OVERHEAD DOOR CORPORATION v. BURGER, No. 1:2012cv00101 - Document 14 (M.D. Ga. 2013)
Court Description: ORDER granting in part and denying in part 10 Motion for Default Judgment. The Court denies without prejudice Defendant's motion for default judgment on breach of contract. Ordered by Judge W. Louis Sands on 6/17/13 (wks)
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OVERHEAD DOOR CORPORATION v. BURGER Doc. 14 IN TH E U N ITED STATES D ISTRICT COU RT FOR TH E MID D LE D ISTRICT OF GEORGIA ALBAN Y D IVISION OVERHEAD DOOR CORPORATION, Plain tiff, v. WILLIAM H. BURGER, d/ b/ a ALBANY DOOR AND H ARDWARE, Defen dan t. : : : : : : : : : : : Case No. 1:12-cv-10 1 (WLS) ORD ER Before th e Court is Plain tiff Overhead Door Corporation ’s Motion for Default J udgmen t. For the reason s th at follow, th e Plain tiff’s motion is GRAN TED in pa rt an d D EN IED in p a rt. PROCED U RAL POSTU RE Th is is a Lan ham Act case against William H. Burger (“Burger”), doin g busin ess as Alban y Door an d Hardware, for damages an d injunctive relief. Plain tiff Overhead Door Corporation (“Overhead Door”) claim s that Burger is usin g its federally registered m ark, “OVERHEAD DOOR,” with out perm ission , an d is en gaging in false advertising an d cyberpiracy, in violation of 15 U.S.C. §§ 1114, 1125(a), 1125(d) an d O.C.G.A. §§ 10 1372, 10 -1-421. Overhead Door also brin gs a claim of breach of con tract an d requests dam ages in the am oun t of $ 10 ,155.39 on an open accoun t. Overhead Door filed a com plain t on J un e 28, 20 12. (Doc. 1.) After Burger failed to an swer (see Docket), the plain tiff applied for an en try of default. Th e Clerk of the Court en tered a default. Overh ead Door th en timely moved for a motion for default judgm en t (Doc. 10 .) On Decem ber 17, 20 12, the Court held a h earin g on th e m otion . 1 Dockets.Justia.com Overh ead Door, through coun sel, appeared for the hearin g; Burger did n ot. Plain tiff’s coun sel represen ted to the Court that Burger h ad been person ally served. Overhead Door also declin ed to presen t evidence on Lanham Act dam ages. The Court th en gran ted a default judgmen t again st Burger an d explain ed it would specify the scope of the default judgm ent in a subsequent order. FACTU AL FIND IN GS Th e Court makes the followin g fin din gs of fact from the allegation s an d exhibits in Overhead Door’s com plaint.1 Overhead Door own s a registered trademark listed as OVERHEAD DOOR, U.S. Registration No. 7420 1580 . The trademark con sists of th e n ame “Overhead Door,” in capital letters, stretched across a ban n er. Overhead Door registered that trademark in 1994 an d h as periodically ren ewed the registration . Burger began usin g th e Overhead Door trademark through a lawful fran chise agreem en t. On March 23, 1982, DMC In c., then a Georgia Dom estic Corporation in Alban y, Georgia, filed an application to operate an Overhead Door fran ch ise. On April 5, 1982, Overhead Door en tered a Distributor’s Agreemen t with DMC, gran tin g it th e righ t to distribute Overhead products un der th e n ame “Overhead Door Compan y of Alban y.” Later that m on th , on April 29, 1982, Burger, Hazel Burger, Don ald C. Miller, an d Con stan ce Miller executed an UNLIMTED GUARANTY-J OINT AND SEVERAL in favor of Overhead Door. On August 18, 1987, Overh ead Door an d Burger executed an amendm en t to the DCM Distributor’s Agreemen t, modifyin g the agreemen t to sh ow Burger as th e sole By operation of a default judgment, Burger admits Overhead’s well-pleaded allegations of fact. Buchanan v . Bow m an, 820 F.2d 359, 361 (11th Cir. 1987). 