Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 1 of 20 PageID #:3372
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`MONSTER ENERGY COMPANY,
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` Plaintiff,
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`
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`ZHENG PENG, et al.,
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` Defendants.
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`v.
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`Case No. 17-cv-414
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`Judge Robert M. Dow, Jr.
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`)
`)
`)
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`)
`)
`)
`)
`)
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`MEMORANDUM OPINION AND ORDER AND FINAL JUDGMENT
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`Monster Energy Company (“MEC” or “Plaintiff”) brings this action for federal trademark
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`infringement and counterfeiting (Count I), false designation of origin (Count II), violation of the
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`Illinois Uniform Deceptive Trade Practices Act (“UDTPA”) (Count III), and federal copyright
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`infringement (Count IV) and seeking statutory damages and injunctive relief against the
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`Defendants identified by and operating at least the Internet stores kungfugraphics, Best Auto
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`Company Store, maple-today, lijingyan_0, kind-company, willingstore16, changliang1990,
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`Mustoe-China, huizheng1029, qiushuangwuqing, hydro, benshunbao2014_5, Wynn Bibi,
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`haiyang20910, 3349776, easel, and luxury86 (collectively, “Defendants”).
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`This matter is before the Court on Plaintiff’s motion for summary judgment [47].
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`Defendants have failed to respond to the motion. For the reasons explained below, the Court
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`grants Plaintiff’s motion for summary judgment [47] and enters summary judgment in favor of
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`Plaintiff on its claims for federal trademark infringement and counterfeiting (Count I), false
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`designation of origin (Count II), violation of the UDTPA (Count III), and federal copyright
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`infringement (Count IV). The Court also enters a permanent injunction and awards Plaintiff its
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`attorneys’ fees and costs. Final Judgment is entered for Plaintiff and against Defendants.
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`

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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 2 of 20 PageID #:3373
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`Plaintiff may file a bill of costs and fee petition by November 22, 2017; if Defendants wish to
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`respond to either or both, they may do so by December 20, 2017; Plaintiff’s reply, if any, is due
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`by January 8, 2018. The Court will issue a ruling by mail on costs and attorneys’ fees.
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`I.
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`Background
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`A.
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`Local Rule 56.1
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`The Court takes the relevant facts primarily from Plaintiff’s Local Rule 56.1 Statement of
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`Material Facts and supporting exhibits. See [49], [50], [51], [52]. Defendants failed to respond
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`to Plaintiff’s Local Rule 56.1 Statement of Material Facts, and therefore admit all facts set forth
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`therein. See Local Rule 56.1(b)(3)(C) (“All material facts set forth in the statement required of
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`the moving party will be deemed to be admitted unless controverted by the statement of the
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`opposing party.”); Friend v. Valley View Cmty. Unit Sch. Dist. 365U, 789 F.3d 707, 710 (7th Cir.
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`2015) (district court properly deemed admitted facts asserted by defendants as penalty for
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`student’s noncompliance with Local Rule 56.1); Mintjal v. Prof’l Benefit Trust, 146 F. Supp. 3d
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`981, 985 (N.D. Ill. 2015) (“the penalty for failing to properly respond to a movant’s 56.1(a)
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`statement is usually summary judgment for the movant (at least if the movant has done his or her
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`job correctly) because the movant’s factual allegations are deemed admitted” (internal quotation
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`marks and citation omitted)).
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`B.
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`Plaintiff
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`Plaintiff develops, markets, sells and distributes beverages, including energy drinks. In
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`2002, Plaintiff launched its MONSTER ENERGY® brank of drinks, bearing its MONSTER
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`ENERGY mark (“Claw Icon Mark”) and copyrighted design (“Monster Energy Copyrighted
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`Design”):
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`2
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 3 of 20 PageID #:3374
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`Plaintiff also use the Claw Icon Mark and Monster Energy Copyrighted Design in connection
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`with a large variety of other products, including, but not limited to, stickers, clothing items,
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`helmets, headgear, sports gear, and sports bags that bear the Claw Icon Mark, MONSTER™
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`mark, MONSTER ENERGY® MARK, and/or the Monster Energy Copyrighted Design
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`(collectively, the “Monster Energy Products”).
