Luxottica Group S.p.A., et al. v. Hao Li, et al.
MEMORANDUM Opinion and Order. Signed by the Honorable Manish S. Shah on 2/15/2017: Luxottica's motion for summary judgment, 1:16-cv-487, #69 , is granted. Van Cleef's motion for summary judgment, 1:16-cv-1227, #49 , is also granted. In each action, a permanent injunction shall issue, and statutory damages in the amount of $60,000, reasonable attorney's fees, and costs shall be awarded. Plaintiffs shall submit proposed judgment orders that are consistent with this decision, and shall comply with Local Rules 54.1 and 54.3 on their petitions for costs and fees. [For further detail see attached order.] Notices mailed. (psm, )
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
LUXOTTICA GROUP S.P.A. and
HAO LI, et al.,
No. 16 CV 487 and
No. 16 CV 1227
Judge Manish S. Shah
RICHEMONT INTERNATIONAL SA,
CARTIER INTERNATIONAL A.G.,
VAN CLEEF & ARPELS SA,
OFFICINE PANERAI A.G., and
LANCEL INTERNATIONAL SA,
LUO LIANG, et al.,
MEMORANDUM OPINION AND ORDER
uptogethertek, through which it sold sunglasses using counterfeit trademarks
owned by plaintiffs Luxottica Group S.p.A. and Oakley, Inc. It also operates the
internet store royalwaytrade, through which it sold earrings bearing counterfeit
trademarks owned by plaintiff Van Cleef & Arpels SA. Plaintiffs Luxottica and
Oakley filed suit against defendant under docket number 16-cv-487. Plaintiff Van
Cleef & Arpels filed suit against defendant under docket number 16-cv-1227. Both
cases involve claims under the Lanham Act and the Illinois Uniform Deceptive
Trade Practices Act, and both are litigated by the same counsel. And in both,
plaintiffs now move for summary judgment and seek an award of reasonable
attorney’s fees and costs, at least $90,000 in statutory damages each, and a
permanent injunction prohibiting defendant from selling counterfeit products
bearing the infringed-upon trademarks. The arguments presented in each motion
overlap significantly, so the two motions will be addressed together. For the
following reasons, both motions for summary judgment are granted in favor of
plaintiffs, permanent injunctions shall be entered, and in each case, statutory
damages shall be awarded in the amount of $60,000, along with reasonable
attorney’s fees and costs.
Summary judgment is appropriate if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). A genuine dispute as to any material fact exists
if “the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The
party seeking summary judgment has the burden of establishing that there is no
genuine dispute as to any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). A court must “construe all facts and reasonable inferences in the light
most favorable to the non-moving party.” Apex Digital, Inc. v. Sears, Roebuck, &
Co., 735 F.3d 962, 965 (7th Cir. 2013).
Plaintiffs Luxottica Group S.p.A. and Oakley, Inc. own a valid and
incontestable trademark in the word “Wayfarer,” registered with the United States
Patent and Trademark Office under the number 595,513.1 1:16-cv-487,  ¶ 1.2
Defendant operates multiple internet stores set in eBay’s online marketplace. 1:16cv-487,  ¶ 6. Defendant advertised and sold sunglasses that it described in its
product listings as “Vintage 1980’s Wayfarer Fashion Sunglasses Dark Lens Black
Oakley is a wholly-owned subsidiary of Luxottica, and any distinction between the two
companies is immaterial to the present motion.
Bracketed numbers refer to entries on the district court docket. Citations to the Luxottica
Group S.p.A v. Li docket are designated 1:16-cv-487, [docket number]. Citations to the
Richemont International SA v. Liang docket are designated 1:16-cv-1227, [docket number].
The relevant facts are taken from defendant’s responses to plaintiffs’ LR 56.1 statements
(1:16-cv-487, ; 1:16-cv-1227, ) and plaintiffs’ responses to defendant’s LR 56.1
statements of additional facts (1:16-cv-487, ; 1:16-cv-1227, ). In both cases,
defendant objects only to the respective plaintiff’s use of the term, “counterfeit,” seemingly
because of an implication that defendant’s infringement was willful, but does not cite to any
admissible evidence supporting its objection or claim that the marks were not identical.
