Carlo Bay Enterprise, Inc v. Two Amigo Restaurant, Inc et al

Filing 19

ORDER: Plaintiff Carlo Bay Enterprise, Inc.'s Motion for Entry of Default Judgment Against Defendants Phillip Lopez, William Lopez, and Two Amigo Restaurant, Inc. 18 is GRANTED to the extent set forth herein. The Clerk is directed to enter Ju dgment in favor of Plaintiff and against Defendants Phillip Lopez, William Lopez, and Two Amigo Restaurant, Inc., in the amount of $30,000. If Plaintiff intends to file a motion for attorney fees in this matter, Plaintiff is directed to do so on or before December 22, 2014. Any such motion must be accompanied by a detailed fee ledger itemizing the hours worked in this case. Signed by Judge Virginia M. Hernandez Covington on 12/8/2014. (KBT)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
CARLO BAY ENTERPRISE, INC.,
Plaintiff,
v.

Case No. 8:14-cv-1989-T-33TGW

TWO AMIGO RESTAURANT, INC.,
ET AL.,
Defendants.
______________________________/
ORDER
This matter comes before the Court in consideration of
Plaintiff Carlo Bay Enterprise, Inc.’s (Carlo Bay) Motion for
Entry of Default Judgment Against Defendants Phillip Lopez,
William Lopez, and Two Amigo Restaurant, Inc. (Doc. # 18),
filed on November 20, 2014. For the reasons that follow, the
Court grants the Motion to the extent set forth herein.
I.

Background
Carlo Bay is the owner and operator of Club Prana, a

Latin-themed bar, nightclub, and restaurant in Ybor City.
(Doc. # 1 at ¶ 9). In furtherance of this venture, Carlo Bay
owns the federal and state service marks for CLUB PRANA. (Id.
at ¶¶ 10, 13). Carlo Bay also owns the fictitious name “Club
Prana,” under which it operates its business. (Id. at ¶ 15).

Carlo Bay contends that Defendants used its “Prana” name
in

relation

to

their

nightclub

and

restaurant

–

“Prana

Restaurant & Lounge” – without authorization or permission
from Carlo Bay. (Id. at ¶ 17). Carlo Bay avers that Prana
Restaurant & Lounge “utilizes the same business model as that
of Club Prana;” specifically, Prana Restaurant & Lounge is “a
Spanish-themed bar, nightclub, lounge, and restaurant located
in Sarasota, Florida, less than an hour away from Club Prana.”
(Doc. # 18 at 3). Carlo Bay submits that it sent Defendants
two letters requesting that they cease and desist their
“unauthorized use” of its “Prana” name. (Id.). Nevertheless,
Defendants continued to operate Prana Restaurant & Lounge.
(Id.).
On August 18, 2014, Carlo Bay initiated this action
against

Defendants

for

(1)

trademark

infringement,

(2)

contributory infringement, (3) false designation of origin,
(4) common law unfair competition and trademark infringement,
(5)

trademark

dilution

under

Florida

law,

(6)

trademark

infringement under Florida law, and (7) violation of the
Florida Unfair Competition Act. (See Doc. # 1). Defendants
failed to timely appear and respond in this action. As a
result, on September 15, 2014, Carlo Bay applied for Clerk’s
entry of default against Two Amigo Restaurant. (Doc. # 9).

2

Thereafter, Carlo Bay applied for Clerk’s entry of default
against Phillip Lopez and William Lopez on September 19, 2014.
(Doc. ## 11, 12). The Clerk entered default against all three
Defendants on September 22, 2014. (Doc. ## 13-15). Carlo Bay
filed the present Motion for Entry of Default Judgment on
November 20, 2014. (Doc. # 18). The Court has reviewed the
Motion and is otherwise fully advised in the premises.
I.

Legal Standard
Federal Rule of Civil Procedure 55(a) provides: “When a

party against whom a judgment for affirmative relief is sought
has failed to plead or otherwise defend, and that failure is
shown by affidavit or otherwise, the clerk must enter the
party’s

default.”

