Franko Maps, Ltd. v. Nielsen et al

Filing 146

FINDINGS OF FACT, AND CONCLUSIONS OF LAW. AND ORDER.The Clerk's Office is DIRECTED to enter judgment immediately in favor of Plaintiff and against the Bear Valley Defendants as to Count VII. Because there are no other remaining parties or cl aims, the case shall be closed after the entry of judgment against the Bear Valley Defendants. Signed by JUDGE LESLIE E. KOBAYASHI on 4/29/2019. (cib)COURTS CERTIFICATE of Service - Non-Registered CM/ECF Participants have been served by First Class Mail to the addresses of record listed on the Notice of Electronic Filing (NEF)

UNITED STATES DISTRICT COURT
DISTRICT OF HAWAII

FRANKO MAPS, LTD.,

CIV. NO. 16-00600 LEK-RLP

Plaintiff,
vs.
FRANK NIELSEN, CYNTHIA NIELSEN,
GREEN PLANET MAPS, LLC, GALE
DEAN LATTMAN doing business as
H2O TO GO MAPS, DEREK T HERMON,
BEAR VALLEY BIKES SPEEDEVOLUTION, INC., PALM TRADERS
LLC, VICKI WHITTER,
Defendants.

FINDINGS OF FACT, CONCLUSIONS OF LAW, AND ORDER
Plaintiff Franko Maps Ltd. (“Plaintiff”) filed this
action on November 7, 2016.

Plaintiff filed its Amended

Complaint on November 15, 2016.

[Dkt. no. 12.]

Plaintiff’s

claims against Defendants Palm Traders LLC (“Palm Traders”) and
Vicki Whitter (“Whitter” and collectively “Palm Traders
Defendants”) were dismissed without prejudice.
1/7/19 (dkt. no. 129).]

[Order, filed

Plaintiff settled its claims against

Defendant Gale Dean Lattman (“Lattman”) and Defendants
Frank Nielsen (“F. Nielsen”), Cynthia Nielsen (“C. Nielsen”),
and Green Planet Maps, LLC (“Green Planet”).1

1

[Consent judgment

F. Nielsen, C. Nielsen, and Green Planet will be referred
to collectively as “the Nielsen Defendants.”

& permanent injunction (as to Lattman), filed 12/27/18 (dkt.
no. 113); Consent judgment & permanent injunction (as to
the Nielsen Defendants) (“Nielsen Consent Judgment”), filed
12/27/18 (dkt. no. 114).2]

Thus, the only remaining claim is

Plaintiff’s claim against Defendant Bear Valley Bikes SpeedEvolution, Inc. (“Bear Valley”) and pro se Defendant Derek T.
Hermon (“Hermon” and collectively “Bear Valley Defendants”) for
violation of the consent judgment and permanent injunction,
filed on March 18, 2014, in Franko Maps Ltd., et al. v. Trident
Diving Equipment, et al., CV 13-00637 LEK-KSC (“2014 Consent
Judgment” and “Count VII”).3
The Amended Complaint also included a claim against
the Bear Valley Defendants asserting false advertising and
misrepresentation, pursuant to the Lanham Act and common law, as
well as defamation (“Count VIII”).

However, that claim was

dismissed without prejudice for lack of personal jurisdiction.
[Order Granting in Part and Denying in Part Motions to Dismiss,

2

F. Nielsen asserted a counterclaim against Plaintiff, but
it was dismissed with prejudice in the Nielsen Consent Judgment.
[Def. Frank Nielsen’s Counterclaim Against Pltf. Franko Maps
Ltd., filed 4/6/17 (dkt. no. 24-1); Nielsen Consent Judgment at
25.]
3

F. Nielsen and Green Planet were among the parties to the
2014 Consent Judgment. Neither of the Bear Valley Defendants
was a party to the 2014 Consent Judgment. [Amended Complaint,
Exh. H (2014 Consent Judgment) at 2.]

2

filed 9/29/17 (dkt. no. 60) (“9/29/17 Order”), at 30-31.4]

In

the 9/29/17 Order, this Court concluded that there was a basis
to assert personal jurisdiction over the Bear Valley Defendants
– in spite of their lack of contacts with Hawai`i – to enforce
the 2014 Consent Judgment as to the Bear Valley Defendants’
allegedly intentional violations.

2017 WL 4381669, at *11

(citing S.E.C. v. Homa, 514 F.3d 661 (7th Cir. 2008)).

Because

this analysis only applied to Count VII, Count VIII was
dismissed without prejudice.

Id. at *11-12.

Only Count VII is

before this Court because Plaintiff did not attempt to cure the
jurisdictional defect as to Count VIII by filing a second
amended complaint.
On January 4, 2019, default was entered against Bear
Valley because it failed to have counsel appear at a show cause
hearing, and because corporate entities are required to be
represented by counsel.

See Order Directing Entry of Default

Against Bear Valley Bikes Speed-Evolution, Inc., dkt. no. 126;
see also Local Rule LR83.11 (“Business entities, including but
not limited to corporations, . . . cannot appear before this
court pro se and must be represented by an attorney.”).5

4

The 9/29/17 Order is also available at 2017 WL 4381669.

5

The Bear Valley Defendants’ counsel was granted leave to
withdraw in an order filed on December 17, 2018. [Dkt.
no. 107.] Since that time, no counsel has appeared on behalf of
(. . . continued)
3

On January 17, 2019, Plaintiff was granted default
judgment against the Bear Valley Defendants.

[EO: Court Order

Granting Pltf.’s Motion in Limine #4 for Default Judgment
Against Derek T. Hermon and Bear Valley Bikes Speed-Evolution,
Inc., for Failure to Comply with Deadlines Set by the Court
(“Default Judgment EO”), dkt. no. 141.6]
PRELIMINARY MATTERS
The default judgment “conclusively establishes the
liability of” the Bear Valley Defendants.

