Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
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`LIFTED RESEARCH GROUP, INC.,
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` Plaintiff,
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` v.
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`BEHDAD, INC., et al.,
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` Defendants.
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`Civil Action No. 08-390 (CKK)
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`MEMORANDUM OPINION
`(December 10, 2008)
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`Plaintiff Lifted Research Group, Inc. (“LRG”) filed a Complaint in this case against
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`Defendant Behdad, Inc. (“Defendant”) on March 4, 2008 alleging violations of federal trademark
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`and copyright law.1 See Compl., Docket No. [1]. Although properly and timely served with the
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`Complaint and Summons, Defendant failed to respond to the Complaint, and the Clerk of the
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`Court, upon motion by Plaintiff, entered default against Defendant on May 16, 2008. See
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`Clerk’s Entry of Default as to Behdad, Inc., Docket No. [5]. Presently before the Court is
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`Plaintiff’s [8] Motion for Default Judgment. Having thoroughly considered Plaintiff’s
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`submissions, including the attachments thereto, applicable case law, statutory authority, and the
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`1Plaintiff’s Complaint in this case also named as Defendants “John Does 1-10.” See
`Compl., Docket No. [1]. On June 18, 2008, this Court issued an Order instructing Plaintiff that
`failure to serve Defendants “Does 1-10” by July 2, 2008, or to provide the Court with an
`explanation for why Does 1-10 had not yet been served, would result in dismissal of this case as
`to John Does 1-10 without prejudice in accordance with Federal Rules of Civil Procedure 4(m).
`06/18/08 Order, Docket No. [6]. As service of the summons and complaint has not yet been
`made by Plaintiff on Defendants Does 1-10, the Court has, by separate Order, dismissed without
`prejudice Does 1-10 as defendants in this case for Plaintiff’s failure to serve the summons and
`complaint pursuant to Rule 4(m).
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 2 of 10
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`record of the case as a whole, the Court shall GRANT IN PART and HOLD IN ABEYANCE IN
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`PART Plaintiff’s [8] Motion for Default Judgment as to Defendant Behdad, Inc. Specifically,
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`the Court grants Plaintiff’s Motion as to liability and its request for injunctive relief, but holds in
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`abeyance Plaintiff’s Motion as to its request for monetary damages, for the reasons stated below.
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`I. BACKGROUND
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`Plaintiff filed a Complaint in the above-captioned case on March 4, 2008, alleging: (1)
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`trademark counterfeiting and infringement in violation of § 32 of the Lanham Act, 15 U.S.C. §
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`1114; (2) false designation of origin in violation of § 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a); and (3) copyright infringement in violation of 17 U.S.C. § 501. Compl. at ¶¶ 27-45.
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`As is relevant to the instant case, Plaintiff is the owner of all rights in and to four trademarks
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`(Reg. Nos. 2,513,951; 2,633,832; 2,506, 859; and 2,958,307 (hereinafter “Marks”)), and is also
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`the owner of United States Copyright Registration No. VA-1-348-151 (hereinafter “Copyright”).
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`Pl.’s Mot. for Default J. at 2-3; see also Compl. at ¶ 7. According to the Complaint, Defendant
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`is the owner and operator of a retail operation within the District of Columbia that Plaintiff
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`alleges fraudulently promoted, advertised, distributed, offered for sale and sold certain apparel
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`items, including jeans, shorts and t-shirts, bearing the counterfeits of Plaintiff’s Marks and which
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`infringe on the work protected by Plaintiff’s Copyright. Compl. at ¶¶ 4-5, 16-22; see also Pl.’s
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`Mot. for Default J. at 6.
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`Defendant was served with the Complaint and Summons on March 20, 2008, and was
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`therefore required to respond by April 9, 2008. See Return of Service/Affidavit, Docket No. [3];
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`see also Pl.’s Mot. for Entry of Default, Docket No. [4]. Defendant failed to file an answer or
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`otherwise respond to Plaintiff’s Complaint, and Plaintiff moved for entry of default as to
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`2
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 3 of 10
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`Defendant. See P.’s Mot. for Entry of Default, Docket No. [4]. On May 16, 2008, the Clerk of
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`the Court entered default against Defendant. See Clerk’s Entry of Default as to Behdad, Inc.,
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`Docket No. [5]. Plaintiff now moves for entry of default judgment as to Defendant Behdad, Inc.
