Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 1 of 16
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF GEORGIA
`MACON DIVISION
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`) CIVIL ACTION NO. 5:11-CV-371(MTT)
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`COACH, INC.
`and COACH SERVICES, INC.,
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`Plaintiffs,
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`v.
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`GAIL D. BECKA, d/b/a HAIR COTTAGE,
`d/b/a GAGAS GIFT BOUTIQUE,
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`Defendant.
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`ORDER
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`This matter is before the Court on the Plaintiffs’ Motion for Summary Judgment.
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`(Doc. 18). For the following reasons, the Motion is GRANTED in part and DENIED in
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`part.
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`I. FACTUAL BACKGROUND
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`Plaintiffs Coach, Inc. and its wholly owned subsidiary, Coach Services, Inc.,
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`(“Coach”) collectively own the Coach brand. Coach manufactures, markets, and sells
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`luxury fashion accessories, including handbags, wallets, eyewear, footwear, jewelry,
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`and watches. Coach “maintains a tight distribution network” and sells its goods “only
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`though official Coach websites, retail stores, outlet stores, and large well-known
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`department stores.” (Doc. 18-1 at ¶ 3). Coach owns a number of federally registered
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`trademarks and copyrights that it uses on its goods.
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`Defendant Gail D. Becka owns and operates The Hair Cottage and the boutique
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`located within, Gaga’s Gift Boutique, in Macon, Georgia. Coach alleges that Becka
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 2 of 16
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`ordered counterfeit Coach items from China and sold them in her store. Becka is not
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`authorized to sell Coach products, and her distributors are not affiliated with Coach.
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`(Doc. 18-1 at ¶¶ 8, 10).
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`On May 7, 2011, private investigators hired by Coach, Geanie Johansen and
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`Norman Johansen, conducted a survey of The Hair Cottage to determine the type and
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`amount of counterfeit Coach items being offered for sale. (Doc. 23 at ¶¶ 6, 7). There
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`were approximately forty to fifty Coach handbags on display, ranging in price from
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`$275.00 to $449.00, as well as other Coach products, including wallets and shoes.
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`(Doc. 18-1 at ¶ 13). Becka gave Norman Johansen a guided tour through her store and
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`explained to him that she could sell her bags for lower prices than other retailers
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`because she had a “friend” who traveled to China and set her up to deal directly with a
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`factory. (Doc. 18-1 at ¶ 13). Becka further explained that once every three months her
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`“friend” traveled to China and returned with new inventory for her to sell. (Doc. 22 at ¶
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`15). Becka also obtained counterfeit Coach merchandise through the website,
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`www.timemarkmall.com. (Doc. 18-1 at ¶¶ 8, 9). The investigators observed alleged
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`counterfeit products from other luxury brands in Becka’s store as well. (Doc. 18-1 at ¶
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`15). Geanie Johansen later reviewed photographs taken at the store and determined
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`the Coach items were counterfeit. (Doc. 23 at ¶ 8).
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`On August 12, 2011, Geanie Johansen returned to The Hair Cottage and
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`purchased a purse bearing Coach trademarks for $150.00. (Doc. 23 at ¶ 11). Becka
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`provided Geanie Johansen with a Coach Registration card, Coach Story Book, and
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`Coach Care Instruction card, also bearing counterfeit trademarks. (Doc. 23 at ¶ 12).
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`On this visit, Geanie Johansen observed approximately sixty to seventy Coach
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 3 of 16
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`handbags, twenty-five to thirty Coach bracelets, and Coach shoes on display for sale.
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`(Doc. 23 at ¶ 14).
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`On September 13, 2011, Geanie Johansen returned once more to The Hair
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`Cottage and served Becka with cease and desist letters from brand holders Chanel and
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`Louis Vuitton. (Doc. 18-1 at ¶ 18). Johansen identified herself as an authorized Coach
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`representative and told Becka that the Coach items displayed in her store were
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`counterfeit. (Doc. 23 at ¶ 16). Becka then surrendered all counterfeit Coach items in
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`her possession to Johansen. (Doc. 18-1 at ¶ 18). The two hundred and twenty-four
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`counterfeit Coach items surrendered included sixteen handbags, twelve pairs of shoes,
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`one keychain, three pieces of jewelry, seventy registration cards, seventy storybooks,
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`and fifty-two care cards. (Doc. 23-4).
