XYZ Corporation v. The Individuals, Partnerships and Unincorporated Associations Identified on Schedule A

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

Case No. 22-cv-60313-BLOOM/Valle

XYZ CORPORATION,

Plaintiff,

v.

THE INDIVIDUALS, PARTNERSHIPS

AND UNINCORPORATED

ASSOCIATIONS IDENTIFIED

ON SCHEDULE A,

Defendants.

________________________________/

ORDER ON MOTION FOR ENTRY OF FINAL DEFAULT JUDGMENT

THIS CAUSE is before the Court upon Plaintiffs ROGER TAYLOR, JOHN TAYLOR,

SIMON LE BON, and NICHOLAS RHODES’ (collectively, “Plaintiffs”) Motion for Entry of

Final Default Judgment, ECF No. [35] (“Motion”), filed on April 13, 2022. A Clerk’s Default was

entered against Defendants, ECF No. [33], on April 1, 2022, as Defendants failed to appear,

answer, or otherwise plead to the Amended Complaint filed on March 1, 2022 despite having been

served. The Court has carefully considered the Motion, the record in this case, the applicable law,

and is otherwise fully advised. For the following reasons, Plaintiffs’ Motion is granted.

I. INTRODUCTION

Plaintiffs sued Defendants for trademark counterfeiting and infringement under § 32 of the

Lanham Act, 15 U.S.C. § 1114; false designation of origin pursuant to § 43(a) of the Lanham Act,

15 U.S.C. § 1125(a); common law unfair competition; and common law trademark infringement.

The Amended Complaint alleges that Defendants are advertising, using, selling, promoting, and

distributing, counterfeits, and confusingly similar imitations of Plaintiffs’ registered trademarks

within the Southern District of Florida by operating Defendants’ Internet based e-commerce stores

operating under each of the Seller IDs identified on Schedule “A” attached to this Order and to

Plaintiffs’ Motion for Entry of Final Default Judgment. See ECF No. [35-1].

Plaintiff further asserts that Defendants’ unlawful activities have caused and will continue

to cause irreparable injury to Plaintiffs because Defendants have (1) deprived Plaintiffs of their

right to determine the manner in which their trademarks are presented to consumers; (2) deceived

the public as to Plaintiffs’ sponsorship of and/or association with Defendants’ counterfeit products

and the websites on online storefronts through which such products are sold, offered for sale,

marketed, advertised, and distributed; (3) wrongfully traded and capitalized on Plaintiffs’

reputation and goodwill and the commercial value of Plaintiffs’ trademarks; and (4) wrongfully

damaged Plaintiffs’ ability to market their branded products and educate consumers about their

brand via the Internet in a free and fair marketplace.

In their Motion, Plaintiffs seek the entry of default final judgment against Defendants1 in

an action alleging trademark counterfeiting and infringement, false designation of origin, common-

law unfair competition, and common law trademark infringement. Plaintiffs further request that

the Court (1) enjoin Defendants unlawful use of Plaintiffs’ trademarks; (2) award Plaintiffs

damages; and (3) instruct any third party financial institutions in possession of any funds restrained

or held on behalf of Defendants to transfer these funds to Plaintiffs in partial satisfaction of the

award of damages.

Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a

final judgment of default against a party who has failed to plead in response to a complaint. “[A]

defendant’s default does not in itself warrant the court entering a default judgment.” DirecTV, Inc.

1 Defendants are the Individuals, Partnerships, or Unincorporated Associations identified on Schedule “A”

of Plaintiffs’ Motion, and Schedule “A” of this Order.

v. Huynh, 318 F. Supp. 2d 1122, 1127 (M.D. Ala. 2004) (quoting Nishimatsu Constr. Co., Ltd. v.

Houston Nat’l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975)). Granting a motion for default judgment

is within the trial court’s discretion. See Nishimatsu, 515 F.2d at 1206. Because the defendant is

not held to admit facts that are not well pleaded or to admit conclusions of law, the court must first

determine whether there is a sufficient basis in the pleading for the judgment to be entered. See

id.; see also Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987) (“[L]iability is well-pled

in the complaint, and is therefore established by the entry of default. . . .”). Upon a review of

Plaintiffs’ submissions, it appears there is a sufficient basis in the pleading for default judgment to

be entered in favor of Plaintiffs.

