Epic Tech, LLC v. Lara et al

Filing 53

OPINION AND ORDER granting 42 Motion for Default Judgment.(Signed by Judge Melinda Harmon) Parties notified.(jdav, 4)

United States District Court
Southern District of Texas

ENTERED
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
EPIC TECH, LLC,
Plaintiff,
VS.
FRANK LARA, and
PC SWEEPS, LLC

§
§
§
§
§
§
§
§

November 30, 2017
David J. Bradley, Clerk

CIVIL ACTION NO. 4:15-CV-01220

Defendants.
OPINION AND ORDER
Pending before the Court in the above-referenced cause is Plaintiff Epic Tech’s (“Epic”)
Motion for Default Judgment (“Motion”) against Defendants Frank Lara, individually and PC
Sweeps, LLC (“Lara and Sweeps”). Doc. 42. The Court previously entered a default against Lara
and Sweeps on November 2, 2017. Doc. 48. After careful consideration of the filings, record,
and law, the Court is of the opinion that the motion should be granted.
Epic alleges that Lara and Sweeps modified and distributed Epic’s Legacy sweepstakes
software in violation of Epic’s registered copyrights and trademarks, unregistered trademarks,
and that they misappropriated Epic’s trade secrets. Doc. 1 at 1–2, 10. Epic seeks a default
judgment on statutory damages for willful copyright and trademark infringement, seeks a
permanent injunction against Lara and Sweeps’s continuing use of Epic’s Legacy sweepstakes
software, and seeks attorney’s fees, post-judgment interest, and costs. Docs. 1 at 28; 42 at 6–7.
I. Background
Epic owns Legacy, a proprietary sweepstakes software system, and various associated
copyrights, trademarks, and trade secrets. Doc. 1 at 3–10. Some of these copyrights and
trademarks are federally registered. See id. at 7–10. According to Epic, Legacy’s software
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system is a “promotional tool” where licensed businesses “provide[] entries into a server-based
sweepstakes either through the making of a qualified purchase or after following the rules . . . of
the sweepstakes.” Id. at 3–4, ¶ 12. “Patrons can then either reveal the results of their entries
through using entertaining games available on the computer terminals, or by requesting that the
results be immediately revealed.” Id.
Epic’s complaint also explains how Legacy operates and how Epic protects its code from
manipulation. Legacy operates across a network consisting of a server, a management terminal, a
point of sale terminal, computer terminals for customers’ use, and a management terminal. Doc.
1 at 4, ¶ 13. It features “highly confidential mathematical formulas” and source code that neither
patrons nor businesses licensing Legacy may view. Id. at 6, ¶ 16. Instead, “[a]ccess to the server
is only available to high security level employees of Epic Tech, via sophisticated password
protection mechanisms,” and a “kill code” can be used to “disable the software.” Id. at 6–7.
Utilizing this code, Legacy creates a “variety of entertaining games, which have proprietary
names, themes, images, sounds, and even music.” Id.
On May 7, 2015, Epic brought this lawsuit, alleging that Lara and Sweeps “gained
unauthorized possession” of Epic’s Legacy software, renaming it as “Falcon,” and “have
engaged in a scheme to secretly modify, copy, and distribute the software to unauthorized third
parties within the state of Texas,” North Carolina, and Florida.1 Id. at 1–2, 10, 13. Attached to
Epic’s complaint are the sworn declarations of Jason Queen, Epic’s Director of Information
Technology, Doc. 2-1 at Ex. 1, and James Fierro, Epic’s private investigator, Id. at Ex. 2; the

1

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Epic’s suit against other defendants in the distribution scheme is detailed in two other
suits. See Epic Tech, LLC v. STHR Group, LLC, No. 1:15CV252, 2015 WL 8179513
(M.D.N.C. Dec. 7, 2015), report and recommendation adopted, No. 1:15-CV-252, 2015
WL 9592522 (M.D.N.C. Dec. 31, 2015) and Red Rock, et al. vs. North Loop
Sweepstakes, et al., No. 2015DCV0546 (327th Dist. Ct., El Paso County, Tex.)