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`Coach filed this action on September 16, 2011, alleging trademark infringement,
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`trademark counterfeiting, and copyright infringement.1 Coach moved for summary
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`judgment on those claims. Becka did not file a response to Coach’s Brief in Support of
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`its Motion or Coach’s Statement of Material Facts. Thus, the Court finds that the facts
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`as set forth by Coach in its Statement of Material Facts as to Which There is No Dispute
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`(Doc. 18-1) are admitted. M.D. Ga., L.R. 56. The Court has also reviewed the record
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`and finds the facts undisputed.
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`1 Coach also alleged claims of false designation of origin, false advertising, and trademark
`dilution in its Complaint (Doc. 1) but failed to address those claims in its Motion for Summary
`Judgment. Thus, the Court will not consider those claims.
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 4 of 16
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`II. DISCUSSION
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`A. Motion for Summary Judgment Standard
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`Summary judgment must be granted “if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). “A factual dispute is genuine only if ‘a reasonable
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`jury could return a verdict for the nonmoving party.’” Info. Sys. & Networks Corp. v. City
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`of Atlanta, 281 F.3d 1220, 1224 (11th Cir. 2002) (quoting United States v. Four Parcels
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`of Real Prop., 941 F.2d 1428, 1437 (11th Cir. 1991)). The burden rests with the moving
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`party to prove that no genuine issue of material fact exists. Info. Sys. & Networks Corp.,
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`281 F.3d at 1224. The party may support its assertion that a fact is undisputed by
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`“citing to particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for purposes of the motion only), admissions, interrogatory answers, or other
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`materials.” Fed. R. Civ. P. 56(c)(1)(A).
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`“‘If the moving party bears the burden of proof at trial, the moving party must
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`establish all essential elements of the claim or defense in order to obtain summary
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`judgment.’” Anthony v. Anthony, 642 F. Supp. 2d 1366, 1371 (S.D. Fla. 2009) (quoting
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`Four Parcels, 941 F.2d at 1438). The moving party must carry its burden by presenting
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`“credible evidence” affirmatively showing that, “on all the essential elements of its case,
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`on which it bears the burden of proof at trial, no reasonable jury could find for the non-
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`moving party.” Four Parcels, 941 F.2d at 1438. In other words, the moving party’s
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`evidence must be so credible, that if not controverted at trial, the party would be entitled
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`to a directed verdict. Id.
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 5 of 16
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`“If the moving party makes such an affirmative showing, it is entitled to summary
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`judgment unless the nonmoving party, in response, ‘comes[s] forward with significant,
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`probative evidence demonstrating the existence of a triable issue of fact.’” Id. (quoting
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`Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477 (11th Cir. 1991))
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`(alteration in original). However, “credibility determinations, the weighing of the
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`evidence, and the drawing of legitimate inferences from the facts are jury functions, not
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`those of a judge. … The evidence of the non-movant is to be believed, and all justifiable
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`inferences are to be drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`255 (1986). Thus, the Court “‘can only grant summary judgment if everything in the
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`record demonstrates that no genuine issue of material fact exists.’” Strickland v. Norfolk
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`S. Ry. Co., --- F.3d ----, 2012 WL 3640797 (11th Cir.) (quoting Tippens v. Celotex Corp.,
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`805 F.2d 949, 952 (11th Cir. 1992)).
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`B. Trademark Infringement
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`Trademark infringement under the Lanham Act occurs when a person, without
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`the registrant’s consent, “use[s] in commerce any reproduction, counterfeit, copy, or
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`colorable imitation of a registered mark” which “is likely to cause confusion, or to cause
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`mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). To prevail on this action, a plaintiff
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`must establish that: (1) he possesses a valid mark; (2) the defendant used the mark; (3)
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`the defendant’s use of the mark occurred “in commerce”; (4) the defendant used the
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`mark “in connection with the sale ... or advertising of any goods”; and (5) the
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`defendant’s use of the mark was likely to confuse consumers. N. Am. Med. Corp. v.
