Coach, Inc. et al v. Diva Shoes & Accessories et al

Filing 17

DEFAULT JUDGMENT in favor of Coach Services, Inc., Coach, Inc. against Diva Shoes & Accessories, Heryadi Yusuf, Rifky Yusuf. Signed by Judge Samuel Conti on 4/19/2011. (sclc2, COURT STAFF) (Filed on 4/19/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

United States District Court

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COACH, INC., a Maryland
corporation and COACH SERVICES,
INC., a Maryland corporation,

) Case No. 10-5151 SC
)
) DEFAULT JUDGMENT
)
Plaintiffs,
)
)
v.
)
)
DIVA SHOES & ACCESSORIES, an
)
unknown business entity; HERYADI
)
YUSUF, an individual; RIFKY YUSUF, )
an individual,
)
)
Defendants.
)
)
)

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I.

INTRODUCTION
Plaintiffs Coach, Inc. and Coach Services, Inc. ("Plaintiffs"

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or "Coach") now seek the entry of a default judgment against

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Defendants Diva Shoes & Accessories, Heryadi Yusuf, and Rifky Yusuf

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("Defendants").

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November 12, 2010, asserting federal claims for trademark

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counterfeiting and infringement, 15 U.S.C. § 1114, false

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designation of origin, id. § 1125(a), and trademark dilution, id. §

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1125(c), along with related claims under state law, for Defendants'

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alleged sale of counterfeit Coach merchandise.

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("Compl.").

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Defendants on February 3, 2011.

ECF No. 11 ("Mot.").

Coach filed this action on

See ECF No. 1

The Clerk of the Court entered default against
ECF No. 10.

On April 5, 2011,

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after reviewing the instant Motion, the Court ordered Coach to

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provide supplemental evidence of certain details about Defendants'

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infringing conduct.

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filed a supplemental brief on April 12, 2011 addressing the Court's

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concerns.

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papers submitted by Plaintiffs, this Court concludes that an award

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of default judgment against Defendants is appropriate, and GRANTS

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Plaintiffs' Motion.

ECF No. 15 ("Apr. 5, 2011 Order").

ECF No. 16 ("Pl.'s Supp. Br.").

Coach

Having considered the

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United States District Court

For the Northern District of California

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II.

BACKGROUND
Except where otherwise indicated, the following allegations

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are taken from Coach's Complaint.

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been in the trade of luxury fashion accessories.

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Coach manufactures, markets, and sells a variety of goods,

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including handbags, wallets, eyewear, footwear, jewelry, and

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watches.

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retail stores, department stores, catalogs, and via the Internet.

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Id.

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assorted design components (collectively, "Coach Marks") that it

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uses on its products.

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because they are affiliated with billions of dollars in sales

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volume and more than a hundred million dollars have been expended

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in advertising and marketing associated with the trademarks.

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16.

Id.

For over sixty years Coach has
Compl. ¶ 11.

Coach sells its goods through its own specialty

Coach owns a number of federally registered trademarks and

Id. ¶ 12.

The Coach Marks are valuable

Id. ¶

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Coach alleges that Defendants used reproductions of the Coach

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Marks in commerce in connection with the purchase, advertising and

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sale of counterfeit products without Coach's consent at the store

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Diva Shoes & Accessories ("Diva"), located at 7710-3 Serramonte

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Center in Daly City, California.

Id. ¶¶ 18-25.

Coach further

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alleges: that Defendants Heryadi Yusuf and Rifky Yusuf were the

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moving forces behind the infringing activities; that Defendants

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acted with knowledge of Coach's ownership of the Coach Marks and

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with the intention to unfairly benefit from the goodwill inherent

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in the Coach Marks; and that Defendants' use of the Coach Marks is

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likely to cause confusion or mistake or to deceive customers and

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has thereby caused damage to Coach.

Id. ¶¶ 22, 27, 36-38.

