Even counterfeiters can make nonconfusing uses where use clearly indicates compatibility rather than source

JUUL Labs, Inc. v. Chou, --- F.Supp.3d ----, No. CV 21-3056 DSF (PDx), 2023 WL 3886046 (C.D. Cal. Jun. 8, 2023)

Juul, which makes vaping products including charging docks/cases and cables for the main devices, sued defendants for trademark infringement and counterfeiting. After a bench trial, the court found defendants liable for some counterfeiting/infringement, but also rejected claims to the extent that they were based on product listings that merely suggested compatibility with Juul products—a careful result. I’ll skip most of this to focus on the interesting bit.

At one point, the relevant website listed a “JUUL Portable Charger,” showing a picture of an OVNS-branded charger. 

OVNS branded charger

It also listed a “Universal Magnetic JUUL Charging Cable” with no trademark visible on the product in the available picture.

charging cable

The court found likely confusion with regard to a “JUUL Mobile Phone Case,” but not as to the magnetic charging cables or portable chargers. As to the charging cables, “[t]he use of the word universal implies compatibility with JUUL and not that it is a JUUL product. There is nothing else in the product description or on the picture of it that indicates it is a JUUL product.” Similarly, the OVNS branding and the supplementary nature of the charger meant that the use indicated compatibility, not source. “Here the label and branding of another logo eliminates any likelihood of confusion.”

However, where there was infringement, it was willful, so this wasn’t a case of a court bending over backwards to avoid liability, but rather avoiding precedent that would sweep in legitimate sellers of compatible goods. The court awarded $2 million in statutory damages.