International Code Council, Inc. v. Penkaj Verma

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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INTERNATIONAL CODE COUNCIL, INC.,

Plaintiff,

REPORT AND

-against- RECOMMENDATION

24 CV 2026 (PKC)(RML)

PENKAJ VERMA and NEW FASHION

INDIA,

Defendants.

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LEVY, United States Magistrate Judge:

By order dated February 12, 2025, the Honorable Pamela K. Chen, United States

District Judge, referred plaintiff’s motion for default judgment to me for report and

recommendation. For the reasons stated below, I respectfully recommend that plaintiff’s motion

be granted.

BACKGROUND

Plaintiff International Code Council, Inc. (“plaintiff”) brings this action against

defendants Penkaj Verma (“Verma”) and New Fashion India (“New Fashion”) (together

“defendants”) for copyright infringement under the Copyright Act, 17 U.S.C. § 501; trademark

counterfeiting, infringement, and false designation of origin and unfair competition under the

Lanham Act, 15 U.S.C. §§ 1114, 1116(d), 1117(b), § 1125(a); and related state and common law

claims. (Amended Complaint, filed Apr. 12, 2024 (“Am. Compl.”), Dkt. No. 22, ¶¶ 41–97.)1

1 The original complaint named Universal Store 2023, Bombino Express (Worldwide) Inc.

(“Bombino”) and Does 1–10 (the “Doe defendants”) as defendants. (Complaint, filed Mar. 20,

2024, Dkt. No. 1.) The amended complaint replaced Universal Store 2023 with Verma and New

Fashion. (Am. Compl. ¶ 2.) Bombino settled, (Consent Order, dated Dec. 17, 2024, Dkt. No.

44), and the Doe defendants were voluntarily dismissed (Notice of Voluntary Dismissal, dated

Feb. 10, 2025, Dkt. No. 46). Therefore, Verma and New Fashion are the only remaining

defendants.

The following facts are taken from the amended complaint and assumed to be true for the

purposes of this motion. Bricklayers & Allied Craftworkers Loc. 2 v. Moulton Masonry &

Constr., LLC, 779 F.3d 182, 187–90 (2d Cir. 2015).

I. Factual Background

Plaintiff is a non-profit corporation organized under Delaware law with a

principal place of business in Washington, D.C. (Am. Compl. ¶ 1.) Plaintiff develops and

maintains books of model building codes, known as the International Codes or “I-Codes,”

through a consensus process that is designed to protect the health, safety, and welfare of building

dwellers. (Id. ¶¶ 1, 11–12.) Plaintiff revises the I-Codes on a regular basis in response to

technological and industry advancement and incurs significant costs “to provide the

administrative, technical, substantive content and other services necessary to create and produce

the [ ] I-Codes[.]” (Id. ¶¶ 13, 18.)

To recover a portion of its costs, plaintiff sells copies of the I-Codes. (Id. ¶ 19.)

These include the 2021 International Building Code book (the “2021 IBC Book”); the 2021

International Fire Code book (the “2021 IFC Book”); the 2021 International Fuel and Gas Code

book (the “2021 IFGC Book”); the 2021 International Mechanical Code book (the “2021 IMC

Book”); the 2021 International Plumbing Code book (the “2021 IPC Book”); the 2021

International Residential Code book (the “2021 IRC Book”), as well as the 2018 International

Fuel and Gas Code book (the “2018 IFGC Book”), the 2018 International Mechanical Code book

(the “2018 IMC Book”); and the 2018 International Plumbing Code book (the “2018 IPC Book”)

(collectively, the “I-Books”). (Id. ¶ 15.) Plaintiff registered its copyrights in the I-Books with

the United States Copyright Office and obtained Certificates of Copyright Registration from the

Register of Copyrights. (Id. ¶ 24, Ex. A.) Plaintiff also owns registered trademarks that it uses

in the promotion of its products and services in connection with the I-Books,2 along with

registered trademarks for three logos (collectively, the “Marks”). (Id. ¶ 26, Ex. B.)

