Maxis Creations Inc v. The Individuals Partnerships and Unicorporated Associations Identified On Schedule A

Filing 78

ORDER granting re 77 Motion for Courts Entry of Default pursuant to Federal Debt Collections Procedures Act (FDCPA) Title 28, U.S.C., Section 3205(6) as to 18th Life Store, 404_Slsntfound Store, 7777 Convenient Life Store, A-Home Store, A. L. Price, AOJIESHANGDIAN, AliExpress-standard logistics Please choose- Store, Alilife Store, All-Me Store, Ancient Oriental Store, BAWILO TOY Store, Banggood, BeiHengXinQingDianZi, Casual Kitchen Life Drop Shipping Store, Chcoshopy, Cincein Store, C ity spray Store, Clementine Store, Comfort Zone Store, Cow06, DHouse Decor Store, Daily life Dropshipping Store, Dehua Beauty Rich Arts & Crafts Co., Ltd., DioorHome Store, DongFangHongOneHaoDian, Dropship Kitchen Dining & Bar Store, Enioy Warm Ho ur Store, FengShopCraffs, Fujian Dehua Fengjia Ceramics Ltd., Fujian Dehua Hailunbel Ceramic Co., Ltd., Fujian Dehua Haofa Ceramics Co., Ltd., Fujian Dehua Houmeili Ceramic Co., Ltd., Fujian Quanzhou Mahu Trading Co., Ltd, Fun Fervent Store, Fun shop ping Store, HHHappy Store, HOMEGD Store, HaoMeiShi, HaoYDP, Happiness shop Store, Hu Benjun Decor Store, Hu Benjun Store, Hunan Harvest Houseware Co., Ltd., ISHOWTIENDA NO.2 Store, Idylist Store, JIAOTINGTING, Jeniffer' s Happy Store, JiaJun Sto re, Joudoo Official Store, July Department Store, July Loving Store, Kitchen Factory Store, Kitchen Tools&Decoration Store, LBSST, LOKDBM, LULLABY 7 Store, Lair nine Store, Lans Factory Dropshipping Store, Lans Tool Dropshipping Store, LiLilab, Life XuXu Store, Lifecool Store, Light Your Life Co.,LTD Store, LilyCC0991 Store, Linhai Jumi Imp.& Exp. Co., Ltd., Little Copernicus Store, LiuHDP, Luck 100 Store, Luck_ Store, MASHAD-Fast Delivery (7-15 days), MCJ-CERAMICS Store, MUQGEW Pets Store, Maxi s Creations Inc, Miaya Store, Mila's Store, Mo Shang Store, Modernity Couple Store, Mufng Store, Nuan Nuan Drop shipping Store, Pizzastar Store, Pleasure Swimsuit Store, QIANZICAI, Qingfang Store, Quanzhou Dehua Pinsheng Trading Co., Ltd., Quanz hou Licheng Xiangtai Gifts Co., Ltd., RUIDA Drinkware Store, Rina Store, RuGuangmei, RunDeCaiLiao, RuoHongShangHang, SHSDH-CXXCB, Saaroth Store, Shanga Department Store Store, Shanxi Yuyao International Trade Co., Ltd., Sheldon Life Store, Shenzhen Y Y adulttoys Store, Shop Insulation tea set Store, Shop4438009 Store, Shop4836178 Store, Shop5601144 Store, Shop910322048 Store, Shop910325121 Store, Shop910673020 Store, Shop910959030 Store, Shop910982043 Store, Shop911048194 Store, Shop911054117 Sto re, Shop911058034 Store, Shop911135035 Store, Shop911200186 Store, Shop911333042 Store, Shop911391124 Store, Shop911394012 Store, Shop911420148 Store, Shop911421435 Store, Shop911530040 Store, Shop911571101 Store, Shop911575487 Store, Shop911599551 S tore, Shop911771133 Store, Star Fire Boutique, Stom49, Sunhome Store, TC Makeup Organizer Store, TengFengWuJinJingXiaoBu, The Individuals Partnerships And Unincorporated Associations Identified on Schedule A, TingTing Y, Transer Zootropolis Store, V igoreal Store, WODIYI Store, WangKuiXianShunYiDaRiYongBaiHuoShangDian, Warm Small House Store, Wchdhsii, Welcome Drop Shipping Store, Welcome Homeee Store, Whitewasher Store, Wlixi-02 Store, XYXP Store, Xiamen Yoyo Ceramic Trading Co., Ltd., Xue10, Y OMI Z Store, YSUGJ Store, YUANJU Boutique Department Store, Yiwu Guangcui Souvenirs Co., Ltd, Yiwu Solhui Import And Export Co., Ltd., YuanSu, ZMHEGW Shopping Store, ZiBoJiaXuan, Zuhause Store, aimaibumai- Store, cheerful998, chenrui shop Store, cuso n_17 Store, daily msk Store, dhgatesxons, dhhome001, eMerit Drop shipping Store, foreverxiaoxin Store, guangzhongb-3, guojdon_0, huayan's accessories store, hyuli828, hyuli8_48, ikeloy zone Store, jinyudan888, lcpshop, livess Store, lvhuanyingji ngyingbu, ningxiaozongheshangmaocheng, porsche store, qianchengqiyue, shop781650 Store, skajdslkafsdjkj, wangpeixiang0450, wuxingrongbm, xcbuguanshangmao, xianhu_2, xuxiaofei88666 Store, yangcc, zhanglinsheng shop, zhuxiaoxiang. Signed by Judge Beth Bloom on 1/11/2022. See attached document for full details. (drz)

