COLLEEN KOLLAR-KOTELLY, United States District Judge.
Plaintiff Mark Greene is a performer, an original member of the musical group known as "The Moments," and the owner of the federally-registered trademark, "The Moments." In this case, Plaintiff brings a claim for trademark infringement and counterfeiting under the Lanham Act against Defendant William "Billy" Brown, a member of the performing group "Ray, Goodman & Brown." Plaintiff seeks monetary and injunctive relief. Plaintiff alleges that Defendant wrongfully used the "Moments" trademark in advertising live performances of his performing group and in promoting the group Ray, Goodman & Brown on the Internet. Before the Court is Plaintiff's [36] Renewed Motion for Default Judgment. Upon consideration of the pleadings,
Plaintiff and Defendant are both recording and performing artists. Am. Compl. ¶¶ 3-4. Plaintiff was an original member of The Moments, a recording and performing musical group. Id. ¶ 6. Plaintiff is the owner of the federally-registered trademark for The Moments, Registration No. 2656413, Serial No. 76364446 (the "Moments Mark"). Id. ¶ 7. Plaintiff acquired the trademark on December 3, 2002, and renewed it for a second ten-year period on September 8, 2012. Id. ¶¶ 8-9. Plaintiff uses the Moments Mark to promote his singing group, which he advertises as "The
Defendant has used the Moments Mark to advertise live performances of his singing group, Ray, Goodman & Brown, as "The Moments." For example, Defendant used the Moments Mark to advertise live performances in San Diego, California, at the Cox Arena, on or about February 2010; live performances in Universal City, California, at the Gibson Amphitheatre, on or about April 2011; and a live performance at The Arc Theater in the District of Columbia on December 17, 2011. Id. ¶¶ 15, 17, 18. In addition, Defendant has used the Moments Mark on the internet, specifically on the Ray, Goodman & Brown MySpace and Facebook pages, as well as on YouTube, to advertise and promote Ray, Goodman & Brown. Id. ¶ 16.
After Plaintiff discovered that Defendant was using the Moments Mark to advertise his performing group, Plaintiff, through counsel, sent Defendant several cease and desist notices requesting that Defendant cease using the Moments Mark. Id. ¶ 14. Specifically, Plaintiff sent cease and desists notices on April 12, 2010, and on April 19, 2011. Id., Ex. 1(b). Defendant continued to use the Moments Mark to advertise his group after Plaintiff sent these cease and desist notices. See id. ¶¶ 15-18.
Plaintiff filed this action on December 16, 2011.
After a default has properly been entered by the Clerk, a party may move
In his Renewed Motion for Default Judgment, Plaintiff requests injunctive and monetary relief. The Court discusses, in turn, its jurisdiction over this action, Defendant's liability, and the various forms of relief that Plaintiff requests.
Because Defendant has not responded or appeared, the Court will briefly address its jurisdiction. "[T]he procedural posture of a default does not relieve a federal court of its `affirmative obligation' to determine whether it has subject-matter jurisdiction over the action." Philadelphia Indem. Ins. Co. v. Emerson, No. CV 14-301(ESH), 2015 WL 1359681, at *2, 308 F.R.D. 16, 18 (D.D.C. Mar. 24, 2015) (quoting James Madison Ltd. v. Ludwig, 82 F.3d 1085, 1092 (D.C.Cir.1996)). Here, the Court has subject matter jurisdiction over the Lanham Act claim — the sole claim in this action — pursuant to 28 U.S.C. § 1338. In addition, "a court should satisfy itself that it has personal jurisdiction before entering judgment against an absent defendant." Mwani v. Bin Laden, 417 F.3d 1, 6 (D.C.Cir.2005). Here, the Court is satisfied that it has personal jurisdiction over the Defendant because Defendant personally performed in a concert in the District of Columbia — on December 17, 2011 — that gave rise to this litigation. See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 473, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985) ("[A] forum legitimately may exercise personal jurisdiction over a nonresident who purposefully directs his activities toward forum residents" where "the litigation results from alleged injuries that arise out of or relate to those activities." (internal quotations and citations omitted)). The Court notes, as well, that Defendant Brown was served with the original Complaint while inside the District of Columbia for the purpose of performing the aforementioned December 2011 concert, which is the subject of this litigation. See Affidavit of Service by Private Process Server, ECF No. 3. Accordingly, the Court is satisfied that it has subject matter jurisdiction over this action and that it has personal jurisdiction over Defendant Brown.
