Ronaldo Designer Jewelry, Inc. v. Prinzo

Filing 107

ORDER INCLUDING FINDINGS OF FACT AND CONCLUSIONS OF LAW re: hearing on damages of July 10, 2017. Signed by Honorable David C. Bramlette, III on 8/21/2017 (ECW)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
WESTERN DIVISION

RONALDO DESIGNER JEWELRY, INC.
v.

PLAINTIFF

CIVIL ACTION NO. 5:14-cv-73-DCB-MTP

PHILLIP PRINZO

DEFENDANT

MEMORANDUM OPINION AND ORDER
This cause came before the Court on a hearing on damages on
July 10, 2017.
Designer

Counsel and witnesses for the plaintiff Ronaldo

Jewelry,

defendant,

Inc.

Phillip

(“Ronaldo”)

Prinzo

appeared.

(“Prinzo”)

did

not

The
appear

pro

se

despite

having been advised of the hearing on several occasions.

The

Court now therefore makes the following findings of fact and
conclusions

of

law,

based

on

the

evidence

submitted

at

the

hearing:
FINDINGS OF FACT
Defendant Ronaldo filed its Verified Complaint in this case
alleging that Prinzo willfully infringed Ronaldo’s copyrights in
its

“Gold

Craft

Associates

Dealer

Handbook,”

“Gold

Craft

Fashions,” and “Gold Craft Associates Fall Catalog 2000” catalogs
and “The Power of Prayer Bracelet,” “Stackable Bracelet,” “THE
LOVE KNOT,” “The Tranquility Bracelet,” “The Angelina Bracelet,”
“The Spring Time Bracelet,” “I Love You,” “TRC-S297 Birthstone
Bracelet,” “Forever Fellowship Bracelet,” and the “Pearl of My
Heart” jewelry designs (collectively, the “Works” or “Ronaldo’s

Works”);

willfully

infringed

Ronaldo’s

“THE

POWER

OF

PRAYER”

BRACELET® trademark; willfully infringed Ronaldo’s “Kissing Roof”
clasp

design

trade

dress;

and

otherwise

engaged

in

unfair

competition and false advertising by representing to customers
that he was authorized to make and sell Ronaldo’s copyrighted
jewelry designs and jewelry incorporating Ronaldo’s proprietary
trade

dress.

photographic

Copies

of

Ronaldo’s

representations

of

copyrighted

its

jewelry

catalogs
designs

and
were

incorporated as Exhibits B, C, D, E, I, K, N, Q, T, W, Z, BB and
DD to the Verified Complaint [DE 2-1, 2-2, 2-3, 2-4, 2-5, 2-6, 27, 2-8, 2-9, 2-10, 2-16, 2-18, 2-21, 2-24, 2-27, 2-30, 2-33, 235, 2-37].

Photographic representations of Prinzo’s allegedly

infringing jewelry were incorporated as Exhibits F, J, L, O, R,
U, X, AA, CC, and EE to the Verified Complaint [DE 2-11, 2-17, 219,

2-22,

2-25,

2-28,

2-31,

2-34,

2-36,

2-38].

Prinzo

was

properly served and submitted a letter addressed to the Court [DE
27], which, by Order of the Court [DE 53] was deemed as Prinzo’s
Answer to the Verified Complaint.
On October 21, 2016, Ronaldo filed its Motion for Discovery
Sanctions [DE 83] and Motion to Hold Defendant in Contempt [DE
85], as well as corresponding Memoranda in support [DE 84 and
86].

On December 20, 2016, the Court granted in part and denied

in part Ronaldo’s Motion for Discovery Sanctions [DE 83] and
Motion to Hold Defendant in Contempt [DE 85], and entered an

2

Order [DE 93] ordering Prinzo to comply with various Court Orders
and produce certain discovery within ten (10) days or a default
judgment would be entered against him.
with

the

Court’s

Order

and,

on

Prinzo failed to comply

February

entered default against Prinzo [DE 98].
Ronaldo

filed

its

Motion

for

Summary

Memorandum in Support [DE 92].

3,

2017,

the

clerk

On November 30, 2016,
Judgment

[DE

91]

and

Ronaldo filed its Motion for

Default Judgment [DE 99] on February 10, 2017.

On May 10, 2017,

the Court entered its Order [DE 104] granting Ronaldo’s Motion
for Default Judgment [DE 99] and Motion for Summary Judgment [DE
91]

and,

thus,

found

Prinzo

liable

for

willful

copyright

infringement, willful trademark infringement, willful trade dress
infringement, unfair competition, and false advertising.
On July 10, 2017, the Court heard arguments and testimony
relating

to

damages.

The

Court

took

judicial

notice

of

the

evidence submitted with Ronaldo’s Motion for Summary Judgment [DE
91]

and

the

Memorandum

of

Support

[DE

92].

Ronaldo

also

presented the testimony of Ronaldo’s Executive Vice President,
Michael Scheser, and its expert W. Whitaker Rayner, who testified
as to the reasonableness of Ronaldo’s attorney fees and costs.
Damages Under the Copyright Act
For its claim for willful copyright infringement, Ronaldo
elected statutory damages and sought damages in the amount of
$30,000 per eligible infringement.

