Case 1:21-cv-22703-BB Document 80 Entered on FLSD Docket 12/30/2021 Page 1 of 18
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`Case No. 21-cv-22703-BLOOM/Otazo-Reyes
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`Plaintiff,
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`SAFETY NAILER LLC,
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`v.
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`THE INDIVIDUALS, PARTNERSHIPS,
`AND UNINCORPORATED ASSOCIATIONS
`IDENTIFIED ON SCHEDULE “A,”
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`Defendants.
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`_______________________________________/
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`ORDER ON RENEWED AND AMENDED MOTION FOR
`ENTRY OF FINAL JUDGMENT BY DEFAULT AS TO CERTAIN DEFENDANTS
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`THIS CAUSE is before the Court upon Plaintiff SAFETY NAILER LLC’s (“SNLLC” or
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`“Plaintiff”) Renewed and Amended Motion for Entry of Final Judgment by Default, ECF No. [77]
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`(“Motion”), filed on December 28, 2021. A Clerk’s Default was entered against Defendants listed
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`in Schedule “A” to the Complaint as 1-115, 119, 126, 127, 130, 138, 144, 158, 162, 163, 165, 166,
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`168, 171, 173, 174, 185, 187, 188, 193, 200, 205, 211-213, 215-216 (collectively, “Defendants”),
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`and other defendants, on November 15, 2021. ECF No. [58].1 Defendants failed to appear, answer,
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`or otherwise plead to the Complaint despite having been served.
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`On November 30, 2021, Plaintiff filed a Motion for Entry of Final Judgment by Default.
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`ECF No. [63]. On December 14, 2021, the Court denied the Motion for Entry of Final Judgment
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`without prejudice, ordering Plaintiff to: (1) file either a report as to the status of service of process
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`1 This Order does not apply to entities identified in Schedule “A” who have been dismissed from the case.
`Any references to “Defendants” in this Order are to Defendants listed in Schedule “A” to the Complaint as
`1-115, 119, 126, 127, 130, 138, 144, 158, 162, 163, 165, 166, 168, 171, 173, 174, 185, 187, 188, 193, 200,
`205, 211-213, and 215-216.
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`upon Defendants 195-198 or a Motion to Dismiss Defendants 195-198; and (2) file either a new
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`Motion for Entry of Final Judgment by Default or a Notice of Joint Liability pursuant to the Court’s
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`subsequent Order on Default Judgment Procedures. ECF No. [72]. On December 14, 2021,
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`Plaintiff dismissed Defendants 194-198 without prejudice. ECF No. [73]. On December 28, 2021,
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`Plaintiff filed the instant Renewed and Amended Motion for Entry of Final Judgment by Default.
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`ECF No. [77]. The Court has carefully considered the Motion, the record in this case, the applicable
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`law, and is otherwise fully advised. For the following reasons, Plaintiff’s Renewed and Amended
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`Motion is granted in part and denied in part consistent with this Order.
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`I. INTRODUCTION
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`Plaintiff sued Defendants for trademark counterfeiting and infringement under § 32 of the
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`Lanham Act, 15 U.S.C. § 1114; false designation of origin pursuant to § 43(a) of the Lanham Act,
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`15 U.S.C. § 1125(a); copyright infringement under the Copyright Act, 17 U.S.C. §§ 106(1), (3),
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`(4), 501; common law unfair competition; and common law trademark infringement.
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`The Complaint alleges that Defendants are advertising, promoting, distributing, and
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`performing Plaintiff’s copyrighted works using counterfeits and confusingly similar imitations of
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`Plaintiff’s registered trademarks within the Southern District of Florida by operating the
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`Defendants’ Internet based e-commerce stores operating under each of the Seller IDs identified on
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`Schedule “A” attached to Plaintiff’s Motion for Entry of Final Default Judgment.
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`Plaintiff further asserts that Defendants’ unlawful activities have caused and will continue
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`to cause irreparable injury to Plaintiff because Defendants have: (1) deprived Plaintiff of its right
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`to determine the manner in which its trademarks are presented to consumers; (2) defrauded
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`consumers into thinking Defendants’ illicit copies of Plaintiff’s copyrighted works are authorized
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`by Plaintiff; (3) deceived the public as to Plaintiff’s sponsorship of and/or association with
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`Defendants’ counterfeit products and the websites on online storefronts through which such
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`products are sold, offered for sale, marketed, advertised, and distributed; (4) wrongfully traded and
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`capitalized on Plaintiff’s reputation and goodwill and the commercial value of the Plaintiff’s
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`trademarks; and (5) wrongfully damaged Plaintiff’s ability to market its branded products and
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`copyrighted works and products and educate consumers about its brand via the Internet in a free
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`and fair marketplace.
