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 I
Page 1
LEXSEE 2005 U.S. DIST. LEXIS 7054
NILE RODGERS, Plaintiff, -against- ALFA ANDERSON, NORMA JEAN
WRIGHT & LUCI MARTIN, Defendants.
04 Civ. 1149 (RJH) (AJP)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
NEW YORK
2005 U.S. Dist. LEXIS 7054
April 26, 2005, Decided
SUBSEQUENT HISTORY: Summary judgment
granted by Rodgers v. Wright, 2008 U.S. Dist. LEXIS
26550 (S.D.N.Y., Mar. 31, 2008)
COUNSEL: [*1] For Nile Rodgers, Plaintiff: James P.
Cinque, Cinque & Cinque, New York, NY; Oren J.
Warshavsky, Gibbons, Del Deo, Dolan, Griffinger &
Vecchione (NY), New York, NY.
JUDGES: ANDREW J. PECK, United States Chief
Magistrate Judge.
OPINION BY: ANDREW J. PECK
OPINION
"Chic," for their performing under the name "Chic,"
thereby violating plaintiff's trademark rights. (See
generally Dkt. No. 1: Compl.) On December 23, 2004,
Judge Holwell granted Rodgers a default judgment
including injunctive relief against defendants, and
referred the matter to me for an inquest as to damages
and attorneys' fees. (Dkt. No. 17: 12/23/04 Default
Judgment.) Plaintiff submitted papers on the inquest
seeking statutory damages and attorneys fees. (Dkt. Nos.
21-23, 26.) 1 Defendants have not submitted [*2] any
opposition papers, and the deadline for doing so has long
passed. (See Dkt. Nos. 18 & 20: Scheduling Orders.)
1 Plaintiff initially also sought actual damages in
the alternative (Dkt. No. 21: Rodgers Br. at 5), but
subsequently dropped that request (Dkt. No. 25:
3/25/05 Letter to Court from James Cinque).
REPORT AND RECOMMENDATION
ANDREW J. PECK, United States Chief Magistrate
Judge:
For the reasons stated below, the Court should award
plaintiff Rodgers $ 250,000 in statutory trademark
damages.
To the Honorable Richard J. Holwell, United States
District Judge:
FACTS
Plaintiff Nile Rodgers, one of the founders of the
1970's disco era musical group "Chic," and owner of the
registered service mark "Chic," commenced this action
against defendants Alfa Anderson, Norma Jean Wright
and Luci Martin, who were employed as vocalists in
"Where, as here, 'the court determines that defendant
is in default, the factual allegations of the complaint,
except those relating to the amount of damages, will be
taken as true.'" Chen v. Jenna Lane, Inc., 30 F. Supp. 2d
622, 623 (S.D.N.Y. 1998) (Carter, D.J. & Peck, M.J.)
(quoting C. Wright, A. Miller & M. Kane, Federal
Page 2
2005 U.S. Dist. LEXIS 7054, *2
Practice & Procedure: Civil 3d § 2688 at 58-59 (3d ed.
1998)).
In 1977, plaintiff Nile Rodgers founded a partnership
with Bernard Edwards under the name "Chic" and
obtained a service mark for "Chic." (Dkt. No. 1: Compl.
PP [*3] 10-12; Dkt. No. 22: Rodgers Aff. PP 2-3.) 2
They performed under that name, with defendants
Anderson, Wright and Martin as employee backup
singers. (Compl. P 14; Rodgers Aff. P 7.) "At all times
defendants occupied the status of employee, and never
were they grant [sic] any right or permission to use the
Trademark in any fashion." (Compl. P 14; see also
Rodgers Aff. P 7.) "'Chic' was one of the top groups of
the disco era in the 1970's, and had . . . many Top 10
hits." (Rodgers Aff. P 2.) Indeed, Chic has been described
as "disco's greatest band." See Steve Huey, "All Music
Guide," Chic: Bio, available at http://www.MTV.com.
2 Edwards died in 1996. (Rodgers Aff. P 2.)
Beginning in November 2003, Rodgers learned that
defendants were performing as "Chic" or "Chic Live!,"
without Rodgers' consent. (Compl. PP 15-18; Rodgers
Aff. PP 8-9 & Exs. B-J). 3 The complaint asserts claims
under the federal trademark laws (Compl. PP 21-32) and
state law claims (id. PP 33-45).
3 The exhibits show that defendants performed
as "The First Ladies of Chic." (Rodgers Aff. Exs.
B-E, G-J.) In a sense, that is truthful, because they
were the first female (backup) singers in Chic;
any possible defense, however, has been waived
by defendants' default.