3

The Court finds that, of the

thirteen (13) copyrighted works infringed by Prinzo, four (4)
were registered within three (3) months of first publication or
prior

to

Prinzo’s

infringement

statutory

damages.

Ronaldo’s

and,

thus,

are

eligible

“Gold

Craft

Associates

for

Dealer

Handbook” jewelry design and catalog (Cert. of Reg. VA 1-140610/Suppl. Reg. VA 1-170-689) was registered effective as of
November 13, 2001.

See Cert. of Reg. [DE 2-1 - 2-7/92-1].

Ronaldo’s “Gold Craft Fashions” jewelry design and catalog (Cert.
of Reg. VA 1-125-963) was registered effective as of December 7,
2001.

See

Cert.

of

Reg.

[2-8/92-1].

Ronaldo’s

“Gold

Craft

Associates Fall Catalog 2000” jewelry design and catalog was
See Cert. of Reg.

registered effective as of December 7, 2001.
[2-9/92-1].

Ronaldo’s “The Spring Time Bracelet” (Cert. of Reg.

VA 1-858-088/ Suppl. Reg. VA 1-433-482) was first published on or
after

March,

2013

and

was

registered

effective as of April 26, 2013.

infringing

works

Complaint at ¶11 [DE 1].

in

three

months

See Verified Complaint at ¶49

[DE 1] and Cert. of Reg. [2-29/92-2].
Prinzo’s

within

November

Ronaldo first discovered
of

2011.

See

Verified

The invoices attached to Ronaldo’s

Motion for Summary Judgment show sales by Prinzo in that general
time

frame.

None

of

Prinzo’s

sales

occurred

registration of Ronaldo’s respective catalogs.

prior

to

See Appendix 13

to Mem. in Support of Mot. for Summ. Judg. [DE 92-13].

Prinzo at

no time submitted evidence of sales prior to the respective dates

4

of registration.
Ronaldo argued that enhanced statutory damages should be
awarded as a result of Prinzo’s willful copyright infringement.
The Court found Prinzo’s infringement was willful when summary
judgment on liability was granted.

The Court based this finding

on Prinzo’s knowledge of and past relationship with Ronaldo’s
predecessor-in-interest entity (See Mutual Release Agreement [923]); Prinzo’s deemed admission of intentional copying (See Req.
for

Admis.

Nos.

5-6

[92-4]

deemed

admitted

pursuant

to

the

Court’s October 3, 2016 Order [DE 80]); Prinzo’s actual admission
that the Mutual Release Agreement on which he allegedly relied
for justification did not, in fact, give him a right to copy (See
Prinzo Dep. at 71); Prinzo’s copying of Ronaldo jewelry designs
that were created after Prinzo’s relationship with Ronaldo ended
and to which the Mutual Release Agreement could not possibly
apply (See Verified Complaint at ¶¶ 9, 26, 40, 49, 57, 65 [DE 1]
and Certs. of Reg. for “The Power of Prayer Bracelet,”
Angelina Bracelet,” “TRC-S297 Birthstone Bracelet,”

“The

and “The

Spring Time Bracelet” [DE 92-2]); Prinzo’s use of the business
name

of

Ronaldo’s

predecessor-in-interest

entity

Catalogs and Invoices [92-5, 92-6, 92-9, 92-10].

(See

Prinzo

Compare Mutual

Release Agreement [92-3] granting Prinzo the right to use the
name “Gold Craft Fashions.”); the striking similarity of Prinzo’s
catalogs and jewelry designs to Ronaldo’s copyrighted catalogs

5

and jewelry designs and the sheer number of works copied by
Prinzo (See comparisons of catalogs [DE 92-1, 92-5, 92-6] and
comparison of works in Mot. for Summ. Judg. [DE 92]); and the
actual admission of Prinzo’s girlfriend, Janice Bintrim, that she
directly copied and manipulated pages from Ronaldo’s catalogs for
Prinzo to use in his own catalog (See Bintrim Dep. at 45-51).
The Court finds that enhanced damages are further justified by
Prinzo’s bad faith and obstructive conduct in this litigation,
which

are

detailed

in

the

Court’s

Order

[DE

93]

partially

granting the discovery sanctions and contempt finding requested
by

Ronaldo.

Prinzo’s

Prinzo’s

refusal

to

conduct

included,

participate

in

the

without

limitation,

discovery

process

or

produce records from which actual damages could be determined, as
well

as

the

inference

of

willfulness

from

Prinzo’s

ordered

default in this matter [DE 104].
Damages Under the Lanham Act
For its claims of willful trademark infringement, willful
trade

dress

advertising
damages

infringement,
under

trebled.

unfair

the

Lanham

The

Court

competition,

Act,
finds

Ronaldo
that

bracelets totaling at least $27,696.75.
Ronaldo,

found

at

Prinzo’s

invoices,

[DE

92-13].

