Luxottica Group S.p.A. et al v. The Partnerships and Unincorporated Associations Identified on Schedule "A", No. 1:2016cv07988 - Document 133 (N.D. Ill. 2017)

Court Description: MEMORANDUM OPINION AND ORDER Signed by the Honorable Harry D. Leinenweber on 3/17/2017:Mailed notice(wp, )
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Luxottica Group S.p.A. et al v. The Partnerships and Unincorporated As...d on Schedule "A" Doc. 133 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION LUXOTTICA GROUP S.p.A., and OAKLEY, INC., Plaintiffs, Case No. 16 C 7988 v. Judge Harry D. Leinenweber ZHIQIANG ZHAO, et al., Defendants. MEMORANDUM OPINION AND ORDER There are a host of Motions before the Court: Eddie Store’s Motion to Dismiss for Forum Non Defendant, Conveniens; Plaintiff’s Motion for Summary Judgment; Eddie Store’s Motion to Strike certain of Plaintiff’s exhibits; Plaintiff’s Motion to Dismiss Defendant’s Counterclaims; and Eddie Store’s Motion for Release of Funds. I. BACKGROUND The Plaintiffs, Luxottica Group S.p.A. and Oakley, Inc., (collectively, trademark brands. the “Plaintiffs”) registrations for one own of numerous the best U.S. federal known eyeware Defendant Eddiestore2008 (“Defendant”) is a commercial internet store operating from The Peoples Republic of China. Luxottica and Oakley, an indirect, wholly-owned subsidiary of Luxottica, manufacture and distribute luxury and sports eyewear Dockets.Justia.com under federally register trademarks. The Oakley brand symbolizes high quality and sells some of the most recognizable eyeware as well as other related products. Oakley has used its trademarks exclusively since 1975 and has extensively used and advertised the trademarks, spending in excess of ten million dollars annually. In their Complaint, Plaintiffs contend that Defendant has used its internet store to sell products over the internet to customers in the United States, and in Illinois. Specifically, Plaintiffs charge Defendant with counterfeit versions of its Oakley sunglass products. selling Defendant acknowledges that it sold at least 79 of its sunglass products but contends that it sold only unbranded sunglasses which did not bear any alternatively of that, Oakley if it trademarks. sold Oakley Defendant products, argues they were legitimate Oakley products. Based on the forgoing, Plaintiffs have filed this action alleging claims relating to federal trademark infringement and counterfeiting, and seeking relief against Defendant. Plaintiffs’ other Motion provisions for a froze statutory damages and injunctive In August 2016, the Court granted Preliminary Defendant’s Injunction, PayPal contained the sum of approximately $459,000.00. - 2 - which account among which II. ANALYSIS A. Defendant’s Motion to Dismiss for Forum Non Conveniens Defendant contends that this Court should dismiss this case in favor of having this litigation take place in the District People’s Court of the Baiyun Guang Dong Province, China. District, Guang Zhou City, and Plaintiffs contend that Defendant has not established that a Chinese court would be an adequate forum for enforcing their United States trademark rights. A defendant has a heavy burden in opposing a plaintiff’s choice of forum. Cir. 2016). Deb v. SIRVA, Inc., 832 F.3d 800, 810 (7th First, a defendant must submit evidence that the requested transfer court is both available and adequate. v. Hill-Rom Co., 108 F.3d 799, 802 (7th Cir. Kamel 1997). Availability of a court is present if all parties are amenable to process and are within the forum’s jurisdiction. A forum is adequate if the parties will not be deprived of all remedies or treated adequate unfairly. then the interest factors. Second, court if weighs the forum certain is available private and and public There is a strong presumption in favor of the plaintiff’s choice of forum. Zelinski v. Columbia 300 Inc., 335 F.3d 633, 643 (7th Cir. 2003). If it is determined that the proposed forum is not available or adequate, them the individual - 3 - and public factors need not be discussed. Deb v. Sirva, Inc., 832 F.3d 800, 807 (7th Cir. 2016), In arguing in favor of transfer, Defendant asserts through and affidavit of its Chinese counsel, that the Chinese District Court is an adequate forum to litigate Plaintiffs’ trademark claims. by However, as Plaintiffs point out, the cases relied upon Defendant are merely citations to trademark infringement cases that were apparently decided in Chinese Courts. There were no written decisions supplied with the affidavit and there was no discussion about whether the Chinese court was applying Chinese law or United States law. There was no indication what the decisions were other than in general that injunctions were issued and damages awarded. Further the affidavit