Sportswear Company - S.p.A. v. airik et al
ORDER granting Plaintiff's 27 Motion for Default Judgment and Permanent Injunctive Relief. Signed by Judge J. P. Boulee on 11/17/2022. (bgt)
Case 1:22-cv-01051-JPB Document 28 Filed 11/17/22 Page 1 of 13
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF GEORGIA
SPORTSWEAR COMPANY – S.p.A,
CIVIL ACTION NO.
airik, et al.,
ORDER GRANTING PLAINTIFF’S MOTION
FOR DEFAULT JUDGMENT
This cause is before the Court on Plaintiff’s Motion for Default Judgment
and Permanent Injunctive Relief [Doc. 27] pursuant to Federal Rule of Civil
Procedure 55(b) against Defendants, the individuals, partnerships and
unincorporated associations identified on Exhibit A (“Defaulting Defendants”).
Defaulting Defendants use counterfeit and/or infringing copies of Plaintiff’s
federally registered trademarks on or in connection with the manufacture,
marketing, advertising and/or sale of unauthorized goods through various ecommerce marketplaces. The Clerk previously entered default against Defaulting
Defendants for their failure to appear, answer or otherwise defend.
Plaintiff now requests the Court: (1) enter a final default judgment against
Defaulting Defendants; (2) permanently enjoin Defaulting Defendants from
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manufacturing, marketing, advertising and/or selling non-genuine goods bearing
counterfeit and/or infringing copies of Plaintiff’s registered trademarks and from
using Plaintiff’s trademarks in advertising any non-genuine goods; (3) award
statutory damages for use of counterfeit marks; (4) issue a post-judgment asset
freeze order; and (5) authorize the release and transfer of Defaulting Defendants’
previously frozen assets, as well as any assets subsequently frozen pursuant to the
post-judgment asset freeze order, to satisfy damages awarded to Plaintiff.
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 [its] default, admits the plaintiff’s
well-pleaded allegations of fact . . . .’” Eagle Hosp. Physicians, LLC v. SRG
Consulting, Inc., 561 F.3d 1298, 1307 (11th Cir. 2009) (quoting Nishimatsu
Constr. Co. v. Hous. Nat’l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975)). Default
judgment is appropriate where the well-pleaded allegations of fact in a complaint
are sufficient to state a claim for relief. United States v. Kahn, 164 F. App’x 855,
858 (11th Cir. 2006). However, a defendant is not held to admit conclusions of
law. United States v. Ruetz, 334 F. App’x 294, 295 (11th Cir. 2009).
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Plaintiff Has Established that Defaulting Defendants Infringed its
Pursuant to Section 32(1) of the Lanham Act, any person who, without the
consent of the registrant,
use[s] 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 service on or in
connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive[,]
is liable to the registrant for the remedies set forth in the Act. 15 U.S.C. § 1114(1).
“To establish a prima facie case in an ordinary trademark infringement suit, a
claimant need only demonstrate that: (1) it enjoys enforceable rights in a mark,
and (2) the alleged infringer adopted a mark that is the same or confusingly
similar.” SunAmerica Corp. v. Sun Life Assurance Co. of Can., 77 F.3d 1325,
1334 (11th Cir. 1996). Ownership of a mark on the principal register is
prima facie evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the mark, and
of the registrant’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services specified in
15 U.S.C. § 1115(a).
Plaintiff has alleged the following in its well-pleaded Complaint:
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default judgment against Defaulting Defendants on its claims for trademark
A district court is authorized to issue a permanent injunction on terms the
court deems reasonable to prevent infringement of both copyrights and trademarks.
15 U.S.C. § 1116(a); 17 U.S.C. § 502(a). Additionally, a court may issue a
permanent injunction against a defaulting defendant. See PetMed Express, Inc. v.
MedPets.com, Inc., 336 F. Supp. 2d 1213, 1222–23 (S.D. Fla. 2004). Because
Defendants have not responded or otherwise appeared, it is 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:
(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 interest. Angel Flight of Ga., Inc. v. Angel Flight of
Am., Inc., 522 F.3d 1200, 1208 (11th Cir. 2008). Plaintiff carried its burden on
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each of these four factors. Defaulting Defendants’ continued marketing and sales
of counterfeit products would erode the value of Plaintiff’s registered trademarks
and damage Plaintiff’s reputation. 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 [the plaintiff’s] business
reputation and decrease its legitimate sales. This court has previously stated that
such trademark infringement ‘by its nature causes irreparable harm.’” (quoting
Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1029 (11th Cir. 1989))).
