Buffalo Transportation, Inc. v. Frezer Bezu
Filing
13
ORDER granting 10 Motion for Default Judgment and referring the case to Magistrate Judge Hugh B. Scott to issue a Report and Recommendation on damages, lost profits, attorney's fees, and costs. Defendants must file with Judge Scott and serve upon the plaintiff an accounting of profits made as a result of infringing actions. SO ORDERED. Signed by Hon. Lawrence J. Vilardo on 3/22/2019. (AMD)-CLERK TO FOLLOW UP-
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
BUFFALO TRANSPORTATION, INC.,
Plaintiff,
v.
16-CV-1032
DECISION AND ORDER
FREZER BEZU d/b/a BUFFALO MD
TRANSPORTATION,
Defendants.
On December 22, 2016, the plaintiff, Buffalo Transportation, Inc., (“Buffalo
Transportation”), filed a complaint alleging unfair competition under § 43 of the Lanham
Act, 15 U.S.C. § 1125; trademark infringement under New York common law; unfair
competition under New York common law; trademark dilution under New York General
Business Law § 360-l; deceptive business practices under New York General Business
Law § 349; and use of name with intent to deceive under New York General Business
Law § 133. Docket Item 1. The defendant failed to appear and defend this action, and
the time to do so expired. As a result, the plaintiff asked the Clerk of Court to enter a
default, Docket Item 8, which the Clerk entered accordingly on June 9, 2017, Docket
Item 9. Now before this Court is the plaintiff’s motion for default judgment pursuant to
Rule 55(b)(2) of the Federal Rules of Civil Procedure. After reviewing the plaintiff’s
supporting papers and the applicable law, this Court GRANTS the plaintiff’s motion.
BACKGROUND
The complaint tells the following story.1 Buffalo Transportation provides medical
transportation services throughout Western New York. Docket Item 1 at 3. It is a
registered transportation provider for the New York State Department of Health and
Medical Answering Services, LLC, an agent of the New York State Department of
Health. Id. at 4. Through Medical Answering Services, customers can request
transportation services in connection with medical treatment, and costs are billed
directly to the customer’s Medicare, Medicaid, or other health insurance. Id.
Buffalo Transportation applied with the United States Patent and Trademark
Office to register the word mark “BUFFALO TRANSPORTATION” and a corresponding
design mark (together, the “Buffalo Transportation Marks”). Id. at 3. Buffalo
Transportation has used the Buffalo Transportation Marks for over thirteen years in its
advertising as well as on its vehicles, so that the Buffalo Transportation Marks have
come to represent Buffalo Transportation’s high quality and affordable medical
transportation services. Id. at 3-4. In fact, the marks and services have become so
distinctive that customers requesting its services request them by its word mark,
“Buffalo Transportation.” Id. at 4.
The defendant also provides medical transportation services to consumers in
Western New York, under the name “Buffalo MD Transportation.” Id. at 4. Frezer Bezu
is an individual who runs this entity and who filed a fictitious name certificate with the
Erie County Clerk’s Office on January 27, 2016. Id. at 5. The defendant uses
1
On a motion for default judgment, the factual allegations in the complaint are accepted
as true. See Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61, 65 (2d Cir. 1981).
2
substantially similar word and design marks to Buffalo Transportation and provides
identical services in connection with those marks. Id. at 5. The defendant’s word and
design marks, like the Buffalo Transportation Marks, are a white oval with red border
trim, the word “Buffalo” across the top of the oval, “Transportation” across the bottom of
the oval, and a stylized graphic of a buffalo in the middle. Id. at 6. The text fonts are
similar, and the only difference is the abbreviation “MD,” a phone number, and the
choice of buffalo graphic. Id. Similarities between the marks are likely to cause
confusion. Id.