See Adriana Int’l

Corp. v. Thoeren, 913 F.2d 1406, 1414 (9th Cir. 1990) (citing
Geddes v. United Fin. Grp., 559 F.2d 557, 560 (9th Cir. 1977)
(per curiam)).7

The default judgment has not been set aside.

See generally Fed. R. Civ. P. 55(c) (stating a “court may set
aside an entry of default for good cause”).

Thus, the only

issue remaining before this Court is the amount of the damages
either Hermon or Bear Valley. Hermon is proceeding pro se, and
Bear Valley has been unable to appear in these proceedings since
counsel’s withdrawal.
6

Plaintiff’s Motion in Limine #4 for Default Judgment
Against Derek T. Hermon and Bear Valley Bikes Speed-Evolution,
Inc., for Failure to Comply with Deadlines Set by the Court,
[filed 1/2/19 (dkt. no. 122),] was construed as a motion for
sanctions (“Sanctions Motion”). [Default Judgment EO at 1.]
7

In Geddes, the Ninth Circuit stated: “The general rule of
law is that upon default the factual allegations of the
complaint, except those relating to the amount of damages, will
be taken as true.” 559 F.2d at 560 (some citations omitted)
(citing Pope v. United States, 323 U.S. 1, 12, 65 S. Ct. 16, 89
L. Ed. 3 (1944)).
4

award against the Bear Valley Defendants.

To the extent

Hermon’s Defense to Claims of Damages (“Hermon Damages Filing”),
[filed 2/11/19 (dkt. no. 143),] attempts to contest his
liability as to Count VII, those arguments will not be
considered.
Plaintiff argues this Court should not consider the
arguments in paragraphs 1 through 12 of the Hermon Damages
Filing because the arguments: 1) are beyond the scope of the
briefing allowed by this Court; 2) rely on materials that he
failed to file in a form that would be admissible; and 3) rely
on documents that were not produced in discovery, even though
those documents were responsive to Plaintiff’s discovery
requests.

As to the first argument, the minutes of the hearing

on the Sanctions Motion state: “Plaintiff’s damages are
addressed in its Proposed Findings of Fact and Conclusions of
Law and its trial submissions.

Plaintiff’s supplement regarding

additional damages is due 1/30/2019.

Defendant Derek T.

Hermon’s Objections to damages only are due 2/13/2019.
Plaintiff’s Reply is due 2/20/2019.”

[Minutes, filed 1/16/19

(dkt. no. 140) at 1 (emphasis in original).]

A fair reading of

the Court’s minutes is that Hermon was permitted to submit
materials objecting to all of Plaintiff’s claimed damages, not
only Plaintiff’s supplement addressing its attorneys’ fees and
costs.

This is particularly so in light of the fact that,
5

although default judgment has been granted, Plaintiff still has
the burden of proof as to the amount of its damages.

See

Geddes, 559 F.2d at 560; see also Mancuso v. Tauber, Case No.
CV 12-10360 FMO(JCx), 2016 WL 7647658, at *7 (C.D. Cal. May 31,
2016) (“A plaintiff seeking default judgment is ‘required to
prove all damages sought in the complaint.’” (citing Philip
Morris USA, Inc. v. Castworld Products, Inc., 219 F.R.D. 494,
498 (C.D. Cal. 2003))).

This Court therefore rejects

Plaintiff’s argument that the Hermon Damages Filing exceeds the
scope of the briefing permitted by this Court.
As to Plaintiff’s second argument, the Hermon Damages
Filing relies on various supporting material that is not
attached to the Hermon Damages Filing in the form of exhibits.8
Because Hermon is proceeding pro se, this Court must liberally
construe his filings.

See Blaisdell v. Frappiea, 729 F.3d 1237,

1241 (9th Cir. 2013) (“Courts in this circuit have an obligation
to give a liberal construction to the filings of pro se
litigants . . . ” (citations omitted)).

Further, a pro se party

is “h[e]ld to less stringent standards than” the standards
8

The Hermon Damages Filing is primarily a twenty-four-page
document which consists of: numbered paragraphs that are
statements or argument by Hermon; and supporting materials that
are copied between paragraphs. Citations to the Hermon Damages
Filing with paragraph numbers refer to Hermon’s statements, and
citations without paragraph numbers refer to Hermon’s supporting
material.

6

applicable to attorneys.

See Haines v. Kerner, 404 U.S. 519,

520 (1972) (per curiam).

Plaintiff’s objection is not

persuasive because, with four exceptions, Plaintiff’s supporting
documents were submitted in the same manner as Hermon’s – i.e.,
relevant excerpts of documents were copied into Plaintiff’s
filings, rather than attaching the documents as exhibits.

See,

e.g., Pltf.’s submission of direct trial testimony, Decl. of
Peter Cannon (“P. Cannon Decl.”), filed 1/8/19 (dkt. no. 134),
at pgs. 23-24;9 Pltf.’s proposed Findings of Fact and Conclusions
of Law (“Pltf.’s Proposed FOF/COL”), filed 1/8/19 (dkt.
no. 135), at 21-22.

Moreover, some of the materials copied into

the Hermon Damages Filing are also copied into Plaintiff’s
Proposed FOF/COL.

Compare Hermon Damages Filing at 12-13, with

Pltf.’s Proposed FOF/COL at 21-22 & 23-24.

This Court therefore

rejects Plaintiff’s argument that Hermon’s supporting materials
should not be considered because Hermon did not submit them in
admissible form.
Plaintiff also contends this Court should not consider
the documents copied on pages 2, 4, 7, 9, 11, and 16 through 22
of the Hermon Damages Filing because Hermon did not produce them
in discovery.

The documents copied on pages 2 and 4 are not

9

Peter Cannon is Plaintiff’s chief executive officer.
[P. Cannon Decl. at ¶ 1.]

