Roger Cleveland Golf Company Inc v. Prince et al

Filing 137

REPLY to Response to Motion re 127 MOTION for Attorney Fees Response filed by Roger Cleveland Golf Company Inc. (Attachments: # 1 Exhibit A - Jury Trial Discussions excerpt, # 2 Exhibit B - Verdict Form, # 3 Exhibit C - 9.29.10 ltr & Amended Notices of Depos to Doolittle, # 4 Exhibit D - Rolex v. Brown, # 5 Exhibit E - Chanel v. French, # 6 Exhibit F - Rolex v. Jones, # 7 Exhibit G - Lorillard Tobacco v. S&M Central Serv. Corp., # 8 Exhibit H - Employers Council v. Feltman, # 9 Exhibit I - Rodgers v. Anderson, # 10 Exhibit J - Silhouette v. Chakhbazian)(McElwaine, John)

Exhibit E

Page 1

LEXSEE 2006 U.S. DIST. LEXIS 93297
CHANEL, INC., a New York Corporation, Plaintiff, v. APRIL FRENCH d/b/a
APRILFRENCH222 d/b/a LUXURYLOCS.NET d/b/a LUXURYBAGS.ORG d/b/a
LUXURY LOCS d/b/a APRIL POINDEXTER, Defendants.
CASE NO.: 05-61838-CIV-COOKE/BROWN
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
FLORIDA, MIAMI DIVISION
2006 U.S. Dist. LEXIS 93297

December 22, 2006, Decided
COUNSEL: [*1] For Chanel, Inc., a New York
Corporation, Plaintiff: Stephen Michael Gaffigan, LEAD
ATTORNEY, Fort Lauderdale, FL.

filed September 15, 2006.

JUDGES: MARCIA G. COOKE, United States District
Judge.

The Plaintiff, Chanel Inc., is a corporate entity duly
organized and existing under the laws of the State of New
York, with its principal place of business in New York,
New York. Chanel designs and markets a wide range of
leather goods, including handbags, wallets, travel bags,
luggage, business card cases, change purses, tote bags,
cosmetic bags sold empty, briefcase-type portfolios,
attache cases, purses, suitcases, sunglasses, and other
goods which are sold throughout the United States and
worldwide.

OPINION BY: MARCIA G. COOKE
OPINION

ORDER GRANTING PLAINTIFFS' MOTION FOR
DEFAULT JUDGMENT
THIS CAUSE is before the Court upon the Plaintiff,
Chanel Inc.'s, Motion for Final Default Judgment with
Memorandum of Law in Support Thereof Against
Defendant April French a/k/a April Pointdexter [DE 12],

MARK

Background

Chanel is the owner of the following trademarks,
which are the subject of the following United States
Federal Trademark Registrations (the "Chanel Marks"):

REG. NO.

REG. DATE

CC MONOGRAM

1,734,822

November 24, 1992

CC MONOGRAM

1,314,511

January 5, 1985

CC MONOGRAM

1,654,252

August 20, 1991

CHANEL

1,733,051

November 17, 1992

CHANEL

0,626,035

May 1, 1956

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2006 U.S. Dist. LEXIS 93297, *1

CHANEL

1,347,677

July 9, 1985

CHANEL

1,510,757

November 1, 1988

2006. 1 See DEs 7 & 8.
[*2] These marks are registered in International
Class 9 and 18 and are used in connection with the
manufacture and distribution of products that Channel
designs and markets. Hahn Decl. P 5 (Exhibit C to DE
12). Chanel has extensively used, advertised, and
promoted the Chanel Marks in the United States,
associating them with handbags, sunglasses and other
goods, and has carefully monitored and policed the use of
the Chanel Marks. As a result of Chanel's efforts,
members of the consuming public readily identify
merchandise bearing the Chanel Marks as being high
quality merchandise sponsored and approved by Chanel.
Id. PP 6-7. The Chanel Marks qualify as "famous marks"
as that term is used in 15 U.S.C. § 1125(c)(1), and have
achieved a secondary meaning as identifiers of high
quality products, including handbags and sunglasses. Id.
PP 6-7. Chanel has never abandoned these trademarks.
Id. P 7. Nor has Chanel ever assigned or licensed them to
the Defendant, April French. Hahn Decl. P 9.
By default, the Defendant, April French, has
admitted that she is an individual who was doing business
in this Judicial District during the time period relevant to
this [*3] action. French owned and operated Internet
Websites under the domain names "LuxuryBags.org" and
"Luxurylocs.net," used the aliases "April Poindexter,"
"Luxury Locs," and "AprilFrench222," and was the
active, conscious, and dominant force behind the sale of
handbags and sunglasses bearing counterfeits of the
Chanel Marks. See Complaint; see also Hahn Decl. PP
10.
On December 1, 2005, Chanel initiated this Action
against April French for Federal Trademark
Counterfeiting and Infringement (Count I), Federal False
Designation of Origin (Count II), Trademark Dilution
(Count III), and Common Law Unfair Competition
(Count IV). See DE 1. French was served with the
Summons and Complaint, via personal service, on
December 12, 2005. See DE 6. Accordingly, French was
required to answer the Complaint within twenty days of
December 12, 2005. As of the date of this Order,
however, French has failed to appear in this Case
altogether. Chanel filed its Request for and obtained a
Clerk's Entry of Default against French on January 5,

