Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`v.
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`BENSON MILLS INC.,
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`Plaintiff,
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`KENNETH FORTENBERRY et al.,
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`Defendants.
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`CASE NO. C23-0686-KKE
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`ORDER GRANTING MOTION FOR
`DEFAULT JUDGMENT
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`Plaintiff Benson Mills, Inc. (“Benson”) accuses Defendant Kenneth Fortenberry of
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`submitting takedown notices through Amazon.com’s ecommerce platform that falsely state
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`Benson is infringing copyrights that Benson, in fact, owns. Fortenberry has not appeared in this
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`action and Benson has shown it is entitled to default judgment on its Digital Millenium Copyright
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`Act (“DMCA”) and unfair competition claims and that it is entitled to entry of injunctive relief
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`prohibiting Fortenberry from submitting fraudulent takedown notices.
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`I. BACKGROUND
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`Benson sells “table linens, placemats and other home textiles” with original copyrighted
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`designs. Dkt. No. 1 ¶ 7. Benson “markets and advertises its goods using photographs” which are
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`also copyrighted by Benson. Id. Benson sells a significant percentage of its goods on the
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`Amazon.com ecommerce platform. Id. ¶ 9. In December 2022, March 2023, and April 2023,
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`Fortenberry sent DMCA takedown notices to Amazon on Benson’s copyrighted photographs,
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`ORDER GRANTING MOTION FOR DEFAULT JUDGMENT - 1
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 2 of 8
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`copyrighted designs, and copyrighted content and packaging. Id. ¶¶ 11A–F. Benson alleges that
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`each takedown notice was fraudulent because Fortenberry falsely confirmed under penalty of
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`perjury that he had “a good faith belief” that the complained of material “is not authorized by the
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`copyright owner, its agent, or the law.” Id. ¶ 12. Due to the filing of these takedown notices,
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`Amazon “either disabled the product listings” or “removed the photographs” of the product,
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`causing Benson to lose significant sales “during the critical holiday selling seasons.” Id. ¶ 13.
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`In May 2023, Benson filed this case alleging violation of Section 512(f) of the DMCA,
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`business defamation, violation of the Washington Consumer Protection Act, and common law
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`unfair competition. Dkt. No. 1 ¶¶ 16–39. Benson sought damages, a permanent injunction,
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`prejudgment interest, punitive damages, and reasonable attorney’s fees and costs. Id. at 10–11.
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`After the Court granted Benson expedited discovery on Amazon (Dkt. No. 8) and multiple
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`extensions of time to serve Defendants (Dkt. Nos. 10, 12, 14), Benson filed an affidavit of service
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`on January 12, 2024. Dkt. No. 16. Benson served Fortenberry by FedEx and the proof of delivery
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`was signed by K. Fortenberry on December 11, 2023. Id. On February 28, 2024, the Court granted
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`Benson’s motion for entry of default under Federal Rule of Civil Procedure 55(a). Dkt. No. 20.
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`Benson now moves for entry of default judgment and a permanent injunction against Fortenberry
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`for his violations of the DMCA and common law unfair competition. Dkt. No. 20.
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`A.
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`Jurisdiction
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`II. ANALYSIS
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`Before entering default judgment, the Court must confirm that it has both subject matter
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`and personal jurisdiction. See In re Tuli, 172 F.3d 707, 712 (9th Cir. 1999) (“When entry of
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`judgment is sought against a party who has failed to plead or otherwise defend, a district court has
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`an affirmative duty to look into its jurisdiction over both the subject matter and the parties.”).
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`ORDER GRANTING MOTION FOR DEFAULT JUDGMENT - 2
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 3 of 8
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`This Court has subject matter jurisdiction over this action under 28 U.S.C. § 1331 because
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`Benson asserts a federal law cause of action for violation of Section 512(f) of the DMCA, and
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`supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367(a). Dkt. No. 1 ¶ 4.
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`The Court has personal jurisdiction over Fortenberry based on the accepted-as-true
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`allegation that he submitted the fraudulent takedown notices to Amazon.com, which is based in
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`the Western District of Washington. WASH. REV. CODE § 4.28.185(1)(b).
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`B.
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`Legal Standards
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`A court’s decision to enter a default judgment is discretionary. Aldabe v. Aldabe, 616 F.2d
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`1089, 1092 (9th Cir. 1980). Default judgment is “ordinarily disfavored[,]” because “[c]ases should
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`be decided upon their merits whenever reasonably possible.” Eitel v. McCool, 782 F.2d 1470,
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`1472 (9th Cir. 1986) (affirming district court’s denial of default judgment). At the default
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`judgment stage, the court takes “the well-pleaded factual allegations” in the complaint “as true[,]”
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`but “necessary facts not contained in the pleadings, and claims which are legally insufficient, are
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`not established by default.” Cripps v. Life Ins. Co. of N. Am., 980 F.2d 1261, 1267 (9th Cir. 1992).
