Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`SPECTRUM BRANDS, INC.,
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`Plaintiff,
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`v.
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`I&J APPAREL, LLC, and
`JOHN DOES 1 - 10,
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`Defendants.
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`OPINION & ORDER
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`16-cv-741-jdp
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`Plaintiff Spectrum Brands, Inc. is a consumer products company, and among its many
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`products are pet de-shedding tools sold under the FURMINATOR brand. Spectrum Brands
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`contends that defendants I&J Apparel, LLC and John Does 1-10 sold counterfeit
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`FURMINATOR de-shedding tools. I&J Apparel failed to respond to Spectrum Brands’
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`complaint, and the clerk of court entered default against I&J Apparel. Spectrum Brands moves
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`for default judgment against I&J Apparel, seeking damages, injunctive relief, attorney fees, and
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`costs. Dkt. 13.
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`The court concludes that I&J Apparel is liable for four counts of trademark infringement
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`and eight counts of copyright infringement. This order will: dismiss the Doe defendants; enjoin
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`I&J Apparel from further infringing Spectrum Brands’ trademarks and copyrights; and award
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`statutory damages, attorney fees, and costs. The court will close the case, although Spectrum
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`Brands may reopen the case for good cause.
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`BACKGROUND
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`The court draws the following facts from Spectrum Brands’ complaint, default judgment
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`submissions, and representations made to the court during the default hearing.
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 2 of 11
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`Spectrum Brands sells de-shedding tools for pets using four trademarks and eight
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`copyrighted works. The four trademarks at issue are Spectrum Brands’ FURMINATOR mark,
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`STYLIZED FURMINATOR mark, FUREJECTOR mark, and STYLIZED PAW mark. Dkts. 1-
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`3 to Dkt. 1-6. The artworks on the packaging constitute the eight copyrighted works at issue.
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`Dkts. 1-7 to Dkt. 1-14. Each of marks and works is registered with either the United States
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`Trademark Office or the Copyright Office as appropriate.
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`I&J Apparel sold counterfeit FURMINATOR de-shedding tools through various online
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`stores. John Does 1-10 are manufacturers, resellers, and distributors of the counterfeits.
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`Although counsel for Spectrum Brands has had some communication with counsel for I&J
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`Apparel, I&J Apparel has failed to answer or otherwise respond to the complaint.
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`Spectrum Brands’ motion for default judgment does not address its claims against the
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`Doe defendants. During the default hearing, Spectrum Brands indicated that it would dismiss
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`all claims against the Does without prejudice, thereby allowing the court to close the case.
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`Spectrum Brands has adequately shown that I&J Apparel’s infringement is willful.
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`Spectrum Brands filed complaints with Amazon.com, indicating that I&J Apparel was selling
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`counterfeits, and Amazon.com removed I&J Apparel’s product listings from the website.
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`Amazon.com’s de-listing of I&J Apparel’s products prompted I&J Apparel to confer with
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`Spectrum Brands. I&J Apparel conceded that it sold counterfeits and offered to cooperate with
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`Spectrum Brands. See Dkt. 11-6 and Dkt. 11-10. But I&J Apparel continued to sell counterfeits
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`at eBay.com and Walmart.com. Dkt. 11, ¶¶ 21-23.
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 3 of 11
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`ANALYSIS
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`Spectrum Brands asserts five sets of claims against all defendants: (1) trademark
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`infringement claims under the Lanham Act; (2) trademark infringement claims under common
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`law; (3) copyright infringement claims under the Copyright Act; (4) unfair competition claims
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`under the Lanham Act; and (5) unfair competition claims under common law. Dkt. 1, ¶¶ 52-
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`83. Spectrum Brands moves for default judgment on its claims against I&J Apparel. Spectrum
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`Brands asks for a permanent injunction, statutory damages, attorney fees, and costs. Spectrum
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`Brands also requests post-judgment discovery and asks the court to retain jurisdiction for the
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`purposes of enforcing the judgment. Dkt. 13-1, ¶¶ 7-8.