1 2 own er an d spon sor of Overh ead Door Com pan y of Alban y. On May 13, 1988, the Georgia Secretary of State admin istratively dissolved DMC. Burger an d Overh ead Door executed a secon d amen dm en t to the Distributor’s Agreemen t on November 11, 20 0 9. The Distributor’s Agreemen t provided, in relevan t part, th at “[t]h is Agreemen t an d all such righ ts an d obligation may . . . be term in ated by eith er party h ereto at an y time for an y reason by givin g of 60 days’ written n otice of such termin ation to th e oth er party.” Furtherm ore, the “Stan dard Provisions” of th e Distributor’s Agreem en t required Burger, upon term in ation of th e Agreem en t, to return all m aterials bearin g Overhead Door’s m ark; to discon tinue th e use of the n am e “Overhead Door” an d “Overhead”; to deliver in stallation records of Overhead Door’s products to Overh ead; an d to advise local telephon e companies that th e number used in con n ection with Overhead Door Compan y of Albany were to be retain ed by Overhead Door for future use. On December 1, 20 11, Overhead Door sen t a written 60 -day n otice to Burger advisin g h im th e compan y opted to termin ate the Distributor’s Agreemen t. The n otice requested that Burger comply with the “Stan dard Provisions” of their agreemen t. It specifically asked him to discon tinue usin g the n ame “Overhead” an d “Overhead Door,” to advise the telephon e compan y to tran sfer Overh ead Door Compan y of Alban y’s numbers to Overh ead Door, an d to return all con fiden tial data to Overhead Door’s corporate office. Burger n ow operates a com pan y called Alban y Door an d Hardware, which services Overhead Door in stallation s th at Burger made before the termin ation of th e Distributor’s Agreemen t. He also uses th e In tern et domain n ame “overh eaddoorcoofalban yga.com ” an d th e e-m ail address “ohalban y@aol.com .” Burger also continues use of th e sam e telephone num ber an d addresses listed in th e 3 Distributor’s Agreemen t. Accordin g to a cease an d desist letter attached to th e Com plain t, Burger used a work order bearin g the n am e “Overhead Door Com pan y of Alban y” an d the Overh ead Door Mark an d listed his phon e number under the n ame Overhead Door Com pan y of Alban y in th e 20 12 Yellow Pages. Overhead Door claim s Burger is purposely divertin g its custom ers to Alban y Door an d Hardware. D ISCU SSION I. Sta n d a rd s “Th e en try of a default judgmen t is appropriate ‘[w]hen a party again st whom a judgmen t for affirmative relief is sought has failed to plead or otherwise defend as provided by these rules an d that fact is m ade to appear by affidavit or oth erwise.’” Mitchell v. Brow n & W illiam son Tobacco Corp., 294 F.3d 130 9, 1316 (11th Cir. 20 0 2) (quotin g Fed. R. Civ. P. 55(a)). Before obtain in g a default judgmen t, the party seekin g such a judgmen t must first seek an en try of default from th e Clerk of th e Court. Fed. R. Civ. P. 55(a). But the en try of a default does not en title a plain tiff to a default judgmen t. Nishim atsu Con st. Co. v. Houston Nat’l Ban k, 515 F.2d 120 0 , 120 6 (5th Cir. 1975).2 The defaultin g party admits th e movan t’s well-pleaded factual allegation s. Eagle H osp. Phy sicians, LLC v. SRG Consulting, In c., 561 F.3d 1298, 130 7 (11th Cir. 20 0 9) (citin g Nishim atsu, 515 F.2d at 120 6); Buchanan, 820 F.2d at 361. Those well-pleaded factual allegation s must provide a sufficien t basis for im posin g liability on the defaultin g party. Ty co Fire & Security , LLC v . Alcocer, 218 F. App’x 8 60 , 8 63 (11th Cir. 20 0 7). In con siderin g a default judgmen t, th e Court must address (1) jurisdiction , (2) liability, and In Bonner v . City of Pritchard, 661 F.2d 120 6, 120 9 (11th Cir. 1981) (en banc), the Eleventh Circuit adopted as binding precedent all decisions of the form er Fifth Circuit handed down prior to October 1, 1981. 