does not indicate one way or another whether a Chinese court would accept jurisdiction in this case which involves seeking to enforce American Trademark law. Italian companies Deb at 814. It is not enough to assert baldly that the proposed transferee forum is adequate. Deb at 811-12. However it is also true that an adequate forum need not be a perfect forum. only inadequate inconvenience procedures A remedy offered by the transferee forum is if or does it amounts to no remedy of beneficial forum inadequate. unavailability not render a - 4 - at all. Mere litigation Satz v. McDonnell Douglas Corporation, 244 F.3d 1279, 1283 (11th Cir. 2004). Since it may be that Defendant would be amenable to process in China, and the forum there might be adequate, the Court will discuss the public and private interests involved in this case. First, of course, is Plaintiffs’ choice of forum. As Defendant points out, this is not as important a consideration as would be the case if the Plaintiffs were U.S. corporations. However, Plaintiffs still have a strong and powerful interest in litigating United in the United States States and Illinois. District As it Court here acknowledges, in the defendant attempts to and does market its products to the citizens of the United States and of Illinois. The United States is one of Plaintiffs’ plaintiff largest markets and spends substantial sums of money establishing its name recognition in the United States. Its trademark rights in the United States cannot be questioned. It likewise has a strong interest in maintaining the of quality its products through preventing products from flooding the United States market. forced to litigate inconvenience Plaintiffs in Defendant point out, the and United its Defendant States witnesses, is a counterfeit While being will obviously nevertheless, sophisticated as on-line merchant on the E-Bay platform which operates in the English - 5 - language, and by choosing to sell in the United States and Illinois via internet forums could easily foresee being hauled into court here. Jos. Armando Bermudez & Co. v. Bermudez Int’l, Inc., 2000 U.S. Lexis 12354, *17 (S.D.N.Y. 2000). The U.S. trademark laws are primarily consumer protection laws so the United States and the State of Illinois have a stronger interest in seeing that their citizens have the protection of these laws than a States foreign court jurisdiction is might certainly have. better able complexities of U.S. trademark law. Moreover, to a United understand the Piper Aircraft v. Reyno, 454 U.S. 235, 241 n.6 (1981). Therefore, since the retaining the case here, the public Motion and private to Dismiss factors for favor Forum Non Conveniens is denied. B. Defendant’s Motion to Strike the Lewis Affidavit Plaintiffs’ Motion for Summary Judgment is straightforward: it owns the Oakley trademarks which are registered with the U.S. Patent and Trademark Office (“PTO”) and are thus incontestable. Defendant does not dispute this and further admits that it does not possess a license from Plaintiffs to sell its eyeware and is not an authorized Plaintiffs’ retail evidence of dealer of Oakley counterfeiting products. consisted of The the submission of certain screenshots of Defendant’s website on EBay - 6 - in which Defendant offered for sale certain sunglass products that contained the Oakley trademarks on certain of the product accouterments, namely the eyeware lens and bag. Defendant seeks to prevent summary judgment by moving to strike the screenshot evidence submitted by Plaintiffs on the ground that the screenshots had not been properly authenticated. Its argument is that the affiant who testified about the screenshots, Erin Lewis, Plaintiffs’ Manager of Global Online Intellectual authenticate Property the Protection, screenshots. It could cites as not properly authority States v. Vayner, F.3d 125, 131 (2nd Cir. 2014). United In this case, the government attempted to introduce a Facebook page that was purported to be defendant’s, and contained an alias that was alleged to be used by the defendant. had not been properly authenticated. The court ruled that it A police officer had taken a picture of the Facebook page off of a computer. held that there was insufficient evidence to show The court that the defendant had, in fact, created the page. The Defendant also cites this Court’s opinion in Specht v. Google, 758 F.Supp.2d 570, 580 (N.D. Ill. 2010), where the court held that screenshots be of webpages authenticated a person from Internet from Internet Archive, must Archive. The Internet Archive is a San Francisco-based digital - 7 - by obtained library which including provides “universal websites. access to all knowledge” https://en.wikipedia.org/wiki/internet archive (visited March 1, 2017). Failure to authenticate