7

being considered because they improperly contest Hermon’s
liability; the first email copied on page 7 is not being
considered because Hermon did not submit the attachments that
were purportedly transmitted in that email; and the documents
copied on pages 16 through 22 are not being considered because
they are not relevant to this Court’s analysis.

Plaintiff’s

objection to those documents are therefore denied as moot.
The second email on page 7 is to the Bear Valley
Defendants’ former counsel, transmitting a table of the sales of
and profits from the Bear Valley Map, and page 9 is the table
itself.

See Hermon Damages Filing at 5, ¶ 4.

The document on

page 11 is an invoice showing the price that Hermon paid for the
bicycle he traded to F. Nielsen in exchange for F. Nielsen’s
work on the Bear Valley Map.

See id. at 10, ¶ 5.

Although

Hermon did not produce those documents in response to
Plaintiff’s written discovery requests, this Court will consider
them because of the unusual circumstances of this case.

The

Bear Valley Defendants’ counsel moved to withdraw on December 3,
2018, and the magistrate judge granted the motion on
December 17, 2018.

[Dkt. nos. 98, 107.]

The withdrawal was

approximately a month before the scheduled trial date.

See

Amended Rule 16 Scheduling Order, filed 10/3/18 (dkt. no. 97),
at ¶ 1 (stating the nonjury trial was to commence on 1/22/19).
To the extent Plaintiff argues it would be unfairly prejudiced
8

by the Court’s consideration of materials not produced in
discovery, the Court notes that neither Plaintiff nor any other
party in this case took depositions.

See Pltf.’s Statement that

It Designates No Deposition Transcripts Because No Depositions
Were Taken in this Case, filed 1/2/19 (dkt. no. 116).

Plaintiff

did not file a motion to compel the Bear Valley Defendants to
respond to discovery requests, nor is there any indication in
the record that Plaintiff utilized the Expedited Discovery
Assistance process provided in Local Rule 37.1(c).

Further,

Plaintiff knew, by May 2017, the identity of three vendors who
sold the Bear Valley Map.

See infra Finding of Fact No. 9.

There is no evidence in the record of Plaintiff’s attempts to
obtain information from those vendors about how many Bear Valley
Maps they purchased, when, and for what price.

Therefore,

Plaintiff’s objection is denied, and this Court will consider
the materials copied on the second part of page 7 and pages 9
and 11 of the Hermon Damages Filing.
The Court, having considered the entry of default
judgment and the relevant filings in this case, makes the
following Findings of Fact and Conclusions of Law.

Any finding

of fact that should more properly be deemed a conclusion of law
and any conclusion of law that should more properly be deemed a
finding of fact shall be so construed.

9

FINDINGS OF FACT
1.

Hermon is the owner of Bear Valley.

[Amended

Complaint at ¶ 10.]
2.

The Nielsen Defendants have admitted that they

infringed upon valid and enforceable copyrights owned by
Plaintiff, and these infringements also constituted violations
of the 2014 Consent Judgment.

[Nielsen Consent Judgment at

¶ 2.]
3.

Plaintiff’s copyrights addressed in the Nielsen

Consent Judgment include trail maps of the Big Bear area in
California.

Id. at 6, ¶ 5; see also Amended Complaint, Exh. O

(excerpts of Plaintiff’s Big Bear map and the map’s copyright
information from the United States Copyright Office).
4.

Hermon knew about Plaintiff’s copyright to Plaintiff’s

Big Bear map, and Hermon knew, by sometime in 2012, that
F. Nielson’s employment with Plaintiff had been terminated.
Hermon purchased Plaintiff’s Big Bear map every year from 2005
until F. Nielsen’s termination.

[Amended Complaint at ¶¶ 32-

33.]
5.

In 2015, F. Nielsen created “The Definitive Big Bear

Trail Map” for the Bear Valley Defendants (“Bear Valley Map”).
[Amended Complaint at ¶ 34 & Exh. Q (excerpts of Bear Valley
Map).]

10

6.

Hermon asserted he owned the copyrights to the Bear

Valley Map by placing “© 2015 Derek Hermon” on the Bear Valley
Map.

[Amended Complaint at ¶ 34.]

This representation was

false.
7.

The Bear Valley Defendants willfully “creat[ed],

display[ed], offer[ed] and/or s[old]” the Bear Valley Map.

[Id.

at ¶ 35.]
8.

At the latest, the Bear Valley Defendants had a copy

of the 2014 Consent Judgment in November 2016 because it is an
exhibit to the Amended Complaint.

See P. Cannon Decl. at ¶ 20;

Stipulation for Waiver of Service of Summons and for Extension
of Time to Respond to Amended Complaint, filed 3/17/17 (dkt.
no. 23) (stating the Bear Valley Defendants received the Amended
Complaint by mail in November 2016).
9.

The Bear Valley Defendants continued to distribute

and/or sell the Bear Valley May through at least May 4, 2017.
See Pltf.’s submission of direct trial testimony, Decl. of
Wilson P. Cannon, III (“W. Cannon Decl.”) at ¶¶ 2-6 (stating
that, on 5/4/17, he purchased the Bear Valley Map from four
locations in the Big Bear area: Goldsmith’s, Bear Valley Bikes,
the Visitor Center, and Lakeview Market).10

10

Wilson Cannon is Peter Cannon’s son. [W. Cannon Decl. at
¶ 2.] The W. Cannon Declaration is dated July 23, 2017. [Id.
at pg. 3] It was originally filed on July 24, 2017 in support
(. . . continued)
11

10.

The Bear Valley Defendants continued to display and/or

advertise the Bear Valley Map through various Internet-based
platforms, at least through January 7, 2019.
at ¶ 38.]

[P. Cannon Decl.

Plaintiff, however, has presented no evidence of the

damages it has suffered as a result of the online displays
and/or advertisement.
11.

