Crossfit, Inc. v. Columbus Crossfitness, LLC et al

Filing 27

MEMORANDUM OPINION re 26 Judgment. Signed by Senior Judge Glen H. Davidson on 6/16/14. (rel)

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF MISSISSIPPI

ABERDEEN DIVISION

CROSSFIT, INC.
v.

PLAINTIFF
CIVIL ACTION NO. 1:13-cv-00144-GHD-DAS

COLUMBUS CROSSFITNESS, LLC;

CHANCE WIYGUL; and JOHN DOES 1-25

DEFENDANTS

MEMORANDUM OPINION GRANTING
DAMAGES, ATTORNEY'S FEES, AND COSTS TO PLAINTIFF
On August 6, 2013, Plaintiff filed this action against Defendants, asserting the following
claims under the Lanham Act, 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq.: [1] trademark
infringement (15 U.S.C. § 1114(1)(a»; [2] false designation of origin (15 U.S.C. § 1125(a»; [3]
a violation of the Anticybersquatting Consumer Protection Act ("ACPA") (15 U.S.C. § 1125(d»;
and [4] trademarkdilution(15U.S.C. § 1125(c». SeePL'sCompl. [1].

On August 15,2013,

Plaintiff personally served its summons and complaint upon Defendant Chance Wiygul
individually, and served Defendant Columbus Crossfitness, LLC by and through its registered
agent Chance Wiygul. Neither Defendant filed an answer or otherwise responded to Plaintiffs
complaint or the motion for default judgment. Thus, the Court granted Plaintiffs motion for
default judgment and for permanent injunction. See Ct.'s Order [16] & Mem. Op. [17] Granting
Mot. Default J. & Permanent Injunction. The Court deferred ruling on the amount of damages,
attorney's fees, and costs, finding that such damages, attorney's fees, and costs were neither
sums certain nor sums that could be made certain by computation, and thus, that a hearing was
necessary as provided by Rule 55(b)(2) of the Federal Rules of Civil Procedure. Accordingly, a
hearing to determine damages, attorney's fees, and costs was held on May 29,2014. Defendants
failed to appear. Subsequent to the hearing, Plaintiff requested and was granted leave to file
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amended affidavits and documentation supporting its request for damages, attorney's fees, and
costs, on the ground that the earlier requests had mathematical errors. Upon due consideration,
the Court finds as follows:
Defendants, by failing to answer or otherwise respond to Plaintiffs complaint, have
admitted the well pleaded allegations of the complaint and are precluded from contesting the
established facts on appeal. Nishimatsu Constr. Co. v. Houston Nat 'I Bank, 515 F.2d 1200, 1206
(5th Cir. 1975) (citations omitted). According to Plaintiffs allegations, which the Court must
accept as true, Plaintiff has developed a revolutionary fitness training regimen that it

license~

to

affiliates who have received appropriate particularized training and a certificate from Plaintiff.
Defendants offered fitness training services under the names "CrossFitness" and "CrossFitness
2411" to offer and promote their services, despite that neither Defendant is a CrossFit affiliate

and CrossFit has never authorized Defendants' use of the CrossFit Marks or infringing terms.
Defendants offer services on the Internet through its website and Facebook page which describe
Defendants' exercise programs by using the infringing terms. Defendants' use of the infringing
terms created the false impression that Defendants are licensed CrossFit affiliates and/or certified
CrossFit trainers, which created consumer confusion. In sum, Defendants have violated the
previously stated provisions of the Lanham Act.

A. Damages
In the complaint, Plaintiff requested the following damages award:
(a) an amount equal to the actual damages suffered by [Plaintiff]
as a result of the infringement of its proprietary trademark and
in excess of$100,000;
(b) an amount equal to the profits earned by Defendants as a result
of their infringement;
(c) an amount equal to three times the monetary award assessed in
view of Defendants' willful and wanton infringement;

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(d) in the alternative as may be elected by [Plaintiff], pursuant to
Lanham Act Section 35, 15 U.S.C. § llI7(c), statutory
damages for each of Defendants' willful acts of infringement;
(e) pre-judgment interest and post-judgment interest; [and]
(I) an award of punitive damages for intentional and willful acts[.]
Pl.'s CompI. [1] at 11.
In its motion for default judgment and in the hearing, Plaintiff concedes that it cannot
precisely calculate its actual damages and Defendants' profits resulting from Defendants'
unlawful infringement of Plaintiff's mark.

