BETHANIE L. MATTEK, LLC et al v. DONNAY USA LTD. et al
MEMORANDUM OPINION. Signed by Judge Esther Salas on 11/1/16. (cm )
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
BETHANIE L. MATTEK, LLC and
DONNAY USA LTD; JERRY CHOE;
and BOBBY CHOE,
Civil Action No.: 13-6188 (ES) (JAD)
SALAS, DISTRICT JUDGE
This matter comes before the Court on Plaintiffs’ motion for default judgment as to
Defendant Donnay USA Ltd.1 (“Defendant”) (D.E. No. 37). On April 28, 2016, the Court held
oral argument on Plaintiffs’ motion. During oral argument, the Court preliminarily granted default
judgment as to liability on Plaintiffs’ claims for unjust enrichment (Count 2), right of publicity
(Count 4), and false advertising under the Lanham Act (Count 6) (see Transcript of April 28, 2016
Hearing (“Tr.”) at 12:6-14:19), but reserved its ruling on damages (see id. at 14:20-17:15). The
Court permitted Plaintiffs to supplement the record and noted it would issue a single order as to
liability and damages upon receipt of satisfactory supplemental submissions. (See Tr. at 18:1418:19; see also D.E. No. 43). Plaintiffs submitted supplemental documentation and briefing on
July 20, 2016. (D.E. No. 44, Plaintiffs’ Supplemental Brief (“Pl. Supp. Br.”)).
The parties stipulated to the dismissal of Defendants Bobby Choe (D.E. No. 34) and Jerry Choe (D.E. No.
Because the Court previously granted default judgment as to liability on Plaintiffs’ claims
for unjust enrichment, right of publicity, and false advertising under the Lanham Act, the sole
remaining issue is whether (and if so, to what extent) Plaintiffs are entitled to damages. Plaintiffs
seek damages in the amount of $342,500 for Defendant’s unjust enrichment—or, in the alternative,
for Defendant’s violation of Plaintiffs’ right of publicity—and for Defendant’s false advertising in
violation of 15 U.S.C. §1125(a) of the Lanham Act. (Pl. Supp. Br. at 14). In addition, Plaintiffs
seek treble damages, attorney’s fees, and costs under 15 U.S.C. § 1117 of the Lanham Act. (Id.).
In support of Plaintiffs’ application for attorney’s fees and costs, Plaintiffs submitted for in camera
review certifications from Annabelle Steinhacker, Esq. and Paul Greene, Esq., with billing
statements annexed thereto. (See D.E. Nos. 46 & 47).
The Court finds that Plaintiffs’ supplemental submissions provide ample support for an
award of damages in the amount of $342,500 stemming from Defendant’s false advertising under
the Lanham Act.2 Specifically, Plaintiffs explain that, had Defendant entered into a tennis racquet
endorsement deal with Plaintiffs, Defendant would have been obligated to pay Plaintiffs (i) annual
retainers and (ii) industry-standard performance bonuses. (Pl. Supp. Br. at 3). To that end,
Plaintiffs submitted declarations from Plaintiff Bethanie Mattek-Sands (an internationally ranked
tennis player) (D.E. No. 44-18) and Justin Sands (Ms. Mattek-Sands’s husband and business
manager) (D.E. No. 44-17) substantiating the amounts to which Plaintiffs would have been
entitled. In addition, Plaintiffs submitted a valuation letter from CAA Sports (Ms. Mattek-Sands’s
representative agency) that is consistent with Plaintiffs’ representations. Accordingly, the Court
finds that Plaintiffs are entitled to (i) annual retainers for the years 2012 through 2016, totaling
While Plaintiffs also seek damages for Defendant’s unjust enrichment or, in the alternative, Defendant’s
violation of Plaintiffs’ right of publicity, the Court finds that these claims “are encompassed under the Lanham Act”
and that Plaintiffs “are not entitled to a double recovery.” Coach, Inc. v. Fashion Paradise, LLC, No. 10-4888, 2012
WL 194092, at *8 (D.N.J. Jan. 20, 2012).