makes the information from Internet Archive, constitutes inadmissible hearsay. AudiAG v. Shokan Coachworks, Inc., 592 F.Supp.2d 246, 278 (N.D.N.Y. 2008). In this case, Ms. Lewis testified by affidavit that she took the screenshots in question and they demonstrated what she observed on the internet. purported to counterfeit be Oakley Oakley She testified that she observed what products eyeware which products. she She identified explained to why be she believed them to be counterfeit, giving eight characteristics of the Defendant’s product that is not present on the legitimate Oakley product, namely, Oakley products do not include fabric tags, plastic clips, cleaning cloths, or cleaning cloths with the Oakley trademark, microfiber bags with printing on them, UV stickers on the lens, and that Oakley products have the logo in the proper position which the Defendant product did not. Plaintiffs argue, therefore, that they have provided sufficient authentication of the evidence concerning the screenshots to satisfy Rule 901(a). Specifically, the screenshots disclose a webpages with the URL ebay.com/usr/eddiestore2008. - 8 - Subsequent pages identify the seller as “eddiestore2008” “eddiestore2008.” with a text watermark Screenshots produced by Defendant have the same text watermark as does Plaintiffs’ images. sale is “Outdoor of Sport Eyeware Lens w/Bag.” UV400 Protection The item for Sunglasses Goggle The product listing also contained the same product number as has the product sold as listed in the Defendant’s sales records, i.e., Item Number 381505858364. After briefing was complete (the Plaintiffs had filed their Reply brief) Defendant requested leave to file a Sur-reply because Plaintiffs had included a clarifying affidavit from Ms. Lewis. The Court granted Defendant leave to do so. Defendant has now filed its sur-reply, most of which seeks to provide additional arguments which could have been presented in its Reply brief and it predictably drew a Motion to Strike from Plaintiffs. However, with respect to its Motion to Strike the Lewis affidavit, which was the reason the Court authorized a Sur-reply, Defendant has provided an affidavit from its counsel, Konrad Sherinian, describing an investigation he conducted using certain internet Pinterest. sites, Terapeak.com, lapolicegear.com, and The result of his search, he contends, disclosed Oakley products for sale that included many of the features that Lewis claimed legitimate Oakley products did not have, such as a glass case, bags, and cleaning cloths containing Oakley marks. - 9 - What all three of these sites have in common is that they are photo sharing websites that are privately owned and operated, www.terapeak.com, www.lapolicegear.com and www.pinterest.com. They don’t purport to be official sites of Plaintiffs. There is no indication that the products are legitimate Oakley products. In fact, if they fit Lewis’ description of counterfeits, they may, in fact, apparent be tie-in counterfeits. between the ads In any produced event by there is Defendant no and Plaintiffs that exists between the ads produced by Plaintiffs and the Defendant. information Because the Court is considering only the relating to Attorney Sherinian’s individual investigation, the Court does not believe it is necessary to strike the Sur-reply. The Plaintiffs’ Motion to Strike is denied. Defendant also challenged Ms. Lewis’ determination that the items offered for sale on the screenshots were counterfeit. She testified in her affidavit that the products were counterfeit based on the eight characteristics previously discussed that are not present on legitimate Oakley products. Defendant argues that Lewis cannot competently testify to these facts because she was not designated as an expert. background as an investigator of Lewis testified as to her counterfeit merchandise and that she had access to Oakley business records concerning the - 10 - information contained in her affidavit. This is adequate to support her conclusion that the sunglasses offered for sale by Defendant were not legitimate Oakley sunglasses. A witness who testifies to what she observes is not necessarily an expert. Knowledge of a product’s characteristics is not so esoteric that it would need an expert to explain to a jury. Rule 701, Federal Rules of Evidence, provides for lay opinion testimony relating to the appearance of witness’ perception. things, provided it is based on the Harris v. J.B. Robinson Jewelers, 627 F.3d 235, 240-241 (6th Cir. 2010). This therefore gets us back to the question as to whether the screenshots offered by Plaintiffs are sufficiently authenticated to support their Motion for Summary Judgment. cases cited screenshots by Defendant obtained supporting them. from to keep non-parties