Because defendant does not properly controvert any of plaintiffs’ factual statements, those
facts are considered undisputed. Plaintiffs in turn object to defendant’s entire statement of
additional facts in each case, primarily because plaintiffs believe the affidavit upon which
each fact relies is not based on the affiant’s personal knowledge. The documents, in each
case titled “Affidavit of John Z. Sun,” have not been notarized, but they each state that
their contents are true under penalty of perjury pursuant to 28 U.S.C. § 1746. See 1:16-cv487, [84-1] at 2; 1:16-cv-1227, [58-1] at 2. Plaintiffs note that the documents also include the
statement, “To the best of my knowledge, all facts in the response to the Plaintiff’s Motion
for Summary Judgment attached are true and correct.” 1:16-cv-487, [84-1] ¶ 15; 1:16-cv1227, [58-1] ¶ 15. Plaintiffs argue that this qualified statement implies that Mr. Sun does
not have personal knowledge of the facts stated. That argument is unpersuasive. Mr. Sun is
the director of STRADE Fareast Limited, the company that operates the internet stores (see
1:16-cv-487, [84-1] ¶ 1; 1:16-cv-1227, [58-1] ¶ 1), and it makes sense that the company
policy and conduct to which he attests would be within his personal knowledge.
Frame Unisex,” “Fashion Sunglasses Wayfarer Style Black Frame w/ Dark Lens
Retro Square Glasses,” and “Vintage 1980’s Wayfarer Fashion Sunglasses Dark
Lens Black Frame Mens Womens,” using the eBay seller IDs dealsgoing, sfcdirect,
and uptogethertek, respectively. 1:16-cv-487,  ¶¶ 2–4. Defendant listed the
sunglasses for a few dollars each, and offered to sell and ship the sunglasses to
potential customers throughout the United States, including Illinois. 1:16-cv-487,
 ¶¶ 2–4. Luxottica had not authorized or licensed defendant to use its Wayfarer
trademark. 1:16-cv-487,  ¶ 5.
Plaintiff Van Cleef & Arpels SA holds valid trademarks in a four-leaf-clover
design, known as the Alhambra trademarks and registered with the United States
Patent and Trademark Office under the numbers 4,037,174 and 4,653,258. 1:16-cv1227,  ¶ 1. Defendant operates the eBay online marketplace account
royalwaytrade. 1:16-cv-1227,  ¶ 3. Through that store, defendant offered for sale
and sold earrings that it described as “2x 1 Black Four Leaf Clover White Pearl
Stud Earrings Ear Studs,” but which bore counterfeit versions of the Alhambra
trademarks. Plaintiff had not authorized or licensed defendant to use its
trademarks. 1:16-cv-1227,  ¶ 3. Defendant listed the earrings for $6.05 CAD
(but said it also accepted payment in U.S. dollars), and offered to sell and ship the
earrings to potential customers throughout the United States, including Illinois.
1:16-cv-1227,  ¶¶ 2, 4.
Defendant sold the sunglasses and earrings despite having some procedures
in place designed to avoid listing or selling infringing products. 1:16-cv-487,  ¶ 8;
1:16-cv-1227,  ¶ 6. For example, defendant sells only unbranded merchandise,
and employees are instructed to cross-reference product listings against an internal
trademark database, as well as trademark databases maintained by the United
States Patent and Trademark Office and others. 1:16-cv-487,  ¶ 8; 1:16-cv-487,
[84-1] ¶¶ 3–4; 1:16-cv-1227,  ¶ 6; 1:16-cv-1227, [58-1] ¶¶ 3–4. If an item is found
to be potentially infringing, or if complaints of infringement are received, the item is
delisted. 1:16-cv-487, [84-1] ¶ 5; 1:16-cv-1227, [58-1] ¶ 5. Upon receiving notice of
these lawsuits, defendant immediately removed the product listings at issue. 1:16cv-487,  ¶ 10; 1:16-cv-1227,  ¶ 8.