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`Axiom Worldwide, Inc., 522 F.3d 1211, 1218 (11th Cir. 2008). “[A] showing of intent or
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 6 of 16
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`bad faith is unnecessary to establish a violation of § 1114(1)(a), or to seek remedies
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`pursuant to § [1117].” Chanel, Inc., 931 F.2d at 1476.
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`Coach alleges that the counterfeit Coach items sold by Becka featured eight
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`counterfeit Coach trademarks2 in violation of the Lanham Act. The eight trademarks at
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`issue are federally registered and still in use.3 Thus, Coach has satisfied the first
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`element of the five-prong test. The uncontested affidavits of Geanie Johansen and
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`Norman Johansen show that they observed counterfeit items bearing the Coach
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`trademarks and on display for sale in Becka’s store. Furthermore, Becka herself
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`provided receipts to Coach showing that she sold the counterfeit Coach goods.
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`Therefore, the second, third, and fourth prongs are also satisfied.
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`Generally, the sale or advertising of counterfeit goods causes consumer
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`confusion and precludes the need to undertake a likelihood of confusion factor
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`analysis.4 See Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F. Supp. 2d 284, 287
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`(S.D.N.Y. 2003) (declining to conduct a traditional likelihood of confusion factor
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`2 A counterfeit mark “is a spurious mark which is identical with, or substantially indistinguishable
`from, a registered mark.” 15 U.S.C. § 1127. Coach has provided sufficient (and uncontested)
`evidence that the Coach items sold by Becka were, in fact, counterfeits.
`3 Specifically, the trademarks at issue are: (1) “COACH,” registration number 2,451,168; (2)
`“COACH & TAG DESIGN,” registration number 2,088,707; (3) “CC & DESIGN (Signature C),”
`registration number 2,626,565; (4) “CC & DESIGN (Signature C),” registration number
`2,822,629; (5) “CC & DESIGN (Signature C),” registration number 2,822,318; (6) “COACH OP
`ART & Design,” registration number 3,696,470; (7) “COACH LEATHERWARE EST. 1941
`[Heritage Logo],” registration number 3,441,671; and (8) “COACH,” registration number
`1,071,000.
`4 Courts in this circuit use a multifactor test to determine the likelihood of confusion between two
`marks by “evaluating the following seven factors: (1) strength of the mark alleged to have been
`infringed; (2) similarity of the infringed and infringing marks; (3) similarity between the goods
`and services offered under the two marks; (4) similarity of the actual sales methods used by the
`holders of the marks, such as their sales outlets and customer base; (5) similarity of advertising
`methods; (6) intent of the alleged infringer to misappropriate the proprietor's good will; and (7)
`the existence and extent of actual confusion in the consuming public.” Tana v. Dantanna’s, 611
`F.3d 767, 774-75 (11th Cir. 2010) (internal citation omitted).
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`analysis, noting that “counterfeits, by their very nature, cause confusion”). Thus, the
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`Court finds that a multifactor analysis is not necessary under these circumstances, and
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`the nature of the counterfeit goods at issue is sufficient to establish the fifth prong (i.e., a
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`likelihood of confusion). Coach has provided sufficient evidence to support their
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`trademark infringement claim against Becka for the sale of counterfeit Coach goods.
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`Accordingly, summary judgment in favor of Coach is appropriate on its trademark
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`infringement claim.
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`C. Trademark Counterfeiting
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`To prevail on a trademark counterfeiting claim, a plaintiff must show that the
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`defendant violated 15 U.S.C. § 1114(1)(a) by infringing a registered trademark and that
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`the defendant’s use of the mark was intentional and with knowledge that the mark was a
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`counterfeit pursuant to 15 U.S.C. § 1117(b). Babbit Elecs., Inc. v. Dynascan Corp., 38
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`F.3d 1161, 1181 (11th Cir. 1994). In the Eleventh Circuit, “willful blindness” is sufficient
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`to satisfy § 1117(b)’s intent requirement. Chanel, Inc., 931 F.2d at 1476 (“[W]illful
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`blindness could provide the requisite intent or bad faith.”). “Under the doctrine of willful
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`blindness, ‘knowledge can be imputed to a party who knows of a high probability of
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`illegal conduct and purposefully contrives to avoid learning of it.’” Nike Inc. v. Variety
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`Wholesalers, Inc., 274 F. Supp. 2d 1352, 1369 (S.D. Ga. 2003) (quoting Williams v.