2 4 (3) dam ages. John son v. Ram m age, No. 5:0 6-cv-0 57 (CAR), 20 0 7 WL 2276847, at *1 (M.D. Ga. Aug. 7, 20 0 7). Th e Court fin ds Overhead Door is en titled to a default judgmen t on several of its claims. Overh ead Door h as complied with Federal Rule 55. It requested an en try of default from th e Clerk of th e Court, an d then timely moved for an en try of default judgm en t. Th e Court has jurisdiction over Overhead Door’s Lan ham Act claim s through federal question jurisdiction , 28 U.S.C. § 1331, an d over its state-law claim s by way of supplem en tal jurisdiction , § 1367. The Court turns n ow to Burger’s liability on Overhead Door’s causes of action . II. Th e La n h a m Act Overh ead alleges Burger violated various provision s of th e Lanham Act, 18 U.S.C. § 10 51 et seq. The Court fin ds that Burger is liable for trademark in frin gemen t an d false design ation, but not false advertising an d cyberpiracy. A. Tra d e m a rk In frin ge m e n t. The Lanham Act’s provision on tradem ark infringem ent proh ibits “[a]ny person . . . without the con sen t of the registran t . . . [from ] us[in g] in com m erce any reproduction , coun terfeit, copy, or colorable im itation of a registered m ark in con n ection with the sale, offerin g for sale, distribution , or advertisin g of an y goods or services on or in con n ection with wh ich such use is likely to cause con fusion , or to cause m istake, or to deceive . . . . 15 U.S.C. § 1114(1)(a). To prevail on a tradem ark-in frin gemen t claim under th e Lan ham Act, the plain tiff must show (1) that it possesses a valid mark, (2) that th e defen dan t used th e mark, (3) th at th e defen dan t’s use of th e mark occurred “in commerce,” (4) th at the defen dan t used th e mark “in con n ection with the sale . . . or advertisin g of an y goods,” an d (5) that the defen dan t used the mark in a man n er likely to con fuse 5 consum ers. N. Am . Med. Corp. v. Axiom W orldw ide, In c., 522 F.3d 1211, 1218 (11th Cir. 20 0 8). A person m ay in frin ge on a tradem ark th rough the registration an d use of a dom ain n am e. See Plan etary Motion , In c. v . Techsplosion, In c., 261 F.3d 1188, 120 0 – 0 1 (11th Cir. 20 0 1). The Eleven th Circuit h as iden tified seven factors to determ in e wheth er an in frin ger’s use of a trademark is likely to con fuse customers: (1) the stren gth of the mark alleged to h ave been in frin ged; (2) the similarity of the in frin ged an d in frin gin g marks; (3) th e similarity of goods an d services offered un der the marks; (4) th e similarity of th e actual sales m eth ods used by th e holders of the m arks; (5) sim ilarity of advertising methods; (6) the in ten t of the alleged in frin ger to misappropriate th e proprietor’s good will; an d (7) th e existence of actual con fusion amon g th e public. Tana v. Dantanna’s, 611 F.3d 767, 774– 75 (11th Cir. 20 10 ). As a th reshold matter, th e Court must determin e wh ether Burger’s use of th e Overhead Door tradem ark was un authorized. McDon ald’s Corp. v. Robertson , 147 F.3d 130 1, 130 8 (11th Cir. 1998); Burger King Corp. v. Mason , 710 F.2d 1480 , 1492 (11th Cir. 1983). A fran chisor m ay show that a form er fran chisee’s use of a m ark is un authorized by sh owin g it validly term in ated th e fran chise agreemen t. Robertson , 147 F.3d at 130 8. The Court easily con cludes Overhead Door validly term in ated the Distributor’s Agreemen t. Th e Distributor’s Agreemen t perm itted either party to term in ate th e relation sh ip “at any time for an y reason by the givin g of 60 days’ written n otice of such term in ation to th e oth er party.” (Doc. 1-13.) Overhead Door exercised that provision and provided sixty days’ n otice to Burger before term in atin g the agreemen t. Nothin g in th e record suggests th e term ination was invalid or unlawful. 