Anytime Fitness, LLC v. Roberts et al
Filing
19
ORDER granting 9 Motion for Default Judgment (Written Opinion). Signed by Judge Susan Richard Nelson on 4/23/13. (LPH)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Case No. 12-CV-02913-SRN-JJG
Anytime Fitness, LLC,
Plaintiff,
ORDER GRANTING ANYTIME
FITNESS, LLC’S MOTION FOR
ENTRY OF DEFAULT JUDGMENT
v.
Michael Roberts and MRA
Enterprises,
Defendants.
The above-entitled action came on for hearing before the undersigned on April 10,
2013, pursuant to Plaintiff Anytime Fitness, LLC’s Motion for Entry of Default Judgment
[Doc. No. 9] against Defendants Michael Roberts and MRA Enterprises. Glenna L.
Gilbert, Esq. appeared on behalf of the Plaintiff. The Defendants have not answered the
Complaint or otherwise defended in this action.
Based upon all of the files, records, and proceedings herein and the arguments of
counsel, the Court being duly advised in the premises now makes the following:
FINDINGS OF FACT
1.
Plaintiff Anytime Fitness, LLC (“Anytime Fitness”) personally served
Defendants Michael Roberts and MRA Enterprises (collectively, “Defendants”) with a
copy of the Summons and Complaint on November 27, 2012 when it personally served
Michael Roberts, individually and as owner of MRA Enterprises.
1
2.
Defendants have failed to answer, plead, or otherwise respond to Anytime
Fitness’s Complaint.
3.
The Clerk of Court entered default against Defendants on December 28,
4.
Anytime Fitness provides a service that enables its franchisees and
2012.
employees to access electronic mail offered over the Internet.
establishes
email
accounts
for
its
franchisees
and
Anytime Fitness
employees
under
the
anytimefitness.com domain name. Users can send and receive emails through their email
accounts. The majority of Anytime Fitness’s franchisees use their Anytime Fitness email
accounts as their primary tool for communicating via the Internet with their respective
customers, prospective customers, vendors and other businesses, and Anytime Fitness’s
corporate offices.
5.
Between May 2011 and June 2012, Defendants sent at least 8,337
unsolicited commercial email messages to Anytime Fitness franchisees and employees
that use Anytime Fitness’s email service (“Defendants’ unsolicited commercial email
messages”).
6.
None of Defendants’ unsolicited commercial email messages contained a
clear and conspicuous notice that they were advertisements.
7.
None of Defendants’ unsolicited commercial email messages sent in the
months of May 2011, September 2011, October 2011, November 2011, January 2012,
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February 2012, March 2012, and June 2012 advised recipients of their right to opt out or
decline to receive further commercial messages from Defendants.
8.
None of Defendants’ unsolicited commercial email messages contained a
valid physical postal address for Defendants.
9.
Anytime Fitness is the sole owner and licensor of the ANYTIME FITNESS
trademark for health and fitness club services.
10.
Anytime Fitness has extensively and continuously used its ANYTIME
FITNESS trademark throughout the United States since 2002.
11.
The ANYTIME FITNESS trademark has been registered on the Principal
Register of the United States Patent and Trademark Office since February 10, 2004.
12.
Anytime Fitness is the sole owner and licensor of the trademark
(known as the “Running Man Logo”) for health and fitness club
services.
13.
Anytime Fitness has extensively and continuously used the Running Man
Logo trademark throughout the United States since 2002.
14.
The Running Man Logo trademark has been registered on the Principal
Register of the United States Patent and Trademark Office since October 2, 2007.
15.
Defendants repeatedly used the ANYTIME FITNESS trademark in
Defendants’ unsolicited commercial email messages to advertise and promote the
products and services offered by Defendants.
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16.
Defendants used the Running Man Logo trademark in its unsolicited
commercial email messages sent in May 2011 to advertise and promote Defendants’
products and services.
17.
Defendants used the ANYTIME FITNESS trademark in website postings
posted in July 2012, August 2012, and September 2012 that advertised Defendants’
products and services.
18.
None of Defendants’ uses of the ANYTIME FITNESS trademark and
Running Man Logo trademark were authorized by Anytime Fitness.
19.