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`Obstfeld, 314 F.3d 1270, 1271 (11th Cir. 2002)). Willful blindness is a subjective
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`standard and “requires more than mere negligence or mistake.” Id. at 1370 (internal
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`citations omitted).
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`The Court has found that Becka infringed registered marks in violation of 15
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`U.S.C. § 1114(1)(a). Thus, the Court must determine whether Becka’s conduct was
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`intentional or willfully blind. Coach relies on an admission made in Becka’s Answer
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`(Doc. 3) regarding the source of the goods to show Becka was, at least, willfully blind.
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`Coach argues that Becka’s knowledge that the products came from China shows that
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`“she should have inquired further as to the authenticity, and realistically that she knew
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`she was buying fakes to resell.” (Doc. 18-2 at 7).
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`Although Becka’s knowledge of the goods’ source of origin could support an
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`inference of willful blindness, the Court cannot find that Becka’s knowledge of this fact
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`alone compels finding that she acted with intent. See Chanel, Inc., 931 F.2d at 1476
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`(stating that undisputed facts that create an inference of willful blindness or knowledge
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`“do not so clearly compel that conclusion as to warrant finding intent as a matter of
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`law”). If anything, Becka’s Answer considered as a whole indicates that she was neither
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`aware of a high probability of illegal conduct nor purposefully contrived to avoid learning
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`of it. Becka stated that the website she ordered the goods from “looked legitimate” and
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`that she believed the bags to be real because they had “numbers inside” of them. (Doc.
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`8 at 1). Becka also stated that the company she ordered the goods from replaced any
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`bags with defects. Coach has failed to satisfy its burden of showing that there is no
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`genuine dispute on the issue of intent. Accordingly, summary judgment is denied on
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`Coach’s trademark counterfeiting claim.
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`D. Copyright Infringement
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`To establish direct copyright infringement, a plaintiff must establish two elements:
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`“(1) ownership of a valid copyright, and (2) copying of constituent elements of the work
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`that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
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`In a judicial proceeding, “the certificate of a registration made before or within five years
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 9 of 16
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`after first publication of the work shall constitute prima facie evidence of the validity of
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`the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c). “Once the
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`plaintiff produces a certificate of registration, the burden shifts to the defendant to
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`establish that ‘the work in which copyright is claimed is unprotectable (for lack of
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`originality).’” Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1233 (11th Cir. 2010)
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`(quoting Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996)).
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`Coach alleges that Becka infringed one of its registered copyrights, namely its
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`Horse and Carriage Heritage Logo.5 This copyright was first published on February 1,
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`2007 and registered on April 13, 2010. Becka has not attempted to establish that the
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`work is unprotectable in any way. Thus, the Court finds that Coach has established
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`ownership of a valid copyright.
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`To satisfy the second element, “a plaintiff must establish, as a factual matter, that
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`the alleged infringer actually copied plaintiff’s copyrighted material.” Id. (emphasis
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`added); see also Bateman, 79 F.3d at 1541 (“To prove actionable copying, the plaintiff
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`must first establish, as a factual matter, that the alleged infringer ‘actually used the
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`copyrighted material to create his own work.’”) (internal citation omitted). A plaintiff may
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`prove copying by direct evidence, which is rare, or indirect evidence. Baby Buddies,
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`Inc. v. Toys R Us, Inc., 611 F.3d 1308, 1315 (11th Cir. 2010). If the plaintiff must rely
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`on indirect evidence and cannot show that the defendant had access to the copyrighted
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`work, then the plaintiff must show that the defendant’s work is “strikingly similar” to the
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`copyrighted work. Id. (citing Corwin v. Walt Disney Co., 475 F.3d 1239, 1253 (11th Cir.
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`2007)). If the defendant did have access to the work, then the plaintiff only needs to
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`5 The registration number for the Coach Horse and Carriage Heritage Logo is VA0001714051.
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`show that the two works are “substantially similar.” Id. (citing Leigh v. Warner Bros.,
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`Inc., 212 F.3d 1210, 1214 (11th Cir. 2000)).