Case 1:21-cv-22920-BB Document 78 Entered on FLSD Docket 01/11/2022 Page 1 of 19

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 21-cv-22920-BLOOM/Otazo-Reyes
MAX’IS CREATIONS, INC.,
Plaintiff,
v.
THE INDIVIDUALS, PARTNERSHIPS,
AND UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A,”
Defendants.
_______________________________________/
ORDER ON MOTION FOR ENTRY OF FINAL JUDGMENT BY DEFAULT
THIS CAUSE is before the Court upon Plaintiff Max’is Creations, Inc.’s (“MCINC” or
“Plaintiff”) Motion for Entry of Final Judgment by Default, ECF No. [77] (“Motion”), filed on
January 10, 2022. A Clerk’s Default was entered against Defendants listed in Schedule “A” to the
Complaint as 1-13, 15, 19-51, 54-55, 62, 64-70, 72, 75-77, 79-99, 101-105, 108, 110-111, 113115, 118-121, 123-127, 130-132, 135, 137-144, 146, 148-158, 160-162, 164-165, 167-171, 174176, 181-183, 187, 190-191, 197, 205, and 209-211 (collectively, “Defendants”), and other
defendants, on January 3, 2022. ECF No. [69].1 Defendants failed to appear, answer, or otherwise
plead to the Complaint, ECF No. [1], despite having been served. The Court has carefully
considered the Motion, the record in this case, the applicable law, and is otherwise fully advised.
For the following reasons, Plaintiff’s Motion is granted.

This Order does not apply to entities identified in Schedule “A” who have been dismissed from the case.
Any references to “Defendants” in this Order are to Defendants listed in Schedule “A” to the Complaint as
1-13, 15, 19-51, 54-55, 62, 64-70, 72, 75-77, 79-99, 101-105, 108, 110-111, 113-115, 118-121, 123-127,
130-132, 135, 137-144, 146, 148-158, 160-162, 164-165, 167-171, 174-176, 181-183, 187, 190-191, 197,
205, and 209-211.
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I.

INTRODUCTION

Plaintiff sued Defendants for trademark counterfeiting and infringement under § 32 of the
Lanham Act, 15 U.S.C. § 1114; false designation of origin pursuant to § 43(a) of the Lanham Act,
15 U.S.C. § 1125(a); copyright infringement under the Copyright Act, 17 U.S.C. §§ 106(1), (3),
(4) & 501; patent infringement under the Patent Act, 35 U.S.C. § 271; common law unfair
competition; and common law trademark infringement.
The Complaint alleges that Defendants are promoting, advertising, distributing, selling,
and/or offering for sale cheap copies of plaintiff’s products in interstate commerce that are
counterfeits and infringements of plaintiff’s intellectual property rights (“Counterfeit Goods”)
within the Southern District of Florida by operating the Defendants’ Internet based e-commerce
stores operating under each of the Seller IDs identified on Schedule “A” attached to Plaintiff’s
Motion for Entry of Final Default Judgment (“Seller IDs”).
Plaintiff further asserts that Defendants’ unlawful activities have caused and will continue
to cause irreparable injury to Plaintiff because Defendants have 1) deprived Plaintiff of its right to
determine the manner in which its trademarks are presented to consumers; (2) defrauded
consumers into thinking Defendants’ illicit copies of Plaintiff’s goods are authorized by Plaintiff;
(3) deceived the public as to Plaintiff’s sponsorship of and/or association with Defendants’
counterfeit products and the websites on online storefronts through which such products are sold,
offered for sale, marketed, advertised, and distributed; (4) wrongfully traded and capitalized on
Plaintiff’s reputation and goodwill and the commercial value of the Plaintiff’s trademarks; and (5)
wrongfully damaged Plaintiff’s ability to market its branded products and copyrighted works and
products and educate consumers about its brand via the Internet in a free and fair marketplace.

