Bentley Motors Limited Corporation et al v. Mcentegart et al
ORDER: Plaintiffs' Motion for Final Default Judgment against the Fugazzi Defendants 125 is GRANTED to the extent detailed herein. The Clerk is directed to enter Judgment in favor of Plaintiffs and against Defendants Matthew McEntegart and Fu gazzi Cars, Inc., in the amount of $500,000.00. Furthermore, this case is STAYED and ADMINISTRATIVELY CLOSED as to Defendants Robert Frary, III and Keeping It Real Auto Customizing, Inc., pending the resolution of the bankruptcy proceedings involving Defendant Robert Frary. Signed by Judge Virginia M. Hernandez Covington on 2/3/2014. (CH)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
BENTLEY MOTORS LIMITED
CORPORATION and BENTLEY
Case No. 8:12-cv-1582-T-33TBM
MATTHEW McENTEGART, FUGAZZI
CARS, INC., ROBERT FRARY III,
and KEEPING IT REAL AUTO
This matter comes before the Court in consideration of
Plaintiffs Bentley Motors Limited Corporation and Bentley
Motors, Inc.’s Motion for Final Default Judgment Against the
Fugazzi Defendants (Doc. # 125), filed on December 17, 2013.
For the reasons that follow, the Court grants the Motion to
the extent detailed herein.
Bentley Motors Limited Corporation and Bentley Motors,
Inc., collectively referred to herein as “Bentley,” employ
distribution, maintenance, service, and repair of . . .
(Doc. # 1 at ¶ 26).
Defendant Matthew McEntegart is the owner and operator
operating in St. Petersburg, Florida. (Doc. # 43 at 2). The
Court refers to Fugazzi and McEntegart collectively as “the
Fugazzi Defendants” herein.
Defendant Robert Frary is the
(Id.; Frary Dep. Doc. # 94-4 at 1).
The Court refers to Frary and Keeping It Real collectively as
“the Frary Defendants” herein.
On July 16, 2012, Bentley initiated this action against
Defendants for (1) trademark dilution pursuant to 15 U.S.C.
pursuant to 15 U.S.C. § 1114(1); (3) false advertising, false
designation of origin, and trade dress infringement pursuant
to 15 U.S.C. § 1125(a); and (4) design patent infringement
pursuant to 35 U.S.C. § 271.
(Doc. # 1 at ¶¶ 39-64).
alleged in its Verified Complaint that “Defendants unlawfully
manufacture[d] Bentley body kits that transform ordinary and
inexpensive Chrysler and Ford vehicles into knockoff Bentley
vehicles,” and “intentionally misappropriated the overall
appearance and shape of the Bentley GTC automobile, as well
as [various Bentley] trademarks, . . . by incorporating them
into ‘Bentley Car Kits’ . . . .”
(Id. at ¶¶ 1-7).
On October 26, 2012, Bentley moved for a Clerk’s entry
of default against the Fugazzi Defendants, and on November
26, 2012, the Clerk entered default against these Defendants
pursuant to Federal Rule of Civil Procedure 55(a).
On December 18, 2012, Bentley filed a motion for
default judgment against the Fugazzi Defendants.
On December 19, 2012, the Court held a hearing at which
McEntegart stated his acquiescence to the entry of default
judgment against him.
(Doc. # 73).
judgment at that time, the Court denied the motion without
litigation, noting that this action would remain pending
between Bentley and the Frary Defendants.
(Doc. # 75).
Instead, the Court granted Bentley’s request for a permanent
injunction against the Fugazzi Defendants.
(Id. at 4).
On September 30, 2013, this Court entered an Order (1)
granting Bentley’s motion for default judgment against the
Fugazzi Defendants, (2) granting Bentley’s motion for summary
judgment against the Frary Defendants as to Bentley’s claims
designation of origin, and (3) granting Bentley’s request for
a permanent injunction against the Frary Defendants.
Within that Order the Court noted that, by virtue of
their default, the Fugazzi Defendants are deemed to have
admitted to the willfulness of their conduct as alleged by
Bentley in the Complaint.