Defendant New Fashion is a sole proprietorship formed under Indian law and

owned by defendant Verma, a resident of India. (Id. ¶ 2.) Defendants sold counterfeit versions

of the I-Books. (Id. ¶¶ 2, 30–31, 35.) Through an investigating agent, plaintiff ordered copies of

the counterfeit I-Books from defendants’ stores on eBay and determined that they are not

authentic or original. (Id. ¶ 37.) Although nearly identical, the counterfeit versions differed in

quality from the I-Books in significant ways. (Id. ¶ 38.)3

II. Procedural Background

Plaintiff filed the amended complaint on April 12, 2024, (Am. Compl.), and

defendants executed waivers of service that same day (Waivers of Service, dated Apr. 12, 2024,

Dkt. Nos. 25, 26). Despite waiving service, defendants have not answered or otherwise appeared

in this action. The Clerk of the Court entered defaults against defendants on December 11, 2024.

(Certificate of Default, dated Dec. 11, 2024, Dkt. No. 42.) Plaintiff filed the instant motion on

February 10, 2025. (Motion for Default Judgment and Memorandum of Law, dated Feb. 10,

2025 (“Pl.’s Mot.”), Dkt. No. 45; Declaration of Jeffrey T. Norberg, Esq., dated Feb. 10, 2025

(“Norberg Decl.”), Dkt. No. 45-1.) Plaintiff seeks a default judgment against defendants

pursuant to Federal Rule of Civil Procedure 55(b)(2), an award of statutory damages in the

2 These marks include: THE INTERNATIONAL CODE COUNCIL®, INTERNATIONAL

CODES®, INTERNATIONAL BUILDING CODE®, IBC®, INTERNATIONAL FIRE

CODE®, IFC®, INTERNATIONAL FUEL AND GAS CODE®, IFGC®, INTERNATIONAL

MECHANICAL CODE®, IMC®, INTERNATIONAL PLUMBING CODE®, IPC®, and

INTERNATIONAL RESIDENTIAL CODE®, IRC®. (Am. Compl. ¶ 26.)

3 For example, the counterfeit books were not shrink wrapped and did not contain the legal

notice that plaintiff affixes to the I-Books. (Am. Compl. ¶¶ 38, 16.) The text in the counterfeit

books also differed from the I-Books in color, font, and spacing. (Id. ¶ 38.) Lastly, the quality

of the bindings of the counterfeit books were “vastly inferior” to those of the I-Books. (Id.)

amount of $2,375,000 under the Copyright Act and Lanham Act; and a permanent injunction

pursuant to 17 U.S.C § 502. (Pl.’s Mot. at 6.)4

DISCUSSION

I. Default Judgment Standard

Federal Rule of Civil Procedure 55 “provides a two-step process for obtaining

default judgment.” Priestley v. Headminder, Inc., 647 F.3d 497, 504 (2d Cir. 2011). First, where

a party’s failure to respond is “shown by affidavit or otherwise, the clerk must enter the party’s

default.” FED. R. CIV. P. 55(a). Second, the plaintiff must petition the court for an entry of

default judgment pursuant to Rule 55(b)(2). See Priestley, 647 F.3d at 505.

Following a default, all factual allegations in the complaint, except those

pertaining to the amount of damages, must be accepted as true. See Cotton v. Slone, 4 F.3d 176,

181 (2d Cir. 1993). A defendant’s default is deemed an admission of the plaintiff’s well-pleaded

allegations of fact pertaining to liability. See D.H. Blair & Co. v. Gottdiener, 462 F.3d 95, 107

(2d Cir. 2006). Additionally, “although a plaintiff seeking to recover damages against a

defaulting defendant must prove its claim through the submission of evidence,” the court need

not hold a hearing as long as (1) “it has determined the proper rule for calculating damages on

the claim,” and (2) “the plaintiff’s evidence establishes, with reasonable certainty, the basis for

the damages specified in the default judgment.” DISH Network L.L.C. v. 786 Wireless World,

Inc., No. 21 CV 5730, 2024 WL 708229, at *2 (E.D.N.Y. Jan. 3, 2024), report and

recommendation adopted, 2024 WL 1092498 (E.D.N.Y. Mar. 13, 2024) (citing Langenberg v.

Sofair, No. 03 CV 8339, 2006 WL 3518197, at *1 (S.D.N.Y. Dec. 7, 2006)).

4 Plaintiff does not seek damages pursuant to its state law claims. (Pl.’s Mot. at 27.) It is

therefore unnecessary to address the state law claims here.