A

district

court

may

enter

a

default

judgment against a properly served defendant who fails to
defend or otherwise appear pursuant to Federal Rule of Civil
Procedure 55(b)(2). DirecTV, Inc. v. Griffin, 290 F. Supp. 2d
1340, 1343 (M.D. Fla. 2003).
The mere entry of a default by the Clerk does not, in
itself, warrant the Court entering a default judgment. See
Tyco Fire & Sec. LLC v. Alcocer, 218 F. App’x 860, 863 (11th
Cir. 2007) (citing Nishimatsu Constr. Co. v. Hous. Nat’l Bank,
515 F.2d 1200, 1206 (5th Cir. 1975)). Rather, a Court must
ensure that there is a sufficient basis in the pleadings for

3

the judgment to be entered. Id. A default judgment has the
effect of establishing as fact the plaintiff’s well-pled
allegations of fact and bars the defendant from contesting
those facts on appeal. Id.
“Once liability is established, the court turns to the
issue of relief.” Enpat, Inc. v. Budnic, 773 F. Supp. 2d 1311,
1313 (M.D. Fla. 2011). “Pursuant to Federal Rule of Civil
Procedure 54(c), ‘[a] default judgment must not differ in
kind from, or exceed in amount, what is demanded in the
pleadings,’ and a court may conduct hearings when it needs to
determine the amount of damages, establish the truth of any
allegation by evidence, or investigate any other matter.” Id.
II.

Liability
A.

Trademark Infringement under Federal and Florida
law

Trademark infringement is proscribed by 15 U.S.C. §
1114(1)(a). That provision reads, in relevant part:
(1) Any person who shall, without the consent of
the registrant –
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark
in connection with the sale, offering for sale,
distribution, or advertising of any goods or
services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or
to deceive . . . shall be liable in a civil action
by the registrant for the remedies hereinafter
provided.

4

15 U.S.C. § 1114(1)(a). Thus, to succeed

on a trademark

infringement claim, a plaintiff must prove (1) that its valid
mark was used in commerce by the defendant without consent,
and

(2)

that

the

unauthorized

use

was

likely

to

cause

confusion, to cause mistake, or to deceive. 1 See Gen. Motors
Corp. v. Phat Cat Carts, Inc., 504 F. Supp. 2d 1278, 1283
(M.D. Fla. 2006); Dieter v. B&H Indus. of S.W. Fla., Inc.,
880 F.2d 322, 326 (11th Cir. 1989).
i.

Trademark Validity and Unauthorized Use

Carlo Bay provides that it is the registered owner of
the CLUB PRANA mark. (Doc. # 1 at 4, 7-8). Furthermore, Carlo
Bay has produced a certificate of registration issued by the
United States Patent and Trademark Office (Id. at 16), which
serves

as

prima

facie

evidence

of

the

validity

of

the

registered mark and of Carlo Bay’s ownership and exclusive
right to use this mark in commerce. See 15 U.S.C. § 1057(b).
Carlo Bay has also submitted a certificate of registration
from the Florida Department of State for the CLUB PRANA mark.
(Doc. # 1 at 17). In addition, Carlo Bay never consented to

1

“[T]he analysis of the Florida statutory and common law
claims of trademark infringement and unfair competition is
the same as under the trademark infringement claim.” Gift of
Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 802 (11th
Cir. 2003) (internal citation omitted).

5

Defendants’

use

of

the

mark;

in

fact,

Carlo

Bay

sent

Defendants two letters requesting that they cease and desist
their “unauthorized use” of its “Prana” name. (Id. at 28-39).
ii.

Likelihood of Confusion

“Proof of ‘likelihood of confusion’ is the sine qua non
in actions for 15 U.S.C. § 1114 trademark infringement . . .
.” Fila U.S.A., Inc. v. Kim, 884 F. Supp. 491, 494 (S.D. Fla.
1995). “Determination of likelihood of confusion requires
analysis of the following seven factors: (1) type of mark,
(2) similarity of mark, (3) similarity of the products [or
services] the marks represent, (4) similarity of the parties’
retail outlets and customers, (5) similarity of advertising
media used, (6) defendant’s intent and (7) actual confusion.”
Dieter, 880 F.2d at 326.
“Although

likelihood

of

confusion

generally

is

a

question of fact, it may be decided as a matter of law.”
Alliance Metals, Inc. of Atlanta v. Hinely Indus., Inc., 222
F.3d 895, 907 (11th Cir. 2000). In this case, Carlo Bay has
sufficiently

alleged

that

Defendants’