(Id. at 53 n.5).
Court found that a genuine issue of fact remained regarding
the willfulness of the Frary Defendants’ conduct.
In light of this remaining question of fact, the Court
found that this case should proceed to a bench trial as
scheduled, during the December 2013 trial term, for the
purpose of resolving the remaining issue of willfulness as to
the Frary Defendants.
The Court additionally noted that,
proceed to determine the appropriate award of damages in this
On December 13, 2013, four days before the scheduled
trial date, Bentley filed a document entitled: “Bentley’s
Notice of Filing Stipulated Final Judgment Against Defendants
Robert Frary III and Keeping It Real Customizing, Inc.” (Doc.
Bentley appended to the Notice a copy of the
Stipulated Final Judgment signed by counsel for Bentley,
counsel for the Frary Defendants, and Robert Frary, both for
himself and for Keeping It Real Customizing, Inc.
122 at 5).
The Court immediately entered an Order canceling
the bench trial in light of Bentley’s Notice.
(Doc. # 123).
The Court additionally directed Bentley to file, on or before
December 17, 2013, a motion for final default judgment as to
the remaining Defendants in order to facilitate a complete
resolution of this matter.
Bankruptcy under Chapter 13 of the Bankruptcy Code.
As noted in the Suggestion of Bankruptcy, “[p]ursuant
to 11 U.S.C. Section 362(a), Bankruptcy Code, the filing of
continuation of these proceedings” against the debtor.
The next day, on December 17, 2013, Bentley filed its
(Doc. # 125).
The Court has reviewed the Motion
for Final Default Judgment and is otherwise fully advised in
Final Judgment Against the Fugazzi Defendants
As noted above, the Court previously granted Bentley’s
motion for default judgment against the Fugazzi Defendants,
but reserved its determination as to the appropriate award of
damages until after the previously-scheduled bench trial.
(Doc. # 113 at 53-54).
In doing so, the Court noted that
“[a]lthough well-pleaded facts in a complaint are deemed
admitted, a plaintiff’s allegations relating to the amount of
damages are not admitted by virtue of default; rather, the
(Id. at 52 n.4) (citing Miller v. Paradise of Port
Richey, Inc., 75 F. Supp. 2d 1342, 1346 (M.D. Fla. 1999)).
determination of damages and the entry of a final judgment
against the Fugazzi Defendants.
Pursuant to Federal Rule of
Civil Procedure 54(b), “the court may direct the entry of a
final judgment as to one or more but fewer than all of the
claims or parties only upon an express determination that
direction for the entry of judgment.”
ABS-SOS Plus Partners.
Ltd. v. Vein Assoc. of Am., Inc., No. 6:08-cv-1409-Orl-31DAB,
2008 WL 5191701, at *3 (M.D. Fla. Dec. 10, 2008).
In this case, the automatic bankruptcy stay effective
against Frary as of December 16, 2013, prevents the Court
Defendant despite Bentley’s December 13, 2013, Notice of
Stipulated Final Judgment.
However, the Court determines
that the issuance of a final default judgment against the
Fugazzi Defendants is nonetheless appropriate at this late
juncture of the proceedings.
However, as the Court recognized in
its September 30, 2013, Order: “On September 4, 2012, the
bankruptcy court granted Bentley’s motion for relief from the
automatic bankruptcy stay under 11 U.S.C. § 362 for the
McEntegart.” (Doc. # 113 at 53 n.6). Thus, Bentley’s ability
to enforce any monetary judgment entered against McEntegart
in this action is subject to the terms imposed by the United
States Bankruptcy Court, Middle District of Florida, where
McEntegart’s bankruptcy case, No. 8:12-bk-12774-MGW, has been
pending during the course of this litigation.
(See Doc. #
Bentley has not notified the Court of any similar
order granting relief from the bankruptcy stay as to Robert
Amount of Damages
allegations of liability, allegations relating to the amount
of damages are not admitted by virtue of default.
the Court determines the amount and character of damages to
Automobil Lamborghini SpA v. Lamboshop, Inc.,
No. 2:07-cv-266-JES-SPC, 2008 WL 2743647, at *2 (M.D. Fla.