deposition transcripts of Robert Cavazos, an owner of an infringing sweepstakes parlor in Texas,
Id. at Ex. 3, Kevin Frank, an installation and maintainer of Falcon terminals, Id. at Ex. 4 and
Richard Schappel, a distributor of Falcon software, Id. at Ex. 5; an assignment of copyrights to
Epic, Id. at Ex. 6; a copyright, Id. at Ex 7, and two trademark registrations, Id. at Ex. 8.
Additional copyright and trademark registrations are attached to Epic’s Motion for Default
Judgment. Doc. 42 at Ex. 4, 5.
According to Queen, Epic’s I.T. Director, Lara and Sweeps distributed “Falcon
software,” which is “directly copied from [Epic’s] software.” Doc. 2-1 at 3–6. Queen’s allegation
is based upon photographs taken by Fierro at a business location at 16097 N. Loop Dr., Ste E,
Socorro, Texas 79927 (“North Loop”), and personal observations of Falcon’s “management
terminal software,” as follows: Lucky Duck Game:
Epic’s Software

Falcon Software

Sweepstakes Paytable:
Epic’s Software

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Falcon Software

Reel Cats Game:
Epic’s Software

Falcon Software

Management Terminal:
Epic’s Management Terminal

Falcon Management Terminal

Id. at 3–10, 14–16. Queen also claims that he personally observed Falcon software in multiple
locations in North Carolina and Florida. Id. at 6. In addition to North Carolina and Florida,
Queen “believes that the Falcon software is being distributed in other states including Arizona,
California, and Colorado.” Id. at 11.
Epic alleges that the depositions provide additional evidence of a scheme where Lara and
Sweeps would distribute and install Falcon software, and then retrieve a portion of the revenue.
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Doc. 1 at 11, 13. According to the deposition of Cavazos, Lara installed the software at North
Loop, and picked up a weekly cash payment of 50% of revenues derived from Falcon. Doc. 2-1
at 54:5, 59:7–10, 88:5–12, Ex. 3. According to the depositions of Frank and Schappel, Lara
distributed the software to them for installation, Lara activated the software, and Lara received
5% of profits. Id. at Ex. 4, 5.
Queen alleges that Epic owns the copyrights for the above software and icons. Relevant
to the default judgment, Queen alleges that Epic owns these five copyrights for the Lucky Duck
game and one for the Ritzy Kitty game: Copyright Registration Nos. PA0001828303 (lucky duck
screen displays), VA0001745520 (lucky duck game icons and screens), VA0001779200
(cherries), VA0001779211 (bell), VA0001779212 (watermelon), and VA0001943259 (Ritzy
Kitty). Id. at 3; Doc. 42 at 13–14. According to the exhibits attached to the motion for default
judgment and a supplement to that motion, Epic owns each of these copyrights through
assignment, conveyance, or direct copyright claim. Docs. 42-4, Ex. 4 (copies of copyright
filings); 2-1 at 368–372, Ex. 6 (assignment of copyrights to Epic); 50. While, the supplemental
filing walks through the transfer of the copyright claims from filing to Epic, we do not include
this roadmap in the opinion because the Court granted Epic’s motion to seal the supplemental
filing. Doc. 50.
Queen also alleges that Epic owns two federal trademarks for the Lucky Duck, U.S.
Trademark Registration No. 3,853,565, and Reel Cats games, U.S. Trademark Registration No.
3,782,626. Doc. 2-1 at 3. The below example screen shots were taken from Falcon software used
in North Carolina:

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Epic Tech Registered Trademark

Falcon Infringing Mark

Registration No. 3,853,565
Epic Tech Registered Trademark

Falcon Infringing Mark

Registration No. 3,782,626

According to the exhibits attached to the motion for default judgment, Gateway Gaming, LLC
registered federal trademarks for Lucky Duck and Reel Cats, and later assigned those trademarks
to Epic. Doc. 42-5, Ex. 5. Epic also alleges common law trademarks for Storefront and
Community Prize, but Queen only references other “registered trademarks.” Docs. 1 at 9, ¶ 28;
2-1 at 4, ¶ 11, as follows:
Epic Tech Common Law Trademarks