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`Since the initial launch of its original MONSTER ENERGY® drink in 2002, Plaintiff’s
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`Claw Icon Mark, MONSTER™ mark, MONSTER ENERGY® mark, and the Monster Energy
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`Copyrighted Design are and have been the subject of substantial and continuous marketing and
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`promotion by Plaintiff in connection with its MONSTER™ line of drinks and MONSTER™
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`apparel and accessories.
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`C.
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`Plaintiff’s Trademarks
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`Plaintiff holds numerous U.S. federal trademark registrations for its trademarks,
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`including the trademark registrations set forth in the chart at the end of this opinion (collectively
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`referred to herein as the “MONSTER ENERGY Trademarks”). The MONSTER ENERGY
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`Trademarks are valid, subsisting, and in full force and effect. Pursuant to 15 U.S.C. § 1065, U.S.
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`Trademark Registration Nos. 3,963,669 and 3,963,668 are incontestable (the “Incontestable
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`MONSTER ENERGY Trademarks”). Incontestable status under 15 U.S.C. § 1065 provides that
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`the registrations for the Incontestable MONSTER ENERGY Trademarks are “conclusive
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`evidence of the validity of the registered mark and of the registration of the mark, of the
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`3
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 4 of 20 PageID #:3375
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`registrant's ownership of the mark, and of the registrant's exclusive right to use the registered
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`mark in commerce.” 15 U.S.C. §§ 1115(b).
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`D.
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`Plaintiff’s Copyrighted Design
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`Plaintiff is the owner of the Monster Energy Copyrighted Design, which it has registered
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`with the United States Copyright Office. The registrations include, but are not limited to,
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`“Stylized claw with jagged edges (original version)” (U.S. Copyright Registration No. VA 1-
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`789-900), issued by the Register of Copyrights on October 11, 2011, and the corresponding
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`supplemental registration changing ownership name from Hansen Beverages Company to
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`Monster Energy Company: VA 1-433-242.
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`E.
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`Defendants
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`Defendants have engaged in the advertising, offering for sale, and/or selling unauthorized
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`and unlicensed products using counterfeit reproductions of Plaintiff’s federally registered,
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`famous and well-known trademarks, unauthorized copies of Plaintiff’s federally registered
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`copyright designs, or both
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`through
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`the fully
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`interactive, commercial Internet stores
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`kungfugraphics, BestAuto Company Store, maple-today,
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`lijingyan_0, kind-company,
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`willingstore16, changliang1990, MKStore-China, huizheng1029, qiushuangwuqing, hwydo,
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`benshunbao2014_5, wynnbibi, haiyang20910, 3349776, erasable, and luxury86 (the “Defendant
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`Internet Stores”). Specifically, Defendants offered for sale and/or sold unauthorized and
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`unlicensed gloves, stickers and/or decals, backpacks and sports helmets using counterfeit
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`reproductions of the MONSTER ENERGY Trademarks. Defendants also offered for sale and/or
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`sold unauthorized and unlicensed automotive accessories bearing unauthorized copies of the
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`Monster Energy Copyrighted Design.
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`4
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 5 of 20 PageID #:3376
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`Plaintiff has not authorized or licensed the Defendants to use the MONSTER ENERGY
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`Trademarks or the Monster Energy Copyrighted Design on or in connection with the Defendant
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`Internet Stores. Defendants are not authorized retailers of genuine Monster Energy Products,
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`and the products advertised, offered for sale and/or sold on the Defendant Internet Stores are not
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`genuine Monster Energy Products.
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`II.
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`Summary Judgment Standard
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`Summary judgment is proper where “the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). “A party asserting that a fact cannot be or is genuinely disputed must support the assertion
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`by . . . citing to particular parts of materials in the record” or “showing that the materials cited do
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`not establish the absence or presence of a genuine dispute, or that an adverse party cannot
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`produce admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1). A genuine issue of
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`material fact exists if “the evidence is such that a reasonable jury could return a verdict for the
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`nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The party
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`seeking summary judgment has the burden of establishing the lack of any genuine issue of
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`material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The Court “must construe
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`all facts and draw all reasonable inferences in the light most favorable to the nonmoving party.”
