Case3:13-cv-03688-JD Document99 Filed04/23/15 Page1 of 6
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`Case No. 13-cv-03688-JD
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`ORDER GRANTING MOTION FOR
`DEFAULT JUDGMENT
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`Re: Dkt. No. 91
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`FORMFACTOR, INC.,
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`Plaintiff,
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`v.
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`MR. PROBER TECHNOLOGY INC., et al.,
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`Defendants.
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`In this copyright infringement action, plaintiff FormFactor, Inc. (“FormFactor”) has moved
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`for default judgment against defendants Mr. Prober Technology, Inc. (“Mr. Prober”) and Dennis
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`Huang. The Court grants the motion.
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`BACKGROUND
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`This case involves the alleged infringement of FormFactor’s copyrights in software that is
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`“used to operate industrial semiconductor wafer prober inspection systems.” Dkt. No. 91 at 1.
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`These probers were built by Electroglas, Inc. and Electroglas International Inc. (together
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`“Electroglas”), which filed for bankruptcy in July of 2009. First Amended Complaint ¶ 17.
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`During a bankruptcy auction, FormFactor purchased Electroglas’ intellectual property rights
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`associated with its prober systems. Id. ¶ 18. FormFactor alleges that defendants Mr. Prober,
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`Mr. Huang, MPT Equipment, Inc. (“MPT”), and Long Nim have infringed its prober copyrights.
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`Id. ¶¶ 24-30. More specifically, FormFactor claims that Mr. Prober is “re-building, offering for
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`sale, and selling” Electroglas probers and software, without a license or other authorization. Id.
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`¶ 24.
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`Mr. Prober is a Taiwanese corporation and Mr. Huang, a resident of Taiwan, is its chief
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`executive. Id. ¶ 6. Mr. Huang is also a former employee of Electroglas. Id. ¶ 2. MPT is a
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`California corporation with its principal place of business in San Jose, and is the “United States
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`Case3:13-cv-03688-JD Document99 Filed04/23/15 Page2 of 6
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`subsidiary and/or affiliate of Mr. Prober.” Id. ¶ 9. Mr. Nim is the founder of Mr. Prober and the
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`president of MPT. Id. ¶¶ 6, 8. On June 3, 2014, MPT and Mr. Nim filed for bankruptcy. Dkt. No.
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`59. The proceedings against those parties are stayed, and this order does not pertain to them.
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`FormFactor filed the original complaint on August 8, 2013. Dkt. No. 1. Mr. Huang was
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`added as a defendant in FormFactor’s amended complaint, filed on June 10, 2014. Dkt. No. 63.
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`Mr. Prober and Mr. Huang have failed to answer FormFactor’s complaint or otherwise appear in
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`this matter. The clerk of the court entered default against Mr. Prober on September 11, 2014, and
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`against Mr. Huang on September 15, 2014. Dkt. Nos. 83-84. FormFactor filed this motion for
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`default judgment on November 18, 2014. Defendants have not responded or appeared in any way.
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`I.
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`JURISDICTION
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`DISCUSSION
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`In default judgment proceedings, the Court has an affirmative duty to consider whether it
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`has jurisdiction over the subject matter and parties to the case. See In re Tuli, 172 F.3d 707, 712
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`(9th Cir. 1999). Because this is a copyright infringement case, the Court has subject matter
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`jurisdiction. 28 U.S.C. § 1338(a). The Court also has personal jurisdiction over Mr. Prober and
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`Mr. Huang because Mr. Prober ships allegedly infringing products to MPT and other customers
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`located in this district, and Mr. Huang has “personally engaged” in these infringing transactions.
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`First Amended Complaint ¶ 1. In light of their business transactions in this district, defendants
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`have sufficient minimum contacts with California for personal jurisdiction purposes.
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`Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004). Service is proper
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`because Mr. Prober and Mr. Huang were hand-delivered the amended complaint on August 15,
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`2014. See Dkt. Nos. 79-80.
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`II.
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`DEFAULT JUDGMENT
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`Under Federal Rule of Civil Procedure 55(b)(2), a party may apply to the Court for entry
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`of judgment by default against a defendant that has failed to defend against the action. “The
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`district court’s decision whether to enter a default judgment is a discretionary one.” Aldabe v.
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`Aldabe, 616 F.2d 1089, 1092 (9th Cir. 1980).