6 Given th at Burger’s use of the Overhead Door tradem ark was un authorized, th e Court also finds th e well-pleaded factual allegation s in the complain t establish that Burger is liable un der th e Lanham Act for tradem ark infringem ent. It is clear from th e complain t an d its in corporated exhibits that Overhead Door possesses a valid trademark registered with the U.S. Paten t an d Trademark Office. Registered marks are presumptively valid. Sow eco, In c. v. Shell Oil Co., 617 F.2d 1178, 1184– 85 (5th Cir. 1980 ); TracFone W ireless, In c. v. Park Chin a Group Co. Ltd., 8 43 F. Supp. 128 4, 1294 (S.D. Fla. 20 12). After th e term in ation of the Distributor’s Agreem en t, Burger used that trademark, without perm ission , in his website domain n ame, e-mail address, work orders, an d in the Yellow Pages. By holdin g himself out as an Overh ead Door fran ch isee, Burger profited from Overh ead’s goodwill an d reputation through sales an d repairs. Th ese sales an d advertisem en ts occurred “in com m erce” because h e operated a website an d apparen tly sold garage an d com m ercial doors un der Overhead Door’s ban n er. See Axiom 522 F.3d at 1218– 19 (In tern et sales). Addition ally, the complain t’s factual allegation s show that the in frin gin g use was likely to cause con fusion am on g custom ers. “Com m on sen se compels the con clusion th at a stron g risk of con sum er con fusion arises when a term in ated fran chisee con tinues to use th e former fran chisor’s trademark.” Mason , 710 F.2d at 1492. Burger used a dom ain nam e an d e-m ail address that implicitly iden tified him as an Overh ead Door fran ch isee, and h e con tinued to service Overhead Door products he had sold as a fran ch isee. When Burger serviced the products, he used service form s with Overh ead Door’s actual trademark. Therefore, th e marks each compan y used were similar, if n ot iden tical, an d both Burger an d Overhead Door sold garage-type doors. Although the Court has little in formation about the similarity of the sales methods, advertisin g, 7 Burger’s in ten t, or actual customer con fusion , Burger’s effective con tinuation of an un auth orized fran ch ise is stron g in dication of a likelih ood of custom er con fusion . The Court therefore fin ds that Burger is liable for trademark in frin gemen t under the Lan h am Act. Overhead Door’s motion for default judgmen t on th is claim is GRAN TED . B. Fa ls e D e s ign a tio n Overh ead Door also makes a claim of false design ation under th e Lanh am Act. A false-design ation claim requires th e plain tiff to show th at (1) “it h ad trademark righ ts in the m ark or n ame at issue an d (2) that the other party had adopted a mark or n ame that was th e sam e, or confusin gly sim ilar to its m ark, such that custom ers were likely to con fuse the two.” Sun tree Techs., In c. v. Ecosen se In tern ., In c., 693 F.3d 1338 , 1348 (11th Cir. 20 12) (quotin g Tan a, 611 F.3d at 773). Because a claim of false design ation , un der 15 U.S.C. § 1125, is broader than a claim of trademark in frin gemen t, the facts sufficien t to establish th e latter also establish former. Babbit Elecs., In c. v . Dy nascan Corp., 38 F.3d 1161, 118 1 (11th Cir. 1994). Havin g foun d th at Burger is liable for trademark in frin gemen t, th e Court also finds he is liable for false design ation . The Court GRAN TS the motion for default judgmen t on this claim. C. Fa ls e Ad ve rtis in g Overhead Door claims Burger also violated th e Lan ham Act’s proh ibition on false advertising. According to Overhead, Burger’s prom otion of products through www.overheaddoorcoofalban yga.com am oun ted to false advertisin g because it im plied a relation sh ip between him an d Overhead Door. The Court disagrees. Section 43(a) of the Lanham Act prohibits an y person , “in com m ercial advertising or prom otion, [from ] m isrepresent[ing] th e nature, ch aracteristics, qualities, 8 or geograph ic origin of his or her or an other person ’s goods, services, or com m ercial activities.” 