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`Majors v. Gen. Elec. Co., 714 F.3d 527, 532-33 (7th Cir. 2013) (citation omitted).
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`To avoid summary judgment, the nonmoving party must go beyond the pleadings and
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`“set forth specific facts showing that there is a genuine issue for trial.” Liberty Lobby, 477 U.S.
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`at 250. Summary judgment is proper if the nonmoving party “fails to make a showing sufficient
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`to establish the existence of an element essential to that party’s case, and on which that party will
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`bear the burden of proof at trial.” Ellis v. CCA of Tennessee LLC, 650 F.3d 640, 646 (7th Cir.
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`5
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 6 of 20 PageID #:3377
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`2011) (quoting Celotex, 477 U.S. at 322). The non-moving party “must do more than simply
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`show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus.
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`Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). In other words, the “mere existence
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`of a scintilla of evidence in support of the [non-movant’s] position will be insufficient; there
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`must be evidence on which the jury could reasonably find for the [non-movant].” Liberty Lobby,
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`477 U.S. at 252.
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`III. Analysis
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`A.
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`Trademark Infringement and Counterfeiting, False Designation of Origin,
`and Violation of the UDTPA
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`Plaintiff moves for entry of summary judgment against Defendants for federal trademark
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`infringement and counterfeiting (Count I), false designation of origin (Count II), and violation of
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`the UDTPA (Count II) for six unique mark/good combinations, which are set forth in the chart
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`included in Plaintiff’s summary judgment brief, [48] at 18-19.
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`A defendant is liable for trademark infringement and counterfeiting under the Lanham
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`Act if it, “without the consent of the registrant, use[s] in commerce, any reproduction, copy, or
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`colorable imitation of a registered mark in connection with the sale, offering for sale,
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`distribution, or advertising of any goods … which such use is likely to cause confusion, or to
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`cause mistake or to deceive.” 15 U.S.C. § 1114(1).
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`
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`Section 43(a) of the Lanham Act further imposes liability upon a defendant who “on or in
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`connection with any goods or services ... uses in commerce any ... false designation of origin,
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`false or misleading description of fact, or false or misleading misrepresentation of fact, which is
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`likely to cause confusion or to cause mistake, or to deceive as to the ... origin, sponsorship, or
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`approval of his or her goods ... by another person.” 15 U.S.C. § 1125(a)(1). Plaintiff’s claims
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`under Section 43(a) of the Lanham Act and the UDTPA involve the same elements. See
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`6
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 7 of 20 PageID #:3378
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`Packaging Supplies, Inc. v. Harley-Davidson, Inc., 2011 WL 1811446, at *5 (N.D. Ill. May 12,
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`2011). Under the UDTPA, a defendant is liable for, among other things, (1) passing off goods as
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`those of another; (2) causing likelihood of confusion or of misunderstanding as to the source,
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`sponsorship, approval, or certification of goods; or (3) causing likelihood of confusion or of
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`misunderstanding as to affiliation, connection, or association with another. 815 Ill. Comp. Stat.
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`510/2(a).
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`Applying these standards to the undisputed facts, the Court concludes that Plaintiff
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`satisfies all requirements to prevail on its trademark infringement, counterfeiting, and UDTPA
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`claims. Plaintiff’s MONSTER ENERGY Trademarks are registered with the United States
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`Patent and Trademark Office on the Principal Register. The issuance of federal registrations on
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`the Principal Register constitutes “prima facie evidence of the validity” of Plaintiff’s registered
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`trademarks and of the registration of the marks, of Plaintiff’s “ownership of the mark[s],” and of
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`the Plaintiff’s “exclusive right to use the registered mark[s] in commerce.” 15 U.S.C. §§
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`1115(a), 1057(b). Defendants do not contest the validity of Plaintiff’s registered trademarks or
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`the registration of the marks.