Ronaldo

Given

could

only

and

false

requested

actual

Prinzo

sold

various

See Invoices gathered by
the

cryptic

specifically

nature

of

attribute

sales of at least $6,809.00 to sales of infringing copies of

6

Ronaldo’s “The Power of Prayer Bracelet,” “Stackable Bracelet,”
“THE

LOVE

KNOT,”

“The

Angelina

Bracelet,”

“The

Spring

Time

Bracelet,” and the “Pearl of My Heart” jewelry designs, most of
which copy Ronaldo’s “Kissing Roof” clasp design trade dress.

Of

the bracelets sold, the Court finds that Prinzo sold at least 55
bracelets using variations of or terms substantially similar to
Ronaldo’s “THE POWER OF PRAYER” BRACELET® trademark for a total
of $2,305.00 as evidenced by his use of such terms as “Prayer
Bracelet” or abbreviations thereof in the invoices and on at
least one bracelet tag.
invoices

infringing

The Court finds that half of Prinzo’s

Ronaldo’s

trademark

were

dated

after

the

trademark was registered on December 4, 2012 and all of the
aforementioned

bracelets

were

sold

through

Prinzo’s

false

representations that he was authorized to copy and sell Ronaldo
designs.

The Courts further finds that Prinzo’s refusal to

participate in discovery or produce records of his sales makes it
impossible to determine the actual number of Prinzo’s infringing
sales.

Prinzo

failed

to

submit

any

evidence

of

costs

or

deductions related to such sales.
Ronaldo argued that, had Prinzo participated in good faith
in the discovery process, Ronaldo would be able to identify more
infringing sales.
due

to

Prinzo’s

discovery process.

Ronaldo argued that damages should be trebled
intentional

conduct

and

obstruction

of

the

The Court found Prinzo’s infringement was

7

intentional when summary judgment on liability was granted [DE
104].

The Court based this finding on Prinzo’s knowledge of and

past relationship with Ronaldo’s predecessor-in-interest entity;
Prinzo’s deemed admission of intentional copying (See Req. for
Admis. No. 14 [DE 92-4] deemed admitted pursuant to the Court’s
October 3, 2016 Order [DE 80]); Prinzo’s actual admission of
using terms substantially similar to Ronaldo’s trademark (See
Prinzo Dep. at 55-57; see also Bintrim Dep. at 36); Prinzo’s
actual admission that the Mutual Release Agreement on which he
allegedly relied for justification did not, in fact, give him a
right to copy (See Prinzo Dep. at 71); Prinzo’s admission that he
provided copies of the Mutual Release Agreement to one customer
to allay the customer’s concerns and induce the customer to buy
from Prinzo and the statements from yet another customer as to
similar conduct by Prinzo (See
continued

use

of

terms

Prinzo Dep. at 75); Prinzo’s

substantially

similar

to

Ronaldo’s

trademark after it was registered (See Prinzo Invoices [DE 92-9,
92-10, 92-13]); Prinzo’s use of the business name of Ronaldo’s
predecessor-in-interest entity (See Prinzo Catalogs and Invoices
Compare Mutual Release

[DE 92-5, 92-6, 92-9, 92-10, 92-13].

Agreement [92-3] granting Prinzo the right to use the name “Gold
Craft

Fashions.”);

girlfriend,

Janice

and

the

Bintrim,

actual
that

admission

she

directly

of

Prinzo’s

copied

and

manipulated pages from Ronaldo’s catalogs for Prinzo to use in

8

his own catalog (See Bintrim Dep. at 45-51).

The Court finds

that treble damages are further justified by Prinzo’s bad faith
and obstructive conduct in this litigation, which conduct was
detailed in the Court’s Order [DE 93] partially granting the
discovery sanctions and contempt finding requested by Ronaldo and
included, without limitation, Prinzo’s refusal to participate in
the

discovery

process

or

produce

records

from

which

actual

damages could be determined.
Attorney Fees and Costs
Ronaldo

argued

that

it

is

entitled

to

recovery

of

its

reasonable attorney fees and costs under both the Copyright Act
and

Lanham

Act.

In

its

summary

judgment

motion,

Ronaldo

presented testimony as to the amount and payment of attorney fees
and costs leading up to and submitted with Ronaldo’s Motion for
Summary Judgment.

Ronaldo also presented the testimony of W.

Whitaker Rayner, a local attorney with a long-standing reputation
and significant experience in the area of intellectual property.
Mr. Rayner testified that, in his expert opinion, the attorney
fees and costs submitted by Ronaldo were reasonable in light of
the work required in this matter.
The

Court

finds

that

Ronaldo’s

lead

counsel,

Kyle

Anne

Citrynell, a partner with the law firm of Seiller Waterman LLC,
has been practicing law for 36 years in the area of intellectual
property,

including

but

not

limited

9

to

copyright

litigation.

Over the three years of this litigation, Ms. Citrynell billed
165.85 hours at rates from $325 to $340 per hour for a total
legal fee associated with her work of $56,177.00.
The Court finds that C. Shawn Fox, a non-equity partner with
the law firm of Seiller Waterman LLC, has been practicing law for
16 years in the area of intellectual property, including but not
limited to copyright litigation.