[*4] As noted above, on December 23, 2004, Judge
Holwell granted plaintiff a default judgment and
permanent injunction against defendants Anderson,
Wright and Martin, and referred the matter to me for an
inquest to "determine the amount of damages and
attorneys' fees due plaintiff as a result of defendants'
infringement on plaintiff's 'Chic' trademark." (Dkt. No.
17: Default Judgment.)
ANALYSIS
The Second Circuit has approved the holding of an
inquest by affidavit, without an in-person court hearing,
"'as long as [the Court has] ensured that there was a basis
for the damages specified in the default judgment.'"
Transatlantic Marine Claims Agency, Inc. v. Ace
Shipping Corp., 109 F.3d 105, 111 (2d Cir. 1997)
(quoting Fustok v. ContiCommodity Servs., Inc., 873 F.2d
38, 40 (2d Cir. 1989)).
Plaintiff Rodgers seeks $ 500,000 in statutory
damages pursuant to 15 U.S.C. § 1117(c). (See Dkt. No.
21: Rodgers Br. at 5-6.) Section 1117(c) provides:
(c) Statutory damages for use of
counterfeit marks
In a case involving the use of a
counterfeit mark (as defined in section
1116(d) of this title) in connection [*5]
with the sale, offering for sale, or
distribution of goods or services, the
plaintiff may elect, at any time before final
judgment is rendered by the trial court, to
recover, instead of actual damages and
profits under subsection (a) of this section,
an award of statutory damages for any
such use in connection with the sale,
offering for sale, or distribution of goods
or services in the amount of (1) not less than $ 500 or more than $
100,000 per counterfeit mark per type of
goods or services sold, offered for sale, or
distributed, as the court considers just; or
(2) if the court finds that the use of the
counterfeit mark was willful, not more
than $ 1,000,000 per counterfeit mark per
type of goods or services sold, offered for
sale, or distributed, as the court considers
just.
15 U.S.C. § 1117(c)(1)-(2).
The rationale for this section is the practical inability
to determine profits or sales made by counterfeiters. See,
e.g., Silhouette Int'l Schmied AG v. Chakhbazian, 2004
U.S. Dist. LEXIS 19787, 04 Civ. 3613, 2004 WL
2211660 at *2 (S.D.N.Y. Oct. 4, 2004) (Peck,
M.J.);Gucci America, Inc. v. Duty Free Apparel, Ltd.,
315 F. Supp. 2d 511, 520 (S.D.N.Y. 2004) [*6]
("Congress added the statutory damages provision of the
Lanham Act in 1995 because 'counterfeiters' records are
frequently nonexistent, inadequate, or deceptively kept . .
., making proving actual damages in these cases
Page 3
2005 U.S. Dist. LEXIS 7054, *6
extremely difficult if not impossible.'") (quoting Senate
report); Tiffany (NJ) Inc. v. Luban, 282 F. Supp. 2d 123,
124 (S.D.N.Y. 2003) (same); Polo Ralph Lauren, L.P. v.
3M Trading Co., 1999 U.S. Dist. LEXIS 7913, 97 Civ.
4824, 1999 WL 33740332 at *4 (S.D.N.Y. Mar. 23,
1999) ("It is often the case that 'counterfeiters' records are
nonexistent, inadequate or deceptively kept in order to
willfully deflate the level of counterfeiting activity
actually engaged in, making proving actual damages in
these cases extremely difficult if not impossible.'"); Sara
Lee Corp. v. Bags of New York, Inc., 36 F. Supp. 2d 161,
165 (S.D.N.Y. 1999) ("Statutory damages are most
appropriate when infringer nondisclosure during fact
finding leaves damages uncertain.").
Section 1117(c) "'does not provide guidelines for
courts to use in determining an appropriate award,' as it is
only limited by what 'the court considers just.' 15 U.S.C.
§ 1117(c) [*7] . However, courts have found some
guidance in the caselaw of an analogous provision of the
Copyright Act, 17 U.S.C. § 504(c), which also provides
statutory damages for willful infringement." Gucci
America, Inc. v. Duty Free Apparel, Ltd., 315 F. Supp. 2d
at 520 (citations omitted). 4 Among the appropriate
factors particularly relevant here are the deterrent effect
on defendants and others, and the defendants' failure to
produce records from which more traditional damages
could be computed. See, e.g., Gucci America, Inc. v. Duty
Free Apparel, Ltd., 315 F. Supp. 2d at 520; see also cases
cited in n.4 above.