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In its Motion, Plaintiff seeks the entry of default final judgment against Defendants in an
action alleging trademark counterfeiting and infringement, false designation of origin, commonlaw unfair competition, common law trademark infringement, infringement of copyright, and
infringement of patents. Plaintiff further requests that the Court (1) enjoin Defendants’ unlawful
use of Plaintiff’s trademarks, copyrighted works, and patents; (2) award Plaintiff damages; and (3)
instruct any third-party financial institutions in possession of any funds restrained or held on behalf
of Defendants to transfer these funds to the Plaintiff in partial satisfaction of the award of damages.
Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a
final judgment of default against a party who has failed to plead in response to a complaint. “A
‘defendant, by his default, admits the plaintiff’s well-pleaded allegations of fact, is concluded on
those facts by the judgment, and is barred from contesting on appeal the facts thus established.’”
Eagle Hosp. Physicians, LLC v. SRG Consulting, Inc., 561 F. 3d 1298, 1307 (11th Cir. 2009)
(quoting Nishimatsu Const. Co., Ltd. v. Houston Nat’l Bank, 515 F. 2d 1200, 1206 (5th Cir. 1975));
Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987). “Because a defendant is not held to
admit facts that are not well pleaded or to admit conclusions of law, the Court must first determine
whether there is a sufficient basis in the pleading for judgment to be entered.” Luxottica Group
S.p.A. v. Individual, P’ship or Unincorporated Ass’n, 17-CV-61471, 2017 WL 6949260, at *2
(S.D. Fla. Oct. 3, 2017); see also Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987)
(“[L]iability is well-pled in the complaint, and is therefore established by the entry of
default . . . .”).
If there are multiple defendants, the plaintiff must state in the motion for default final
judgment that there are no allegations of joint and several liability, and set forth the basis why
there is no possibility of inconsistent liability. Generally, if one defendant who is alleged to be

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jointly and severally liable with other defendants defaults, judgment should not be entered against
that defendant until the matter is adjudicated against the remaining defendants. See 10A Charles
Alan Wright and Arthur R. Miller, Federal Practice and Procedure § 2690 (3d ed. 1998) (citing
Frow v. De La Vega, 82 U.S. 552, 554 (1872) (“[A] final decree on the merits against the defaulting
defendant alone, pending the continuance of the cause, would be incongruous and illegal.”)).
“Even when defendants are similarly situated, but not jointly liable, judgment should not be
entered against a defaulting defendant if the other defendant prevails on the merits.” Gulf Coast
Fans, Inc. v. Midwest Elecs. Imp., Inc., 740 F.2d 1499, 1512 (11th Cir. 1984).
Here, Plaintiff has stated in its Motion that there are no allegations of joint and several
liability with respect to damages. The Defendants remaining in the case have not appeared and
have defaulted. Therefore, there is no possibility of inconsistent liability between the Defendants
and an adjudication may be entered. The Court thus finds there is a sufficient basis in the pleading
for the default judgment to be entered with respect to the defaulting Defendants.
II.

FACTUAL BACKGROUND2

Plaintiff is the registered owner and exclusive licensee of all rights in and to the federally
registered trademarks shown below (collectively, “MCINC Marks”):
Mark

Registration
Number

Int’l
Class

First Used

Registration
Date

Exhibit

MAX’IS CREATIONS

5,020,853

21

03.19.2013

08.16.2016

1A

THE WORLD WOULD BE
BETTER IF WE COULD
PLAY WITH OUR FOOD!

4,992,727

21

03.19.2013

07.05.2016

1B

The factual background is taken from Plaintiff’s Complaint, ECF No. [1], Plaintiff’s Motion for Entry of
Final Default Judgment, ECF No. [77], and supporting evidentiary submissions.
2

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Registration
Number

Int’l
Class

First Used

Registration
Date

Exhibit

5,011,855

21

03.19.2013

08.02.2016

1C

THE SOCCER MUG WITH
A GOAL!

5,111,526

21

10.15.2015

12.27.2016

1D

THE HOCKEY MUG WITH
A NET!

5,111,527

21

10.15.2015

12.27.2016

1E

THE MUG WITH A
GOALPOST!

5,111,525

21

04.15.2015

12.27.2016

1F

THE MUG WITH A GLOVE!

5,111,524

21

11.13.2014

12.27.2016

1G

THE MUG WITH A HOOP!

4,948,336

21

03.19.2013

04.26.2016

1H

Mark

Plaintiff is the owner of copyrights in photographs that Plaintiff uses to market and
advertise its MCINC products. Plaintiff registered its photographs with the Register of Copyrights
on May 25, 2021 and was assigned the registration numbers VA 2-252-882 and VA 2-252-876
(“Copyrighted Works”).
Plaintiff is the owner and exclusive licensee of all substantial rights in the U.S. Patents
listed below (collectively, “MCINC Patents”):
Patent No:

Title:

Exhibit

9,375,106

BOWL/MUG WITH A FIGURINE FOR PLAYING WITH
FOOD3

3A

D763,041

SOCCER MUG WITH A GOAL

3B

3

Plaintiff is not seeking a default judgment based on infringement of US Patent No. 9,375,106, a utility
patent. Plaintiff only seeks a default judgment based on infringement of the MCINC design patents.
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D760,546