In fact, they already have. Id. The defendant’s services are closely related to
Buffalo Transportation’s services. The defendant also is a registered transportation
provider for the New York State Department of Health and its agent, Medical Answering
Services. Id. Medical Answering Services has dispatched the defendant’s vehicle
when a customer called to request Buffalo Transportation’s services. Id. A customer
entered one of the defendant’s vehicles thinking it belonged to Buffalo Transportation
and was taken to the wrong location. Id. at 6. Another confused patient took a ride in
one of the defendant’s vehicles thinking it belonged to Buffalo Transportation, only to
find that the driver demanded to be paid directly rather than by a third-party healthcare
institution. Id.
Buffalo Transportation therefore brought this suit seeking declaratory relief that
the defendant is illegally infringing its trademark; injunctions preventing further
infringement; and money damages, including lost profits, treble damages, attorney’s
fees, expenses, and costs.
3
DISCUSSION
I.
DEFAULT JUDGMENT
To obtain a default judgment, a party must secure a clerk’s entry of default by
demonstrating, “by affidavit or otherwise,” that the opposing party “has failed to plead or
otherwise defend” the case. Fed. R. Civ. P. 55(a). The clerk’s entry of default does not
mean that a default judgment is warranted automatically. See Bricklayers & Allied
Craftworkers Local 2, Albany, N.Y. Pension Fund v. Moulton Masonry & Const., LLC,
779 F.3d 182, 187 (2d Cir. 2015). But it does mean that the court accepts as true the
complaint’s factual allegations, except those relating to damages, and draws all
reasonable inferences in the moving party’s favor. See Finkel v. Romanowicz, 577 F.3d
79, 84 (2d Cir. 2009).
“[T]he court may, on [the] plaintiff[’s] motion, enter a default judgment if liability is
established as a matter of law when the factual allegations of the complaint are taken as
true.” Bricklayers & Allied Craftworkers, 779 F.3d at 187. As to injunctive relief, “[a]
court may issue an injunction on a motion for default judgment provided that the moving
party shows that (1) it is entitled to injunctive relief under the applicable statute, and (2)
it meets the prerequisites for the issuance of an injunction.” Commscope, Inc. of North
Carolina v. Commscope (U.S.A.) Intern. Group Co., Ltd., 809 F. Supp. 2d 33 (N.D.N.Y.
2011) (quoting Pitbull Prods., Inc. v. Univ. Netmedia, Inc., 2007 WL 3287368, at *5
(S.D.N.Y. Nov 7, 2007). To satisfy the second condition, a party seeking an injunction
must demonstrate “irreparable harm and the absence of an adequate remedy at law.”
Id. (quoting Kingvision Pay-Per-View Ltd. v. Laleo, 429 F. Supp. 2d 506, 516 (E.D.N.Y.
2006). As to damages, the court should take steps, including by hearing, or by referral
4
when necessary, to establish their proper amount with reasonable certainty.
Transatlantic Marine Claims Agency, Inc. v. Ace Shipping Corp., 109 F.3d 105, 111 (2d
Cir. 1997).
II.
LIABILITY
A.
Federal Trademark Infringement and Unfair Competition Claims
Buffalo Transportation alleges that the defendant has engaged in unfair
competition under 15 U.S.C. § 1125(a). Docket Item 1 at 3. To succeed on this claim,
the plaintiff “must show that it has a valid mark that is entitled to protection under the
Lanham Act and that [the defendant’s] actions are likely to cause confusion with [the
plaintiff’s] mark.” The Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d
Cir. 1996); see also Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 129 (2d
Cir. 2004) (analyzing the plaintiff’s claims of imitation of registered mark, 15 U.S.C.
§ 1114, and false designation of origin, id. § 1125(a), under the same legal standard).
15 U.S.C. § 1125(a) “protects qualifying unregistered trademarks.” Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
Buffalo Transportation has alleged facts that satisfy both prongs. First, Buffalo
Transportation has shown that the Buffalo Transportation Marks are “protectable
trademark[s],” that it has used and sought to register, and that it has developed
substantial goodwill around them. Docket Item 1 at 3-6. It has “utilized the [Buffalo
Transportation] Marks in its advertising, as well as on its vehicles, which number over
200 cars, trucks, and vans” for over thirteen years. Id. at 3. And the marks have “come
to represent the high quality affordable transportation services” Buffalo Transportation
5
provides. Id. at 4. All these facts establish that the marks are valid and entitled to
protection. See The Sports Authority, Inc., 89 F.3d at 960.