Hermon states he no longer sells nor distributes the

Bear Valley Map.

[Hermon Damages Filing at 4, ¶ 3.]

However,

he has three copies of the laminated version of the Bear Valley
Map, and he asks that he be allowed to retain those copies “for
personal use and records.”
A.

[Id. at 23, ¶ 12.]

Amount of Damages
Plaintiff’s Position
12.

Plaintiff asserts it has suffered significant damages

as a result of the Bear Valley Defendants’ wrongful actions.
Plaintiff’s damages include: lost profits, because the sales of
the Bear Valley Map decreased the sales of Plaintiff’s Big Bear
map; and “loss of goodwill, trust and reputation in the relevant
business community.”

[Amended Complaint at ¶ 39.]

of Plaintiff’s memorandum in opposition to the Bear Valley
Defendants’ motion to dismiss, filed on June 9, 2017. See dkt.
nos. 44 (motion to dismiss), 49 (mem. in opp.). The Bear Valley
Defendants’ motion to dismiss was one of two motions granted in
part and denied in part in the 9/29/17 Order. 2017 WL 4381669,
at *14.

12

13.

Plaintiff argues the following measures of damages

would approximate Plaintiff’s lost profits, prevent unjust
enrichment to the Bear Valley Defendants, and deter them from
future violations: disgorgement of the Bear Valley Defendants’
marginal profits; [P. Cannon Decl. at ¶¶ 40;] and the statutory
damages that would be available for copyright infringement, [id.
at ¶ 42].11
14.

Neither F. Nielsen nor the Bear Valley Defendants

produced discovery reflecting the number of Bear Valley Maps
that were printed.

Further, they did not produce discovery

showing how many Bear Valley Maps were sold.

[P. Cannon Decl.

at ¶ 40.]
15.

P. Cannon estimates the Bear Valley Defendants

obtained 10,000 copies of the Bear Valley Map in 2016, based on
F. Nielsen’s statements that: a) in late 2016, he asked Hermon
for $10,000 as compensation for his work on the Bear Valley Map;
and b) his desired compensation rate was one dollar per map.
[Id. (citing Trial Exhibits 12 and 28).]

11

Plaintiff notes that, statutory damages for intentional
copyright infringement can be up to $150,000. [P. Cannon Decl.
at ¶ 42 (citing 17 U.S.C. § 504).] Half of that amount
($75,000) “is close to (but somewhat more conservative than)”
the proposed disgorgement of marginal profit measure of damages.
[Id.]

13

16.

Plaintiff’s position appears to be that the Bear

Valley Defendants ordered approximately 3,000 copies of the Bear
Valley Map from F. Nielsen in 2015, and another 10,000 copies in
2016.

See Pltf.’s Proposed FOF/COL at 9, ¶ 10; id. at 24, ¶ 28.
17.

Because Hermon has previously stated he has no copies

of the Bear Valley Map to turn over, Plaintiff argues this Court
should assume the Bear Valley Defendants sold all 10,000 copies
of the Bear Valley Map.

[P. Cannon Decl. at ¶ 41.]

However,

Plaintiff provides no citation for this statement by Hermon.
18.
$10,000.

There is no evidence that Hermon paid F. Nielsen the
Further, Plaintiff argues that, even if the Bear

Valley Defendants did pay F. Nielsen, deducting the amount would
allow F. Nielsen and the Bear Valley Defendants to retain
benefits from their wrongdoing.
19.

[Id. at ¶ 40.]

A reasonable cost for the printing of a map is one

dollar per map.

[Id.]

20.

The Bear Valley Map was sold for approximately ten

dollars.

[W. Cannon Decl., Exh. 1 (receipt reflecting $9.99

price), Exh. 2 (receipt reflecting $10 price), Exh. 3 (receipt
reflecting $10 price) at 1, Exh. 4 (receipt reflecting $9.99
price).]
21.

Plaintiff’s position is that the Bear Valley

Defendants had marginal profits of $90,000 from the sale of the

14

Bear Valley Map, i.e. (10,000 maps at $10 each) minus (10,000 at
$1 each for printing costs).

[P. Cannon Decl. at ¶ 40.]

Hermon’s Position
22.

Hermon argues the amount of damages available in a

claim for copyright infringement is not an appropriate measure
of damages in this case because Count VIII was dismissed in the
9/29/17 Order.
23.

[Hermon Damages Filing at 1, ¶ 1.]

As to the number of Bear Valley Maps that were

produced, Hermon presents an invoice, dated March 26, 2015, to
Hermon from Green Planet, for 3,100 copies of the Bear Valley
Map (“3/26/15 Invoice”).

[Id. at 5, ¶ 4; id. at 8 (3/26/15

Invoice).]
24.

Hermon also presents a list that he prepared of the

estimated number of Bear Valley Maps sold, or given away,
between 2015 and 2017 (“Estimated Distribution List”).

[Hermon

Damages Filing at 5, ¶ 4; id. at 7 (email transmitting the list
to the Bear Valley Defendants’ former counsel); id. at 8
(Estimated Distribution List).]
25.

The Estimated Distribution List includes the price

received per map in each sale, as well as the $2,900 reflected
on the 3/26/15 Invoice, and a $1,254 “distribution fee.”
[Hermon Damages Filing at 8.]
26.

According to the Estimated Distribution List, only the

222 copies sold at the Bear Valley Bikes store, and single
15

copies sold to two individuals, were sold for ten dollars each.
The other sales were for either five dollars each or $5.75 each.
[Id.]

Each of the vendors named in the W. Cannon Declaration is

among those identified on the Estimated Distribution List.
27.

According to the Estimated Distribution List, 1,619

copies of the Bear Valley Map were given away, but 1,522 of
those were given away through the Bear Valley Bikes store.
[Id.]
28.

According to the Estimated Distribution List, the Bear

Valley Map had a net loss of $687.25.
29.

