                                                                           FILED
                            NOT FOR PUBLICATION                             AUG 12 2010

                                                                       MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT

HYDRAMEDIA CORPORATION, a                        Nos. 09-55237
Washington corporation,
                                                 D.C. No. 2:06-cv-05293-DDP-JTL
              Plaintiff - Appellant,

  v.                                             MEMORANDUM *

HYDRA MEDIA GROUP INC., a
California corporation erroneously sued as
HydraMedia LLC, DBA Hydramedia,

              Defendant - Appellee.



HYDRAMEDIA CORPORATION, a                        Nos. 09-56047 & 09-56050
Washington corporation,
                                                 D.C. No. 2:06-cv-05293-DDP-JTL
             Plaintiff - Appellee - Cross-
Appellant,

  v.

HYDRA MEDIA GROUP INC., a
California corporation erroneously sued as
HydraMedia LLC, DBA Hydramedia,

           Defendant - Appellant -
Cross-Appellee.



        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
                    Appeal from the United States District Court
                       for the Central District of California
                    Dean D. Pregerson, District Judge, Presiding

                       Argued and Submitted August 4, 2010
                               Pasadena, California

Before: REINHARDT and SILVERMAN, Circuit Judges, and SINGLETON,
Senior District Judge.**

      Plaintiff HydraMedia Corporation appeals the district court’s ruling that

Defendant’s trademark infringement was not willful. Plaintiff also appeals the

district court’s denial of its motions for profits and attorney fees and the scope of

the district court’s injunction. Defendant cross-appeals the district court’s denial

of its motion for attorney fees. We have jurisdiction pursuant to 28 U.S.C. § 1291,

and we affirm.

      Plaintiff first argues that the district court erred in granting Defendant’s

motion for summary judgment as to willfulness. We review a grant of summary

judgment de novo, viewing the evidence in the light most favorable to the non-

moving party. Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 675–76 (9th

Cir. 2005). Defendant initially adopted the contested mark, HYDRAMEDIA,

before it knew that Plaintiff even existed. When Defendant discovered Plaintiff’s


      **      The Honorable James K. Singleton, United States District Judge for
the District of Alaska, sitting by designation.

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use of a similar mark, it relied on in-house counsel’s opinion that there was little

likelihood of confusion based on the companies’ distinct services. Defendant

enjoyed a strong reputation and there was no evidence that it sought to mislead

consumers or usurp any goodwill associated with Plaintiff’s mark. Under such

circumstances, Defendant’s infringement was not willful. See Lindy Pen Co, Inc.

v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993).

      Plaintiff next argues that the district court abused its discretion by refusing

to award an accounting of Defendant’s profits. Our decisions regarding an award

of profits emphasize the importance of willfulness in the analysis. See Lindy, 982

F.2d at 1405–06 (9th Cir. 1993) and Playboy Enter., Inc. v. Baccarat Clothing Co.,

Inc., 692 F.2d 1272, 1274–76 (9th Cir. 1982). “Indeed, this court has cautioned

that an accounting is proper only where the defendant is attempting to gain the

value of an established name of another.” Lindy, 982 F.2d at 1406 (internal

quotation omitted). Defendant was not trading off Plaintiff’s name. Defendant’s

infringement was not willful. The district court did not abuse its discretion by

denying Plaintiff’s motion for an award of profits.

      Plaintiff also argues that the district court abused its discretion by only

enjoining Defendant’s use of “Hydramedia” and not any of the “hydra” variants.

The decision to grant an injunction is “‘an act of equitable discretion by the district


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court.’” Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 1126, 1137–38 (9th Cir.

2006) (quoting eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).

Defendant had used marks similar to Hydramedia since its inception, without

complaint from Plaintiff. Weighing the hardships, the district court found that

Plaintiff would not suffer irreparable injury if the injunction were limited to the use

of Hydramedia, while Defendant would be substantially prejudiced by an

injunction that broadly covered all of the hydra variations. These findings are not

clearly erroneous and the court was within its discretion in limiting the scope of the

injunction.

      Finally, both parties appeal the district court’s denial of their motions for

attorney fees. We review a fees determination for an abuse of discretion under

both 15 U.S.C. § 1117(a), Earthquake Sound Corp. v. Bumper Indus., 352 F.3d

1210, 1216 (9th Cir. 2003), and 12 U.S.C. § 1927, Smith v. Lenches, 263 F.3d 972,

979 (9th Cir. 2001). Defendant’s infringement was not willful or malicious.

Therefore, this is not an “exceptional case” where fees are warranted. Earthquake,

352 F.3d at 1216. The district court was within its discretion in ruling that neither

party acted in bad faith in responding to discovery requests, and thus was within its

discretion in denying both parties’ motions for attorney fees.

      AFFIRMED.


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