15 U.S.C. § 1125(a)(1)(B). To establish a false-advertisin g claim under th e Lan ham Act, a plain tiff must sh ow that (1) the advertisemen ts of the opposin g party were false or misleadin g; (2) the advertisemen ts deceived, or h ad th e capacity to deceive, custom ers; (3) the deception h ad a m aterial effect on purchasin g decisions; (4) the misrepresen ted product or service affects in terstate commerce; an d (5) the movan t has been —or is likely to be—in jured as a result of the false advertisin g. Axiom , 522 F.3d at 1224; Hickson Corp. v. Northern Crossarm Co., 357 F.3d 1256, 1260 (11th Cir. 20 0 4); John son & John son Vision Care, In c. v. 1-8 0 0 Contacts, In c., 299 F.3d 1242, 1247 (11th Cir. 20 0 2). Un der the first elemen t of a false-advertisin g claim, a statemen t is false or m isleadin g wh en (1) it is literally false as a factual m atter or (2) literally true or am biguous but likely to m islead or deceive custom ers. Hickson, 357 F.3d at 1261. Wh eth er a statemen t is literally false or misleadin g affects the plain tiff’s burden . Osm ose, In c. v. Vian ce, LLC, 612 F.3d 1298, 1318– 19 (11th Cir. 20 10 ). If a court deem s a statemen t literally false, th e plain tiff n eed not prove th e elemen t of deception . Id. at 1319. On the other han d, when a statemen t is literally true or ambiguous but misleadin g, the plain tiff must in troduce some eviden ce of con sum er reaction . Id.; 1-8 0 0 Contacts, 299 F.3d at 1247 n .3 (n otin g a split in the Courts of Appeals as to what type of eviden ce a plain tiff must produce for con sum er deception but th at “[e]ven in circuits with th e lower stan dard, the m ovan t must produce som e eviden ce of con sum er reaction ”). In th is case, the plain tiff has n ot iden tified an y literally false statemen ts on Burger’s website in its well-pleaded factual allegation s or otherwise. It m erely alleges Burger’s use of the dom ain n am e overh eaddoorcoofalban yga.com “reason ably im plies 9 that Defen dan t Burger’s products or services are those of [Overhead Door’s].” But Overhead Door has n ot alleged th at Burger literally claimed an affiliation or th at its products were th ose of Overhead’s. An in depen den t review of th e record fails to reveal an y literally false statemen ts in Burger’s website. If Burger’s advertisemen ts were n ot literally false, Overhead Door must show th ey were literally true or ambiguous but misleadin g. Hickson, 357 F.3d at 1261. Th e Court can assume, with out decidin g, that Burger’s advertisemen ts were m isleadin g. Overh ead h as n ot alleged or provided evidence of con sum er deception . Th erefore, Overh ead Door’s motion for a default judgmen t as to the falseadvertising claim is D EN IED . D . Cybe rp iracy Th e An tiscybersquattin g Consum er Protection Act (ACPA), codified at 15 U.S.C. § 1125(d), creates liability for an y person who uses an oth er’s trademark with “a bad faith in ten t to profit from that mark” and who “registers, traffics in , or uses a domain n ame” th at is iden tical or con fusin gly similar to that m ark. 15 U.S.C. § 1125(d). Overhead Door claim s Burger en gaged in cybersquattin g by usin g th e dom ain n am e www.overh eaddoorofalban yga.com . Even acceptin g Overhead Door’s well-pleaded factual allegation s as true, th e Court fin ds Overh ead Door has n ot established a claim un der 15 U.S.C. § 1125(d). It h as n ot provided allegation s of fact establish in g that Burger h ad bad faith in ten t to profit from th e use of th e mark. Con gress passed th e ACPA in 1999 “in response to con cern s over the proliferation of cybersquattin g—th e In tern et version of a lan d grab.” Virtual W orks, In c. v . Volksw agen of Am ., In c., 238 F.3d 264, 267 (4th Cir. 20 0 1). Accordin g to th e Sen