Plaintiff has no adequate remedy at law so long as Defaulting Defendants
continue to sell counterfeit products because Plaintiff cannot control the quality of
the counterfeit products being manufactured and sold. Similarly, an award of
money damages alone will not cure the injury to Plaintiff’s reputation and goodwill
that will result if Defaulting Defendants’ infringing and counterfeiting actions are
allowed to continue. Moreover, Plaintiff faces severe hardship from its substantial
loss of sales and its inability to control its reputation in the marketplace. By
contrast, Defaulting Defendants face no hardship if they are prohibited from selling
unauthorized copies of Plaintiff’s products or prohibited from selling infringing
products bearing a counterfeit copy of one of Plaintiff’s registered trademarks.
Finally, the public interest supports issuance of a permanent injunction against
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Defaulting Defendants to prevent consumers from being misled by Defaulting
Defendants’ products. See Nike, Inc. v. Leslie, No. 85-960 Civ-T-15, 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.”).
Statutory Damages for Use of a Counterfeit Mark
The Lanham Act provides that, in a case involving use of a counterfeit mark,
the plaintiff may elect, at any time before final judgment is rendered
by the trial court, to recover, instead of actual damages and profits . . .
an award of statutory damages for any such use in connection with the
sale, offering for sale, or distribution of goods or services in the
amount of . . . not less than $1,000 or more than $200,000 per
counterfeit mark per type of goods or services sold, offered for sale, or
distributed, as the court considers just.
15 U.S.C. § 1117(c). A counterfeit mark “is a spurious mark which is identical
with, or substantially indistinguishable from,” a mark that is registered on the
Principal Register. Id. § 1127. In cases where a court finds that the use of the
counterfeit mark was willful, the maximum available statutory damages increase to
“not more than $2,000,000 per counterfeit mark per type of goods or services sold,
offered for sale, or distributed, as the court considers just.” Id. § 1117(c)(2).
Plaintiff requests that the Court award statutory damages against Defaulting
Defendants in the amount of $5,000 each and further requests that the Court treble
this award to $15,000 per Defaulting Defendant in light of the demonstrated
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intentional and willful infringement. [Doc. 27-1, pp. 2, 12]. The Court agrees that
this amount is sufficient to compensate Plaintiff for its lost sales, disgorge
Defaulting Defendants’ ill-gotten gains and deter Defaulting Defendants from
future infringing conduct.
Plaintiff is Entitled to Continue the Asset Freeze and to Receive the
Frozen Funds in Partial Satisfaction of the Judgment
Plaintiff has requested that the Court extend the asset freeze, initially granted
in the Temporary Restraining Order and Preliminary Injunction. Rule 64 provides
that “[a]t the commencement of and throughout an action, every remedy is
available that, under the law of the state where the court is located, provides for
seizing a person or property to secure satisfaction of the potential judgment.” Fed.
R. Civ. P. 64(a). The remedies available under Rule 64 include attachment and
garnishment. Fed. R. Civ. P. 64(b). This Court initially ordered that Defaulting
Defendants’ assets be frozen to preserve assets that might be used to satisfy a final
judgment. [Doc. 11]. The Court may extend the asset freeze order beyond the
entry of the final judgment because the risk that Defaulting Defendants might
transfer or hide their assets is not lessened by entry of a judgment. Tiffany (NJ)
LLC v. Forbse, No. 11 Civ. 4976, 2015 WL 5638060, at *4 (S.D.N.Y. Sept. 22,
2015) (“The asset restraint should remain in place in order to prevent the very
harm initially contemplated by the preliminary injunction . . . .”). Other courts
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have allowed asset freeze orders to remain in place following a judgment and have
ordered the transfer of frozen assets in full or partial satisfaction of a judgment.
Axiom Worldwide, Inc. v. HTRD Grp. Hong Kong Ltd., No. 8:11-CV-1468-T-33,
2015 WL 9673589, at *3 (M.D. Fla. Dec. 8, 2015), R. & R. adopted, 2016 WL
81377 (M.D. Fla. Jan. 7, 2016); Spin Master Ltd. v. Alan Yuan’s Store, 325 F.
Supp. 3d 413, 427–28 (S.D.N.Y. 2018). This Court agrees and orders that the
original asset freeze remain in place. This Court further orders that any financial
institution, e-commerce marketplace or other third-party custodian that receives
notice of this Order conduct an additional freeze of any assets in Defaulting
Defendants’ accounts and maintain the initially and subsequently frozen assets
until Plaintiff can enforce and satisfy the judgment. Finally, the Court orders that
all frozen assets held by any financial institution, e-commerce marketplace or other
third-party custodian be released to the Plaintiff in full or partial satisfaction of the
For the foregoing reasons, this Court holds that Plaintiff is entitled to the
entry of final default judgment. This Court GRANTS Plaintiff’s Motion for
Default Judgment and Permanent Injunctive Relief [Doc. 27].
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Final judgment and permanent injunction shall be entered by a separate
SO ORDERED this 17th day of November, 2022.
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LIST OF DEFAULTING DEFENDANTS
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Topstone island cp
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