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`See Pl.’s Mot. for Default J., Docket No. [8].
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`II. LEGAL STANDARD
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`Federal Rule of Civil Procedure 55(a) provides that the clerk of the court must enter a
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`party’s default “[w]hen a party against whom a judgment for affirmative relief is sought has
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`failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise.” FED. R.
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`CIV. P. 55(a). After a default has been entered by the clerk of the court, a court may enter a
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`default judgment pursuant to Rule 55(b). FED. R. CIV. P. 55(B). “The determination of whether
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`default judgment is appropriate is committed to the discretion of the trial court.” Int’l Painters
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`and Allied Trades Industry Pension Fund v. Auxier Drywall, LLC, 531 F. Supp. 2d 56, 57
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`(D.D.C. 2008) (citing Jackson v. Beech, 636 F.2d 831, 836 (D.C. Cir. 1980)). Upon entry of
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`default by the clerk of the court, the “defaulting defendant is deemed to admit every well-
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`pleaded allegation in the complaint.” Int’l Painters and Allied Trades Indus. Pension Fund v.
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`R.W. Armine Drywall Co., Inc., 239 F. Supp. 2d 26, 30 (D.D.C. 2002) (internal citation omitted).
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`“Although the default establishes a defendant’s liability, the court is required to make an
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`independent determination of the sum to be awarded unless the amount of damages is certain.”
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`Id. (citing Adins v. Teseo, 180 F. Supp. 2d 15, 17 (D.D.C. 2001). Accordingly, when moving for
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`a default judgment, the plaintiff must prove its entitlement to the amount of monetary damages
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`requested. Id. “In ruling on such a motion, the court may rely on detailed affidavits or
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`documentary evidence to determine the appropriate sum for the default judgment.” Id.
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 4 of 10
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`III. DISCUSSION
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`A. Liability for Violations of the Lanham Act and the Copyright Act
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`Where, as here, there is a complete “absence of any request to set aside the default or
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`suggestion by the defendant that it has a meritorious defense, it is clear that the standard for
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`default judgment has been satisfied.” Auxier Drywall, LLC, 531 F. Supp. 2d at 57 (internal
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`quotation marks omitted). The Clerk of the Court entered Defendant’s default, and the factual
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`allegations in the Complaint are therefore taken as true. R.W. Armine Drywall Co., Inc., 239 F.
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`Supp. 2d at 30. The Court finds that Plaintiff’s Complaint sufficiently alleges facts to support
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`Plaintiff’s claims of trademark counterfeiting and infringement, false designation of origin, and
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`copyright infringement.
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`First, a claim for federal trademark infringement pursuant to 15 U.S.C. § 1114 and a
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`claim for a false designation of origin pursuant to 15 U.S.C. § 1125(a) are measured by the same
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`standards under the Lanham Act. See Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.
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`Supp. 2d 1, 26 (D.D.C. 2006); see also A&H Sportwear, Inc. v. Victoria’s Secret Stores, Inc.,
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`237 F.3d 198, 210 (3d Cir. 2000). To prevail on either claim in the D.C. Circuit, “the plaintiff
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`must show (1) that it owns a valid trademark, (2) that its trademark is distinctive or has acquired
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`a secondary meaning, and (3) that there is a substantial likelihood of confusion between the
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`plaintiff’s mark and the alleged infringer’s mark.” Globalaw Ltd., 452 F. Supp. 2d at 26-27
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`(internal quotation marks omitted). By default, Defendant admits that Plaintiff has valid Marks
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`that have a secondary meaning and that there is a substantial likelihood of confusion. See
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`Compl. at ¶¶ 2, 7-14, 17, 22, 27-40
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`Second, to establish trademark counterfeiting, Plaintiff must show that Defendant
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 5 of 10
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`infringed a registered trademark in violation of 15 U.S.C. § 1114(1)(a) and that Defendant
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`“intentionally used a mark, knowing such mark is a counterfeit mark.” 15 U.S.C. § 1117(b); see
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`also Babbit Elec., Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir. 1994). As shown
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`directly above, supra 4, Plaintiff has established that Defendant infringed Plaintiff’s registered
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`trademarks, and, by default, Defendant admits that it intentionally used the Marks knowing they
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`were counterfeit, see Compl. ¶¶15-22, 27-33.
