Chanel, Inc. v. Fu
Filing
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ORDER re 61 Supplemental Briefing and/or Evidence. Signed by Judge Edward M. Chen on 2/16/2017. (emclc2, COURT STAFF) (Filed on 2/16/2017)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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CHANEL, INC.,
Plaintiff,
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ORDER RE SUPPLEMENTAL
BRIEFING AND/OR EVIDENCE
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v.
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HSIAO YIN FU,
Docket No. 61
Defendant.
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For the Northern District of California
United States District Court
Case No. 16-cv-02259-EMC
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Plaintiff Chanel, Inc. has filed suit against Defendant Hsiao Yin Fu for, inter alia,
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counterfeiting, trademark infringement, and false designation of origin in violation of the federal
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Lanham Act; related violations of state law; and breach of contract. See generally Docket No. 28
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(first amended complaint). On January 4, 2017, the Court conducted a telephonic case
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management conference during which defense counsel represented that Ms. Fu did not intend to
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respond to Chanel‟s complaint. The Court therefore directed the Clerk to enter default against Ms.
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Fu, and the Clerk did so. See Docket Nos. 59-60 (minutes and notice of entry of default). Chanel
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now moves for a default judgment.
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At this juncture, Ms. Fu has failed to file an opposition to Chanel‟s motion, at least within
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the timeframe required by the Civil Local Rules. Notwithstanding such, the Court shall not, at this
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point, vacate the hearing on the motion and rule in Chanel‟s favor. Rather, the Court hereby
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orders that the parties address the following issues through supplemental briefing and/or evidence.
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Such briefing and/or evidence shall be filed within one week of the date of this order.
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1.
Permanent injunction. Chanel‟s requested permanent injunction uses language
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different from that used in the agreed-upon preliminary injunction. Compare Docket No. 61-3
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(proposed order for permanent relief), with Docket No. 35 (consent preliminary injunction). The
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parties shall address whether the language of the latter is sufficient – i.e., whether the preliminary
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injunction should, in effect, be converted into a permanent injunction. The parties shall also
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address whether there is any potentially problematic language in Chanel‟s proposed permanent
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injunction. See, e.g., Docket No. 61-3 (proposed order for permanent relief) (¶ 1(h)) (enjoining
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Ms. Fu from “otherwise unfairly competing with Plaintiff”).
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2.
Statutory damages. The parties shall address whether the proposed statutory
damages requested and/or awarded in other cases in which Chanel or a similar trademark owner
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has asked for such damages? See, e.g., Chanel, Inc. v. Gupton, No. 14-cv-03105-JSW (KAW),
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2015 U.S. Dist. LEXIS 24997, at *18-19 (N.D. Cal. Jan. 15, 2015) (report and recommendation,
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subsequently adopted by district court) (rejecting Chanel‟s request for $20,000 for each of two
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For the Northern District of California
damages of $500,000 is reasonable. For example, is the requested award consistent with statutory
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United States District Court
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registered marks infringed; noting that “[c]ourts in this district have awarded significantly less in
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statutory damages per Mark on default judgment in similar cases involving Chanel” – e.g.,
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$3,000); see also Chanel, Inc. v. Lin, No. C-09-04996 JCS, 2010 U.S. Dist. LEXIS 61295, at *39
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(N.D. Cal. May 7, 2010) (report and recommendation, subsequently adopted by district court)
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(noting that Chanel “requests an award of $3,000.00 per registered Chanel Mark” and that Chanel
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“bases its request on the statutory minimum ($1,000.00 per counterfeit mark per type of good
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sold) trebled to reflect Defendants‟ willfulness”); Chanel Inc. v. San, No. C-10-2180 RS (N.D.
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Cal.) (Docket No. 23) (in motion for default judgment filed in November 2010, asking for baseline
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statutory damages of $1,000 per mark and then asking that that amount be trebled “to reflect
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Defendants‟ willfulness and for the purpose of deterrence” – i.e., $3,000 per mark); Chanel, Inc. v.
