FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Y.Y.G.M. SA, DBA Brandy Melville, 

a Swiss corporation, 

Plaintiff-Appellant,

 v. 

REDBUBBLE, INC., 

Defendant-Appellee.

No. 21-56150 

D.C. No. 

2:19-cv-04618-

RGK-JPR 

OPINION

Y.Y.G.M. SA, DBA Brandy Melville, 

a Swiss corporation, 

Plaintiff-Appellee,

 v. 

REDBUBBLE, INC., 

Defendant-Appellant.

No. 21-56236 

D.C. No. 

2:19-cv-04618-

RGK-JPR 

Appeal from the United States District Court

for the Central District of California

R. Gary Klausner, District Judge, Presiding
2 Y.Y.G.M. SA V. REDBUBBLE, INC.

Argued and Submitted January 12, 2023

Pasadena, California

Filed July 24, 2023

Before: Consuelo M. Callahan, Ryan D. Nelson, and Holly 

A. Thomas, Circuit Judges.

Opinion by Judge R. Nelson

SUMMARY*

Trademark

The panel affirmed in part and vacated in part the district 

court’s judgment after a jury trial in an action brought under 

the Lanham Act against Redbubble, Inc., by Y.Y.G.M. SA, 

doing business as Brandy Melville.

Brandy Melville, a manufacturer of its own clothing, 

home goods, and other items, owns several trademarks, 

including the registered Brandy Melville Heart Mark and LA 

Lightning Mark. Brandy Melville alleged infringement by 

Redbubble, which owns and operates an online marketplace 

where artists can upload their work to be printed on various 

products and sold. The district court granted summary 

judgment to Redbubble on all of Brandy Melville’s claims 

except its contributory infringement and counterfeiting 

claims. The jury found Redbubble liable for (1) willful 

* This summary constitutes no part of the opinion of the court. It has 

been prepared by court staff for the convenience of the reader.
Y.Y.G.M. SA V. REDBUBBLE, INC. 3

contributory counterfeiting of the Heart Mark and Lightning 

Mark, (2) contributory infringement of those two marks, and 

(3) contributory infringement of unregistered trademarks 

that were “Brandy Melville” variations. After the jury’s 

verdict, the district court granted Redbubble’s motion for 

judgment as a matter of law on the contributory 

counterfeiting claim for the Heart Mark. The district court 

let the verdict stand for the remaining claims, and it denied 

Brandy Melville a permanent injunction, attorney fees, and 

prejudgment interest.

Vacating the district court’s order granting in part and 

denying in part Redbubble’s motion for judgment as a matter 

of law, the panel held that a party is liable for contributory 

infringement when it continues to supply its product to one 

whom it knows or has reason to know is engaging in 

trademark infringement. A party meets this standard if it is 

willfully blind to infringement. Agreeing with other circuits, 

the panel held that contributory trademark liability requires 

the defendant to have knowledge of specific infringers or 

instances of infringement. General knowledge of 

infringement on the defendant’s platform, even of the 

plaintiff’s trademarks, is not enough to show willful 

blindness. The panel remanded for reconsideration of 

Redbubble’s motion under the correct legal standard.

The panel held that, in granting judgment as a matter of 

law to Redbubble on the claim for contributory trademark 

counterfeiting as to the Heart Mark, the district court further 

erred by failing to evaluate the evidence of likelihood of 

confusion under the correct legal standard. The district court 

erroneously glossed over whether the Heart Mark was so 

strong and distinctive that its presence alone caused 

confusion. The district court also addressed whether the 

parties’ products were “stitch-for-stitch” copies, rather than 
4 Y.Y.G.M. SA V. REDBUBBLE, INC.

addressing whether, based on the record, confusion could 

have resulted because the products on Redbubble’s website 

bearing the Heart Mark were the kinds of trademarked goods 

that Brandy Melville sells.

The panel also vacated the district court’s denial of 

Brandy Melville’s motion to permanently enjoin Redbubble 

from referencing, mentioning, and using BRANDY 

MELVILLE, Brandy Melville’s registered trademarks, and 

Brandy Melville’s unregistered variations. The district court 

concluded that Brandy Melville’s pre-litigation delay 

rebutted a statutory presumption of irreparable harm, and the 

remaining testimony from a Brandy Melville employee 

could not establish irreparable harm. The panel held that the 

district court did not err by considering the delay, but it 

abused its discretion in determining that the statutory 

presumption was rebutted and that there was no irreparable 

harm because it improperly discounted the relevance of 

future harm. The panel remanded for the district court to 

reconsider, after redetermining Redbubble’s liability, how 

the existence of future harm affects irreparable harm and the 

other factors governing injunctive relief.

The panel affirmed the district court’s denial of 

prejudgment interest to Brandy Melville, which elected and 

was awarded statutory damages under 15 U.S.C. § 1117(c), 

rather than actual damages and profits under § 1117(a). The 

panel held that allowing prejudgment interest on statutory 

damages would be inconsistent with the rationale underlying 

statutory damages, which serve more purposes than only 

compensating the victim.
Y.Y.G.M. SA V. REDBUBBLE, INC. 5

COUNSEL

Christopher Landau (argued), Ellis George Cipollone 

O’Brien Annaguey LLP, Washington, D.C.; Keith J. 