In both cases, plaintiffs seek summary judgment on their federal claims of
trademark infringement and counterfeiting under 15 U.S.C. § 1114 and false
designation of origin under 15 U.S.C. § 1125(a), and their Illinois claim, based on
the same conduct, under the Illinois Uniform Deceptive Trade Practices Act, 815
ILCS § 510/1 et seq. To succeed on those claims, plaintiffs must show that the
trademarks are protectable and that defendant’s unauthorized use creates a
likelihood of confusion among consumers as to the source, affiliation, connection, or
sponsorship of defendant’s products. CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d
660, 673–74 (7th Cir. 2001); Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d
947, 957 (7th Cir. 1992) (“The ‘keystone’ of trademark infringement is ‘likelihood of
confusion’ as to source, affiliation, connection or sponsorship of goods or services
among the relevant class of customers and potential customers.”). That standard
applies to both the federal trademark claims and the state-law claims. See Schutt
Mfg. Co. v. Riddell, Inc., 673 F.2d 202, 207 (7th Cir. 1982); Tarin v. Pellonari, 253
Ill.App.3d 542, 551 (1st Dist. 1993).
The Wayfarer Trademark
Defendant concedes that the Wayfarer trademark is valid and incontestable,
that Luxottica has the exclusive right to use the trademark in commerce, and that
defendant used it without authorization to sell its goods. Defendant does not
respond to Luxottica’s assessment of the likelihood of confusion, but because
defendant does dispute liability, this element will be briefly addressed. Courts
employ a seven-factor test to determine likelihood of confusion: “(1) the similarity
between the marks in appearance and suggestion; (2) the similarity of the products;
(3) the area and manner of concurrent use; (4) the degree of care likely to be
exercised by consumers; (5) the strength of the plaintiff’s mark; (6) any evidence of
actual confusion; and (7) the intent of the defendant to ‘palm off’ his product as that
of another.” Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 2015), cert. denied,
136 S.Ct. 801 (2016). No single factor is dispositive, but factors (1), (6), and (7) are
especially important. Id. Whether likelihood of confusion exists is generally a
question of fact, but may be resolved on summary judgment “if the evidence is so
one-sided that there can be no doubt about how the question should be answered.”
CAE, 267 F.3d at 677 (quoting Door Sys., Inc. v. Pro–Line Door Sys., Inc., 83 F.3d
169, 173 (7th Cir.1996)). Luxottica provides sufficient evidence to clear that bar,
leaving no doubt that a likelihood of confusion exists among consumers.
For example, Luxottica submits evidence showing that defendant used an
identical mark in connection with the same type of product (sunglasses). Given that
defendant placed the mark in the title of the product listing, where a consumer
might expect to find a brand name, consumers would be likely to attribute both
defendant’s products and genuine Luxottica products to the same source. Luxottica
also provides evidence that both it and defendant sell their products online and to
the same general audience (those who search for sunglasses online), who do not
have the ability to inspect the physical products before purchase. This supports a
finding that there is a likelihood of confusion, because “[t]he more widely accessible
and inexpensive the products and services, the more likely that consumers will
exercise a lesser degree of care and discrimination in their purchases.” Sorensen,
792 F.3d at 730 (quoting CAE, 267 F.3d at 683)). And Luxottica submits evidence,
including articles and advertisements from various news and fashion publications,
that the Wayfarer brand is well-known and well-regarded, which is relevant to the
fifth factor of the test. See Sorensen, 792 F.3d at 731 (“A mark’s strength ordinarily
corresponds to its economic and marketing strength.”). Given the undisputed facts
of this case, no reasonable jury looking at the factors weighed together would find in
defendant’s favor on this issue.
While defendant does not dispute likelihood of confusion, it does argue that
its use of the Wayfarer mark constitutes descriptive fair use under 15 U.S.C.
§ 1115(b)(4), which provides that a defendant in a trademark infringement action
may invoke the affirmative defense of fair use by showing that the alleged
infringement “is a use, otherwise than as a mark . . . which is descriptive of and
used fairly and in good faith only to describe the goods or services of such party.”
The defense “is based on the principle that no one should be able to appropriate
descriptive language through trademark registration.” Sorensen, 792 F.3d at 722
(quoting Packman v. Chi. Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001)). “To
prevail on a fair use defense, a defendant must show that: (1) it did not use the
mark as a trademark; (2) the use is descriptive of its goods or services; and (3) it
used the mark fairly and in good faith.” Id.