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`In its Motion, Plaintiff seeks the entry of default final judgment against Defendants in an
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`action alleging trademark counterfeiting and infringement, false designation of origin, common-
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`law unfair competition, common law trademark infringement, infringement of copyright, and
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`infringement of patent. Plaintiff further requests that the Court: (1) enjoin Defendants’ unlawful
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`use of Plaintiff’s trademarks, copyrighted works, and patent; (2) award Plaintiff damages; and (3)
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`instruct any third-party financial institutions in possession of any funds restrained or held on behalf
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`of Defendants to transfer these funds to the Plaintiff in partial satisfaction of the award of damages.
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`Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a
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`final judgment of default against a party who has failed to plead in response to a complaint. “A
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`‘defendant, by his default, admits the plaintiff’s well-pleaded allegations of fact, is concluded on
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`those facts by the judgment, and is barred from contesting on appeal the facts thus established.’”
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`Eagle Hosp. Physicians, LLC v. SRG Consulting, Inc., 561 F. 3d 1298, 1307 (11th Cir. 2009)
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`(quoting Nishimatsu Const. Co., Ltd. v. Houston Nat’l Bank, 515 F. 2d 1200, 1206 (5th Cir. 1975));
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`Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987). “Because a defendant is not held to
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`admit facts that are not well pleaded or to admit conclusions of law, the Court must first determine
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`whether there is a sufficient basis in the pleading for judgment to be entered.” Luxottica Group
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`S.p.A. v. Individual, P’ship or Unincorporated Ass’n, 17-CV-61471, 2017 WL 6949260, at *2
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`3
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`(S.D. Fla. Oct. 3, 2017); see also Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987)
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`(“[L]iability is well-pled in the complaint, and is therefore established by the entry of
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`default . . . .”).
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`If there are multiple defendants, the plaintiff must state in the Motion for Default Final
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`Judgment that there are no allegations of joint and several liability, and set forth the basis why
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`there is no possibility of inconsistent liability. Generally, if one defendant – who is alleged to be
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`jointly and severally liable with other defendants – defaults, judgment should not be entered
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`against that defendant until the matter is adjudicated against the remaining defendants. See 10A
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`Charles Alan Wright and Arthur R. Miller, Federal Practice and Procedure § 2690 (3d ed. 1998)
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`(citing Frow v. De La Vega, 82 U.S. 552, 554 (1872) (“[A] final decree on the merits against the
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`defaulting defendant alone, pending the continuance of the cause, would be incongruous and
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`illegal.”)). “Even when defendants are similarly situated, but not jointly liable, judgment should
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`not be entered against a defaulting defendant if the other defendant prevails on the merits.” Gulf
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`Coast Fans, Inc. v. Midwest Elecs. Imp., Inc., 740 F.2d 1499, 1512 (11th Cir. 1984).
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`Here, Plaintiff has stated in its Motion that there are no allegations of joint and several
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`liability with respect to damages. Defendants remaining in the case have not appeared and have
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`defaulted. Therefore, there is no possibility of inconsistent liability among the remaining
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`Defendants and an adjudication may be entered. Therefore, upon a review of Plaintiff’s
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`submissions, the Court finds there is a sufficient basis in the pleading for the default judgment to
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`be entered in favor of Plaintiff with respect to the defaulting Defendants.
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`II. FACTUAL BACKGROUND
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`Plaintiff is the registered owner of the trademark SAFETY NAILER, U.S. Reg. No.