On September 12, 2009, private investigators hired by Coach

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United States District Court

For the Northern District of California

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visited Diva and discovered merchandise bearing Coach Marks

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displayed for sale.

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these items and determined them to be counterfeit.

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counterfeit Coach items bore reproductions of at least four Coach

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Marks.

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Teresa Lai with a cease-and-desist letter.

Id. ¶ 18; Buckner Decl. ¶ 5.1

Buckner Decl. ¶ 6.

They examined
Id.

The

The investigators served Diva employee
Id.; Compl. ¶ 18.

In August 2010, a private investigator returned to Diva and

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again discovered counterfeit Coach merchandise on display.

Compl.

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¶ 19.

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counterfeit Coach wallets displayed for sale and purchased one

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counterfeit Coach handbag for $43.69.

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obtained a business card from Diva bearing the names of individual

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Defendants Heryadi Yusuf and Rifky Yusuf.

He observed five counterfeit Coach handbags and four

Buckner Decl. ¶ 7.

He also

Id. ¶ 8 Ex. 1.

On August 19, 2010, the private investigators assisted the

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Daly City Police Department in a criminal action at Diva.

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20.

Compl. ¶

Defendant Heryadi Yusuf was identified as the owner of Diva

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Coach submitted a declaration from Kris Buckner ("Buckner"),
President of Investigative Consultants, Inc., in support of its
Supplemental Brief. ECF No. 15-1.

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and arrested for the sale of counterfeit merchandise.

Id. ¶ 20.

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Five counterfeit Coach handbags and three counterfeit Coach wallets

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were recovered from Diva by the police.

Buckner Decl. ¶ 10.

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III. LEGAL STANDARD
After entry of a default, the Court may enter a default

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judgment.

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so, while "discretionary," Aldabe v. Aldabe, 616 F.2d 1089, 1092

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(9th Cir. 1980), is guided by several factors.

United States District Court

For the Northern District of California

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Fed. R. Civ. P. 55(b)(2).

Its decision whether to do

As a preliminary matter, the Court must "assess the adequacy

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of the service of process on the party against whom default

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judgment is requested."

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Workers v. Peters, No. 00-0395, 2000 U.S. Dist. LEXIS 19065, *2

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(N.D. Cal. Jan. 2, 2001).

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sufficient, it may consider the following factors in its decision

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on the merits of a motion for default judgment:

Bd. of Trs. of the N. Cal. Sheet Metal

If the Court determines that service was

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(1) the possibility of prejudice to the
plaintiff, (2) the merits of plaintiff's
substantive claim, (3) the sufficiency of the
complaint, (4) the sum of money at stake in the
action; (5) the possibility of a dispute
concerning material facts; (6) whether the
default was due to excusable neglect, and (7)
the strong policy underlying the Federal Rules
of Civil Procedure favoring decisions on the
merits.

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Eitel v. McCool, 782 F.2d 1470, 1471-72 (9th Cir. 1986).

"The

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general rule of law is that upon default the factual allegations of

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the complaint, except those relating to the amount of damages, will

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be taken as true."

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(9th Cir. 1977).

Geddes v. United Fin. Group, 559 F.2d 557, 560

Therefore, for the purposes of this Motion, the

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Court accepts as true the facts as presented in the Complaint.

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IV.

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DISCUSSION
A.

1.

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Adequacy of Service
Diva Shoes & Accessories

Federal Rule of Civil Procedure 4(h) provides that a

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corporation, partnership, or other unincorporated association may

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be served in the manner prescribed by Rule 4(e)(1), which allows

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service to be perfected in the manner prescribed by state law.

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Fed. R. Civ. P. 4(h), 4(e)(1).

United States District Court

For the Northern District of California

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California law provides that a

corporation or unincorporated association may be served:

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by leaving a copy of the summons and complaint
during usual office hours in . . . [the
corporation or association's] office or . . .
usual mailing address . . . with the person who
is apparently in charge thereof, and by
thereafter mailing a copy of the summons and
complaint by first-class mail, postage prepaid
to the person to be served at the place where a
copy of the summons and complaint were left.