ate Report, examples of people who act with “bad faith in ten t to profit” are th ose wh o 10 (1)“register well-known bran d nam es as In tern et dom ain nam es in order to extract pay m en t from the rightful own ers of the marks;” (2) “register well-kn own m arks as dom ain n am es an d warehouse those m arks w ith the hope of selling them to th e highest bidder;” (3) “register well-kn own m arks to prey on consum er confusion by misusing the dom ain nam e to divert custom ers from the mark own er's site to th e cybersquatter's own site;” (4) “target distinctive m arks to defraud con sum ers, including to en gage in coun terfeitin g activities.” Southern Grouts & Mortars, In c. v. 3M Co., 575 F.3d 1235, 1246 (11th Cir. 20 0 9) (quoting Lucas Nursery & Landscapin g v. Grosse, 359 F.3d 8 0 6, 8 10 (6th Cir.20 0 4) (quoting S. Rep. No. 10 6– 140 (1999)). To iden tify in dividuals who act with “bad faith in ten t to profit,” the ACPA provides non-exhaustive list of factors a Court m ay consider. § 1125(d)(1)(i). Am on g those factors is wh eth er th e user previously used “the domain n ame in con n ection with th e bon a fide offerin g of an y goods or services.” § 1125(d)(1)(i)(III). Alth ough n o particular factor is dispositive under th e ACPA, Pen sacola Motor Sales In c. v. Eastern Shore Toy ota, LLC, 684 F.3d 1211, 1223 (11th Cir. 20 12), Burger’s prior lawful use of his domain n ame as an Overh ead Door fran chisee is stron g eviden ce that undercuts a fin din g a cybersquattin g. Furth ermore, given that Overhead has n ot iden tified an y oth er in dicia of bad faith, beyon d Burger’s con tinued use of the website, the Court fin ds there are in sufficien t facts to establish a cybersquattin g violation . Th e motion for default judgmen t on cyberpiracy is D EN IED . III. U n ifo rm D e ce p tive Tra d e Pra ctice s Act an d Fa ls e Ad ve rtis in g u n d e r Ge o rgia law . Th e Georgia Un iform Deceptive Trade Practices Act, O.C.G.A. § 10 -1-372 et seq., provides a cause of action again st a person wh o, in th e course of busin ess, “[c]auses likelih ood of con fusion or of m isun derstan ding” as to the source, sponsorship, approval, or affiliation of goods or services. § 10 -1-372(a)(2)– (3). Generally speaking, a claim 11 un der the Georgia Deceptive Practices Act is “co-exten sive” with a Lan h am Act claim. Optim um Techs., In c. v . Henkel Consum er Adhesiv es, In c., 496 F.3d 1231, 1248 n .11 (11th Cir. 20 0 7); Am star Corp. v. Dom in o's Pizza, In c., 615 F.2d 252, 258 (5th Cir. 1980 ) (“In frin gem en t of a registered m ark is govern ed by the provisions of 15 U.S.C. § 1114 [ ], wh ich imposes liability against use likely to cause confusion, or to cause m istake, or to deceive. Th e same test is applicable to th e [Georgia] deceptive trade practices claim and common law un fair competition .” (citation s and alteration s omitted)). Similarly, th e Georgia False Advertisin g statute in volves “essen tially th e same test” as th e Lan ham Act. Gold Kist In c. v. Con Agra, In c., 70 8 F. Supp. 1291, 130 3 (N.D. Ga. 1989). Given th at the Court h as found Burger’s use of Overh ead Door’s trademark is likely to cause con fusion un der the Lanham Act, th e Court also fin ds his con duct violates th e Deceptive Practices Act. The Court finds, con sisten t with its fin din g on federal false advertising, th at Burger is not liable for violating the Georgia False Advertising Act. IV. Bre a ch o f Co n tract Overhead Door also alleges a breach of contract claim for Burger’s failure to comply with the Stan dard Provisions of the Distributor’s Agreemen t. Overh ead requests th e Court rem edy th is breach by requiring specific perform ance. But it h as not briefed th is issue in its motion for default judgmen t or provided any citation to Georgia law. For th e Court to require