[Id.]

Hermon states he traded a bicycle to F. Nielsen for

F. Nielsen’s work on the Bear Valley Map.

The bicycle had a

manufacturer’s suggested retail price of $2,900, and Hermon
bought the bicycle from Specialized Bicycle Components, Inc.
(“Specialized”) for $1,537.60.

[Id. at 10, ¶ 5; id. at 11

(Specialized invoice dated 8/29/15).]
30.

As further support for his position that there were

only 3,100 copies of the Bear Valley Map made, Hermon attaches
the emails that Plaintiff relies upon for its position that
there were 10,000 copies made.

[Hermon Damages Filing at 10,

¶ 6; id. at 12 (Tr. Exh. 12); id. at 13 (Tr. Exh. 28).]
31.

What would have been Trial Exhibit 12 is an email,

dated May 21, 2014, from F. Nielsen to Hermon.
relevant part:
16

It states, in

If you want to expand the coverage or scope
of the map beyond the current map boundaries, it
can only be done with LOTS of expensive labor.
Sorry! But I’d willingly do is [sic] for maybe a
trade for your Porsche??
Printing costs are something on the order of
$0.90 apiece in the quantity range of 3,000, but
jump to $1.25 or more for 2,000 or less. 3,000
is a good minimum order. Remember, that is just
the printing and delivery cost, with my labor
free, so far. What do I want out of this work?
Well . . . . I usually try to make about $1 per
map to cover my expense and time. I will never
catch up with the time I’ve put into this, so I
will just tell you that what I am really looking
for is a decent mountain bike, even if it is used
– a size L or XL . . . .
FYI, typically, a distributor buying a whole
print run would pay one-half of wholesale, which
means they pay $1.75 apiece for 3,000, which is
$5,250 plus shipping.
If you could get a sponsor, like Specialized
and Ellsworth, to pay for the printing for a map
which you can give away, you could print 10,000
or more at just $0.65 apiece, or less. Again,
that is just the printing cost. I still want a
bike!
[Hermon Damages Filing at 12 (bold emphases Hermon’s).]
32.

What would have been Trial Exhibit 28 is an email,

dated July 18, 2016, from F. Nielsen to Hermon.

F. Nielsen

asks, “[w]ould you like to trade for bike stuff again?”
13.]

[Id. at

F. Nielsen proposes different bicycle parts and states:

“So, there are some ideas to talk about.
payment would be fine!”

[Id.]

Otherwise, $10,000

F. Nielsen starts the email,

“[h]i Hermonator, my heartachey friend,” and he signs it

17

“FRANKO, professional mountain biker (HA!).”

[Id. (emphasis in

original).]
33.

Hermon contends F. Nielsen’s statements that he would

trade his services for Hermon’s Porsche and that he would accept
a $10,000 payment were “obviously jovial remarks.”

[Id. at 10,

¶ 6.]
34.

Hermon admits that copies of the Bear Valley Map were

sold or given away after the Bear Valley Defendants were served
with the Amended Complaint (which included the 2014 Consent
Judgment) on November 30, 2016.

Specifically, on December 3,

2016, seventy-five copies were sold to local businesses for five
dollars per map, and fifty were sold for $5.75 per map.
21, ¶ 10.]

[Id. at

After that date, the Bear Valley Bikes store sold

twenty-two maps at ten dollars per map, and it distributed
approximately 150 maps for free.

[Id.]

Court’s Rulings
35.

Looking at the record as a whole, Plaintiff and Hermon

agree that approximately one dollar per map was a reasonable
cost for the printing of the Bear Valley Map.

The number of

copies printed is disputed.
36.

Plaintiff’s evidence in support of its position that

the Bear Valley Defendants ordered 10,000 copies of the Bear
Valley Map from F. Nielsen in 2016 is Peter Cannon’s
interpretation of what would have been Trial Exhibit 28, in
18

which F. Nielsen proposes various items that could be traded as
“fair payment for the map works” but concludes, “[o]therwise,
$10,000 payment would be fine!”

See P. Cannon Decl. at ¶ 40;

Pltf.’s Proposed FOF/COL at 23-24; see also Hermon Damages
Filing at 13.
37.

Plaintiff’s interpretation of the email is

speculative.

At worst, the “$10,000 payment would be fine”

statement was included in jest.

Even at best, the statement was

an attempt to negotiate with Hermon.

In either instance, there

is no proof that F. Nielsen and Hermon agreed upon that amount,
and therefore there is no evidence from which it can be inferred
that the Bear Valley obtained 10,000 copies of the Bear Valley
Map from F. Nielsen in 2016.
38.

This Court finds, based on the 3/26/15 Invoice,

[Hermon Damages Filing at 8,] that the Bear Valley Defendants
obtained 3,100 copies of the Bear Valley Map from F. Nielsen.
39.

Based on the Estimated Distribution List, [id. at 9,]

the Bear Valley Defendants sold and/or distributed the 3,100
copies from 2015 through 2017.
40.

The Estimated Distribution List and Hermon’s

statements are sufficient evidence of the number of copies of
the Bear Valley Map that were sold, the date of the sales, and
the price.

[Id.; id. at 21, ¶ 10.]

19

41.

After receiving the 2014 Consent Judgment in November

2016, the Bear Valley Defendants: sold fifty copies of the Bear
Valley Map to the Lakeview Market at five dollars each; sold
twenty-five copies to Our Town Liquor at $5.75 each; sold
twenty-five copies to the Art Garden at five dollars each; sold
twenty-five copies to Shell Bear Valley at $5.75 each; sold
twenty-two copies at the Bear Valley Bikes store for ten dollars
each; and distributed approximately 150 copies through the Bear
Valley Bikes store at no charge.
42.