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`5,544,356 for “Hand tools, namely, clamps” in International Class 8, registered on August 21,
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`2018, on the Principal Register of the United States Patent and Trademark Office (“SAFETY
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`NAILER Mark”). Plaintiff has exclusive rights in and to the SAFETY NAILER Mark. Plaintiff is
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`the owner of copyrights in photographs that Plaintiff uses to market and advertise its SAFETY
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`NAILER products. Plaintiff registered its photographs with the Register of Copyrights on May 25,
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`2021, and was assigned the registration numbers VA 2-252-882 and VA 2-252-876 (“Copyrighted
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`Works”). Plaintiff is the owner of U.S. Patent No. US 8,806,983 (“‘983 Patent”) entitled “Holder
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`For Fasteners[.]” The ‘938 Patent relates to holders for holding nails while shielding the user’s
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`fingers from being struck by a hammer. SNLLC marks its SAFETY NAILER products, the
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`Framing Nailer version and the Finish Nailer version, with the ‘938 Patent number.
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`Defendants, through the various Internet based e-commerce stores operating under each of
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`the Seller IDs identified on Schedule “A” have advertised, promoted, offered for distribution,
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`and/or distributed products using counterfeits, infringements, reproductions, and/or colorable
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`imitations of the SAFETY NAILER Mark, Copyrighted Works, and ‘938 Patent. Plaintiff has
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`submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the
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`SAFETY NAILER Mark, Copyrighted Works, and ‘938 Patent. Defendants are not now, nor have
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`they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or
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`colorable imitations of the of the SAFETY NAILER Mark or Patent, and/or reproduce or distribute
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`the Copyrighted Works.
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`As part of its ongoing investigation regarding the sale of counterfeit and infringing
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`products, SNLLC has an anticounterfeiting program that regularly investigates suspicious websites
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`and online marketplace listings identified in proactive Internet sweeps and reported by consumers.
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`These investigations have established that Defendants are using the various webstores on platforms
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`such as Amazon, Wish, eBay, AliExpress, Alibaba, DHGate, Joom, NewEgg, Shopify, and others
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`to sell counterfeit products from foreign countries such as China to consumers in the United States.
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`SNLLC accessed Defendants’ Internet based e-commerce stores operating under their respective
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`Seller ID names through Amazon.com, Wish.com, eBay.com, AliExpress.com, Alibaba.com,
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`DHGate.com, Joom.com, NewEgg.com, Shopify.com.
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`Upon accessing each of the e-commerce stores, SNLLC viewed counterfeit products using
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`the SAFETY NAILER Mark, SNLLC’s registered copyrights, and the ‘983 Patent, added products
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`to the online shopping cart, proceeded to a point of checkout, and otherwise actively exchanged
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`data with each e-commerce store. SNLLC captured detailed web pages for each Defendant store.
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`A representative for SNLLC personally analyzed the SAFETY NAILER items wherein orders
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`were initiated via each of the Seller IDs by reviewing the e-commerce stores operating under each
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`of the Seller IDs, or the detailed web page captures and images of the items bearing the SAFETY
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`NAILER Mark and Copyrighted Works and Patent, and concluded the products were non-
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`genuine.2
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`III. ANALYSIS
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`A. Claims
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`1. Trademark Counterfeiting and Infringement Pursuant to § 32 of the Lanham
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`Act (15 U.S.C. § 1114) (Count I)
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`Section 32 of the Lanham Act, 15 U.S.C. § 1114, provides liability for trademark
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`infringement if, without the consent of the registrant, a defendant uses “in commerce any
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`reproduction, counterfeit, copy, or colorable imitation of a registered mark: which is likely to cause
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`confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114. In order to prevail on its
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`trademark infringement claim under Section 32 of the Lanham Act, Plaintiff must demonstrate that
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`2 Evidence of each Defendant’s infringement was attached as Exhibit 4 to the Declaration of Kristen Eifes.
`See ECF No. [6-1].
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`(1) it had prior rights to the mark at issue; and (2) Defendants adopted a mark or name that was
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`the same, or confusingly similar to Plaintiff’s trademark, such that consumers were likely to
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`confuse the two. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir.
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`2001) (citing Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360
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`(11th Cir. 1997)).
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`2. False Designation of Origin Pursuant to § 43(A) of the Lanham Act (15 U.S.C.
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`§ 1125(a)) (Count II)
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`To prevail on a claim for false designation of origin under Section 43(a) of the Lanham
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`Act, 15 U.S.C. § 1125(a), Plaintiff must prove that Defendants used in commerce, in connection
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`with any goods or services, any word, term, name, symbol or device, or any combination thereof,
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`or any false designation of origin that is likely to deceive as to the affiliation, connection, or
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`association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval, of
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`Defendants’ services by Plaintiff. See 15 U.S.C. § 1125(a)(1). The test for liability for false
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`designation of origin under 15 U.S.C. § 1125(a) is the same as for a trademark counterfeiting and
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`infringement claim – i.e., whether the public is likely to be deceived or confused by the similarity
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`of the marks at issue. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992).