II. Liability

A. Copyright Infringement

The Copyright Act protects “original works of authorship, fixed in any tangible

medium of expression, . . . from which they can be perceived, reproduced, or otherwise

communicated.” 17 U.S.C. § 102(a). A copyright owner has “exclusive rights . . . (1) to

reproduce the copyrighted work in copies . . . (2) to prepare derivative works based upon the

copyrighted work; [and] (3) to distribute copies of the copyrighted work to the public by sale or

other transfer of ownership, or by rental, lease, or lending[.]” 17 U.S.C. § 106. To succeed on a

copyright infringement claim, a plaintiff must establish “(1) ownership of a valid copyright, and

(2) copying of constituent elements of the work that are original.” Arista Recs., LLC v. Doe 3,

604 F.3d 110, 117 (2d Cir. 2010) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.

340 (1991)). “The word copying is shorthand for the infringing of any of the copyright owner’s .

. . exclusive rights described in § 106.” Id. (marks and citation omitted).

Regarding the first element, plaintiff has provided valid Certificates of

Registration, issued by the U.S. Copyright Office, and registration numbers for each of the I-

Books. (Am. Compl. ¶ 24, Ex. A.) This constitutes prima facie evidence of the valid ownership

of a copyright. See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980) (citing

17 U.S.C. § 410(c)); Stelzer v. Elec. Interface Assocs., Inc., No. 22 CV 5234, 2024 WL

5416158, at *5 (E.D.N.Y. Aug. 21, 2024); Joe Hand Promotions, Inc. v. Rosero, No. 19 CV 792,

2020 WL 2572328, at *4 (E.D.N.Y. Feb. 18, 2020); Premium Sports, Inc. v. Mendes, No. 17 CV

1309, 2018 WL 2078488, at *5 (E.D.N.Y. Mar. 1, 2018).

Regarding the second element, plaintiff must show that (a) defendants have

actually copied plaintiff’s work; and (b) the copying is illegal because a substantial similarity

exists between defendants’ work and the protectable elements of plaintiff’s work. Jeremiah v. 5

Towns Jewish Times, Inc., No. 22 CV 5942, 2023 WL 6593997, at *5 (E.D.N.Y. Aug. 9, 2023)

(quoting CJ Prods. LLC v. Snuggly Plushez LLC, 809 F. Supp. 2d 127, 144 (E.D.N.Y. 2011)),

report and recommendation adopted, 2023 WL 5703698 (E.D.N.Y. Sept. 5, 2023). Plaintiff

alleges that defendants “reproduced, displayed, distributed, and sold counterfeits and copies” of

the I-Books without plaintiff’s consent. (Am. Compl. ¶ 44.) Plaintiff further alleges that the text

of the counterfeit versions is “substantially similar, if not identical” to the I-Books. (Id. ¶ 45.)

See Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir. 1995) (“If the two works are so strikingly

similar as to preclude the possibility of independent creation, copying may be proved.”). This is

sufficient to establish that defendants copied “constituent elements” of the I-Books and thus

infringed plaintiff’s copyrights. See McGraw-Hill Glob. Educ. Holdings, LLC v. Khan, 323 F.

Supp. 3d 488, 498 (S.D.N.Y. 2018) (defaulting defendant liable where plaintiff demonstrated

ownership of valid copyright and infringement due to substantial similarity); see also Strike 3

Holdings, LLC v. Doe, No. 23 CV 998, 2024 WL 3369986, at *9 (E.D.N.Y. July 11, 2024);

Korzeniewski v. Sapa Pho Vietnamese Rest. Inc., No. 17 CV 5721, 2019 WL 312149, at *6

(E.D.N.Y. Jan. 3, 2019), report and recommendation adopted, 2019 WL 291145 (E.D.N.Y. Jan.

23, 2019). Accordingly, I respectfully recommend that plaintiff’s motion for a default judgment

be granted with respect to plaintiff’s claim for copyright infringement.

B. Lanham Act

i. Trademark Counterfeiting and Infringement

Although the amended complaint lists separate counts for trademark infringement

and trademark counterfeiting, (Am. Compl. ¶¶ 51–68), both are predicated upon Section 32 of

the Lanham Act, 15 U.S.C. § 1114(1), and therefore, one analysis is appropriate in evaluating

both claims. Streamlight, Inc. v. Gindi, No. 18 CV 987, 2019 WL 6733022, at *4 (E.D.N.Y.

Oct. 1, 2019), report and recommendation adopted, 2019 WL 6726152 (E.D.N.Y. Dec. 11,

2019).