June 5, 2008) (internal quotation marks omitted).
default judgment is warranted, the court may hold a hearing
for the purpose[ ] of assessing damages.
However, a hearing
is not necessary if sufficient evidence is submitted to
support the request for damages.”
The Court finds a hearing unnecessary to determine
Id. (internal citations
evidence to properly determine damages without a hearing, and
(2) Bentley’s requested damages are statutory.
The Lanham Act allows a plaintiff to elect to receive
See 15 U.S.C. § 1117(c).
upon a plaintiff’s election to receive statutory damages
instead of actual damages, the Court can award statutory
damages of not less than $1,000 or more than $200,000 per
trademark infringed per type of goods sold, offered for sale,
or distributed, regardless of willfulness, “as the Court
determines to be just.”
Rolex Watch USA, Inc. v. Lynch, No.
2:12-cv-542, 2013 WL 2897939, at *5 (M.D. Fla. June 12, 2013)
(citing 15 U.S.C. § 1117(c)(1)).
However, statutory damages
may be increased to not more than $2,000,000 per trademark
distributed, if a defendant acts willfully.
Id. (citing 15
U.S.C. § 1117(c)(2)).
In addition to the presumption raised by the Fugazzi
Defendants’ default, 1 Bentley has offered abundant evidence
demonstrating that the Fugazzi Defendants’ infringement was
Indeed, the Court finds, as did the Court in Rolls-
Royce PLC v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150, 157
(E.D.N.Y. 2010), “it would be difficult for the court to
conclude that the infringements were anything but willful.”
Defendants’ kit cars bearing Bentley marks demonstrate the
Defendants’ intent “to trade off the reputation and good will
that the plaintiffs . . . have established.”
Bentley seeks an award of $1,000,000 against the Fugazzi
Defendants, “calculated based on [defendant]’s counterfeiting
See PetMed Express, Inc. v. MedPets.com, Inc., 336 F. Supp.
2d 1213, 1220 (S.D. Fla. 2004) (“[T]he Court may infer
willfulness from Defendants’ default.”).
of the B IN WINGS® (U.S. Reg. No. 0,344,524) in two separate
counterfeit Bentley Continental GTC automobiles and ‘Bentley
Car Kit’ products.”
(Doc. # 125 at 6).
Notably, this is the
same amount as that specified in the Stipulated Final Judgment
Against Defendants Robert Frary III and Keeping It Real
(Doc. # 122 at 3).
acknowledging that “this is the same statutory amount in the
Stipulated Final Judgment against [the Frary Defendants],”
(Doc. # 125 at 6 n.6), Bentley offers no legal analysis or
explanation justifying an award of this amount.
Bentley offers authority to support its general assertions
statutory damages,” and “several courts have found statutory
damages specially appropriate in default judgment cases due
to infringer nondisclosure.”
(Id. at 7).
The Court finds Bentley’s reasoning – that the Court
should award $1,000,000 in statutory damages against the
Fugazzi Defendants merely because this is the same amount to
which the Frary Defendants agreed in their Stipulated Final
agreement between Bentley and the Frary Defendants does not
impact the Court’s ability to determine an appropriate award
of damages as to the defaulted Defendants in this trademark
The Frary Defendants are represented by
counsel in this matter, as is Bentley, and the Court finds no
indication that the agreement reached by those parties was
scrutinizing at this juncture the agreement between Bentley
and the Frary Defendants, the Court will proceed to evaluate,
“[d]istrict courts have wide discretion in awarding statutory
PetMed Express, 336 F. Supp. 2d at 1219.
statutory damage provision, § 1117(c), was added in 1995
inadequate, or deceptively kept . . . making proving actual
Id. at 1219-20 (quoting Tiffany Inc. v. Luban,
282 F. Supp. 2d 123, 124 (S.D.N.Y. 2003)).
infringed, the Lanham Act “does not provide guidelines for
courts to use in determining an appropriate award.” Lynch,
2013 WL 2897939, at *5 (citations omitted).
courts look to the Copyright Act’s analogous provision, 17
U.S.C. § 504(c) in this situation.” Id. Under the Copyright
Act, courts consider factors such as: “(1) the expenses saved
plaintiff; (3) the value of the copyright; (4) the deterrent
effect on others besides the defendant; (5) whether the
defendant’s conduct was innocent or willful; (6) whether a
defendant has cooperated in providing particular records from
which to assess the value of the infringing material produced;
and (7) the potential for discouraging the defendant.” Id.