Anytime Fitness sent a cease and desist letter to Defendants on May 24,
2011 (“first cease and desist letter”). The first cease and desist letter notified Defendants
that their use of the ANYTIME FITNESS trademark and the Running Man Logo
trademark constituted trademark infringement and demanded that Defendants
immediately terminate their use of Anytime Fitness’s trademarks.
20.
Anytime Fitness sent a second cease and desist letter to Defendants on
September 7, 2011 (“second cease and desist letter”). The second cease and desist letter
again notified Defendants of their trademark infringement and demanded that Defendants
permanently discontinue their use of Anytime Fitness’s trademarks.
21.
Anytime Fitness sent a third cease and desist letter to Defendants on
February 20, 2012 (“third cease and desist letter”). The third cease and desist letter
notified Defendants of their continued trademark infringement, unfair competition,
deceptive trade practices, and violations of the Can-Spam Act. The third cease and desist
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letter also notified Defendants that all users of the @anytimefitness.com email service
permanently opted-out of receiving any further commercial email messages from either
Defendant. Further, the third cease and desist letter demanded that Defendants stop their
unauthorized use of the Anytime Fitness trademarks and comply with the Can-Spam Act
and the opt-out.
22.
Defendants failed to comply or respond in any way to Anytime Fitness’s
cease and desist demands.
23.
Anytime Fitness is not aware of any commercially reasonable practices and
procedures designed by Defendants to effectively prevent violations of the Can-Spam
Act, nor have Defendants pleaded any such practices and procedures as a defense.
24.
Anytime Fitness has incurred $29,655.06 in attorneys’ fees and costs
related to this action and anticipates it will incur an additional $1,000 in attorneys’ fees in
preparing for and attending the oral argument on this motion.
CONCLUSIONS OF LAW
1.
Defendants were duly served with the Summons and Complaint on
November 27, 2012.
2.
Defendants failed to answer or otherwise respond to the Complaint.
3.
Pursuant to Rule 12 of the Federal Rules of Civil Procedure, the deadline
for Defendants to answer or otherwise respond to the Complaint expired 21 days after
Defendants were served with the Summons and Complaint.
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4.
Anytime Fitness is entitled to judgment by default against Defendants on
all counts pleaded in Anytime Fitness’s Complaint.
5.
15 U.S.C. § 7704(a)(5) makes it unlawful for any person to initiate the
transmission of any commercial electronic mail message to a protected computer unless
the message provides (i) clear and conspicuous identification that the message is an
advertisement or solicitation; (ii) clear and conspicuous notice of the opportunity under
paragraph (3) to decline to receive further commercial electronic mail messages from the
sender; and (iii) a valid physical postal address of the sender.
6.
Defendants’ unsolicited commercial email messages violated 15 U.S.C. §
7704(a)(5) of the Can-Spam Act by failing to contain: (1) a clear and conspicuous
identification that the message is an advertisement or solicitation; (2) a clear and
conspicuous notice of the opportunity to decline to receive further commercial electronic
mail messages from the sender; and (3) a valid physical postal address of the sender.
7.
A provider of an Internet access service adversely affected by violations of
particular provisions of the Can-Spam Act may bring a civil action.
15 U.S.C. §
7706(g)(1). An Internet access service is defined under Section 7702(11) of the CanSpam Act as “a service that enables users to access content, information, electronic mail,
or other services offered over the Internet, and may also include access to proprietary
content, information, and other services as part of a package of services offered to
consumers. Such term does not include telecommunications services.” Plaintiff provides
a service that enables its franchisees and employees to access email. (Decl. of Joe
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Kingland ¶2.) Plaintiff “created, maintains and operates the email service provided to its
franchisees and employees.” (Id. ¶ 3.) The Court finds that Plaintiff is an Internet access
service. See White Buffalo Ventures, LLC v. Univ. of Texas at Austin, 420 F.3d 366,
373 (5th Cir. 2005) (finding that University’s provision of email accounts and email
access brought it within the statutory definition of an Internet access service), cert.
denied, 546 U.S. 1091; Hypertouch v. Kennedy-Western Univ., No. C 04-05203 SI, 2006
WL 648688, at *3 (N.D. Cal. Mar. 8, 2006) (finding that the plaintiff, which operated
email servers and hosted over 120 email accounts, was an Internet access service); but
see Gordon v. Virtumundo, Inc., 575 F.3d 1040, 1051-52 (9th Cir. 2009) (finding that
individual plaintiff did not have standing under the Can-Spam Act as an Internet Access
service provider simply by registering a domain name and using an ordinary Internet
connection to set up email accounts).