HOCKEY MUG WITH A NET

3C

D760,547

FOOTBALL MUG WITH A GOAL POST

3D

D755,015

MUG WITH BASEBALL GLOVE

3E

D723,336

MUG WITH BASKETBALL HOOP

3F

The MCINC Patents have not expired, are valid, and all maintenance fees have been paid
and are current. MCINC marks each Max’is Creations product with the corresponding Patent
number.
Defendants, through the various Internet based e-commerce stores operating under each of
the Seller IDs identified on Schedule “A” hereto (“Seller IDs”) have advertised, promoted, offered
for distribution, and/or distributed products using counterfeits, infringements, reproductions,
and/or colorable imitations of the MCINC Marks, Copyrighted Works, and MCINC Design
Patents. Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least,
one or more of the MCINC Marks, Copyrighted Works, and MCINC Design Patents. Defendants
are not now, nor have they ever been, authorized or licensed to use, reproduce, or make
counterfeits, reproductions, or colorable imitations of the MCINC Marks or Patents, and/or
reproduce or distribute the Copyrighted Works.
As part of its ongoing investigation regarding the sale of counterfeit and infringing
products, MCINC has an anticounterfeiting program that regularly investigates suspicious
websites and online marketplace listings identified in proactive Internet sweeps and reported by
consumers. These investigations have established that defendants are using the various webstores
on platforms such as Amazon, Wish, eBay, AliExpress, Alibaba, DHGate, Joom, NewEgg,
Shopify, and others to sell Counterfeit Products from foreign countries such as China to consumers
in the United States. MCINC accessed defendants’ Internet based e-commerce stores operating
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under their respective Seller ID names through Amazon.com, Wish.com, eBay.com,
AliExpress.com, Alibaba.com, DHGate.com, Joom.com, NewEgg.com, Shopify.com.
Upon accessing each of the e-commerce stores, MCINC viewed counterfeit products using
the MCINC Marks, MCINC’s registered copyrights, and the MCINC Design Patents, added
products to the online shopping cart, proceeded to a point of checkout, and otherwise actively
exchanged data with each e-commerce store. MCINC captured detailed web pages for each
defendant store. A representative for MCINC personally analyzed the MCINC items wherein
orders were initiated via each of the Seller IDs by reviewing the e-commerce stores operating
under each of the Seller IDs, or the detailed web page captures and images of the items bearing
the MCINC Marks and Copyrighted Works and Design Patents, and concluded the products were
non-genuine.4
III.

ANALYSIS

A.

Claims

1.

Trademark Counterfeiting and Infringement Pursuant to § 32 of the Lanham
Act (15 U.S.C. § 1114) (Count I)

Section 32 of the Lanham Act, 15 U.S.C. § 1114, provides liability for trademark
infringement if, without the consent of the registrant, a defendant uses “in commerce any
reproduction, counterfeit, copy, or colorable imitation of a registered mark: which is likely to cause
confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114. In order to prevail on its
trademark infringement claim under Section 32 of the Lanham Act, Plaintiff must demonstrate that
(1) it had prior rights to the mark at issue; and (2) Defendants adopted a mark or name that was
the same, or confusingly similar to Plaintiff’s trademark, such that consumers were likely to
Evidence of each Defendant’s infringement was attached as Exhibit 1 to the Declaration of Jennifer Ash.
See ECF No. [6-1].
4

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confuse the two. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir.
2001) (citing Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360
(11th Cir. 1997)).
2.

False Designation of Origin Pursuant to § 43(A) of the Lanham Act (15 U.S.C.
§ 1125(a)) (Count II)

To prevail on a claim for false designation of origin under Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a), Plaintiff must prove that Defendants used in commerce, in connection
with any goods or services, any word, term, name, symbol or device, or any combination thereof,
or any false designation of origin that is likely to deceive as to the affiliation, connection, or
association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval, of
Defendants’ services by Plaintiff. See 15 U.S.C. § 1125(a)(1). The test for liability for false
designation of origin under 15 U.S.C. § 1125(a) is the same as for a trademark counterfeiting and
infringement claim – i.e., whether the public is likely to be deceived or confused by the similarity
of the marks at issue. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992).
3.

Common Law Unfair Competition and Trademark Infringement (Counts III
and IV)

Whether a defendant’s use of a Plaintiff’s trademarks created a likelihood of confusion
between the Plaintiff’s and the defendant’s services or goods is also the determining factor in the
analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester,
1986 WL 15668, at *3 (S.D. Fla. Dec. 9, 1987) (“The appropriate test for determining whether
there is a likelihood of confusion, and thus trademark infringement, false designation of origin,
and unfair competition under the common law of Florida, is set forth in John H. Harland, Inc. v.
Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983.)”); see also Boston Prof’l Hockey Ass’n,

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Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) (“As a general rule
. . . the same facts which would support an action for trademark infringement would also support
an action for unfair competition.”).
The analysis of liability for Florida common law trademark infringement is the same as the
analysis of liability for trademark infringement under § 32(a) of the Lanham Act. See PetMed
Express, Inc. v. MedPets.com, Inc., 336 F. Supp. 2d 1213, 1217-18 (S.D. Fla. 2004).
4.