Cable/Home Commc’n Corp. v. Network Prods., Inc., 902 F.2d
829, 852 (11th Cir. 1990) (“In its broad discretion for
consider both the willfulness of the defendant’s conduct and
the deterrent value of the sanction imposed.”).
damages, the Court must strike a balance between permitting
a windfall for the plaintiff and emphasizing to the defendant
“that the trademark laws and court proceedings are not mere
Gucci America, 678 F. Supp. 2d at 122-
23; see also Rolls-Royce PLC v. Rolls-Royce USA, Inc., 688 F.
Supp. 2d 150, 157 (E.D.N.Y. 2010) (“[W]hile it may exceed
constitute a windfall for prevailing plaintiffs.
however, serve a punitive, deterrent function.”) (internal
The Court finds Bentley’s request for $1,000,000 in
statutory damages inappropriate in this case.
above, Bentley bases its request on the Fugazzi Defendants’
infringement of Bentley’s B IN WINGS® trademark registration
with regard to the two types of goods sold or offered for
sale: the Fugazzi Defendants’ turn-key counterfeit Bentley
Continental GTC automobiles and “Bentley Car Kit” products.
Although the Court believes that an award at the minimum level
considered militate against an award near the maximum end of
For instance, with regard to the second factor, “the
Defendants’ use of Bentley’s trademarks caused Bentley to
consistently marketed the infringing products as replicas or
It is unlikely that a consumer intending to
purchase an authentic Bentley could be easily persuaded to
purchase instead one of the Fugazzi Defendants’ fiberglass
Additionally, with regard to the first factor, the
Court is unconvinced that the “profits reaped” by the Fugazzi
Defendants produced “at least 30 fully built knockoff or
imitation Bentley vehicles.”
(Doc. # 5 at 9).
other evidence suggested that Defendants priced the “turn
key” replicas anywhere between $17,000 and $35,000.
Doc. # 32-7 at 2).
However, the Court is not inclined to
base a statutory award against only the Fugazzi Defendants on
the maximum speculated total sales for all cars produced.
This is not a case involving a large counterfeiting operation
that would warrant a statutory award near the maximum end of
the applicable range.
See, e.g., Phillip Morris USA Inc. v.
Marlboro Express, No. CV-03-1161, 2005 WL 2076921, at *6
(E.D.N.Y. Aug. 26, 2005) (finding a maximum statutory award
of $1,000,000 per trademark for each of four infringed marks
to be appropriate where “defendant’s counterfeiting operation
was large, involving at least 200,000 cartons and millions of
On the other hand, the Court is mindful that the Fugazzi
Defendants have chosen to default rather than to cooperate in
providing particular records from which to assess the value
of the infringing items produced.
Additionally, as explained
infringing conduct was indeed willful.
warrant an award above the statutory minimum.
After consulting numerous cases involving an award of
damages for trademark infringement, the Court determines that
an award of $250,000 per trademark infringed per type of good
offered for sale, for a total amount of $500,000, adequately
The Court finds that such an award also
accomplishes the objectives underlying the following relevant
The Court is mindful that “[t]he statutory
damages provision serves to sanction or punish defendants in
order to deter future wrongful conduct.”
WFTV, Inc. v.