Defendant argues that it satisfies all three elements because the word
“wayfarer” is used so frequently by “internet retailers that it is common parlance to
describe the shape of sunglasses.” 1:16-cv-487,  at 8. Defendant points out that
the term appears in product listings posted by numerous other sellers in eBay’s
online marketplace, as well as two third-party sellers on Wal-Mart’s website. It also
submits as supporting evidence excerpted screenshots of eBay’s website to show
that eBay allows consumers to filter listings for sunglasses by style, and includes
“Wayfarer” in a prepopulated list of styles. According to defendant, it used the term
in the product description to reflect the style category it thought appropriate.
Luxottica disputes the authenticity of the screenshots, because they do not contain
any eBay logos or internet addresses that show they are from eBay’s website. And
Luxottica submits evidence of its own, showing that eBay does not include
“Wayfarer” among its style categories for sunglasses. Also, defendant is careful not
to say that it actually chose the style category “Wayfarer” when listing the products,
and Luxottica provides screenshots indicating that two of the products appear in
the style category “Square,” and one product does not have a style category at all.
See 1:16-cv-487, [72-2] at 6; 1:16-cv-487, [72-3] at 6; 1:16-cv-487, [72-4] at 6.
Luxottica thinks defendant is using misleading screenshots, while defendant
suggests that the discrepancy is due to differences in eBay’s procedures by country,
since it accessed eBay from Hong Kong and plaintiffs’ screenshots were generated in
the United States. But even if eBay did include “Wayfarer” in its list of sunglasses
styles presented to Hong Kong residents, defendant does not provide sufficient
evidence in support of its argument to preclude summary judgment.
Defendant’s descriptive fair use argument fails primarily because it cannot
establish that the word “wayfarer” constitutes a descriptive term applicable to the
shape of sunglasses. “A descriptive term ordinarily names a characteristic of a
product or service.” Sorensen, 792 F.3d at 724. And the test of descriptiveness is
“one of consumer perception—how is [the term] perceived by the average
prospective consumer?” Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d
947, 953 (7th Cir. 1992) (quotation and emphasis omitted). Defendant relies on
Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995), which
held that the use of “sweet-tart” as a description of a product’s flavor was protected
by the fair use doctrine, but only after noting that the words “sweet” and “tart” were
words of description in ordinary English and that “sweet-tart” was in common usage
at the time. Defendant’s only evidence of “wayfarer” being descriptive of its products
is eBay’s usage of the term and the fact that other online retailers advertise their
sunglasses using the same term. Defendant provides no evidence of consumer
perception, dictionary definitions, or usage by manufacturers or in the media.
Defendant’s evidence of other online retailers using the term does not absolve
defendant of its infringing activity as much as identify other potential infringers.
The word “wayfarer” does not describe any of the components or characteristics of
sunglasses, and based on the record, no reasonable juror would conclude otherwise.
Defendant’s argument that the word “wayfarer” is a commonplace term to
describe the shape of sunglasses seems more like an argument that Luxottica’s
mark has become generic, and therefore not entitled to trademark protection, than
a descriptive fair use argument. See Platinum Home Mortg. Corp. v. Platinum Fin.
Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998). But defendant does not explicitly raise
that argument, and it does not dispute the validity or incontestable status of
Luxottica’s mark or argue that the mark is unenforceable or subject to cancellation,
which it would if it could prove genericness. See TE–TA–MA Truth Found.–Family
of URI, Inc. v. World Church of Creator, 297 F.3d 662, 665 (7th Cir. 2002). Thus,
defendant’s fair use defense fails, and Luxottica’s motion for summary judgment is
The Alhambra Trademarks
With respect to the Alhambra marks, defendant concedes liability and raises
no affirmative defenses. Instead, defendant limits its arguments to a request for
minimal damages to be awarded under 15 U.S.C. § 1117(c). Because the parties’
only dispute relates to the amount of damages that should be awarded to plaintiff,
summary judgment is granted with respect to plaintiff Van Cleef’s claims.