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Cal. Code Civ. Proc. 415.20(a).

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complete on the tenth day after the mailing.

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This method of service is deemed
Id.

Here, service was left with "Huan Jain," the person in charge

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at Diva's store located at 7710-3 Serramonte Center, Daly City,

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California, on December 3, 2010, at 11:45 a.m.

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Proof of Service").

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and other relevant documents were mailed to Diva at the same

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address.

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was adequate and complete by December 28, 2010.

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Id.

2.

ECF No. 6 ("Diva

On December 17, 2010, the summons, complaint

The Court finds that service of process upon Diva

Heryadi Yusuf and Rifky Yusuf

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Federal Rule of Civil Procedure 4(e)(1) provides that an

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individual may be served in a judicial district of the United

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States in accordance with state law.

California law provides that,

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if an individual cannot be personally served with reasonable

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diligence the individual may be served:

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by leaving a copy of the summons and complaint
at the person's . . . usual place of business
or usual mailing address . . . with a person
apparently in charge of his or her office,
place of business, or usual mailing address . .
. and by thereafter mailing a copy of the
summons and complaint by first-class mail,
postage prepaid to the person to be served at
the place where a copy of the summons and
complaint were left.

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United States District Court

For the Northern District of California

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Cal. Code Civ. Proc. 415.20(b).

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deemed complete on the tenth day after the mailing.

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This method of service is also
Id.

Here, the process server declares that he attempted to serve

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Heryadi Yusuf on December 3, 2010 and December 6, 2010, at the Diva

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store but was told both times that Heryadi Yusuf was not present.

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ECF No. 8 ("Heryadi Yusuf Proof of Service").

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at 4:35 p.m., service was left with "Gourney Jain," the person in

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charge at the Diva store.

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complaint, and other relevant documents were mailed to Heryadi

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Yusuf at the address where the copies were left.

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Id.

On December 7, 2010,

On December 17, 2010, the summons,

Id.

The process server declares that he attempted to serve Rifky

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Yusuf at the Diva store on December 3, 2010.

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Yusuf Proof of Service").

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informed the process server that Rifky Yusuf owned a kiosk called

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"iPod Accessories" across from the Diva store.

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was not present at the kiosk.

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December 6, 2010, but Rifky Yusuf was again not present at the

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kiosk.

Id.

ECF No. 7 ("Rifky

The person in charge at the Diva store

Id.

Id.

Rifky Yusuf

The process server returned on

On December 7, 2010, at 4:40 p.m., the process server

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left service with "Joe Albert," the person in charge at the "iPod

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Accessories" kiosk located at 7710 Serramonte Center, Daly City,

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California.

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other relevant documents were mailed to Rifky Yusuf at the address

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where the copies were left.

On December 17, 2010, the summons, complaint, and

Id.

The Court finds that service of process upon Heryadi Yusuf and

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Id.

Rifky Yusuf was adequate and complete by December 28, 2010.

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B.

Default Judgment

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After entry of a default, a court may grant a default judgment
See Fed. R. Civ. P. 55.

A default

United States District Court

For the Northern District of California

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on the merits of the case.

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judgment may not be entered, however, against an infant or

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incompetent person unless represented in the action by a general

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guardian or other such representative who has appeared.

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Furthermore, a default judgment may not be entered against an

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individual in military service until after the court appoints an

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attorney to represent the defendant.

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Heryadi Yusuf and Rifky Yusuf are not infants, incompetent persons,

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or persons in military service.

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Court may consider whether a default judgment may be entered

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against Defendants.

See 50 U.S.C. App. § 521.

Chan Decl. ¶ 5.2

Accordingly, the

Here, the majority of the Eitel factors favor default

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See id.

judgment.
1.

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Prejudice

Coach served a cease-and-desist letter upon Diva in September

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2009 but to no avail.