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`Coach alleges that Becka infringed its copyright when she offered for sale and
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`sold a purse bearing the Horse and Carriage Heritage Logo to one of Coach’s
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`investigators, Geanie Johansen. Coach, however, has not alleged that Becka actually
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`copied its copyright either through direct or indirect evidence. Coach has also failed to
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`properly state a claim for contributory copyright infringement. A “contributory infringer”
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`is “one who, with knowledge of the infringing activity, induces, causes or materially
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`contributes to the infringing conduct of another.” Cable/Home Commc’n Corp. v.
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`Network Prods., Inc., 902 F.2d 829, 845 (11th Cir. 1990) (internal quotations and
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`citations omitted). As discussed above, Coach has not alleged facts sufficient to
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`demonstrate Becka’s actual or constructive knowledge of the infringing activity..
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`Accordingly, summary judgment is denied on Coach’s copyright infringement claim.
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`A. Statutory Damages for Trademark Infringement
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`III. REMEDIES
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`Having established liability for trademark infringement, the Court must determine
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`the amount of damages to award. As an alternative to actual damages, a plaintiff may
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`elect to recover statutory damages “[i]n a case involving the use of a counterfeit mark ...
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`in connection with the sale, offering for sale, or distribution of goods or services … at
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`any time before final judgment is rendered by the trial court.” 15 U.S.C. § 1117(c). The
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`statute authorizes an award in the amount of “not less than $1,000 or more than
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`$200,000 per counterfeit mark per type of goods … as the court considers just.” Id. For
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`the willful use of a counterfeit mark, the statute authorizes a maximum award of
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`“$2,000,000 per counterfeit mark per type of goods” sold. Id.
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`Because § 1117(c) provides little guidance on how to determine statutory
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`damages, district courts have broad discretion in setting an amount. Rolls-Royce PLC
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`v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150, 156-57 (E.D.N.Y. 2010) (internal
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`citations omitted). The award of statutory damages may exceed actual damages, but it
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`should not “constitute a windfall for prevailing plaintiffs.” Id. at 157 (internal citation
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`omitted). Statutory damage awards do, however, serve deterrent as well as
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`compensatory purposes. PetMed Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d
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`1213, 1221 (S.D. Fla. 2004).
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`Coach has exercised its right to seek statutory damages rather than actual
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`damages. Coach requests statutory rather than actual damages because the sales
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`receipts obtained from Becka may not adequately reflect the total sales of all counterfeit
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`Coach items, and Coach “cannot adequately identify the type or quantity of differing
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`marks infringed” in the receipts actually produced. (Doc. 18-2 at 8). Coach has
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`identified eight counterfeit marks found on items purchased by the investigator and
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`surrendered by Becka. (Docs. 19, 19-1, 19-2, 19-3). Coach requests $100,000 per
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`mark6 for a total of $800,000. Coach also states that this amount should be trebled
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`under 15 U.S.C. § 1117(b) to yield a statutory award of $2,400,000. Coach suggests
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`that such a large award is warranted here because “the level of intended distribution is
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`substantial,” and the damage to Coach’s goodwill “would be equally exorbitant.” (Doc.
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`6 In arriving at the $100,000 per mark figure, Coach relies solely on a recent case where it
`received the same amount. See Coach, Inc. v. Reggae Hot Spot, Inc., 2010 WL 5536521 at *2
`(S.D.N.Y.), adopted by 2011 WL 43462 (S.D.N.Y.) (analyzing similar cases awarding a
`$100,000 baseline in that district).
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`18-2 at 9). The Court believes the amount of statutory damages requested to be
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`grossly disproportionate to any reasonable estimate of actual damages.
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`As a preliminary matter, Coach is not entitled to trebled damages under
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`§ 1117(b). This subsection provides that “the court shall, unless the court finds
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`extenuating circumstances, enter judgment for three times such profits or damages” for
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`the intentional use of a mark when “assessing damages under subsection (a).” 15
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`U.S.C. § 1117(b) (emphasis added). Subsection (a) of § 1117 refers to an award based
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`on actual damages, which Coach has not requested. A statutory damage award under
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`§ 1117(c) takes intentional conduct into account by increasing the per mark baseline
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`award to a maximum of $2,000,000 rather than trebling the award. Therefore, an award
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`of trebled statutory damages under § 1117(b) is inappropriate. Even if Coach were
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`seeking actual damages, it has not shown that Becka’s conduct was intentional. Thus,
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`the Court must choose a more appropriate baseline to determine statutory damages.