In both actions, plaintiffs argue that defendant engaged in willful
infringement, and they seek an award of statutory damages in the amount of at
least $90,000 each. Under § 1117(c)(1), a plaintiff in a case involving the use of a
counterfeit mark may elect to recover an award of statutory damages in an amount
between $1,000 and $200,000 “per counterfeit mark per type of goods or services
sold, offered for sale, or distributed, as the court orders just.” 15 U.S.C. § 1117(c)(1).
And “if the court finds that the use of the counterfeit mark was willful,” the ceiling
for statutory damages is raised to $2,000,000 per mark per type of goods or services.
Id. § 1117(c)(2). Beyond providing a range of possible statutory damages awards,
the statute provides no guidance on determining the award amount. But the
analogous provision for statutory damages in copyright infringement cases, 17
U.S.C. § 504(c), is instructive. See Chi-Boy Music v. Charlie Club, Inc., 930 F.2d
1224, 1229 (7th Cir. 1991). In Chi-Boy, the Seventh Circuit said that courts enjoy
wide discretion in awarding statutory damages and may consider factors such as
“the difficulty or impossibility of proving actual damages, the circumstances of the
infringement, and the efficacy of the damages as a deterrent to future copyright
infringement.” Id. (quoting F.E.L. Publications v. Catholic Bishop of Chi., 754 F.2d
216, 219 (7th Cir. 1985)). In cases of willful infringement, courts may design the
statutory damages award “to penalize the infringer and to deter future violations.”
Id. at 1230.
Defendant argues that plaintiffs should be awarded minimal damages,
primarily because the infringement was not willful. A defendant engages in willful
infringement if he knew that his conduct constituted infringement or if he acted in
reckless disregard of the owner’s rights. See Wildlife Exp. Corp. v. Carol Wright
Sales, Inc., 18 F.3d 502, 511–12 (7th Cir. 1994); see also Louis Vuitton S.A. v. Lee,
875 F.2d 584, 590 (7th Cir. 1989) (“Willful blindness is knowledge enough.”).
Knowledge may be inferred from the infringer’s conduct. Wildlife, 18 F.3d at 511.
Defendant argues that it did not know that it had listed infringing products, and
that, rather than recklessly disregarding the rights of others, it engages in proactive efforts to avoid infringement as a matter of company policy. In the Luxottica
action, defendant paints itself as an innocent infringer with over 20,000 products in
its inventory, who let one product (in each store) slip through the cracks of its
quality control system. Defendant makes the same argument in the Van Cleef
action, also admitting to just one offending sale. Defendant’s claim that the
infringement was accidental is undermined by the fact that two separate cases
involving different trademarks have been brought against it, and defendant admits
to its unauthorized use of those marks in both—defendant cannot credibly argue
that each case is an isolated event.
In both actions, plaintiffs argue that the infringed-upon marks are widely
recognized and associated exclusively with their owners, citing several newspaper
and magazine articles that showcase plaintiffs’ brands and products. They also
argue that defendant’s investigative efforts are insufficient, in part because the
evidence of those efforts consists only of vague and unsubstantiated statements
made by the director of STRADE Fareast Limited, the company that operates the
eBay stores. While the director, John Z. Sun, attests to the existence of employee
training sessions in intellectual property rights and of a company policy requiring
employees to avoid trademark infringement by checking product listings against
trademark databases, he provides no specific details of those practices. Defendant
does not submit any documentary evidence or detailed explanation of its training or
product-review practices, or an explanation of the efficacy or reasonableness of
those practices. It does not identify its suppliers or discuss any efforts to investigate
the sources of its goods. But even drawing all reasonable inferences in defendant’s
favor, the notion that defendant’s conduct conveys its deference to trademark
owners’ rights is undercut by the fact that plaintiffs’ trademarks are listed in the
USPTO trademark database. Luxottica argues that searching for “wayfarer” would
have revealed its trademark registration. And Van Cleef submits evidence showing
that searching the database for jewelry with a four-leaf-clover design, as the
earrings were described in the product listing, returns a list of 51 trademarks, the
17th being one of the Alhambra marks. 1:16-cv-487,  ¶ 2.