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`Case3:13-cv-03688-JD Document99 Filed04/23/15 Page3 of 6
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`The decision is based on these factors:
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`(1) the possibility of prejudice to the plaintiff, (2) the merits of
`plaintiff’s substantive claim, (3) the sufficiency of the complaint,
`(4) the sum of money at stake in the action; (5) the possibility of a
`dispute concerning material facts; (6) whether the default was due to
`excusable neglect, and (7) the strong policy underlying the Federal
`Rules of Civil Procedure favoring decisions on the merits.
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`Eitel v. McCool, 782 F.2d 1470, 1471-72 (9th Cir. 1986).
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`A.
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`The Merits of the Claim and the Sufficiency of the Complaint
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`The Court turns first to the main inquiries, namely the second and third Eitel
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`factors. The merits of the claim and the sufficiency of the complaint are typically considered
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`together because after the entry of default, well-pleaded allegations in the complaint are deemed
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`true, except as to the amount of damages. Fair Hous. of Marin v. Combs, 285 F.3d 899, 906 (9th
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`Cir. 2002).
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`Taking the allegations in FormFactor’s complaint as true, FormFactor states a claim for
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`copyright infringement. A claim of copyright infringement requires that the plaintiff: (1) “must
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`show ownership of the allegedly infringed material,” and (2) “must demonstrate that the alleged
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`infringers violate[d] at least one exclusive right granted to copyright holders under 17 U.S.C.
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`§ 106.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159 (9th Cir. 2007).
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`The complaint alleges that FormFactor is the owner of the copyrights at issue after buying
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`the intellectual property at Electroglas’s bankruptcy auction. First Amended Complaint ¶ 18.
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`FormFactor claims that defendants have infringed these copyrights by re-building and selling
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`Electroglas’s probers without a license. Id. ¶ 24. Consequently, FormFactor has adequately stated
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`a claim for copyright infringement.
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`B.
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`The Remaining Eitel Factors
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`The other Eitel factors tend to favor entry of default judgment. FormFactor will be
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`prejudiced if default judgment is not granted because FormFactor will have no means of
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`adjudicating its claims, and will be unable to oppose defendants’ conduct. Since defendants have
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`not appeared, there is no indication that (i) their default is due to excusable neglect, (ii) the
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`material facts are subject to dispute, or (iii) a decision on the merits will be possible. See, e.g.,
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`Case3:13-cv-03688-JD Document99 Filed04/23/15 Page4 of 6
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`J & J Sports Prods., Inc. v. Nguyen, No. 11-CV-05441-LHK, 2012 WL 6599861, at *2 (N.D. Cal.
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`Dec. 17, 2012).
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`The amount of money at stake is substantial. FormFactor seeks $1,670,510 in actual
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`damages, or alternatively, $450,000 in statutory damages, in addition to attorneys’ fees, costs, and
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`post-judgment interest. Dkt. No. 91 at 13. When attorney’s fees are factored in, the actual
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`damages amount approaches the $2.9 million at issue in Eitel, where the Ninth Circuit held that
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`the district court did not abuse its discretion in denying a motion for default judgment. Eitel, 782
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`F.2d at 1472. But in Eitel, unlike here, the parties disputed material facts in the pleadings. Here,
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`the defendants have been missing and silent. Consequently, the requested amounts alone will not
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`derail this motion.
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`III.
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`PLAINTIFF’S REQUESTED RELIEF
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`A.
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`Actual Damages
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`Under the Copyright Act, an infringer is liable either for the plaintiff’s “actual
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`damages and any additional profits of the infringer,” or statutory damages. 17 U.S.C. § 504(a).
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`Here, FormFactor elects to seek recovery of Mr. Prober’s profits. Dkt. No. 91 at 6. FormFactor
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`says it is entitled to Mr. Prober’s gross revenue from sales of the Electroglas prober machines
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`because defendants have not established any off-sets, and because these machines “cannot
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`function without the copyrighted software, and thus the [] probers have no non-infringing mode of
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`use.” Id. Mr. Prober’s total gross sales, insofar as FormFactor is aware, amount to $1,670,510.
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`Dkt. No. 91-1; Dkt. No. 91-2. These sales primarily involve coordination between Mr. Prober and
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`MPT to refurbish and export the probers from the United States. Dkt. No. 91 at 7-9. FormFactor
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`argues that Mr. Prober and Mr. Huang are jointly liable for the acts of MPT under either a direct
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`infringement theory, or under a contributory or vicarious liability theory. Id. at 4-5.
