Disney Enterprises, Inc. et al v. Tran et al

Filing 26

Order by Hon. Samuel Conti granting 19 Motion for Default Judgment.(sclc2, COURT STAFF) (Filed on 5/1/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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United States District Court

For the Northern District of California

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) Case No. 12-5030 SC
)
DISNEY ENTERPRISES, INC., DC
) ORDER GRANTING APPLICATION FOR
COMICS, and SANRIO, INC.,
) DEFAULT JUDGMENT
)
Plaintiffs
)
)
v.
)
)
VUONG TRAN a.k.a. VUONG NGUYEN )
a.k.a. RICKY TRAN a.k.a. RICKY )
VUONG, an individual and d/b/a )
www.norcaljumper.com, JOEY
)
NGUYEN a.k.a. DUONG NGUYEN, and )
DOES 1-10, inclusive,
)
)
Defendants.
)
)

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I.

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INTRODUCTION
Now before the Court is Plaintiffs Disney Enterprises, Inc.,

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DC Comics, and Sanrio, Inc.'s (collectively "Plaintiffs") motion

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for entry of default judgment against Defendant Joey Nguyen a.k.a.

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Dung Nguyen a.k.a. Duong Nguyen ("Nguyen" or "Defendant").

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19 ("Mot.").

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Plaintiffs' motion.

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For the reasons stated below, the Court GRANTS

ECF No.

1 II.

BACKGROUND

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Plaintiffs are companies that own the rights to a wide variety

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of well-known copyrighted and trademarked designs.1

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Defendant owns a business that manufactures, imports, distributes,

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rents, and sells goods -- mainly inflatable play areas ("jumpers")

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for children's parties and jumper accessories -- featuring an array

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of Plaintiffs' copyrighted and trademarked designs.2

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The designs that Plaintiffs allege to have been infringed are:

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Mickey Mouse, Minnie Mouse; Donald Duck; Daisy Duck; Pluto; Chip

Compl. ¶¶ 3-4.

Compl. ¶ 1.

United States District Court

For the Northern District of California

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'N' Dale; Tinker Bell; various characters from the motion pictures

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Toy Story 3, Pirates of the Caribbean, High School Musical, The

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Little Mermaid, and Hannah Montana; Batman; Superman; Wonder Woman;

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Hello Kitty; KeroKeroKeropi; My Melody; and Badtz Maru

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(collectively the "Designs").

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registered under federal copyright and trademark law.

Mot. at 18.

All of the Designs are
See id.

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Plaintiffs are the exclusive licensors of the Designs, and

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they have not granted Defendant any license or authorization to

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make any sort of use of the Designs.

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according to Plaintiffs' allegations, Defendant has (among other

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things) reproduced, sold, rented, and otherwise exploited the

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Designs in order to promote their own business.

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therefore sued Defendant in this Court on September 27, 2012,

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asserting claims for copyright infringement, trademark

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Compl. ¶¶ 1, 15.

However,

Plaintiffs

Full descriptions of the material at issue in this case, too
numerous to list in this Order, appear in Plaintiffs' complaint,
ECF No. 1 ("Compl."), at paragraphs 5 through 7 and in exhibits A
through F.
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Also named in the complaint and listed in the caption is Vuong
Tran and his aliases. Plaintiffs submitted a notice of his
bankruptcy filing on January 2, 2013, ECF No. 13, and in their
motion seek entry of default judgment only against Defendant.
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infringement, unfair competition, trademark dilution, and

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declaratory relief.

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the complaint or otherwise appear in this action.

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ask the Court to enter default judgment against Defendant solely as

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to the copyright infringement claims, to award both statutory

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damages under the Copyright Act and post-judgment interest, and to

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enter an injunction preventing Defendant from further infringing

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any of Plaintiffs' copyrights.

See Compl. ¶¶ 13-47.

Defendant did not answer
Plaintiffs now

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United States District Court

For the Northern District of California

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

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judgment.