Over the three years of this

litigation, Mr. Fox billed 186.70 hours at rates from $260 to
$285 per hour for a total legal fee associated with his work of
$52,908.00.
The Court finds that Christopher A. Bates, a non-equity
partner with the law firm of Seiller Waterman LLC, has been
practicing law for more than 18 years in the area of intellectual
property,

including

but

not

limited

to

copyright

litigation.

Over the three years of this litigation, Mr. Bates billed 11.65
hours at rates from $280 to $285 per hour for a total legal fee
associated with his work of $3,274.50.
The Court finds that Keith J. Larson, an associate with the
law firm of Seiller Waterman LLC, billed 165.85 hours at a rate
of $250 per hour for a total legal fee associated with his work
of $2,862.50.
The Court finds that Morgan K. Mottley, formerly a law clerk
and now an associate with the law firm of Seiller Waterman LLC
billed 4.7 hours at rates of $125 per hour as a law clerk and

10

$225 per hour as an attorney for a total legal fee associated
with her work of $587.50.
The Court finds that Laura A. Bevarly, a paralegal with the
law firm of Seiller Waterman LLC, billed 17.75 hours at rates
from $95 to $110 per hour for a total legal fee associated with
her work of $1,710.25.
The Court finds that Karen K. McWhorter, a paralegal with
the law firm of Seiller Waterman LLC, billed 14.0 hours at a rate
of $100 per hour for a total legal fee associated with her work
of $1,400.00.
The Court finds that Colleen M. Hawk, a paralegal with the
law firm of Seiller Waterman LLC, billed 12.10 hours at a rate of
$125 per hour for a total legal fee associated with her work of
$1,512.50.
The Court finds that Seiller Waterman LLC billed $925 for
other law clerk time in this case.
The

Court

finds

that

Ronaldo’s

local

counsel,

Alec

M.

Taylor, a partner with the law firm of Krebs Farley PLLC, has
been practicing law for almost 9 years in the area of litigation,
including but not limited to copyright litigation.

Over the

three years of this litigation, Mr. Taylor billed 102.4 hours at
a current rate of $250 per hour for a total legal fee associated
with his work of $24,530.50.
The Court finds that Ronaldo also incurred taxable costs of

11

$110

for

delivery

service
fees,

of

process

outside

fees

copies,

and

incurred

deposition

document fees billed by Seiller Waterman LLC.

$6,560.17

fees,

and

in

other

Ronaldo incurred

$1,887.45 in taxable costs for service of process fees, delivery
fees, outside copies, deposition fees, and other document fees
billed by Krebs Farley PLLC and $1,109.03 in travel and other
non-taxable costs.
The Courts finds that Ronaldo incurred attorney fees and
costs

totaling

$155,554.40.

Ronaldo’s

expert,

Mr.

Rayner,

testified that the hourly rates charged by Ronaldo’s attorneys
and their staffs were reasonable in light of their experience and
the specialized nature of intellectual property litigation, and
that

the

delegation

of

duties

between

partners,

associates,

paralegals and law clerks, and the time expended by each was
reasonable in light of the tasks required in this matter.

Mr.

Rayner concluded that, while he believed an entry or two totaling
a few hundred dollars may have been unreasonable or unnecessary,
the total fees and costs were reasonable, particularly in light
of the fact that Ronaldo has not sought recovery of more than
$15,000 in fees and costs it incurred after submitting the above
attorney fees and costs.

Mr. Rayner also testified that attorney

fees and costs of approximately $50,000 per year for a case in
litigation pending three years is reasonable and typical.

The

Court agrees with the testimony of Mr. Rayner and finds that the

12

attorney fees and costs requested are reasonable.
The Court also finds that Ronaldo is the prevailing party,
having succeeded on both a Motion for Default Judgment and a
Motion

for

Summary

Judgment.

The

Court

further

finds

that

Prinzo’s positions and defenses asserted in this matter were
objectively unreasonable.
Mutual

Release

termination

Prinzo’s asserted defense - that the

Agreement

granted

signed

Prinzo

the

by

the

authority

parties
to

copy

upon

his

Ronaldo’s

catalogs, jewelry designs, and trade dress - lacked any merit
whatsoever, which Prinzo admitted (See Prinzo Dep. at 75) and the
Court so ruled in its Order Granting Motion for Preliminary
Injunction [DE 78].

Prinzo’s positions with regard to discovery

matters

of

and

orders

the

Court,

as

well

as

his

lack

of

participation and obstructive conduct, were also unreasonable and
caused Ronaldo to unnecessarily incur increased fees and costs.
As indicated by the invoices submitted in this matter [DE 9-13],
the Court finds that the majority of Prinzo’s infringements of
Ronaldo’s

“THE

POWER

OF

PRAYER”

BRACELET®

trademark

occurred

after December 4, 2012, when such trademark was registered by the
United States Patent and Trademark Office [DE 92-8].