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Defendants’ Infringing Mark

Epic Tech Common Law Trademarks

Defendants’ Infringing Mark

Doc. 1 at 14.2
Finally, Queen alleges that the similarities of the management terminal software of both
Falcon and Legacy proves that Falcon used a copy of Legacy’s computer code, which is Epic’s
trade secret. Id. at 8–11.
Thus, Epic sued Lara and Sweeps alleging that they willfully infringed on six of Epic’s
copyrights under 17 U.S.C. § 501, two trademarks under 15 U.S.C. § 1114, two common law
trademarks under state law, and its trade secret computer code. Id. at 15–29; Doc. 42 at 6–7.
Epic effected service on Lara and Sweeps. On May 13, 2015, Epic served Lara under
Rule of Civil Procedure 4(e)(2)(B) by leaving copies of the Complaint and Summons with
someone of suitable age and discretion who resides at Lara’s residence. Doc. 17. On the same
date, Epic served Sweeps under Rule of Civil Procedure 4(h)(1)(B) by effecting service on Lara,
the president of Sweeps, and by delivering a copy of the summons and of the complaint to Ms.
Holseth, Accounts Manager of Sweeps. Doc 18.
On April 7, 2017, Epic moved for default judgment against Laura and Sweeps, seeking
statutory damages for willful conduct, a permanent injunction, and attorney’s fees. Doc. 42.
Under the Local Rules of the Southern District of Texas, Epic served the motion for default
judgment upon the Defendants via certified mail, with return receipt requested. Id. at 26, see also
2

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At the November 15, 2017 hearing, counsel for Epic clarified that the Reel Cats Logo
was federally trademarked, and any reference to a Reel Cats Logo common law
trademark was a scrivener’s error. Instead, Epic’s other common law trademark was the
storefront image. Docs. 1 at 9 ¶ 28; 42 at 22.