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`
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`Pursuant to 15 U.S.C. § 1065, U.S. Trademark Registration Nos. 3,963,669 and
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`3,963,668 are incontestable. Incontestable status under 15 U.S.C. § 1065 provides that the
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`registrations for the Incontestable MONSTER ENERGY Trademarks are “conclusive evidence”
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`of their validity and the validity of the registration of the marks, of Plaintiff’s ownership of the
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`marks, and of Plaintiff’s exclusive right to use the marks in commerce. 15 U.S.C. §§ 1115(b),
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`1065. Therefore, the Court concludes that no genuine issue of material fact as to whether
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`Plaintiff has valid and exclusive rights in the MONSTER ENERGY Trademarks.
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`7
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 8 of 20 PageID #:3379
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`The undisputed facts show that Defendants advertised, offered for sale and/or sold
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`products using the MONSTER ENERGY Trademarks via the Defendant Internet Stores.
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`Defendants are not authorized retailers of genuine MEC products, and the products advertised,
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`offered for sale and/or sold using the MONSTER ENERGY Trademarks on the Defendant
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`Internet Stores are not genuine MEC products.
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`The Court further concludes that the six mark/good combinations used on Defendants’
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`products, see [48] at 18-19, are identical to, or substantially indistinguishable from, the registered
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`MONSTER ENERGY Trademarks, and therefore are counterfeit. See 15 U.S.C. § 1127.
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`
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`Finally, the Court concludes that Defendants’ misuse of Plaintiff’s trademarks creates a
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`likelihood of confusion among consumers. Where, as here, “one produces counterfeit goods in
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`an apparent attempt to capitalize upon the popularity of, and demand for, another’s product, there
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`is a presumption of a likelihood of confusion.” Luxottica Group S.p.A., et al. v. Light In The Box
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`Limited, 2016 U.S. Dist. LEXIS 144660, at *24 (N.D. Ill. Oct. 19, 2016) (citing Microsoft Corp.
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`v. Rechanik, 249 F. App’x 476, 479 (7th Cir. 2007)). Defendants do not dispute this element of
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`the trademark claim. Accordingly, the Court can presume a likelihood of confusion from
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`Defendants’ use of the MONSTER ENERGY Trademarks.
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`
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`Therefore, the Court concludes that Plaintiff is entitled to summary judgment on its
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`claims for federal trademark infringement and counterfeiting (Count I), false designation of
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`origin (Count II), and violation of the UDTPA (Count II).
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`B.
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`Copyright Infringement
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`Plaintiff also moves for summary judgment on its federal copyright infringement claim
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`(count IV). The United States Copyright Act provides that “[a]nyone who violates any of the
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`exclusive rights of the copyright owner … is an infringer of the copyright.” 17 U.S.C. § 501(a).
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`8
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 9 of 20 PageID #:3380
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`The Copyright Act grants a copyright owner the exclusive rights to reproduce, prepare derivative
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`works, distribute copies of, and display a copyrighted design to the public. 17 U.S.C. § 106. To
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`establish a claim for copyright infringement, a plaintiff must show: “(1) ownership of a valid
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`copyright, and (2) copying of constituent elements of the work that are original.” JCW Invs., Inc.
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`v. Novelty, Inc., 482 F.3d 910, 914 (7th Cir. 2007) (internal quotation marks and citation
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`omitted). Copying can be shown through direct evidence, or it can be inferred where a defendant
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`had access to the copyrighted work and the accused work is substantially similar. Spinmaster,
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`Ltd. v. Overbreak LLC, 404 F. Supp. 2d 1097, 1103 (N.D. Ill. 2005). To determine whether
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`there is a substantial similarity that indicates infringement, Courts use the “ordinary observer”
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`test, which asks whether “‘the accused work is so similar to the plaintiff’s work that an ordinary
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`reasonable person would conclude that the defendant unlawfully appropriated protectable
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`expression by taking material of substance and value.’” Id. at 1105 (quoting Incredible
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`Technologies, Inc. v. Virtual Technologies, Inc., 400 F.3d 1007, 1011 (7th Cir. 2005)). A work
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`may be deemed infringing if it captures the “‘total concept and feel of the copyrighted work.’”