Prana

Restaurant

&

Lounge is likely to cause consumer confusion. (See Doc. # 1
at 13). In particular, with respect to the third factor, Carlo
Bay

alleges

restaurant,

that
bar,

Defendants

lounge,

and

6

operate
club,

that

a

“Latin-themed
uses

the

name

‘Prana.’” (Doc. # 18 at 6). Carlo Bay submits that Defendants
have intentionally used the “Prana” name “to deceive or
confuse the public at large in [an] attempt to use Plaintiff’s
well established name and reputation.” (Doc # 1 at 9). Thus,
there is a strong likelihood of confusion in the present case
because consumers may associate Plaintiff’s Club Prana with
the Prana Club and Restaurant operated by Defendants. See
Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1182
(11th Cir. 1994).
In

regard

contends
clientele,

that

to

the

both

which

fourth

factor,

“establishments

could

lead

Carlo

cater

consumers

to

Bay
to

further

the

same

believe

that

Defendants’ establishment is related or affiliated to Carlo
Bay’s business.” (Doc. # 18 at 6). Specifically, Carlo Bay
submits:
The use of said name, by Defendants, [has] caused
massive
confusion,
mistakes
and
deception.
Plaintiff’s CLUB PRANA is a popular night club and
restaurant in Tampa, FL that has been operating
business for over 13 years. Defendants have and are
marketing via radio stations, festivals, and
facebook in Tampa and targeting patrons in the same
marketing area as Plaintiff’s CLUB PRANA. Patrons
are highly confused and under the impression that
Defendant’s business is another location of
Plaintiff’s CLUB PRANA.
(Doc. # 1 at 13). This contention is supported by the fact
that Carlo Bay’s Club Prana is located in Tampa, Florida,

7

while Defendants’ Prana Restaurant & Lounge is located less
than

an

hour

away

in

Sarasota,

Florida.

Therefore,

the

likelihood of confusion is apparent. See Babbit Elec., Inc.,
38 F.3d at 1179 (“[A] likelihood of confusion can be found as
a matter of law if the defendant intended to derive benefit
from the plaintiff’s trademark.”). Accordingly, Carlo Bay has
met its burden as to its claims for trademark infringement
under Federal and Florida law.
B.
In

Contributory Infringement
order

to

prevail

on

a

claim

for

contributory

infringement, there must be a “contribution to a direct
trademark infringement or . . . a ‘knowing participation’ in
a

direct

trademark

infringement.”

Optium

Tech.,

Inc.

v.

Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1246 (11th
Cir. 2007). In the present matter, Carlo Bay provides that
Defendants Philip and William Lopez had notice of their
infringing activities by way of the multiple cease and desist
letters sent by Plaintiff. (Doc. # 1 at 6-7). It further
alleges that, “as President and Vice President of Two Amigo,
the Lopez’s would have chosen to use the ‘Prana’ name thereby
contributing to direct trademark infringement.” (Doc. # 18 at
5; see Doc. # 1 at 9-10). Finally, Carlo Bay avers that Philip
and William Lopez “acted in blatant disregard with knowledge

8

of their infringing activities.” (Id.). Upon consideration,
the Court finds that Carlo Bay has sufficiently alleged its
claim for contributory infringement.
C.

False Designation of Origin

“[A] false designation of origin claim . . . proscribes
the behavior of ‘passing off’ or ‘palming off,’ which occurs
when a producer misrepresents his own goods or services as
someone else’s.” Custom Mfg. & Eng’r., Inc. v. Midway Servs.,
Inc., 508 F.3d 641, 647 (11th Cir. 2007) (internal quotation
omitted). “To establish a prima facie case under § 1125(a),
a plaintiff must show (1) that the plaintiff had enforceable
trademark rights in the mark or name, and (2) that the
defendant made unauthorized use of it such that consumers
were likely to confuse the two.” Id. As discussed above, the
Court finds that Carlo Bay has sufficiently alleged both that
it had enforceable trademark rights in the CLUB PRANA mark
and that Defendants’ unauthorized use is likely to lead to
confusion. (See Doc. # 1 at 4-5, 13). Therefore, Carlo Bay
has sufficiently pled a claim for false designation of origin.
D.
A
Florida