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`In assessing statutory damages under the Lanham Act, courts often consider the
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`Copyright Act’s analogous provision for statutory damages, 17 U.S.C. § 504(c). See,
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`e.g., Nike, Inc. v. Austin, 2009 WL 3535500 at *4 (M.D. Fla.); Tiffany (NJ) Inc. v. Luban,
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`282 F. Supp. 2d 123, 125 (S.D.N.Y. 2003). “Under the Copyright Act, courts look to
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`factors such as: (1) the expenses saved and the profits reaped; (2) the revenues lost by
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`the plaintiff; (3) the value of the copyright; (4) the deterrent effect on others besides the
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`defendant; (5) whether the defendant's conduct was innocent or willful; (6) whether a
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`defendant has cooperated in providing particular records from which to assess the value
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`of the infringing material produced; and (7) the potential for discouraging the defendant.”
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`Tiffany (NJ) Inc., 282 F. Supp. 2d at 125 (internal quotations and citation omitted).
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`Furthermore, statutory damages are meant to serve as a substitute for actual damages,
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`so the Court will evaluate whether the requested damages “bear some relation to the
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`actual damages suffered.” Coach, Inc. v. Diva Shoes & Accessories, 2011 WL 1483436
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`at *6 (N.D. Ca.) (internal citation omitted).
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`Several of the factors listed above are particularly useful in assessing the amount
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`of statutory damages here. First, the profits at issue demonstrate that actual damages
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`would likely be significantly less than the amount of statutory damages requested by
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`Coach. Becka produced a total of eighty-seven receipts documenting the sale of
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`counterfeit Coach items. (Doc. 21 at ¶ 5). The receipts reflect the time period from July
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`2008 to August 20117 and total $12,400.15 in sales. (Doc. 21 at ¶ 5). Although the
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`wholesale prices that Becka paid to her distributors are not known, her profits, of
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`course, would have been less than her gross sales. Furthermore, Becka was operating
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`out of a single small retail location, and Becka did not sell or advertise the counterfeit
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`items on the Internet. Thus, the Court cannot find that eighty-seven sales over a three-
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`year period reflect the kind of substantial distribution claimed by Coach, nor do they
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`merit an award of the amount of statutory damages requested.
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`Second, Becka’s unintentional infringement and her cooperation in the matter are
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`also particularly relevant. As discussed above, Coach has failed to establish that
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`Becka’s conduct was intentional or willfully blind. When told by the investigators that
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`the Coach items in her store were counterfeit, Becka voluntarily surrendered all Coach
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`items in her possession and ceased her infringing conduct. Becka also made an
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`attempt to comply with the discovery requests by producing the receipts.
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`7 Coach has not alleged that Becka’s sale of counterfeit Coach products began prior to July
`2008.
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 14 of 16
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`Other courts have awarded significantly lower awards to Coach for similar
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`infringing conduct, even when the conduct was willful. See e.g., Coach, Inc. v. Sassy
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`Couture, 2012 WL 162366 at *11 (W.D. Tex.) (awarding $15,000 per mark where
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`conduct was willful, and the defendants sold the counterfeit items on their website);
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`Coach, Inc. v. Ocean Point Gifts, 2010 WL 2521444 at *7-8 (D.N.J.) (awarding $10,000
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`per mark where conduct was willful, and the defendant sold the counterfeit items in a
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`retail store). The Court concludes that an award of $2,000 per mark would more
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`appropriately compensate Coach for the infringing conduct. Accordingly, the Court finds
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`that Coach is entitled to an award of $16,000.