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`A. John Does 1-10
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`During the hearing, Spectrum Brands informed the court that it would agree to dismiss
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`its claims against the Doe defendants without prejudice. The court will do so.
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`B. Default judgment against I&J Apparel
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`A default proceeding has two steps: “the establishment of the default, and the actual
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`entry of a default judgment.” VLM Food Trading Int’l, Inc. v. Ill. Trading Co., 811 F.3d 247, 255
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`(7th Cir. 2016) (quoting In re Catt, 368 F.3d 789, 793 (7th Cir. 2004)); see also Fed. R. Civ. P.
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`55. An entry of default establishes a defendant’s liability, and “the well-pleaded allegations of
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`a complaint relating to liability are taken as true.” VLM Food Trading Int’l, Inc., 811 F.3d at 255
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`(quoting Dundee Cement Co. v. Howard Pipe & Concrete Prods., Inc., 722 F.2d 1319, 1323 (7th
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`Cir.1983)). The second step, an entry of default judgment, establishes whether a plaintiff is
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`entitled to damages and injunctive relief. e360 Insight v. The Spamhaus Project, 500 F.3d 594,
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`602 (7th Cir. 2007).
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 4 of 11
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`Here, the clerk of court entered default as to I&J Apparel, Dkt. 8, so I&J Apparel’s
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`liability is established. The remaining question is whether Spectrum Brands is entitled to the
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`relief it seeks. The relief requested is based on Spectrum Brands’ federal trademark
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`infringement and copyright infringement claims. Dkt. 13-1, ¶¶ 2-6.
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`C. Permanent injunction
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`A district court must explain its reasons in every order that grants an injunctive relief.
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`Fed. R. Civ. P. 65(d)(1); e360 Insight, 500 F.3d at 604. A party seeking a permanent injunction
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`must demonstrate “(1) that it has suffered an irreparable injury; (2) that remedies available at
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`law, such as monetary damages, are inadequate to compensate for that injury; (3) that,
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`considering the balance of hardships between the plaintiff and defendant, a remedy in equity
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`is warranted; and (4) that the public interest would not be disserved by a permanent
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`injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).
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`Spectrum Brands has made a satisfactory showing, and the court will grant permanent
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`injunctions against I&J Apparel’s further infringement of Spectrum Brands’ trademarks or
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`copyrights. Loss of goodwill for a trademark holder is “irreparable injury for which the
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`trademark owner has no adequate legal remedy.” Re/Max N. Cent., Inc. v. Cook, 272 F.3d 424,
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`432 (7th Cir. 2001). And Spectrum Brands has shown that I&J Apparel continues to sell
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`counterfeit products, and “a threat of continuing [copyright] infringement” warrants a
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`permanent injunction. Microsoft Corp. v. Logical Choice Comput., Inc., No. 99-cv-1300, 2001 WL
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`58950, at *12 (N.D. Ill. Jan. 22, 2001) (quoting Universal City Studios v. Sony Corp. of Am., 659
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`F.2d 963, 976 (9th Cir. 1981)). As demonstrated at the hearing, the counterfeit products are
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`inferior, thus posing a risk of tarnishing the reputation of Spectrum Brands’ legitimate
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`products. Any potential harm to I&J Apparel will not outweigh Spectrum Brands’ harm because
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 5 of 11
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`I&J Apparel will be enjoined from selling only infringing products. The permanent injunctions
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`will serve the public interest because “the public . . . has an interest in knowing with whom
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`they do business.” Re/Max N. Cent., 272 F.3d at 433.
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`D. Statutory damages
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`A plaintiff must prove its damages even after entry of default. Wehrs v. Wells, 688 F.3d
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`886, 892 (7th Cir. 2012). And a district court need not grant the damages amount requested
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`by a plaintiff. See Coach, Inc. v. 3D Designers Inspirations, 70 F. Supp. 3d 942, 949 (C.D. Ill.