S.D. Tex. L.R. 5.5. Defendants failed to respond to the motion for default judgment.
On November 15, 2017, the Court held a hearing on the default judgment motion,
offering parties an opportunity to focus the Court’s attention on supporting or detracting
evidence. Lara and Sweeps did not appear. Counsel for Epic appeared to support their argument
for willful statutory damages. In support of its assertion that Lara and Sweeps’s infringement
was willful, Epic called the Court’s attention to the sophistication of Lara and Sweeps’s
distribution scheme, which indicated a familiarity with licensing laws.
Epic also asserted that Lara knew that Epic was asserting a copyright infringement case
and intentionally chose not to participate in this suit because Schappel spoke to Lara about the
related North Carolina lawsuit. According to his deposition, Schappel had a “heated
conversation” where he told Lara that “[Epic] had filed suit on a couple of locations in North
Carolina, that [Epic was] alleging copyright infringement . . . [and] [t]hat I was absolutely going
to tell them where I got it.” Doc. 2-1 at 326–27. Schappel also stated in the deposition that Lara
“wasn’t very happy that I was telling him those things,” but that Lara said “that it wasn’t going
to be a problem.” Id. at 327. Thus, Epic contends that Lara knew of potential copyright
accusations, but chose not defend himself or his company.
Epic also provided of two estimations of their actual damages: monthly and total
damages. Based upon their client’s representations, counsel to Epic alleged that each infringing
machine would generate $3 per day in profit, and each location would have dozens of machines.
Epic alleges that the combined machines in a storefront location would net approximately
$50,000 a month. Considering the size of the distribution scheme and multiple locations, Epic
estimates that Lara and Sweeps converted approximately $15 million. Thus, Epic asserts that
asking for the statutory maximum of $4.9 million is a reasonable statutory damage award.
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II. Legal Standards and Discussion
Epic seeks a default judgment on statutory damages for willful copyright and trademark
infringement, seeks a permanent injunction against Lara and Sweeps’s continuing use of Epic’s
Legacy sweepstakes software, and seeks attorney’s fees. Doc. 42 at 6–7
A. Default Judgment
Rule 4 of the Federal Rules of Civil Procedure requires the plaintiff to serve a copy of the
summons and complaint on the defendant. Fed. R. Civ. P. 4(c)(1). If the opposing party then fails
to plead or otherwise defend as required by law, the serving party is entitled to entry of a default
by the clerk of the court. Fed. R. Civ. P. 55(a). Following entry of the clerk’s default, the Court
may enter a final default judgment. Fed. R. Civ. P. 55(b). Local Rule 5.5 requires that a motion
for default judgment be served upon the defendant via certified mail, return receipt requested.
S.D. Tex. L.R. 5.5.
However, “a defendant’s default does not in itself warrant the court in entering a default
judgment. There must be a sufficient basis in the pleadings for the judgment entered.”
Nishimatsu Const. Co., Ltd. v. Houston Nat. Bank, 515 F.2d 1200, 1206 (5th Cir. 1975). When
considering the motion for default judgment, the court should accept as true all well-pleaded
allegations of fact in the complaint and a defendant is barred from contesting those facts on
appeal. Id.; Wooten v. McDonald Transit Associates, Inc., 788 F.3d 490, 496 (5th Cir. 2015)
(holding that a defendant does not admit facts that are not well-pleaded or to admit conclusions
of law.) As to damages, a default judgment may be entered if the plaintiff’s claim is for a sum
certain or a sum which can be made certain by computation; otherwise, the court must hold a
hearing to determine the appropriate award. Richardson v. Salvation Army, 161 F.3d 7, *1 (5th
Cir. 1998).
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To determine if a default judgment should be entered against a defendant, courts apply a
two-step analysis. Entizne v. Smith Moorevision, LLC, No. 3:13–CV–2997–B, 2014 WL
1612394, at *1 (N.D. Tex. Apr. 22, 2014) (citing Ins. Co. of the W. v. H & G Contractors, Inc.,
No. C10–390, 2011 WL 4738179, at *2–3 (S.D. Tex. Oct. 5, 2011)). First, the court decides
whether entry of default judgment is appropriate under the circumstances. Id. (citing Lindsey v.
Prive Corp., 161 F.3d 886, 893 (5th Cir. 1998)). The court considers the following factors to
resolve the issue: (1) whether material issues of fact exist; (2) whether there has been substantial
prejudice; (3) whether the grounds for default are clearly established; (4) whether the default was
caused by a good faith mistake or excusable neglect; (5) the harshness of a default judgment; and
(6) whether the court would find itself obliged to set aside the default on the defendant’s motion.
Id. As a second step, the court weighs the merits of the plaintiff’s claims and must find an
adequate basis in the pleadings to support a default judgment. Id. (citing Nishimatsu, 515 F.2d at