If the motion for default judgment were to

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be denied, then Coach would likely be left without a remedy.

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2

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Cindy Chan, attorney for Plaintiffs, filed a declaration in
support of the Motion. ECF No. 11-2.

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Thus,

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Plaintiffs would be prejudiced absent entry of default judgment.
2.

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Merits of Plaintiffs' Substantive Claims and
Sufficiency of the Complaint

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Taken together, the second and third Eitel factors essentially

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require that "a plaintiff state a claim on which [it] may recover."

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Pepsico, Inc. v. Cal. Sec. Cans, 238 F. Supp. 2d 1172, 1175 (C.D.

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Cal. 2002) (internal quotations omitted).

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(1) trademark counterfeiting and infringement, 15 U.S.C. § 1114;

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(2) false designation of origin, id. § 1125(a); (3) trademark

Coach asserts claims for

United States District Court

For the Northern District of California

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dilution, id. § 1125(c); and (4) related claims under state law.

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See Compl.

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actual damages as relief.

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examines the only one of Coach's claims for which statutory damages

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are available -- its claim for trademark counterfeiting and

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infringement.

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damages for trademark counterfeiting); see also Chanel, Inc. v.

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Tshimanga, No. C-07-3592, 2008 U.S. Dist. LEXIS 118783, *17 (N.D.

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Cal. July 15, 2008) (adopting same approach).

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Coach seeks to recover statutory damages in lieu of
Mot. at 6.

Accordingly, the Court

See 15 U.S.C. § 1117(c) (providing for statutory

To prevail on its trademark infringement and counterfeiting

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claim, Coach must prove that, without its consent, Defendants used

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in commerce a reproduction or copy of Coach's registered trademark

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in connection with the sale or advertising of any goods or

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services, and that such use is likely to cause confusion, mistake,

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or deceive customers. 15 U.S.C. § 1114(1)(a); Brookfield Commc'n v.

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West Coast Entm't, 174 F.3d 1036, 1046-47 (9th Cir. 1999).

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outlined in Part I above, Coach has properly alleged all of these

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elements.

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Coach has adequately stated a claim on which it may recover.

As

Taking these allegations to be true, as the Court must,

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3.

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Amount of Money at Stake

Pursuant to the fourth Eitel factor, "the court must consider

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the amount of money at stake in relation to the seriousness of

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Defendant's conduct."

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Defendants have engaged in the sale and distribution of counterfeit

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goods bearing four of Plaintiffs' trademarks, and Defendants'

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continued sale of counterfeit Coach merchandise despite being

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served with a cease-and-desist letter augments the seriousness of

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their conduct.

Pepsico, 238 F. Supp. 2d at 1176.

Here,

Given Defendants' disregard of the cease-and-desist

United States District Court

For the Northern District of California

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letter, the likelihood that Defendants' conduct may cause confusion

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or mistake or otherwise deceive customers, and Defendants' failure

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to comply with the judicial process or to participate in any way in

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the present litigation, the imposition of a substantial monetary

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award is justified.

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proportionate to Defendants' conduct, especially in light of the

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fact that the size of the award is limited by what the Court

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considers just.
4.

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The amount of money at stake is therefore

Possibility of Dispute Concerning Material Facts

The fifth Eitel factor considers the possibility of dispute as

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to any material facts in the case.

Here, Plaintiffs filed a well-

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pleaded complaint alleging the facts necessary to establish their

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claims and provided evidence in the form of Buckner's declaration.

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Defendants have not responded to any of the proceedings in this

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case, and thus no dispute has been raised regarding the material

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averments of the Complaint.

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may exist is, at best, remote.

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entry of default.

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///

The likelihood that any genuine issue
This factor therefore favors the

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5.

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2

Whether Default Was Due to Excusable Neglect

Defendants have had nearly five months to respond to the

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Complaint and have not done so.

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that Defendants' failure to appear and otherwise defend was the

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result of excusable neglect.

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being served with the Complaint indicates that their failure to

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appear was willful.
6.