them without their Rule sworn response involved testimony 56 Statement of Also, the Plaintiffs Material Facts description of the website including screenshots. its all Here, Lewis testified by affidavit concerning personal observation of the screenshots. in out, The Plaintiffs’ Rule 56 Statement of provided a Defendant in Facts merely denies selling, offering for sale, or advertising any product bearing a counterfeit version of the Oakley trademark. than specifically taking issue with - 11 - the screenshot Rather evidence relied upon by Plaintiffs in the Rule 56 Statement, Defendant denies that Plaintiffs submitted competent evidence. Defendant could have taken issue with the legitimacy of the screenshot evidence by producing claiming actual that screen the shots screenshots from its were Ebay phony site demonstrate what its website actually displayed. not do so. and that by would But they did Further, Defendant comes close to acknowledging that it violated Plaintiffs’ trademarks by acknowledging it has had a policy against actually states using dealing its a with current company’s the policy company’s for trademark unless dealing with was product. It complaints legitimate it of counterfeiting, is to take down immediately the advertisement for which a credible complaint is made. Defendant’s Operation Manager “Mr. testified “possible” source by for affidavit the that offending a Zhong” pictures and was the which was “created at some time between March 28, 2016 and June 26, 2016,” and which was taken down on “July 28, 2016.” Defendant further claims that it terminated Zhong on August 1, 2016 for violating Defendant’s policy. that the screenshots Based on all the forgoing, the Court finds supporting Plaintiffs’ Rule 56 Statement have been sufficiently authenticated and are admissible under Rule 901 and Defendant’s Motion to Strike is denied. - 12 - C. A Plaintiffs’ Motion for Summary Judgment defendant is liable for trademark infringement and counterfeiting under the Lanham Act if it, “without consent of the registrant, use[s]in commerce any reproduction, copy, or colorable imitation of a registered mark in connection with the sale offering for sale, distribution, or advertising of any goods . . . which such use is likely to cause confusion, or to cause mistake or to deceive.” 15 U.S.C. § 1114(1). Section 43(a) of the Lanham Act further imposes liability upon a defendant who “on or in connection with any goods or services . . . uses in commerce any . . . false designation of origin, false or misleading description of fact, or false or misleading misrepresentation of fact, which is likely to cause confusion or to cause mistake, or to deceive as to the . . . origin, sponsorship or approval of his or her goods . . . by another person.” Deceptive Trade 15 U.S.C. § 1125(a)(1). Practices Act of the Under the Uniform State of Illinois, a defendant is liable for passing off goods of another, causing likelihood of confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods, or causing likelihood of confusion of misunderstanding as to affiliation, connection, or association with another. 510/2(a). - 13 - 815 Ill. Comp. Stat. The gravamen of Plaintiffs’ three claims is whether the public is likely to be deceived or confused by the similarity of the Plaintiffs’ legitimate eyeware products offered for sale by the Defendant. and the products Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992). The three specific requirements of a prima facie case of infringement are (1) a trademark distinctive enough to be worthy of protection; (2) a defendant’s lack of authorization to use the mark; and (3) the use of the mark by defendant which threatens to create the likelihood of confusion as to the origin or sponsorship of a defendant’s products. Neopost Industrie B.V. v. PFE Int’l Inc., 403 F.Supp.2d 669, 684 (N.D.Ill. 2005). Lanham Act and UDTPA claims has the Section 43(a) of the same sale requirements. Gimix, Inc., v. JS & A Group, Inc., 699 F.2d 901, 908 (7th Cir. 1983). Therefore, in analyzing the evidence before the Court there is no disputing that the Plaintiffs have federally registered trademarks that are incontestable. that the Defendant Plaintiffs’ marks. has not There is likewise no dispute been authorized to use the The issue before the Court is whether the Defendant did, in fact, offer to sell and/or sell counterfeit versions of Plaintiffs’ Defendant takes two products positions without concerning - 14 - this authorization. last point. First, as has been argued above, Plaintiffs did not produce any competent evidence that the Defendant displayed counterfeit product on its website. issue. The Court has already addressed this The second point raised by Defendant is that perhaps the sunglasses offered for sale were