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

Its decision whether to do

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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.

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matter, the Court must "assess the adequacy of the service of

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process on the party against whom default judgment is requested."

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Bd. of Trs. of N. Cal. Sheet Metal Workers v. Peters, No. C-00-0395

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VRW, 2000 U.S. Dist. LEXIS 19065, at *2 (N.D. Cal. Jan. 2, 2001).

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If the Court determines that service was sufficient, it should

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consider whether the following factors support the entry of default

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judgment: (1) the possibility of prejudice to the plaintiff; (2)

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the merits of a plaintiff's substantive claim; (3) the sufficiency

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of the complaint; (4) the sum of money at stake in the action; (5)

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the possibility of a dispute concerning material facts; (6) whether

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the default was due to excusable neglect; and (7) the strong policy

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underlying the Federal Rules of Civil Procedure favoring decisions

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on the merits.

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1986).

As a preliminary

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

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"The general rule of law is that upon default the factual

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allegations of the complaint, except those relating to the amount

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of damages, will be taken as true."

Geddes v. United Fin. Grp.,

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559 F.2d 557, 560 (9th Cir. 1977).

However, "necessary facts not

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contained in the pleadings, and claims which are legally

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insufficient, are not established by default."

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Co., 980 F.2d 1261, 1267 (9th Cir. 1992).

Cripps v. Life Ins.

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DISCUSSION

United States District Court

For the Northern District of California

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A.

Procedural Requirements

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Before the Court may consider whether to exercise its

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discretion to enter default judgment, it must be satisfied that the

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procedural prerequisites, including adequate service of process,

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have been met.

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238 F. Supp. 2d 1172, 1175 (C.D. Cal. 2002).

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Plaintiffs properly served Defendant by substituted service on

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October 27, 2012.

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Civ. P. 4(e)(2)(B).

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moving papers and other documents in this matter on March 14, 2013.

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Defendant never responded to the original service or the instant

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motion.

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Court has personal jurisdiction over him.

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Plaintiffs met the procedural prerequisites in this case.

See, e.g., PepsiCo, Inc. v. California Sec. Cans,
In this matter,

ECF No. 12 (Proof of Service); see also Fed. R.
Further, Plaintiffs served Defendant with the

Since Defendant is a resident of San Jose, California, the
The Court finds that

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B.

Eitel Factors

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Since service was proper, the Court turns to the Eitel factors

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to determine whether default judgment is appropriate.

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i.

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Prejudice Against Plaintiffs

The first factor considers the possibility of prejudice

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against the plaintiff if default judgment is not entered.

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Court finds that because Plaintiff may be without recourse for

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recovery if default judgment is not entered, this factor weighs in

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favor of default judgment.
ii.

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See PepsiCo, 238 F. Supp. 2d at 1177.

Plaintiffs' Allegations Must State a Claim

The second and third Eitel factors require that a plaintiff's

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The

allegations state a claim upon which it can recover.

Since

United States District Court

For the Northern District of California

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Plaintiffs have only requested default judgment as to their

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copyright claims, Plaintiffs must state a claim for copyright

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infringement.

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copyright and unauthorized copying of original elements of the

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protected work by Defendant.

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Serv. Co., 499 U.S. 340, 361 (1991); Shaw v. Lindheim, 919 F.2d

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1353, 1356 (9th Cir. 1990).

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that he has no knowledge or reason to believe that the work at

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issue in a copyright infringement action was protected, 17 U.S.C. §

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504(c)(1)(2), and if a plaintiff produces a copyrighted work's

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certificate of registration, made before or within five years of

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the work's publication, then that certificate is prima facie

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evidence of copyright validity, 17 U.S.C. § 410(c).

To do so, they must establish ownership of a valid

See Feist Publ'ns, Inc. v. Rural Tel.

It is the defendant's burden to prove

As Plaintiffs allege, they are the exclusive owners or

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licensees of exclusive rights under the Copyright Act.