With respect to plaintiff’s trademark infringement claim, Section 32(1)(a)

imposes civil liability on any person who, without the consent of the registrant,

use[s] in commerce any reproduction, counterfeit, copy, or

colorable imitation of a registered mark in connection with the

sale, offering for sale, distribution, or advertising of any goods or

services on or in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive[.]

15 U.S.C. § 1114(1)(a). With respect to plaintiff’s trademark counterfeiting claim, Section

32(1)(b) imposes civil liability on any person who, without authorization,

reproduce[s], counterfeit[s], cop[ies], or colorably imitate[s] a

registered mark and appl[ies] such reproduction, counterfeit, copy,

or colorable imitation to labels, signs, prints, packages, wrappers,

receptacles, or advertisements intended to be used in commerce

upon or in connection with the sale, offering for sale, distribution,

or advertising of goods or services on or in connection with which

such use is likely to cause confusion, or to cause mistake, or to

deceive[.]

15 U.S.C. § 1114(1)(b).

To state a claim for trademark infringement or counterfeiting, plaintiff must show

that (1) plaintiff has a valid mark that is entitled to protection and (2) defendants’ actions are

likely to cause confusion with that mark. Fossil Grp., Inc. v. Angel Seller LLC, No. 20 CV

2441, 2025 WL 1031062, at *4 (E.D.N.Y. Apr. 7, 2025) (quoting Tiffany & Co. v. Costco

Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020)). A counterfeit mark is a “spurious mark which

is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127.

“As to the first prong, a certificate of registration . . . is prima facie evidence that

the mark is registered and valid (i.e., protectable), that the registrant owns the mark, and that the

registrant has the exclusive right to use the mark in commerce.” Guthrie Healthcare Sys. v.

ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016) (quoting Lane Cap. Mgmt., Inc. v. Lane Cap.

Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999) (marks omitted)). Plaintiff owns the U.S.

Trademark Registrations for the Marks. (Am. Compl. ¶ 26, Ex. B.) Due to their default,

defendants have failed to overcome the presumption that the Marks are valid and entitled to

protection. See Mattel, Inc. v. www.fisher-price.online, No. 21 CV 9608, 2022 WL 2801022, at

*5 (S.D.N.Y. July 18, 2022); Gindi, 2019 WL 6733022, at *4.

As to the second prong, “the standard for consumer confusion is easily satisfied in

the case of counterfeits because counterfeits, by their very nature, cause confusion.” Off-White

LLC v. 5HK5584, No. 19 CV 672, 2020 WL 1646692 at *5 (S.D.N.Y. Apr. 3, 2020) (quoting

Coach, Inc. v. Horizon Trading USA Inc., 908 F. Supp. 2d 426, 433 (S.D.N.Y. 2012)).

Plaintiff’s well-pled allegations establish that the trademarks deployed by defendants are

counterfeit as they are virtually indistinguishable from the Marks. (Am. Compl. ¶¶ 30, 35–39,

Ex. C.) Accordingly, I find that plaintiff has established defendants’ liability on its trademark

infringement and counterfeiting claims. Kelly Toys Holdings, LLC v. alialialiLL Store, 606 F.

Supp. 3d 32, 50 (S.D.N.Y. 2022); Mattel, 2022 WL 2801022, at *5–6.

ii. False Designation of Origin and Unfair Competition

Plaintiff also brings a claim for false designation of origin and unfair competition

under the Lanham Act, 15 U.S.C. § 1125(a). (Am. Compl. ¶¶ 69–74.)5 “Courts in the Second

Circuit have determined that the standards for false designation of origin claims under Section

5 Count IV of the amended complaint is labeled as a claim for “Unfair Competition” pursuant to

15 U.S.C. 1125(a). However, “there is no specific Federal cause of action for unfair

competition. Instead unfair competition under the Lanham Act is a category of claims consisting

primarily of causes of action for false designation of origin and false advertising.” Sussman-

Automatic Corp. v. Spa World Corp., 15 F. Supp. 3d 258, 272–73 (E.D.N.Y. 2014) (marks and

citation omitted).

43(a) of the Lanham Act . . . are the same as for trademark infringement under Section

32.” Gindi, 2019 WL 6733022, at *6 (quoting Sola Franchise Corp. v. Solo Salon Studios Inc.,

No. 14 CV 0946, 2015 WL 1299259, at *7 (E.D.N.Y. Mar. 23, 2015) (marks omitted)); see also

Roberto Coin, Inc. v. Goldstein, No. 18 CV 4045, 2021 WL 4502470, at *15 n.13 (E.D.N.Y.