actually Oakley sunglasses. Defendant cites the “first sale” doctrine which is a defense to a Lanham Act case and which provides that a purchaser who does no more than stock, display, and resell under the trademark of the producer is not in violation of the act. The problem with Defendant’s position is that there is no evidence that this is what Defendant actually did. It speculates that Mr. Zhong may have been able to acquire some legitimate Oakley sunglasses. However, there is no evidence above the speculative level that he did so. There is no affidavit from Zhong to support this contention. Furthermore this evidence tends to corroborate Plaintiffs’ position because Defendant fired Zhong for violating is policies against selling counterfeit goods. Court finds defense. eyeglasses that Defendant cannot rely upon Therefore the the last sale It also can be noted that Defendant was selling the at prices of between $11.70 and $11.80 per Oakley sells its eyeware for well over $100.00 per pair. pair. Thus, such a price differential should put a person on notice that the eyeware product is probably counterfeit. - 15 - Since the sole evidence is that Defendant violated Plaintiffs’ trademark rights, Plaintiffs are entitled to summary judgment on trademark each of their infringement and three claims: Count counterfeiting; Count I, II, federal false designation of origin; and Count III, violation of the Illinois Uniform Deceptive Trade Practices Act. D. Damages Under 15 U.S.C. § 1117(c), a plaintiff in a case involving the use of a counterfeit mark may elect to recover an award of statutory damages of “not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed” or, in the case of willful infringement, “not more than $2,000,000 per counterfeit mark per type of goods distributed.” or services sold, offered for sale, or Although the Lanham Act permits a plaintiff to choose either actual or statutory damages, statutory damages are “most appropriate” when actual damages uncertain. an infringer’s nondisclosure makes Sara Lee Corp. v. Bags of N.Y., Inc., 36 F.Supp.2d 161, 165 (S.D.N.Y. 1999). Though § 1117(c) places a larger dollar range on possible statutory damages awards, the statute provides no guidance on how to select a figure within that range. Lorillard Tobacco Co. v. S & M Cent. Serv. Corp., No. 03 C 4986, 2004 U.S. Dist. LEXIS - 16 - 22563, 2004 WL 2534378, at *4 (N.D. Ill. Nov. 8, 2004). Accordingly, “[c]ourts interpreting section 1117(c) have looked by analogy to case law applying the statutory damage provision of the Copyright Act contained in 17 U.S.C. § 504(c).” Id. The Seventh Circuit's standard for the award of statutory damages in copyright infringement cases is set forth in Chi-Boy Music v. 1991). Charlie Club, Inc., 930 F.2d 1224, 1229 (7th Cir. Under Chi-Boy, “district courts enjoy wide discretion in awarding fees and may consider various factors such as [1] the difficulty or impossibility of proving actual damages, [2] the circumstances of the infringement, and [3] the efficacy of the damages as a deterrent to future copyright infringement.” at 1229-30 (citation and internal quotations omitted). Id. Courts have also considered the value of a plaintiff’s brand, "and the efforts taken to protect, promote, and enhance that brand.” Lorillard, 2004 U.S. Dist. LEXIS 22563, 2004 WL 2534378, at *6. Ultimately, § 1117(c) looks to both “compensatory considerations” such as “actual losses and trademark value,” as well as “punitive considerations” such as “deterrence of other infringers and redress of wrongful defense conduct.” Sara Lee, 36 F.Supp.2d at 165; see also, Sands, Taylor & Wood v. Quaker Oats Co., 34 F.3d 1340, 1347 (7th Cir. 1994) (noting that statutory damages under § 1117(c) are not merely remedial but - 17 - serve an important public interest), modified on reh'g in part, 44 F.3d 579 (7th Cir. 1995). Defendant, as might be expected, asks for the lowest possible statutory award and points to its stated policy against marketing in counterfeit goods and, while it denies dealing in counterfeit eyeware, nevertheless claims that if it did so it was the fault of an employee who was subsequently fired and the amount consisted of less than $1,000.00. It therefore argues that since it did not intend to deal in counterfeit eyeware it cannot be held liable for counterfeiting. However, as Plaintiffs point out, Plaintiffs are seeking statutory damages under 15 U.S.C. § 1117(c)(1) rather than § 1117(b). The latter requires a finding of intent while the former does not (unless the plaintiff is seeking enhanced damages pursuant § 1117(c)(2) which here it is not). Plaintiffs are seeking $150,000.00 statutory damages from Defendant. The Court believes that this is more than is called for under the facts of the