Fishman Transducers, Inc. v. Paul, --- F.3d ---, 2012 WL 2542879 (1st Cir. July 3, 2012)

Plaintiff was in the business of developing and manufacturing music equipment, including a line of pickups for acoustic guitars. Defendants included HSN, a sister company of the Home Shopping Network, and Stephen Paul, a musician who performs under the name Esteban. Paul and HSN collaborated on a line of Esteban guitars, and HSN sold 70,000 of those guitars, which “it identified in the programming and website . . . inaccurately . . . as containing Fishman pickups.” After Fishman complained to HSN about the use of his name, HSN immediately stopped referencing Fishman pickups, but Fishman still sued for trademark infringement and false advertising.

During trial, Defendants did not focus on whether they engaged in trademark infringement. Instead, they focused on proving that their violations were not willful. The district court instructed the jury that “plaintiff bore the burden of proving willfulness by clear and convincing evidence.” The jury found Defendants liable for trademark infringement and false advertising but also found that Defendants’ actions were not willful. Fishman appealed.

As a matter of first impression, the First Circuit addressed the proper burden of proof for a willfulness determination. The First Circuit determined that the preponderance of the evidence was the proper standard. However, the court also held that the district court’s error was harmless and affirmed the lower court’s decision.