However, Plaintiff believes that a conservative,

reasonable estimate of profits and treble damages, given the willful conduct of the Defendants, is
$61,131.80, as Plaintiff asserts that Defendants' past and ongoing conduct is damaging to
Plaintiff's reputation and goodwill, and further supports the requested amount. See Pl.'s Mem.
Br. Supp. Mot. Default J. [14] at 23.
Under the Lanham Act, actual damages may include injury to Plaintiff's goodwill and
business reputation.

15 U.S.C. § 1125(c). Courts have discretion to award damages for a

violation of the Lanham Act up to three times the amount of actual damages.

15 U.S.C. §

1117(a). The Fifth Circuit recognizes that "[g]reat latitude is given [to] the district court in
awarding damages under the Lanham Act." Martin's Herend Imports, Inc. v. Diamond & Gem

Trading USA, Co., 112 F.3d 1296, 1304 (5th Cir. 1997). Furthermore, the Fifth Circuit notes
that enhancement of a damages award "could, consistent with the 'principles of equity' [ ],
provide proper redress to an otherwise undercompensated plaintiff where imprecise damage
calculations fail to do justice, particularly where the imprecision results from defendant's
conduct.' " Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1127 (5th Cir. 1991).

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The Court finds that the amount requested is reasonable and provides proper redress to
Plaintiff, especially given that damages cannot be ascertained precisely in large part because of
Defendants' unwillingness to participate in this litigation.

B. Attorney's Fees and Costs
Plaintiff sought reasonable attorney's fees in the complaint for an "exceptional" case
under 15 U.S.c. § 1117; Plaintiff also sought an award of attorney's fees and costs. See Pl.'s
Compi. [1] at 11. With its motion for default judgment, Plaintiff submitted an affidavit for the
amount of attorney's fees and costs incurred to prosecute this case. At the hearing, Plaintiff
submitted billing invoices showing additional fees and costs incurred since that time to prepare
for the hearing. Subsequent to the hearing, Plaintiff submitted amended affidavits with billing
invoices correcting mathematical errors in the original affidavits.
The Lanham Act gives this Court the discretion to award attorney's fees to the prevailing
party in "exceptional" cases. See 15 U.S.C. § 1117(a). The Fifth Circuit has acknowledged that
"the exceptional case is one in which the defendant's trademark infringement can be
characterized as 'malicious,' 'fraudulent,' 'deliberate,' or 'willful.' " Tex. Pig Stands, Inc. v.

Hard Rock Cafe Int'l, Inc., 951 F.2d 684, 697 (5th Cir.1992). As stated above, because Plaintiff
has prevailed on default, we accept the allegations in its complaint as true. Plaintiff alleges that
Defendants willfully and deliberately committed trademark infringement. Further, Defendants
have completely disregarded this litigation by failing to appear; courts have found that that factor
can make a case "exceptional" under the Lanham Act and merit an award of attorney's fees. See

T-Mobile USA Inc. v. Shazia & Noushad Corp., No. 3:08-CV-00341, 2009 WL 2003369, at *4
(N.D. Tex. July 10, 2009) (citing Philip Morris USA, Inc. v. Castworld Prods., Inc., 219 F.R.D.
494, 502 (C.D. Cal. 2003)).

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The Fifth Circuit uses the "lodestar" method to calculate reasonable attorney's fees,
which is calculated by mUltiplying the number of hours spent on the matter by a reasonable
hourly rate for such work in the community. Heidtman v. County of El Paso, Tex., 171 F.3d
1038, 1043 (5th Cir. 1999). The Court may raise or lower the lodestar amount based on the
weight of twelve factors set forth in Johnson v. Ga. Highway Express, 488 F.2d 714, 717-19 (5th
Cir. 1974).