Buffalo Transportation also has shown the likelihood of confusion.2 The
defendant is using “said fictitious name in commerce through the advertisements
emblazed on Defendant’s vehicles, and through its promotion on the internet.” Docket
Item 1 at 5. That “false designation is likely to cause continued confusion,” id. at 6,
something especially likely here because the defendant provides similar services in the
same area where the services are offered by Buffalo Transportation. Id. at 4. The
defendant uses a mark that displays nearly the same words, in the same font and
orientation, with a similar graphic. Id. at 6. Buffalo Transportation alleges that the
defendant chose its infringing mark knowingly and willfully with the intent to deceive
consumers in the marketplace and to trade off the valuable goodwill of the Buffalo
Transportation Marks. Id. at 7. Consumers are getting and will continue to get the false
impression that the defendant’s services originate from Buffalo Transportation. Id. For
all these reasons, the plaintiff has plausibly pleaded a likelihood of confusion between
the parties’ marks. See Polaroid Corp., 287 F.2d at 495. Taking the undisputed facts in
2
To determine whether a mark is likely to cause confusion among consumers,
courts generally rely upon the eight-factor balancing test enumerated in Polaroid Corp.
v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). These factors include (1) the
strength of the plaintiff’s mark; (2) the degree of similarity between the two marks; (3)
the competitive proximity of the products or services; (4) the existence of actual
confusion; (5) the likelihood that the plaintiff will ‘bridge the gap’ between the two
markets; (6) the defendant’s good faith in adopting its mark; (7) the quality of the
defendant’s product; and (8) the sophistication of the purchasers. Id. The second,
third, fourth, and sixth factors clearly weigh in favor of the plaintiff’s claim here, and the
others may well do so, too.
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the plaintiff’s complaint as true suffices to establish the defendant’s liability under the
Lanham Act.
B.
Common Law Trademark Infringement and Unfair Competition
Buffalo Transportation also claims that the defendant has violated the New York
common law on trademark infringement and unfair competition. Id. at 10-11. There is
little difference between these claims and those brought under the Lanham Act. “Courts
employ substantially similar standards when analyzing claims for trademark
infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1114(1)(a);
false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a); trademark
infringement under New York common law; and unfair competition under New York
common law.” Mitsubishi Motors North America Inc. v. Grand Automotive, Inc., 2018
WL 2012875, at *9 n.9 (E.D.N.Y. April 30, 2018); see also Lorillard Tobacco Co. v.
Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y. 2005) (“It is well-established
that the elements necessary to prevail on causes of action for trademark infringement
and unfair competition under New York common law mirror the Lanham Act claims.”).
Because Buffalo Transportation has alleged facts sufficient to establish the defendant’s
liability under the Lanham Act,3 and because the standards under New York common
law mirror those under the Lanham Act, the plaintiff has sufficiently alleged facts to
establish the defendant’s liability under New York common law for trademark
infringement and unfair competition.
3
Although Buffalo Transportation brings claims only for unfair competition under
15 U.S.C. § 1125(a) and not trademark infringement, the legal standards are the same,
see Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 129 (2d Cir. 2004), and
either serves to establish parallel liability under New York common law.
7
C.