8.
Plaintiff has demonstrated that it has been “adversely affected” by
Defendants’ violations of Section 7704(5)(A). 15 U.S.C. § 7706(g)(1). Counsel for
Plaintiff represents that due to the high volume of spam, Anytime Fitness has experienced
higher bandwidth utilization and a disruption in business relationships with Anytime
Fitness franchisees. (Tr. at 4, 10) See Hypertouch, 2006 WL 648688, at *4 (noting that
Hypertouch had shown an adverse effect from the spam messages by demonstrating that
high spam loads had led to decreased server response and crashes, higher bandwidth
utilization, and forced hardware and software upgrades).
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9.
Pursuant to Section 7706(g)(1)(B) of the Can-Spam Act, Anytime Fitness is
entitled to recover actual damages or statutory damages, whichever is greater, for
Defendants’ pattern or practice of repeatedly sending Defendants’ unsolicited
commercial email messages that violated Section 7704(a)(5) of the Can-Spam Act to
Anytime Fitness franchisees and employees. Under Section 7706(g)(3)(A) of the CanSpam Act, statutory damages equal the amount calculated by multiplying the number of
violations (with each separately addressed unlawful message that is transmitted or
attempted to be transmitted over the facilities of the provider of Internet access service, or
that is transmitted or attempted to be transmitted to an electronic mail address obtained
from the provider of Internet access service in violation of Section 7704(b)(1)(A)(i) of
this title, treated as a separate violation) by – (i) up to $100, in the case of a violation of
section 7704(a)(1) . . . or (ii) up to $25, in the case of any other violation of Section 7704
of this title. The violations at issue here fall under “any other violation of Section 7704,”
specifically, Section 7705(a)(5).
10.
Under Section 7706(g)(3)(A) of the Can-Spam Act, Plaintiff is entitled to
up to $25 per violation for Defendants’ violations of Section 7704(a)(5). Plaintiff has
submitted evidence that Defendants sent the following emails:
(1) One spam email on May 15, 2011 (Bauer Decl. ¶ 11, Ex. C to Bauer
Decl.);
(2) One spam email on September 5, 2011 (Bauer Decl. ¶ 14, Ex. E to
Bauer Decl.);
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(3) One spam email on October 10, 2011 (Bauer Decl. ¶ 17, Ex. G to Bauer
Decl.);
(4) One spam email on November 11, 2011 (Bauer Decl. ¶ 19, Ex. H to
Bauer Decl.);
(5) One spam email on January 30, 2012 (Bauer Decl. ¶ 21, Ex. I to Bauer
Decl.);
(6) 369 spam emails sent between February 21-23, 2012 (Kingland Decl. ¶
6, Ex. A to Kingland Decl.);
(7) 3,929 spam emails sent between February 28-29 and March 1, 2012
(Kingland Decl. ¶ 7, Ex. A to Kingland Decl.);
(8) 2,230 spam emails sent between May 29-30, 2012 (Kingland Decl. ¶ 10,
Ex. C to Kingland Decl.; and
(9) 1,804 spam emails sent between June 13-14, 2012 (Kingland Decl. ¶ 13,
Ex. E to Kingland Decl.)
11.
The number of emails sent by Defendants in violation of the Can-Spam Act
totals 8,337. Based on the statutory maximum of up to $25 per email multiplied by the
8,337 emails, 15 U.S.C. § 7706(g)(3)(A)(ii), Anytime Fitness is entitled to a base
damages award of $208,425.
12.
Pursuant to Section 7706(g)(3)(C) of the Can-Spam Act, at the court’s
discretion, an aggrieved Internet access service may obtain aggravated damages of up to
three times the amount of the base damages award if the court finds that the defendant
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willfully and knowingly committed a violation of Section 7704 (other than Section
7704(a)(1)). 15 U.S.C. § 7706(g)(3)(C). Plaintiff seeks trebled damages under this
provision. (Pl.’s Mem. Supp. Entry of Default J. at 12 [Doc. No. 11].) Plaintiff argues
that Defendants willfully and knowingly violated the Can-Spam Act by continuing to
send spam emails after Plaintiff had sent Defendants a cease and desist letter. (Id.)