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`Id. (quoting Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607,
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`614 (7th Cir. 1982)).
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`
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`Defendants admit in their answer (as well as by failing to respond to Plaintiff’s motion
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`for summary judgment) that Plaintiff is the owner of a valid and enforceable Monster Energy
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`Copyrighted Design, which contains certain copyrightable subject matter under 17 U.S.C. §§
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`101, et seq., and which is registered with the United States Copyright Office. Defendants also
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`admit that the registrations include, but are not limited to, “Stylized claw with jagged edges
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`(original version)” (U.S. Copyright Registration No. VA 1-789-900), issued by the Register of
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`Copyrights on October 11, 2011, and the corresponding supplemental registration changing
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`9
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 10 of 20 PageID #:3381
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`ownership name from Hansen Beverages Company to Monster Energy Company: VA 1-433-
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`242. Defendants further admit that among the exclusive rights granted to Plaintiff under the U.S.
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`Copyright Act are the exclusive right to reproduce, prepare derivative works of, distribute copies
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`of, and display the Monster Energy Copyrighted Design to the public. Therefore, there is no
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`genuine issue of material fact as to whether Plaintiff has valid and exclusive rights in the
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`Monster Energy Copyrighted Design.
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`
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`It is also undisputed that Defendants copied constituent elements of Plaintiff’s Monster
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`Energy Copyrighted Design. The side-by-side comparison provided in Plaintiff’s brief, see [48]
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`at 23, shows that Defendants’ Unauthorized Monster Energy Products are virtually identical to
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`and/or are substantially similar to the look and feel of the Monster Energy Copyrighted Design.
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`The Court therefore concludes that Defendants have unlawfully appropriated Plaintiff’s
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`protectable expression by taking material of substance and value and incorporating it in the
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`Unauthorized Monster Energy Products to capture the total concept and feel of the Monster
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`Energy Copyrighted Design, in violation of 17 U.S.C. § 501(a) and 17 U.S.C. §§ 106(1)–(3), (5).
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`The Court grants summary judgment in favor of Plaintiff on its federal copyright infringement
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`claim (count IV).
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`C.
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`Statutory Damages
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`Plaintiff seeks an award of statutory damages as authorized by 15 U.S.C. § 1117(c) for
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`trademark counterfeiting for Defendants’ advertising, offering for sale and/or sale of
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`Unauthorized Monster Energy Products. Specifically, Plaintiff requests that the Court award it at
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`least $100,000 for each of six mark-good combinations ($600,000 total) against the Defendants
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`for willful counterfeiting of the MONSTER ENERGY Trademarks and at least fifty thousand
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`dollars ($50,000) for willful copyright infringement of the Monster Energy Copyrighted Design.
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`10
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 11 of 20 PageID #:3382
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`
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`Pursuant to the statutory damages provision of the Lanham Act, 15 U.S.C. § 1117(c), a
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`plaintiff in a case involving the use of a counterfeit mark may elect to receive “not less than
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`$1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered
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`for sale, or distributed, as the court considers just.” 15 U.S.C. § 1117(c)(1). When the
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`counterfeiting is found to be willful, 15 U.S.C. § 1117(c)(2) provides for statutory damages of up
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`to “$2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or
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`distributed, as the court considers just.” 15 U.S.C. § 1117(c)(2).
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`Pursuant to the statutory damages provision of the Copyright Act, 17 U.S.C. § 504(c), a
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`plaintiff in a case involving copyright infringement may elect to receive statutory damages of
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`“not less than $750 or more than $30,000 as the court considers just.” 17 U.S.C. § 504(c)(1).
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`When the copyright infringement is found to be willful, 17 U.S.C. § 504(c)(2) provides for
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`statutory damages “to a sum of not more than $150,000.” 17 U.S.C. § 504(c)(2).
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`“Willful infringement may be attributed to the defendant’s actions where he had
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`knowledge that his conduct constituted infringement or where he showed a reckless disregard for
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`the owner’s rights.” Luxottica Group S.p.A. v. Chen, 2017 WL 836228, at *2 (N.D. Ill. Mar. 2,
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`2017). Knowledge need not be proven directly, but can be inferred from a defendant’s conduct.