Trademark Dilution under N.Y. GEN. BUS. LAW § 360-l
Buffalo Transportation also asserts a claim under Section 360-l of New York’s
General Business Law, entitling a plaintiff to injunctive relief when there is a “[l]ikelihood
. . . of dilution of the distinctive quality of a mark or trade name . . . notwithstanding the
absence of competition between the parties or the absence of confusion as to the
source of goods or services.” N.Y. Gen. Bus. Law § 360-l. To prevail on a claim under
that section, “a plaintiff must prove that (1) its mark possesses a distinctive quality
capable of dilution, and (2) there is a likelihood of such dilution.” CommScope, Inc., 809
F. Supp. 2d 33 at 39 (quotations omitted). “Distinctiveness, in this context, is measured
by the ‘strength of a mark for infringement purposes.’” Lyons P’Ship, L.P. v. D& L
Amusement & Entm’t, Inc., 702 F. Supp. 2d 104, 116 (E.D.N.Y. 2010) (quoting Johnson
& Johnson Consumer Cos., Inc. v. Aini, 540 F. Supp. 2d 374, 394 (E.D.N.Y. 2008). And
dilution is “either the blurring of a mark’s product identification or the tarnishment of the
affirmative associations a mark has come to convey.” Deere & Co. v. MTD Prods., Inc.,
41 F.3d 39, 42-43 (2d Cir. 1994).
The plaintiff has alleged the distinctive quality of the Buffalo Transportation
Marks. Buffalo Transportation uses its marks on over 200 vehicles to identify its
transportation services to patients and customers. Docket Item 1 at 3. The plaintiff
further alleges that the defendant uses the nearly identical phrase “Buffalo MD
Transportation” on a substantially similar logo in connection with nearly identical
services and that the similarity of both the defendant’s word and design marks have
caused actual confusion. Id. at 5-6.
These allegations plausibly suggest that the defendant’s use of the infringing
marks to market its services has diluted the plaintiff’s business name and reputation.
8
See CommScope, Inc., 809 F. Supp. 2d at 39 (finding that the plaintiffs established
liability in motion for default judgment when the defendant used the word “Commscope”
in its corporate name and licensed it to third parties, which was likely to injure the
business name and reputation of plaintiff’s mark, “CommScope.”). The plaintiff has
shown dilution for the same reasons noted above: the defendant’s marks use the same
two words as the plaintiff’s; the logos differ by only two letters and the buffalo graphic;
and the parties engage in the same type of business. Accordingly, the defendant is
liable for injury to business reputation and dilution under § 360-l of New York General
Business Law.
D.
Deceptive Business Practices under N.Y. GEN. BUS. LAW § 349
Buffalo Transportation also brings a claim for unfair business practices under
Section 349 of New York General Business Law. That section proscribes “[d]eceptive
acts and practices in the conduct of any business, trade or commerce or in the
furnishing of any service” in New York. “A party challenging an act or practice under
Section 349 must show that (1) defendant engaged in a consumer-oriented act, (2) that
the consumer-oriented act was misleading in a material way, and (3) that plaintiff
consequently suffered injury.” CommScope, Inc., 809 F. Supp. 2d at 39 (quotations
omitted).
Buffalo Transportation has alleged facts plausibly suggesting that the defendant
intended its infringing marks to be confusingly similar to the Buffalo Transportation
Marks. The defendant’s acts were “directed at consumers by way of their
advertisements on their vehicles as well as their online promotion.” Docket Item 1 at 10.
That was materially misleading because it had the potential to, and in fact did, confuse
9
customers into getting the defendant’s services when they wanted Buffalo
Transportation’s services. Id. And Buffalo Transportation suffered harm to its
reputation and public goodwill, as well as lost revenue. Id. Therefore, the defendant is
liable for unfair business practices under § 349 of New York General Business Law.
E.
Use of Name with Intent to Deceive under N.Y. GEN. BUS. LAW § 133
Finally, Buffalo Transportation brings a claim for use of a name with intent to
deceive under § 133 of New York General Business Law. That section makes it illegal
for a “person, firm or corporation . . . with intent to deceive or mislead the public
...
[to] use as, or as part of, a corporate, assumed or trade name, . . . for the purposes of
trade . . . any name, designation or style . . . which may deceive or mislead the public as
to the identity of such person . . . .” N.Y. Gen. Bus. § 133. It “protects tradenames
from unlawful infringement by prohibiting the use of someone else’s name, style or
symbol as part of one’s own name with an intent to deceive the public.” Sovereign Bus.