Wesley, Ryan Q. Keech, and Jason Y. Kelly, Ellis George 

Cipollone O’Brien Annaguey LLP, Los Angeles, California;

for Plaintiff-Appellant.

Jospeh Gratz (argued) and Matthaeus Martino-Weinhardt, 

Morrison & Foerster LLP, San Francisco, California; 

Allyson R. Bennett, Morrison and Foerster LLP, Los 

Angeles, California; Kenneth B. Wilson, Coastwide Legal, 

Half Moon Bay, California; Daralyn J. Durie, Morrison & 

Foerster, San Francisco, California; for Defendant-Appellee.

OPINION

R. NELSON, Circuit Judge:

After a jury found that Redbubble, Inc. had violated 

Brandy Melville’s trademarks, the district court granted 

partial judgment as a matter of law to Redbubble on one 

trademark claim. Both parties appealed. Redbubble asks us 

to decide the knowledge standard governing contributory 

trademark liability, and Brandy Melville contends it was 

entitled to post-trial relief. We partially affirm, partially 

vacate, and remand. 

I

Y.Y.G.M. SA, doing business as Brandy Melville,

manufactures its own clothing, home goods, and other items. 

It owns several trademarks, including the Brandy Melville 
6 Y.Y.G.M. SA V. REDBUBBLE, INC.

Heart Mark (Heart Mark) and the LA Lightning Mark 

(Lightning Mark). The Heart Mark consists of the words 

“Brandy Melville” in black font with a pink heart in between 

them. It is registered for use on clothing, stickers, jewelry, 

and ornaments, and Brandy Melville sells signs and wall 

hangings bearing the Heart Mark. The Lightning Mark 

features the words “Los Angeles” in yellow font with the “L” 

styled like a lightning bolt. It is registered for use on 

clothing, and Brandy Melville sells t-shirts and hooded 

sweatshirts bearing the Lightning Mark.

Redbubble owns and operates an online marketplace 

where artists can upload their artwork to be printed on

various products and sold. Redbubble collects payment, 

sends the order to a manufacturer, arranges shipping, and 

handles refunds. Redbubble does not inspect goods before 

shipping, as third parties fulfill orders and ship products in 

Redbubble-branded packaging. Artists and consumers have 

no direct contact.

In 2018, Brandy Melville notified Redbubble of 

infringing products listed on Redbubble’s website. 

Redbubble removed those listings and requested that Brandy 

Melville notify it of additional listings it wanted removed. 

After finding additional infringing products, Brandy 

Melville sent a second notice the next day.

A year later, Brandy Melville sued Redbubble under 

various trademark theories. The district court granted 

summary judgment to Redbubble on all of Brandy Melville’s 

claims except the contributory infringement and 

counterfeiting claims. The parties went to trial on those

claims, and a jury found Redbubble liable for (1) willful 

contributory counterfeiting of the Heart Mark and Lightning 

Mark, (2) contributory infringement of those two marks, and 
Y.Y.G.M. SA V. REDBUBBLE, INC. 7

(3) contributory infringement of unregistered trademarks 

that were “Brandy Melville” variations. 

After the verdict, the district court granted Redbubble’s 

motion for judgment as a matter of law on the contributory 

counterfeiting claim for the Heart Mark because Brandy 

Melville failed to present evidence of any products on 

Redbubble’s website with a spurious Heart Mark similar to 

legitimate Brandy Melville products. The district court let 

the verdict stand for the remaining claims. 

The district court also denied Brandy Melville a 

permanent injunction, attorney fees, and prejudgment 

interest. First, it held that Brandy Melville’s one-year delay 

between finding infringing products on Redbubble’s website

and filing a lawsuit undercut the requisite irreparable harm. 

Second, it concluded that Brandy Melville was not entitled 

to attorney fees because the case was not “exceptional” 

under the Lanham Act, 15 U.S.C. § 1051, et seq. Finally, it 

held that 15 U.S.C. § 1117(a) does not allow prejudgment 

interest. 

Redbubble appeals the denial of judgment as a matter of 

law for the contributory infringement claims and for willful 

contributory counterfeiting of the Lightning Mark. 

Brandy Melville appeals the district court’s grant of 

judgment as a matter of law to Redbubble on the 

contributory counterfeiting claim for the Heart Mark, and the 

denial of a permanent injunction, attorney fees, and 

prejudgment interest. 

II

We have jurisdiction under 15 U.S.C. § 1121 and 28 

U.S.C. § 1291.
8 Y.Y.G.M. SA V. REDBUBBLE, INC.

“We review de novo a district court’s decision to grant 

or deny judgment as a matter of law.” Louis Vuitton 

Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 941 (9th 

Cir. 2011). 

“We review a trial court’s decision to deny injunctive 

relief for an abuse of discretion,” Westinghouse Elec. Corp. 

v. Gen. Cir. Breaker & Elec. Supply Inc., 106 F.3d 894, 903 

(9th Cir. 1997), but review the “legal standards it applied . . . 

de novo,” Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 

1132, 1135 (9th Cir. 1986). 