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`Third, and finally, to prevail on a claim of copyright infringement Plaintiff “must prove
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`‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are
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`original.’” Stenograph LLC v. Bossard Assocs., Inc., 144 F.3d 96, 99 (D.C. Cir. 1998) (quoting
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`Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Again, by default,
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`Defendant admits that Plaintiff owns a valid Copyright, and has copied elements of Plaintiff’s
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`Copyright that are original. See Compl. ¶¶ 7, 18, 41-45. Accordingly, the Court determines that
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`Plaintiff is entitled to default judgment as to liability on its claims.
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`B. Appropriate Relief
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`Plaintiff requests relief in the form of both injunctive relief and monetary damages. The
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`Court shall first consider Plaintiff’s request for injunctive relief before turning to Plaintiff’s
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`request for monetary damages.
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`1. Injunction
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`Plaintiff requests the Court permanently enjoin Defendant from infringing any of
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`Plaintiff’s intellectual property rights, including Plaintiff’s Marks and the work protected by
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`Plaintiff’s Copyright. Pl.’s Mot. for Default J. at 9. A district court has authority under both the
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`Lanham Act and the Copyright Act to grant injunctive relief to prevent further violations of
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 6 of 10
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`Plaintiff’s trademark rights and copyrights. 15 U.S.C. § 1116; 17 U.S.C. § 502. “In determining
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`whether to enter a permanent injunction, the Court considers a modified iteration of the factors it
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`utilizes in assessing preliminary injunctions: (1) success on the merits, (2) whether the plaintiffs
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`will suffer irreparable injury absent an injunction, (3) whether, balancing the hardships, there is
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`harm to defendants or other interested parties, and (4) whether the public interest favors granting
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`the injunction.” American Civil Liberties Union v. Mineta, 319 F. Supp.2d 69, 87 (D.D.C.
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`2004). As discussed above, supra 4-5, Plaintiff has succeeded, by default, on the merits of the
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`instant action. Plaintiff has also shown, in its Motion for Default Judgment and the attached
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`affidavits, that Defendant has continued to sell counterfeit LRG apparel despite issuance of a
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`cease and desist letter and filing of the instant lawsuit. See Pl.’s Mot. for Default J. at 10.
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`Generally, copyright and trademark infringement, by their very nature, carry a presumption of
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`harm. See Health Ins., Ass’n of America v. Novelli, 211 F. Supp. 2d 23, 28 (D.D.C. 2002)
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`(quoting Hart v. Sampley, Civ. No. A.91-3068, 1992 WL 100135 at *3 (D.D.C. Feb. 4, 1992)).
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`Moreover, the Court agrees that Defendant’s continuing disregard for Plaintiff’s rights
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`demonstrates that Defendant will continue to infringe on Plaintiff’s rights, absent an injunction.
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`This finding alone entitles Plaintiff to a permanent injunction. Walt Disney Co. v. Powell, 897
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`F.2d 565, 567 (D.C. Cir. 1990) (“When a copyright plaintiff has established a threat of
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`continuing infringement, he is entitled to an injunction.”) (citing Universal City Studios v. Sony
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`Corp. of America, 659 F.2d 963, 976 (9th Cir. 1981)). The Court further finds that an injunction
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`would not harm others, and that public interest favors protecting against further violation of
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`federal copyright and trademark laws. Accordingly, the Court concludes that Plaintiff is entitled
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`to a permanent injunction, as requested in its Motion for Default Judgment.