Because Hermon does not explain why 150 copies of the

Bear Valley Map were distributed by the Bear Valley Bikes store
at no charge during the same period that Bear Valley Bikes sold
twenty-two copies of the map for ten dollars each, this Court
will treat the 150 copies as if they had been sold by the Bear
Valley Bikes store for ten dollars each.
43.

The Bear Valley Defendants received the following from

the sales of the Bear Valley Map after they were served with the
2014 Consent Judgment:
75 copies
50 copies
172 copies

44.

x
x
x

$5.00 each
=
$5.75 each
=
$10.00 each
=
Total

$ 375.00
$ 287.50
$1,720.00
$2,382.50

F. Nielsen charged the Bear Valley Defendants

$2,900.00 for the 3,100 copies, which is approximately one

20

dollar per map, but he accepted a bicycle in trade as payment.
[Hermon Damages Filing at 10, ¶ 5.]
45.

The Estimated Distribution List and Hermon’s

statements are not sufficient evidence of the purported
$1,254.00 “distribution fee” Hermon asserts was paid to sell the
Bear Valley Map, [id. at 9; id. at 13, ¶ 7,] because Hermon did
not provide information about who the Bear Valley Defendants
paid the distribution fee to or the purpose of the fee.

This

Court therefore will not consider the distribution fee in
determining the amount of Plaintiff’s damages.
46.

There is insufficient evidence in the record to

support a finding that the Bear Valley Defendants incurred any
costs associated with the Bear Valley Map, other than the one
dollar per map that F. Nielsen charged.
47.

One dollar for each of the 297 maps sold after the

Bear Valley were served with the 2014 Consent Judgment will be
deducted from the gross income from the Bear Valley Map during
the relevant period.

The Bear Valley Defendants therefore had

$2,085.50 in profits from the Bear Valley Map after they were
served with the 2014 Consent Judgment.
B.

Attorneys’ Fees and Costs
Plaintiff’s Position
48.

Plaintiff seeks an award of $62,320.00 in attorneys’

fees, plus $2,936.52 in general excise tax (“GET”), for a total
21

award of $65,256.52.

[Pltf.’s Reply for Suppl. Regarding

Attorneys’ Fees as Additional Damages (“Pltf. AF Reply”), filed
2/20/19 (dkt. no. 144), at 10.12]

However, the request has been

adjusted, as explained infra.
49.

The requested amount consists of the following hours,

all of which was for work performed by Milton Yasunaga, Esq.:
Year
2016
2017
2018
2019

Rate
$395
$400
$405
$405

Hours
17.7
63.7
30.1
40.0
Subtotal
4.712% GET
Grand Total

Subtotal
$ 6,991.50
$25,480.00
$12,190.50
$16,200.00
$60,862.00
$ 2,867.82
$63,729.82

See Pltf. AF Reply at 12; id., Decl. of Milton M. Yasunaga
(“Yasunaga Reply Decl.”), Exh. 1 (updated itemization of work
performed).13
50.

Mr. Yasunaga has been a civil litigation attorney in

Hawai`i since 1981.

[Pltf.’s Suppl. Regarding Attorneys’ Fees

as Additional Damages (“Pltf. AF Suppl.”), filed 1/30/19 (dkt.
no. 142), Decl. of Milton Yasunaga at ¶ 9.]

Plaintiff argues

the requested hourly rates for Mr. Yasunaga are reasonable in
12

Plaintiff filed an errata to the Plaintiff AF Reply on
February 21, 2019. [Dkt. no. 145.]
13

The chart on page 12 of the Plaintiff AF Reply has been
adjusted because it appears to have a mathematical error for the
hours spent in 2019. The hours for 2019 in Finding of Fact
No. 49 are consistent with Exhibit 1 to the Yasunaga Reply
Declaration.

22

light of his experience and the attorneys’ fee awards in other
cases litigated by attorneys with comparable experience and
skill.

Plaintiff also argues the number of hours expended in

this case is reasonable in light of the procedural posture of
the case.
51.

Plaintiff does not seek an award of costs incurred

“[t]o be generous to [the Bear Valley] Defendants, and to be
conservative.”

[Pltf. AF Suppl. at 3.]
Hermon’s Position

52.

Hermon argues he should not be required to pay

Plaintiff’s attorneys’ fees because of the “American Rule.”14
[Hermon Damages Filing at 23, ¶ 13.]
53.

Hermon argues that, if attorneys’ fees are awarded,

the number of hours should be limited for the following reasons:
a) work prior to the 9/29/17 Order should not be compensable
because it related to claims that were dismissed; b) Plaintiff
should only be compensated for 6% or 1/18th of Mr. Yasunaga’s
work prior to the dismissal of the other defendants because the
majority of the works at issue in this case were produced by the

14

“Our basic point of reference when considering the award
of attorney’s fees is the bedrock principle known as the
American Rule: Each litigant pays his own attorney’s fees, win
or lose, unless a statute or contract provides otherwise.”
Baker Botts L.L.P. v. ASARCO LLC, 135 S. Ct. 2158, 2164 (2015)
(citations and quotation marks omitted).

23

other defendants; and c) time for repetitive tasks and excessive
time should not be compensated.15
54.

[Id. at 23-24, ¶ 13.]

Hermon does not present any argument contesting the

reasonableness of Mr. Yasunaga’s hourly rates.
Court’s Rulings
55.

Mr. Yasunaga’s requested hourly rates are manifestly

reasonable, in light of his experience.

See, e.g., Liberty Mut.

Ins. Co. v. Sumo-Nan LLC, CIVIL NO. 14-00520 DKW-KSC, 2017 WL
810277, at *10 & n.10 (D. Hawai`i Mar. 1, 2017) (finding the
requested $400 hourly rate to be reasonable for Margery
Bronster, Esq., who was admitted to the New York bar in 1983 and
the Hawai`i bar in 1988).
56.

Plaintiff has sufficiently reduced the hours in the

request to eliminate time attributable to work performed
regarding Plaintiff’s claims against other defendants.