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`2014). Here, Spectrum Brands elects to recover statutory damages, as opposed to actual
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`damages, for trademark and copyright infringement claims. Spectrum Brands requests $50,000
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`for each of the four infringed trademarks and $30,000 for each of the eight infringed works,
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`for a total of $440,000.
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`As for the trademark infringement claims, the court will grant the full amount requested
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`by Spectrum Brands. Under the Lanham Act, a plaintiff who prevails on a trademark claim by
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`showing that a defendant sold counterfeits may recover between $1,000 and $200,000 for each
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`infringed mark. 15 U.S.C. § 1117(c). For a willful infringement, a plaintiff may recover up to
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`$2,000,000 for each mark. In this case, I&J Apparel willfully infringed Spectrum Brands’
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`marks: even after acknowledging that it sold counterfeits of Spectrum Brands’ products on
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`Amazon.com, I&J Apparel continued to sell counterfeits at other online stores. Thus, the court
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`may grant Spectrum Brands a damages award that ranges from $1,000 to $2,000,000 for each
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`mark.
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`To determine the damages for a trademark infringement claim, a district court may
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`consider seven non-exclusive factors: “(1) the defendant’s expenses saved and profits reaped;
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`(2) the plaintiff’s lost revenue; (3) the value of the trademark; (4) general deterrence; (5) the
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 6 of 11
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`willfulness of the defendant’s conduct; (6) the defendant’s cooperation in providing records
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`from which to determine the value of the infringing products; and (7) specific deterrence of the
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`defendant.” Coach, Inc., 70 F. Supp. 3d at 947 (citing Coach, Inc. v. Pure MLK Last Stop, Inc.,
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`No. 12-cv-2254, 2013 WL 5888139, at *2 (C.D. Ill. Nov. 4, 2013)). The court may also look
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`to similar cases involving similar trademarks. See id.
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`This case presents essentially the same set of facts as those in United Pet Grp., Inc. v.
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`Mogylevets, which involved three similar FURMINATOR marks and de-shedding tools, No. 13-
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`cv-1053, 2014 WL 3767861 (E.D. Mo. July 31, 2014). The differences between United Pet
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`Grp. and this case are inconsequential. The presence of the fourth trademark in this case does
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`not affect the damages analysis. And, as it was the case in United Pet Grp., the court cannot
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`fully assess the profits, expenses saved, or lost revenue here because such information is
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`unavailable due to I&J Apparel’s failure to appear. The plaintiff in United Pet Grp. was awarded
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`$50,000 for each infringed mark. Because that award is based on a reasonable analysis, the
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`court will award the same amount per mark here. That results in a total award of statutory
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`trademark damages of $200,000.
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`As for the copyright infringement claims, the court will award $10,000 for each
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`infringed work, substantially less than the $30,000 amount requested by Spectrum Brands.
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`Under the Copyright Act, a plaintiff who prevails on a copyright infringement claim may
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`recover between $750 and $30,000 for each work. 17 U.S.C. § 504(c). For a willful
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`infringement, the maximum amount rises to $150,000 for each work. Id.; Graduate Mgmt.
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`Admission Council v. Raju, 267 F. Supp. 2d 505, 511 (E.D. Va. 2003). The court finds that I&J
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`Apparel willfully infringed Spectrum Brands’ copyrighted works for the same reason for finding
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`that &J Apparel willfully infringed Spectrum Brands’ trademarks: I&J Apparel continued to
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 7 of 11
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`sell counterfeits knowing that they infringe Spectrum Brands’ copyrights. Thus, the court may
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`grant Spectrum Brands a damages award that ranges from $750 to $150,000 for each infringed
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`work.