1206).
Here, Epic satisfied Local Rule 5.5 by mailing a copy of the request for entry of default
and the motion for default judgment to the defendant via certified mail, return receipt requested.
Doc. 42 at 31. Defendants, by failing to answer or otherwise respond to Epic’s complaint, have
admitted the well-pleaded allegations in the Complaint and are thus precluded from contesting
the established facts on appeal. See Nishimatsu, 515 F.2d at 1206. Also, applying the six-factor
default-judgment test to this case, the Court finds: (1) there are no material facts in dispute
because Lara and Sweeps failed to file an answer or any responsive pleading in this action; (2)
Lara and Sweeps’s failure to respond threatens to bring the adversary process to a halt, thereby
effectively prejudicing Epic’s interests; (3) service of process was executed against both Lara
and Sweeps on May 13, 2015; (4) there is no evidence before the Court suggesting that Lara and
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Sweeps’s failure to appear or file anything is the result of a good faith mistake or excusable
neglect; (5) the nearly two years and six months that have passed since Epic filed its original
complaint mitigates the harshness of a default judgment; (6) considering all supporting affidavits
and other documentary evidence, the Court finds that Epic is seeking relief to which it is entitled,
and the Court knows of no facts that would constitute good cause to set aside a default judgment.
Thus, it finds entry of default judgment to be appropriate pursuant to the factors above.
Next, the Court determines if the pleadings support a default judgment. To establish
liability for copyright infringement, Epic must show, “(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361 (1991); 17 U.S.C. § 501; Beardmore v. Jacobson, No. 4:13-CV361, 2014 WL 3543726, at *5–6 (S.D. Tex. July 14, 2014) (discussing requirements to prove
copyright ownership). To establish trademark infringement, Epic Tech must show that (1) it
owns a valid and enforceable mark, and (2) Defendants’ use of Epic Tech’s trademarks creates a
likelihood of confusion as to source, affiliation, or sponsorship. Nat’l Bus. Forms & Printing,
Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012); 15 U.S.C. § 1114(1); Rhino
Membranes & Coatings Inc. v. Rhino Seamless Membrane Sys., Inc., No. CIV. 4:06-CV-2112,
2008 WL 4425583, at *10 (S.D. Tex. Sept. 30, 2008). To establish trade secret misappropriation
Epic must show (1) that a trade secret existed, (2) the trade secret was acquired through a breach
of a confidential relationship or was discovered by improper means, (3) and the defendant used
the trade secret without the plaintiff’s authorization. IAC, Ltd. v. Bell Helicopter Textron, Inc.,
160 S.W.3d 191, 197 (Tex. App. 2005); See Aspen Tech., Inc. v. M3 Tech., Inc., 569 F. App’x
259, 267 (5th Cir. 2014) (applying Texas law to conclude that software source code is
protectable as a trade secret). The Court finds that Epic’s complaint and exhibits establish the
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elements of each claim.
The Court finds that Epic has established that Defendants illegally copied and distributed
Legacy’s software system, including registered copyrights, trademarks, and trade secrets. Thus,
the Court accepts Epic’s well-pleaded allegations as true, finds that Lara and Sweeps are in
default, and holds that Epic is entitled to a default judgment, appropriate damages, injunctive
relief, and attorney’s fees.
B. Monetary Relief
Epic seeks (1) $150,000 per each of the six copyright violations as willful statutory
damages, totaling $900,000; (2) $1,000,000 per each of its four trademarks as willful statutory
damages, totaling $4,000,000; (3) a permanent injunction as to Lara and Sweeps use of the
copyrights, trademarks, and trade secrets; (4) and attorney’s fees. Doc. 42 at 17, 23, 28–31.
As to the monetary damages for copyright and trademark, a copyright owner may elect to
recover statutory damages for all infringements “with respect to any one work . . . in a sum of not
less than $750 or more than $30,000 as the court considers just.” 17 U.S.C. § 504(c)(1). A
finding of willful infringement may “increase the award of statutory damages to a sum of not
more than $150,000.” 17 U.S.C. § 504(c)(2). Similarly, a trademark owner may elect to recover
statutory damages “not less than $1,000 or more than $200,000 per counterfeit mark,” or if
willful, “not more than $2,000,000 per counterfeit mark.” 17 U.S.C. § 1117(c). Because Section
1117(c) sets out only the award range, courts follow the same award guidance for trademarks as
for copyrights. See Laerdal Med. Corp. v. Basic Med. Supply, LLC, No. CV H-16-35, 2016 WL
6436557, at *3 (S.D. Tex. Oct. 31, 2016).
An infringement is “willful” if the infringer “knows his [or her] actions constitute an
infringement.” Broadcast Music, Inc. v. Xanthas, Inc., 855 F.2d 233, 236 (5th Cir. 1988);
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Microsoft Corp. v. Software Wholesale Club, Inc., 129 F. Supp. 2d 995, 1002, 1008 (S.D. Tex.