The Court

also finds that Prinzo’s infringement of Ronaldo’s copyrighted
catalogs and jewelry designs, as well as his infringement of
Ronaldo’s

trademark

intentional.

and

trade

dress,

were

willful

and

The Court finds that the circumstances of this case

13

qualify as an exceptional case under the Lanham Act.
reasons

set

forth

above,

this

Court

finds

that

an

For the
award

of

attorney fees and costs to Ronaldo is justified and proper.
Permanent Injunction
On

September

19,

2016,

the

Court

granted

a

Preliminary

Injunction [DE 79] enjoining Prinzo from copying, manufacturing,
reproducing,

importing,

publishing,

displaying,

distributing,

transmitting, selling, or otherwise placing on the market the
infringing jewelry, marketing, and advertising.
have

the

Injunction.

Preliminary

Injunction

converted

Ronaldo seeks to
to

a

Permanent

This Court finds that the same reasons justifying a

preliminary injunction remain present and that converting the
Preliminary Injunction to a Permanent Injunction is warranted.
Contempt
In its Order dated May 10, 2017 [DE 104], the Court ordered
Prinzo to appear at the damages hearing held on July 10, 2017 and
produce the records identified in Exhibit A to the Amended Notice
to Take Deposition [DE 46-1] or be held in contempt of court
until such time as he purges himself of contempt.

Prinzo failed

to appear or produce the required records.
Prinzo has continuously and frequently failed to obey the
Court’s orders in this matter.

The Court set forth Prinzo’s

multiple failures in its Order [DE 93] adopting the Report and
Recommendation of Magistrate Parker and ordering Prinzo to comply

14

with prior Court Orders [DE 71 and 74] or face entry of default
judgment.

In its Order [DE 93], the Court found that “Prinzo has

therefore demonstrated that less drastic sanctions [orders to
comply,

monetary

effect.”

Even

sanctions]

the

threat

would
of

entry

not

achieve

of

default

a

deterrent

judgment

was

insufficient to induce Prinzo to comply and he, once again,
failed to comply with the Court’s Order.

[DE 104]

The Court

finds that further monetary or less drastic sanctions would have
no deterrent effect and would be to no avail.
CONCLUSIONS OF LAW
Ronaldo

seeks

recovery

of

statutory

damages

under

the

Copyright Act, actual damages under the Lanham Act, attorney fees
and costs under both the Copyright Act and Lanham Act, and a
permanent injunction under both the Copyright Act and Lanham Act.
It is not considered dual recovery to seek statutory copyright
damages and actual damages under the Lanham Act.

See Nintendo of

Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007, 1010-11 (9th Cir.
1994) citing Nintendo of Am., Inc. v. Ketchum, 830 F.Supp. 1443,
1446 (M.D. Fl. 1993)(awarding both statutory damages under the
Copyright Act and lost profits damages under the Lanham Act) and
Nintendo of Am., Inc. v. NTDEC, 822 F.Supp. 1462 (D. Ariz. 1993);
see also Microsoft Corp. v. Computer Care Ctr., Inc., 2008 WL
9359718 (E.D. N.Y. Sept. 10, 2008)(unpublished).

15

Statutory Damages Under the Copyright Act
For its claims of copyright infringement, Ronaldo elected
statutory damages under 17 U.S.C. §504(c) and seeks recovery of
$120,000 ($30,000 each for four qualifying infringements).
copyright

holder

is

entitled

prior

to

infringement

registered

to

months of first publication.

statutory
or

damages

registered

A

for

works

within

three

See 17 U.S.C. §412.

As stated

above, Prinzo is liable for thirteen (13) counts of copyright
infringement,

of

which

four

(4)

are

eligible

for

statutory

damages under 17 U.S.C. §504(c).
Statutory

Damages

may

be

awarded

per

infringement

as

follows:
Innocent Infringement - $200 - $750
Non-Willful Infringement - $750 - $30,000
Willful Infringement - Up to $150,000
See 17 U.S.C. §504(c).

Willful copying is defined as “actions

[that] were the result of ‘reckless disregard’ for, or ‘willful
blindness’ to, the copyright holder’s rights.”

Graper v. Mid-

Continent Cas. Co., 756 F.3d 388, 394 (5th Cir. 2014) (brackets
in original), citing Berg v. Symons, 393 F.Supp.2d 525, 540 (S.D.
Tex. 2005).

As stated above, the Court finds that Prinzo’s

infringing conduct was willful.
Willfulness may also be inferred from Prinzo’s failure to
continue to defend the lawsuit.

See Microsoft Corp., supra, at

*28 (citing Tiffany (NJ) Inc. v. Luban, 282 F.Supp.2d 123, 124

16

(S.D.

N.Y.

alone)).

2003)(willfulness
Prinzo

actively

may

be

obstructed

inferred
the

from

litigation

default
process.

Magistrate Judge Parker set forth a laundry list of ways in which
Prinzo “generally disregarded court rules and orders throughout
the case” in his Order imposing discovery sanctions on Prinzo [DE
74], and the Court subsequently found that Prinzo “generally
obstructed the discovery process” in its Order [DE 93] granting,
in part, Ronaldo’s motions to hold Prinzo in contempt and for
discovery sanctions for failure to comply with a court order.
The Court finds enhanced damages of up to $150,000 per
eligible infringement are justified due to Prinzo’s willfulness.
Because Ronaldo has not requested more, the Court will award
damages at the high end of non-willful infringement of $30,000
per infringement for a total of $120,000.
Actual Damages Under the Lanham Act
With regard to its claims for trademark and trade dress
infringement, unfair competition, and false advertising under the
Lanham Act, Ronaldo seeks recovery of Prinzo’s profits of $6,809
trebled

for

a

total

of

$20,427.