Defendant is familiar with intellectual property rights and aware of the
potential for infringement in its online stores. Given the nature of its industry, it
must do more than rely on the barebones procedures it currently has in place, which
may be effective in filtering out products bearing prominent logos but not much
else. While the evidence of willfulness is not overwhelming, the undisputed evidence
of the obviousness of the marks, the marks’ registration in a database that
defendant purports to search, and the affirmative, unauthorized use of the marks in
advertising the goods demonstrates that defendant “suspect[ed] wrongdoing and
deliberately fail[ed] to investigate,” evidencing willful blindness. Hard Rock Cafe
Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1149 (7th Cir. 1992). This
finding justifies a higher damages award, in order to penalize defendant and deter
Plaintiffs points out other factors that warrant high damages figures, as well.
They emphasize the high value of their trademarks and their brands’ recognition
around the world. They also argue that they have expended considerable effort and
expense to cultivate, maintain, and strengthen the value of the marks—they
registered them with the USPTO, engaged in advertising and marketing efforts,
and litigated against other trademark infringers. Defendant suggests that plaintiffs
could have done more to protect its marks, referring specifically to eBay’s Verified
Rights Owner program, a section of eBay’s website where trademark owners can
provide information on their intellectual property rights to buyers and sellers.
Defendant says Luxottica does not list “Wayfarer” among its brands on its Verified
Rights Owner page, but Luxottica notes that the page explicitly states that its list of
brands is non-exhaustive. And according to defendant, though Van Cleef is a
participant in the program, the link to Van Cleef’s section of the website leads to
another section of eBay’s website, written in German, that has nothing to do with
Van Cleef. Van Cleef disputes the authenticity of defendant’s evidence, which is an
excerpt of a screenshot of the German page and does not include a URL or access
date, and submits its own evidence that the website works. But none of this is
relevant, because defendant concedes that plaintiffs own the federally-registered
trademarks upon which defendant infringed, and defendant does not deny that the
brands are valuable or that plaintiffs have made other efforts to protect and
enhance those brands.
Defendant’s remaining arguments in favor of minimal damages are
unpersuasive. It claims that it only sells products through eBay, and that eBay
maintains sales records and makes the calculation of actual damages easy.
Defendant says it sold only one pair of earrings to Van Cleef’s investigator for $6.05
CAD, and that Van Cleef’s requested damages award would amount to a windfall. It
makes a similar argument in the Luxottica action, claiming to have sold just one
pair of sunglasses from each storefront. But plaintiffs note that defendant does not
submit any sales records to support its assessment of damages, and that
defendant’s representation of selling products only through eBay is false—
defendant’s PayPal account is also associated with the internet domain
www.suntekstore.com, through which it sells jewelry and sunglasses. Also,
Luxottica shows that the sales figures displayed on defendant’s eBay pages say that
49 pairs of the infringing sunglasses were sold. Because plaintiffs elected to recover
statutory damages rather than actual damages, they need not prove their actual
losses. But even putting aside any evidence of defendant selling multiple products
through multiple online sales platforms, defendant can reach a worldwide customer
base on eBay alone. Given that the proliferation of lower-quality counterfeit
products can harm a trademark owner’s brand and goodwill, that global exposure
makes plaintiffs’ actual losses difficult to calculate and reinforces the need to award
damages sufficient to deter similar conduct by defendant and others. Plaintiffs’
requested relief of $90,000 is well below the maximum damages amount allowed by
15 U.S.C. § 1117(c) for both willful and non-willful infringement, and is lower than
amounts awarded in other cases involving the online sale of counterfeit goods. See,
e.g., Bulgari, S.P.A. v. Zou Xiaohong, No. 1:15-CV-05148, 2015 WL 6083202, at *4
(N.D. Ill., Oct. 15, 2015) (awarding $100,000 for one mark); Luxottica USA LLC v.