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`FormFactor has adequately supported actual damages for default judgment. The Court is,
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`however, concerned about the sizable amount in issue. If defendants properly open default in the
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`future, a possibility as to which the Court expresses no views here, FormFactor may be challenged
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`on these amounts to ensure they are just and proper. For now, the proof is acceptable and the
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`Case3:13-cv-03688-JD Document99 Filed04/23/15 Page5 of 6
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`Court awards the claimed actual damages. The statutory alternative will not be considered in light
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`of that.
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`B.
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`Costs, Attorneys’ Fees, and Post-Judgment Interest
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`FormFactor also seeks attorneys’ fees and costs, and post-judgment interest.
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`FormFactor does not specify the amount it seeks in attorney’s fees and costs, but indicates that it
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`will supply a declaration as to these amounts after the Court enters an order allowing their
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`recovery. Id. at 11. Plaintiff will be permitted to recover these fees and costs if they are
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`reasonable. 17 U.S.C. § 505. Plaintiff must support any assertions of such costs with proper
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`evidence detailing, for example, the number of hours worked and the justification behind the
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`attorneys’ billing rates.
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`The Court grants plaintiff’s request for post-judgment interest. 28 U.S.C. § 1961.
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`C.
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`Permanent Injunction
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`In addition to damages, FormFactor asks for an injunction to enjoin defendants and
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`those in concert with them from infringing FormFactor’s copyrights. The Copyright Act allows a
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`district court to grant injunctions “on such terms as it may deem reasonable to prevent or restrain
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`infringement of a copyright.” 17 U.S.C. § 502(a).
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`Here, FormFactor has alleged that Mr. Prober and Mr. Huang have willfully infringed
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`several of its copyrights. The failure of these defendants to appear in this action indicates that they
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`are unlikely to stop their infringing activities. In fact, plaintiff claims that Mr. Prober continues to
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`advertise the Electroglas probers on its website and on YouTube. Dkt. No. 91 at 13. In these
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`circumstances, the Court will issue an injunction that applies also to the entities alleged to be
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`acting in concert with Mr. Prober: Global SemiFab Solutions, LLC, Linear Technologies
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`Corporation (and its subsidiaries), and WIN Semiconductor Corporation. The injunction is:
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`Defendants and their agents, servants, employees, and all persons
`acting under their permission and authority, as well as any entities
`acting in concert with defendants, are enjoined from engaging in any
`further sale, refurbishment, importation or exportation into or out of
`the United States of any device or storage medium having stored
`therein or thereupon a copy of the following copyrighted software:
`EG Commander (TXu 1-795-303), EG Commander (TXu 1-795-
`205), and EG 2001X (TXu 1-859-721).
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`Case3:13-cv-03688-JD Document99 Filed04/23/15 Page6 of 6
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`D.
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`Transfer of Domain Name
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`Plaintiff requests that the Court issue “an order directing the United States-based
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`registrar of [the Mr. Prober] URL to transfer it to FormFactor,” in order to stop defendants’
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`infringement. Id. at 15. Plaintiff argues that such a transfer is appropriate because it would assist
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`in mending FormFactor’s relationship with prospective customers. Id.
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`FormFactor cites Craigslist, Inc. v. Meyer, No. C 09-4739 SI, 2011 WL 1884555 (N.D.
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`Cal. May 18, 2011), in support, on the basis that the court in that case ordered the transfer of
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`several domain names. But Craigslist is distinguishable from this case in that at least one of the
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`domain names at issue in Craigslist constituted a trademark violation in and of itself, and the
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`websites were more integral to the defendant’s infringement. Moreover, the Court believes the
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`substantial damages award and injunctive relief ordered here are more than enough to protect
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`FormFactor going forward. The request to transfer Mr. Prober’s domain name is denied.
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`CONCLUSION
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`The motion for default judgment against Mr. Prober and Mr. Huang is granted for actual
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`damages in the sum of $1,670,510 from defendants. FormFactor may file a request for reasonable
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`attorney’s fees and costs within 14 days of this order, and FormFactor is responsible for serving
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`this injunction on defendants.
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`IT IS SO ORDERED.
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`Dated: April 23, 2015
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`______________________________________
`James Donato
`United States District Judge
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