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`Id. In awarding statutory damages, the Court is “not required to follow any rigid formula,” but
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`instead “enjoys wide discretion.” Chi-Boy Music v. Charlie Club, 930 F.2d 1224, 1229 (7th Cir.
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`1991). The Court may consider “various factors,” including “the difficulty or impossibility of
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`proving actual damages, the circumstances of the infringement, and the efficacy of the damages
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`as a deterrent to future copyright infringement.” Id. (internal quotation marks and citation
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`omitted).
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`11
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 12 of 20 PageID #:3383
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`As the Court determined above, there is no genuine issue of material fact as to whether
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`Defendants have infringed the MONSTER ENERGY Trademarks and Monster Energy
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`Copyrighted Design. Further, the Court concludes that there is no genuine issue of material fact
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`as to whether Defendants’ infringement was willful. It is undisputed that, because of Plaintiff’s
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`advertising and promotional efforts and its continuous use of the MONSTER ENERGY
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`Trademarks for more than a decade, MEC is among the most recognized energy drink brands in
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`the United States, and the MONSTER ENERGY Trademarks and Copyrighted Design have
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`become famous. Defendants used marks and designs that were virtual identical to Plaintiff’s.
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`The only reasonable inference from this evidence is that Defendants were, at the very least,
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`aware of the possibility that they were selling infringing products. Therefore, the Court
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`concludes that Plaintiff’s use of the Trademarks and Copyrighted design was willful.
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`The statutory damages that Plaintiff has requested fall well within the range of damages
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`authorized by 15 U.S.C. § 1117(c) for willful trademark infringement and 17 U.S.C. § 504(c) for
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`willful copyright infringement. Defendants offer no response to Plaintiff’s damages requests.
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`The Court concludes that Plaintiff’s requests are reasonable, would not give Plaintiff a windfall,
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`and could serve to deter Defendants from engaging in further infringements. The Court awards
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`Plaintiff $100,000 for each of six mark-good combinations ($600,000 total) against the
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`Defendants for willful counterfeiting of the MONSTER ENERGY Trademarks and fifty
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`thousand dollars ($50,000) for willful copyright infringement of the Monster Energy
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`Copyrighted Design.
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`D.
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`Permanent Injunction
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`Pursuant to 15 U.S.C. § 1116(a), the Court will also enter a permanent injunction
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`enjoining Defendants from advertising, offering for sale, and/or selling Unauthorized Monster
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`12
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`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 13 of 20 PageID #:3384
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`Energy Products or otherwise violating Plaintiff’s rights in the MONSTER ENERGY
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`Trademarks and the Monster Energy Copyrighted Design. See Monster Energy Company v.
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`Xianda Lin, et al., No. 1:16-cv-00622 (N.D. Ill. Mar. 14, 2016) (permanently enjoining and
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`restraining defendants from selling counterfeit products). Evidence submitted in support of
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`Plaintiff’s motion for summary judgment and in support of Plaintiff’s previously granted motion
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`for entry of a temporary restraining order and motion for entry of a preliminary injunction
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`establish that Plaintiff is entitled to a permanent injunction. The first two requirements for
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`permanent injunctive relief, irreparable harm and inadequate remedy at law, are presumed in
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`trademark and copyright infringement cases. See Eli Lilly & Co. v. Natural Answers, Inc., 2333
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`F.3d 456, 469 (7th Cir. 2000); Atari, 672 F.2d at 620; MetroPCS v. Devor, 215 F. Supp. 3d 626,
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`639 (N.D. Ill. 2016). Defendants have made no attempt to rebut this presumption. Considering
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`the balance of hardships between Plaintiff and Defendant, a remedy in equity is warranted.
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`Defendant has no right to use Plaintiff’s protected marks, and Defendants’ infringement has
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`caused Plaintiff to spend substantial time and money policing its marks. Finally, the public
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`interest would not be disserved by a permanent injunction because “the public interest lies in
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`favor of upholding property interests in trademarks and preventing customer confusion.”