Forms, Inc. v. Stenrite Indus., Inc., 2000 WL 1772599, at *12 (S.D.N.Y. Nov. 28, 2011).
To establish a claim under § 133, a plaintiff must show that the defendant used the
plaintiff’s name or symbol as part of the defendant’s trade name for purposes of
advertising with an intent to deceive. See U-Neek, Inc. v. Wal-Mart Stores, Inc., 147 F.
Supp. 2d 158, 176 (S.D.N.Y. 2001).
Buffalo Transportation has alleged that the defendant used its name, “Buffalo
Transportation” as a part of the defendant’s trade name, “Buffalo MD Transportation.”
Docket Item 1 at 11. The plaintiff also alleges that the defendant did so “with the intent
to deceive and mislead the public,” id., and “to trade off the valuable goodwill of
Plaintiff’s Marks and reputation,” id. at 12. Taking the allegations in the complaint as
10
true, then, the defendant is liable for using Buffalo Transportation’s name with the intent
to deceive under N.Y. Gen. Bus. L. § 133.
For all those reasons, pursuant to Fed. R. Civ. P. 55(b), the Court GRANTS the
plaintiff’s motion for a default judgment on the issue of liability with regard to all five of
its claims.
III.
REQUESTED RELIEF
The plaintiff seeks both legal and equitable relief. Buffalo Transportation asks
that the defendant be permanently enjoined from any further use of confusingly similar
word and design marks. Docket Item 1 at 15. It asks that the defendant be required to
file an accounting of all revenues, income, profit, or any other pecuniary gain obtained in
connection with the use of the infringing marks. Id. Finally, it seeks an award of
damages sustained as a result of the defendant’s infringement; trebled damages;
disgorgement of all profits received by the defendant as a result of its infringing actions;
and its attorney’s fees and costs. Id.
1.
Injunctive Relief
“A Court may issue an injunction on a motion for default judgment provided that
the moving party shows that (1) it is entitled to injunctive relief under the applicable
statute, and (2) it meets the prerequisites for the issuance of an injunction.”
CommScope, Inc., 809 F. Supp. 2d at 41 (quoting Pitbull Prods., Inc. v. Univ. Netmedia,
Inc., 2007 WL 3287368, at *5 (S.D.N.Y. Nov. 7, 2007)).
The Lanham Act entitles Buffalo Transportation to each form of injunctive relief
that it requests. The act vests courts with the “power to grant injunctions, according to
the principles of equity and upon such terms as the court may deem reasonable, . . . to
11
prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.” 15 U.S.
C. § 1116(a). A court therefore has the power to enjoin a defendant from engaging in
further acts of trademark infringement and unfair competition and to direct the
destruction of all infringing materials. See, e.g., Rolls-Royce PLC v. Rolls-Royce USA,
Inc., 688 F. Supp. 2d 150, 151 (E.D.N.Y. 2010) (directing the defendants to “destroy or
to surrender to Plaintiff any and all materials . . . wherein . . . Rolls-Royce Marks may
appear.”).
But before Buffalo Transportation can actually obtain such relief, it must
demonstrate the prerequisites for an injunction: irreparable harm and the absence of an
adequate remedy at law. See Kingvision Pay-Per-View Ltd., 429 F. Supp. 2d at 516. It
has done so here.
“In trademark disputes, a showing of likelihood of confusion establishes . . .
irreparable harm.” Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532,
537 (2d Cir. 2005) (internal quotation marks omitted). Accepting Buffalo
Transportation’s allegations as true—particularly as they relate to the likelihood of
confusion and the allegation that people actually confuse Buffalo Transportation’s
services with the defendant’s services—the Court finds that the plaintiff indeed “has
alleged likelihood of confusion and thus also established irreparable injury.”
Commscope, Inc., 809 F. Supp. 2d at 41 (citing Pitbull Prods., Inc., 2007 WL 3287368,
at *6).