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`When considering whether to exercise discretion in entering a default judgment, courts may
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`consider various factors, including:
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`(1) the possibility of prejudice to the plaintiff, (2) the merits of plaintiff’s
`substantive claim, (3) the sufficiency of the complaint, (4) the sum of money at
`stake in the action; (5) the possibility of a dispute concerning material facts; (6)
`whether the default was due to excusable neglect, and (7) the strong policy
`underlying the Federal Rules of Civil Procedure favoring decisions on the merits.
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`Eitel, 782 F.2d at 1471–72. “The merits of the plaintiff’s substantive claim and the sufficiency of
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`the complaint are often treated by courts as the most important Eitel factors.” Fed. Nat. Mortg.
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`Ass’n v. George, No. EDCV 14-01679-VAP (SPx), 2015 WL 4127958, at *3 (C.D. Cal. July 7,
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`2015). This district also requires a party seeking default judgment to provide “a declaration and
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 4 of 8
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`other evidence establishing plaintiff’s entitlement to a sum certain and to any nonmonetary relief
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`sought.” Local Rules W.D. Wash. LCR 55(b)(2).
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`C.
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`Benson Is Entitled to Default Judgment Against Fortenberry.
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`As detailed below, the Court has considered each of the Eitel factors and concludes that
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`Benson is entitled to default judgment.
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`The first factor, prejudice to Benson, favors granting default judgment because Benson
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`“has no recourse for recovery other than default judgment” because Fortenberry has failed to
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`respond to this action. Curtis v. Illumination Arts, Inc., 33 F. Supp. 3d 1200, 1211 (W.D. Wash.
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`2014) (cleaned up).
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`“The second and third Eitel factors—the substantive merits of the claim and the sufficiency
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`of the complaint—are often analyzed together.” Illumination Arts, 33 F. Supp. 3d at 1211. Benson
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`moves for default judgement on the DMCA violation claim and the common law unfair
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`competition claim. Dkt. No. 21 at 4–5. Taking the well-pleaded allegations as true, the Court
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`finds that the second and third Eitel factors support default judgment for both claims. Under
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`section 512(f) of the DMCA, “[a]ny person who knowingly materially misrepresents under this
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`section (1) that material or activity is infringing … shall be liable for any damages.” 17 U.S.C. §
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`512(f). In its complaint, Benson identifies specific DMCA takedown notices submitted by
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`Fortenberry, the targeted products and photographs, and the copyright registrations for the
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`products and allegations of ownership of the photographs. Dkt. No. 1 ¶¶ 11A–F. Assuming these
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`allegations are true, Fortenberry materially misrepresented that the products/photos/packaging
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`were infringing in his takedown notices, thus violating the DMCA. Because Benson’s unfair
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`competition claim is based on the theory that “a competitor who diverts business from another by
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`means of fraudulent misrepresentations” is liable for unfair competition, this claim has been
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 5 of 8
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`sufficiency alleged and supported for the same reasons as the DMCA violation. In sum, Benson’s
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`claims have merit and are sufficient to satisfy the second and third Eitel factors.
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`The fourth factor, the sum of money at stake, favors entering default judgment because
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`Benson does not seek any financial recovery. “When a plaintiff seeks only injunctive relief and
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`no monetary damages in its motion for default judgment, the fourth Eitel factor weighs in favor of
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`default judgment.” Padded Spaces LLC v. Weiss, No. C21-0751JLR, 2022 WL 2905887, at *5
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`(W.D. Wash. July 22, 2022) (citing PepsiCo, Inc., v. Cal. Security Cans, 238 F. Supp. 2d 1172,
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`1177 (C.D. Cal. 2002)).
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`The fifth factor, the possibility of dispute over material facts, favors entering default
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`judgment. Generally, after default has been entered, “courts find that there is no longer the
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`possibility of a dispute concerning material facts because the court must take the plaintiff’s factual
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`allegations are true.” Illumination Arts, 33 F. Supp. 3d at 1212.
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`The sixth factor, whether default is due to excusable neglect, favors entering default
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`judgment because Fortenberry has been served with the complaint (Dkt. No. 16)1 but has not
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`entered an appearance or participated in this action.
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`The seventh factor weighs against entering default judgment because the Federal Rules of
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`Civil Procedure favor resolution of claims through contested litigation. However, default
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`judgment is not precluded by this finding. See Empl. Painters’ Trust v. Dahl Constr. Servs., Inc.,
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`No. C19-1541-RSM, 2020 WL 3639591 (W.D. Wash. July 6, 2020) (explaining that when a
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`defendant fails to appear, the policy favoring a decision on the merits does not preclude the entry
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`of default judgment).
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`1 Service was proper under Federal Rule of Civil Procedure 4(e)(1) and N.C. Gen. Stat. §1A-1, Rule 4. See Shreve
`v. Wolfe, No. 5:21-CV-98-BO, 2021 WL 3824674, at *1 (E.D.N.C. Aug. 26, 2021) (explaining affidavit of service
`with return receipt attached will create a presumption of valid service for default judgment).
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`ORDER GRANTING MOTION FOR DEFAULT JUDGMENT - 5
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 6 of 8
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`On balance, the Court concludes the Eitel factors favor granting default judgment.
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`D.