Compl. ¶¶

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5-9.

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has made of the Designs.

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provided proof of their exclusive rights under the Copyright Act as

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to the Designs.

The rights Plaintiffs control extend to the uses Defendant
Id.

¶¶ 13-20.

Moreover, Plaintiffs have

Compl. ¶¶ 5.e, 6.j, 7.d; ECF No. 20 (Decl. of

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Annie S. Wang ISO Mot. ("Wang Decl.") ¶¶ 8-103; Wang Decl. Exs. J-L

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(copyright registration certificates).4

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first requirement for a copyright infringement claim.

These facts satisfy the

Second, Plaintiffs provide ample documentation of the

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websites, advertisements, products, and other media in which

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Defendant has infringed the Designs.

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Peterson Decl. ¶¶ 2-3; Fernandez Decl. ¶¶ 4-11; Reed Decl. ¶ 4;

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Diaz Decl. ¶¶ 7-8; Suemori Decl. ¶ 9.

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"copied" under the Copyright Act when it is "so overwhelmingly

See Compl. ¶¶ 1, 14-17;

A work is considered

United States District Court

For the Northern District of California

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identical that the possibility of independent creation is

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precluded."

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F.2d 1237, 1330 (9th Cir. 1983).

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Designs are indeed virtually identical to the registered Designs

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Plaintiffs provide, so the second criterion for a copyright

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infringement claim is met here.

Defendant's reproductions of the

The Court finds that Plaintiffs' allegations state a claim for

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Twentieth Century Fox Film Corp. v. MCA, Inc., 715

copyright infringement.
iii.

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The Amount of Money at Stake

As to the fourth Eitel factor, the Court must consider "the

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amount of money at stake in relation to the seriousness of

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defendant's conduct."

N. Cal. Sheet Metal Workers, 2000 U.S. Dist.

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LEXIS 19065, at *4-5.

"The Court considers Plaintiff's

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declarations, calculations, and other documentation of damages in

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Plaintiffs' additional declarations -- those of Hailey Peterson,
Mariela Fernandez, Florence Diaz, Yumi Nancy Suemori, and Marsha L.
Reed, all in support of Plaintiffs' motion -- appear seriatem in
ECF No. 20. The Court accordingly refers to them by name, infra,
instead of providing the full docket number and citation each time.
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The Court takes judicial notes of the copyright registration
certificates, Wang Decl. Exs. J-L, under Federal Rule of Evidence
201.
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determining if the amount at stake is reasonable."

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Corp. v. Twinstar Tea Corp., No. 06–CV–03594, 2007 WL 1545173, at

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*12 (N.D. Cal. May 29, 2007).

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Truong Giang

In their motion, Plaintiffs ask for $625,000 in statutory

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damages, plus interest on the judgment.

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substantial burden on Defendant, and requests for such large sums

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of money generally counsel against entry of default judgment.

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Eitel, 782 F.2d at 1472.

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adjusts Plaintiffs' requested damages to an appropriate amount

United States District Court

For the Northern District of California

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This would probably be a

However, as discussed below, the Court

based on deterrence considerations and the evidence in the record.
iv.

Likelihood of Dispute over Material Facts

With respect to the fifth Eitel factor, the material facts of

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the instant case are not reasonably likely to be subject to

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dispute.

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business is infringing.

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The record indicates that the nature of Defendant's

v.

Excusable Neglect

For the sixth Eitel factor, there is no support for finding

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that Defendant's default is due to excusable neglect.

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was served with the Complaint and Summons in this action over five

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months ago and has yet to enter an appearance.

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served Defendant with their motion for entry of default judgment

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and its accompanying papers.

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be attributed to excusable neglect.

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Instrument Co. v. Kuei, 194 F. Supp. 2d 995, 1005 (N.D. Cal. 2001).

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This factor supports entry of default judgment.

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vi.