We review a decision whether to award fees under the 

Lanham Act for abuse of discretion. Nutrition Distrib. LLC 

v. IronMag Labs, LLC, 978 F.3d 1068, 1081 (9th Cir. 2020).

We review de novo a district court’s interpretation of 

whether prejudgment interest is permitted under the statute, 

Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 716 

(9th Cir. 2004), and for abuse of discretion the grant or denial 

of prejudgment interest, Acosta v. City Nat’l Corp., 922 F.3d 

880, 885 (9th Cir. 2019). 

III

A

We begin with Redbubble’s argument that the district 

court applied the wrong standard for contributory liability 

under the Lanham Act, a novel question before our court.

The Lanham Act provides a civil cause of action against 

anyone who “without the consent of the registrant” uses in 

commerce a “reproduction, counterfeit, copy, or colorable 

imitation of a registered mark in connection with the sale . . . 

of any goods or services on or in connection with which such 

use is likely to cause confusion, or to cause mistake, or to 
Y.Y.G.M. SA V. REDBUBBLE, INC. 9

deceive.” 15 U.S.C. § 1114(1)(a). A party that 

“intentionally induces another to infringe a trademark” or 

who “continues to supply its product to one whom it knows 

or has reason to know is engaging in trademark 

infringement” is “contributorially responsible for any harm 

done as a result of the deceit.” Inwood Lab’ys, Inc. v. Ives 

Lab’ys, Inc., 456 U.S. 844, 854 (1982). This appeal is about

the second form of contributory liability recognized in 

Inwood and the meaning of the “knows or has reason to 

know” standard. Id.

We have recognized that a party meets the “knows or has 

reason to know” standard if it is willfully blind to 

infringement. See Fonovisa, Inc. v. Cherry Auction, Inc., 76 

F.3d 259, 265 (9th Cir. 1996). Willful blindness requires (1) 

“subjective[ ] belie[f] that infringement was likely 

occurring” and (2) “deliberate actions to avoid learning 

about the infringement.” Luvdarts, LLC v. AT&T Mobility, 

LLC, 710 F.3d 1068, 1073 (9th Cir. 2013). In other words, 

the defendant must have “t[aken] active steps to avoid 

acquiring knowledge.” Id. Redbubble contends that willful 

blindness requires knowledge of specific infringers or 

instances of infringement. Brandy Melville argues that 

specific knowledge is not required because defendants have 

a duty to take reasonable corrective action upon gaining 

general awareness.

While this question is novel in our circuit, we do not 

write on a blank slate. For contributory copyright

infringement, we require knowledge of specific infringers or 

instances of infringement. See id. at 1072–73. In Luvdarts, 

we concluded that the defendant lacked specific knowledge 

despite receiving notices that were “150-page-long lists of 

titles” that the plaintiff had copyrighted. Id. We explained 

that these notices were insufficient because they did not
10 Y.Y.G.M. SA V. REDBUBBLE, INC.

“identify which of these titles were infringed, who infringed 

them, or when the infringement occurred.” Id. at 1073.

“Willful blindless of specific facts would establish 

knowledge for contributory liability,” we explained, but the 

plaintiff’s allegation of “indifferen[ce] to the risk of 

copyright infringement” was legally insufficient. Id. And 

because “trademark infringement liability is more narrowly 

circumscribed than copyright infringement,” the standard for 

contributory trademark infringement would be at least as 

demanding. See Fonovisa, 76 F.3d at 265.

Such a rule also accords with our sister circuits. In a case 

involving counterfeit Tiffany jewelry being sold on eBay, 

the Second Circuit held that “a service provider must have 

more than a general knowledge or reason to know that its 

service is being used to sell counterfeit goods” to be liable 

for contributory trademark infringement. Tiffany (NJ) Inc. 

v. eBay Inc., 600 F.3d 93, 107 (2d Cir. 2010). Instead, 

defendants must have “contemporary knowledge of which 

particular listings are infringing or will infringe in the 

future.” Id. (emphasis added); see also Omega SA v. 375 

Canal, LLC, 984 F.3d 244, 255 (2d Cir. 2021)

(“[C]ontributory trademark infringement based on willful 

blindness does not create liability simply because of a 

defendant’s ‘general knowledge as to counterfeiting on its’ 

property . . . or because a defendant ‘fail[ed] to anticipate 

that others would use its service to infringe a protected 

mark.’” (quoting Tiffany, 600 F.3d at 107, 110 n.15)). 

Because Tiffany “did not identify particular sellers” who 

were offering counterfeit goods and eBay removed 

counterfeit listings identified by other sources, eBay was not 

liable for contributory trademark infringement. Tiffany, 600 

F.3d at 109.
Y.Y.G.M. SA V. REDBUBBLE, INC. 11

The Fourth Circuit reached a similar conclusion. 

