Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 1 of 7
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`ATARI INTERACTIVE, INC.,
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`Plaintiff,
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`v.
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`TEESPRING, INC.,
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`Case No. 19-cv-00111-JST
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`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANT’S
`MOTION FOR SUMMARY
`JUDGMENT
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`Defendant.
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`Re: ECF No. 88
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`Before the Court is Defendant Teespring, Inc.’s motion for summary judgment. ECF No.
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`88. The Court will grant the motion in part and deny it in part.
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`I.
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`BACKGROUND
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`Plaintiff Atari Interactive, Inc. brings this trademark and copyright infringement claim
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`against Defendant Teespring, Inc. Teespring operates a website through which users can upload
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`designs and select different types of products, including apparel, on which those designs will be
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`offered for sale. Teespring does not design its own products, nor does it manufacture products to
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`keep in stock. Instead, Teespring prints a product, or pays one of its manufacturers to print the
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`product, once a customer places an order.
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`Atari contends that Teespring users uploaded designs that infringed on Atari’s trademarks
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`and copyrights, and that Teespring knew of or was willfully blind to such infringement. Teespring
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`seeks summary judgment on all claims.
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`II.
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`JURISDICTION
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`This Court has jurisdiction pursuant to 28 U.S.C. § 1331.
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`III. LEGAL STANDARD
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`Summary judgment is proper when a “movant shows that there is no genuine dispute as to
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`Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 2 of 7
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`any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).
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`A dispute is genuine only if there is sufficient evidence “such that a reasonable jury could return a
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`verdict for the nonmoving party,” and a fact is material only if it might affect the outcome of the
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`case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When deciding a motion for
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`summary judgment, the court must draw “all justifiable inferences” in the nonmoving party’s
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`favor and may not weigh evidence or make credibility determinations. Id. at 255.
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`Where the party moving for summary judgment would bear the burden of proof at trial,
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`that party “has the initial burden of establishing the absence of a genuine issue of fact on each
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`issue material to its case.” C.A.R. Transp. Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474,
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`480 (9th Cir. 2000). Where the party moving for summary judgment would not bear the burden of
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`proof at trial, that party “must either produce evidence negating an essential element of the
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`nonmoving party’s claim or defense or show that the nonmoving party does not have enough
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`evidence of an essential element to carry its ultimate burden of persuasion at trial.” Nissan Fire &
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`Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000). If the moving party satisfies
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`its initial burden of production, the nonmoving party must produce admissible evidence to show
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`that a genuine issue of material fact exists. Id. at 1102-03. It is not the court’s duty “to scour the
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`record in search of a genuine issue of triable fact”; instead, the nonmoving party must “identify
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`with reasonable particularity the evidence that precludes summary judgment.” Keenan v. Allan,
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`91 F.3d 1275, 1279 (9th Cir. 1996) (citation omitted). If the nonmoving party fails to make the
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`required showing, the moving party is entitled to summary judgment. Celotex Corp. v. Catrett,
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`477 U.S. 317, 322-23 (1986).
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`IV. DISCUSSION
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`A.
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`Trademark Infringement
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`Teespring first argues that it cannot be held liable for trademark infringement because the
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`alleged use was aesthetically functional rather than source-identifying, and Atari has presented no
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`evidence that consumers purchase Teespring’s products because they associate the products with
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`Atari and not simply because they like the products’ design. However, Teespring incorrectly
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`places the burden of demonstrating aesthetic functionality on Atari. Registered trademarks, like
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`Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 3 of 7
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`those at issue in this case, are presumed to be non-functional, and it is Teespring that “must show
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`that the marks are functional.” Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062,
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`1072 (9th Cir. 2006). The test for aesthetic functionality is “whether protection of the feature as a
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`trademark would impose a significant non-reputation-related competitive disadvantage.” Id.
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`Teespring has cited “no evidence that consumers buy [Teespring’s] products solely because of
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`their ‘intrinsic’ aesthetic appeal,” and not because the designs are “tied to the reputation [of] and
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`association with” Atari. Id. at 1073-74. Accordingly, Teespring has not met its burden, and it is
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`not entitled to summary judgment on grounds of aesthetic functionality.
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`Teespring also moves for summary judgment on Atari’s counterfeiting claim. Its first
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`argument, that Atari cannot show use of a counterfeit mark, is unpersuasive. Teespring relies on
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`the conclusion in Gucci America, Inc. v. Guess?, Inc., that “courts have uniformly applied [the
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`counterfeiting] provision to products that are stitch-for-stitch copies of those of another brand.”
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`868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012) (emphasis added); see also id. at 253 (“As noted above,
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`courts have uniformly restricted trademark counterfeiting claims to those situations where entire
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`products have been copied stitch-for-stitch.”). However, the Gucci court did not cite any authority
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`to support that conclusion, nor has Teespring pointed to any.1 In addition, the previous paragraph
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`in the Gucci court’s decision focused on identity of the mark, not the product. Id. at 242; see also
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`id. at 247 (discussing similarities and dissimilarities between the registered and accused marks).