Dist. LEXIS 19787, 2004 WL 2211660 at *2 (awarding $
250,000 for more clearly willful trademark infringement);
see, e.g., Gucci America, Inc. v. Duty Free Apparel, Ltd.,
315 F. Supp. 2d at 520-21 ( $ 2 million award for use of
two counterfeit marks); Tiffany (NJ) Inc. v. Luban, 282 F.
Supp. 2d at 124-25 (Awarding plaintiff the $ 550,000 in
statutory damages sought by plaintiff because "by virtue
of the default, [defendants'] infringement is deemed
willful, and therefore the Court has discretion to award
anywhere between $ 500 and $ 1,000,000 per counterfeit
mark per type of good sold," and amount [*9] plaintiff
sought was "within the range of awards in similar
cases."); Rolex Watch U.S.A., Inc. v. Brown, 2002 U.S.
Dist. LEXIS 10054, 01 Civ. 9155, 2002 WL 1226863 at
*2 (S.D.N.Y. June 5, 2002) (Peck, M.J.) (awarding $ 1
million damages despite defendant's use of multiple
Rolex marks) (& cases cited therein); Rolex Watch
U.S.A., Inc. v. Jones, 2002 U.S. Dist. LEXIS 6657, 99
Civ. 2359, 2002 WL 596354 at *6 (S.D.N.Y. Apr. 17,
2002) ("In short, statutory damages of less than $ 1
million but more than $ 25,000 per category of
trademarked goods are appropriate to compensate the
plaintiffs for their losses and to deter [defendant] from
violating the plaintiffs' trademarks anew upon his release
from jail." Recommends award of $ 500,000 for
infringement of Rolex trademarks and $ 100,000 for
infringement of Ralph Lauren trademarks); Sarah Lee
Corp. v. Bags of New York, Inc., 36 F. Supp. 2d at 170
(awarding $ 750,000 in statutory damages).
Attorneys' Fees and Costs
4 Accord, e.g., Silhouette Int'l Schmied AG v.
Chakhbazian, 2004 U.S. Dist. LEXIS 19787,
2004 WL 2211660 at *2 & n.1; Tiffany (NJ) Inc.
v. Luban, 282 F. Supp. 2d at 124-25; see, e.g.,
Polo Ralph Lauren, L.P. v. 3M Trading Co., 1999
U.S. Dist. LEXIS 7913, 1999 WL 33740332 at
*5; Sarah Lee Corp. v. Bags of New York, Inc., 36
F. Supp. 2d at 165-67.
[*8] In this case, defendants have defaulted and by
virtue of their default, are deemed to be willful infringers.
While Rodgers seeks $ 500,000, he has not provided any
basis for that figure nor any cases in analogous situations
that would support such an amount. The Court believes
that $ 250,000 in statutory damages based on willful
infringement is sufficient and appropriate to deter
defendants and others. This amount is consistent with
(indeed, lower than) awards in similar cases. E.g.,
Silhouette Int'l Schmied AG v. Chakhbazian, 2004 U.S.
Plaintiff Rodgers seeks attorneys' fees (see Dkt. No.
21: Rodgers Br. at 6-7; see also Dkt. No. 26: 3/30/05
Cinque Aff.), which may be awarded in "exceptional
cases." See, e.g., Microsoft Corp. v. Black Cat Computer
Wholesale, Inc., 269 F. Supp. 2d 118, 124 (W.D.N.Y.
2002) [*10] ("The Lanham Act specifically provides that
'the court in exceptional cases may award reasonable
attorney fees to the prevailing party.' 15 U.S.C. §
1117(a). A willful infringement may be considered an
exceptional case under the Lanham Act.") (citing Second
Circuit authority); GTFM, Inc. v. Solid Clothing Inc., 215
F. Supp. 2d 273, 305-06 (S.D.N.Y. 2002) ("'Exceptional'
circumstances include willful infringement. . . .
[Defendant] Solid engaged in willful infringement. If
defendant's bad faith alone were not sufficient to make
this an exceptional case, its continued sales between
March and November 2001, its conduct during discovery,
and its perjury during deposition and at trial make this an
Page 4
2005 U.S. Dist. LEXIS 7054, *10
exceptional case. GTFM is entitled to reasonable
attorney's fees."); Rolex Watch U.S.A., Inc. v. Brown,
2002 U.S. Dist. LEXIS 10054, 2002 WL 1226863 at *3
(citing cases).