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`3. Common Law Unfair Competition and Trademark Infringement (Counts III
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`and IV)
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`Whether a defendant’s use of a plaintiff’s trademarks created a likelihood of confusion
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`between the plaintiff’s and the defendant’s services or goods is also the determining factor in the
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`analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester,
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`1986 WL 15668, at *3 (S.D. Fla. Dec. 9, 1987) (“The appropriate test for determining whether
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`there is a likelihood of confusion, and thus trademark infringement, false designation of origin,
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`and unfair competition under the common law of Florida, is set forth in John H. Harland, Inc. v.
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`Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983).”); see also Boston Prof’l Hockey Ass’n,
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`Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) (“As a general rule
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`. . . the same facts which would support an action for trademark infringement would also support
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`an action for unfair competition.”).
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`The analysis of liability for Florida common law trademark infringement is the same as the
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`analysis of liability for trademark infringement under § 32(a) of the Lanham Act. See PetMed
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`Express, Inc. v. MedPets.com, Inc., 336 F. Supp. 2d 1213, 1217-18 (S.D. Fla. 2004).
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`4. Infringement of Copyright (Count V)
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`To prevail on a claim of direct infringement of copyright pursuant to the Copyright Act, 17
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`U.S.C. §§ 106(1), (3) and (4), Plaintiff must “satisfy two requirements to present a prima facie
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`case of direct copyright infringement: (1) they must show ownership of the allegedly infringed
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`material, and (2) they must demonstrate that the alleged infringers violated at least one exclusive
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`right granted to copyright holders under 17 U.S.C. § 106.” A&M Records, Inc. v. Napster, Inc.,
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`239 F.3d 1004, 1013 (9th Cir. 2001); see also Disney Enters. v. Hotfile Corp., Case No. 11-20427-
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`CIV-Williams, 2013 U.S. Dist. LEXIS 172339, at *94 (S.D. Fla. 2013).
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`5. Patent Infringement (Count VI)
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`The Patent Act provides, in relevant part, that “whoever without authority makes, uses,
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`offers to sell, or sells any patented invention, within the United States . . . infringes the patent.” 35
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`U.S.C. § 271. A plaintiff moving for default judgment in a patent infringement action must allege
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`that the defendant “makes, uses, offers to sell, or sells” a patented invention and show how the
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`limitation of a patent claim was infringed. See Unilin Beheer B.V. v. US Wood Flooring, Inc., No.
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`17-60107-ALTONAGA/O’Sullivan, 2017 WL 5953423, at *3 (S.D. Fla. June 22, 2017).
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`B. Liability
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`The well-pled factual allegations of Plaintiff’s Complaint properly allege the elements for
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`each of the claims described above. See ECF No. [1]. Moreover, the factual allegations in
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`Plaintiff’s Complaint have been substantiated by sworn declarations and other evidence and
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`establish Defendants’ liability under each of the claims asserted in the Complaint. Accordingly,
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`entry of default judgment pursuant to Federal Rule of Civil Procedure 55 is appropriate.
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`C. Injunctive Relief
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`Pursuant to the Lanham Act, a district court is authorized to issue an injunction “according
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`to the principles of equity and upon such terms as the court may deem reasonable,” to prevent
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`violations of trademark law. See 15 U.S.C. § 1116(a). “Injunctive relief is the remedy of choice
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`for trademark and unfair competition cases, since there is no adequate remedy at law for the injury
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`caused by a defendant’s continuing infringement.” Burger King Corp. v. Agad, 911 F. Supp. 1499,
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`1509-10 (S.D. Fla. 1995) (citing Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180
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`(9th Cir. 1988)). Moreover, even in a default judgment setting, injunctive relief is available. See
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`e.g., PetMed Express, Inc., 336 F. Supp. 2d at 1222-23. Defendants’ failure to respond or otherwise
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`appear in this action makes it difficult for Plaintiff to prevent further infringement absent an
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`injunction. See Jackson v. Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal. 2003) (“[D]efendant’s
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`lack of participation in this litigation has given the court no assurance that defendant’s infringing
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`activity will cease. Therefore, plaintiff is entitled to permanent injunctive relief.”).