Where, as here, there is a complete "absence of any request to set aside the default or suggestion by the defendant that it has a meritorious defense, it is clear that the standard for default judgment has been satisfied." Auxier Drywall, LLC,
To prevail on a claim for federal trademark infringement, "the plaintiff must show (1) that it owns a valid trademark, (2) that its trademark is distinctive or has acquired a secondary meaning, and (3) that there is a substantial likelihood of confusion between the plaintiff's mark and the alleged infringer's mark." Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.Supp.2d 1, 26-27 (D.D.C.2006) (internal quotation marks omitted). By default, Defendant admits that Plaintiff has a valid mark that has a secondary meaning and that there is substantial likelihood of confusion between Plaintiff's valid mark and Defendant's use of the Moments Mark. See Am. Compl. ¶¶ 7-9, 25-27.
To establish trademark counterfeiting, Plaintiff must show that Defendant infringed a registered trademark in violation of 15 U.S.C. § 1114(1)(a) and that Defendant "intentionally us[ed] a mark..., knowing such mark ... is a counterfeit mark." 15 U.S.C. § 1117(b); see also Lifted Research Group, Inc. v. Behdad, Inc., 591 F.Supp.2d 3, 7 (D.D.C.2008); Babbit Elec., Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir.1994). As discussed above, Plaintiff has established that Defendant infringed Plaintiff's registered trademark. Through his default, Defendant has admitted the intentional use of Plaintiff's mark while knowing that mark is counterfeit with respect to his use of the Moments Mark after April 2010 — when Plaintiff first sent him a cease and desist letter. See Am. Compl. ¶ 14, Ex. 1(b). Defendant's willfulness is demonstrated by the fact that he had knowledge of Plaintiff's trademark registration for the Moments Mark, and yet continued to use the Moments Mark to advertise his performing group after receiving a cease and desist letter from Plaintiff. Indeed, Defendant continued to use the Moments Mark after he was served with the original Complaint in this action: he was served on December 17, 2011, but advertised concerts that occurred in February 2012 as "Ray, Goodman & Brown" performing as "The Moments." See Renewed Mot., Ex. 2, Affidavit of Alan Beck ("Beck Aff.") ¶ 8. Accordingly, Defendant is liable for trademark infringement and counterfeiting.
Plaintiff requests relief in the form of injunctive relief and monetary damages, including attorneys' fees and costs. The Court addresses, in turn, each of these requests.
The Lanham Act allows a Plaintiff to "recover (1) defendant's profits" and "(2) any damages sustained by the plaintiff." 15 U.S.C. § 1117(a). In addition, in a case involving a counterfeit mark, "the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater" in circumstances when the "the violation consists of ... intentionally using such mark or designation, knowing such mark or designation is a counterfeit mark." Id. § 1117(b). Plaintiff seeks treble profits in the amount of $192,000, and nominal damages in the amount of $5,000.
Profits are available as a remedy for trademark infringement upon a showing of willfulness or bad faith. See ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 966 (D.C.Cir.1990) (citing Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 641 (D.C.Cir.1982)). The Court concludes that, through Defendant's default, Defendant has admitted willfulness with respect to all occasions of trademark infringement that followed Plaintiffs initial cease-and-desist letter, sent in April 2010. See Am. Compl. ¶ 14, Ex. 1(b).
"In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed." 15 U.S.C. § 1117(a). Plaintiff provides evidence of $19,500 in profits by Defendant in the years 2011 and 2012. However, Plaintiff argues that this is an inadequate recovery because "Defendant would have performed an average of 8 times" in each of those years. Renewed Mot. at 16. Accordingly, Plaintiff seeks recovery for profits in the amount of $64,000 based on an estimate of 16 performances over the course of two years at a rate $4,000 in profit for each performance. Plaintiff bases his estimate of 8 performances per year on his experience as a soul music artist. See Renewed Mot. at 9-10 (citing Greene Aff. ¶¶ 10-14). Notwithstanding Plaintiff's experience, the Court concludes that this is an inadequate basis for determining Defendant's profits. The estimate of eight concerts per year is speculation as applied to these two specific years by this specific performer. While the Court agrees with Plaintiff that the evidence of profits per concert is substantially within Defendant's control, evidence as to the total number of concerts is freely available to Plaintiff, whether through research on the Internet on the various websites that advertise musical performances or by contacting concert venues individually.
Plaintiff has identified $19,500 in profits, in total, from five of these concerts. The Court now considers whether it can impute profits to the concerts where no profits were specifically identified. With respect to the October 22, 2011, concert, which was cancelled, the Court will not attribute any profits to a concert that did not occur without any indication that Plaintiff was paid for that cancelled event. With respect to Defendant's August 1, 2011, and December 17, 2011, concerts, Plaintiff was also unable to identify Defendant's actual profits. The Court recognizes that Defendant himself controls the best evidence of his profits, and the Court acknowledges that Plaintiff reported that it proved impossible to obtain this information from third parties. Given that the Court is charged with "enter[ing] judgment for such sum as the court shall find to be just," 15 U.S.C. § 1117(a), the Court will
The Court will award treble profits pursuant to section 1117(b) because Plaintiff has established Defendant's liability for trademark counterfeiting. Specifically, Plaintiff has established, through Defendant's default and through the information submitted in the record, that Defendant had been informed of his infringement on Plaintiff's trademark prior to the occurrence of any of the events that are the basis for this award of profits. Accordingly, the Court will award treble profits in the total amount of $82,500.