Sept. 30, 2021) (“[I]t is well settled that the standards for false designation of origin claims under

Section 43(a) of the Lanham Act . . . are the same as for trademark infringement claims under

Section 32[.]”); Cap. One Fin. Corp. v. Cap. One Certified Inc., No. 18 CV 580, 2019 WL

1299266, at *4 (E.D.N.Y. Mar. 5, 2019) (“Courts employ substantially similar standards when

analyzing claims for trademark infringement and false designation of origin under the Lanham

Act.”). Since plaintiff has satisfied the elements of a trademark infringement and has established

that defendants’ use of the Marks is likely to cause confusion or mistake as to the origin of

defendants’ products, I respectfully recommend that plaintiff’s motion for default judgment be

granted with respect to its false designation of origin and unfair competition claim under the

Lanham Act, 15 U.S.C. § 1125(a).

III. Relief

A. Injunctive Relief

Plaintiff asks this court to permanently enjoin defendants from further infringing

plaintiff’s copyrights and trademarks. (Pl.’s Mot. at 27–28.) The Lanham Act gives courts the

“power to grant injunctions, according to the principles of equity and upon such terms as the

court may deem reasonable.” 15 U.S.C. § 1116(a). A plaintiff seeking a permanent injunction

must demonstrate: “(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.”

Salinger v. Colting, 607 F.3d 68, 77 (2d Cir. 2010) (quoting eBay Inc. v. MercExchange, LLC,

547 U.S. 388, 391 (2006)).

Plaintiff has satisfied each of these factors for both copyright and trademark

infringement. First, irreparable harm occurs where “there is any likelihood that an appreciable

number of original prudent purchasers are likely to be misled, or indeed simply confused.” Lobo

Enters., Inc. v. Tunnel, Inc., 822 F.2d 331, 333 (2d Cir. 1987); accord Malletier v. Burlington

Coat Factory Warehouse Corp., 426 F.3d 532, 537 (2d Cir. 2005) (“In trademark disputes, a

showing of likelihood of confusion establishes . . . irreparable harm.”) (citation and marks

omitted). Moreover, “courts routinely find the harm suffered by plaintiffs in copyright cases to

be ‘irreparable’ on the theory that lost sales or diminished reputation can be difficult if not

impossible to measure.” Broad. Music, Inc. v. Prana Hosp., Inc., 158 F. Supp. 3d 184, 195

(S.D.N.Y. 2016). Defendants have sold counterfeit versions of plaintiff’s books on eBay causing

irreparable harm to plaintiff’s business reputation. (Am. Compl. ¶ 38 (“Issues with the quality

and durability of the Counterfeit Books will directly impact Plaintiff’s reputation and

goodwill.”).) Second, defendants’ conduct has shown that monetary damages are inadequate to

compensate plaintiff for its injury. Defendants have sold at least 1,491 counterfeit books.

(Norberg Decl. ¶¶ 4–5, Ex. B.) Monetary damages are insufficient to compensate plaintiff for

the injury it has suffered because such damages will not prohibit future infringement in their

continuing online storefronts. See Malibu Media, LLC v. Ofiesh, No. 16 CV 202, 2017 WL

2633526, at *3 (N.D.N.Y. June 19, 2017).

Third, there is no hardship to defendants because a permanent injunction will

require defendants to do no more than simply stop engaging in infringement. Fourth, a

permanent injunction is in the public interest because the need to protect copyrights is reflected

in the Constitution. U.S. Const. art. I, § 8, cl. 8 (“to promote the progress of science and arts, by

securing for limited time to authors and inventors the exclusive right to their respective writing

and discoveries.”); see also Feist Publ’ns, 499 U.S. at 361; Int’l News Serv. v. AP, 248 U.S. 215,

234 (1918). Further, a permanent injunction is in the public interest since it will protect

copyrighted and trademarked material and encourage compliance with the law. Malibu Media,

2017 WL 2633526, at *3. Finally, because defendants have failed to appear, a default judgment

against them demonstrates actual success on the merits. 15 U.S.C. § 1116(a). Accordingly, I

recommend that a permanent injunction be entered against defendants, in the form proposed by

plaintiff. (See Proposed Default Judgment and Permanent Injunction, Dkt. No. 45-5.)