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`Permanent injunctive relief is appropriate where a plaintiff demonstrates that (1) it has
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`suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship
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`favors an equitable remedy; and (4) an issuance of an injunction is in the public’s interest. eBay,
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`Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93 (2006). Plaintiffs have carried their burden on
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`each of the four factors. Accordingly, permanent injunctive relief is appropriate.
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`In trademark cases, “a sufficiently strong showing of likelihood of confusion . . . may by
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`itself constitute a showing of a substantial threat of irreparable harm.” McDonald’s Corp. v.
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`Robertson, 147 F.3d 1301, 1306 (11th Cir. 1998); see also Levi Strauss & Co. v. Sunrise Int’l
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`Trading Inc., 51 F.3d 982, 986 (11th Cir. 1995) (“There is no doubt that the continued sale of
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`thousands of pairs of counterfeit jeans would damage LS & Co.’s business reputation and might
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`decrease its legitimate sales.”). Plaintiff’s Complaint alleges that Defendants’ unlawful actions
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`have caused Plaintiff irreparable injury and will continue to do so if Defendants are not
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`permanently enjoined. Further, the Complaint alleges, the unauthorized counterfeit products sold,
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`offered for sale, marketed, advertised, and distributed by Defendants are nearly identical to
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`Plaintiff’s genuine SAFETY NAILER products, and consumers viewing Defendants’ counterfeit
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`products would confuse them for Plaintiff’s genuine products. See id. “Defendants’ infringing
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`activities are likely to cause and actually are causing confusion, mistake and deception among
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`members of the trade and the general consuming public as to the origin and quality of defendants’
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`e-commerce stores as a whole and all products sold therein by their use of the SAFETY NAILER
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`Mark.” ECF No. [1] ¶ 137.
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`Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Seller
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`IDs because Plaintiff cannot control the quality of what appears to be its SAFETY NAILER
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`products in the marketplace. An award of monetary damages alone will not cure the injury to
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`Plaintiff’s reputation and goodwill that will result if Defendants’ infringing and counterfeiting and
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`infringing actions are allowed to continue. Moreover, Plaintiff faces hardship from loss of sales
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`and its inability to control its reputation in the marketplace. By contrast, Defendants face no
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`hardship if they are prohibited from the infringement of Plaintiff’s trademarks and copyrights,
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`which are illegal acts.
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`Finally, the public interest supports the issuance of a permanent injunction against
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`Defendants to prevent consumers from being misled by Defendants’ counterfeit products. See
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`Nike, Inc. v. Leslie, 1985 WL 5251, at *1 (M.D. Fla. June 24, 1985) (“[A]n injunction to enjoin
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`infringing behavior serves the public interest in protecting consumers from such behavior.”). The
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`Court’s broad equity powers allow it to fashion injunctive relief necessary to stop Defendants’
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`infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ., 402 U.S. 1, 15
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`(1971) (“Once a right and a violation have been shown, the scope of a district court’s equitable
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`powers to remedy past wrongs is broad, for . . . [t]he essence of equity jurisdiction has been the
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`power of the Chancellor to do equity and to mould each decree to the necessities of the particular
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`case.” (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical
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`Co., 321 U.S. 707, 724 (1944) (“Equity has power to eradicate the evils of a condemned scheme
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`by prohibition of the use of admittedly valid parts of an invalid whole.”).
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`Defendants have created an Internet-based infringement scheme in which they are profiting
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`from their deliberate misappropriation of Plaintiff’s rights. Unless the listings and images are
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`permanently removed, and the infringing goods destroyed, Defendants will be free to continue
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`infringing plaintiff’s intellectual property with impunity and will continue to defraud the public
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`with their illegal activities. Therefore, the Court will enter a permanent injunction ordering all
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`listings and associated images of goods bearing counterfeits and/or infringements of Plaintiff’s
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`SAFETY NAILER Mark, copyrights, or patent be permanently removed from Defendants’ internet
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`stores by the applicable internet marketplace platforms, and all infringing goods in Defendants’
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`inventories in the possession of the applicable internet marketplace platforms destroyed.