$125,0003; and (ii) performance bonuses from 2012 to date, totaling $217,500. (See Pl. Supp. Br.
at 3-5). Therefore, the Court finds that an award of $342,500 fairly and accurately reflects
Next, the Court finds that Plaintiffs are entitled to treble damages under § 1117 of the
Lanham Act. A court may award treble damages “if the infringement is willful or intentional.”
CrossFit, Inc. v. 2XR Fit Systems, LLC, No. 13-1108, 2014 WL 972158, at *11 (D.N.J. Mar. 11,
2014).4 The Third Circuit has explained that “willful infringement consists of more than the
accidental encroachment of another’s right. It involves an intent to infringe or a deliberate
disregard of a mark holder’s rights.” SecuraComm Consulting Inc. v. Securacom Inc., 166 F.3d
182, 187 (3d Cir. 1999), superseded by statute on other grounds as recognized by Banjo Buddies,
Inc. v. Renoksy, 399 F.3d 168 (3d Cir. 2005).
The Court easily concludes that Defendant willfully misappropriated Plaintiffs’ intellectual
property rights. Here, Defendant entered into contract negotiations with Plaintiffs in an attempt to
secure a tennis racquet endorsement deal. (See, e.g., D.E. No. 44-7 at 7). Despite the fact that
those negotiations fell through, Defendant in 2012 began using—and continues to use to this day—
Ms. Mattek-Sands’s name, likeness, image, and indicia without her authorization and without
compensating Plaintiffs. (Id. at 6). Furthermore, Defendant was personally served with Plaintiffs’
Complaint on October 23, 2013 (D.E. No. 5). See Coach, Inc. v. Ocean Point Gifts, No. 09-4215,
2010 WL 2521444, at *7 (D.N.J. June 14, 2010) (finding willfulness where defendant continued
to infringe after receiving the complaint).
Accordingly, the Court finds that Defendant’s
Although Plaintiffs represent that the industry standard for an annual retainer associated with a tennis racquet
endorsement deal would have been approximately $36,000 in or around 2012, Plaintiffs seek damages based upon the
annual retainer Defendant itself suggested during contract negotiations with Plaintiffs, i.e., $25,000. (Pl. Supp. Br. at
Unless otherwise indicated, all internal citations and quotation marks are omitted, and all emphasis is added.
misappropriation of Ms. Mattek-Sands’s name, likeness, and indicia was—and continues to be—
willful and egregious. See Travelodge Hotels, Inc. v. Elkins Motel Assocs., Inc., No. 03-0799,
2005 WL 2656676, at *12 (Oct. 18, 2005) (awarding treble damages under the Lanham Act where
defendant was put on notice of Plaintiff’s trademark rights but continued to infringe); see also
A&H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 167 F. Supp. 2d 770, 802 (E.D. Pa.
2001) (noting that Lanham Act damages may be enhanced “to deter cases of egregious
infringement”). Therefore, Plaintiffs are entitled to treble damages in the amount of $1,027,500.
Finally, the Court finds that Plaintiffs are entitled to reasonable attorney’s fees and costs.
Under § 1117 of the Lanham Act, a “court in exceptional circumstances may award reasonable
attorney fees to the prevailing party.” 15 U.S.C. § 1117. The Third Circuit has interpreted
“exceptional” to mean involving culpable conduct. Securacomm Consulting, Inc. v. Securacom
Inc., 224 F.3d 273, 280 (3d Cir. 2000). Culpable conduct includes, for example, knowing
infringement, bad faith, fraud, and malice. Green v. Fornario, 486 F.3d 100, 103 (3d Cir. 2007).
As discussed supra, the Court can readily infer knowing infringement and thus finds that this case
is exceptional for purposes of § 1117.
The Court has reviewed Plaintiffs’ supplemental
documentation and finds that Plaintiffs’ request for attorney’s fees and costs in the amount of
$31,862.90 is fair and reasonable given the procedural history and services required in this case.
An appropriate Order accompanies this Memorandum Opinion.
Esther Salas, U.S.D.J.
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