B. Statutory Damages

The plaintiff bears the burden of establishing an amount of damages with

reasonable certainty. RGI Brands LLC v. Cognac Brisset-Aurige, S.A.R.L., No. 12 CV 1369,

2013 WL 1668206, at *6 (S.D.N.Y. Apr. 18, 2013) (collecting cases), report and

recommendation adopted, 2013 WL 4505255 (S.D.N.Y. Aug. 23, 2013); see also Transatlantic

Marine Claims Agency, Inc. v. Ace Shipping Corp., 109 F.3d 105, 111 (2d Cir. 1997). In

conducting an inquest, the court is charged with “determining the proper rule for calculating

damages on such a claim” and applying that rule to the evidence. Tiffany (NJ) Inc. v. Luban,

282 F. Supp. 2d 123, 124 (S.D.N.Y. 2003) (quoting Credit Lyonnais Securities (USA), Inc. v.

Alcantara, 183 F.3d 151, 155 (2d Cir. 1999)).

Plaintiff requests statutory damages of $675,000 under the Copyright Act and

$1,700,000 under the Lanham Act for a total of $2,375,000. (Pl.’s Mot. at 6, 18–24.) The

Second Circuit has repeatedly cautioned, however, that, “a plaintiff seeking compensation for the

same injury under different legal theories is only entitled to one recovery.” Viacom Int’l Inc. v.

Fanzine Int’l, Inc., No. 98 CV 7448, 2001 WL 930248, at *5 (S.D.N.Y. Aug. 16, 2001) (citing

Indu Craft, Inc. v. Bank of Baroda, 47 F.3d 490, 497 (2d Cir. 1995)); see also Lyons P’ship, L.P.

v. AAA Ent. Inc., No. 98 CV 9475, 1999 WL 1095608, at *10 (S.D.N.Y. Dec. 3, 1999) (“[T]he

Second Circuit has repeatedly held that even if a plaintiff prevails on separate legal claims, each

of which may be said to protect different if related interests, he may not obtain full compensation

twice for the same economic injury.”). Thus, courts typically do not permit recovery of statutory

damages under both the Lanham Act and the Copyright Act where, as here, there ultimately is

only one injury or economic loss. E.g., AllStar Mktg. Grp., LLC v. Ali Dropshipping Support

Store, No. 21 CV 333, 2023 WL 4348386, at *3 (S.D.N.Y. July 5, 2023) (declining to award

statutory damages under both Copyright Act and Lanham Act and adopting reasoning that one

award of statutory damages was sufficient to compensate intellectual property holders); Cengage

Learning, Inc. v. Shi, No. 13 CV 7772, 2015 WL 5167775, at *4 (S.D.N.Y. Sept. 2015) (“[A]

plaintiff should not be awarded statutory damages under both the Copyright Act and the Lanham

Act.”); Tu v. Tad Sys. Tech. Inc., No. 08 CV 3822, 2009 WL 2905780, at *4–5 (E.D.N.Y. Sept.

10, 2009) (denying dual recovery of statutory damages under both Copyright Act and Lanham

Act where defendant used plaintiff’s trademarks on advertising and packaging in support of sale

of software infringing plaintiff’s copyrights); Microsoft Corp. v. Comput. Care Ctr., Inc., No. 06

CV 1429, 2008 WL 4179653, at *9 (E.D.N.Y. Sept. 10, 2008) (denying statutory damages under

both Copyright Act and Lanham Act “for the same injury – i.e., harm caused by defendants’

unauthorized copying of the same software”). Accordingly, I respectfully recommend that

plaintiff not be awarded duplicative awards of statutory damages.

Under the Copyright Act, courts are given broad discretion to award statutory

damages between $750 and $30,000 for copyright infringement. 17 U.S.C. § 504(c)(1). “If the

defendant’s infringement was willful, however, the district court may also, in its discretion

[under 17 U.S.C. § 504(c)(2) ], enhance the statutory damages award to as much as $150,000 per

infringed work.” Spin Master Ltd. v. Alan Yuan’s Store, 325 F. Supp. 3d 413, 424–25

(S.D.N.Y. 2018) (quoting Island Software and Compu. Serv., Inc. v. Microsoft Corp., 413 F.3d

257, 262–63 (2d Cir. 2005)). The Lanham Act provides that, “at any time before final judgment

is rendered by the trial court,” plaintiffs may elect an award of statutory damages instead of

actual damages and profits. 15 U.S.C. § 1117(c)(1). “Once liability is established, if the court

finds that the use of the counterfeit mark was willful, it may award up to $2,000,000 per

counterfeit mark per type of goods or services sold . . . as the court considers just.” Spin Master,

325 F. Supp. 3d at 424 (quoting 15 U.S.C. § 1117(c)(2) (marks omitted)). Statutory damages

against a defendant who acted willfully are intended to serve the dual role of compensating a

plaintiff for injuries and deterring wrongful conduct by the defendant and others. Malletier v.