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`B. Permanent Injunction
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`In addition to damages, Coach requests a permanent injunction enjoining Becka
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`from further infringement of Coach trademarks. The Lanham Act provides courts with
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`the “power to grant injunctions, according to the principles of equity and upon such
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`terms as the court may deem reasonable.” 15 U.S.C. § 1116(a). “[A] plaintiff seeking a
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`permanent injunction must demonstrate (1) it has suffered an irreparable injury; (2)
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`remedies available at law, such as monetary damages, are inadequate to compensate
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`for that injury; (3) considering the balance of hardships between the plaintiff and
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`defendant, a remedy in equity is warranted; and (4) the public interest would not be
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`disserved by a permanent injunction.” Angel Flight of Ga., Inc. v. Angel Flight Am., Inc.,
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`522 F.3d 1200, 1208 (11th Cir. 2008) (citing eBay Inc. v. MercExchange, L.L.C., 547
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`U.S. 388, 391 (2006)).
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`First, grounds for irreparable injury can include loss of goodwill or the possibility
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`of confusion. Ferrellgas Partners, L.P. v. Barrow, 143 Fed. Appx. 180, 190 (11th Cir.
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 15 of 16
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`2005).8 “A plaintiff need not show that the infringer acted in such a way as to damage
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`the reputation of the plaintiff. It is the loss of control of one's reputation by the adoption
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`of a confusingly similar mark that supplies the substantial threat of irreparable harm.”
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`Id. at 191. Given that the counterfeit goods bore marks substantially similar, if not
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`identical, to Coach’s registered trademarks, Coach had made a sufficiently strong
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`showing of the possibility of confusion so that irreparable injury is established.
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`Second, monetary damages are generally inadequate to compensate for past
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`trademark infringement or the possibility of future infringement. See Tally-Ho, Inc. v.
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`Coast Cmty. Coll. Dist., 889 F.2d 1018, 1029 (11th Cir. 1989) (“It is generally
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`recognized in trademark infringement cases that (1) there is not [an] adequate remedy
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`at law to redress infringement and (2) infringement by its nature causes irreparable
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`harm.”). Third, the balance of hardships clearly favors Coach because Becka’s sale of
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`counterfeit Coach items was unlawful. Fourth, the public interest is particularly strong in
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`preventing the sale of counterfeit items because the public “deserves not to be led
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`astray by the use of inevitably confusing marks.” Id. Accordingly, the Court finds that
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`Coach is entitled to a permanent injunction.
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`C. Attorney’s Fees
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`Coach also seeks an award of attorney’s fees pursuant to 15 U.S.C § 1117(a).9
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`The Lanham Act provides that a court may award attorney’s fees “in exceptional cases.”
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`15 U.S.C § 1117(a). The Eleventh Circuit has characterized an “exceptional” case as
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`8 "Unpublished opinions are not considered binding precedent, but they may be cited as
`persuasive authority." 11th Cir. R. 36-2.
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`9 Coach sought investigative costs in its Complaint but did not request them in its Motion for
`Summary Judgment. Thus, the Court declines to award Coach investigative costs.
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`Case 5:11-cv-00371-MTT Document 26 Filed 11/02/12 Page 16 of 16
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`one involving malicious, fraudulent, deliberate, or willful conduct. Burger King Corp. v.
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`Pilgrim’s Pride Corp., 15 F.3d 166, 168 (11th Cir. 1994). “Although a case may rise to
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`the level of exceptionality, the decision to grant attorney fees remains within the
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`discretion of the trial court.” Id.
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`Coach has failed to demonstrate that Becka infringed Coach’s trademarks
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`willfully or deliberately. Thus, this is not an exceptional case. Even if Becka’s conduct
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`was willful or deliberate, Coach has submitted no evidence on which to base such an
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`award. Accordingly, the Court finds that an award of attorney’s fees is inappropriate.
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`IV. CONCLUSION
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`For the foregoing reasons, Coach’s Motion for Summary Judgment is granted in
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`part and denied in part. Summary judgment is GRANTED as to Coach’s trademark
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`infringement claim. With regard to Coach’s trademark counterfeiting and copyright
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`infringement claims, summary judgment is DENIED. The Court will award a judgment
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`of $16,000 and issue a permanent injunction.
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`SO ORDERED, this the 2nd day of November, 2012.
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`S/ Marc T. Treadwell
`MARC T. TREADWELL, JUDGE
`UNITED STATES DISTRICT COURT
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