2000) (holding that the same factors apply for both copyright and trademark infringement). But
“Actual knowledge is not required; constructive knowledge of infringement satisfies the
willfulness standard.” Microsoft Corp. v. Software Wholesale Club, Inc., 129 F. Supp. 2d at
1002. Additional indications of willfulness include: “familiarity with licensing schemes; rebuffed
offers to resolve disputes before litigation; ‘spare’ defense efforts; and lack of effort to avoid
infringement.” Future World Elecs., LLC v. Over Drive Mktg., LLC, No. 3:12-CV-2124-B, 2013
WL 5925089, at *4, n.4 (N.D. Tex. Nov. 5, 2013).
To determine the range of the award for both copyright and trademark infringement,
courts have considered factors such as: “the willfulness of the defendant’s conduct, the deterrent
effect of an award on both the defendant and on others, the value of the copyright, whether the
defendant has cooperated in providing necessary records to assess the value of the infringing
material, and the losses sustained by the plaintiff.” Id. at *4 (quoting Commercial Law League of
Am., Inc. v. George, Kennedy & Sullivan, LLC, No. CIV.A. H–07–0315, 2007 WL 2710479, at
*3 (S.D. Tex. Sept. 14, 2007)(awarding $10,000 in statutory damages upon evidence of
attorney’s fees and costs due to the willfulness of the defendants’ conduct and the continued use
of the mark after receiving cease and desist letters)). A court may also consider “the expenses
saved and profits reaped by the infringer.” Future World Elecs., LLC, 2013 WL 5925089, at *4
(quoting Playboy Enter., Inc. v. Webbworld, Inc., 968 F. Supp. 1171, 1176 (N.D. Tex. 1997)).
The Court finds that Lara and Sweeps willfully infringed upon Epic’s copyrights and
trademarks because they were familiar with licensing schemes, made spare defense efforts, and
did not try to avoid infringement. According to the depositions of Cavazos, Schappel, and Frank,
Lara and Sweeps understood licensing schemes well enough to license and maintain the Falcon
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sweepstakes system in Texas, Florida, and North Carolina. Doc. 2-1 at Ex. 3–5. Lara and Sweeps
made spare defense efforts by failing to file an answer. And according to Schappel’s deposition
testimony, Lara did not try to avoid infringement after being notified of the lawsuit in North
Carolina. Doc. 2-1 at 326–27. Constructively, the Court may presume Lara and Sweeps knew
they were copying and distributing the Falcon sweepstakes system without their own Legacy
license. See Microsoft Corp. v. Software Wholesale Club, Inc., 129 F. Supp. 2d at 1002; Future
World Elecs., LLC, 2013 WL 5925089, at *4 n.4.
To determine the damage award, the Court considered the willfulness of Lara and
Sweeps’s conduct; the deterrent effect of an award on both the Lara and Sweeps and on others;
the value of the copyrights and trademarks per Quinn’s declaration that it was costly to design,
market, and distribute the Legacy system, Doc. 2-1 at 11; that Lara and Sweeps has not
cooperated in providing necessary records to assess the value of the infringing material; the
losses Epic sustained of $50,000 per month or $15 million of total loses, the 50% licensing
scheme at North Loop, id. at Ex. 3, and the 5% licensing scheme elsewhere, id. at Ex. 4 & 5; and
the argument of counsel at the November 15 hearing. See Future World Elecs., LLC, 2013 WL
5925089, at *4.
Based upon the above factors and evidence, the Court finds that the award for each of six
copyright infringements should be $150,000, totaling $900,000; and the award for each of four
trademark infringements should be $1,000,000, totaling $4,000,000. Accordingly, Epic is
entitled to total damages of $4,900,000.
C. Permanent Injunction
Epic also requests a permanent injunction as to Lara and Sweeps’s use of the copyrights,
trademarks, and trade secrets. Doc. 42 at 28. Specifically, they request that Lara and Sweeps, and
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any entity they control be enjoined from the following:
A. Using, disclosing, copying, sharing, relocating, transferring, or distributing to
any individuals or entities [Epic’s] trade secrets, confidential and propriety
information, or other information relating to [Epic’s] gaming software,
including, but not limited to, any Epic Tech Games, and any computer servers
containing Epic Tech Games or related software;
B. Offering, sponsoring, or assisting others in offering or sponsoring any
sweepstake promotions that use [Epic’s] software, or are derived from
[Epic’s] software.
Id. at 31. Epic asserts that Court may enter a permanent injunction for copyright infringement
under 17 U.S.C. § 502(a), for trademark infringement under 15 U.S.C. § 1116(a), and to prevent
further misappropriation of trade secrets under Texas Civil Practice and Remedies Code Section
134A.003. The Court agrees.
The requirements for a permanent injunction for copyright and trademark infringement
are substantially the same. For a permanent injunction under Section 502 copyright infringement,
a party must show: “(1) actual success on the merits; (2) no adequate remedy at law; (3) that the