1 The Court notes that Chanel has verified that
French is not in the military, not an infant, and not
incompetent. See Gaffigan Decl. P 7 (Exhibit A to
DE 12) and J. Holmes Decl. P 6 (Exhibit B to DE
12). Chanel has also verified that French now
resides at 5239 Browning Way SW, Lilburn
Georgia 30047. See J. Holmes Decl. P 7.
[*4] The Legal Backdrop
A defendant in default admits the plaintiff's
well-pled factual allegations in the complaint, thereby
assuming liability. Buchanan v. Bowman, 820 F.2d 359
(11th Cir. 1987). Once liability has been established, a
district court need then assess damages. See
Ortiz-Gonzalez v. Fonovisa, 277 F.3d 59, 62-63 (1st
Cir.2002); Arista Records, Inc. v. Beker Enters., 298 F.
Supp. 2d 1310, 1312 (S.D.Fla.2003); Tiffany v. Luban,
282 F.Supp.2d 123, 124 (S.D.N.Y.2003).
"Damages may be awarded only if the record
adequately reflects the basis for the award via a hearing
or a demonstration of detailed affidavits establishing the
necessary facts." Adolph Coors Co. v. Movement Against
Racism and The Klan, 777 F.2d 1538, 1544 (11th
Cir.1985); United Artists Corp. v. Freeman, 605 F.2d
854, 857 (5th Cir. 1979); Rolex Watch U.S.A., Inc. v.
Brown, 2002 U.S. Dist. LEXIS 10054, 2002 WL
1226863, *2 (S.D.N.Y. 2002) (finding that where "the
issue is statutory damages," the court can hold an inquest
into damages "on a paper record" rather than through an
in-person court hearing). Whether liability [*5] is found
by default or otherwise, the Lanham Act authorizes
awards of monetary damages, permanent injunctive
relief, and the recovery of attorney fees and costs. Sara
Lee Corp. v. Bags of New York, Inc., 36 F. Supp.2d 161
(S.D.N.Y. 1999); Playboy Enters., Inc. v. Asiafocus Int'l,
Inc., 1998 U.S. Dist. Lexis 10359 (E.D. Va. 1998).
Furthermore, 15 U.S.C. § 1117(c), allows a Plaintiff
to elect to recover statutory damages in lieu of
compensatory and punitive damages--for non-willful
violations, "not less than $ 500 or more than $ 100,000
per counterfeit mark per type of goods or services sold,

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2006 U.S. Dist. LEXIS 93297, *5

offered for sale, or distributed," and for willful violations,
"not more than $ 1,000,000 per counterfeit mark per type
of goods or services sold, offered for sale, or distributed."
2 Statutory damages are apropos when an infringer's
nondisclosure of pertinent facts--such as with
default--leaves damages uncertain. See Sara Lee Corp.,
36 F.Supp.2d at 165-66. The Court has wide discretion to
set an amount of statutory damages. Sara Lee Corp., 36
F.Supp.2d at 166-67 (collecting cases, analogizing the
Copyright [*6] Act statutory damages, and describing
breadth of court's discretion in awarding statutory
damages under the Lanham Act); see also Cable/Home
Communication Corp. v. Network Productions, Inc., 902
F.2d 829, 852 (11th Cir. 1990) (concluding that the
court's discretion in setting the amount of copyright
statutory damages is "wide, constrained only by the
specified maxima and minima."); Macklin v. Mueck,
2005 U.S. Dist. LEXIS 18026 (S.D. Fla. January 24,
2005) (increasing an award to that of maximum statutory
damages where copyright infringement was willful). A
finding of willful infringement--violative conduct that the
defendant knew to be improper and done in bad
faith--justifies an award of heightened damages and
attorneys' fees. Chanel, Inc. v. Italian Activewear of
Florida, Inc., 931 F.2d 1472, 1476 (11th Cir. 1991).
2
"While § 1117(c) looks to compensatory
considerations (e.g., actual losses and trademark
value), it also looks to punitive considerations
(e.g., deterrence of other infringers and redress of
wrongful defense conduct)." Sara Lee Corp., 36
F.Supp.2d at 165.
[*7] Findings of Fact and Conclusions of Law
A hearing in the instant action is unnecessary to
determine damages as the Plaintiff seeks statutory
damages and has attached detailed affidavits with
accompanying documentary evidence to its Motion for
Final Default Judgment. The Plaintiff has presented
evidence, uncontroverted by the Defendant, that
Defendant French distributed, sold, and/or otherwise
traded in counterfeit Chanel handbags, sunglasses, and
other goods. French's admissions by default, and the
papers filed in support of the Plaintiff's Motion for Final
Default Judgment establish the following facts:
(1) French stated to potential buyers that she was the
owner of the counterfeit handbag and sunglass products
at issue. Hahn Decl. PP 9-10; R. Holmes Decl. P 4
(Exhibit D to DE 12).