This Court has previously noted that there is some
question as to the availability of attorneys' fees where
statutory damages are awarded under § 1117(c) as
opposed to § 1117(a) or (b). See Rolex Watch U.S.A., Inc.
v. Brown, 2002 U.S. Dist. LEXIS 10054, 2002 WL
1226863 at *3. 5 While at least [*11] one judge has
declined to award attorneys' fees under § 1117(c), see,
e.g., Gucci America, Inc. v. Duty Free Apparel, Ltd., 315
F. Supp. 2d at 522, most decisions have awarded
attorneys' fees even where the damage award is pursuant
to § 1117(c). See, e.g., Tiffany (NJ) Inc. v. Luban, 282 F.
Supp. 2d at 125 (Gucci judge awards attorneys' fees
without discussion); Rolex Watch U.S.A., Inc. v. Jones,
2002 U.S. Dist. LEXIS 6657, 2002 WL 596354 at *6;
Sarah Lee Corp. v. Bags of New York, Inc., 36 F. Supp.
2d at 170-71.
5 In Brown, I wrote:
Section 1117(a) provides for
actual damages plus attorneys' fees
in "exceptional cases," and §
1117(b) provides for enhanced
damages and attorneys' fees in
cases
where
the
defendant
intentionally used a counterfeit
mark. Rolex here, however, seeks,
and is receiving, enhanced
willfulness statutory damages
under 15 U.S.C. § 1117(c), which
refers to awarding statutory
damages "instead of" damages
under § 1117(a). . . . Perhaps
Congress intended § 1117(c) to
replace only the damages available
under § 1117(a) while leaving
available the "exceptional case"
attorneys' fee provision of §
1117(a). Or perhaps because of the
enhanced amount of statutory
damages under § 1117(c) or a
legislative oversight, attorneys'
fees are not available where
statutory damages are awarded
under § 1117(c).
Rolex Watch U.S.A., Inc. v. Brown, 2002 U.S.
Dist. LEXIS 10054, 2002 WL 1226863 at *3;
accord, e.g., Silhouette Int'l Schmied AG v.
Chakhbazian, 2004 U.S. Dist. LEXIS 19787,
2004 WL 2211660 at *3 & n.2.
[*12] The Court need not resolve that issue here.
The Court finds that the award of enhanced statutory
damages of $ 250,000 under § 1117(c) more than suffices
in this case to make plaintiff Rodgers whole, including
for the $ 15,697.35 claimed for attorneys' fees and
disbursements (see Dkt. No. 26: 3/30/05 Cinque Aff. PP
6-7), and serves as a sufficient deterrent to these
defendants and others.
CONCLUSION
For the reasons set forth above, the Court should
award plaintiff Rodgers statutory trademark damages of $
250,000.
Plaintiff's counsel is to serve this Report and
Recommendation on defendants and file proof of service
with the Clerk of Court.
FILING OF OBJECTIONS TO THIS REPORT AND
RECOMMENDATION
Pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of
the Federal Rules of Civil Procedure, the parties shall
have ten (10) days from service of this Report to file
written objections. See also Fed. R. Civ. P. 6. Such
objections (and any responses to objections) shall be filed
with the Clerk of the Court, with courtesy copies
delivered to the chambers of the Honorable [*13]
Richard J. Holwell, 500 Pearl Street, Room 1950, and to
my chambers, 500 Pearl Street, Room 1370. Any requests
for an extension of time for filing objections must be
directed to Judge Holwell. Failure to file objections will
result in a waiver of those objections for purposes of
appeal. Thomas v. Arn, 474 U.S. 140, 106 S. Ct. 466, 88
L. Ed. 2d 435 (1985); IUE AFL-CIO Pension Fund v.
Herrmann, 9 F.3d 1049, 1054 (2d Cir. 1993), cert.
denied, 513 U.S. 822, 115 S. Ct. 86, 130 L. Ed. 2d 38,
115 S. Ct. 86 (1994); Roldan v. Racette, 984 F.2d 85, 89
(2d Cir. 1993); Frank v. Johnson, 968 F.2d 298, 300 (2d
Cir.), cert. denied, 506 U.S. 1038, 113 S. Ct. 825, 121 L.
Ed. 2d 696 (1992); Small v. Sec'y of HHS, 892 F.2d 15,
16 (2d Cir. 1989); Wesolek v. Canadair Ltd., 838 F.2d
55, 57-59 (2d Cir. 1988); McCarthy v. Manson, 714 F.2d
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2005 U.S. Dist. LEXIS 7054, *13
234, 237-38 (2d Cir. 1983); 28 U.S.C. § 636(b)(1); Fed.
R. Civ. P. 72, 6(a), 6(e) [*14] .
Respectfully submitted,
Andrew J. Peck
DATED: New York, New York
United States Chief Magistrate Judge
April 26, 2005
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