Dish Network L.L.C. v. Siddiqi

Background

Dish Network L.L.C. brought claims under the federal Lanham Act and state law against Imtiyaz Siddiqi, individually and doing business as Global Telecommunications and Global Communications. The pending motion concerned only Dish Network’s claims for contributory trademark infringement and vicarious trademark infringement.

Dish Network owns federally registered marks for “DISH” and “DISH NETWORK.” Beginning in early 2016, callers in Pakistan contacted Dish Network subscribers, used the DISH marks and Dish Network’s telephone number or name on caller identification, and falsely claimed that the subscribers needed equipment upgrades to maintain service. The callers directed subscribers to pay by credit card or to send checks and money orders to addresses and businesses associated with Siddiqi.

The opinion states that Siddiqi established and operated Global Communications and Global Business Company. He authorized the callers to use his business and address information, deposited checks and money orders into bank accounts under his control, and processed credit-card payments through merchant accounts he controlled. Siddiqi and the callers agreed to divide the proceeds, with Siddiqi receiving 20 percent and the callers receiving 80 percent. The opinion states that Siddiqi continued processing payments after being served with the complaint and after the parties’ first court appearance.

Siddiqi was represented by counsel but did not oppose the motion. The court nevertheless explained that an unopposed summary-judgment motion could be granted only if the motion and supporting materials showed that Dish Network was entitled to judgment as a matter of law.

Direct Trademark Infringement

Before deciding the two secondary-liability claims, the court found direct infringement by the callers. Dish Network’s registrations established protected marks, and the callers’ use of marks identical to DISH’s registered marks was inherently confusing. The court also found that confusing Dish Network’s customers was the callers’ goal. It therefore found direct trademark infringement as a matter of law.

Contributory Trademark Infringement

Contributory trademark infringement is secondary liability for intentionally inducing infringement or continuing to provide services to someone known, or reasonably believed, to be infringing. The court applied that theory to Siddiqi’s payment-processing services.

The court held that Siddiqi provided the payment-processing services that completed the callers’ scheme. It also held that he knew, had reason to know, or was willfully blind to the infringement. The court relied on payments referencing DISH or DISH NETWORK, numerous chargebacks and fraud complaints, the closure of Siddiqi’s first merchant account and placement of his name on a terminated-merchant list, his opening of another account in his wife’s name, and his continued processing of payments after the lawsuit began. The court granted summary judgment to Dish Network on this claim.

Vicarious Trademark Infringement

Vicarious trademark infringement requires more than knowledge of another person’s wrongdoing. The court described the required relationship as an apparent or actual partnership, authority to bind one another in transactions, or joint ownership or control over the infringing activity.

The court held that Siddiqi and the callers agreed to conduct the upgrade scheme, used Siddiqi’s business names and addresses, divided the proceeds, and depended on one another’s activities. The callers initiated payments and Siddiqi processed them and transmitted the callers’ share. Because both sides exercised control over essential parts of the scheme, the court held Siddiqi liable for vicarious trademark infringement and granted summary judgment on that claim.

Permanent Injunction

The court granted Dish Network a permanent injunction. It found that Dish Network had succeeded on the merits, that continued infringement would cause irreparable harm, that money damages were inadequate to prevent the harm, that the balance of hardships favored Dish Network, and that the public interest favored stopping the unlawful telemarketing scheme.

The injunction permanently barred Siddiqi from selling, offering for sale, or accepting payment for any product or service infringing any of Dish Network’s DISH marks.

Statutory Damages

The court found Siddiqi’s infringement willful because he knew of the infringement or was at least willfully blind to it. It awarded Dish Network $300,000 in statutory damages. The court considered, among other facts, that $132,429 of the checks and money orders deposited by Siddiqi came from Dish Network subscribers and that Siddiqi did not show that $185,793.26 in processed credit-card transactions was unrelated to the infringement.

Costs and Attorney’s Fees

The court held that this was an “exceptional case” under the Lanham Act and granted Dish Network’s request for costs and a reasonable attorney’s fee. Dish Network was directed to submit documentation supporting the amount of its costs and fees, and Siddiqi was permitted to oppose that fee application by the dates stated in the order.

Disposition

Judge Briccetti granted the motion for partial summary judgment and for an award of costs and attorney’s fees. The clerk was instructed to terminate the motion. The court also directed Dish Network to advise how it wished to proceed, if at all, on the remaining claims listed in the amended complaint; those claims were not resolved in this opinion.