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 7 of 10
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`2. Monetary Damages
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`Plaintiff requests the Court award it $106,560.00 in statutory damages for violations of
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`the Lanham Act, $30,000 in statutory damages for violations of the Copyright Act, and
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`$4,275.00 in reasonable attorneys’ fees and costs (including reasonable investigative fees). Pl.’s
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`Mot. for Default J. at 18-19. “Statutory damages are appropriate in default judgment cases
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`because the information needed to prove actual damages is within the infringers’ control and is
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`not disclosed.” Microsoft Corp. v. McGee, 490 F. Supp. 2d 874, 882 (S.D. Ohio 2007) (citing
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`cases). “[T]he Court has wide discretion to determine the amount of statutory damages to be
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`awarded.” Peer Int’l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1336 (9th Cir. 1990) (internal
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`quotation marks omitted). The Lanham Act provides for statutory damages of not less than
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`$500.00 nor more than $100,000.00 per counterfeit mark per type of goods, with an increased
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`limit of $1,000,000.00 for willful infringement. 15 U.S.C. § 1117(c).2 Similarly, the Copyright
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`Act provides for statutory damages of not less than $750.00 and not more than $30,000.00 with
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`respect to any one work, for which one infringer is liable individually, with an increased limit of
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`$150,000.00 for willful infringement. 17 U.S.C. § 504(c). Here, Defendant has refused to
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`2On October 13, 2008, 15 U.S.C. § 1117(c) was amended to increase the statutory
`damages range to “not less than $1,000 or more than $200,000 per counterfeit mark per type of
`goods [] sold” and also increased the statutory damages available for willful use of a counterfeit
`mark to “not more than $2,000,000 per counterfeit mark per type of goods [] sold.” Pub. L. No.
`110-403, 122 Stat. 4256, 4259 (2008). Plaintiff’s Motion for Default Judgment, filed prior to the
`amendment, cites to the unamended version of the statute that previously set the range between
`$500 and $100,000 and provides for a maximum limit of $1,000,000 for willful use. See Pl.’s
`Mot. for Default J. at 11. The Court finds that it is appropriate to apply the pre-amendment
`range, as there is no indication that the new statutory range applies retroactively. See Magna-
`RX, Inc. v. Holley, No. CV 05-3545, 2008 Wl 506897, *3 n.4 (applying 15 U.S.C. § 1117(c)(1)
`amendment prospectively); cf Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d 966, 971
`(2d Cir.1985) (finding that amendment to treble damages provision of Section 1117 applies
`prospectively).
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 8 of 10
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`participate in this litigation and has not provided any information to Plaintiff or the Court
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`regarding Defendant’s sales, revenues, profits or expenses. An award of statutory damages is
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`therefore appropriate.
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`The Court emphasizes, however, that when moving for a default judgment, the plaintiff
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`must prove its entitlement to the amount of monetary damages requested. R.W. Armine Drywall
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`Co., Inc., 239 F. Supp. 2d at 30. The Court finds that Plaintiff has not sufficiently established
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`the legal basis for the monetary damages requested, and that the Court therefore cannot, at this
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`point, award the requested amount of monetary damages. Specifically, Plaintiff has not shown:
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`(a) that it is entitled to recover a separate award of statutory damages under both the Lanham Act
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`and the Copyright Act; and (b) the legal basis for its calculation of the requested amounts of
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`statutory damages under both the Lanham Act and the Copyright Act. Accordingly, the Court
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`shall hold in abeyance Plaintiff’s Motion for Default Judgment as to its request for monetary
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`damages, pending the provision of supplemental briefing specifically addressing these two
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`discrete issues, as discussed in more detail below.