“[G]eneral knowledge that some percentage of the 

purchasers of a product or service is using it to engage in 

infringing activities” is insufficient for contributory 

trademark infringement because “the defendant must supply 

its product or service to ‘identified individuals’ that it knows 

or has reason to know are engaging in trademark 

infringement.” Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 

144, 163 (4th Cir. 2012). There, the plaintiff survived

summary judgment with evidence of “the dates when 

Rosetta Stone advised Google that a Sponsored Link was 

fraudulent, the domain names associated with each such 

Sponsored Link, the text of each Sponsored Link, and the 

date and substance of Google’s response.” Id. (citation 

omitted). This amounted to over 200 instances of 

infringement, and Google apparently allowed the same 

advertisers to use the Rosetta Stone mark after these notices. 

Id. This evidence precluded summary judgment because it 

established a question of fact as to whether Google refused

to act upon specific knowledge. Id. at 165.

So too in the Tenth Circuit. That court’s decision

concerned Google’s AdWords program, which allowed 

advertisers to bid on keywords that, when entered into 

Google’s search engine, returned the advertiser’s sponsored 

links. See 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 

1229, 1235 (10th Cir. 2013). 1-800 Contacts owned the 

mark “1800CONTACTS.” Id. After discovering that 

Google searches for its own mark resulted in paid ads for 

Lens.com websites, 1-800 Contacts sued Lens.com for 
12 Y.Y.G.M. SA V. REDBUBBLE, INC.

service-mark infringement.1 Id. Discovery revealed that 

Lens.com did not bid on 1-800 Contacts’s service mark, but 

two Lens.com affiliates (third parties who publish ads on its 

behalf) had bid on the keyword “1800Contacts” and its close 

variants. Id. at 1237. One of those affiliates had published 

an ad for a Lens.com website that used the phrase “1800 

Contacts.” Id.

The Tenth Circuit concluded, on summary judgment,

that “a rational juror could find that Lens.com knew that at 

least one of its affiliates was using 1-800’s service mark in 

its ads yet did not make reasonable efforts to halt the 

affiliate’s practice.” Id. at 1252. The identity of the affiliate 

did not matter because Lens.com did not need to “know the 

identity of the infringer to stop the allegedly infringing 

practice without affecting legitimate conduct[.]” Id. at 1254. 

Rather, once Lens.com “learned that one of its affiliates had 

used 1-800’s mark in the content of an ad,” sending an email 

blast to all affiliates forbidding such use would stop 

infringement without interfering with lawful conduct. Id. 

That said, the court recognized that the defendant “has no 

obligation under contributory-infringement doctrine to stop 

a practice . . . simply because the practice might be exploited 

by infringers.” Id. at 1253–54. But because Lens.com knew 

of a specific instance of infringement and was uniquely 

positioned to stop infringement without shutting down 

lawful business, its failure to do so could result in 

contributory liability.

1 A service mark is “similar to a trademark,” 1-800 Contacts, 722 F.3d 

at 1238, and is used “to identify and distinguish the services of one 

person . . . from the services of others and to indicate the source of the 

services,” 15 U.S.C. § 1127.
Y.Y.G.M. SA V. REDBUBBLE, INC. 13

Common to these cases is that willful blindness requires 

the defendant to be aware of specific instances of 

infringement or specific infringers. Without that knowledge, 

the defendant need not search for infringement. General 

knowledge of infringement on the defendant’s platform—

even of the plaintiff’s trademarks—is not enough to show

willful blindness. See Tiffany, 600 F.3d at 110 (“eBay 

appears to concede that it knew as a general matter that 

counterfeit Tiffany products were listed and sold through its 

website. . . . Without more, however, this knowledge is 

insufficient to trigger liability.”). We hold that willful 

blindness for contributory trademark liability requires the 

defendant to have specific knowledge of infringers or 

instances of infringement.

As for Brandy Melville’s contention that Redbubble had 

a duty to look for infringement, persuasive decisions from 

other circuits hold that the defendant has no such duty until 

it gains the specific knowledge necessary to trigger liability. 

“There is no inherent duty to look for infringement by others 

on one’s property.” Omega SA, 984 F.3d at 255; see also 

Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 

955 F.2d 1143, 1149 (7th Cir. 1992) (The willful blindness 

standard “does not impose any duty to seek out and prevent 

violations.”). Instead, willful blindness arises when a 

defendant was “made aware that there was infringement on 

its site but . . . ignored that fact.” Omega SA, 984 F.3d at 

255 (quoting Tiffany, 600 F.3d at 110 n.15). 

Once a defendant knows about specific instances of 

infringement, “bona fide efforts to root out infringement” 

could “support a verdict finding no liability, even if the 

defendant was not fully successful in stopping 

infringement.” Id. The duty to stop (or root out)

infringement does not kick in, however, until the defendant 
14 Y.Y.G.M. SA V. REDBUBBLE, INC.

has that specific knowledge. And, again, that duty only 

covers specific instances of infringement the defendant 

knows or has reason to know about. See Tiffany, 600 F.3d at 

109–10 (holding that addressing specific notices of 

counterfeit Tiffany products was sufficient, even though 

eBay “knew as a general matter that counterfeit Tiffany 

products were listed and sold through its website.”).