Defendant

Plaintiffs also

In such circumstances, default cannot
See Shanghai Automation

Policy Favoring Decision on the Merits

"Cases should be decided upon their merits whenever reasonably
possible."

Eitel, 782 F.2d at 1472.

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However, this policy is not

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dispositive, and "Defendant's failure to answer Plaintiff['s]

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Complaint makes a decision on the merits impractical, if not

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impossible."

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case before hearing the merits is allowed when a defendant fails to

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defend an action.

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not weigh against default judgment.
vii.

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United States District Court

For the Northern District of California

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PepsiCo, 238 F. Supp. 2d at 11.

Id.

Termination of a

Therefore, in this case, this factor does

Summary of Eitel Factors

Considered together, the Eitel factors favor entry of default
judgment.

The Court addresses Plaintiffs' requested remedies

below.
C.

Remedies
i.

Damages

Plaintiffs seek $625,000 in statutory damages.

Pursuant to

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section 504(a) of the Copyright Act, an infringer is liable for

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either the plaintiff's actual damages or statutory damages.

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U.S.C. § 504(a).

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between $750.00 and $30,000.00 for all infringements of a

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copyrighted work.

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owner "sustains the burden of proving, and the court finds, that

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infringement was committed willfully, the court in its discretion

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may increase the award of statutory damages to a sum of not more

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than $150,000."

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recover statutory damages, he need not prove actual damages.

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Columbia Pictures Indus., Inc. v. Krypton Broad. of Birmingham,

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Inc., 259 F.3d 1186, 1194 (9th Cir. 1997) (citation omitted).

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awarding statutory damages, the Court has broad discretion within

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the range provided by statute.

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damages are intended to serve as a deterrent, but that does not

See 17

A plaintiff seeking statutory damages may recover

Id. § 504(c).

Additionally, if a copyright

Id. § 504(c)(2).

If a plaintiff chooses to

Id.

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See

Importantly, "[s]tatutory

When

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justify . . . a windfall."

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6712 WHA, 2007 WL 1520965, at *4 (N.D. Cal. 2007).

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Microsoft Corp. v. Ricketts, No. C 06-

Plaintiffs allege that Defendant's infringement was willful.

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Allegations of willful infringement are deemed to be true on

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default.

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696, 702 (9th Cir. 2008).

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increased damages under the Copyright Act's willful infringement

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allowance, Plaintiffs ask for $25,000 for each of the twenty-five

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infringed Designs, for a total of $625,000.

See Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d
Despite their apparent entitlement to

See Mot. at 17.

Even

United States District Court

For the Northern District of California

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so, the $25,000 per infringement award is "at the high end of the §

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504(c)(1) scale."

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No. C 10-0511 CRB, 2010 WL 3894190, at *2 (N.D. Cal. Oct. 1, 2010).

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After evaluating the evidence and Plaintiffs' motion, the Court

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does not find that Defendant's operation merits such extensive

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damages.

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amount of the statutory damages to be awarded, constrained only by

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the specified maxima and minima," Harris v. Emus Records Corp., 734

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F.2d 1329, 1335 (9th Cir. 1984), the Court awards Plaintiffs

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$10,000 per infringement multiplied by twenty-five Designs for a

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total of $250,000, in recognition of the fact that Plaintiffs do

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profit from the use of their copyrights.

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amount sufficient for the purposes of deterrence.

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ii.

Disney Enters., Inc. v. San Jose Party Rental,

Per the Court's "wide discretion in determining the

The Court finds this

Injunctive Relief

Plaintiffs allege that Defendants infringed on their

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copyrights by willfully and knowingly manufacturing, distributing,

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and selling moonwalks featuring Plaintiffs' Designs, despite

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Plaintiffs' cease and desist requests.

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Decl. ¶ 4.

Compl. ¶¶ 44; Peterson

This demonstrates that Plaintiffs' exclusive rights in

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the Designs have been, and continue to be, violated by the

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Defendant.