Carducci Leather Fashions, Inc., 648 F. Supp. 2d 501, 504 (S.D.N.Y. 2009) (“[W]here . . . a

defendant is shown to have acted willfully, a statutory award should incorporate not only a

compensatory, but also a punitive component to discourage further wrongdoing by the

defendants and others.”).

“The Lanham Act does not provide guidelines for courts to use in determining an

appropriate award of statutory damages; it is only limited by what the court considers just.” Spin

Master, 325 F. Supp. 3d at 425 (quoting 15 U.S.C. § 1117(c) (marks omitted)). Courts in this

Circuit, therefore, look to the analogous provision in the Copyright Act and consider the

following factors:

(1) the infringer’s state of mind; (2) the expenses saved, and profits

earned, by the infringer; (3) the revenue lost by the copyright

holder; (4) the deterrent effect on the infringer and third parties; (5)

the infringer’s cooperation in providing evidence concerning the

value of the infringing material; and (6) the conduct and attitude of

the parties.

Sylo Supply, Inc. v. Juzihao Res. Mgmt. Co., No. 20 CV 5633, 2023 WL 6370863, at *13

(E.D.N.Y. Sept. 28, 2023), report and recommendation adopted, WL 6845865 (E.D.N.Y. Oct.

17, 2023) (citation omitted).

The factors related to defendants’ default support an award of statutory damages.

First, defendants’ infringement is deemed willful by virtue of their default. See, e.g., Rovio Ent.,

Ltd. v. Allstar Vending, Inc., 97 F. Supp. 3d 536, 546 (S.D.N.Y. 2015) (“[C]opyright

infringement is deemed willful by virtue of a defendant’s default”) (citing All-Star Mktg. Grp.,

LLC v. Media Brands Co., 775 F. Supp. 2d 613, 621–22 (S.D.N.Y. 2011)). As to factors two,

three and five, although discovery was limited in this case due to defendants’ default, a subpoena

issued to eBay yielded information showing that defendants sold at least 1,557 counterfeit I-

Code Books, 1,491 of which were titles subject to the copyright registrations asserted in the

Amended Complaint. (Norberg Decl. ¶¶ 4–5, Ex. B.) At $117 per book, plaintiff’s retail price

for many of the I-Books (Am. Compl. ¶ 39), lost revenue is approximately $182,169. (Pl.’s Mot.

at 16.) The scale of infringement is heightened in the case of online counterfeiting, because

online marketplaces such as eBay provide a “‘virtually limitless number of customers’ for the

counterfeit products.” Kelly Toys Holdings, LLC v. Airpods Pro Store, No. 21 CV 8435, 2022

WL 2801077, at *7 (S.D.N.Y. July 18, 2022) (quoting Gindi, 2019 WL 6733022, at *13); see

also Golden Goose Deluxe Brand v. Aadct Off. Store, No. 19 CV 2521, 2020 WL 3167031, at *4

(S.D.N.Y. June 15, 2020), report and recommendation adopted, 2020 WL 6157012 (S.D.N.Y.

Oct. 21, 2020) (finding that defaulting defendants who offered goods on e-commerce website

could reach a “vast customer base”) (marks and citation omitted). However, because the court

recommends issuing a permanent injunction, “the need to deter [d]efendant[s] from future

misconduct does not directly support a higher award.” Mattel, Inc. v. Arming, No. 18 CV 8824,

2021 WL 3683871, at *8 (S.D.N.Y. Aug. 18, 2021).

Furthermore, “[c]ases where high statutory damages are awarded typically

involve defendants who profit significantly despite repeated notices that they are infringing on

the plaintiff’s copyright.” Sylo Supply, 2023 WL 6370863, at *13 (marks and citation omitted);

see also Sadowski v. Render Media Inc., 17 CV 9045, 2020 WL 1178629, at *4 (S.D.N.Y. Mar.