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`a. Recovery of Statutory Damages under both the Lanham Act and the Copyright
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`Although Plaintiff’s Motion is silent on this question, the Court finds that it is unclear
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`whether Plaintiff is legally entitled to collect statutory damages under both the Lanham Act and
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`the Copyright Act for the same injuries. In briefly reviewing the relevant legal authority on this
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`question, it appears to the Court that this is an issue of first impression in the D.C. Circuit and
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`that, among the several courts that have been presented with a request for recovery of statutory
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`damages under both Acts, there is disagreement as to the proper resolution of this issue. For
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`example, some courts have found that recovery of statutory damages under both the Lanham Act
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 9 of 10
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`and the Copyright Act for the same injury impermissibly allows a plaintiff dual recovery, see,
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`e.g., Microsoft Corp. v. Computer Care Ctr., Inc., No. 06-cv-1429, 2008 WL 4179653, at*8-10
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`(E.D.N.Y. Sept. 10, 2008), while other courts have held that such recovery is permitted, see, e.g.,
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`Microsoft Corp. v. Online Datalink Computer, Inc., No. 07cv01165, 2008 WL 1995209, at *3
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`(S.D. Cal. May 6, 2008). Given this disagreement over the legal authority of a court to award a
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`plaintiff statutory damages for both trademark and copyright infringements, and the apparent
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`lack of any binding precedent addressing this question in the D.C. Circuit, the Court requests
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`Plaintiff provide supplemental briefing specifically addressing this question. In particular,
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`Plaintiff’s supplemental briefing must address whether this is, in fact, an issue of first impression
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`in the D.C. Circuit and, if so, provide sufficient legal justification for Plaintiff’s position that this
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`Court has the authority to award statutory damages under both Acts.
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`b. Plaintiff’s Calculation of Statutory Damages under both the Lanham Act and
` the Copyright Act
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`As stated above, Plaintiff requests the Court award it $106,560.00 in statutory damages
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`for violations of the Lanham Act and $30,000.00 in statutory damages for violations of the
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`Copyright Act. Pl.’s Mot. for Default J. at 18-19. As to the former, Plaintiff bases its total
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`requested statutory damages on the following calculation: (1) begin with a baseline statutory
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`award of $1,4800.00, which represents what Plaintiff asserts is the total sale price for the goods
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`at issue offered for sale by Defendant on August 20, 2007; (2) treble the statutory award to
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`reflect Defendant’s willfulness; and (3) double the resulting amount for the purpose of
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`deterrence. Pl.’s Mot. for Default J. at 13-14. Plaintiff suggests this amount is reasonable and
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`provides cases which have granted statutory damages at this level or higher, id. at 14, but does
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`not provide the Court with any legal authority supporting its specific method of calculating the
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`Case 1:08-cv-00390-CKK Document 11 Filed 12/10/08 Page 10 of 10
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`statutory damages requested here. For example, on what basis does Plaintiff submit it is
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`reasonable to treble the statutory damages requested for willfulness and then multiple that result
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`by two for deterrence purposes? Similarly, as to the latter request, Plaintiff requests the statutory
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`maximum award of $30,000.00, but does not provide legal authority justifying the imposition of
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`the statutory maximum. See id. at 16. The Court therefore requests Plaintiff provide
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`supplemental briefing specifically addressing the legal authority for Plaintiff’s calculations of its
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`requested statutory damages.
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`IV. CONCLUSION
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`For the reasons set forth above, the Court shall GRANT IN PART and HOLD IN
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`ABEYANCE IN PART Plaintiff’s [8] Motion for Default Judgment as to Defendant Behdad,
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`Inc. Specifically, the Court grants Plaintiff’s Motion as to liability and its request for injunctive
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`relief, but holds in abeyance Plaintiff’s Motion as to its request for monetary damages pending
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`further briefing by Plaintiff. Plaintiff is therefore requested to submit, no later than January 30,
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`2009, supplemental briefing addressing: (a) whether Plaintiff is entitled to recover a separate
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`award of statutory damages under both the Lanham Act and the Copyright Act; and (b) the legal
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`basis for Plaintiff’s calculation of its requested amounts of statutory damages under both the
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`Lanham Act and the Copyright Act.
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`Date: December 10, 2008
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` /s/
`COLLEEN KOLLAR-KOTELLY
`United States District Judge
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`10