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Weng, No. C-10-03620 JCS, 2011 U.S. Dist. LEXIS 157806, at *41-42 (N.D. Cal. Apr. 18, 2011)
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(report and recommendation, subsequently adopted by district court) (taking note that “Chanel
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requests an award of $4,000.00 per type of goods sold . . . per distinct registered Chanel Mark” – a
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position that Chanel argued “reflects Defendants‟ extensive and willful counterfeiting”); Chanel,
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Inc. v. US880, No. C 10-02601 PJH (JSC), 2011 U.S. Dist. LEXIS 82632, at *44-45 (N.D. Cal.
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July 5, 2011) (report and recommendation, subsequently adopted by district court) (noting that
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Chanel “initially requested an award of $3,000.00 per registered Chanel trademark,” a “calculation
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. . . based on the statutory minimum of $1,000.00 per counterfeit mark pre type of good sold
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trebled to reflect Defendant‟s willfulness”).
Also, does the statutory damages award requested bear a relationship to Chanel‟s actual
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Dist. LEXIS 24997, at *16 (noting that, “[i]n determining the appropriate amount of statutory
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damages to award on default judgment, courts in this district consider whether the amount of
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damages requested bears a „plausible relationship to Plaintiff‟s actual damages‟ and whether the
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amount is sufficient to deter future infringement”); see also Coach Inc. v. Envy, No. 1:11-cv-1029
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LJO GSA, 2012 U.S. Dist. LEXIS 2879, at *10 (E.D. Cal. Jan. 10, 2012) (noting that plaintiff did
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not provide evidence in support of its request for statutory damages – “[t]here is no evidence, for
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example, regarding what products in particular were obtained, the value of the items, the presence
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For the Northern District of California
damages or to the value of the counterfeit goods seized from Ms. Fu1? See Gupton, 2015 U.S.
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United States District Court
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of other products in the store, or how the introduction of these products into the market
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specifically effected Coach‟s profit”).
3.
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Attorney’s fees. Chanel has asked the Court to rule that it is entitled to attorney‟s
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fees on the grounds that this case is an exceptional one, with the specific amount to be determined
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later. The Court orders the parties to address whether attorney‟s fees may be awarded in a case
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where the plaintiff seeks statutory damages (as here). See, e.g., Louis Vuitton Malletier S.A. v. LY
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USA, Inc., 676 F.3d 83, 106-11 (2d Cir. 2012) (concluding that an award of fees under 15 U.S.C. §
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1117(a) may accompany an award of statutory damages under § 1117(c) but recognizing that
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courts are not in agreement on this issue and that the Ninth Circuit has expressly chosen not to
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address the issue; adding that many “courts avoid confronting the issue by implicitly or explicitly
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accounting for the cost of attorney‟s fees in setting the amount of the statutory-damages award”);
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see also K&N Eng’g, Inc. v. Bulat, 510 F.3d 1079, 1083 n.5 (9th Cir. 2007) (“not reach[ing] the
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issue whether an election to receive statutory damages under § 1117(c) precludes an award of
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attorney‟s fees for exceptional cases under the final sentence of § 1117(a)”). In addition, the Court
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orders Chanel to provide information about the amount of attorney‟s fees that will be requested,
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Chanel should provide information as to the value of the goods seized from Ms. Fu. See
generally Docket No. 31 (custody receipt for seized property and evidence).
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including information on the hourly rates and the reasonable number of hours incurred, which
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were properly attributable to the case against Ms. Fu. The Court expects the exercise of billing
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judgment. Chanel shall also make clear whether it is asking for any fees incurred by Mr. Gaffigan
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and, if so, whether any such fees have been excluded.
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4.
Contempt. Chanel asks that Ms. Fu be held in contempt for violating the final
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judgment and permanent injunction entered by Judge Gonzalez Rogers in Case No. C-14-1088
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YGR (N.D. Cal.). The parties shall address whether that relief is better sought from Judge
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Gonzalez Rogers instead of the undersigned (i.e., after this Court renders a ruling in this case).
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5.
Destruction of seized goods. Finally, Chanel asks for permission to destroy all
items bearing the Chanel marks that it seized from Ms. Fu on May 4, 2016. Chanel shall submit a
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declaration confirming that all seized items were determined to be counterfeits.
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For the Northern District of California
United States District Court
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IT IS SO ORDERED.
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Dated: February 16, 2017
______________________________________
EDWARD M. CHEN
United States District Judge
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