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`Teespring is correct that “[c]ounterfeiting is a more specialized case of trademark infringement,”
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`but the reason for that is not because counterfeiting requires an exact replica of the product; it is
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`“because a counterfeit ‘is a spurious mark which is identical with, or substantially
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`indistinguishable from, a registered mark.’” UL LLC v. Space Chariot Inc., 250 F. Supp. 3d 596,
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`607 (C.D. Cal. 2017) (quoting 15 U.S.C. § 1127). The “question is whether the marks, not the
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`goods, are substantially identical.” H-D U.S.A., LLC v. SunFrog, LLC, 311 F. Supp. 3d 1000,
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`1027 (E.D. Wis. 2018). Teespring’s motion does not argue that the marks themselves were not
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`1 Teespring cites to Align Technology, Inc. v. Strauss Diamond Instruments, Inc., to support its
`argument, but that case relied solely on the Gucci court’s unsupported conclusion. No. 18-cv-
`0663-TSH, 2019 WL 1586776, at * 11 (N.D. Cal. Apr. 12, 2019).
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`Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 4 of 7
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`identical, and it is not entitled to summary judgment on this basis.
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`Teespring next argues that Atari cannot demonstrate that Teespring intentionally used a
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`counterfeit mark with knowledge that the mark was counterfeit. This heightened knowledge is
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`required “to invoke § 1117’s special civil monetary remedies against counterfeiting.” State of
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`Idaho Potato Comm’n v. G&T Terminal Packaging, Inc., 425 F.3d 708, 721 (9th Cir. 2005); 15
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`U.S.C. § 1117(b)(1) (providing for treble damages for counterfeiting “if the violation consists of
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`. . . intentionally using a mark or designation, knowing such mark or designation is a counterfeit
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`mark”). Although the record demonstrates that Atari did not give Teespring any pre-suit
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`notification of its claims that Teespring was infringing Atari’s trademarks, and that Teespring
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`removed the allegedly offending products once it became aware of Atari’s infringement claims,
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`Atari may still be able to establish the requisite knowledge at trial. Teespring does not dispute that
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`some of the allegedly counterfeit products appeared in search results on Teespring’s website; that,
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`to appear in these results, the user who submitted the products must have had a trust score of at
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`least three; that trust scores, which start at zero and can go as high as five, are a proxy for how
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`likely a user is to violate Teespring’s terms and conditions; and that to receive a trust score of
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`three or higher, a user would have had to go through several manual reviews, including reviews of
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`the user’s product listings. A reasonable juror might conclude from this evidence that Teespring
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`employees must have known about the allegedly counterfeit products that appeared in the search
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`results. While Teespring argues that “[k]nowledge of a particular product’s existence does not
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`create knowledge of an infringement as a matter of law,” ECF No. 102 at 11, the supervisor of
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`Teespring’s trust and safety team testified that, prior to this lawsuit, she knew of Atari and
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`recognized its logo. ECF No. 88-14 at 8. She further testified that if one of the members of her
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`team had shown her some of the allegedly counterfeit products prior to receiving Atari’s
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`complaint, her response would have depended on the circumstances:
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`If this was from one creator, typically we would ask – we would
`reach out to that creator to see if they have permission to use –
`permission to use the design. But if it looks like this creator has lots
`of designs, not just Atari, then we would – I would ask her to take it
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`Id. Viewing these statements in the light most favorable to Atari, a reasonable juror might
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`Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 5 of 7
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`conclude that the supervisor recognized that the products copied Atari’s trademark, and that the
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`members of her team who performed manual reviews must also have known. Teespring is not
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`entitled to summary judgment on Atari’s counterfeiting claims.
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`Teespring argues that it is entitled to summary judgment on Atari’s indirect trademark
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`infringement claims “[b]ecause Atari has failed to establish its baseline direct trademark
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`infringement claims.” ECF No. 88 at 20. Having denied Teespring’s motion for summary
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`judgment on Atari’s direct trademark infringement claims, the Court also denies Teespring’s
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`motion on Atari’s indirect trademark infringement claims.
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`B.
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`Copyright Infringement
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`“To establish copyright infringement, two elements must be proven: (1) ownership of a
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`valid copyright, and (2) copying of constituent elements of the work that are original.” Feist
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`Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Atari relies on three copyright
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`registrations in this case: Atari Classics Evolved (PSP), Registration No. PA 1-746-829; Atari
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`Greatest Hits Volume I (DS), Registration No. PA 1-805-830; and Atari Greatest Hits Volume 2
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`(DS), Registration No. PA 1-805-832. ECF No. 88-10 at 5. The copyright registration certificates
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`do not themselves show what images are protected and instead include only general descriptors
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`like “Interactive Audio-Visual Work” and “Different graphics, game play, audio-visual materials
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`and instructional materials.” ECF Nos. 88-21 to 88-23.