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`D. Statutory Damages for the Use of Counterfeit Marks
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`In a case involving the use of counterfeit marks in connection with a sale, offering for sale,
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`or distribution of products, 15 U.S.C. § 1117(c) provides that a plaintiff may elect an award of
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`statutory damages at any time before final judgment is rendered in the sum of not less than
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`$1,000.00 nor more than $200,000.00 per counterfeit mark per type of good or service. 15 U.S.C.
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`§ 1117(c)(1). In addition, if the Court finds that Defendants’ counterfeiting actions were willful, it
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`may impose damages above the maximum limit up to $2,000,000.00 per mark per type of good or
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`service. 15 U.S.C. § 1117(c)(2). Pursuant to 15 U.S.C. § 1117(c), Plaintiff has elected to recover
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`an award of statutory damages as to Count I of the Complaint.
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`The Court has wide discretion to determine the amount of statutory damages. See PetMed
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`Express, Inc., 336 F. Supp. 2d at 1219 (citing Cable/Home Commc’n Corp. v. Network Prod., Inc.,
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`902 F.2d 829, 852 (11th Cir. 1990)). An award of statutory damages is appropriate despite a
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`plaintiff’s inability to prove actual damages caused by a defendant’s infringement. Under Armour,
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`Inc. v. 51nfljersey.com, No. 13-62809-CIV, 2014 U.S. Dist. LEXIS 56475, at *22-*23 (S.D. Fla.
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`Apr. 23, 2014) (citing Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 852 (E.D. Mich. 2006) (“[A]
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`successful plaintiff in a trademark infringement case is entitled to recover enhanced statutory
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`damages even where its actual damages are nominal or non-existent.”); Playboy Enter., Inc. v.
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`Universal Tel-A-Talk, Inc., No. CIV.A. 96-6961, 1998 WL 767440, at *8 (E.D. Pa. Nov. 3, 1998)
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`(awarding statutory damages where plaintiff failed to prove actual damages or profits). Congress
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`enacted a statutory damages remedy in trademark counterfeiting cases because evidence of a
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`defendant’s profits in such cases is almost impossible to ascertain. See, e.g., S. REP. NO. 104-177,
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`pt. V(7) (1995) (discussing purposes of Lanham Act statutory damages); see also PetMed Express,
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`Inc., 336 F. Supp. 2d at 1220 (statutory damages are “especially appropriate in default judgment
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`cases due to infringer nondisclosure”). This case is no exception.
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`This Court may award statutory damages “without holding an evidentiary hearing based
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`upon affidavits and other documentary evidence if the facts are not disputed.” Perry Ellis Int’l,
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`Inc. v. URI Corp., No. 06-22020-CIV, 2007 WL 3047143, at *1 (S.D. Fla. Oct. 18, 2007). An
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`evidentiary hearing is not necessary where there is sufficient evidence on the record to support the
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`request for damages. See SEC v. Smyth, 420 F.3d 1225, 1232 n.13 (11th Cir. 2005) (“Rule 55(b)(2)
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`speaks of evidentiary hearings in a permissive tone . . . We have held that no such hearing is
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`required where all essential evidence is already of record.”) (citations omitted); see also PetMed
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`Express, 336 F. Supp. 2d at 1223 (entering default judgment, permanent injunction, and statutory
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`damages in a Lanham Act case without a hearing).
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`Here, the allegations in the Complaint, which are taken as true, establish Defendants
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`intentionally copied the SAFETY NAILER Mark for the purpose of deriving the benefit of
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`Plaintiff’s goodwill and reputation embodied in the mark. As such, the Lanham Act permits the
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`Court to award up to $2,000,000.00 per infringing mark on each type of service as statutory
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`damages to ensure that Defendants do not continue their intentional and willful counterfeiting
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`activities.
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`The evidence in this case demonstrates that each Defendant sold, promoted, distributed,
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`advertised, and/or offered for sale products bearing marks which were in fact counterfeits of the
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`SAFETY NAILER Mark. See ECF No. [1]. Based on the above considerations, the Court awards
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`statutory damages of $100,000.00 against each Defendant. The award should be sufficient to deter
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`Defendants and others from continuing to counterfeit or otherwise infringe Plaintiff’s trademarks,
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`compensate Plaintiff, and punish Defendants, all stated goals of 15 U.S.C. § 1117(c). The Court
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`finds that this award of statutory damages falls within the permissible statutory range under 15
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`Case No. 21-cv-22703-BLOOM/Otazo-Reyes
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`U.S.C. § 1117(c) and is just.