II. FACTUAL BACKGROUND2

Plaintiffs are the registered owners of the following trademarks registered on the Principal

Register of the United States Patent and Trademark Office (collectively, “Duran Duran Marks”):

Registration Registration

Trademark Class / Goods

Number Date

IC 003: Perfumes; aftershaves;

aftershave lotions; aftershave balms;

fragrances; air perfuming oils and

preparations, namely, scented oils;

cosmetics; essential oils; dentifrices;

hair lotions and preparations for care

of and styling the hair; toiletries,

DURAN DURAN 5,568,570 09/25/2018 namely, non-medicated toiletry

preparations; shampoos; cosmetic

soaps; creams and lotions for the

skin; beauty products and

preparations, namely, beauty masks;

beauty treatments and facial packs,

namely, facial beauty masks; sun-

tanning preparations; sun care skin

preparations, namely, sunscreen

2 The factual background is taken from Plaintiffs’ Amended Complaint, ECF No. [18], Plaintiffs’ Motion

for Entry of Final Default Judgment, ECF No. [35], and supporting evidentiary submissions.

Registration Registration

Trademark Class / Goods

Number Date

creams; sun block preparations; self-

tanning preparations; self-tanning

preparations, namely, self-tanning

creams, lotions, sprays, mists and

wipes; pre-moistened cosmetic facial

wipes; make-up removal wipes,

namely, wipes impregnated with a

cleaning preparation; cotton wool for

cosmetic use; pre-moistened

cosmetic tissues; emery paper;

abrasive boards, namely, abrasive

strips; hand masks for skin care and

nail care preparations; laundry

bleaching preparations and other

substance for laundry use, namely,

laundry detergent

IC 006: Metal name badges; metal

cotter pins; metal keys for locks,

metal key blanks; identification tags

of metal; metal locks and holiday

ornaments of common metal;

trophies of common metal; bronze

recognition plaques; monuments,

statues and statuettes of common

metal; metal boxes; metal tool boxes;

all of the above made wholly or

principally of metal

IC 009: Downloadable musical

sound recordings; musical video

recordings; prerecorded audio tapes

featuring music; prerecorded audio

cassettes featuring music;

prerecorded compact discs featuring

music; prerecorded CDs featuring

music; motion picture films about a

musical group; blank video cassettes;

video recorders; blank CD-ROMs for

sound or video recording; video

game software; games software

adapted for use with television

receivers; computer games software;

computer game software; video

Registration Registration

Trademark Class / Goods

Number Date

cameras; cameras; photographic and

cinematographic apparatus and

instruments, namely, digital cameras;

apparatus for recording,

transmission, reproduction of sound

and images; batteries; magnetically

encoded gift cards; magnetically

encoded identity cards, credit cards,

and debit cards; spectacles, spectacle

cases, sunglasses; video game

software; mouse pads; computer

screen saver software; electronic

downloadable publications, typically

supplied on-line from databases or

from facilities provided on the

Internet, namely, magazines in the

field of music; DVDs featuring music

videos; headphones; stereo

headphones; audio speakers;

hologram apparatus; magnetically

encoded credit cards with holograms;

digital downloadable music files

from the Internet; digital physical

instructional information

downloadable from the Internet,

namely, video recordings featuring

physical fitness routines; electronic

downloadable publications, namely,

newsletters in the field of music;

video game application software;

downloadable music sound

recordings; downloadable video

recordings featuring music

instruction; software for processing

images, namely, providing emoticons

IC 014: Jewellery; precious stones

and precious metals; costume

jewellery; badges of precious metal;

brooches; cufflinks; tie pins; tie clips;

earrings; key rings; pendants;

horological and chronometric

instruments including watches and

clocks; decorative key fobs; lapel

Registration Registration

Trademark Class / Goods

Number Date

pins; rings; earrings; cuff links;

bracelets; bracelets made of leather;

bracelets made of metal; bracelets of

precious metal; cuff links made of

precious metals with semi-precious

stones; bracelets made of precious

metals with semi-precious stones;

bracelets with semi-precious stones;