`
`MetroPCS, 215 F. Supp. 3d 626, 640 (N.D. Ill. 2016).
`
`
`
`E.
`
`Attorneys’ Fees and Costs
`
`Plaintiff requests that Defendants be required to pay its attorneys’ fees and costs.
`
`Pursuant to 15 U.S.C. § 1117(b), in a case involving use of a counterfeit mark, the court shall,
`
`unless it finds extenuating circumstances, award a reasonable attorney’s fee if the violation
`
`consists of intentionally using a mark, knowing such mark is a counterfeit mark, in connection
`
`with the sale, offering for sale, or distribution of goods. 15 U.S.C. § 1117(b); see also Luxottica
`
`
`
`13
`
`

`

`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 14 of 20 PageID #:3385
`
`USA LLC v. The Partnerships and Unincorporated Associations Identified On Schedule “A”,
`
`2015 WL 3818622, at *5 (N.D. Ill. June 18, 2015). Thus, if a defendant is liable because it was
`
`willfully blind, or because it knew the products it was selling were counterfeit, an award of
`
`attorney’s fees is mandatory under § 1117(b), absent extenuating circumstances. Tony Jones
`
`Apparel, Inc. v. Indigo USA LLC, 2005 WL 1667789, at *9 (N.D. Ill. July 11, 2005).
`
`The Court concludes that Plaintiff is entitled to an award of its reasonable attorney’s fees
`
`and costs pursuant to 15 U.S.C. § 1117(a) and (b) because it is undisputed that Defendants
`
`knowingly and willfully advertised, offered for sale and/or sold Unauthorized Monster Energy
`
`Products. The Court directs Plaintiff to file a bill of costs and fee petition by November 22,
`
`2017.
`
`IV.
`
`Final Judgment
`
`This Court having entered, upon a showing by Plaintiff, a temporary restraining order and
`
`preliminary injunction against Defendants which included an asset restraining order;
`
`Plaintiff having shown that there is no genuine dispute as to any material fact regarding
`
`Defendants’ liability for willful trademark infringement and counterfeiting, false designation of
`
`origin using counterfeit trademarks, violation of the Illinois Uniform Deceptive Trade Practices
`
`Act and copyright infringement;
`
`THIS COURT HEREBY FINDS that, pursuant to Fed. R. Civ. P. 56(a), Plaintiff is
`
`entitled to judgment as a matter of law;
`
`THIS COURT FURTHER FINDS that it has personal jurisdiction over Defendants since
`
`Defendants directly target their business activities toward consumers in the United States,
`
`including Illinois. Specifically, Defendants are reaching out to do business with Illinois residents
`
`by operating at least the commercial, interactive Defendant Internet Stores through which Illinois
`
`
`
`14
`
`

`

`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 15 of 20 PageID #:3386
`
`residents can purchase products bearing unauthorized copies of the Monster Energy Copyrighted
`
`Design1 (including U.S. Copyright Registration No. VA 1-789-900) and/or using counterfeit
`
`versions of the MONSTER ENERGY Trademarks2 (a list of which is included in the below
`
`chart) (such products collectively referred to herein as the “Unauthorized Monster Energy
`
`Products”).
`
`
`
`
`
`
`1 “Monster Energy Copyrighted Design” has the meaning ascribed to it in Plaintiff’s Memorandum in
`Support of its Motion for Summary Judgment [35] and the instant memorandum opinion and order.
`2 “MONSTER ENERGY Trademarks” has the meaning ascribed to it in Plaintiff’s Memorandum in
`Support of its Motion for Summary Judgment and the instant memorandum opinion and order.
`
`
`
`15
`
`

`

`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 16 of 20 PageID #:3387
`
`NO. REGISTRATION
`NUMBER
`4,051,650
`
`
`
` 1
`
`
`
`
`
` 2
`
`
`
`
`
` 3
`
`
`
`
`
` 4
`
`
`
`
`
`
`
`
` 5
`
`
`
`
`
`
`
` 3,923,683
`
`3,908,600
`
`February 22,
`2011
`
`For: All-purpose sport bags;
`all-purpose carrying bags;
`backpacks; duffle bags in
`class 018.