Infringement of Copyright (Count V)

To prevail on a claim of direct infringement of copyright pursuant to the Copyright Act, 17
U.S.C. §§ 106(1), (3) and (4), Plaintiff must “satisfy two requirements to present a prima facie
case of direct copyright infringement: (1) they must show ownership of the allegedly infringed
material, and (2) they must demonstrate that the alleged infringers violated at least one exclusive
right granted to copyright holders under 17 U.S.C. § 106.” A&M Records, Inc. v. Napster, Inc.,
239 F.3d 1004, 1013 (9th Cir. 2001); see also Disney Enters. v. Hotfile Corp., Case No. 11-20427CIV-Williams, 2013 U.S. Dist. LEXIS 172339, at *94 (S.D. Fla. 2013).
5.

Patent Infringement (Count VI)

The Patent Act provides:
Whoever during the term of a patent for a design, without license of the owner, (1)
applies the patented design, or any colorable imitation thereof, to any article of
manufacture for the purpose of sale, or (2) sells or exposes for sale any article of
manufacture to which such design or colorable imitation has been applied shall be
liable to the owner to the extent of his total profit, but not less than $250,
recoverable in any United States district court having jurisdiction of the parties.
35 U.S.C. § 289. Design patent infringement occurs if, in the eye of an ordinary purchaser, giving
such attention as a purchaser usually gives, two designs are so similar that the purchaser, familiar
with the prior art, would be deceived by the similarity between the claimed design and the accused
designs, inducing him to purchase one supposing it to be the other. Egyptian Goddess, Inc. v.

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Swisa, Inc., 543 F.3d 665, 684 (Fed. Cir. 2008) (en banc) (announcing the so-called “three-way
test” comparing the patent, the accused device, and the closest prior art).
If to the ordinary observer the resemblance between the two designs is such as to deceive
the observer, inducing him to purchase one supposing it to be the other, then the first one patented
is infringed by the other. Pride Fam. Brands, Inc. v. Carl’s Patio, Inc., 992 F. Supp. 2d 1214, 1224
(S.D. Fla. 2014) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)). A proper comparison
requires a side-by-side view of the design patent drawings and the accused products, and “minor
differences between a patented design and an accused article’s design cannot, and shall not, prevent
a finding of infringement.” Volkswagen Group of Am., Inc. v. Varona, 19-24838-CIV, 2021 WL
1997573, at *12 (S.D. Fla. May 18, 2021).
B.

Liability

The well-pled factual allegations of Plaintiff’s Complaint properly allege the elements for
each of the claims described above. See ECF No. [1]. Moreover, the factual allegations in
Plaintiff’s Complaint have been substantiated by sworn declarations and other evidence and
establish Defendants’ liability under each of the claims asserted in the Complaint. Accordingly,
entry of default judgment pursuant to Federal Rule of Civil Procedure 55 is appropriate.
C.

Injunctive Relief

Pursuant to the Lanham Act, a district court is authorized to issue an injunction “according
to the principles of equity and upon such terms as the court may deem reasonable,” to prevent
violations of trademark law. See 15 U.S.C. § 1116(a). “Injunctive relief is the remedy of choice
for trademark and unfair competition cases, since there is no adequate remedy at law for the injury
caused by a defendant’s continuing infringement.” Burger King Corp. v. Agad, 911 F. Supp. 1499,
1509-10 (S.D. Fla. 1995) (citing Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180

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(9th Cir. 1988)). Moreover, even in a default judgment setting, injunctive relief is available. See
e.g., PetMed Express, Inc., 336 F. Supp. 2d at 1222-23. Defendants’ failure to respond or otherwise
appear in this action makes it difficult for Plaintiff to prevent further infringement absent an
injunction. See Jackson v. Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal. 2003) (“[D]efendant’s
lack of participation in this litigation has given the court no assurance that defendant’s infringing
activity will cease. Therefore, plaintiff is entitled to permanent injunctive relief.”).
Permanent injunctive relief is appropriate where a plaintiff demonstrates that (1) it has
suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship
favors an equitable remedy; and (4) an issuance of an injunction is in the public’s interest. eBay,
Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93 (2006). Plaintiffs have carried their burden on
each of the four factors. Accordingly, permanent injunctive relief is appropriate.
In trademark cases, “a sufficiently strong showing of likelihood of confusion . . . may by
itself constitute a showing of a substantial threat of irreparable harm.” McDonald’s Corp. v.
Robertson, 147 F.3d 1301, 1306 (11th Cir. 1998); see also Levi Strauss & Co. v. Sunrise Int’l
Trading Inc., 51 F.3d 982, 986 (11th Cir. 1995) (“There is no doubt that the continued sale of
thousands of pairs of counterfeit jeans would damage LS & Co.’s business reputation and might
decrease its legitimate sales.”). Plaintiff’s Complaint alleges that Defendants’ unlawful actions
have caused Plaintiff irreparable injury and will continue to do so if Defendants are not
permanently enjoined. Further, the Complaint alleges, the unauthorized Counterfeit Products sold,
offered for sale, marketed, advertised, and distributed by Defendants are nearly identical to
Plaintiff’s genuine MCINC products, and consumers viewing Defendants’ counterfeit products
would actually confuse them for Plaintiff’s genuine products. See id. “Defendants’ infringing
activities are likely to cause and actually are causing confusion, mistake and deception among