For

infringements

of

unregistered trademarks and trade dress, as well as for unfair
competition or false advertising, the Court has discretion to
award damages not exceeding three times the amount of actual
damages (which, in this case, consist of Prinzo’s profits).
15 U.S.C. §1117(a).

See

For infringement of a registered trademark,

17

recovery

of

treble

damages

circumstances are present.

is

mandatory,

unless

extenuating

See 15 U.S.C. §1117(b).

The Court

finds that half of Prinzo’s invoices infringing Plaintiff’s Mark
were dated after Plaintiff’s Mark was registered on December 4,
2012 and, thus, recovery of treble damages should be mandatory.
Regardless

of

whether

treble

damages

are

mandatory,

the

Court finds that Prinzo’s conduct was willful and intentional,
and

justifies

recovery

of

treble

damages.

See

Taco

Cabana

Int’l., Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1127 (5th Cir.
1991) aff’d sub nom. Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763 (1992).

Furthermore, in this case, Prinzo did not

cooperate and refused to produce his sales records despite Court
orders to do so. See Orders [DE 71, 74, 93, 104].

The fact that

Ronaldo cannot possibly know the full extent of Prinzo’s sales as
a

result

of

Prinzo’s

obstructive

conduct

further

justifies

trebling the damages for the limited sales Ronaldo has been able
to discover from other sources. See Taco Cabana, 932 F.2d at
1127, citing Boston Professional Hockey Ass’n. v. Dallas Cap &
Emblem Mfg., Inc., 597 F.2d 71, 77 (5th Cir. 1979) (increased
damages

justified

available

sales

where
records

defendant
or

withholds

otherwise

or

obstructs

misrepresents
plaintiff’s

ascertainment of damages); see also CrossFit, Inc. v. Columbus
CrossFitness, LLC, 2014 WL 2711972 (N.D. Miss. June 16, 2014)
(unpublished) (defendant’s failure to participate, making damages

18

difficult to ascertain, was sufficient to enhance damages and
award attorney fees).
In this case, Ronaldo states that it is only aware of Prinzo
sales

totaling

$27,696.75

[DE

92-13].

Given

the

limited

descriptions and cryptic nature of Prinzo’s invoices, Ronaldo
states that it can only specifically attribute $6,809 of such
sales to Prinzo’s infringing works.

All of Prinzo’s remaining

sales may well be attributable to Prinzo’s infringing works, but
Ronaldo states that at this time, it simply cannot identify the
works to which the remaining sales are attributable.

Pursuant to

15 U.S.C. §1117, in calculating Prinzo’s profits, Ronaldo must
only

prove

Prinzo’s

sales.

Prinzo

must

submit

demonstrating his reasonable costs and deductions.
submitted no such costs or deductions.

evidence

Prinzo has

Accordingly, the Court

shall grant damages in the amount of $20,427.00 ($6,809.00 x 3).
Attorney Fees and Costs Under the Copyright Act and Lanham Act
Ronaldo

seeks

recovery

of

its

reasonable

pursuant to 17 U.S.C. §505 and 15 U.S.C. §1117.

attorney

fees

Section 505

allows recovery of attorney fees to a prevailing party in a
copyright infringement action.

The Court is allowed discretion

as to whether to award fees, giving substantial weight to the
objective reasonableness of the losing party’s position, although
other factors (such as a party’s litigation misconduct) may also
justify an award of fees.

See Kirtsaeng v. John Wiley & Sons,

19

Inc., 136 S.Ct. 1979, 1988 (2016).
In copyright cases, “[a]lthough attorney’s fees are awarded
in the trial court’s discretion, they are the rule rather than
the exception and should be awarded routinely.”

Micromanipulator

Co. v. Bough, 779 F.2d 255, 259 (5th Cir. 1985), citing Engel v.
Teleprompter Corp., 732 F.2d 1238, 1241 (5th Cir. 1984).
As stated above, Prinzo’s position that the Mutual Release
Agreement granted him authority to copy was entirely unreasonable
(as

he

ultimately

admitted),

and

his

litigation

conduct

was

designed to obstruct the litigation process and caused Ronaldo to
incur excessive fees.

Either circumstance justifies an award of

fees under 17 U.S.C. §505.

See Kirtsaeng, 136 S.Ct. at 1988.

In cases of trademark and trade dress infringement, unfair
competition, and false advertising, all of which are governed by
the Lanham Act, 15 U.S.C. §1117 allows for recovery of attorney
fees.

For infringements of unregistered trademarks and trade

dress, recovery of attorney fees is limited to exceptional cases.
See 15 U.S.C. §1117. For infringement of a registered trademark,
recovery

of

reasonable

attorney

fees

extenuating circumstances are present.

is

mandatory,

unless

See 15 U.S.C. §1117.