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There is no evidence in the record

Defendants' failure to appear after

Strong Policy Favoring Decision on the Merits

Finally, the mere existence of Federal Rule of Civil Procedure

United States District Court

For the Northern District of California

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55(b) indicates that the seventh Eitel factor is not alone

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dispositive.

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Defendants' failure to answer Plaintiffs' Complaint makes a

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decision on the merits impractical, if not impossible.

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the seventh Eitel factor does not preclude the Court from entering

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default judgment against Defendants.

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C.

Moreover,

Therefore,

Remedies
1. Statutory Damages

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Pepsico, 238 F. Supp. 2d at 1177.

The remedies available to a plaintiff who prevails on a claim

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for trademark infringement and counterfeiting under 15 U.S.C. §

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1114 are listed under 15 U.S.C. § 1117(a)-(c).

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registered mark holder may recover: (1) defendant's profits, (2)

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any damages sustained by the plaintiff, and (3) the costs of the

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action, subject to the principles of equity.

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requires the court to treble the damages assessed under subsection

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(a) if the defendant "intentionally us[es] a mark or designation,

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knowing such mark . . . is a counterfeit mark . . . in connection

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with the sale, offering for sale, or distribution of goods or

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services."

Under § 1117(a), a

Section 1117(b)

Section 1117(c) permits a plaintiff to elect statutory

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damages, instead of actual damages and profits, in cases involving

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the use of a counterfeit mark in connection with the sale of goods.

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Plaintiffs who elect statutory damages may recover "not less than

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$1,000 or more than $200,000 per counterfeit mark per type of goods

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or services sold, offered for sale, or distributed, as the court

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considers just."

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where the defendant's conduct is willful, a court may enhance the

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statutory damages award to an amount "not more than $2,000,000 per

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counterfeit mark per type of goods or services sold, offered for

15 U.S.C. § 1117(c)(1).

Additionally, in cases

United States District Court

For the Northern District of California

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sale, or distributed, as the court considers just."

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§ 1117(c)(2).

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the court has wide discretion in determining the amount of

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statutory damages to be awarded.

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04996, 2010 U.S. Dist. LEXIS 61295, *39 (N.D. Cal. May 7, 2010)

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(citing Columbia Pictures Television, Inc. v. Krypton Broad. of

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Birmingham, 259 F.3d 1186, 1194 (9th Cir. 2001)).

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15 U.S.C.

If a plaintiff elects to recover statutory damages,

Chanel, Inc. v. Lin, No. C-09-

In the instant case, where Plaintiffs have established that

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Defendants' conduct was willful, Plaintiffs may recover statutory

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damages pursuant to § 1117(c) in an amount not less than $1,000 and

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not more than $2,000,000 per counterfeit mark per type of goods

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sold, as the Court considers just.

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that Defendants offered for sale two types of goods -- wallets and

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handbags -- and infringed four distinct Coach Marks.

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Coach does not specify whether each of the marks was infringed by

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both a wallet and a handbag.

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Coach's marks was infringed by both a wallet and a handbag.

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Rather, applying the phrase "per counterfeit mark per type of goods

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sold" requires the Court to look at each trademark and determine

Buckner's declaration states

However,

The Court cannot assume that each of

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how many types of goods infringe that mark.

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2008 U.S. Dist. LEXIS 118783 at *36.

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this point, the Court will assume that each mark was infringed by

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either a wallet or a handbag, but not both.

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therefore, Coach may recover not less than $4,000 and not more than

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$8,000,000.

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See, e.g., Tshimanga,

Given the lack of evidence on

Under § 1117(c),

Section 1117(c) does not give any specific guidance as to how

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a court should determine an appropriate statutory damages award.

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"Although the statutory damages need not reflect the defendants'

United States District Court

For the Northern District of California

10

unlawfully obtained profits, some district courts use § 1117(b) as

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a guide for setting damages under § 1117(c). In doing so, courts

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both counteract the profitability of counterfeiting and execute the

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punitive purposes of the statute."