Trademark Dilution under Florida Law
plaintiff
law

establishes

where

a

a

claim

designation

for

dilution

resembles

the

under
highly

distinctive mark of another in a manner likely to cause a

9

reduction in the distinctiveness of the other's mark or
“tarnishes” the images associated with the other's mark.
Great S. Bank v. First S. Bank, 625 So. 2d 463, 470 (Fla.
1993); see Fla. Stat. § 495.151. In making this determination,
the court will look to the distinctiveness of the two services
or

products,

the

duration

and

extent

of

its

use

and

advertising, and the degree of recognition by prospective
purchasers. Id.
In its Complaint, Carlo Bay contends that “Defendants
are using a name that resembles Plaintiff’s CLUB PRANA and
[are] advertising restaurant and club services which [are]
the same registered services of Plaintiff’s CLUB PRANA.”
(Doc. # 1 at 12). Carlo Bay further avers that Defendants’
use of “Prana Restaurant & Lounge” is a “reproduction, copy
and imitation” of Carlo Bay’s mark. (Id.). As discussed above,
Carlo Bay submits that “Plaintiff’s CLUB PRANA is a popular
night club and restaurant in Tampa, FL that has been operating
business for over 13 years. Defendants have and are marketing
via radio stations, festivals, and facebook in Tampa and
targeting patrons in the same marketing area as Plaintiff’s
CLUB PRANA.” (Id. at 13). Accordingly, the Court finds that
these allegations establish that Defendants violated Fla.

10

Stat. § 495.151, and thus Carlo Bay prevails on its dilution
claim.
E.

Deceptive and Unfair Trade Practices

Finally, Carlo Bay asserts a claim against Defendants
under Florida’s Deceptive and Unfair Trade Practices Act. See
Fla. Stat. § 501.201.
FDUTPA

to

protect

The Florida Legislature enacted the
against

any

“[u]nfair

methods

of

competition, unconscionable acts or practices, and unfair or
deceptive acts or practices in the conduct of any trade or
commerce.” Fla. Stat. § 501.204(1); see also Bavaro Palace,
S.A. v. Vacation Tours, Inc., 203 F. App’x 252, 256 (11th Cir.
2006). To state a claim under FDUTPA, a plaintiff must allege:
(1) a deceptive act or unfair practice; (2) causation; and
(3) actual damages. Rollins, Inc. v. Butland, 951 So. 2d 860,
869 (Fla. 2d DCA 2006).
In its Complaint, Carlo Bay states that Defendants’
actions “constitute unfair methods of competition and unfair
or deceptive practices” in violation of the Act. (Doc. # 1 at
13). Carlo Bay submits that, in turn, “Defendants’ wrongful
activities have caused . . . irreparable injury and other
damage to Plaintiff’s business, reputation and good will in
its CLUB PRANA mark.” (Id.). These allegations coupled with

11

those previously outlined establish that Defendants violated
Fla. Stat. § 501.204.
III. Permanent Injunction
“Under traditional equitable principles, a plaintiff
seeking a permanent injunction must demonstrate (1) it has
suffered an irreparable injury; (2) remedies available at
law, such as monetary damages, are inadequate to compensate
for that injury; (3) considering the balance of hardships
between the plaintiff and defendant, a remedy in equity is
warranted; and (4) the public interest would not be disserved
by a permanent injunction.” Angel Flight of Ga., Inc. v. Angel
Flight Am., Inc., 522 F.3d 1200, 1208 (11th Cir. 2008).
“[I]n

ordinary

trademark

infringement

actions[,]

complete injunctions against the infringing party are the
order of the day. The reason is simple: the public deserves
not to be led astray by the use of inevitably confusing marks.
. . .” Id. at 1209. Furthermore, the Eleventh Circuit has
noted

that

“[i]t

is

generally

recognized

in

trademark

infringement cases that (1) there is no[ ] adequate remedy at
law to redress infringement and (2) infringement by its nature
causes irreparable harm.” Tally-Ho, Inc. v. Coast Cmty. Coll.
Dist., 889 F.2d 1018, 1029 (11th Cir. 1989) (quoting Processed