Plaintiff requests the Court permanently enjoin Defendant from infringing Plaintiff's mark. A district court has authority under the Lanham Act to grant injunctive relief "according to the principles of equity and upon such terms as the court may deem reasonable" to prevent further violation of Plaintiff's trademark rights and copyrights. 15 U.S.C. § 1116(a). "In determining whether to enter a permanent injunction, the Court considers a modified iteration of the factors it utilizes in assessing preliminary injunctions: (1) success on the merits, (2) whether the plaintiffs will suffer irreparable injury absent an injunction, (3) whether, balancing the hardships, there is harm to defendants or other interested parties, and (4) whether the public interest favors granting the injunction." American Civil Liberties Union v. Mineta, 319 F.Supp.2d 69, 87 (D.D.C.2004).
As discussed above, Plaintiff has succeeded, by default, in establishing Defendant's liability in this action. "When a copyright plaintiff has established a threat of continuing infringement, he is entitled to an injunction." Walt Disney Co. v. Powell, 897 F.2d 565, 567 (D.C.Cir. 1990) (quoting Universal City Studios v. Sony Corp. of America, 659 F.2d 963, 976 (9th Cir.1981), rev'd on other grounds, 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984)). However, here, Plaintiff has not shown a threat of continuing infringement. The most recent examples of infringement identified by Plaintiff in the record before the Court are concerts that occurred in February 2012. See Beck Aff. ¶¶ 7, 9. The absence of any more recent examples of infringement is particularly notable as Plaintiff filed the Amended Complaint in June 2014, and filed the Renewed Motion for Default Judgment in February 2015. In those filings, Plaintiff did not identify any examples of infringement that occurred over the past three years. The Court notes that, if Defendant is continuing to use the Moments Mark, that information would be freely available to Plaintiff,
Finally, Plaintiff requests attorneys' fees and costs in this matter. The Court addresses the request for costs followed by the request for attorneys' fees.
The Lanham Act permits a plaintiff to recover "the costs of the action." 15 U.S.C. § 1117(a). Plaintiff seeks costs in the amount of $1,106.60, including the initial filing fee for this action, costs for service of the original Complaint and the Amended Complaint, and postage for serving subpoenas via certified mail. There is adequate support for this request in the record.
The Act provides for the award of reasonable attorneys' fees to the prevailing party in a trademark infringement claim only "in exceptional cases," 15 U.S.C. § 1117(a), and for claims of trademark counterfeiting, see id. § 1117(b). Because the Court concluded, above, that Plaintiff prevailed on his claim for trademark counterfeiting as a result of Defendant's default, Plaintiff is eligible for attorney's fees under section 1117(b). Therefore, the Court need not determine whether this case represents exceptional circumstances that merit attorneys' fees under section 1117(a).
While the Court concludes that Plaintiff is eligible for an award of attorneys' fees, Plaintiff has provided insufficient support for his request for $25,668.75 in fees. "In the preparation of fee applications it is insufficient to provide the District Court with very broad summaries of work done and hours logged." Nat'l Ass'n of Concerned Veterans v. Sec'y of Def., 675 F.2d 1319, 1327 (D.C.Cir.1982). Here, through the declaration of Plaintiff's attorney, Lita Rosario, Plaintiff only provides the total number of hours spent in connection with this matter by Rosario and by
While the Court denies without prejudice Plaintiff's request for attorneys' fees because of the lack of documentation, the Court notes that it had previously denied without prejudice Plaintiff's first Revised Motion for Default Judgment because the original Complaint failed to identify the relevant provisions of the Lanham Act on which Plaintiff relied for relief. Plaintiff subsequently filed an Amended Complaint to comply with the May 27, 2014, decision of this Court. The Court concludes that activities by Plaintiff's counsel solely to remedy Plaintiff's counsel's earlier failure to rely on the appropriate provisions of the Lanham Act in the original Complaint are not compensable. It would not be reasonable for Defendant to pay to remedy a mistake by Plaintiff's counsel.
For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART Plaintiff's [36] Renewed Motion for Default Judgment. The Court will enter a default judgment in the amount of $83,606.60 in Plaintiff's favor, including $82,500 in treble profits and $1,106.60 in costs, based on the allegations in the complaint and the documentation that Plaintiff submitted in support of the Renewed Motion for Default Judgment. The Court denies Plaintiff's request for a permanent injunction for the reasons stated above. The Court denies without prejudice Plaintiff's request for attorneys' fees because Plaintiff has not provided the documentation necessary for the Court to issue such an award.
An appropriate Order accompanies this Memorandum Opinion.