As

stated above, half of Prinzo’s infringing sales occurred after
registration of Ronaldo’s trademark, justifying a mandatory award
of attorney fees under 15 U.S.C. §1117.

Regardless of whether an

attorney fees award is mandatory, Prinzo’s conduct was willful

20

and

intentional,

justifying

and

recovery

of

falls

into

reasonable

the

exceptional

attorney

fees.

category
See

Taco

Cabana, 932 F.2d at 1127; see also CrossFit, 2014 WL 2711972.
Prinzo’s lack of participation and obstructive conduct further
justify an award of attorney fees.

Id.

Ronaldo also requests recovery of its costs incurred in this
action, including both taxable and non-taxable costs.

Ronaldo’s

taxable costs are recoverable pursuant to 28 U.S.C. §1920.

The

non-taxable costs requested by Ronaldo are recoverable under the
Copyright Act.

See 17 U.S.C. §505 (prevailing party may recover

“full costs”);

Guzman v. Hacienda Records & Recording Studio,

Inc.,

2015

U.S.

Dist.

LEXIS

108360

*4

(S.D.

Tex.

Dec.

14,

2015)(“In stark contrast to the list of taxable costs in section
1920, the copyright statute contains no such list and just refers
to ‘full costs.’

It must cover more costs than those listed in

section 1920 or there would be no effect given to the different
statutory language.”) citing Twentieth Century Fox Film Corp. v.
Entertainment

Distributing,

429

F.3d

869,

885

(9th

Cir.

2005)(“Construing §505 as limiting the costs that may be awarded
to any particular subset of taxable costs effectively reads the
word ‘full’ out of the statute.”); see also Susan Wakeen Doll
Co., Inc. v. Ashton Drake Galleries, 272 F.3d 441, 458 (7th Cir.
2001)(“any award of fees and non-taxable costs must come through
[§505], and not through the general costs provisions of 28 U.S.C.

21

§1920”); InvesSys, Inc. v. McGraw-Hill Co., Ltd. 369 F.3d 16, 23
(1st Cir. 2004); Coles v. Wonder, 283 F.3d 798, 803 (6th Cir.
2002).
Recording

Compare
Studio,

Tempest
Inc.,

Publ’g,
141

Inc.

F.Supp.3d

v.
712

Hacienda
(S.D.

Records

Tex.

&

2015);

Pinkham v. Camex, Inc., 84 F.3d 292 (8th Cir. 1996)(per curiam);
Artisan Contractors Ass’n of Am., Inc. v. Frontier Ins. Co., 275
F.3d 1038 (11th Cir. 2001).
recoverable

under

the

Such non-taxable costs are also

Lanham

Act.

See

15

U.S.C.

§1117

(prevailing party may recover “costs of the action”).
Ronaldo
$155,554.40.

submitted

attorney

fees

and

costs

totaling

In evaluating what is a reasonable fee, courts

consider a variety of factors.

In Johnson v. Georgia Highway

Express, Inc., 488 F.2d 714 (5th Cir. 1974), the Fifth Circuit
enumerated the following twelve factors:
1) the time and labor involved;
2) the novelty and difficulty of the questions;
3) the level of skill required to perform the legal
service properly;
4) the preclusion of employment by the attorney due to
acceptance of the case;
5) the attorney’s customary hourly rate;
6) whether the fee is fixed or contingent;
7) the time limitations imposed by the client or the
circumstances;

22

8)

the

scope

of

the

misconduct

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.
Attorney rates are generally, but not always, evaluated in
comparison to the prevailing rates in the district in which the
court sits.

Sometimes, legal markets may be defined by practice

area, in which case the court may adjust the base hourly rate to
account for a plaintiff’s reasonable decision to retain out-ofdistrict counsel.

See Microsoft Corp., supra, 2008 U.S.Dist.

LEXIS 112080, at *28., quoting Arbor Hill Concerned Citizens
Neighborhood Ass’n. v. County of Albany, 484 F.3d 162, 171, 163
(2nd Cir. 2007).
In Microsoft (a case involving a similar default judgment as
a sanction under Rule 37 for the defendant’s dilatory conduct),
the

district

attorneys’
individual.

court

staffing

evaluated
of

the

the

case,

claimed
and

time

hourly

rates,

expended

by

the
each

Cases evaluating the use of both out-of-state lead

counsel and local counsel have allowed the recovery of both fees,
finding that they were not duplicative given the nature of the

23

responsibilities of each.

See Broadcast Music, Inc. v. Xanthas,

Inc., 685 F.Supp. 134 (E.D. La. 1988).
As noted above, W. Whitaker Rayner testified that the hourly
rates

charged

reasonable

in

by

Ronaldo’s

light

of

attorneys

their

and

experience

their
and

staffs

the

were

specialized

nature of intellectual property litigation and the delegation of
duties between partners, associates, paralegals, and law clerks,
and the time expended by each was reasonable in light of the
tasks required in this matter.

The Court agrees and finds that

such attorney fees and costs are reasonable.