12

Plastic Co. v. Warner Commc’ns, 675 F.2d 852, 858 (7th Cir.
1982)).
Therefore,

Defendants

and

their

agents,

officers,

servants, employees, successors and assigns and all others
acting in concert or in privity with Defendants are hereby
enjoined from:
(1) Using, imitating and/or copying Plaintiff’s CLUB PRANA
mark and from imprinting, producing, marketing, selling,
transporting,

distributing,

moving

and/or

otherwise

circulating any and all services or products which bear
Plaintiff’s CLUB PRANA mark, or any colorable simulation
or imitation thereof; and
(2) Using

Plaintiff’s

CLUB

PRANA

mark

or

any

colorable

simulation or imitation thereof, in connection with any
promotion, advertisement, display, sale or circulation
of any services or products, which in any way might,
could or does falsely relate or associate Defendants
with Plaintiff.
IV.

Damages
“Although

a

defaulted

defendant

admits

well-pleaded

allegations of liability, allegations relating to the amount
of damages are not admitted by virtue of default.

Rather,

the Court determines the amount and character of damages to

13

be awarded.”

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).

“If a

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.”
omitted).

Id. (internal citations

The Court finds a hearing unnecessary to determine

the appropriate amount of damages against Defendants because
(1) the Court has sufficient record evidence to properly
determine damages without a hearing and (2) Carlo Bay’s
requested damages are statutory.
The Lanham Act allows a plaintiff to elect to receive
statutory

damages

for

a

defendant’s

infringement

of

a

plaintiff’s trademarks. See 15 U.S.C. § 1117(c). Generally,
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

14

may be increased to not more than $2,000,000 per trademark
infringed

per

type

of

goods

sold,

offered

for

sale,

or

distributed, if a defendant acts willfully. Id. (citing 15
U.S.C. § 1117(c)(2)).
In addition to the presumption raised by Defendants’
default, 2

Carlo

demonstrating

Bay

that

has

offered

Defendants’

sufficient

infringement

was

evidence
willful.

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

establishment

and

were

anything

online

marketing

but
of

willful.”

Defendants’

The
Prana

Restaurant & Lounge – resembling Carlo Bay’s Club Prana in
its theme and services – demonstrate the Defendants’ intent
“to trade off the reputation and good will that the plaintiffs
. . . have established.”
Carlo
Defendants,

Bay

seeks

noting

that

Id.
an

award

of

“Defendants

$2,000,000
have

against

willfully,

and

without any regard for the rights of Carlo Bay, continued to
infringe on the Registered Mark of Carlo Bay despite the

2

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.”).

15

issuance of multiple cease and desist letters.” (Doc. # 18 at
13). As Carlo Bay correctly contends within its Motion,
“[d]istrict courts have wide discretion in awarding statutory
damages.” PetMed Express, 336 F. Supp. 2d at 1219. “The
statutory damage provision, § 1117(c), was added in 1995
because

‘counterfeit

records

are

frequently

nonexistent,

inadequate, or deceptively kept . . . making proving actual
damages

in

these

impossible.’”

cases

extremely

difficult

if

not

Id. at 1219-20 (quoting Tiffany Inc. v. Luban,

282 F. Supp. 2d 123, 124 (S.D.N.Y. 2003)).
Regarding

the

amount

of

damages

for

each

trademark

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).

However, “[m]any

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 and the profits reaped; (2) the
revenues

lost

by

the

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

16

of the infringing material produced; and (7) the potential
for discouraging the defendant.” Id. (internal quotations and
citations omitted); see also Cable/Home Commc’n Corp. v.
Network Prods., Inc., 902 F.2d 829, 852 (11th Cir. 1990) (“In
its broad discretion for determining statutory damages, the
district court should consider both the willfulness of the
defendant’s conduct and the deterrent value of the sanction
imposed.”).
In

determining

an

appropriate

award

of

statutory

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
incidental

costs

to

counterfeit trade.”

doing

business

in

the

profitable

Gucci America, Inc. v. Tyrrell-Miller,

678 F. Supp. 2d 117, 122-23 (S.D.N.Y. 2008); see also RollsRoyce PLC, 688 F. Supp. 2d at 157 (“[W]hile it may exceed
actual

damages,

an

award

of

statutory

damages

constitute a windfall for prevailing plaintiffs.

does

not

It does,

however, serve a punitive, deterrent function.”) (internal
citations omitted).
The Court finds Carlo Bay’s request for $2,000,000 in
statutory

damages

vastly

inappropriate

in

this

case.