What constitutes bona fide efforts will vary based on the 

context. For instance, a reasonable response for a flea 

market might not be reasonable for an online marketplace 

with millions of listings. Cf. Coach, Inc. v. Goodfellow, 717 

F.3d 498, 504 (6th Cir. 2013) (affirming contributory 

liability where defendant, the owner and operator of a flea 

market, “had actual knowledge that the infringing activity 

was occurring” and knew of “particular vendors” that were 

infringing yet failed to “deny access to offending vendors or 

take other reasonable measures”). Removing infringing 

listings and taking appropriate action against repeat 

infringers in response to specific notices may well be 

sufficient to show that a large online marketplace was not 

willfully blind. See Tiffany, 600 F.3d at 109 (“[A]lthough

[notices of claimed infringement] and buyer complaints gave 

eBay reason to know that certain sellers had been selling 

counterfeits, those sellers’ listings were removed and repeat 

offenders were suspended from the eBay site.”). 

We accordingly vacate and remand for reconsideration 

of Redbubble’s motion for judgment as a matter of law under 

the correct legal standard.2

2 We do not reach whether Brandy Melville showed willfulness to 

warrant heightened damages for the Lightning Mark. See § 1117(c)(2). 
Y.Y.G.M. SA V. REDBUBBLE, INC. 15

B

We next consider Brandy Melville’s appeal. Brandy 

Melville asserts that the district court erred by granting 

judgment as a matter of law to Redbubble on its contributory 

trademark counterfeiting claim as to the Heart Mark and 

denying a permanent injunction, attorney fees, and 

prejudgment interest. 

1

The district court set aside the jury verdict and granted 

judgment as matter of law to Redbubble on one trademark 

claim. It held that a contributory trademark counterfeiting 

violation had to occur with similar products. The district 

court held that Brandy Melville failed to show that any 

product bearing the Heart Mark from Redbubble’s website 

was similar to legitimate Brandy Melville products. Brandy 

Melville argues that it only needs to show that Redbubble 

used the trademark on goods of the type for which the Heart 

Mark is registered, rather than on goods comparable to 

Brandy Melville products being sold. Redbubble defends 

the district court’s reasoning and argues that counterfeiting 

requires comparison of the whole product, not just the 

marks. Although the district court may reach a different 

conclusion when it reconsiders contributory liability under 

the specific knowledge standard, a separate error

independently warrants vacating and remanding here. 

We instead vacate the district court’s willfulness finding and the 

damages awarded consistent with that finding. We remand for the 

district court to reconsider that issue after it revisits the motion for 

judgment as a matter of law, as its determination of liability precedes 

damages.
16 Y.Y.G.M. SA V. REDBUBBLE, INC.

Like trademark infringement claims, trademark 

counterfeiting requires the plaintiff to show a likelihood of 

confusion. See Arcona, Inc. v. Farmacy Beauty, LLC, 976 

F.3d 1074, 1079 (9th Cir. 2020). The use of a counterfeit “is 

obviously intended to confuse consumers,” and we have 

described a counterfeiting claim as “merely the hard core or 

first degree of trademark infringement.” Id. (cleaned up). 

The likelihood of confusion standard requires trial courts to

“review the product as a whole.” Id. at 1080. Even identical 

marks may be unlikely to confuse if the geographic market, 

industry, or product design sufficiently differentiates the 

counterfeit from the original. Id. On the other hand, “[t]here 

may be times the mark itself is so strong in the marketplace 

that the use of an identical mark by itself may cause 

consumer confusion, even if other aspects of the products are 

different.” Id. at 1080 n.4.

The district court erred by glossing over whether the 

Heart Mark was so strong and distinctive that its presence 

alone causes confusion. It also erred because it analyzed the 

wrong question. The question is not, as the district court 

concluded, whether products are “stitch-for-stitch” copies; it 

is whether, based on the record, confusion could have 

resulted because the products on Redbubble’s website 

bearing the Heart Mark are the kinds of trademarked goods 

Brandy Melville sells. 

The Lanham Act defines a counterfeit as “a spurious 

mark which is identical with, or substantially 

indistinguishable from, a registered mark.” 15 U.S.C. 

§ 1127. And a “trademark” is “any word, name, symbol, or 

device, or any combination thereof” that is “used by a person 

. . . to identify and distinguish his or her goods, including a 

unique product, from those manufactured or sold by 
Y.Y.G.M. SA V. REDBUBBLE, INC. 17

others . . . .” Id. The text does not require counterfeit goods 

to be exact replicas of existing merchandise. 

This makes sense given that a “strong and distinctive” 

trademark may “have acquired great fame” on its own, to the 

point that its mere presence confuses, even on different 

products. Playboy Enters., Inc. v. Baccarat Clothing Co., 

692 F.2d 1272, 1274 (9th Cir. 1982); see also Arcona, 976 

F.3d at 1080 n.4. Confusion is more likely here because 

Redbubble’s website sells “exact copies” of the Heart Mark

on trademarked goods that Brandy Melville sells (home 

décor) and other goods for which its trademark is only 

registered (stickers). See Au-Tomotive Gold, Inc. v. 

Volkswagen of Am., Inc., 457 F.3d 1062, 1076 (9th Cir. 

2006). The key inquiry is whether there is likelihood of 

confusion, not whether the products are seemingly identical. 