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03464, 2007 U.S. Dist. LEXIS 22691, *13 (N.D. Cal. Mar. 13, 2007)

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(calculating statutory damages by estimating defendant's profits

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and trebling for willfulness).

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damages are meant to serve as a substitute for actual damages the

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Court should discern whether the requested damages "bear some

19

relation to the actual damages suffered."

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Point Gifts, No. C-09-4215, 2010 U.S. Dist. LEXIS 59003, *15 (D.

21

N.J. June 14, 2010) (internal citations omitted).

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Chanel, Inc. v. Doan, No. C-05-

In other words, because statutory

Coach, Inc. v. Ocean

When determining the appropriate amount of statutory damages

23

to award under § 1117(c), some courts have considered the following

24

factors that guide the award of statutory damages under an

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analogous provision of the Copyright Act: (1) the expenses saved

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and the profits reaped by the defendant; (2) the revenues lost by

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the plaintiff; (3) the value of the copyright; (4) the deterrent

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effect on others besides the defendant; (5) whether the defendant's

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1

conduct was innocent or willful; (6) whether a defendant has

2

cooperated in providing particular records from which to assess the

3

value of the infringing material produced; and (7) the potential

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for discouraging the defendant.

5

Dist. LEXIS 118783 at *34; Microsoft Corp. v. Nop, 549 F. Supp. 2d

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1233, 1237-38 (E.D. Cal. 2008).

7

See, e.g., Tshimanga, 2008 U.S.

Here, Plaintiffs request $1,000,000 in statutory damages.

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Mot. at 2.

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deter Defendants and other potential counterfeiters from selling

They contend that such a large award is necessary to

United States District Court

For the Northern District of California

10

counterfeit Coach merchandise.

11

Philip Morris U.S.A., Inc. v. Castworld Prods., 219 F.R.D. 494, 502

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(C.D. Cal. 2003) to support their request.

13

court awarded $2,000,000 in statutory damages against a defendant

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who imported 8,000,000 counterfeit cigarettes.

15

found such a large award appropriate in light of the defendant's

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"importation of large, commercial quantities" of counterfeit

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cigarettes "having a street value of millions of dollars."

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500-01.

19

Id. at 7.

Plaintiffs rely on

In Philip Morris, the

Id.

Coach's reliance on Philip Morris is misplaced.

The court

Id. at

Here, there

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is no evidence that Defendants were importing "large, commercial

21

quantities" of counterfeit Coach merchandise, and the merchandise

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at issue certainly did not have a street value of millions of

23

dollars.

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brought by Coach, Coach has found much lower awards sufficient to

25

deter violators.

26

No. 09-CV-1059, 2010 U.S. Dist. LEXIS 68200, *5-6 (S.D. Cal. July

27

6, 2010), Coach sought only $10,000 in statutory damages where a

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website willfully infringed Coach trademarks by selling counterfeit

Furthermore, the Court notes that in other recent cases

For instance, in Coach, Inc. v. Cheap Sunglasses,

13

1

Coach eyewear.

The court found a $6,000 award appropriate.

Id. at

2

*6.

3

2011 U.S. Dist. LEXIS 32924, *20 (D.N.J. Mar. 29, 2011), Coach

4

sought a $100,000 award where a retail store willfully infringed

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Coach trademarks by selling counterfeit sunglasses.

6

determined that an award of $10,000 was appropriate.

7

Point Gifts, Coach sought $100,000 per mark per type of goods sold

8

where defendants willfully infringed Coach trademarks by selling

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counterfeit handbags, wallets, and other items at a retail outlet.

Similarly, in Coach, Inc. v. Cosmetic House, No. C-10-2794,

The court
Id.

In Ocean

United States District Court

For the Northern District of California

10

2010 U.S. Dist. LEXIS 59003 at *18.

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mark per type of goods appropriate and awarded a total of $200,000.