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`When evaluating statutory damages for copyright infringement, a district court is “not
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`required to follow any rigid formula.” Chi-Boy Music v. Charlie Club, Inc., 930 F.2d 1224, 1229
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`(7th Cir. 1991). But courts have articulated varying lists of discretionary factors. For example,
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`the court may consider the seven factors listed above for statutory damages for trademark
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`infringement, which were actually borrowed from copyright infringement cases. Coach, Inc., 70
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`F. Supp. 3d at 947. The court may also consider “the difficulty or impossibility of proving
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`actual damages, the circumstances of the infringement, and the efficacy of the damages as a
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`deterrent to future copyright infringement.” White v. Marshall, 771 F. Supp. 2d 952, 956 (E.D.
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`Wis. 2011) (quoting Chi–Boy Music, 930 F.2d at 1229). And the court may consider the relative
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`commercial value of the infringed works. See Id. at 957.
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`Spectrum Brands argues that that the court should assess the damages for trademark
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`and copyright infringement claims separately. A plaintiff can recover damages under both the
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`Lanham Act and the Copyright Act for the same infringing acts.1 But this does not mean that
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`the damages award for one is entirely irrelevant to the other. The statutory damages in United
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`Pet Grp., which the court adopts as noted above, relied on the seven factors borrowed from
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`copyright infringement cases. Compare United Pet Grp., 2014 WL 3767861, at *3, with Coach,
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`1 Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007, 1011 (9th Cir. 1994) (“Congress
`created two separate statutory schemes to govern copyrights and trademarks; in order to
`effectuate the purposes of both statutes, damages may be awarded under both.”); Microsoft
`Corp., 2001 WL 58950, at *11 (“Where, as here, defendants violate both the Lanham Act and
`the Copyright Act, the plaintiff is entitled to recover under both statutes.”).
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 8 of 11
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`70 F. Supp. 3d at 947. Some of those factors, such as the general deterrence, willfulness of the
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`defendant’s conduct, and the defendant’s cooperation, clearly overlap, so granting two separate
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`damages awards under the same analytical framework would result in dual recovery. A district
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`court’s damages award must avoid “a windfall to a prevailing plaintiff.” Coach, Inc. v. Treasure
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`Box, Inc., No. 11-cv-468, 2014 WL 888902, at *4 (N.D. Ind. Mar. 6, 2014). Besides, the court
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`should award statutory damages that represent at least “some approximation of actual
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`damages.” Id. at *4.
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`Spectrum Brands asks for $30,000 for each of the eight works, but the court will award
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`$10,000 for each work. The commercial appeal of the de-shedding tools stemmed primarily
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`from Spectrum Brands’ trademarks, not from the artworks on the packaging. The use of the
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`copyrighted works to mimic the FURMINATOR packaging certainly facilitated the
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`counterfeiting, so some additional award of statutory damages is appropriate. But the award of
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`an additional $240,000 for copyright damages would produce total a damages award that seems
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`excessive in light of the estimate of the number of counterfeit products sold. The court
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`recognizes that full information about sales by I&J Apparel is unavailable. But there is no
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`information that would suggest that I&J Apparel is a large-scale operation that would warrant
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`damages of nearly half a million dollars as Spectrum Brands requests.
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`In sum, the court awards statutory damages of $200,000 for trademark infringement
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`and $80,000 for copyright infringement, for a total statutory damage award of $280,000.
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`E. Attorney fees and costs
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`Under the Copyright Act, a district court may award reasonable attorney fees and costs
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`to the prevailing party. 17 U.S.C. § 505. The Lanham Act similarly allows a district court to
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`award costs, but allows the court to grant attorney fees only in “exceptional” cases. 15 U.S.C.
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`8
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 9 of 11
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`§ 1117(a). When a defendant’s trademark infringement is willful, the court may award
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`reasonable attorney fees. See Microsoft Corp., 2001 WL 58950, at *12. Thus, the court may
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`award reasonable attorney fees and costs here under either statute.