Although the Court believes that an award at the minimum level

17

would

be

insufficient

here,

some

of

the

factors

to

be

considered militate against an award at the maximum end of
the spectrum. For instance, with regard to the second factor,
“the revenues lost by plaintiff,” it is unlikely that the
Defendants’ use of Carlo Bay’s trademark caused Carlo Bay to
suffer lost revenue anywhere near that amount. Additionally,
with regard to the first factor, the Court is unconvinced
that

the

“profits

reaped”

by

Defendants

total

a

number

anywhere comparable to the $2,000,000 requested award.

In

fact, Carlo Bay has provided no documentation of profits
reaped by Defendants or its own lost revenue. Finally, with
regard to the third factor, Carlo Bay has produced no evidence
regarding the value of its mark.
On the other hand, the Court is mindful that Defendants
have chosen to default rather than to cooperate in providing
particular records from which to assess the value of the
infringing items produced.
the

Court

finds

indeed willful.

that

Additionally, as explained above,

Defendants’

infringing

conduct

was

These considerations 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 $30,000 per trademark infringed per type of good

18

offered for sale adequately compensates Carlo Bay in light of
the relevant factors considered above.

The Court finds that

such an award also accomplishes the objectives underlying the
following relevant factors: “the deterrent effect on others
besides the defendants” and “the potential for discouraging
the defendant.”

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,
1204-05

(11th

Cir.

2009)).

The

Court

is

satisfied

that

statutory damages in the amount of $30,000 per trademark per
type of good offered for sale, coupled with the injunctive
relief

previously

ordered,

will

serve

as

a

sufficient

deterrent against any future wrongful conduct by Defendants.
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

19

goods); Rolex Watch USA, Inc. v. Lizaso-Rodriguez, No. 1:11cv-23986, 2012 WL 1189768, at *4 (S.D. Fla. Apr. 9, 2012)
(awarding

a

total

trademark

for

each

of
of

$350,000
seven

representing

trademarks

$50,000

infringed

per

where

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
(S.D.N.Y.

2009)

(awarding

$100,000

for

each

of

four

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
trademark infringement); Gucci America, 678 F. Supp. 2d at
122

(finding

an

award

of

“$3

million,

or

$200,000

per

infringed mark . . . appropriate to accomplish the dual goals
of compensation and deterrence”); Bentley Motors Ltd. Corp.
v. McEntegart, et al., No. 8:12-cv-1582-T-33TBM, 2012 WL
4458397, *6 (M.D. Fla. Sept. 26, 2012) (awarding $250,000 for
each of two trademarks infringed).
Thus, based on the relevant factors discussed above and
the circumstances of this case, the Court finds that statutory
damages in the amount of $30,000 per trademark infringed per

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type of good offered for sale, for a total amount of $30,000,
is an appropriate, just, and reasonable award.
V.

Attorney Fees
The Court declines to determine an appropriate amount of

attorney fees at this juncture.

If Carlo Bay intends to file

a motion for attorney fees in this matter, the Court directs
Carlo Bay to do so on or before December 22, 2014.

Any such

motion must be accompanied by a detailed fee ledger itemizing
the hours worked in this case.
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
(1)

Plaintiff Carlo Bay Enterprise, Inc.’s Motion for Entry
of Default Judgment Against Defendants Phillip Lopez,
William Lopez, and Two Amigo Restaurant, Inc. (Doc. #
18) is GRANTED to the extent set forth herein.

(2)

The Clerk is directed to enter Judgment in favor of
Plaintiff and against Defendants Phillip Lopez, William
Lopez, and Two Amigo Restaurant, Inc., in the amount of
$30,000.

(3)

If Plaintiff intends to file a motion for attorney fees
in this matter, Plaintiff is directed to do so on or
before

December

22,

2014.

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Any

such

motion

must

be

accompanied by a detailed fee ledger itemizing the hours
worked in this case.
DONE and ORDERED in Chambers in Tampa, Florida, this 8th
day of December, 2014.

Copies: All Counsel and Parties of Record

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