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Id. at *19.
Taking the above into account, the Court proceeds to consider

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14

The court found $10,000 per

the seven factors commonly considered in copyright law.
a.

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Expenses Saved and Profits Reaped

The lack of discovery in this case leaves no data as to

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17

Defendants' expenses saved and profits reaped, but a rough estimate

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can be made based on the data available and a few reasonable

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assumptions.3

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between eight and nine counterfeit Coach items -- consisting of a

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mixture of handbags and wallets -- were displayed for sale on a

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typical day.4

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3

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25
26
27
28

Buckner's declaration suggests that an average of

The only pricing information made available to the

The court in Ocean Point Gifts applied similar assumptions to
ensure that its award of statutory damages was roughly proportional
to the amount of actual damages likely incurred. 2010 U.S. Dist.
LEXIS 59003 at *20-21. Given the lack of discovery in this case,
the Court finds that applying some reasonable assumptions is the
best -- and only -- approach available to calculate a ballpark
estimate of Plaintiffs' actual damages.

4

A total of nine counterfeit Coach items were displayed for sale
when investigators visited Diva on August 4, 2010, and a total of
eight counterfeit Coach items were seized from Diva by police on

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1

Court is the fact that an investigator purchased a handbag for

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$43.69.

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value of the displayed counterfeit Coach merchandise on a typical

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day was approximately $396.

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sold all of its displayed counterfeit Coach inventory each week and

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had a profit margin as high as 300 percent, Defendants' profits

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would have been about $891 per week.

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Defendants' infringing activity in September 2009 and alleges that

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it continues to this day.

If the wallets were offered at a similar price, then the

Generously assuming that the store

Coach first discovered

Over this approximately 78-week period,

United States District Court

For the Northern District of California

10

the amount of Defendants' profits from infringing the Coach Marks

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would be $23,166.

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of actual damages under § 1117(a)-(b) would result in treble this

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amount -- a sum equal to $69,498.

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rough estimates, they nevertheless suggest that the requested award

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of $1,000,000 is grossly disproportionate to Coach's actual

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damages.

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b.

Given Defendants' willful infringement, an award

While these are of course very

Revenues Lost

Coach has provided no evidence of its revenues lost, either as

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a result of Defendants' infringing activities or as a result of

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counterfeiting in general.

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between $148 and $298 for bags similar to those sold by Defendants.

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Pl.'s Supp. Br. at 7.

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Defendants are significantly less expensive than authentic Coach

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merchandise, the shoppers who buy from Defendants are arguably not

It has stated that it typically charges

Given that the counterfeit bags sold by

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August 19, 2010. Coach notes that investigators observed about
seventy counterfeit items during the first visit to Diva in
September 2009, but Buckner's declaration makes clear that these
items were comprised of Chanel, Gucci, and Louis Vuitton branded
merchandise in addition to counterfeit Coach items. Buckner Decl.
¶¶ 5, 7, 10.

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likely to purchase authentic Coach products.

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lost as a direct result of Defendants' infringing activities may

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not be substantial.

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cannot reach any conclusion about the magnitude of lost revenues to

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Coach.
c.

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7

Thus, the revenues

Absent some evidentiary showing, the Court

Value of the Intellectual Property

The Coach Marks are extremely valuable because they are

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affiliated with billions of dollars in sales volume and more than a

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hundred million dollars have been expended in advertising and

United States District Court

For the Northern District of California

10

marketing associated with the Marks.
d.

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Compl. ¶ 16.

Willfulness of Defendants' Conduct

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Defendants' conduct was undoubtedly willful, as they continued

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their infringing conduct after receiving a cease-and-desist letter.
e.

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Records

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Defendants' Lack of Cooperation in Providing

Defendants have not provided any discovery or participated in
this litigation in any way.
f.

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Deterrent Effect on Defendants

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As Defendants operate only a single retail store of moderate

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scale based on the investigators' observations, it is likely that

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they can be deterred by a moderate damages award.