10, 2020), report and recommendation adopted, 2020 WL 5968668 (S.D.N.Y. Oct. 8, 2020)

(“While some courts in this District have granted in full a plaintiff’s request for statutory

damages in similar copyright infringement cases where a defendant had defaulted, such cases

typically include facts demonstrating that the defendant continued its infringing conduct despite

receiving notices to end such activity.”). Plaintiff does not claim to have sent defendants any

cease and desist letters and provides no evidence that the sales are ongoing. (Am. Compl.; Pl.’s

Mot.) It states simply that “[p]laintiff is not aware of the full exten[t] of the counterfeiting and

consumers who receive [c]ounterfeit [b]ooks may not notify [p]laintiff of the issue.” (Pl.’s Mot.

at 28.)

Because plaintiff has shown willful infringement but does not allege that

defendants continue to infringe despite plaintiff’s efforts, a statutory award of $25,000 per

infringed work is appropriate. See, e.g., Sadowski, 2020 WL 1178629, at *4 (collecting cases);

Hollander Glass Texas, Inc. v. Rosen-Paramount Glass Co., 291 F. Supp. 3d 554, 560 (S.D.N.Y.

2018) (collecting cases). Since defendants sold nine I-Books on its eBay stores, (Am. Compl. ¶¶

12, 35), I respectfully recommend that plaintiff be awarded $225,000 from defendants.

C. Attorney’s Fees and Costs

Section 505 of the Copyright Act authorizes the court, in its discretion, to award

costs and reasonable attorney’s fees to the prevailing party. 17 U.S.C. § 505. In exercising this

discretion, the court may consider, inter alia, “frivolousness, motivation, objective

reasonableness (both in the factual and in the legal components of the case) and the need in

particular circumstances to advance considerations of compensation and deterrence.” Fogerty v.

Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994) (marks and citation omitted). The Second Circuit

has held that it is appropriate to award attorney’s fees where the infringement was willful.

Kepner-Tregoe, Inc. v. Vroom, 186 F.3d 283, 289 (2d Cir. 1999).

Plaintiff does not request attorney’s fees or costs at this time. (See Pl.’s Mot. at

24–27.) Plaintiff notes that eBay is holding approximately $37,000 pursuant to this court’s

Temporary Restraining Order and Preliminary Injunction. (Id.; Norberg Decl. ¶ 6, Ex. C.)

Given defendants’ location in India, plaintiff acknowledges that “this may represent the upper

limit of Plaintiff’s possible recovery, regardless of the size of any judgment entered by this

Court.” (Pl.’s Mot. at 26.) Therefore, plaintiff is not asking the court to determine an

appropriate award of attorney’s fees or costs at this time but instead intends to bring a motion for

attorney’s fees and costs later “should the Court enter judgment in an amount less than the

amount currently impounded by eBay.” (Id.)

D. Post-Judgment Interest

The Lanham Act and the Copyright Act permit a plaintiff to receive post-

judgment interest “on any money judgment in a civil case recovered in a district court. . . . Such

interest shall be calculated from the date of the entry of the judgment, at a rate equal to the

weekly average 1-year constant maturity Treasury yield, as published by the Board of Governors

of the Federal Reserve System, for the calendar week preceding the date of the judgment.” 28

U.S.C. § 1961(a). Accordingly, plaintiff is entitled to post-judgment interest on the money

judgment entered in this action. Schipani v. McLeod, 541 F.3d 158, 165 (2d Cir. 2008)

(affirming that post-judgment interest is mandatory for civil judgments in federal district courts);

Michael Grecco Prods. v. Function(X) Inc., 2019 WL 1368731, at *6 (S.D.N.Y. Mar. 11, 2019)

(noting courts grant post-judgment interest against defaulting defendants in cases of copyright

infringement).

CONCLUSION

For the foregoing reasons, I respectfully recommend that plaintiff’s motion for

default judgment against defendants Penkaj Verma and New Fashion India be granted. I further

recommend that defendants be permanently enjoined from infringing plaintiff’s copyrights and

trademarks, and that plaintiff be awarded $225,000 in statutory damages.

Plaintiff is directed to serve a copy of this Report and Recommendation on

defendants, and to file proof of service with the court. Any objections to this Report and

Recommendation must be filed electronically within fourteen (14) days. Failure to file

objections within the specified time may waive a right to appeal the District Court’s order. See

28 U.S.C. § 636(b)(1); FED. R. CIV. P. 72, 6(a), 6(d).

Respectfully submitted,

/s/

ROBERT M. LEVY

United States Magistrate Judge

Dated: Brooklyn, New York

August 21, 2025