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a permanent injunction to prevent or restrain further

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infringements.

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MAPHIA, 948 F. Supp. 923, 940 (N.D. Cal. 1996) ("Generally, a

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showing of copyright infringement liability and the threat of

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future violations is sufficient to warrant a permanent

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injunction.").

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must demonstrate: (1) that it has suffered an irreparable injury;

In such circumstances, the Court is authorized to issue

See 17 U.S.C. § 502(a); Sega Enters. Ltd. v.

In order to receive injunctive relief, a plaintiff

United States District Court

For the Northern District of California

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(2) that remedies available at law are inadequate to compensate for

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that injury; (3) that, considering the balance of hardships between

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the plaintiff and defendant, a remedy in equity is warranted; and

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(4) that the public interest would not be disserved by a permanent

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injunction.

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(2006).

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391

As alleged, Defendant has willfully infringed Plaintiffs'

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copyrights.

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Plaintiffs' pleadings, suggests that his infringing activities will

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not cease absent judicial intervention.

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Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal. 2003).

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finds that Plaintiffs will be irreparably harmed if an injunction

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is not issued.
iii.

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Defendant's failure to respond to the suit, alongside

See, e.g., Jackson v.
The Court

Therefore, a permanent injunction will be entered.
Interest

The Court finds that Plaintiffs are entitled to post-judgment

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interest pursuant to 28 U.S.C. § 1961(a).

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V.

CONCLUSION
As explained above, Plaintiffs Disney Enterprises, Inc. and DC

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Comics, and Sanrio, Inc.'s motion for entry of default judgment is

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GRANTED.

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Nguyen is ORDERED to pay damages of $250,000 to Plaintiffs.

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Defendant Nguyen is also ordered to pay interest pursuant to 28

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U.S.C. § 1961(a).

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Defendant Joey Nguyen a.k.a. Dung Nguyen a.k.a. Duong

Furthermore, Defendant and his agents, servants, employees and
all persons in active concert and participation with them who

United States District Court

For the Northern District of California

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receive actual notice of the injunction are hereby restrained and

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enjoined from importing, advertising, displaying, promoting,

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marketing, distributing, providing, offering for sale and selling

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of products that picture, reproduce, copy or use the likenesses of

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or bear a substantial similarity to the designs registered in the

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following copyright registrations: Mickey-1 (VA 58-937); Minnie-1

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(VA 58-938); Donald Duck (Gp 80-184); Daisy-1 (VA 58-933); Pluto

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(Gp 80-192)/(RE 826-536); Chip (R 567-615); Dale (R 567-614); Walt

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Disney’s Peter Pan Coloring Book #21865 (RE 66-285); Toy Story –

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Buzz Lightyear (VAu 337-566), Toy Story – Woody (VAu 337-565), Toy

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Story – Rex (VAu 337-568), Toy Story (PA 765-713), Pirates of the

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Caribbean: The Curse of the Black Pearl (PA 1-138-412); High School

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Musical – Fall/Winter 2007 Style Guide (VA 1-405-075); Ariel 9-9-87

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Ruff (VAu 123-355); Flounder (VAu 123-349); Triton (VAu 123-350);

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Ruff Sebastian (Vau 123-354), Hannah Montana Branding Guide (VA 1-

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403-647); DC Comics Anti-Piracy Guide (TXu 1-080-661); Superman

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Style Guide (TX 3-221-758); the Hello Kitty registration (VA 130-

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420); KeroKeroKeropi (VA 636-579); Sanrio 2005 Character Guide (VAu

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684-322); and Sanrio 2010 Character Guide (VAu 1-078-385).

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Plaintiffs have the responsibility to serve the injunction in
such a manner to make it operative in contempt proceedings.

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IT IS SO ORDERED.

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Dated: May 1, 2013

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UNITED STATES DISTRICT JUDGE

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United States District Court

For the Northern District of California

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