The Partnerships, et al., No. 1:14-CV-9061, 2015 WL 3818622, at *5 (N.D. Ill. June
18, 2015) (awarding $150,000 for three marks); Brown v. Walker, No. 1:06-CV-218,
2010 WL 2346242, at *7 (N.D. Ind. May 25, 2010), report and recommendation
adopted as modified, No. 1:06-CV-218-TLS, 2010 WL 2346225 (N.D. Ind. June 9,
2010) (awarding $150,000 for three marks); Burberry Ltd. & Burberry USA v.
Designers Imports, Inc., No. 07 Civ. 3997 (PAC), 2010 WL 199906, at *11 (S.D.N.Y.
Jan. 19, 2010) (awarding $100,000 per mark per type of good for a total of
$1,500,000); Deckers Outdoor Corp. v. Does 1–55, No. 1:11-CV-00010, 2011 WL
4929036, at *5 (N.D. Ill. Oct. 14, 2011) (awarding $750,000 per mark).
Considering the purposeful infringement, the value of plaintiffs’ brands,
plaintiffs’ efforts in promoting and protecting their brands, and defendant’s ability
to reach a vast customer base over the internet, a high award is necessary to
compensate plaintiffs, penalize defendant, and deter future infringement. But there
is no evidence to suggest that defendant is a large-scale counterfeiter or that
plaintiffs suffered substantial harm. Defendant also presented some evidence of its
efforts to minimize its infringing activities, inadequate as they may be. These
factors mitigate defendant’s infringement to some degree, and I conclude that, in
each case, $60,000 is a sufficient award of statutory damages.
In addition to a statutory damages award, Luxottica and Van Cleef request
that defendant be permanently enjoined from advertising, offering for sale, and
selling products that bear counterfeit Wayfarer and Alhambra trademarks,
respectively, or otherwise violating plaintiffs’ rights in those marks. Defendant does
not address those requests, and plaintiffs meet the standard for obtaining
permanent injunctions. Plaintiffs have established irreparable harm—the confusion
caused by counterfeit products in the stream of commerce damages the value of the
brands and cannot be compensated by money alone. See Re/Max North Cent., Inc. v.
Cook, 272 F.3d 424, 432 (7th Cir. 2001). The balance of hardships favors plaintiffs,
because defendant would suffer no harm from being enjoined from violating the law.
And eliminating potential consumer confusion is in the public’s interest. In both
actions, the requests for injunctive relief are therefore granted.
Attorney’s Fees and Costs
Finally, plaintiffs seek recovery of their attorney’s fees and costs. As the
prevailing parties, plaintiffs are entitled to costs. Fed. R. Civ. P. 54(d)(1). Attorney’s
fees are recoverable under 15 U.S.C. § 1117(a) “in exceptional cases,” including
when defendant’s conduct is willful. BASF Corp. v. Old World Trading Co., 41 F.3d
1081, 1099 (7th Cir. 1994). In assessing damages under § 1117(a), courts “shall”
award reasonable attorney’s fees in cases involving the intentional use of a
counterfeit mark, unless they find extenuating circumstances. 15 U.S.C. § 1117(b).
“Willful blindness is sufficient to trigger the mandatory provisions of [§ 1117(b)].”
Hard Rock Cafe, 955 F.2d at 1151. Attorney’s fees are available when plaintiffs opt
to receive statutory damages under 15 U.S.C. § 1117(c), as well. See Louis Vuitton
Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 111 (2d Cir. 2012). Defendant does not
identify any extenuating circumstances that would preclude the awarding of
attorney’s fees, and its reliance on Nightingale Home Healthcare, Inc. v. Anodyne
Therapy, LLC, 626 F.3d 958 (7th Cir. 2010), which does not involve the use of a
counterfeit mark or § 1117(b), does not help it. Accordingly, reasonable attorney’s
fees and costs shall be awarded to plaintiffs.
Luxottica’s motion for summary judgment, 1:16-cv-487, , is granted. Van
Cleef’s motion for summary judgment, 1:16-cv-1227, , is also granted. In each
action, a permanent injunction shall issue, and statutory damages in the amount of
$60,000, reasonable attorney’s fees, and costs shall be awarded. Plaintiffs shall
submit proposed judgment orders that are consistent with this decision, and shall
comply with Local Rules 54.1 and 54.3 on their petitions for costs and fees.
Manish S. Shah
United States District Judge
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