threatened injury outweighs any damage to the defendant; and (4) that the injunction will not
disserve the public interest.” Malibu Media, LLC v. Gonzales, CV H-16-2406, 2017 WL
2985641, at *4 (S.D. Tex. July 13, 2017) (citing DSC Comms. Corp. v. DGI Tech., Inc., 81 F.3d
597, 600 (5th Cir. 1996)). For a permanent injunction for Section 1116(a) trademark
infringement, a party must show: “(1) that it has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate to compensate for that injury; (3)
that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity
is warranted; and (4) that the public interest would not be disserved by a permanent injunction.”
Clearline Techs. Ltd. v. Cooper B-Line, Inc., 948 F. Supp. 2d 691, 714 (S.D. Tex. 2013) (quoting
eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)). Elements (2)–(4) are the same,
though elements (1) initially appear different.
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While elements (1) appear different, they are substantially the same. The Fifth Circuit has
held that showing success of the merits meets the irreparable injury requirement, for the purposes
of an injunction. Specifically, it has said that “[a]ll that must be proven to establish liability and
the need for an injunction against infringement is the likelihood of confusion—injury is
presumed.” Clearline Techs. Ltd., 948 F. Supp. 2d at 715 (citing Abraham v. Alpha Chi Omega,
708 F.3d 614, 627 (5th Cir. 2013) (quoting 1 McCarthy on Trademarks and Unfair Competition
§ 30:2). By showing a likelihood of confusion, one of the elements required to prove the merits
of trademark infringement, a plaintiff shows irreparable injury. See id. Thus, by partial success
on the merits, the plaintiff meets the irreparable injury requirement of a trademark injunction.
And success on the merits is the requirement of a copyright injunction. Thus, elements (1) of
both copyright and trademark infringements are substantially the same. See id.; see also Chevron
Intellectual Prop., L.L.C. v. Allen, 7:08-CV-98-O, 2009 WL 2596610, at *3 (N.D. Tex. Aug. 24,
2009) (finding a permanent injunction for default in trademark infringement case, using the same
factors as copyright infringement). And so the Court may use the copyright test to determine if a
permanent injunction is warranted for both the infringed copyrights and trademarks.
Also “the ‘usual equitable order’ in a trade secret misappropriation case is a perpetual
injunction against the wrongdoer.” Halliburton Energy Services, Inc. v. Axis Techs., LLC, 444
S.W.3d 251, 257 (Tex. App.—Dallas 2014, no pet.). The purpose of a trade secret injunction is
to prevent a party from “unfairly profiting from another’s expense of time and resources,” and
“to recognize and enforce higher standards of commercial morality in the business world.” Id. at
257 (quoting Hyde Corp. v. Huffines, 314 S.W.2d 763, 775 (1958)), 259. And the “burden is on
the defendant to show that an injunction for a period of time less than perpetual would be
sufficient to achieve that end.” Id. But “[o]nce trade secret information becomes available to the
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general public, a party that has been enjoined from using the information due to misappropriation
may apply to have the injunction terminated.” Id. at 259 (citing TEX. CIV. PRAC. & REM. CODE
ANN. § 134A.003). This Court adopts our sister court’s summation of the law.
Here, Epic, by default, has first (1) succeeded on the merits against Lara and Sweeps.
Epic also has, second (2), no adequate remedy at law because Epic’s injury cannot be fully
compensated or measured in a dollar amount because the extent of distribution throughout Texas,
North Carolina, and Florida is not fully measured. See Atl. Recording Corp. v. Anderson, No. H–
06–3578, 2008 WL 2316551, at *10 (S.D. Tex. Mar. 12, 2008). Without enjoining Lara and
Sweeps from further infringing on Epic’s copyrighted and trademarked content, Epic would
remain vulnerable to continued infringement. Third (3), the injunction does not burden Lara and
Sweeps, as they are merely required to comply with the law, and fourth (4), the public interest is
served by upholding Epic’s copyright and trademark protections. And the Court sees no reason
to vary from the “usual equitable order” that trade secret misappropriation results in a perpetual
injunction against the wrongdoer. Halliburton Energy Services, Inc., 444 S.W.3d at 257.
The Court finds that Epic has shown it is entitled to injunctive relief based on Lara and
Sweeps violation of federal copyright and trademark law along with state trade secret law.
Generally, an injunction must be narrowly tailored to remedy only the specific harms shown by
Epic, rather than to enjoin all possible breaches of the law. Fed. R. Civ. P. 65(d); see Daniels
Health Sciences, L.L.C. v. Vascular Health Sciences, L.L.C., 710 F.3d 579, 587 (5th Cir. 2013).
The Court has reviewed the injunction Epic proposed and finds that it is not over-broad and
merely enjoins Lara and Sweeps from engaging in further offending conduct. The Court
GRANTS Epic’s request for an injunction.