specific performan ce, it would have to fin d th at an y legal remedy is in adequate to compensate the movan t. Ham pton Island, LLC v. HAOP, LLC, 70 2 S.E.2d 770 , 776 (Ga. Ct. App. 20 10 ). But a “district court judge is neith er required nor permitted to become coun sel for any party.” Baker v. Norm an, 651 F.2d 110 7, 1129 n .26 (5th Cir. 1981). See also Ultim ate Resort Holdin gs, LLC v. Ultim ate Resort Netw ork, 12 LLC, No. CV40 8 -0 70 , 20 0 9 WL 20 320 36, at *4 (S.D. Ga. J ul. 8 , 20 0 9) (declining to en ter default judgmen t for breach of con tract because plain tiff in Lan ham Act case h ad n ot briefed it). The Court declin es to speculate—without th e aid of eith er party– about the un iquen ess of Overh ead Door’s phon e numbers an d techn ical data an d whether a legal remedy is adequate to compensate th e non breachin g party. A motion for default judgmen t on this claim is D EN IED . V. Op e n Acco u n t In an action on open accoun t, Overhead requests $ 10 ,155.39 in dam ages arisin g from Burger’s failure to pay for th e purchase of certain goods. “A suit on open accoun t is available as a simplified procedure to the provider of goods an d services wh ere the price of such goods or services h as been agreed upon an d ‘wh ere it appears th at th e plain tiff has fully performed [its] part of the agreemen t an d n oth in g remain s to be don e except for th e other party to make paym en t.’” Altacare Corp. v. Decker, Hallm an , Barber & Briggs, P.C., 730 S.E.2d 12, 14 (Ga. Ct. App. 20 12) (quotin g Five Star Steel Con st., In c. v. Klockn er Nam asco Corp., 524 S.E.2d 783, 739– 40 (Ga. Ct. App. 1999)). Overhead is en titled to $ 10 ,155.39 in damages on its open accoun t. Overhead has alleged that Burger purchased products an d that $ 10 ,155.39 remain s outstandin g from that purch ase. Th ere is n o dispute about the perform an ce or term s of the con tract. Furtherm ore, as Overhead alleged a sum certain , the Court has authority to award those damages upon th e en try of a default judgment. See Fed. R. Civ. P. 55(b)(1). Th e m otion for default judgmen t on open accoun t is GRAN TED . VI. In ju n ctive Re lie f Th e Court fin ds that Overhead Door is en titled to a perman en t in jun ction on its trademark in frin gemen t an d false design ation claims. The Lanham Act perm its a court 13 to gran t in junctions “accordin g to the prin ciples of equity an d upon such terms as the court may deem reason able.” 15 U.S.C. § 1116. A plain tiff seekin g a perm an en t in jun ction must establish (1) it has suffered an irreparable in jury; (2) rem edies at law are in adequate to compensate for th at in jury; (3) con siderin g th e balan ce of h ardsh ips between the plain tiff an d defendan t, an equitable remedy is warran ted; an d (4) th e public in terest would n ot be disserved by a perm an en t in jun ction . Angel Flight of Ga., In c. v. Angel Flight Am ., In c., 5222 F.3d 120 0 , 120 8 (11th Cir. 20 0 8) (citin g eBay In c. v. MercExchan ge, L.L.C., 547 U.S. 38 8 , 391 (20 0 6)). Overhead Door, th rough its well-pleaded factual allegation s, h as establish ed th ese elemen ts. Alth ough there is probably n o presum ption of irreparable h arm in a Lan h am Act case, Axiom , 522 F.3d at 1228, tradem ark infringem ent often im plicates in juries of th at caliber, see Tally -Ho, In c. v. Coast Cm ty . Coll. Dist., 889 F.2d 10 18, 10 29 (11th Cir. 1989). Irreparable in jury “in clude[s] loss of con trol of reputation , loss of trade, an d loss of goodwill. Irreparable injury can also be based upon th e possibility of injury.” Ferrellgas Partn ers, L.P. v. Barrow , 143 F. App’x 180 , 190 (11th Cir. 20 0 5) (quotin g Pappan En ters., In c. v. Hardee's Food Sy s., In c., 143 F.3d 80 0 , 80 5 (3d Cir. 1998)). Because Burger represen ts himself as an Overhead Door