BoxNic Anstalt v. Gallerie degli Uffizi

Filing 57

ORDER - IT IS ORDERED: 1. Defendant's motion to enter separate judgment for the award of attorneys' fees and costs (Doc. 56 ) is granted. 2. The Clerk is directed to enter a separate and final judgment in favor of Defendant and Counterclaimant Gallerie degli Uffizi and against Plaintiff and Counterdefendant BoxNic Anstalt in the amount of $119,460.50, plus applicable interest. See document for complete details. Signed by Senior Judge David G Campbell on 7/23/2020. (WLP)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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BoxNic Anstalt,

No. CV-18-1263-PHX-DGC

Plaintiff/Counterdefendant,

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ORDER

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v.

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Gallerie degli Uffizi,

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Defendant/Counterclaimant.

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Defendant Gallerie degli Uffizi has filed a motion for the entry of a separate

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judgment on the award of attorneys’ fees and costs it obtained. Doc. 56. No response has

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been filed. The Court will grant the motion.

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A.

Background.

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This action involves a dispute over the “uffizi.com” domain name and Plaintiff’s

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use of “UFFIZI” trademarks on a website to which the uffizi.com domain name directs

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viewers. Doc. 1. Plaintiff sought a declaratory judgment that its registration and use of

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the uffizi.com domain name does not constitute trademark infringement or unfair

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competition, and that Plaintiff is the rightful registrant of the uffizi.com domain name. Id.

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at 1-2, 6-10. Defendant counterclaimed, alleging cybersquatting, trademark infringement

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and dilution, and unfair competition under the Lanham Act, 15 U.S.C. § 1125. Doc. 19

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at 17-21.

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Plaintiff failed to comply with its discovery obligations and refused to participate in

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this litigation. See Docs. 41, 43. The Court accordingly dismissed Plaintiff’s claims and

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entered default judgment against Plaintiff on Defendant’s counterclaims. Docs. 44, 49.

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Defendant moved for an award of attorneys’ fees and costs. Doc. 51. The Court

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granted the motion in part and awarded Defendant a total of $119,460.50. Doc. 53.1

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Defendant now moves, pursuant to Federal Rules of Civil Procedure 54(b) and 58(a), for

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the entry of a separate judgment on the fee and cost award to facilitate appropriate

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collection efforts against Plaintiff in Lichtenstein and Italy. Doc. 56.
B.

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Discussion.

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Rule 54(b) provides that “[w]hen an action presents more than one claim for

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relief . . . the court may direct entry of a final judgment as to one or more, but fewer than

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all, claims.” While Rule 58(a) states that “a separate document is not required for an order

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disposing of a separate motion . . . for attorneys’ fees under Rule 54[,]” district courts in

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this Circuit have routinely entered separate judgments for fee awards. See, e.g., Rodriguez

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v. ACCC Ins. Co., No. CV-16-00998-PHX-ROS, 2019 WL 9270456, at *1 (D. Ariz.

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May 10, 2019) (citing Yufa v. TSI Inc., No. 09-CV-01315-KAW, 2016 WL 8929244, at *1

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(N.D. Cal. Feb. 18, 2016)); Dunn v. Hatch, No. 1:15-CV-479-BLW, 2018 WL 2337289,

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at *3 (D. Idaho May 23, 2018), aff’d, 792 Fed. App’x 449 (9th Cir. Nov. 21, 2019);

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Jacobs Silver K Farms, Inc. v. Taylor Produce, LLC, No. 4:13-CV-535-BLW, 2017 WL

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4226402, at *1 (D. Idaho Sept. 22, 2017); Watters v. Otter, No. 1:12-CV-76-BLW, 2015

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WL 848303, at *2 (D. Idaho Feb. 26, 2015). Defendant states that a separate judgment is

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necessary to collect the fee award in Liechtenstein, and while it is possible that Italian

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courts may recognize the Court’s order awarding fees, a separate final judgment clearly

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would be recognized. Doc. 56 at 3 (citations omitted).

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This amount included $102,729.00 for attorneys’ fees, $6,500.00 for expert
witness fees, and $10,231.50 for translation costs. Id.
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The Court finds good cause for a separate judgment and no just reason for delaying

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its entry. See Fed. R. Civ. P. 54(b). The Court accordingly will grant Defendant’s motion.

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Doc. 56.

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IT IS ORDERED:

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1.

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Defendant’s motion to enter separate judgment for the award of attorneys’

fees and costs (Doc. 56) is granted.
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The Clerk is directed to enter a separate and final judgment in favor of

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Defendant and Counterclaimant Gallerie degli Uffizi and against Plaintiff and

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Counterdefendant BoxNic Anstalt in the amount of $119,460.50, plus applicable interest.

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Dated this 23rd day of July, 2020.

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