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`E. Damages for False Designation of Origin
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`Plaintiff’s Complaint also sets forth a cause of action for false designation of origin
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`pursuant to § 43(a) of the Lanham Act (Count II). See 15 U.S.C. § 1125(a). As to Count II, the
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`allowed scope of monetary damages is also encompassed in 15 U.S.C. § 1117(c). Accordingly,
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`judgment on Count II is limited to the amount awarded pursuant to Count I and entry of the
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`requested equitable relief.
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`F. Damages for Common Law Unfair Competition and Trademark Infringement
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`Plaintiff’s Complaint further sets forth a cause of action under Florida’s common law of
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`unfair competition (Count III) and trademark infringement (Count IV). Judgment on Count III and
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`Count IV are also limited to the amount awarded pursuant to Count I and entry of the requested
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`equitable relief.
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`G.
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`Damages for Copyright Infringement
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`Under 17 U.S.C. § 504, Plaintiff is entitled to recover either the actual damages suffered
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`as a result of the infringement plus Defendants’ additional profits, or statutory damages. Actual
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`damages are “often measured by the revenue that the plaintiff lost as a result of the infringement,
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`which includes lost sales, lost opportunities to license, or diminution in the value of the copyright.”
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`Lorentz v. Sunshine Health Prods., No. 09-61529-CIV-MORE, 2010 U.S. Dist. LEXIS 148752, at
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`*12 (S.D. Fla. Sep. 7, 2010). However here Defendants, who have not appeared, control all the
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`necessary information for a calculation of relief under § 504(b). As a result, Plaintiff cannot
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`calculate an amount recoverable pursuant to 17 U.S.C. § 504(b). Instead, Plaintiff seeks an award
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`of statutory damages for Defendants’ willful infringement of plaintiff’s copyrighted works under
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`17 U.S.C. § 504(c).
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`The allegations in the Complaint, which are taken as true, establish that Defendants 34,
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`108, and 111 (“Counterfeit Defendants”) intentionally infringed Plaintiffs’ copyrighted
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`photographs for the purpose of advertising, marketing, and selling their counterfeit products.
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`Plaintiffs suggest the Court award the highest award per work for willful infringement, $150,000.
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`This award is within the statutory range for a willful violation, and is sufficient to compensate
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`plaintiff, punish the Counterfeit Defendants, and deter Counterfeit Defendants and others from
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`continuing to infringe Plaintiffs’ copyrights.
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`H.
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`Damages for Patent Infringement
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`Plaintiff elected not to pursue actual damages under the Patent Act and is only seeking
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`equitable relief in the form of a permanent injunction. The Court awards no damages for patent
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`infringement.
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`I. Attorney’s Fees and Costs
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`Plaintiff seeks an award of reasonable attorney’s fees pursuant to 15 U.S.C. §§ 1117(a).
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`Courts routinely award attorney’s fees and costs upon a finding of willful infringement under the
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`Lanham Act and the Patent Act. Volkswagen Group of Am., Inc. v. Varona, 19-24838-CIV, 2021
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`WL 1997573, at *16 (S.D. Fla. May 18, 2021). Attorney’s fees are available under § 1117(a) in
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`exceptional cases even for those plaintiffs who opt to receive statutory damages under section
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`1117(c). See Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 104–11 (2d Cir. 2012).
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`The Copyright Act also provides for reasonable attorney’s fees and costs to the prevailing party
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`pursuant to 17 U.S.C. § 505.
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`Section 1117(a) provides that a court may award attorney’s fees “in exceptional cases.” 15
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`U.S.C. § 1117(a). Meanwhile, Section 1117(b), which applies to the use of counterfeit marks,
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`requires the court to award reasonable attorney’s fees. Under either statute an award of fees is
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`appropriate.
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`Plaintiff has established that Defendants acted willfully in their infringement of the
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`SAFETY NAILER Mark. Defendants failed to respond or otherwise act, leading to unjustified
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`delays and increased costs and fees. See Arista Records, Inc. v. Beker Enterprises, Inc., 298 F.
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`Supp.