The lodestar award may not be adjusted if the Johnson factors were already

considered when determining the original lodestar amount. Id.
The Fifth Circuit requires that the claimants establish a reasonable hourly rate and the
total numbers of hours expended on this litigation, or otherwise establish by particular methods
of building or calculation the requisite evidence of reasonable and necessary attorney's fees. An
affidavit from a responsible attorney may set out these details sufficiently. In this case, Plaintiff
has filed two affidavits: one by counsel Nancy Siples Brumbeloe [25-1] and one by counsel
Christina G. Bobb [25-3].
Nancy Brumbeloe has set forth in her affidavit that based on 54.8 hours of work, billed at
the hourly rate of$175 for a law firm partner, for a total of $9,590; 2 hours of work, billed at the
hourly rate of $150 for a law firm associate, for a total of $300; and .8 hour of work, billed at the
hourly rate of $100 for a law firm paralegal, for a total of $80, the total attorney's fees by local
counsel were $9,970. See Brumbeloe Aff. [25-1] ~ 3. These attorney's fees are also itemized on
an attached invoice.

See Daniel, Coker, Horton & Bell, P.A. Invoice [25-2] at 2-9.

The

Brumbe10e affidavit further sets forth that Plaintiff incurred $307.86 in expenses, Brumbeloe
Aff. [25-1]

~

3, which are itemized on an attached invoice, see Daniel, Coker, Horton & Bell,

P.A. Invoice [25-2] at 1,9.

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Christina Bobb has set forth in her affidavit that based on 23.1 hours billed at the hourly
rate of $250 for a law finn associate in California, 3 hours billed at the hourly rate of $360 for a

specialized law finn partner in California, .3 hour billed at the hourly rate of $450 for a

. specialized law finn partner in California, and 1.5 hours billed at the hourly rate of $395 for a

specialized law finn partner in California, the total attorney's fees by California counsel were

$7,582.50. See Bobb Aff. [25-3] ~ 2. These attorney's fees are also itemized on an attached

invoice. See Higgs Fletcher & Mack, LLP Client Detailed Time & Expense Report [25-4] at 1­
5. Bobb's affidavit also sets forth that Plaintiff incurred $8,342.20 in litigation costs, comprised
of filing and service fees. See Bobb Aff. [25-3]

~

3. These costs are also itemized on the

attached invoice. See Higgs Fletcher & Mack, LLP Client Detailed Time & Expense Report [25­
4] at 3-5.
Therefore, Plaintiff requests $9,970 in attorney's fees for local counsel and $7,582.50 in
attorney's fees for California counsel, totaling $17,552.50 in attorney's fees overall.

And

Plaintiff requests $307.86 in costs for local counsel and $8,342.20 in costs for California counsel,
totaling $8,650.06 in costs overall. The Court finds that this amount of attorney's fees and costs
is warranted.

C. Conclusion
In sum, the Court, having considered all the evidence and the pleadings in this cause,
having heard the argument of counsel, and otherwise being advised in the premises, hereby
enters judgment against Defendants Columbus Crossfitness, LLC and Chance Wiygul, jointly
and severally, in the amount of Sixty One Thousand Three Hundred Eighty One and 80/100
Dollars ($61,381.80), with attorney's fees in the amount of Seventeen Thousand Five Hundred
Fifty-Two and 50/100 Dollars ($17,552.50) and costs in the amount of Eight Thousand Six

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Hundred Fifty and 6/100 Dollars ($8,650.06), for a total judgment in favor of Plaintiff Crossfit,
Inc. of Eighty Seven Thousand Five Hundred Eighty-Four and 3611 00 Dollars ($87,584.36).
An order in accordance with this opinion shall issue this day.

THIS, the

I b~ay of June, 2014.
SENIOR JUDGE

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