The final inquiry is whether Buffalo Transportation has an adequate remedy at
law. “[I]n cases where confusion about the origin of goods or services leads to damage
to reputation or loss of a potential relationship with a client that ‘would produce an
12
indeterminate amount of business in years to come[,]’ monetary damages are difficult to
establish and are unlikely to present an adequate remedy at law.” Century 21 Real
Estate LLC v. Bercosa Corp., 666 F. Supp. 2d 274, 296 (E.D.N.Y. 2009) (quoting
Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 404 (2d Cir. 2004). Furthermore, there
is no adequate remedy at law when the defendant’s infringing conduct is likely to
continue without an injunction. See Chanel, Inc. v. Sea Hero, 234 F. Supp. 3d 1255,
1262 (S.D. Fla. 2016) (“Plaintiff has no adequate remedy at law so long as Defendants
continue to operate the Seller IDs because Plaintiff cannot control the quality of what
appears to be its products in the marketplace.”); Commscope, Inc., 809 F. Supp. 2d at
41-42 (finding no adequate remedy at law where the defendant would continue to use a
name that was confusingly similar to a protected trademark absent an injunction).
Buffalo Transportation has alleged that the defendant’s acts have “caused, and unless
restrained and enjoined, will continue to cause a likelihood that consumers will be
confused about the source of the services. . . [and] Plaintiff has no adequate remedy at
law.” Docket Item 1 at 13. The defendant has not appeared, nor has the defendant
indicated any intent to cease using the infringing marks or names. Accepting the
complaint’s allegations as true, this Court finds that Buffalo Transportation has no
adequate remedy at law.
Because Buffalo Transportation has shown irreparable harm and the absence of
any adequate remedy at law, it meets the prerequisites for a permanent injunction.
13
2.
Damages
Buffalo Transportation also seeks a monetary award for “damages and all of
Defendant’s profits, revenues, income, or any other pecuniary gain”—trebled. Docket
Item 1 at 15.
15 U.S.C. § 1117 entitles a plaintiff who has established “a violation under
section 1125(a) . . . to recover (1) defendant’s profits, (2) any damages sustained by the
plaintiff, and (3) the costs of the action.” 15 U.S.C. § 1117. In the Second Circuit, “a
finding of defendant’s willful deceptiveness is a prerequisite for awarding profits” under
the Lanham Act. George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537 (2d Cir.
1992); see also Pedinol Pharmacal, Inc. v. Rising Pharm., Inc., 570 F. Supp. 2d 498,
502 (E.D.N.Y. 2008) (discussing “[t]he continuing viability of the wilfulness requirement
set forth in Basch”). But “many courts in [the Second Circuit] treat a default as evidence
of willfulness.” Sream, Inc. v. Khan Gift Shop, Inc., 2016 WL 1130610, at *5 (S.D.N.Y.
Feb. 23, 2016) (quoting Rolls-Royce PLC, 688 F. Supp. 2d at 157). This Court does
that here.4
Before granting a default judgment for a specific amount of damages, the court
should take steps, including by hearing or referral if necessary, to find the appropriate
4
Courts finding that default establishes willfulness often do so when the
complaint alleges the defendant’s willfulness. See, e.g., Complaint at 6, Rolls-Royce
PLC v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150, 157 (E.D.N.Y. 2010) (No. 09-1381)
(“Defendant adopted Plaintiffs’ Rolls-Royce Marks in its corporate and business title and
trade marks for the purpose of deceiving, misleading and confusing the public . . . .”)
(emphasis added). Here, Buffalo Transportation alleges that the “[d]efendant is
knowingly and willingly continuing its unauthorized use of a confusingly similar name
and design mark to intentionally deceive consumers in the marketplace and to trade off
the valuable goodwill of Plaintiff’s Marks and reputation.” Docket Item 1 at 12. The
Court accepts this allegation as true, and therefore Buffalo Transportation has alleged
enough to meet the willfulness standard and seek profits and damages.