bracelets with metal; jewellery

chains; necklaces; metal key rings,

metal key chains, trophies of precious

metal, wall plaques made of precious

metal; monuments, statues and

statuettes of precious metal

IC 016: Printed matter, namely,

newspapers, periodical publications,

magazines, and books in the field of

music; photographs, pictures, prints;

posters; greeting cards; postcards;

notepads; address books; scrapbooks;

folders; catalogues in the field of

music; printed tickets; calendars;

photographs albums; diaries;

booklets in the field of music;

postage stamps; covers for postage

stamps, namely, sleeves for holding

and protecting postage stamps; stamp

albums; stickers; car stickers;

decalcomanias; blank cards;

cardboard signboards; stationery,

pens, pencils, erasers, pencil

sharpeners, pencil cases, drawing

rulers, boxes for pens, book markers;

drawing materials for blackboards;

artists' materials, namely, pens;

printed instructional and teaching

materials in the field of music; gift

bags; carrier bags, namely,

merchandise bags; envelopes;

blackboards; charts for displaying

data about human height; song

Registration Registration

Trademark Class / Goods

Number Date

books; printed sheet music; cheque

book holders

IC 021: Mugs; aluminium bakeware;

Aluminium cookware, namely, pots,

pans, roasting pans, frying pans and

skillets; Bakeware; Baking dishes;

Baking dishes made of earthenware;

Baking dishes made of glass; Baking

mats; Baking dishes made of

porcelain; Baking tins, namely, cake

tins, pie tins, muffin tins; Beer jugs;

Beer mugs; Beverage glassware;

Bowls; Bread boards; Bread boxes;

Cake moulds; Cake brushes; Candy

boxes; Cheese graters; Chopsticks;

sushi rolling mat, bento boxes;

Cocktail shakers; Coffee cups;

Colanders; hand-operated Coffee

grinders; Cookery moulds; Cooking

pot sets; Cooking utensils, namely,

pot and pan scrapers, rolling pins,

spatulas, turners, whisks, graters,

tongs and sieves, mixing spoons,

slotted spoons, basting spoons;

Corkscrews; Cups and mugs;

Decanters; Dishware; Earthenware,

namely, dishes, drinking cups and

saucers, mugs, bowls, serving bowls,

sugar bowls, jars for jams and jellies;

Egg cups; Egg poachers; Ice cube

trays; Jugs; Lunchboxes; Pepper

mills, hand-operated; Pepper pots;

Salt mills, hand-operated; Salad

spinners; Sandwich boxes; Hand-

operated sushi rolling equipment,

namely, bamboo sushi rolling mat;

Tableware, namely, cutlery trays,

dinnerware, plates, dishes, bowls,

serving bowls, cups and saucers,

drinking cups and saucers; cookware,

namely, steamers, roasting pans, pots

and pans, and cookware for use in

microwave ovens; containers for

Registration Registration

Trademark Class / Goods

Number Date

household use; Utensil jars; paper

cups; paper plates; woks; Picnic

crockery, namely, dishes, mugs,

bowls, drinking cups and saucers,

serving bowls, sugar bowls; Picnic

boxes, namely, picnic baskets sold

empty; Fitted picnic baskets; metal

money boxes; all for use in

promoting and marketing a musical

band

IC 025: Clothing, namely, t-shirts;

footwear and headwear; articles of

outer clothing, namely, coats; articles

of underclothing, namely,

underwear; articles of sports

clothing, namely, jerseys; scarves;

dressing gowns; boxer shorts; socks;

t-shirts, hats and caps being

headwear, jackets, pyjamas, slippers;

wristbands as clothing, headbands,

ties as clothing; articles of clothing,

namely, footwear and headwear for

babies and toddlers; sporting clothes,

namely, athletic uniforms;

sweatshirts; hooded sweatshirts;

shirts, pullovers, skirts, dresses,

trousers, coats, belts, gloves,

neckties, swimsuits; athletic shoes;

dance shoes; leather shoes; high-

heeled shoes; sandals and beach

shoes; baseball caps; Masquerade

costumes for hire, including fancy

dress costumes; waterproof clothing,

namely, raincoats; all for use in

promoting and marketing a musical

band

IC 041: Entertainment services,

namely, live performances by a

musical band; sound recording and

video entertainment services,

namely, music video production;

presentation of musical

Registration Registration

Trademark Class / Goods

Number Date

performances, namely, concert,

musical and video performances;

television and radio entertainment

services, namely, production of

television and radio programs;

entertainment services by stage

production, namely, cabarets;

production of video and sound

recordings; presentation of musical

performances; theatre production,

namely, performance of shows,

musical shows, and concerts;

production of videos, multimedia

videos and radio and television

programmes; recording studio

services; film, video and television

studio services; multimedia

production services, namely, audio,

film, video and television recording

services; publishing of reviews;

music publishing services; film

distribution services; educational

services, namely, arranging and

conducting of seminars, conferences

and exhibitions in the field of music;

publication of books, magazines and

musical texts; entertainment services,

namely, providing non-

downloadable prerecorded digital

music via the Internet; entertainment

services, namely, providing non-

downloadable prerecorded sound

recordings in the nature of music via

the Internet; entertainment services,

namely, providing non-

downloadable prerecorded video

recordings in the nature of music

videos via the Internet;

Entertainment services, namely,

providing non-downloadable

playback of music sound and video

recordings via Internet; organizing

and presenting displays of

entertainment relating to style and

Registration Registration

Trademark Class / Goods

Number Date

fashion, namely, organizing fashion

shows for entertainment purposes;

organizing and presenting displays of

entertainment relating to music,

namely, organizing exhibitions of

musical entertainment

See ECF No. [18]. The Duran Duran Marks are used in connection with the design, marketing, and

distribution of high-quality goods in at least the categories identified above. See ECF No. [7-2] at

4. Plaintiffs have exclusive rights in and to the Duran Duran Marks. Id.

Although each Defendant may not copy and infringe each of Plaintiffs’ trademarks for each

category of goods protected, Plaintiffs have submitted sufficient evidence showing each Defendant

has infringed the Duran Duran Marks for at least at least one category of goods. See ECF Nos. [7-

2] at 10-13, [7-3].3 Defendants are not now, nor have they ever been, authorized or licensed to

use, reproduce, or make counterfeits, reproductions, or colorable imitations of the of the Duran

Duran Marks. See ECF No. [7-2] at 10-13.

As part of their ongoing investigation regarding the sale of counterfeit and infringing

products, Plaintiffs hired a third party investigatory to access Defendants’ Internet based e-

commerce stores operating under each of the Seller IDs. The third party investigator initiated

orders from each Seller IDs for the purchase of various products, all bearing, or suspected of

bearing, counterfeits of the Duran Duran Marks, and requested each product to be shipped to an

address in the Southern District of Florida. Accordingly, Defendants’ Goods are being promoted,

advertised, offered for sale, and sold by Defendants within this district and throughout the United

3 Evidence of each Defendant’s infringement was attached as Exhibit 1 to the Declaration of Richard Guerra

in Support of Plaintiffs’ Motion for Entry of Final Default Judgment. See ECF Nos. [36], [37], [38], [39].

States. See ECF No. [7-3] at 4. A representative for Plaintiffs personally analyzed the Duran Duran

branded items wherein orders were initiated via each of the Seller IDs by reviewing the e-

commerce stores operating under each of the Seller IDs, or the detailed web page captures and

images of the items bearing the Duran Duran Marks, and concluded the products were non-

genuine, unauthorized Duran Duran products. See ECF No. [7-2] at 13.

III. ANALYSIS

A. Claims

1. Trademark Counterfeiting and Infringement Pursuant to § 32 of the

Lanham Act (15 U.S.C. § 1114) (Count I)

Section 32 of the Lanham Act, 15 U.S.C. § 1114, provides liability for trademark

infringement if, without the consent of the registrant, a defendant uses “in commerce any

reproduction, counterfeit, copy, or colorable imitation of a registered mark: which is likely to cause

confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114. In order to prevail on its

trademark infringement claim under Section 32 of the Lanham Act, Plaintiff must demonstrate that

(1) it had prior rights to the mark at issue; and (2) Defendants adopted a mark or name that was

the same, or confusingly similar to Plaintiffs’ trademark, such that consumers were likely to

confuse the two. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir.

2001) (citing Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360

(11th Cir. 1997)).

2. False Designation of Origin Pursuant to § 43(A) of the Lanham Act

(15 U.S.C. § 1125(a)) (Count II)

To prevail on a claim for false designation of origin under Section 43(a) of the Lanham

Act, 15 U.S.C. § 1125(a), Plaintiffs must prove that Defendants used in commerce, in

connection with any goods or services, any word, term, name, symbol or device, or any

combination thereof, or any false designation of origin that is likely to deceive as to the

affiliation, connection, or association of Defendants with Plaintiffs, or as to the origin,

sponsorship, or approval, of Defendants’ services by Plaintiffs. See 15 U.S.C. § 1125(a)(1).

The test for liability for false designation of origin under 15 U.S.C. § 1125(a) is the same as

for a trademark counterfeiting and infringement claim – i.e., whether the public is likely to be

deceived or confused by the similarity of the marks at issue. See Two Pesos, Inc. v. Taco Cabana,

Inc., 505 U.S. 763, 780 (1992).

3. Common Law Unfair Competition and Trademark Infringement

(Counts III and IV)

Whether a defendant’s use of a plaintiff’s trademarks created a likelihood of confusion

between the plaintiff’s and the defendant’s services or goods is also the determining factor in the

analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester,

1986 WL 15668, at *3 (S.D. Fla. Dec. 9, 1987) (“The appropriate test for determining whether

there is a likelihood of confusion, and thus trademark infringement, false designation of origin,

and unfair competition under the common law of Florida, is set forth in John H. Harland, Inc. v.

Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983.)”.); see also Boston Prof’l Hockey Ass’n,

Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) (“As a general rule

. . . the same facts which would support an action for trademark infringement would also support

an action for unfair competition.”).

The analysis of liability for Florida common law trademark infringement is the same as the

analysis of liability for trademark infringement under § 32(a) of the Lanham Act. See PetMed

Express, Inc. v. MedPets.com, Inc., 336 F. Supp. 2d 1213, 1217-18 (S.D. Fla. 2004).

B. Liability

The well-pled factual allegations of Plaintiffs’ Amended Complaint properly allege the

elements for each of the claims described above. See ECF No. [14]. Moreover, the factual

allegations in Plaintiffs’ Amended Complaint have been substantiated by sworn declarations and

other evidence and establish Defendants’ liability under each of the claims asserted in the

Amended Complaint. Accordingly, default judgment pursuant to Federal Rule of Civil Procedure

55 is appropriate.

C. Injunctive Relief

Pursuant to the Lanham Act, a district court is authorized to issue an injunction “according

to the principles of equity and upon such terms as the court may deem reasonable,” to prevent

violations of trademark law. See 15 U.S.C. § 1116(a). Indeed, “[i]njunctive relief is the remedy of

choice for trademark and unfair competition cases, since there is no adequate remedy at law for

the injury caused by a defendant’s continuing infringement.” Burger King Corp. v. Agad, 911 F.

Supp. 1499, 1509-10 (S.D. Fla. 1995) (citing Century 21 Real Estate Corp. v. Sandlin, 846 F.2d

1175, 1180 (9th Cir. 1988)). Moreover, even in a default judgment setting, injunctive relief is

available. See e.g., PetMed Express, Inc., 336 F. Supp. 2d at 1222-23. Defendants’ failure to

respond or otherwise appear in this action makes it difficult for Plaintiffs to prevent further

infringement absent an injunction. See Jackson v. Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal.

2003) (“[D]efendant’s lack of participation in this litigation has given the court no assurance that

defendant’s infringing activity will cease. Therefore, plaintiff is entitled to permanent injunctive

relief.”)

Permanent injunctive relief is appropriate where a plaintiff demonstrates that (1) it has

suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship

favors an equitable remedy; and (4) an issuance of an injunction is in the public’s interest. eBay,

Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93 (2006). Plaintiffs have carried their burden on

each of the four factors. Accordingly, permanent injunctive relief is appropriate.

Specifically, in trademark cases, “a sufficiently strong showing of likelihood of confusion

. . . may by itself constitute a showing of a substantial threat of irreparable harm.” McDonald’s

Corp. v. Robertson, 147 F.3d 1301, 1306 (11th Cir. 1998); see also Levi Strauss & Co. v. Sunrise

Int’l Trading Inc., 51 F.3d 982, 986 (11th Cir. 1995) (“There is no doubt that the continued sale

of thousands of pairs of counterfeit jeans would damage LS & Co.’s business reputation and might

decrease its legitimate sales.”). Plaintiffs’ Amended Complaint alleges that Defendants’ unlawful

actions have caused Plaintiffs irreparable injury and will continue to do so if Defendants are not

permanently enjoined. See ECF No. [18]. Further, the Amended Complaint alleges, and the

unauthorized Duran Duran products sold, offered for sale, marketed, advertised, and distributed

by Defendants are nearly identical to Plaintiffs’ genuine Duran Duran products and that consumers

viewing Defendants’ counterfeit products would actually confuse them for Plaintiffs’ genuine

products. See id. “The effect of Defendants’ actions will cause confusion of consumers, at the time

of initial interest, sale, and in the post-sale setting, who will believe Defendants’ Counterfeit Goods

are genuine goods originating from, associated with, or approved by Plaintiff.” See ECF No. [18]

at 29.

Plaintiffs have no adequate remedy at law so long as Defendants continue to operate the

Seller IDs because Plaintiffs cannot control the quality of what appears to be their Duran Duran

products in the marketplace. An award of monetary damages alone will not cure the injury to

Plaintiffs’ reputation and goodwill that will result if Defendants’ infringing and counterfeiting and

infringing actions are allowed to continue. Moreover, Plaintiffs face hardship from loss of sales

and their inability to control their reputation in the marketplace. By contrast, Defendants face no

hardship if they are prohibited from the infringement of Plaintiffs’ trademarks, which are illegal

acts.

Finally, the public interest supports the issuance of a permanent injunction against

Defendants to prevent consumers from being misled by Defendants’ counterfeit products. See

Nike, Inc. v. Leslie, 1985 WL 5251, at *1 (M.D. Fla. June 24, 1985) (“[A]n injunction to enjoin

infringing behavior serves the public interest in protecting consumers from such behavior.”). The

Court’s broad equity powers allow it to fashion injunctive relief necessary to stop Defendants’

infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ., 402 U.S. 1, 15

(1971) (“Once a right and a violation have been shown, the scope of a district court’s equitable

powers to remedy past wrongs is broad, for . . . [t]he essence of equity jurisdiction has been the

power of the Chancellor to do equity and to mould each decree to the necessities of the particular

case.” (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical

Co., 321 U.S. 707, 724 (1944) (“Equity has power to eradicate the evils of a condemned scheme

by prohibition of the use of admittedly valid parts of an invalid whole.”).

Defendants have created an Internet-based infringement scheme in which they are profiting

from their deliberate misappropriation of Plaintiffs’ rights. Accordingly, the Court may fashion

injunctive relief to eliminate the means by which Defendants are conducting their unlawful

activities.

D. Statutory Damages for the Use of Counterfeit Marks

In a case involving the use of counterfeit marks in connection with a sale, offering for sale,

or distribution of products, 15 U.S.C. § 1117(c) provides that a plaintiff may elect an award of

statutory damages at any time before final judgment is rendered in the sum of not less than

$1,000.00 nor more than $2,000,000.00 per counterfeit mark per type of good or service. 15 U.S.C.

§ 1117(c)(1). In addition, if the Court finds that Defendants’ counterfeiting actions were willful, it

may impose damages above the maximum limit up to $2,000,000.00 per mark per type of good or

service. 15 U.S.C. § 1117(c)(2). Pursuant to 15 U.S.C. § 1117(c), Plaintiff has elected to recover

an award of statutory damages as to Count I of the Amended Complaint.

The Court has wide discretion to determine the amount of statutory damages. See PetMed

Express, Inc., 336 F. Supp. 2d at 1219 (citing Cable/Home Commc’n Corp. v. Network Prod., Inc.,

902 F.2d 829, 852 (11th Cir. 1990)). An award of statutory damages is appropriate despite a

Plaintiffs’ inability to prove actual damages caused by a defendant’s infringement. Under Armour,

Inc. v. 51nfljersey.com, No. 13-62809-CIV, 2014 U.S. Dist. LEXIS 56475, at *22-*23 (S.D. Fla.

Apr. 23, 2014) (citing Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 852 (E.D. Mich. 2006) (“[A]

successful plaintiff in a trademark infringement case is entitled to recover enhanced statutory

damages even where its actual damages are nominal or non-existent.”)); Playboy Enter., Inc. v.

Universal Tel-A-Talk, Inc., No. CIV.A. 96-6961, 1998 WL 767440, at *8 (E.D. Pa. Nov. 3, 1998)

(awarding statutory damages where plaintiff failed to prove actual damages or profits). Indeed,

Congress enacted a statutory damages remedy in trademark counterfeiting cases because evidence

of a defendant’s profits in such cases is almost impossible to ascertain. See, e.g., S. REP. NO. 104-

177, pt. V(7) (1995) (discussing purposes of Lanham Act statutory damages); see also PetMed

Express, Inc., 336 F. Supp. 2d at 1220 (statutory damages are “especially appropriate in default

judgment cases due to infringer nondisclosure”). This case is no exception.

This Court may award statutory damages “without holding an evidentiary hearing based

upon affidavits and other documentary evidence if the facts are not disputed.” Perry Ellis Int’l,

Inc. v. URI Corp., No. 06-22020-CIV, 2007 WL 3047143, at *1 (S.D. Fla. Oct. 18, 2007).

Although the Court is permitted to conduct a hearing on a default judgment in regards to damages

pursuant to Fed. R. Civ. P. 55(b)(2)(B), an evidentiary hearing is not necessary where there is

sufficient evidence on the record to support the request for damages. See SEC v. Smyth, 420 F.3d

1225, 1232 n.13 (11th Cir. 2005) (“Rule 55(b)(2) speaks of evidentiary hearings in a permissive

tone . . . . We have held that no such hearing is required where all essential evidence is already of

record.”) (citations omitted); see also PetMed Express, 336 F. Supp. 2d at 1223 (entering default

judgment, permanent injunction and statutory damages in a Lanham Act case without a hearing).

Here, the allegations in the Amended Complaint, which are taken as true, clearly establish

Defendants intentionally copied the Duran Duran Marks for the purpose of deriving the benefit of

Plaintiffs’ world-famous reputation. As such, the Lanham Act permits the Court to award up to

$2,000,000.00 per infringing mark on each type of service as statutory damages to ensure that

Defendants do not continue their intentional and willful counterfeiting activities.

The evidence in this case demonstrates that each Defendant sold, promoted, distributed,

advertised, and/or offered for sale products bearing marks which were in fact counterfeits of at

least one of the Duran Duran Marks. See ECF No. [18]. Based on the above considerations,

Plaintiffs suggest the Court award statutory damages of $100,000.00 against each Defendant. The

award should be sufficient to deter Defendants and others from continuing to counterfeit or

otherwise infringe Plaintiffs’ trademarks, compensate Plaintiffs, and punish Defendants, all stated

goals of 15 U.S.C. § 1117(c). The Court finds that this award of statutory damages falls within the

permissible statutory range under 15 U.S.C. § 1117(c) and is just.

E. Damages for False Designation of Origin

Plaintiffs’ Amended Complaint also sets forth a cause of action for false designation of

origin pursuant to § 43(a) of the Lanham Act (Count II). See 15 U.S.C. § 1125(a). As to Count II,

the allowed scope of monetary damages is also encompassed in 15 U.S.C. § 1117(c). Accordingly,

judgment on Count II is limited to the amount awarded pursuant to Count I and entry of the

Case No. 22-cv-60313-BLOOM/Valle

requested equitable relief.

F. Damages for Common Law Unfair Competition and Trademark

Infringement

Plaintiffs’ Amended Complaint further sets forth a cause of action under Florida’s common

law of unfair competition (Count III) and trademark infringement (Count IV). Judgment on Count

IH and Count IV are also limited to the amount awarded pursuant to Count I and entry of the

requested equitable relief.

IV. CONCLUSION

Based on the foregoing, it is ORDERED AND ADJUDGED that Plaintiffs’ Motion, ECF

No. [35], is GRANTED against those Defendants listed in the attached Schedule “A.” Final

Default Judgment will be entered by separate order.

DONE AND ORDERED in Chambers at Miami, + Y 15, 2022.

BETH BLOOM

UNITED STATES DISTRICT JUDGE

Copies to:

Counsel of Record

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