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members of the trade and the general consuming public as to the origin and quality of defendants’
e-commerce stores as a whole and all products sold therein by their use of the MCINC Marks.”
ECF No. [1] ¶ 127.
Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Seller
IDs because Plaintiff cannot control the quality of what appears to be its Max’is Creations products
in the marketplace. An award of monetary damages alone will not cure the injury to Plaintiff’s
reputation and goodwill that will result if Defendants’ infringing and counterfeiting and infringing
actions are allowed to continue. Moreover, Plaintiff faces hardship from loss of sales and its
inability to control its reputation in the marketplace. By contrast, Defendants face no hardship if
they are prohibited from the infringement of Plaintiff’s trademarks, copyrights, and patents, which
are illegal acts.
Finally, the public interest supports the issuance of a permanent injunction against
Defendants to prevent consumers from being misled by Defendants’ counterfeit products. See
Nike, Inc. v. Leslie, 1985 WL 5251, at *1 (M.D. Fla. June 24, 1985) (“[A]n injunction to enjoin
infringing behavior serves the public interest in protecting consumers from such behavior.”). The
Court’s broad equity powers allow it to fashion injunctive relief necessary to stop Defendants’
infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ., 402 U.S. 1, 15
(1971) (“Once a right and a violation have been shown, the scope of a district court’s equitable
powers to remedy past wrongs is broad, for . . . (t)he essence of equity jurisdiction has been the
power of the Chancellor to do equity and to mould each decree to the necessities of the particular
case.” (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical
Co., 321 U.S. 707, 724 (1944) (“Equity has power to eradicate the evils of a condemned scheme
by prohibition of the use of admittedly valid parts of an invalid whole.”).

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Defendants have created an Internet-based infringement scheme in which they are profiting
from their deliberate misappropriation of Plaintiff’s rights. Unless the listings and images are
permanently removed, and the infringing goods destroyed, defaulting Defendants will be free to
continue infringing plaintiff’s intellectual property with impunity and will continue to defraud the
public with their illegal activities. Therefore, the Court will enter a permanent injunction ordering
all listings and associated images of goods bearing counterfeits and/or infringements of plaintiff’s
MCINC Marks, copyrights, or patents be permanently removed from Defendants’ internet stores
by the applicable internet marketplace platforms, and all infringing goods in Defendants’
inventories in the possession of the applicable internet marketplace platforms destroyed.
D.

Statutory Damages for the Use of Counterfeit Marks

In a case involving the use of counterfeit marks in connection with a sale, offering for sale,
or distribution of products, 15 U.S.C. § 1117(c) provides that a plaintiff may elect an award of
statutory damages at any time before final judgment is rendered in the sum of not less than
$1,000.00 nor more than $200,000.00 per counterfeit mark per type of good or service. 15 U.S.C.
§ 1117(c)(1). In addition, if the Court finds that Defendants’ counterfeiting actions were willful, it
may impose damages above the maximum limit up to $2,000,000.00 per mark per type of good or
service. 15 U.S.C. § 1117(c)(2). Pursuant to 15 U.S.C. § 1117(c), Plaintiff has elected to recover
an award of statutory damages as to Count I of the Complaint as against Defendants indicated as
trademark infringers in Exhibit 1 to the Motion.
The Court has wide discretion to determine the amount of statutory damages. See PetMed
Express, Inc., 336 F. Supp. 2d at 1219 (citing Cable/Home Commc’n Corp. v. Network Prod., Inc.,
902 F.2d 829, 852 (11th Cir. 1990)). An award of statutory damages is appropriate despite a
Plaintiff’s inability to prove actual damages caused by a defendant’s infringement. Under Armour,