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`Benson Is Entitled to a Permanent Injunction Against Fortenberry.
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`Benson seeks a permanent injunction prohibiting Fortenberry and any related entity or
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`individual “from filing with any company, website host, search engine or internet service provider
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`any notices or counter-notices under the [DMCA], asserting that any Benson Mills products
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`incorporating designs previously registered by Benson Mills with the U.S. Copyright Office are
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`violative of purported copyrights owned by Defendant.” Dkt. No. 21-1. Under 17 U.S.C. § 502(a),
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`the Court can “grant temporary and final injunctions on such terms as it may deem reasonable to
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`prevent or restrain infringement of a copyright.” For the Court to grant a permanent injunction, a
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`plaintiff must demonstrate that: (1) it has suffered irreparable injury; (2) the remedies available at
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`law are inadequate; (3) a remedy in equity is warranted, considering the hardships imposed on the
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`parties; and (4) a permanent injunction would not be contrary to the public interest. See Reno Air
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`Racing Ass’n v. McCord, 452 F.3d 1126, 1137 n.11 (9th Cir. 2006) (citing eBay Inc. v.
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`MercExchange, L.L.C., 547 U.S. 388, 391 (2006)). Generally, an injunction must be narrowly
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`tailored to remedy only the specific harms shown by a plaintiff, rather than to enjoin all possible
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`breaches of the law. See Price v. City of Stockton, 390 F.3d 1105, 1117 (9th Cir. 2004).
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`Based on the allegations in the Complaint, Benson has demonstrated that it is entitled to
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`permanent injunctive relief against Fortenberry. First, Benson has shown it has suffered
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`irreparable injury through the removal of its products and photos on Amazon.com, one of its largest
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`selling channels. Dkt. No. 1 ¶¶ 9, 13–15; see Beyond Blond Prods., LLC v. Heldman, 479 F. Supp.
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`3d 874, 888 (C.D. Cal. 2020) (finding irreparable harm when products are removed or
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`inaccessible), aff’d sub nom. Beyond Blond Prods., LLC v. ComedyMX, LLC, No. 21-55990, 2022
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`WL 1101756 (9th Cir. Apr. 13, 2022). Second, Benson alleges Fortenberry’s false takedown
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`notices occurred over at least five months (Dkt. No. 1 ¶ 11), making it likely these actions will
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`ORDER GRANTING MOTION FOR DEFAULT JUDGMENT - 6
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 7 of 8
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`continue in the future such that monetary relief is insufficient. See Apple Inc. v. Psystar Corp.,
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`673 F. Supp. 2d 943, 950 (N.D. Cal. 2009) (“[M]onetary damages would not prevent Psystar from
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`continuing to infringe Apple’s copyrights and violate the DMCA in the future[.]”), aff’d, 658 F.3d
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`1150 (9th Cir. 2011). Third, the burden on Fortenberry is not a hardship because the narrow
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`language of the injunction merely requires him to follow the law. See id. (“Psystar does not (and
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`cannot) claim any legitimate hardships as a result of being enjoined from committing unlawful
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`activities[.]”). To this end, the Court edits the injunctive language to follow Federal Rule of Civil
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`Procedure 65(d)(2) to only apply to Defendant and his officers, agents, servants, employees,
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`attorneys, and other persons who are in active concert or participation with them that receive actual
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`notice of the injunction. Fourth, and finally, the public benefits when “the legitimate rights of
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`copyright holders are vindicated.” Psystar Corp., 673 F. Supp. 2d at 950.
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`In sum, a permanent injunction is an equitable and appropriate remedy in this case.
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`III. CONCLUSION
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`For these reasons, the Court GRANTS Benson’s motion for default judgment. Dkt. No.
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`20.
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`The Court ORDERS that, effective immediately upon the entry of this Permanent
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`Injunction, Defendant, together with his officers, agents, servants, employees, attorneys, and other
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`persons who are in active concert or participation with them that receive actual notice of the
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`injunction, shall be and are hereby permanently enjoined and restrained from filing with any
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`company, website host, search engine or internet service provider any notices or counter-notices
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`under the Digital Millennium Copyright Act, 17 U.S.C. § 512, asserting that any Benson Mills
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`products incorporating designs previously registered by Benson Mills with the U.S. Copyright
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`Office are violative of purported copyrights owned by Defendant.
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`Case 2:23-cv-00686-KKE Document 23 Filed 07/01/24 Page 8 of 8
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`Finally, the Court DISMISSES the case against the Doe Defendants without prejudice. See
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`Vivanco v. California Dep’t of Corr. & Rehab., 817 F. App’x 492, 493 (9th Cir. 2020) (“Because
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`Vivanco did not amend her complaint to name the Doe defendants or serve the unknown
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`defendants, the district court properly exercised its authority to dismiss the Doe defendants sua
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`sponte.”).
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`The Clerk is instructed to close this case.
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`Dated this 1st day of July, 2024.
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`A
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`Kymberly K. Evanson
`United States District Judge
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`ORDER GRANTING MOTION FOR DEFAULT JUDGMENT - 8
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