See State of Idaho Potato Comm’n v. G & T Terminal 

Packaging, Inc., 425 F.3d 708, 720–22 (9th Cir. 2005)

(likelihood of confusion from unlicensed use of service mark 

where mark owner sells nothing).

The district court failed to evaluate the evidence of 

confusion under the correct legal standard. The evidence 

that Brandy Melville produced at trial could support a jury 

finding of likelihood of confusion. Brandy Melville offered 

screenshots from Redbubble’s website of a metal print of the 

Heart Mark, a wall tapestry featuring the Heart Mark 

repeated over multiple rows, and a sticker with the Heart 

Mark. Brandy Melville’s executive Vice President and 

Chief Financial Officer testified that he saw the Heart Mark 

on t-shirts and hats on Redbubble. Brandy Melville also 

introduced a spreadsheet of Redbubble items substantially 

like the Heart Mark, including stickers. As for Brandy 

Melville’s own products, it submitted photos of its signs and 

wall hangings bearing the Heart Mark. The Patent and 
18 Y.Y.G.M. SA V. REDBUBBLE, INC.

Trademark Office Registration for the Heart Mark says that 

it is used with “stickers,” “hats,” and “tee-shirts,” among 

other items. The district court should have evaluated 

whether this evidence supported a likelihood of confusion 

without requiring a stitch-for-stitch copy.

Because we conclude that the district court must 

reevaluate whether to enter judgment as a matter of law on

the contributory liability claims, the district court may 

reevaluate the likelihood of confusion in light of those 

rulings on remand. We therefore vacate the district court’s 

partial grant of judgment as a matter of law to Redbubble

and remand for further proceedings consistent with this 

opinion. 

2

Next, Brandy Melville appeals the district court’s denial 

of a permanent injunction. Separate from the need to 

reevaluate the merits on remand, the district court’s analysis 

on remand requires correction of errors in its evaluation of 

whether Brandy Melville experienced irreparable harm. 

Normally, a party seeking a permanent injunction must 

show “(1) that it has suffered an irreparable injury; (2) that 

remedies available at law, such as monetary damages, are 

inadequate to compensate for that injury; (3) that, 

considering the balance of hardships between the plaintiff 

and defendant, a remedy in equity is warranted; and (4) that 

the public interest would not be disserved by a permanent 

injunction.” eBay Inc. v. MercExchange, LLC, 547 U.S. 

388, 391 (2006); see also La Quinta Worldwide LLC v. 

Q.R.T.M., S.A. de C.V., 762 F.3d 867, 879 (9th Cir. 2014) 

(applying eBay factors in trademark infringement case). The 

Lanham Act adds a statutory layer to the irreparable harm 

analysis for trademark infringement. The Act benefits 
Y.Y.G.M. SA V. REDBUBBLE, INC. 19

trademark holders by creating “a rebuttable presumption of 

irreparable harm” when a permanent injunction is sought to 

remedy an established trademark violation. 15 U.S.C. 

§ 1116(a).

Brandy Melville sought to permanently enjoin 

Redbubble from referencing, mentioning, and using 

BRANDY MELVILLE, Brandy Melville’s registered 

trademarks, and Brandy Melville’s unregistered variations. 

The district court concluded that Brandy Melville’s prelitigation delay rebutted the statutory presumption. Lacking 

the benefit of the presumption, the district court found that 

the remaining testimony from a Brandy Melville employee

could not establish irreparable harm. Brandy Melville 

argues that pre-litigation delay is legally irrelevant to the

permanent injunction irreparable harm analysis and 

alternatively that the district court abused its discretion. 

Certainly, the movant’s delay is relevant to a permanent 

injunction. Extreme delay in seeking relief, for example, can 

give rise to laches, an affirmative defense to a permanent 

injunction. See Pinkette Clothing, Inc. v. Cosm. Warriors 

Ltd., 894 F.3d 1015, 1027 (9th Cir. 2018); Internet 

Specialties W., Inc. v. Milon-DiGiorgio Enters., Inc., 559 

F.3d 985, 989–90 (9th Cir. 2009) (“[Laches] embodies the 

principle that a plaintiff cannot sit on the knowledge that 

another company is using its trademark, and then later come 

forward and seek to enforce its rights.”). And delay in 

seeking a preliminary injunction may also undermine a 

permanent injunction. See Simon Prop. Grp., LP v. 

mySIMON, Inc., 282 F.3d 986, 990–91 (7th Cir. 2002)

(considering voluntary abandonment of a preliminary 

injunction in determining irreparable harm for a permanent 

injunction). The district court did not err by considering the 

delay.
20 Y.Y.G.M. SA V. REDBUBBLE, INC.

That said, the district court abused its discretion in 

determining that the statutory presumption was rebutted and 

that there was no irreparable harm. An abuse of discretion 

occurs “where the district court applied the incorrect legal 

rule or where the district court’s application of the law to the 

facts was: (1) illogical; (2) implausible; or (3) without 

support in inferences that may be drawn from the record.” 

Ahanchian v. Xenon Pictures, Inc., 624 F.3d 1253, 1258 (9th 

Cir. 2010).