13.
Exercising its broad discretion to determine an appropriate damages award,
the Court declines to award aggravated damages. While it appears that the spam emails
sent after the receipt of Plaintiff’s February 20, 2012 cease and desist letter demonstrate a
willful violation of the Can-Spam Act, the Court finds that an award in excess of the
statutory base damages amount is not proportionate to the gravity of Defendants’
conduct. See Facebook v. Fisher, No. C 09-05842 JF (PSG), 2011 WL 250395, at *2
(N.D. Cal. Jan. 26, 2011) (reducing the statutory award and declining to award treble
damages where the $2 billion requested damages award was not proportionate to the
gravity of the defendants’ acts); Facebook v. Wallace, No. C 09-798 JF(RS), 2009 WL
3617789, at *2-3 (N.D. Cal. Oct. 29, 2009) (reducing the statutory award and declining to
treble damages, even though finding a willful violation of the statute, a TRO, and a
preliminary injunction, because the requested amount was not proportionate to the
offenses). Rather, the Court finds that the statutory base damages award is sufficiently
deterrent and punitive, considering the number of emails in this case, and the fact that
Defendant did not send emails in violation of a court order or injunction. See Asis
Internet Servs. v. Rausch, No. 08-03186 EDL, 2010 WL 1838752, at *7 (N.D. Cal. May
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3, 2010) (declining to award statutory maximum for base damages because of
comparatively small number of emails – 24,724 – and because defendant did not violate
an injunction).
This decision is consistent with the approach taken by other courts
considering large treble damages awards in cases brought under the Can-Spam Act. See
Yahoo! Inc. v. XYZ Cos., 872 F. Supp.2d 300, 308-09 (S.D.N.Y. Dec. 5, 2011)
(collecting cases).
14.
Anytime Fitness has succeeded on the merits of its trademark infringement
claims.
15.
Anytime Fitness’s registrations with the United States Patent and
Trademark Office for the ANYTIME FITNESS trademark and the Running Man Logo
trademark (collectively, “Anytime Fitness trademarks”) conclusively establish that the
trademarks are valid and that Anytime Fitness owns the trademarks.
16.
There is a likelihood of confusion resulting from Defendants’ use of the
Anytime Fitness trademarks in that there is a real and continuing threat of mistake,
deception and confusion among consumers and franchisees as to the source, sponsorship
or approval of Defendants’ goods and services by Anytime Fitness.
17.
Anytime Fitness’s trademarks are inherently distinctive, as evidenced by
their registration on the Principal Register at the United States Patent and Trademark
Office.
18.
The ANYTIME FITNESS trademark is suggestive and the Anytime Fitness
Running Man Logo trademark could be classified as either fanciful or suggestive because
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the Anytime Fitness trademarks require thought, imagination and perception to reach a
conclusion as to the nature of the goods.
19.
The Anytime Fitness trademarks have amassed considerable strength over
more than a decade of continuous use in the United States.
20.
Defendants used trademarks in their unsolicited commercial emails and
website postings that are identical to the Anytime Fitness trademarks.
21.
There is a sufficient relationship in the competitive market between the
parties’ products, services, and activities for franchisees and consumers to mistakenly
assume that Anytime Fitness sponsors or is affiliated with Defendants’ promotion of
Defendants’ goods and services.
22.
Defendants demonstrated an intent to pass off their goods or services as the
product or service of another when they continued to infringe the Anytime Fitness
trademarks even after receiving three cease and desist letters from Anytime Fitness
notifying Defendants of their trademark infringement and demanding that Defendants
stop using the Anytime Fitness trademarks.
23.
It is unlikely that Anytime Fitness franchisees and the public will exercise a
substantial amount of care in procuring Defendants’ services and products, which
supports a finding of a likelihood of confusion among Anytime Fitness franchisees and
the consuming public. Defendants’ unsolicited commercial email messages containing
the Anytime Fitness trademarks offered marketing services to Anytime Fitness
franchisees at a low cost of $500 or less. Defendants’ website postings containing the
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Anytime Fitness trademarks offered free fundraisers and other inexpensive events to the
public.
24.
Anytime Fitness’s showing of a likelihood of consumer confusion
regarding the source of Defendants’ goods or services creates a presumption that
Anytime Fitness will suffer irreparable harm if Defendants are not permanently enjoined
from infringing the Anytime Fitness trademarks.