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Inc. v. 51nfljersey.com, No. 13-62809-CIV, 2014 U.S. Dist. LEXIS 56475, at *22-*23 (S.D. Fla.
Apr. 23, 2014) (citing Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 852 (E.D. Mich. 2006) (“[A]
successful plaintiff in a trademark infringement case is entitled to recover enhanced statutory
damages even where its actual damages are nominal or non-existent.”); Playboy Enter., Inc. v.
Universal Tel-A-Talk, Inc., No. CIV.A. 96-6961, 1998 WL 767440, at *8 (E.D. Pa. Nov. 3, 1998)
(awarding statutory damages where plaintiff failed to prove actual damages or profits). Congress
enacted a statutory damages remedy in trademark counterfeiting cases because evidence of a
defendant’s profits in such cases is almost impossible to ascertain. See, e.g., S. REP. NO. 104-177,
pt. V(7) (1995) (discussing purposes of Lanham Act statutory damages); see also PetMed Express,
Inc., 336 F. Supp. 2d at 1220 (statutory damages are “especially appropriate in default judgment
cases due to infringer nondisclosure”). This case is no exception.
This Court may award statutory damages “without holding an evidentiary hearing based
upon affidavits and other documentary evidence if the facts are not disputed.” Perry Ellis Int’l,
Inc. v. URI Corp., No. 06-22020-CIV, 2007 WL 3047143, at *1 (S.D. Fla. Oct. 18, 2007). An
evidentiary hearing is not necessary where there is sufficient evidence on the record to support the
request for damages. See SEC v. Smyth, 420 F.3d 1225, 1232 n.13 (11th Cir. 2005) (“Rule 55(b)(2)
speaks of evidentiary hearings in a permissive tone . . . We have held that no such hearing is
required where all essential evidence is already of record.”) (citations omitted); see also PetMed
Express, 336 F. Supp. 2d at 1223 (entering default judgment, permanent injunction, and statutory
damages in a Lanham Act case without a hearing).
Here, the allegations in the Complaint, which are taken as true, establish Defendants
indicated as trademark infringers in Exhibit 1 intentionally copied the MCINC Marks for the
purpose of deriving the benefit of Plaintiff’s good-will and reputation embodied in the mark. As

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such, the Lanham Act permits the Court to award up to $2,000,000.00 per infringing mark on each
type of service as statutory damages to ensure that Defendants do not continue their intentional
and willful counterfeiting activities.
The evidence in this case demonstrates that Defendants indicated as trademark infringers
in Exhibit 1 sold, promoted, distributed, advertised, and/or offered for sale products bearing marks
which were in fact counterfeits of the MCINC Marks. See ECF No. [1]. Based on the above
considerations, the Court awards statutory damages of $100,000.00 against each Defendants
indicated as trademark infringers in Exhibit 1 for each MCINC Mark infringed. The award should
be sufficient to deter Defendants and others from continuing to counterfeit or otherwise infringe
Plaintiff’s trademarks, compensate Plaintiff, and punish Defendants, all stated goals of 15 U.S.C.
§ 1117(c). The Court finds that this award of statutory damages falls within the permissible
statutory range under 15 U.S.C. § 1117(c) and is just.
E.

Damages for False Designation of Origin

Plaintiff’s Complaint also sets forth a cause of action for false designation of origin
pursuant to § 43(a) of the Lanham Act (Count II). See 15 U.S.C. § 1125(a). As to Count II, the
allowed scope of monetary damages is also encompassed in 15 U.S.C. § 1117(c). Accordingly,
judgment on Count II is limited to the amount awarded pursuant to Count I and entry of the
requested equitable relief.
F.

Damages for Common Law Unfair Competition and Trademark Infringement

Plaintiff’s Complaint further sets forth a cause of action under Florida’s common law of
unfair competition (Count III) and trademark infringement (Count IV). Judgment on Count III and
Count IV are also limited to the amount awarded pursuant to Count I and entry of the requested
equitable relief.

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G.

Damages for Copyright Infringement

Under 17 U.S.C. § 504, Plaintiff is entitled to recover either the actual damages suffered
as a result of the infringement plus Defendants’ additional profits, or statutory damages. Actual
damages are “often measured by the revenue that the plaintiff lost as a result of the infringement,
which includes lost sales, lost opportunities to license, or diminution in the value of the copyright.”
Lorentz v. Sunshine Health Prods., No. 09-61529-CIV-MORE, 2010 U.S. Dist. LEXIS 148752, at
*12 (S.D. Fla. Sep. 7, 2010). Here, however, Defendants, who have not appeared, control all the
necessary information for a calculation of relief under § 504(b). As a result, plaintiff cannot
calculate an amount recoverable pursuant to 17 U.S.C. § 504(b). Instead, Plaintiff seeks an award
of statutory damages for Defendants’ willful infringement of plaintiff’s copyrighted works under
17 U.S.C. § 504(c).
The allegations in the Complaint, which are taken as true, establish that Defendants listed
as copyright infringers in Exhibit 1 to the Motion intentionally infringed plaintiffs’ Copyrighted
Photographs for the purpose of advertising, marketing, and selling their Counterfeit Products.
Plaintiffs suggest the Court award the highest award per Work for willful infringement, $150,000.
This award is within the statutory range for a willful violation, and is sufficient to compensate
plaintiff, punish the Copyright Defendants, and deter Copyright Defendants and others from
continuing to infringe Plaintiffs’ copyrights.
H.