(2) French owned and operated an online business
which advertised, offered for sale, and/or sold handbags
and sunglasses bearing counterfeits of the Chanel Marks
using the domain name "LuxuryBags.org." Hahn Decl. P
9; see also Exhibit E to DE 12 (provides a sampling of
the Internet website, LuxuryBags.org, operated by
French, reflecting the sale of counterfeit Chanel
handbags).
(3) The [*8] handbags and sunglasses sold by
French are in fact counterfeit. See Hahn Decl. P 14; see
also R. Holmes Decl. P 9.
(4) French does not have, nor has she ever had, the
required permission to use the Chanel Marks. See Hahn
Decl. P 9.
By virtue of Defendant French's default, and upon
affirmative, supporting affidavits submitted by Plaintiff
Chanel, the well-pled factual allegations in Chanel's
Complaint are taken as genuine admissions by the
Defendant. French's failure to respond to the Complaint,
therefore, establishes her liability on the claims in this
action--generally that Defendant French misappropriated
Chanel's intellectual property and improperly traded upon
Chanel's goodwill by selling items bearing marks
identical to trademarks registered to Chanel.
The question that remains, then, is whether the
Defendant's infringement was willful. The Plaintiff's
affidavits and other supporting documents establish that
Defendant French is a willful counterfeiter. On
September 16, 2005, prior to filing the instant suit,
Chanel delivered a cease and desist letter by certified
mail and electronic mail to French regarding her unlawful
activity of selling products bearing counterfeit [*9]
Chanel Marks. Oka Decl. P 7 (Exhibit F to DE 12) and
Exhibit F.1. French responded three times on September
16, 2005, by electronic mail. Oka Decl. P 8-9. In the first
electronic message, French stated that she no longer
offered Chanel products for sale. Oka Decl. P 8 and
Exhibit F.2. In her second electronic response, French
asked how "other sites are able to sell these same bags
without any problem," Oka Decl. P 8 and Exhibit F.3. In
her third response, the Defendant included "Disclaimer
Information," essentially confirming that she was selling
"replicas" of designer products. Oka Decl. P 8 and
Exhibit F.4.
Furthermore, on at least September 21, 2005, and
October 17, 2005, Defendant French--after being advised

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2006 U.S. Dist. LEXIS 93297, *9

by Chanel that she was selling products bearing
counterfeit Chanel Marks, and claiming that she no
longer offered counterfeit Chanel products for
sale--continued selling Chanel counterfeits under the alias
"LuxuryBags.org." Oka Decl. PP 8-9 and Exhibits F.2,
F.5, and E. The Court, on December 19, 2006, conducted
an independent review of the website "LuxuryBags.org,"
and found that by then, albeit counterfeit Chanel bags had
been removed from the website, the Defendant, regarding
[*10] other designers, continued to claim, "Our replica
handbags are identical to the original designer bags in
every way including all the correct markings." This
comment alone highlights Defendant French's complete
lack of respect and disregard for the law and the
intellectual property rights of others. Defendant French is
the quintessential example of a willful infringer who
refuses even to participate in her own defense.
As Defendant French has refused participation in this
Matter, the Court must determine damages based on the
Plaintiff's detailed affidavits and supporting documents
evidencing infringement. The available evidence
demonstrates that French distributed, advertised, offered
for sale, and/or sold at least two types of goods,
specifically handbags and sunglasses, in multiple styles,
bearing counterfeits of Chanel's seven federally
registered marks for the same types of goods. See Exhibit
E. For example, on September 16, 2005, Defendant
French, via LuxuryBags.org, was offering for sale 21
different styles of handbags bearing the Chanel Marks
priced between $ 120.00 and $ 220.00 each, and 5
different styles of sunglasses bearing the Chanel Marks
priced between [*11] $ 54.00 and $ 65.00. Id. A review
of the Defendant's same website as it appeared on
September 21, 2005, revealed that French was again
offering for sale 21 different styles of handbags bearing
the Chanel Marks priced between $ 120.00 and $ 220.00
each, and 5 different styles of sunglasses bearing the
Chanel Marks priced between $ 54.00 and $ 65.00 each. 3
Id. If the Court takes handbags and sunglasses as two
different types of goods, and there are seven different
trademarks at issue being used with both types of goods,
then the Plaintiff has committed, apropos this suit,
fourteen willful trademark violations under 15 U.S.C. §
1117(c). The Court has wide discretion to award the
Plaintiff up to $ 1,000,000 per willful violation, exposing
the Defendant to a potential $ 14 million in statutory
damages.
3