Generally, “delay is but a single factor to consider in 

evaluating irreparable injury; courts are ‘loath to withhold 

relief solely on that ground.’” Arc of Cal. v. Douglas, 757 

F.3d 975, 990 (9th Cir. 2014) (quoting Lydo Enters., Inc. v. 

City of Las Vegas, 745 F.2d 1211, 1214 (9th Cir. 1984)). A 

successful trademark plaintiff “is entitled to effective relief; 

and any doubt in respect of the extent thereof must be 

resolved in its favor as the innocent producer and against the 

[infringer], which has shown by its conduct that it is not to 

be trusted.” William R. Warner & Co. v. Eli Lilly & Co., 265 

U.S. 526, 532 (1924); accord Levi Strauss & Co. v. Shilon, 

121 F.3d 1309, 1314 (9th Cir. 1997).

The significance of the delay depends on context. For 

example, “tardiness is not particularly probative in the 

context of ongoing, worsening injuries.” Arc of Cal., 757 

F.3d at 990. Meanwhile, delay can be dispositive when its 

length substantially outweighs any upsides from the 

injunction. For instance, in the context of a preliminary 

injunction, a three-year delay between when the trademark 

holder learned of the infringement and when it filed suit

revealed that “[a]ny injury that [the trademark holder] would 

suffer before trial on the merits would be a relatively short 

extension of the injury that [the trademark holder] 
Y.Y.G.M. SA V. REDBUBBLE, INC. 21

knowingly suffered for three years before it filed suit.” GTE 

Corp. v. Williams, 731 F.2d 676, 679 (10th Cir. 1984).

We have emphasized that the Lanham Act’s statutory 

presumption underscores the trademark holder’s ability to 

control its trademark’s use. In AK Futures LLC v. Boyd 

Street Distro, LLC, we affirmed the district court’s finding 

that the trademark holder had shown irreparable harm. 35 

F.4th 682, 694 (9th Cir. 2022). There, the infringer 

submitted a declaration that it would stop selling the 

infringing products and argued that the declaration rebutted 

the presumption and the showing of irreparable harm. Id. 

Because the declaration “contain[ed] a number of 

admissions that call into question [the infringer’s] ability to 

adequately control the flow of products through its store,” 

suggesting “a business structure without safeguards against 

selling counterfeit products,” we concluded that the 

declaration did not rebut the presumption. Id.

The district court did not explain how a delay has equal 

bearing in the permanent injunction context (where the 

injunction protects established rights that a jury found were 

violated) rather than the preliminary injunction context 

(where the injunction preserves the status quo pending 

litigation). See Trump v. Int’l Refugee Assistance Project, 

582 U.S. 571, 580 (2017) (per curiam) (“The purpose of [a 

preliminary injunction] is not to conclusively determine the 

rights of the parties . . . but to balance the equities as the 

litigation moves forward.”). Nor did it explain how the 

one-year delay indicates that no future harms would result 

despite the jury’s verdict in Brandy Melville’s favor on its 

infringement claims and Brandy Melville’s testimony about 

future harms arising from a loss of control. See Herb Reed 

Enters., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239, 1250 

(9th Cir. 2013) (“Evidence of loss of control over business 
22 Y.Y.G.M. SA V. REDBUBBLE, INC.

reputation and damage to goodwill could constitute 

irreparable harm.”). A Brandy Melville employee testified

that Brandy Melville “take[s] pride in [the] authenticity of 

our product, and it seems that Redbubble is just making 

knockoffs of our brand, and that is not fair for our customers 

receiving a knockoff item that is not actually Brandy 

Melville.” Counterfeits also affect Brandy Melville’s sales

strategies because some marks, like the Lightning Mark, go 

in and out of circulation and are not always available for 

purchase. This testimony goes exactly to harms that arise 

from losing control of a trademark. See Herb Reed, 736 F.3d 

at 1250; see also adidas Am., Inc. v. Skechers USA, Inc., 890 

F.3d 747, 756–57 (9th Cir. 2018) (affirming irreparable 

harm finding based on employee testimony about efforts to 

control reputation and supply of products). The district court 

abused its discretion by discounting the relevance of future 

harm. See La Quinta Worldwide, 762 F.3d at 879 (failure to 

consider a relevant factor is an abuse of discretion).

We thus vacate the district court’s denial of a permanent 

injunction. We remand for the district court to reconsider, 

after redetermining Redbubble’s liability, how the existence 

of future harm affects irreparable harm and the other factors 

governing injunctive relief consistent with this opinion. See

id. at 880 (remanding for reconsideration where “district 

court’s analysis does not discuss a fact we think relevant to 

weighing the equities”).

3

Finally, Brandy Melville contends that the district court 

erred in denying prejudgment interest. Brandy Melville 

elected statutory damages under § 1117(c) but sought 

prejudgment interest under § 1117(a). The district court 

denied prejudgment interest because § 1117(a) does not 
Y.Y.G.M. SA V. REDBUBBLE, INC. 23

expressly provide for it. Noting that this is a novel issue in 

the Ninth Circuit, the district court explained that the express 

inclusion of prejudgment interest under § 1117(b)—the 

treble damages provision—suggests that Congress 

intentionally excluded prejudgment interest from § 1117(a). 

