Copyright Reasonable Royalty Damages Not Available for Breach of Contract Claim

In a June 17, 2013 ruling, Judge Katherine B. Forrest dismissed plaintiff Jill Stuart (Asia) LLC’s remaining breach of contract claim against Sanei International Co., Ltd., finding that the plaintiff had not suffered any damages as a matter of law. The plaintiff had originally asserted claims for trademark infringement and dilution, unfair competition, copyright infringement and breach of contract. Judge Forrest dismissed all the claims except the breach of contract claim. The plaintiff then asserted that it had suffered two types of damages on the breach of contract claim, damages to its brand from the defendant’s use of the plaintiff’s copyrighted pattern, and for a reasonable royalty for the unauthorized use. In response to the defendant’s motion for summary judgment because of no compensable damages, Judge Forrest dismissed the claim. The Court ruled that the plaintiff had failed to raise a triable fact that it had been harmed because of the defendant’s unauthorized use. Judge Forrest also rejected the reasonable royalty claim, holding that the plaintiffs “point to no legal authority for their theory of ‘contractual copyright infringement’; rather, plaintiffs appear to attempt an end run around the Court’s . . . Order dismissing their copyright claims.”