Maverik Prod. Ltd. Liab. Co., No. 6:11-cv-1923, 2013 WL
3119461, at *13 (M.D. Fla. June 18, 2013)(citing St. Luke’s
Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186,
statutory damages in the amount of $250,000 per trademark per
type of good offered for sale, coupled with the injunctive
deterrent against any future wrongful conduct by the Fugazzi
For comparison, the Court has consulted the following
cases: Automobil Lamborghini SpA, 2008 WL 2743647, at *7
(finding a statutory damages award of $700,000, representing
$350,000 per infringing mark, to be appropriate in a case of
willful infringement)); Rolls-Royce PLC, 688 F. Supp. 2d at
159 (awarding $1,000,000 in statutory damages for willful
infringement, representing $25,000 x 2 marks x 20 types of
goods); Rolex Watch USA, Inc. v. Lizaso-Rodriguez, No. 1:11cv-23986,
2012)(awarding a total of $350,000 representing $50,000 per
conduct was intentional and willful); Lynch, 2013 WL 2897939,
at *6 (awarding a total of $800,000 representing $100,000 per
trademark for each of eight trademarks infringed); Malletier
v. Carducci Leather Fashions, Inc., 648 F. Supp. 2d 501, 505
trademarks infringed); Ford Motor Co. v. Cross, 441 F. Supp.
2d 837, 853 (E.D. Mich. 2006) (finding $100,000 to be an
appropriate statutory damages award in a case of willful
Miller, 678 F. Supp. 2d 117, 122 (S.D.N.Y. 2008) (finding an
award of “$3 million, or $200,000 per infringed mark . . .
appropriate to accomplish the dual goals of compensation and
Thus, based on the relevant factors discussed above and
the circumstances of this case, the Court finds that statutory
damages in the amount of $250,000 per trademark infringed per
type of good offered for sale, for a total amount of $500,000,
is an appropriate, just, and reasonable award.
The Court declines to determine an appropriate amount of
attorney fees at this juncture.
If Bentley intends to file
a motion for attorney fees in this matter, the Court directs
Bentley to do so on or before February 17, 2014.
motion must be accompanied by a detailed fee ledger itemizing
the hours worked in this case.
III. Stay Pending Resolution of Bankruptcy Proceedings
Judgment is proper as to the Fugazzi Defendants, the Court
finds it appropriate to stay this case as to the Frary
proceedings involving Defendant Robert Frary.
recognizes that, although no suggestion of bankruptcy has
been filed as to Defendant Keeping It Real Auto Customizing,
Inc., the corporation is nonetheless a party to the Stipulated
Final Judgment which remains unsigned by the Court.
In addition to the requirement enumerated by 11 U.S.C.
§ 362(a) that the filing of a bankruptcy petition “operates
as a stay . . . of the commencement or continuation . . . of
a judicial . . . action or proceeding against the debtor,”
this Court is also mindful that it “has broad discretion to
stay proceedings as an incident to its power to control its
Clinton v. Jones, 520 U.S. 681, 706 (1997).
Accordingly, the Court finds it appropriate to stay and
administratively close this action between Bentley and both
Frary Defendants pending the resolution of the bankruptcy
proceedings involving Defendant Robert Frary.
directs the parties to file a joint status report on or before
March 28, 2014, and every sixty days thereafter, advising the
Court as to the status of the relevant bankruptcy proceedings.
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
Plaintiffs’ Motion for Final Default Judgment against
the Fugazzi Defendants (Doc. # 125) is GRANTED to the
extent detailed herein.
The Clerk is directed to enter Judgment in favor of
Plaintiffs and against Defendants Matthew McEntegart and
Fugazzi Cars, Inc., in the amount of $500,000.
If Plaintiffs intend to file a motion for attorney fees
in this matter, Plaintiffs are directed to do so on or
before February 17, 2014.
Any such motion must be
accompanied by a detailed fee ledger itemizing the hours
worked in this case.
This case is STAYED and ADMINISTRATIVELY CLOSED as to
Defendants Robert Frary, III and Keeping It Real Auto
bankruptcy proceedings involving Defendant Robert Frary.
The Court directs the parties to file a joint status
report on or before March 28, 2014, and every sixty days
thereafter, advising the Court as to the status of the
relevant bankruptcy proceedings.
DONE and ORDERED in Chambers in Tampa, Florida, this 3rd
day of February, 2014.
Copies: All Counsel and Parties of Record
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