Damages for Patent Infringement

Plaintiff seeks damages pursuant to the damages provision of the Patent Act for
infringement of a design patent. Under 35 U.S.C. § 289, a plaintiff in a case involving the
unauthorized application or colorable imitation of a patented design on any article for purpose of
sale may elect to receive the infringer’s “total profit, but not less than $250.” 35 U.S.C. § 289. A

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court may also increase the damages up to three times the amount found or assessed. 35 U.S.C.
§ 284. Courts have found that willful infringement is grounds for the award of treble damages. See
Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471, 490 (S.D.N.Y. 2008).
Here, Defendants’ default and the well-pleaded facts of the Complaint, which are admitted
by Defendants’ default, establish that Defendants’ infringement of Plaintiff’s design patents was
willful and deliberate. See Black & Decker Inc. v. King Grp. Canada, No. 1:08-CV-2435-BBM,
2009 WL 10668736, at *4 (N.D. Ga. July 22, 2009). Plaintiff has elected to recover a statutory
damages award of $250 for each design patent infringement claim, and requests the Court treble
the damages to $750 for each infringement. This award is within the statutory range for a willful
violation, and is sufficient to compensate Plaintiff, punish the Defendants, and deter Defendants
and others from continuing to infringe Plaintiffs’ design patents.
I.

Attorney’s Fees and Costs

Plaintiff seeks an award of reasonable attorney’s fees pursuant to 35 U.S.C. § 284 and 15
U.S.C. §§ 1117(a). Courts routinely award attorney’s fees and costs upon a finding of willful
infringement under the Lanham Act and the Patent Act. Volkswagen, 2021 WL 1997573, at *12.
Attorney’s fees are available under § 1117(a) in exceptional cases even for those plaintiffs who
opt to receive statutory damages under section 1117(c). See Louis Vuitton Malletier S.A. v. LY
USA, Inc., 676 F.3d 83, 104–11 (2d Cir. 2012). The Copyright Act also provides for reasonable
attorney’s fees and costs to the prevailing party pursuant to 17 U.S.C. § 505.
Both the Lanham Act and the Patent Act provide that a court may award attorney’s fees
“in exceptional cases.” 15 U.S.C. § 1117(a), 35 U.S.C. § 284. Meanwhile, Section 1117(b), which
applies to the use of counterfeit marks, requires the court to award reasonable attorney’s fees. An
award of fees is appropriate under any of these statutes.

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Plaintiff has established that Defendants acted willfully in their infringement of the
MCINC Marks, the Copyrighted Works, and the MCINC Design Patents. Defendants failed to
respond or otherwise act, leading to unjustified delays and increased costs and fees. See Arista
Records, Inc. v. Beker Enterprises, Inc., 298 F. Supp. 2d 1310, 131 (S.D. Fla. 2003). An award of
attorney’s fees and costs will serve the important functions of deterring future infringements,
penalizing Defendants for their unlawful conduct, and compensating Plaintiff for their fees and
costs. Id.
Plaintiff requests the Court award one-half (1/2) of the total attorney’s fees incurred to date
in this case, for a total of $36,128.75 plus court costs of $535.00. The Court determines that the
hourly rates for plaintiff’s counsel are reasonable as established by the Declaration of Joel
Rothman. The amount and rates are also reasonable for the work performed as compared to other
similar litigation.
The allegations in the Complaint establish that Defendants are causing and contributing “to
the creation and maintenance of an illegal marketplace operating in parallel to the legitimate
marketplace for plaintiff’s genuine goods,” and that they are causing concurrent and indivisible
harm to plaintiff and the consuming public by “(i) depriving plaintiff and other third parties of
their right to fairly compete for space within search engine results and reducing the visibility of
plaintiff’s genuine goods on the World Wide Web, (ii) causing an overall degradation of the value
of the goodwill associated with the MCINC Marks, and (iii) increasing plaintiff’s overall cost to
market its goods and educate consumers via the Internet.” ECF No. [1] ¶¶ 83, 84. The Court finds
these allegations sufficient to assess plaintiff’s attorney’s fees and costs against defendants jointly
and severally. See Stanley Black & Decker, Inc. v. D&L Elite Invs., LLC, No. C 12-04516 SC (LB),
2014 WL 3738327, at *20 (N.D. Cal. June 20, 2014), report and recommendation adopted, No.

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12-CV-04516-SC, 2014 WL 3728517 (N.D. Cal. July 28, 2014) (entering attorney’s fee award
against defendants jointly and severally).
For the foregoing reasons, the Court finds that Plaintiff MCINC, as the prevailing party, is
entitled to reasonable attorney’s fees and costs in the amount of $36,663.75.
IV.

CONCLUSION

Accordingly, it is ORDERED AND ADJUDGED as follows:
1. Plaintiff’s Motion, ECF No. [77], is GRANTED with respect to Defendants numbered
in Schedule “A” to the Complaint as 1-13, 15, 19-51, 54-55, 62, 64-70, 72, 75-77, 7999, 101-105, 108, 110-111, 113-115, 118-121, 123-127, 130-132, 135, 137-144, 146,
148-158, 160-162, 164-165, 167-171, 174-176, 181-183, 187, 190-191, 197, 205, and
209-211.
2. Final Default Judgment will be entered by separate order.
3. The Clerk is directed to CLOSE this case.
DONE AND ORDERED in Chambers at Miami, Florida, on January 11, 2022.

_________________________________
BETH BLOOM
UNITED STATES DISTRICT JUDGE
Copies to:
Counsel of Record

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