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`Spectrum Brands requests for attorney fees in the amount of $20,078.35 and costs in
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`the amount of $1,379.10. Dkt. 15, ¶ 8. The court will award these amounts. The number of
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`hours spent litigating this case is reasonable. In addition to preparing the complaint and related
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`documents, and a substantial filing in support of the motion for default judgment, Spectrum
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`Brands’ counsel had to investigate various online stores where the counterfeit products were
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`sold and track down I&J Apparel’s agents, who turned out to be elusive. The rates are
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`reasonable as well. As a report from the American Intellectual Property Law Association shows,
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`the rates for intellectual property attorneys in this region, labeled “Other Central,” range from
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`$275 to $558, Dkt. 15-3, at 8, and the attorney rates here are within (and in one case slightly
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`below) that range. The requested costs of $1,379.10 are reasonable as well.
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`F. Other matters
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`Spectrum Brands asked for “[a]n Order that Plaintiff be allowed to conduct post-
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`judgment discovery, including third-party discovery, directed to Defendant’s bank accounts
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`and other assets.” Dkt. 13-1, ¶ 7. Such an order is unnecessary. Federal Rule of Civil Procedure
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`69 allows post-judgment discovery in aid of the execution of a judgment. See also 12 Charles
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`Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3014 (2014). In the absence of
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`any showing that a party is opposing discovery, an order requiring a party to produce any
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`material is “premature.” Braunstein v. Pickens, 274 F.R.D. 568, 572 (D.S.C. 2011). Spectrum
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`Brands can engage in discovery without the court’s specific authorization. The court expects
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`Spectrum Brands to confer with the opposing parties to resolve discovery matters before
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 10 of 11
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`seeking the court’s help, but Spectrum Brands should not delay in seeking the court’s assistance
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`if it is needed.
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`CONCLUSION
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`Spectrum Brands is entitled to default judgment against I&J Apparel. The court will
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`permanently enjoin I&J Apparel from infringing Spectrum Brands’ trademarks and copyrights,
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`grant damages in the amount of $280,000 ($200,000 for trademark infringement and $80,000
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`for copyright infringement), and award attorney fees in the amount of $20,078.35 and costs
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`in the amount of $1,379.10. The court will dismiss the Doe defendants. No claim remains, so
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`the court will direct the clerk of court to close the case.
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`IT IS ORDERED that:
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`ORDER
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`1. Plaintiff Spectrum Brands, Inc.’s motion for default judgment, Dkt. 13, is
`GRANTED in part and DENIED in part consistent with this opinion.
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`2. Defendants John Does 1 - 10 are DISMISSED without prejudice.
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`3. Defendant I&J Apparel, LLC, its officers, directors, agents, servants, employees,
`attorneys, and all others acting under or through defendant I&J Apparel, LLC, are
`enjoined from infringing or inducing infringement of plaintiff’s copyrights, pursuant
`to 17 U.S.C. § 502.
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`4. Defendant I&J Apparel, LLC, its officers, directors, agents, servants, employees,
`attorneys, and all others acting under or through defendant I&J Apparel, LLC, are
`enjoined from infringing or inducing infringement of plaintiff’s trademarks,
`pursuant to 15 U.S.C. § 1116.
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`5. Plaintiff is awarded statutory damages in the amount of $200,000 for defendant
`I&J Apparel, LLC’s willful infringement of plaintiff’s trademarks.
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`6. Plaintiff is awarded statutory damages in the amount of $80,000 for defendant I&J
`Apparel, LLC’s willful infringement of plaintiff’s copyrights.
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`Case: 3:16-cv-00741-jdp Document #: 16 Filed: 05/26/17 Page 11 of 11
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`7. Plaintiff is awarded attorney fees in the amount of $20,078.35 and costs in the
`amount of $1,379.10.
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`8. The clerk of court is directed to enter judgment in favor of plaintiff and close the
`case.
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`Entered May 25, 2017.
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`BY THE COURT:
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`/s/
`________________________________________
`JAMES D. PETERSON
`District Judge
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