Friday, August 26, 2016

Trader Joe's Co. v. Hallatt (9th Cir. - Aug. 26, 2016)

Here's a neat little trademark case from earlier today.

Michael Hallett lives in Washington state, buys a ton of products from Trader Joe's stores, drives 'em across the border to Canada, and then sells them (at a huge markup) in his own store -- called "Pirate Joe's" -- that has a nearly identical logo to Trader Joe's.  Trader Joe's isn't psyched about that, tries to stop Mr. Hallett from shopping at its stores, but Mr. Hallett uses disguises and other means to keep buying Trader Joe's products and supplying his own "Pirate Joe's" stores.

So Trader Joe's sues, claiming that Mr. Hallett is infringing its trademark.

The question here is whether U.S. trademark laws apply to Mr. Hallett's activities, a ton of which are in Canada.

The Ninth Circuit says that they do, reversing the district court's decision to the contrary.

So it's Traders 1, Pirates 0.

Oh, one more thing.

Judge Christen's opinion cites a particular Ninth Circuit case -- Reebok v. Marnatech, 972 F.2d 552 (9th Cir. 1992) -- around ten times or so.  That's not especially surprising, because Reebok involved a similar issue involving the extraterritorial reach of U.S. trademark laws over someone who allegedly sold counterfeit Reebok shoes over the border in Mexico.  I was particularly pleased to see that case cited so much if only because that opinion was authored by Judge Reinhardt during my clerkship with him.  So very, very long ago.  Yet I knew that case well.

So that was nice.  A blast from the past, as it were.

But my fond memories suddenly turned to horror on page 26 of Judge Christen's opinion.

In the middle of that page, Judge Christen includes a particular quote from Judge Reinhardt's prior Reebok opinion.  That quote reads:  "See Reebok, 970 F.2d at 557 (finding American court to be in a superior enforcement position vis-à-vis its Mexican counterparts because '[e]ach of the defendants, their principle places of business, and the vast majority of their assets are located in the United States'")."  (My emphasis added.)

No.  Please God, no.  Please don't tell me that when that opinion was drafted and published, it used the erroneous word "principle" for the term "principal place of business".  Yes, I fully understand that I am terrible at spelling, and grammar, and pretty much everything else remotely associated with the English language.  But if an opinion by Judge Reinhardt during my clerkship went out that made that mistake -- and I can assure you that it wouldn't have been Judge Reinhardt's mistake -- and then that mistake was reiterated yet again in other subsequent published opinions, I'd be embarrassed as well as horrified.  Please tell me it's not true.

So I went back to the original opinion and looked it up.


The Reebok opinion uses the words "principal" and "principle" an even dozen times.  And uses the right word every single time.  Today's opinion by Judge Christen quotes Judge Reinhardt as writing "principle places of business," but -- thankfully -- that's not what he actually wrote.  His opinion says "principal places of business."

And I let out a huge sigh of relief when I saw that.

Judge Christen can leave the opinion as it is if she wants, of course.  But she might want to do Judge Reinhardt a solid and edit the quote.

That way no one feels shame.