The Defendant's website through which she

has been engaging in unlawful trademark
infringement, LuxuryBags.org, was registered on
April 21, 2005. See DE 12 at 10. Defendant
French was served with the Complaint in this
Matter on December 12, 2005. See DE 6 If the
Defendant began selling counterfeit Chanel
products upon registration of the website and
continued until being served with the Complaint,
then her violations persisted for about eight
months. Without any contrary information from
the Defendant, the Court must take this approach
as the most reasonable for calculating the duration
of the willful infringement.
[*12] Accordingly, the Court, having considered
the Plaintiff's Motion, the pertinent portions of the record,
and being otherwise advised fully in the premises, hereby
ORDERS AND ADJUDGES as follows:
1. Defendant April French is liable on all Counts in
the Complaint.
2. Defendant April French a/k/a April Poindexter and
her respective officers, agents, servants, employees and
attorneys, and all persons in active concert and
participation therewith are hereby restrained and enjoined
from intentionally and/or knowingly: (a) manufacturing
or causing to be manufactured, importing, advertising, or
promoting, distributing, selling or offering to sell
counterfeit and infringing goods bearing Chanel's
registered marks CHANEL and CC MONOGRAM as
identified in the Complaint, (the "Chanel Marks"); (b)
using the Chanel Marks in connection with the sale of
any unauthorized goods; (c) using any logo, and/or layout
which may be calculated to falsely advertise the services
or products of the Defendant as being sponsored by,
authorized by, endorsed by, or in any way associated with
Chanel; (d) falsely representing themselves as being
connected with Chanel, through sponsorship or
association; (e) [*13] engaging in any act which is likely
to falsely cause members of the trade and/or of the
purchasing public to believe any goods or services of the
Defendant, are in any way endorsed by, approved by,
and/or associated with Chanel; (f) using any
reproduction, counterfeit, copy, or colorable imitation of
the Chanel Marks in connection with the publicity,
promotion, sale, or advertising of any goods sold by the
Defendant including, without limitation, handbags and
sunglasses; (g) affixing, applying, annexing or using in
connection with the sale of any goods, a false description

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2006 U.S. Dist. LEXIS 93297, *13

or representation, including words or other symbols
tending to falsely describe or represent the Defendant's
goods as being those of Chanel, or in any way endorsed
by Chanel; (h) offering such goods in commerce and
otherwise unfairly competing with Chanel; (i) secreting,
destroying, altering, removing, or otherwise dealing with
the unauthorized products or any books or records which
contain any information relating to the importing,
manufacturing, producing, distributing, circulating,
selling, marketing, offering for sale, advertising,
promoting, renting or displaying of all unauthorized
products which infringe the [*14] Chanel Marks; and (j)
effecting assignments or transfers, forming new entities
or associations or utilizing any other device for the
purpose of circumventing or otherwise avoiding the
prohibitions set forth above.
2. Pursuant to 15 U.S.C. § 1117(c), Chanel is
awarded statutory damages in the amount of twenty
thousand dollars ($ 20,000) per violation for each of the
fourteen violations, totaling two-hundred-eighty thousand
dollars ($ 280,000), for which let execution issue.

3. Pursuant to 15 U.S.C. § 1117(b), Chanel is
awarded its attorney's fees of three thousand dollars ($
3,000), for which let execution issue.
4. Pursuant to 15 U.S.C. § 1117(b), Chanel is
awarded its investigative fees of seven hundred
ninety-nine dollars and ninety-nine cents ($ 799.99), for
which let execution issue;
5. Pursuant to 15 U.S.C. § 1117(b) Chanel is
awarded its costs of three hundred and five dollars ($
305.00), for which let execution issue.
6. The Clerk shall CLOSE this case. All pending
motions are DENIED as moot.
DONE AND ORDERED in Chambers at Miami,
Florida, this 22nd day [*15] of December, 2006.
MARCIA G. COOKE
United States District Judge