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`This Court held in a related case that “screenshots of the game are sufficient to establish
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`the content of the protected audiovisual elements.” Atari Interactive, Inc. v. Redbubble, Inc., 515
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`F. Supp. 3d 1089, 1111 (N.D. Cal. 2021). However, in this case, Atari has failed to introduce any
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`admissible evidence of screenshots. Atari seeks to rely on examples of artwork contained in an
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`expert report, as well as on screenshots produced during discovery. ECF No. 112 at 20-21 (citing
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`to declarations and exhibits filed at ECF No. 112-8 at 2, 14-20, 133-36). But the expert report is
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`inadmissible because it is unsworn and attached only to the declaration of an attorney, who “can
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`neither swear to the truth of the opinions in the document nor authenticate it.” Santos v. TWC
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`Admin. LLC, No. CV 13-04799 MMM (CWx), 2014 WL 12558009, at *2 (C.D. Cal. Aug. 4,
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`2014). Similarly, the attorney’s declaration states only that the screenshots are a “true and correct
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`Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 6 of 7
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`copy of screenshots taken from Atari’s Greatest Hits Volume I.” ECF No. 112-8 at 2 (¶ 10). But
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`this neither indicates whether the purported screenshots came from the DS version of Atari’s
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`Greatest Hits Volume I, which is what the copyright registration covers, nor lays any other
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`foundation for connecting the screenshots to any of the registrations. Atari also cites to an exhibit
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`that appears to show video game covers and states that these images were “obtained from the
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`Copyright Office, showing the relevant deposit copies.” ECF No. 112 at 21. But the declaration
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`introducing such evidence states only that the cited exhibit is a “true and correct copy of a
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`document bearing bates stamps AT005575-76” and does not establish that the exhibit is what
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`Atari claims. ECF No. 112-8 at 3 (¶ 12).
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`Absent evidence of what work is covered by Atari’s copyrights, Teespring is entitled to
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`summary judgment on Atari’s copyright claims.
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`C.
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`Damages
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`Finally, Teespring seeks to preclude Atari from seeking actual damages; statutory damages
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`beyond the minimum amount; and enhanced damages based on willful infringement. Its first
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`argument is moot: Atari states that it “will seek to recover statutory damages at trial,” ECF No.
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`112 at 22, and does not intend to seek actual damages.
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`In a similar case involving infringement claims by Atari against a different defendant, this
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`Court explained that “Atari may seek an award of minimum statutory damages without disclosing
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`any damages calculations but, to avoid a potential windfall, it must provide some evidence of its
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`lost profits or [the defendant’s] profits if it seeks an award greater than the statutory minimum.”
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`Atari Interactive, Inc. v. Redbubble, Inc., 546 F. Supp. 3d 883, 888-89 (N.D. Cal. 2021). The
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`Court precluded Atari from introducing at trial evidence relevant to a statutory damages award that
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`was not produced during discovery, but it allowed Atari to present evidence the defendant had
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`produced related to its own revenue from sales of allegedly infringing products. Id. The Court
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`makes the same rulings in this case, where Atari has similarly failed to disclose any damages
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`calculations.
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`However, this case differs from Atari v. Redbubble in one important respect. In that case,
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`the Court concluded that Atari had not presented sufficient evidence to survive summary judgment
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`Case 4:19-cv-00111-JST Document 115 Filed 03/09/22 Page 7 of 7
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`on the question of willfulness. Id. at 885-86; Atari v. Redbubble, 515 F. Supp. 3d at 1116-17.
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`Here, by contrast, the Court concluded above that Teespring is not entitled to summary judgment
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`on the question of whether it had knowledge of infringing activity. Because willfulness can be
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`established by actual notice, Teespring is likewise not entitled to summary judgment on Atari’s
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`claims for enhanced damages based on willful infringement. See VHT, Inc. v. Zillow Group, Inc.,
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`918 F.3d 723, 748 (9th Cir. 2019).
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`Teespring’s motion for summary judgment on damages is granted in part and denied in
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`part. As in Atari v. Redbubble, “Atari may seek the minimum amounts of statutory damages. . . .
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`If it seeks more than the minimum amounts, it may rely . . . on documents produced by
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`[Teespring] showing [Teespring’s] revenues.” 546 F. Supp. 3d at 889. Atari may also rely on
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`evidence of willfulness, identified or disclosed prior to the close of fact discovery, to support a
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`statutory damages award above the minimum amounts.
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`CONCLUSION
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`Teespring’s motion for summary judgment is granted in part and denied in part. The
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`motion is denied as to Atari’s trademark claims, granted as to Atari’s copyright claims, and
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`granted in part and denied in part as to damages.
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`IT IS SO ORDERED.
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`Dated: March 9, 2022
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`______________________________________
`JON S. TIGAR
`United States District Judge
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