We have completed review of the Voltage Pictures, LLC lawsuits filed in Marion County, Oregon in connection with Dallas Buyers Club.
Instead of suing for copyright infringement, conversion or negligence, Voltage has stated claims against the many Does for violations of the Oregon Trademark Act, ORS 647. As with trademarks protected by the federal Lanham Act, the Oregon Trademark Act is intended to protect words, names, symbols or designs used to distinguish goods or services promoted in commerce.
The Oregon Secretary of State maintains an registry of trademarks used in Oregon, and apparently Voltage Pictures has registered its own mark there. Voltage alleges in this case that:
The VOLTAGE PICTURES mark is unique, distinctive, and clearly visible in the presentation and the viewing of plaintiff”s motion picture
The VOLTAGE PICTURES mark is valuable, well known and famous as it is associated with numerous award winning motion pictures in addition to Dallas Buyers Club.
The complaint goes on to make various allegations about Bittorrent and other file-sharing clients, IP addresses, the bad acts of the Does, harms to the motion picture industry, and other statements that are essentially identical to many other complaints filed in Bittorrent copyright infringement cases (albeit in a more detailed fashion).
However, the Voltage complaint alleges that, by using Bittorrent to use, copy or distribute Dallas Buyers Club, the Does have infringed Voltage’s registered Oregon trademark.
The Oregon Trademark Act allows for remedies as follows:
647.105 Remedies for infringement.
(1) An owner of a mark registered under this chapter may proceed in a civil action to seek an injunction against the manufacture, use, display or sale of a counterfeit or imitation of the mark. A court of competent jurisdiction may:
(a) Grant injunctions to restrain the manufacture, use, display or sale as the court deems just and reasonable;.
(b) Require the defendant to pay to the owner all profits the defendant derived and all damages the owner suffered from the manufacture, use, display or sale; and
(c) Order counterfeits or imitations in the defendant’s possession or under the defendant’s control to be delivered to an officer of the court or the owner to be destroyed.
(2) If the court finds that the defendant acted in bad faith, with knowledge or otherwise according to the circumstances of the case, the court in the court’s discretion may enter a judgment in an amount not to exceed three times the sum of the defendant’s profits and the owner’s damages and reasonable attorney fees. If the court finds that the plaintiff acted in bad faith, vexatiously, wantonly or for oppressive reasons, the court in the court’s discretion may award reasonable attorney fees to the defendant.
Voltage has specifically asked for an award of attorneys fees in its complaint. However, it has otherwise only sought an injunction against further infringement, rather than lost profits or damages. This is likely because the Act states that a plaintiff cannot recover damages or lost profits unless the defendant has “appl[ied]” a counterfeit or imitation of a protected mark to a product, its packaging or advertising intended to promote the sales and distribution of goods and services. It is impossible to see how that could occur in a standard Bittorrent file download transaction.