This

Court therefore rejects Hermon’s argument that Mr. Yasunaga’s
hours should be reduced to six percent or 1/18th of the total.
57.

Until the 9/29/17 Order, there were two claims pending

against the Bear Valley Defendants.

The 9/29/17 Order dismissed

Count VIII for lack of personal jurisdiction.

Because

Plaintiff’s efforts until September 29, 2017 were only partially
15

Hermon raised another argument, but Plaintiff agreed to
remove the 0.50 hour challenged in that argument. [Pltf. AF
Reply at 10.]

24

successful, a reduction in hours is warranted.

A percentage

reduction will be applied because specific hours related only to
Count VIII cannot be identified.

See Yonemoto v. McDonald,

CIVIL NO. 11-00533 JMS-RLP, 2016 WL 7131847, at *5 (D. Hawai`i
Feb. 19, 2016) (“Where a plaintiff achieves only partial
success, ‘[t]he district court may attempt to identify specific
hours that should be eliminated, or it may simply reduce the
award to account for the limited success.’” (alteration in
Yonemoto) (quoting Hensley v. Eckerhart, 461 U.S. 424, 436–37
(1983))), report and recommendation adopted, 2016 WL 2944650
(May 20, 2016), aff’d sub nom., Yonemoto v. Shulkin, 725 F.
App’x 482 (9th Cir. 2018).
58.

Mr. Yasunaga’s hours prior to September 29, 2017 will

therefore be reduced by twenty-five percent.
59.

This Court also rejects Hermon’s argument that

Mr. Yasunaga’s hours should be reduced because of unnecessarily
repetitive tasks and excessive time spent on tasks.

None of the

time reflected in Plaintiff’s request is excessive, nor is any
of the work unnecessarily repetitive.
60.

This Court therefore finds the following to represent

the reasonable attorneys’ fees for work performed by
Mr. Yasunaga in this case:

25

Year
2016
2017
2018
2019

Rate
$395
$400
$405
$405

Hours
13.3
51.5
30.1
40.0
Subtotal
4.712% GET
Grand Total

Subtotal
$ 5,253.50
$20,600.00
$12,190.50
$16,200.00
$54,244.00
$ 2,555.98
$56,799.98

The fees in this chart reflect Mr. Yasunaga’s reasonable hourly
rates and the hours reasonably expended in this case.
CONCLUSIONS OF LAW
1.

This Court has the inherent authority to enforce

compliance with the 2014 Consent Judgment through civil contempt
proceedings.

See Int’l Union, United Mine Workers of Am. v.

Bagwell, 512 U.S. 821, 827-28 (1994).
2.

“The party alleging civil contempt must demonstrate

that the alleged contemnor violated the court’s order by clear
and convincing evidence, not merely a preponderance of the
evidence.”

Inst. of Cetacean Research v. Sea Shepherd

Conservation Soc’y (“Cetacean Research”), 774 F.3d 935, 945 (9th
Cir. 2014) (citation and internal quotation marks omitted).
3.

Plaintiff has established, by clear and convincing

evidence, that: a) the Bear Valley Map infringes upon
Plaintiff’s Big Bear trail map; and b) by ordering the making of
the Bear Valley Map, and displaying, distributing, offering for
sale, and selling the Bear Valley Map, the Bear Valley
Defendants violated of the 2014 Consent Judgment.

26

4.

This Court only has personal jurisdiction over the

Bear Valley Defendants to the extent they committed intentional
violations the 2014 Consent Judgment, and they could not have
intentionally violated the 2014 Consent Judgment until they had
notice of it.
5.

See 9/29/17 Order, 2017 WL 4381669, at *9-11.

At the latest, the Bear Valley Defendants had notice

of the 2014 Consent Judgment when they were served with the
Amended Complaint in November 2016.
No. 8.

See supra Finding of Fact

Plaintiff has not presented clear and convincing

evidence showing that the Bear Valley Defendants had notice of
the 2014 Consent Judgment before they were served with the
Amended Complaint.

The Bear Valley Defendants therefore are not

charged with knowledge of the 2014 Consent Judgment until
November 2016.
6.

In this action, Plaintiff can only recover damages for

the Bear Valley Defendants’ actions relating to the Bear Valley
Map after service of the Amended Complaint (“Relevant Actions”).
7.

The appropriate measure of Plaintiff’s damages are:

disgorgement of the Bear Valley Defendants’ profits from the
sales of the Bear Valley Map after they had notice of the 2014
Consent Judgment; plus the attorneys’ fees that Plaintiff
reasonably incurred in these contempt proceedings.

See Cetacean

Research, 774 F.3d at 958 (attorneys’ fees); Toyo Tire & Rubber
Co. v. Hong Kong Tri–Ace Tire Co., 281 F. Supp. 3d 967, 990-91
27

(C.D. Cal. 2017) (disgorgement of profits).

This Court need not

reach Plaintiff’s argument that the amount of damages which
would have been available in a copyright claim is an appropriate
measure of Plaintiff’s damages because Plaintiff has presented
that argument as an alternative argument to justify the amount
of damages Plaintiff seeks based on disgorgement of profits.
See, e.g., P. Cannon Decl. at ¶ 42.
8.

This Court has imputed profits from the copies of the

Bear Valley Map that the Bear Valley Bikes store distributed
without charge after the Bear Valley Defendants received the
2014 Consent Judgment.

See supra Finding of Fact No. 42.

Those

amounts are sufficient to represent Plaintiff’s damages from the
Bear Valley Defendants’ other uses of the Bear Valley Map, such
as displaying it on Bear Valley’s website.
9.
$2,085.50.
10.

Hermon’s profits from the Relevant Actions were
See supra Finding of Fact No. 47.
Because Plaintiff’s attorneys’ fees are part of

Plaintiff’s measure of damages, not an award to the prevailing
party apart from its damages, this Court rejects Hermon’s
“American Rule” argument.