`
`January 18,
`2011
`
`For: Stickers; sticker kits
`comprising stickers and
`decals; decals in class 016.
`
`
`
`
`
`
`16
`
`REGISTERED
`TRADEMARK
`
`REGISTRATION
`DATE
`November 8,
`2011
`
`3,963,669
`
`May 17, 2011
`
`3,963,668
`
`May 17, 2011
`
`INTERNATIONAL
`CLASSES
`For: Clothing, namely, t-
`shirts, hooded shirts and
`hooded sweatshirts, sweat
`shirts, jackets, pants,
`bandanas, sweat bands and
`gloves; headgear, namely hats
`and beanies in class 025.
`For: All-purpose sport bags;
`all-purpose carrying bags;
`backpacks; duffel bags in
`class 018.
`
`For: Stickers; sticker kits
`comprising stickers and
`decals; decals; posters in
`class 016.
`
`

`

`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 17 of 20 PageID #:3388
`
`4,011,301
`
`August 16, 2011 For: Sports helmets; video
`recordings featuring sports,
`extreme sports, and motor
`sports in class 009.
`
`THIS COURT FURTHER FINDS that Defendants are liable for willful federal trademark
`
`
`
` 6
`
`
`
`
`
`infringement and counterfeiting (15 U.S.C. § 1114) for each of the six mark/good combinations,
`
`false designation of origin (15 U.S.C. § 1125(a)), violation of the Illinois Uniform Deceptive
`
`Trade Practices Act (815 ILCS § 510, et seq.), and copyright infringement (17 U.S.C. §§ 106 and
`
`501, et seq.).
`
`IT IS HEREBY ORDERED that Plaintiff’s Motion for Summary Judgment and a
`
`Statutory Damages Award as to Defendants is GRANTED in its entirety, and that this Final
`
`Judgment is entered against Defendants.
`
`IT IS FURTHER ORDERED that:
`
`1.
`
`Defendants, their affiliates, officers, agents, servants, employees, attorneys, confederates,
`
`and all persons acting for, with, by, through, under, or in active concert with Defendants
`
`be permanently enjoined and restrained from:
`
`a. using the MONSTER ENERGY Trademarks or any reproductions, counterfeit
`
`copies or colorable imitations thereof in any manner in connection with the
`
`distribution, marketing, advertising, offering for sale, or sale of any product that is
`
`not a genuine Monster Energy Product or not authorized by Plaintiff to be sold in
`
`connection with the MONSTER ENERGY Trademarks;
`
`
`
`17
`
`

`

`Case: 1:17-cv-00414 Document #: 55 Filed: 10/23/17 Page 18 of 20 PageID #:3389
`
`b.
`
`reproducing, distributing copies of, making derivative works of, or publicly
`
`displaying the Monster Energy Copyrighted Design in any manner without the
`
`express authorization of Plaintiff;
`
`c. passing off, inducing, or enabling others to sell or pass off any product as a genuine
`
`Monster Energy Product or any other product produced by Plaintiff, that is not
`
`Plaintiff’s or not produced under the authorization, control or supervision of Plaintiff
`
`and approved by Plaintiff for sale under the MONSTER ENERGY Trademarks
`
`and/or the Monster Energy Copyrighted Design;
`
`d. committing any acts calculated to cause consumers to believe that Defendants’
`
`Unauthorized Monster Energy Products are those sold under the authorization,
`
`control or supervision of Plaintiff, or are sponsored by, approved by, or otherwise
`
`connected with Plaintiff;
`
`e.
`
`further infringing the MONSTER ENERGY Trademarks and/or the Monster Energy
`
`Copyrighted Design and damaging Plaintiff’s goodwill; and
`
`f. manufacturing, shipping, delivering, holding for sale, transferring or otherwise
`
`moving, storing, distributing, returning, or otherwise disposing of, in any manner,
`
`products or inventory not man