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D. Attorney’s Fees
Epic requests an award of attorney’s fees for copyright infringement under 17 U.S.C. §
505 and trademark infringement under 15 U.S.C. § 1117, in an amount to be determined after the
judgment. A court “may allow the recovery of full costs . . . [and] may also award a reasonable
attorney’s fee to the prevailing party” as a remedy for copyright infringement. 17 U.S.C. § 505.
The prevailing party in a default judgment is the party that brings the default judgment. Malibu
Media, LLC v. Gonzales, 2017 WL 2985641, at *5. And “[a]lthough attorney’s fees are awarded
in the trial court’s discretion, [in copyright cases] they are the rule rather than the exception and
should be awarded routinely.” Beardmore v. Jacobson, 2016 WL 1253219, at *1 (citing Alameda
Films SA de CV v. Authors Rights Restoration Corp. Inc., 331 F.3d 472, 483 (5th Cir. 2003)).
Here, through the grant of a default judgment, Epic has succeeded on all of their claims, and is
the prevailing party entitled to an award of attorney’s fees under 17 U.S.C. § 505.
But attorney’s fees are awarded in trademark cases only “in exceptional cases . . . to the
prevailing party.” 15 U.S.C. § 1117. To merit an award of attorney’s fees for trademark
infringement, “[t]he prevailing party has the burden to demonstrate the exceptional nature of the
case by clear and convincing evidence. An exceptional case involves acts that can be called
‘malicious,’ ‘fraudulent,’ ‘deliberate,’ or willful.’” Bulbs 4 E. Side, Inc. v. Ricks, No. 4:14-CV03672, 2017 WL 3055359, at *3 (S.D. Tex. July 18, 2017) (citing Schlotzsky’s LTD. V. Sterling
Purchasing and Nat’l Distrib. Co., Inc., 520 F.3d 393, 402 (5th Cir. 2009)). Thus, the prevailing
party must show more than bad faith. See id. (citing Bd. Of Supervisors for La. State Unix. Agric.
& Mech. Coll. V. Smack Apparel Co, 550 F.3d 465, 491 (5th Cir. 2008)). Here, based upon our
earlier finding that Lara and Sweeps willfully violated Epic’s trademarks, the Court may also
award them attorney’s fees under 15 U.S.C. § 1117.
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Accordingly, the Court ORDERS that Epic shall recover attorney’s fees from Lara and
Sweeps for both copyright and trademark infringement and shall provide such proof by way of
affidavit and exhibits. See Christus Health Care Sys., Inc. v. Am. Consultants RX, Inc., SA:12CV-1221-DAE, 2014 WL 1092096, at *6 (W.D. Tex. Mar. 18, 2014) (calculating attorney’s fees
for copyright and trademark infringement together under the loadstar method).
III. Conclusion
For the foregoing reasons, it is hereby
ORDERED that Epic’s motion for default judgment is GRANTED. Docs. 42.
Accordingly, the Court
ORDERS the following:
1. Judgment by default is granted in favor of Epic against Lara and Sweeps. A
judgment shall issue separately.
2. Epic shall recover copyright statutory damages under 17 U.S.C. § 504(c) from
Lara and Sweeps in the amount of $900,000.
3. Epic shall recover trademark statutory damages under 17 U.S.C. § 1117 from
Lara and Sweeps in the amount of $4,000,000.
4. Epic shall recover attorney’s fees from Lara and Sweeps and shall provide such
proof by way of affidavit and exhibits within fourteen (14) days of this order.
5. Epic is entitled to recover from Lara and Sweeps an award of court costs and
post-judgment interest on the amounts awarded herein at an annual rate of 5%
from the date of this Judgment until paid.
6. Lara and Sweeps are enjoined from using sweepstakes software as follows:
a. Using, disclosing, copying, sharing, relocating, transferring, or distributing to any
individuals or entities Epic Tech, LLC’s trade secrets, confidential and propriety
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information, or other information relating to Epic Tech, LLC’s gaming software,
including, but not limited to, any Epic Tech Games, and any computer servers
containing Epic Tech Games or related software;

b. Offering, sponsoring, or assisting others in offering or sponsoring any sweepstake
promotions that use Epic Tech, LLC’s software, or are derived from Epic Tech,
LLC’s software.
SIGNED at Houston, Texas, this 29th day of November, 2017.
___________________________________
MELINDA HARMON
UNITED STATES DISTRICT JUDGE

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