However, this Court will only

include, as part of Plaintiff’s damages, the attorneys’ fees
that were reasonably incurred in this case.
11.

The determination of the amount of reasonable

attorneys’ fees is typically a two-step process:
28

District courts generally start by applying the
“lodestar method,” i.e., multiplying “the number
of hours the prevailing party reasonably expended
on the litigation by a reasonable hourly rate.”
Gonzalez v. City of Maywood, 729 F.3d 1196, 1202
(9th Cir. 2013) (quoting Ballen v. City of
Redmond, 466 F.3d 736, 746 (9th Cir. 2006)). The
district court “may then adjust [the lodestar]
upward or downward based on” twelve factors
identified in Hensley. Id. (quoting Moreno v.
City of Sacramento, 534 F.3d 1106, 1111 (9th
Cir.2008)); see Hensley, 461 U.S. at 430 n.3, 103
S. Ct. 1933.
Klein v. City of Laguna Beach, 810 F.3d 693, 698 (9th Cir. 2016)
(alteration in Klein).
12.

The lodestar in this case is $56,799.98.

See supra

Finding of Fact No. 60.
13.

The factors identified in Hensley are:
(1) the time and labor required; (2) the novelty
and difficulty of the questions; (3) the skill
requisite to perform the legal service properly;
(4) the preclusion of employment by the attorney
due to acceptance of the case; (5) the customary
fee; (6) whether the fee is fixed or contingent;
(7) time limitations imposed by the client or the
circumstances; (8) the amount involved and the
results obtained; (9) the experience, reputation,
and ability of the attorneys; (10) the
“undesirability” of the case; (11) the nature and
length of the professional relationship with the
client; and (12) awards in similar cases.

461 U.S. at 430 n.3.16

“[T]he most critical factor is the degree

of success obtained.”

Id. at 436.

16

Hensley has been superseded in part on other grounds by
the Prison Litigation Reform Act. See, e.g., Whitehead v.
Colvin, Case No. C15-5143RSM, 2016 WL 1464469, at *2 & n.1 (W.D.
(. . . continued)
29

14.

Because Plaintiff’s attorneys’ fees are being awarded

as an element of Plaintiff’s damages, this Court concludes that
the Hensley analysis regarding an upward or downward adjustment
of the lodestar amount does not apply.

Further, even if this

Court were to consider the Hensley factors, this Court would
conclude that the factors do not warrant either an upward
adjustment or a downward adjustment.
15.

This Court therefore concludes that Plaintiff’s

damages for the Relevant Actions are as follows: $2,085.50,
reflecting disgorgement of profits; and $56,799.98, reflecting
the attorneys’ fees that Plaintiff reasonably incurred to
prosecute Count VII.

The total damages award is $58,885.48.

ORDER REGARDING FINDINGS OF FACT AND CONCLUSIONS OF LAW
AND NOW, based on the entry of default judgment
against the Bear Valley Defendants, and in accordance with the
foregoing Findings of Fact and Conclusions of Law, it is HEREBY
ORDERED that:
1.

The Bear Valley Defendants violated the 2014 Consent

Judgment by, inter alia: creating the Bear Valley Map with the
help of F. Nielsen; and distributing, offering for sale,
selling, displaying, and advertising the Bear Valley Map.

Wash. Apr. 14, 2016). Hensley has also been abrogated on other
grounds by Texas State Teachers Ass’n v. Garland Independent
School District, 489 U.S. 782 (1989).
30

2.

The Bear Valley Defendants intentionally violated the

2014 Consent Judgment by distributing, offering for sale,
selling, displaying, and advertising the Bear Valley Map after
they had notice of the 2014 Consent Judgment through service of
the Amended Complaint in November 2016.
3.

Judgment in favor of Plaintiff and against the Bear

Valley Defendants shall be entered as to Count VII.
4.

Plaintiff is AWARDED $58,885.48 in damages against the

Bear Valley Defendants for Count VII.
5.

The Bear Valley Defendants are ORDERED to immediately

comply with the 2014 Consent Judgment.

This includes, but is

not limited to: a) immediately ceasing sales and distribution of
the Bear Valley Map and any other map that the Bear Valley
Defendants created with F. Nielsen’s help after F. Nielsen
entered into the 2014 Consent Judgment (“Infringing Maps”);
b) returning to Plaintiff the three copies of the Bear Valley
Map still in Hermon’s possession, as well as all copies of any
other Infringing Maps in the Bear Valley Defendants’ possession;
and c) using reasonable efforts to remove all displays of the
Infringing Maps, as well as all claims of ownership or creation
of the Infringing Maps, that are under the Bear Valley
Defendants’ authority and control, including, but not limited
to, Internet websites.

31

6.

The three copies of the Bear Valley Map in Hermon’s

possession and all copies of any other Infringing Maps in the
Bear Valley Defendants’ possession are to be returned to
Plaintiff, through Plaintiff’s counsel, within two weeks of the
filing of this Order.

If the Bear Valley Defendants did not

create any other Infringing Maps, or created other Infringing
Maps but no longer have any copies of them, Hermon is ORDERED to
file a declaration to that effect by no later than May 20, 2019.
7.

The Bear Valley Defendants must complete all

reasonable efforts to remove all displays of the Infringing
Maps, and all claims of ownership of the Infringing Maps, that
are in their possession or under their authority and control by
no later than May 20, 2019.
The Clerk’s Office is DIRECTED to enter judgment
immediately in favor of Plaintiff and against the Bear Valley
Defendants as to Count VII.

Because there are no other

remaining parties or claims, the case shall be closed after the
entry of judgment against the Bear Valley Defendants.
IT IS SO ORDERED.
DATED AT HONOLULU, HAWAI`I, April 29, 2019.

32