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1 The parties proposed to change the Instruction 7 which

appeared in the first set of jury instructions sent to the

parties. That instruction has been deleted. A different

instruction now appears as Instruction 7 in the attached jury

instructions.

1

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF CALIFORNIA

KEITH STAFFORD, an individual,)

) 2:04-cv-0047-GEB-PAN

Plaintiff, )

) TRANSMISSION TO PARTIES

) OF TRIAL DOCUMENTS

v. )

) 

UNITED TREASURES, INC., a )

Washington corporation, )

)

Defendant. )

)

On September 9, 2005, the parties submitted certain proposed

jury instructions. Most of the parties’ joint proposed instructions

have been incorporated into the attached revised instructions; the

verdict form reflects those changes to the jury instructions. The

reasons for certain revisions to the instructions are stated below.

The parties’ proposal to change Instruction 71 is not

accepted because it deviates from the Ninth Circuit’s model civil

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2 Instruction 35 appeared as Instruction 25 in the first

set of jury instructions sent to the parties. 

Instruction 12 appeared as Instruction 11 in the first

set of jury instructions sent to the parties.

3 Instruction 8 appeared as Instruction 9 in the first

set of jury instructions sent to the parties. 

Instruction 9 appeared as Instruction 10 in the first

set of jury instructions sent to the parties.

2

instruction number 3.6 by including an additional factor for the jury

to consider when evaluating a witness’s credibility that has not been

shown necessary.

The parties’ proposal to add language to what is now

Instruction 35 is not adopted because the requested addition is

duplicative of the language in what is now Instruction 12.2

Defendant’s objection to what are now Instructions 8 and 9,

which are similar to Ninth Circuit model instructions on the

“likelihood of confusion” element of trademark infringement, is

unpersuasive.3 To sustain Defendant’s objection would seem to require

the jury to speculate on the meaning of this element of the claim. 

However, it appears the parties agree that the “likelihood of

confusion” instruction could be simplified. This agreement appears

from each party’s argument relating to what is now Instruction 9. 

Defendant’s argument indicates that “likelihood of confusion” would be

established by use of the trademark after termination of the Licensing

Agreement. (Parties’ Joint Submission at 22.) Plaintiff’s argument

states that he “agrees with Defendant [that] . . . likelihood of

confusion is really not an issue and likely will be established by

proof of use after end of the license agreement.” (Id.) To avoid

instructing the jury on matters that are not pertinent to what is

really at issue, the parties should agree on a proposed instruction

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that could replace what is now Instruction 9. Cf. Achor v. Riverside

Golf Club, 117 F.3d 339, 341-42 (7th Cir. 1997) (indicating that an

instruction should help jurors concentrate on the issue at hand). 

Defendant objects to a portion of what was otherwise a

jointly proposed instruction relating to statutory damages for

copyright infringement. That portion of the proposed instruction has

been deleted.

Defendant requests that the jury instructions be modified to

include an instruction on “double recovery.” Permitting actual

damages under both the Lanham and Copyright Acts could constitute a

double recovery. See Nintendo of America, Inc. v. Dragon Pacific

Int’l, 40 F.3d 1007, 1011 n.1 (9th Cir. 1994). Therefore, the jury

will be instructed that when determining actual damages and/or

Defendant’s profits for a copyright violation it may not include those

damages caused by a trademark violation. The jury will be similarly

instructed as to the determination actual damages and/or Defendant’s

profits for a trademark violation.

Plaintiff requests an instruction on the effect of notice

being given to a person’s attorney. Plaintiff’s request is granted,

because under California law notice given to an attorney could be

deemed notice to the attorney’s client. CAL. CIV. CODE § 2332. The

language of the Licensing Agreement is too vague to conclude, as a

matter of law, that the parties have “contracted out of” this portion

of California law.

DATED: September 22, 2005

/s/ Garland E. Burrell, Jr.

GARLAND E. BURRELL, JR.

United States District Judge 

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