Accordingly, the

Court grants an award of $155,554.40 for attorney fees and costs
pursuant to 17 U.S.C. § 505 and 15 U.S.C. § 1117.
Permanent Injunction Under the Copyright Act and Lanham Act
On

September

19,

2016,

the

Court

granted

a

Preliminary

Injunction [DE 79] enjoining Prinzo from copying, manufacturing,
reproducing,

importing,

publishing,

displaying,

distributing,

transmitting, selling, or otherwise placing on the market the
infringing jewelry, marketing, and advertising.
have

the

Injunction.

Preliminary

Injunction

converted

Ronaldo seeks to
to

a

Permanent

The Court finds that the same reasons justifying a

preliminary injunction remain present, and that converting the
Preliminary Injunction to a Permanent Injunction is warranted.
In its Order [DE 104] granting Ronaldo’s Motion for Default
Judgment [DE 99] and Motion for Summary Judgment [DE 91], the

24

Court found Prinzo liable for violations of the Copyright Act and
Lanham Act, both of which justify injunctive relief in this
matter.

See 17 U.S.C. §502 and 15 U.S.C. §1116.

Contempt
The

Court

has

broad

discretion

to

exercise

its

various

Topalian v. Ehrman, 3 F.3d 931, 934 (5th

sanctioning powers.

Cir. 1993); Shipes v. Trinity Indus., 987 F.2d 311, 323 (5th Cir.
1993)(“The imposition of sanctions is a matter of discretion for
the district court.”).
further

allows

for

Federal Rule of Civil Procedure 37(b)

sanctions

when

a

party

fails

to

obey

a

discovery order, including finding a party in contempt of court.
As

stated

above,

Prinzo

has

continuously

failed to obey court orders in this case.

and

frequently

In its Order dated May

10, 2017 [DE 104], the Court ordered Prinzo to appear at the
damages hearing held on July 10, 2017 and produce the records
identified in Exhibit A to the Amended Notice to Take Deposition
[DE 46-1] or be held in contempt of court until such time as he
purges himself of contempt.
the required records.

Prinzo failed to appear or produce

Accordingly, this Court finds Prinzo in

civil contempt of court until such time as he purges himself of
contempt by producing the records identified in Exhibit A to the
Amended Notice to Take Deposition [DE 46-1].

Prinzo may purge

himself of contempt by producing said records within twenty (20)
days from the date of entry of this Order.

25

The defendant is further warned not to destroy the records
he has been ordered to produce.

To do so could result in a

finding of criminal contempt and/or additional sanctions.
IN CONCLUSION, THE COURT ORDERS AS FOLLOWS:
IT IS HEREBY ORDERED that the plaintiff, Ronaldo Designer
Jewelry, Inc., is awarded $30,000.00 in damages per infringement,
for each of the four works registered prior to infringement or
within three months of first publication, for a total award of
$120,000.00 pursuant to 17 U.S.C. §504(c) for the defendant’s
willful copyright infringement;
FURTHER

ORDERED

that

the

plaintiff,

Ronaldo

Designer

Jewelry, Inc., is awarded recovery of Prinzo’s actual profits of
$6,809 trebled for a total of $20,427 pursuant to 15 U.S.C. §1117
for

willful

trademark

and

trade

dress

infringement,

unfair

competition, and false advertising;
FURTHER ORDERED that the plaintiff is awarded $155,554.40
for attorney fees and costs pursuant to 17 U.S.C. §505 and 15
U.S.C. §1117;
FURTHER
entered

in

ORDERED
this

that

matter

the

Preliminary

shall

be

Injunction

converted

to

a

[DE

79]

Permanent

Injunction pursuant to 17 U.S.C. §502 and 15 U.S.C. §1116;
FURTHER ORDERED that the defendant, Phillip Prinzo, be held
in civil contempt of court until such time as he purges himself
of contempt by producing the records identified in Exhibit A to

26

the Amended Notice to Take Deposition [DE 46-1].

Until the

defendant purges himself of civil contempt, the Court reserves
jurisdiction to impose additional sanctions and/or a finding of
criminal contempt if warranted;
FURTHER ORDERED that counsel for plaintiff shall submit a
proposed Final Judgment in accordance with the above Findings of
Fact and Conclusions of Law to the undersigned District Judge via
electronic mail within seven (7) days from date of entry of this
Order, and shall also provide a copy to the pro se defendant.
Any objections to the form of the proposed Final Judgment must be
made within seven (7) days from the date of delivery of the
proposed judgment to the defendant;
FURTHER ORDERED that counsel for plaintiff shall also submit
a proposed separate Permanent Injunction in accordance with the
above Findings of Fact and Conclusions of Law to the undersigned
District Judge via electronic mail within seven (7) days from
date of entry of this Order, and shall also provide a copy to the
pro se defendant.

Any objections to the form of the proposed

Permanent Injunction must be made within seven (7) days from the
date of delivery of the proposed injunction to the defendant.
SO ORDERED, this the 21st day of August, 2017.

/s/ David Bramlette
UNITED STATES DISTRICT JUDGE

27