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deterrent effect of a monetary award will be in addition to the

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deterrent effect of the criminal action also brought against

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Defendants.

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g.

Moreover, the

Deterrent Effect on Others

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A significant award against Defendants would clearly have some

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kind of deterrent effect on other would-be infringers, although the

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magnitude of this effect is difficult to determine.

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Taking into account all of the above, the Court finds $140,000

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to be an appropriate award.

This amount is roughly double the

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liberal estimate of Coach's actual damages calculated above.

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within the guidelines established by Congress, takes into account

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the willfulness shown by continuing to sell counterfeit merchandise

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after receiving a cease-and-desist letter and the culpability of

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failing to respond, and is significant enough to serve as

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compensation to Coach and a deterrent to both the Defendants and

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others.

It is

This award is also in a range consistent with other recent

United States District Court

For the Northern District of California

10

cases in this district and others that involved similar

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merchandise.

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(N.D. Cal. Mar. 13, 2007) (awarding $127,701 where defendant sold

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counterfeit handbags on the internet); Tshimanga, 2008 U.S. Dist.

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LEXIS 118783 at *34 (awarding $75,000 per violation for a total of

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$450,000 where defendant sold counterfeit handbags and wallets on

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the Internet); Ocean Point Gifts, 2010 U.S. Dist. LEXIS 59003 at

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*20-21 (awarding $200,000 where defendant sold counterfeit Coach

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handbags, scarves, and hats at a small retail store).
2. Injunctive Relief

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See, e.g., Doan, 2007 U.S. Dist. LEXIS 22691 at *13

In addition to damages, Coach requests a permanent injunction

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enjoining Defendants from using Coach trademarks in connection with

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the sale and offer for sale of infringing products.

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gives the court "power to grant injunctions according to the rules

24

of equity and upon such terms as the court may deem reasonable, to

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prevent the violation" of a trademark holder's rights.

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§ 1116(a).

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like the instant one where a defendant has not appeared in the

28

action at all.

The Lanham Act

15 U.S.C.

Permanent injunctions are routinely granted in cases

Philip Morris, 219 F.R.D. at 502; Pepsico, 238

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1

F. Supp. 2d at 1178; Cheap Sunglasses, 2010 U.S. Dist. LEXIS 68200

2

at *6.

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permanent injunction enjoining Defendants from using Coach

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trademarks in connection with the sale and offer for sale of

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infringing products.

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Accordingly, the Court grants Coach's request for a

3.

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Costs

Coach also requests costs under 15 U.S.C. § 1117(a), which

8

authorizes recovery of the costs of an action for the violation of

9

any right of the registrant of a trademark.

Coach is entitled to

United States District Court

For the Northern District of California

10

the costs of this action.

11

F.2d 1400, 1405 (9th Cir. 1993).

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Costs in accordance with Civil Local Rule 54-1.

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See Lindy Pen Co. v. Bic Pen Corp., 982
Coach may submit its Bill of

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V.

CONCLUSION

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The Court GRANTS the Motion for Default Judgment filed by

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Plaintiffs Coach, Inc. and Coach Services, Inc. against Defendants

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Diva Shoes & Accessories, Heryadi Yusuf, and Rifky Yusuf.

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Court enters JUDGMENT in favor of Plaintiffs against Diva Shoes &

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Accessories, Heryadi Yusuf, and Rifky Yusuf in the amount of

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$140,000 plus Plaintiffs' costs.

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ENJOINED from infringing any of Plaintiffs' trademarks.

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The

Defendants are PERMANENTLY

Plaintiffs shall submit their Bill of Costs within fourteen

United States District Court

For the Northern District of California

10

(14) days of this Order as provided by Civil Local Rule 54-1.

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Failure to do so will result in a waiver of costs.

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IT IS SO ORDERED, ADJUDGED, AND DECREED.

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Dated: April 19, 2011
UNITED STATES DISTRICT JUDGE

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