Moreover, Defendants “have
demonstrated a willingness to continue their activities” without regard for Plaintiff’s
cease and desist request. See Fisher, 2011 WL 250395, at *3 (awarding injunctive relief
in Can-Spam case where defendants ignored the plaintiff’s cease and desist requests and
the plaintiff expended resources to upgrade its security).
25.
The balance of hardships favors granting injunctive relief to Anytime
Fitness. Defendants will not suffer irreparable harm as a result of being forced to comply
with the law.
26.
The public interest is advanced by recognizing property rights in
trademarks and the public interest will be served by the avoidance of consumer confusion
in Anytime Fitness’s industry.
27.
Defendants violated the Can-Spam Act.
28.
Anytime Fitness’s reputation and goodwill will suffer irreparable harm if
the Court does not issue an injunction.
29.
Anytime Fitness is entitled to a permanent injunction enjoining Defendants
from violating the Can-Spam Act.
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30.
The Court, in its discretion, may award payment of the costs of this action,
including reasonable attorneys’ fees, against any party. 15 U.S.C. § 7706(g)(4). Plaintiff
seeks attorneys’ fees and costs in the amount of $30,655.06 and has submitted materials
supporting the reasonableness of its fees and costs in this matter. (Decl. of Glenna L.
Gilbert [Doc. No. 14]; Exs. A-C to Gilbert Decl.) Accordingly, Plaintiff is awarded
$30,655.06 for its attorneys’ fees and costs.
ORDER
IT IS HEREBY ORDERED:
1.
Anytime Fitness, LLC’s Motion for Entry of Default Judgment [Doc. No.
9] is GRANTED. Anytime Fitness, LLC (“Anytime Fitness”) shall have
judgment entered in its favor and against Defendants Michael Roberts and
MRA Enterprises on all of the claims set forth in Anytime Fitness’s
Complaint.
2.
Anytime Fitness is awarded statutory damages for Defendants’ violations
of the Can-Spam Act in the base amount of $208,425 against Defendants,
jointly and severally.
3.
Anytime Fitness is entitled to and shall have a permanent injunction entered
in its favor and against Defendants as follows:
(a)
Effective immediately, Defendants Michael Roberts and MRA
Enterprises and their respective agents, servants and employees, and
all persons acting in concert with either or both of the Defendants,
are hereby permanently restrained and enjoined from:
(i)
Sending or transmitting, or directing, aiding, facilitating or
conspiring with others to send or transmit any unsolicited
commercial e-mail to any e-mail account on the
@anytimefitness.com domain name;
(ii)
Using, or directing, aiding, or conspiring with others to use,
Anytime Fitness’s computers or computer networks, in any
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manner, directly or indirectly, in connection with the
transmission or transfer of any electronic information;
(iii)
Acquiring, compiling or transferring e-mail addresses that
contain an @anytimefitness.com domain;
(iv)
Directly and indirectly using the ANYTIME FITNESS Mark,
or any other word, name or design similar to Plaintiff’s
ANYTIME FITNESS Mark which is likely to cause
confusion, mistake, or to deceive;
(v)
Directly and indirectly using the Running Man Logo, or any
other word, name or design similar to Plaintiff’s Running
Man Logo which is likely to cause confusion, mistake, or to
deceive; and
(vi)
Representing by any means whatsoever, directly or indirectly,
or doing any other acts or things calculated or likely to cause
confusion, mistake or to deceive consumers and Anytime
Fitness’s employees, franchisees and licensees into believing
that there is any affiliation or connection between Plaintiff’s
services and products and either of the Defendant’s services
or products.
4.
This permanent injunction shall be effective immediately, and no bond
shall be required.
5.
Anytime Fitness is entitled to recover its attorneys’ fees and costs pursuant
to the Can-Spam Act, 15 U.S.C. § 7706(g)(4). Accordingly, Plaintiff is
awarded $30,655.06 for its attorneys’ fees and costs.
6.
Plaintiff is therefore awarded a total of $239,080.06, including attorneys’
fees and costs.
LET JUDGMENT BE ENTERED ACCORDINGLY.
BY THE COURT:
Dated: April 23, 2013
s/Susan Richard Nelson
Susan Richard Nelson
United States District Court Judge
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