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Fishman Transducers, Inc. v. Paul

United States Court of Appeals for the First Circuit

July 3, 2012, Decided

No. 11-1663


 [***1213]   [*189]  BOUDIN, Circuit Judge. This appeal concerns claims by Fishman Transducers, Inc. ("Fishman"), primarily for trademark infringement and false advertising under the Lanham Act, 15 U.S.C. § 1051 et seq. (2006), against HSN Interactive LLC ("HSN"), musician Stephen Paul and his company Daystar Productions. Fishman failed to get the relief it sought in the district court and now appeals. We refer to the Lanham Act throughout by its Title 15 section numbers rather than the sections in the original statute.

Fishman is a developer and manufacturer of electronic equipment,  [**2] specifically a highly-regarded line of acoustic equipment that can be attached to individual musical instruments to provide sound amplification. Fishman guitar "pickups" often include both a transducer and a preamplifier or equalizer, although the term can also refer to only the transducer. The Fishman transducer is a small device usually installed inside the guitar where it is not immediately visible.

HSN is a retailer of various consumer goods and sells products on its website; its sister company sells products on the television channel Home Shopping Network; for purposes of this case the two entities were treated as one. In late 2006, HSN sold through the website and television station about 70,000 "Esteban" guitars that it identified in the programming and website--inaccurately, it now concedes--as containing Fishman pickups. This trademark violation is the centerpiece of the litigation that led to this appeal.

Esteban is the performance name used by musician Stephen Paul who, with his company Daystar Productions, has collaborated with HSN since 2001 to market and sell Esteban guitar packages (usually a guitar equipped with a pickup as well as accessories such as a strap, case, amplifier  [**3] and instructional videos). Beginning in October 2006 on the HSN channel, Paul lauded Fishman pickups, emphasized that the guitars included them and boasted that a Fishman pickup alone would sell for as much as the full HSN package. Beginning in the second quarter of 2006, the HSN website simply listed a Fishman pickup as a specification of the guitars.

Several months after the television advertising began, Fishman contacted HSN and Daystar and demanded an end to claims in the broadcasts and on the website that the guitars contained Fishman pickups. HSN complied and ceased to make reference to Fishman pickups in its sales pitches and on its website. Fishman also brought suit in the district court, stating claims against HSN, Paul and Daystar under the Lanham Act for trademark violation and false advertising, the Massachusetts  [*190]  Consumer Protection Act, Mass. Gen. L. ch. 93A, and state common law trademark infringement and unfair competition.

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684 F.3d 187 *; 2012 U.S. App. LEXIS 13615 **; 103 U.S.P.Q.2D (BNA) 1211 ***; 2012-1 Trade Cas. (CCH) P77,962; 2012 WL 2542879

FISHMAN TRANSDUCERS, INC., Plaintiff, Appellant, v. STEPHEN PAUL, d/b/a Esteban; DAYSTAR PRODUCTIONS; HSN INTERACTIVE LLC, Defendants/Third-Party Plaintiffs-Appellees.FORCE USA, INC.; FORCE, LTD., Third-Party Defendants.

Subsequent History: As Amended July 26, 2012.


Fishman Transducers, Inc. v. Paul, 2011 U.S. Dist. LEXIS 32749 (D. Mass., Mar. 29, 2011)

Disposition: Affirmed.


guitars, pickups, willfulness, damages, profits, sales, infringement, trademark, products, district court, Lanham Act, cases, direct competition, false advertising, preponderance, supplied, district judge, customers, estimate, website, trademark infringement, advertising, violations, reckless, orders

Antitrust & Trade Law, Intellectual Property, Misuse of Rights, Copyright & Trademark Misuse Defenses, Trademark Law, Damages, Types of Damages, Costs & Attorney Fees, Federal Unfair Competition Law, False Advertising, General Overview, Treble Damages, Profits, Remedies, Equitable Relief, Equitable Accountings, Criminal Law & Procedure, Acts & Mental States, Mens Rea, Willfulness, Evidence, Burdens of Proof, Clear & Convincing Proof, Causes of Action Involving Trademarks, Infringement Actions, Burdens of Proof, Preponderance of Evidence, Compensatory Damages, Civil Procedure, Trade Practices & Unfair Competition, State Regulation, Claims