14
amount to award with reasonable certainty. In fact, 15 U.S.C. § 1117 provides that
“[t]he court shall assess such profits and damages or cause the same to be assessed
under its direction.” 15 U.S.C. § 1117; see also Transatlantic Marine Claims Agency,
Inc., 109 F.3d at 111. “Although the default establishes a defendant’s liability, unless
the amount of damages is certain, the court is required to make an independent
determination of the sum to be awarded.” Griffiths v. Francillon, 2012 WL 1341077, at *1
(E.D.N.Y. Jan. 30, 2012).
This Court has no information upon which to base an award of damages and
therefore cannot determine the damage award to include in a judgment. The Court
therefore refers the case to United States Magistrate Judge Hugh B. Scott to issue a
report and recommendation to this Court on the amount of damages, and Buffalo
Transportation is invited to present proof to Judge Scott on the damage that it has
suffered. In that regard, the defendant is ordered to account for all profits derived from
actions infringing the Buffalo Transportation Marks and to render an accounting before
Judge Scott.
3.
Attorney’s Fees and Costs
Buffalo Transportation also seeks an award of attorney’s fees and costs. Docket
Item 1 at 15. 15 U.S.C. § 1117 provides that “[t]he court in exceptional cases may
award reasonable attorney fees to the prevailing party.” These exceptional cases exist
only when there is “evidence of fraud or bad faith.” Gordon & Breach Sci. Publishers
S.A. v. Am. Inst. of Physics, 166 F.3d 438, 439 (2d Cir. 1999) (quoting Twin Peaks
Prods., Inc., 996 F.2d at 1383). But when a plaintiff pleads the necessary facts for
willful infringement and the defendant defaults, the “defendant’s violations are deemed
15
willful and thus constitute exceptional circumstances.” Prot. One Alarm Monitoring, Inc.
v. Exec. Prot. One Sec. Serv., LLC., 553 F. Supp. 2d 201, 208 (E.D.N.Y. 2008)
(awarding attorney’s fees to trademark plaintiff). Therefore, Buffalo Transportation has
shown that it may well be entitled to an award of attorney’s fees and costs.
“In the Second Circuit, applications for attorney's fees must be supported by
contemporaneous time records specifying relevant dates, time spent, and work done.”
Prot. One Alarm Monitoring, Inc, 553 F. Supp. 2d at 208 n.1 (citing New York State
Ass'n for Retarded Children, Inc. v. Carey, 711 F.2d 1136, 1147–48 (2d Cir.1983)).
Buffalo Transportation has not yet submitted any such records to support an award of
attorney’s fees. Therefore, the plaintiff’s counsel should submit an application for costs
and attorney’s fees to Judge Scott for inclusion in his report and recommendation,
explaining why this case is exceptional and including records supporting its application.
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CONCLUSION
In light of the above, this Court finds, and GRANTS a declaratory judgement, that
the defendant, Frezer Bezu, doing business as Buffalo MD Transportation, has violated
15 U.S.C. § 1125(a), N.Y. GEN. BUS. LAW § 360-l, N.Y. GEN. BUS. LAW § 349, and N.Y.
GEN. BUS. LAW § 133 and committed common law trademark infringement and unfair
competition; and it is therefore
ORDERED that the defendant and any officers, agents, servants, employees,
attorneys, parents, successors, assigns, affiliates, and all others acting in concert or
participating with him be and hereby are permanently enjoined and restrained from
further acts infringing upon plaintiff Buffalo Transportation’s word and design marks by
using names or marks confusingly similar thereto or otherwise infringing upon the
Buffalo Transportation Marks; and it is further
ORDERED that the defendant shall render an accounting, pursuant to 15 U.S.C.
§ 1117, of all profits derived from sales of any kind made as a result of its infringing
actions and to provide that accounting to the plaintiff, and to Judge Scott; and it is
further
17
ORDERED that Buffalo Transportation shall offer proof of any damages,
attorney’s fees, and costs claimed in connection with this matter before Judge Scott.
SO ORDERED.
Dated:
March 22, 2019
Buffalo, New York
s/ Lawrence J. Vilardo
LAWRENCE J. VILARDO
UNITED STATES DISTRICT JUDGE
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