affiliate, Overh ead Door has lost control of its reputation an d goodwill. Burger’s custom ers m ay very well assum e he con tinues to operate as an Overhead Door fran chisee. Furtherm ore, Burger h as failed to defen d this lawsuit an d Overh ead alleges he con tinues to use its trademark in defian ce of the term in ation of th eir agreemen t an d a cease an d desist letter. The well-pleaded factual allegation s evin ce that legal rem edies are in adequate to redress Burger’s continued in fringem ent. As already m entioned, th e infringem ent 14 deprived Overhead Door of con trol over its reputation an d goodwill. Th is type of h arm is on going, im possible to quan tify, an d causes long-term dam age. The balan ce of h ardsh ips an d the public in terest also favor a perm an en t in jun ction . Although Burger may suffer busin ess losses if it can n ot con tinue to use its website, e-mail address, an d Overhead Door work orders, th ese h arm s are easily remedied. Furth erm ore, an in jun ction will n ot preven t Burger from sellin g commercial an d residen tial doors. Overh ead Door’s reputation in the Albany area, on the other h an d, m ay be dam aged by Burger’s busin ess. Fin ally, the public ben efits from elim inating an y confusion about Burger’s affiliation or sponsorship. Overhead Door’s request for a perm an en t in jun ction is GRAN TED . CON CLU SION For th e foregoin g reason s, Overhead Door’s Motion for Default J udgmen t is GRAN TED in p art an d D EN IED in p a rt, as follows: The Court en ters a default judgmen t on Overh ead Door’s trademark in frin gemen t, false design ation , Georgia Deceptive Trade Practices Act, an d open account claim s. The m otion is D EN IED as to th e false advertisin g un der Georgia an d federal law an d cyberpiracy. The Court D EN IES w ith o u t p re ju d ice Defen dan t’s motion for default judgmen t on breach of contract. IT IS H EREBY ORD ERED AN D AD JUD GED that judgmen t be en tered in favor of Plain tiff Overh ead Door Corporation an d again st Defen dan t William H. Burger, d/ b/ a Alban y Door an d Hardware, in the prin cipal amoun t of $ 10 ,155 .3 9 ; togeth er with in terest at th e rate consisten t with 28 U.S.C. § 1961(a), accruin g on th e prin cipal beginning on th e date of J udgm ent. 15 Burger is hereby EN JOIN ED an d RESTRAIN ED , togeth er with an y officers, directors, principals, agen ts, servan ts, em ployees, successors, assigns, attorn eys, an d all those person s in active concert or participation th erewith (referred to h ereinafter as “Burger”) h avin g n otice of th is Order, as follows: (1) Burger shall cease an y and all use of the trademark OVERHEAD DOOR, or an y other variation thereof that are colorable im itations of, or confusingly sim ilar to th e Overh ead Door’s Mark; (2) Burger sh all refrain from represen tin g by words or conduct that an y goods or services which are promoted, offered for sale, or sold by Burger are authorized, sponsored by, en dorsed by, or otherwise con n ected with Overhead Door or Overhead Door’s Mark; (3) Burger shall, with in s e ve n ( 7) d a ys of th e entry of th is Order, can cel, chan ge, or tran sfer th e dom ain n am e www.overh eaddoorofalban yga.com to Overh ead Door; (4) Burger shall, with in s e ve n ( 7) d a ys of th e entry of th is Order, can cel, chan ge, or tran sfer the e-m ail address oh dalban y@aol.com to Overhead Door; an d (5) Burger shall, with in s e ve n ( 7) d a ys of the en try of this Order, n otify all ph on e directory com pan ies, such as the Yellow Pages, that it n o lon ger operates under th e n am e Overh ead Door Com pan y of Alban y. SO ORD ERED , this 17th day of J un e 20 13. / s/ W. Louis Sands_ _ _ _ TH E H ON ORABLE W . LOU IS SAN D S, U N ITED STATES D ISTRICT COU RT 16
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