counterfeiting in violation of [name of plaintiff]’s trademark, you must consider

whether, and to what extent, money damages should be awarded.]

Plaintiff’s Actual Monetary Damages

You may award actual damages that [name of plaintiff] has sustained.

[Name of plaintiff] may recover the economic injury to [his/her/its] business

proximately resulting from [name of defendant]’s wrongful acts. You are not

required to calculate actual damages with absolute exactness – you may make

reasonable approximations. However, an award of actual damages to [name of

plaintiff] must be just and reasonable, based on facts, and proved by [name of

plaintiff] by a preponderance of the evidence.

Defendant’s Profits and Calculation of Profits

In addition to [name of plaintiff]’s actual damages, you may also make an

award based on an accounting of [name of defendant]’s profits if you find that:

1. [Name of defendant]’s conduct was willful and deliberate; or

2. [Name of defendant] was unjustly enriched; or

3. An award of [name of defendant]’s profits is necessary to deter

[name of defendant]’s future conduct.

A defendant commits a “willful violation” of a trademark when that

defendant knowingly and purposefully capitalized on and appropriated for itself

the goodwill of a plaintiff.

“Unjust enrichment” occurs if [name of defendant] received a benefit to

which [he/she/it] was not entitled.

In determining [name of defendant]’s profits, [name of plaintiff] is only

required to prove [name of defendant]’s gross sales. [Name of defendant] may then

prove the amount of sales made for reasons other than the counterfeiting. [Name of

defendant] also may prove [his/her/ its] costs or other deductions which [he/she/it]

claims should be subtracted from the amount of [his/her/its] sales to determine

[his/her/its] profits on such sales. Any costs or deductions that [name of defendant]

proves by a preponderance of the evidence are required to be subtracted from the

sales attributable to the counterfeiting and the difference is the amount that may be

awarded to [name of plaintiff].]

[This instruction should be given if plaintiff seeks statutory damages for

counterfeiting:

If you find that [name of plaintiff] proved that [name of defendant] violated

[name of plaintiff]’s trademark by counterfeiting, you must consider whether, and

to what extent, money damages should be awarded.

[Name of plaintiff] seeks what is known as an award of “statutory damage.”

Statutory damages are damages established by Congress in the Lanham Act. The

purpose of statutory damages is to: compensate the trademark owner, penalize the

counterfeiter, and deter future trademark counterfeiting. You may award statutory

damages between $1,000 and $200,000 for each trademark that [name of plaintiff]

proves [name of defendant] used, for each type of goods sold, offered for sale, or

distributed.

If you find that [name of plaintiff] proved that [name of defendant] knew

that the trademark [he/she/it] used was a counterfeit, you may award additional

statutory damages. It is not necessary that [name of defendant] knew that the mark

was registered by [name of plaintiff], only that [name of defendant] knew that the

trademark was the same or substantially indistinguishable from [name of

plaintiff]’s trademark.

If [name of plaintiff] proves that [name of defendant]’s use of the counterfeit

trademark was willful, then you may, but are not required to, increase the statutory

damage award to a maximum of $2,000,000 per type of goods sold, offered for

sale, or distributed.]

Counterfeiting

SPECIAL INTERROGATORIES TO THE JURY

Do you find by a preponderance of the evidence that:

1. [Name of plaintiff] has a registered trademark?

Answer Yes or No _____________

If your answer to this question is “ Yes,” go to Question No. 2. If your

answer is “No,” then your foreperson should sign and date the last page of

this verdict form.

2. [Name of plaintiff] gave permission for [his/her/its] trademark to be

affixed to [name of defendant]’s products?

Answer Yes or No _____________

If your answer is “No ,” go to Question No. 3. If your answer to this

question is “Yes,” then your foreperson should sign and date the last page of

this verdict form.

3. [Name of defendant] used a trademark which is identical or

substantially indistinguishable from [name of plaintiff]’s registered

trademark on goods that are covered by the registration?

Answer Yes or No _____________

If your answer to this question is “ Yes,” go to Question No. 4. If your

answer to this question is “No,” then your foreperson should sign and date

the last page of this verdict form.

4. [Name of defendant] used the counterfeit trademark in the sale,

offering for sale, distribution, or advertising of goods?

Answer Yes or No _____________

If your answer to this question is “ Yes,” go to Question No. 5. If your

answer to this question is “ No,” then your foreperson should sign and date

the last page of this verdict form.

[This special interrogatory should be used if plaintiff seeks actual

damages for counterfeiting:

5. [Name of plaintiff] has suffered actual damages?

Answer Yes or No _____________

If your answer to this question is “Yes,” in what amount?

$_______________________.]

[These interrogatories should be given if plaintiff seeks an A ccounting

of defendant’s profits for counterfeiting:

6. [Name of defendant]’s conduct was willful and deliberate, [name of

defendant] was unjustly enriched, or an award of [name of defendant]’s

profits is necessary to deter future conduct?

Answer Yes or No _____________

If your answer to this question is “Yes,” then go to Question No. 7. If

your answer to this question is “No,” then go to Question No. 8.

7. [Name of plaintiff]is awarded [name of defendant]’s profits?

Answer Yes or No _____________

If your answer to this question is “Yes,” in what amount?

$_______________________]

[These special interrogatories should be used if plaintiff seeks statutory

damages for counterfeiting:

8. At the time of the counterfeiting activity, [name of defendant] knew

that the trademark [he/she/it] used was a counterfeit?

Answer Yes or No _____________

If your answer to this question is “No,” then you may award statutory

damages between $1,000 and $200,000 per counterfeit mark, per type of

goods sold, offered for sale, or distributed. If your answer to this question is

“Yes,” then you may award statutory damages to a maximum of $2,000,000

per counterfeit mark per type of goods sold, offered for sale, or distributed.

9. [Name of plaintiff] is awarded statutory damages?

Answer Yes or No _____________

If your answer to this question is “Yes,” in what amount?

$_______________________]

SO SAY WE ALL.

___________________________

Foreperson’s Signature

DATE: ___________________