We affirm the district court, but for different reasons.

Section 1117 sets out three types of remedies. When a 

plaintiff establishes a violation of any registered mark, 

subsection (a) makes available to the plaintiff, subject to 

equitable considerations, “(1) defendant’s profits, (2) any 

damages sustained by the plaintiff, and (3) the costs of the 

action.” § 1117(a). For intentional violations, subsection (b) 

provides for “three times such profits or damages, whichever 

amount is greater, together with a reasonable attorney’s fee” 

and further specifies that “the court may award prejudgment 

interest on such amount[.]” § 1117(b). Subsection (c) 

allows a plaintiff to elect, “instead of actual damages and 

profits under subsection (a), an award of statutory damages” 

between $1,000 and $200,000 per counterfeit mark, or for a 

willful violation, up to $2,000,000 per counterfeit mark. 

§ 1117(c). Only § 1117(b) mentions prejudgment interest. 

Brandy Melville elected and was awarded statutory 

damages under § 1117(c). Though the district court did not 

address the effect of electing damages under § 1117(c), we 

find the rationale underlying statutory damages to be 

dispositive. “Prejudgment interest serves to compensate for 

the loss of use of money due as damages from the time the 

claim accrues until judgment is entered, thereby achieving 

full compensation for the injury those damages are intended 

to redress.” West Virginia v. United States, 479 U.S. 305, 

310 n.2 (1987); see also City of Milwaukee v. Cement Div., 

Nat’l Gypsum Co., 515 U.S. 189, 195 n.7 (1995). Statutory 

damages differ meaningfully from actual damages: while 
24 Y.Y.G.M. SA V. REDBUBBLE, INC.

actual damages only compensate the victim, statutory 

damages may compensate the victim, penalize the 

wrongdoer, deter future wrongdoing, or serve all those 

purposes. See Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 

F.3d 1007, 1011 (9th Cir. 1994); Skydive Ariz., Inc. v. 

Quattrocchi, 673 F.3d 1105, 1114–15 (9th Cir. 2012) 

(reversing enhancement of actual damages because district 

court enhanced damages to punish rather than compensate).

Allowing prejudgment interest on statutory damages 

may inflate them to amounts disproportionate to what 

Congress thought fit to remedy those harms. Cf. Desire, 

LLC v. Manna Textiles, Inc., 986 F.3d 1253, 1270 (9th Cir. 

2021) (expressing concern about “potentially astronomical 

statutory damages awards” resulting from the district court’s 

interpretation). Given the lack of textual authority and the 

potential to upset the balance Congress struck in setting the 

statutory amounts, we hold that prejudgment interest is not 

allowed under § 1117(c). Cf. Matter of Marshall, 970 F.2d 

383, 385–86 (7th Cir. 1992) (“There is no reason to think 

that adding prejudgment interest improves upon the 

accuracy of [a statutory damages provision’s] rough guess 

[on the actual damages].”). 

The express allowance of prejudgment interest in 

§ 1117(b) supports our conclusion. When Congress created

a remedy that operates differently—in that subsection, treble 

damages—it specified the availability of prejudgment 

interest. Section 1117(c), like § 1117(b), changes the 

calculation of damages by substituting a statutory amount, 

yet makes no mention of prejudgment interest. This 

variation is meaningful, and we presume that Congress’s 
Y.Y.G.M. SA V. REDBUBBLE, INC. 25

lack of express inclusion amounts to intentional exclusion.3 

See Bittner v. United States, 143 S. Ct. 713, 720 (2023) 

(“When Congress includes particular language in one 

section of a statute but omits it from a neighbor, we normally 

understand that difference in language to convey a difference 

in meaning (expressio unius est exclusio alterius).”).

We thus affirm the district court’s denial of prejudgment 

interest. See Dittman v. California, 191 F.3d 1020, 1027 n.3 

(9th Cir. 1999) (“[T]his court may affirm on any ground 

supported by the record.”).4

IV

We hold that contributory trademark liability requires 

knowledge of specific infringers or instances of 

infringement and accordingly vacate the district court’s 

order granting in part and denying in part judgment as a 

matter of law for Redbubble and remand for the district court 

to reconsider under that standard. We vacate and remand the

denial of a permanent injunction and attorney fees for the 

district court to reconsider consistent with this opinion. We 

affirm the denial of prejudgment interest. Each party shall 

bear its own costs on appeal.

3 Despite electing statutory damages under § 1117(c), Brandy Melville 

argues that it is entitled to prejudgment interest under § 1117(a) because 

subsection (a) is the general remedial section. Even if subsection (a)

permits prejudgment interest, Brandy Melville elected to recover 

statutory damages under subsection (c) “instead of actual damages and 

profits under subsection (a).” § 1117(c) (emphasis added). Thus, § 

1117(a) is inapplicable.

4 We vacate the district court’s order denying Brandy Melville attorney 

fees and remand for the district court to reconsider whether to award such 

fees following its evaluation of Redbubble’s motion for judgment as a 

matter of law.
26 Y.Y.G.M. SA V. REDBUBBLE, INC.

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED.