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

> District Court, S.D. Florida · April 15, 2022

URL: https://www.frixlaw.com/law-library/cases/10120411

## Case

- **Court:** District Court, S.D. Florida
- **Decided:** April 15, 2022
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

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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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10120411. Public record. Not legal advice.