case. circumstances. There are certain mitigating According to Defendant’s records, it sold fewer than 100 pairs of the counterfeit eyeware for a total of less than $1,000.00. Assuming its records are accurate, it was not a big player in sale of counterfeit Oakley products. It also appears to have a policy of not dealing in counterfeit goods. - 18 - In addition, Defendant’s internet store on Ebay did not claim that the eyeware was Oakley, and a reasonable knowledgeable purchaser would probably realize that he could not expect to receive a legitimate Oakley product for the approximate $11.80 price charged by Defendant. Nevertheless, the counterfeiting took place over the internet which allows a counterfeiter to reach a vast customer base. Consequently, there are punitive considerations in order to deter the current violator and future violators. The Court has in similar cases awarded statutory damages in the amount of $50,000.00 per mark and since as far as the Court can eyeglasses. tell, Defendant was selling only one type of Consequently, the Court awards Plaintiffs the sum of $50,000.00 for statutory damages. Plaintiffs pursuant to U.S.C. § 1116(a) which allows the Court to grant injunctions. A Plaintiff must also seek demonstrate a permanent the injunction following: (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; between the warranted; (3) that plaintiff and (4) considering and that the defendant, the public disserved by a permanent injunction. L.L.C., 547 U.S. 388, 391 (2006). - 19 - a balance remedy interest of in hardships equity would not is be eBay Inc. v. MercExchange, Damage to goodwill of a trademark owner can constitute irreparable injury for which there is adequate remedy at law. Re/Max N. Cent, Inc. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001). The balance of hardships clearly favors Plaintiffs because all the Defendant has to do is to avoid counterfeiting, both of which are illegal. 3818622 at *3. because and Luxottica, 2015 WL Finally the public interest favors Plaintiffs enforcement confusion. infringement of trademark laws prevents consumer Eli Lilly & Co. Natural Answers, Inc., 233 F.3d 456, 469 (7th Cir. 2000). E. Defendant’s Counterclaim As part of the preliminary injunction, the Court issued an Order seeking to freeze assets held in Defendant’s accounts with PayPal, Inc. on the basis that Plaintiffs were seeking an accounting of profits as an alternative to statutory damages. Defendant has filed a Counterclaim in this case seeking damages as a result of the freezing of the PayPal account, which it refers to as an asset seizure, which it claims entitles it to damages under 15 U.S.C. § 1116(b)(11). Plaintiffs have moved to dismiss the Counterclaim, arguing that § 1116(d)(11) does not apply for two reasons: PayPal seizure was pursuant to an injunction first, the issued under § 1116(a) and not § 1116(d); and, second, it did not seize the - 20 - PayPal account because it is under the control of the Court and not Plaintiffs. The main basis for the Counterclaim is Defendant’s contention that it did not violate Plaintiffs’ trademark rights. Since the Court has ruled that Defendant did, in fact, violate Plaintiffs’ trademarks the main underpinning of its Counterclaim has been freeze removed. was to help However, since preserve the the purpose equitable of the remedy asset of an accounting for profits, Klipsch Group, Inc. v. Big Box Store Ltd., 2012 WL 5265727 at *3 (S.D. N. Y. Oct. 24, 2012), and since Plaintiffs are only seeking statutory damages there is no longer a reason to maintain the freeze on Defendant’s PayPal account. Klipsch Group at *4. However, the right of a court to freeze assets to preserve the equitable remedy for an accounting is clear. Id. Plaintiffs were appropriate. Here, when the Court granted the freeze, the requesting an accounting, so the freeze was Now, however, the reason for the freeze is over and the PayPal account should be unfrozen. However, the Motion to Dismiss the Counterclaim of the Defendant is granted but its alternative request for a lift of the asset freeze is granted. F. Attorneys’ Fees and Costs Finally, Plaintiffs seek an award of attorneys’ fees and costs. As the prevailing parties, Plaintiffs are entitled to - 21 - costs under Federal assessing damages attorneys’ fees, Rule of under absent Civil Procedure § 1117(a), extenuating courts 54(d)(1). “shall” circumstances, in involving the intentional use of a counterfeit mark. § 1117(b). In award cases 15 U.S.C. An award of attorneys’ fees is available where, as here, a plaintiff “opt[s] to receive statutory damages under section 1117(c). Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 111 (2d Cir. 2012); accord, Coach, Inc. v. Treasure Box, Inc., No. 3:11CV468-PPS, 2014 U.S. Dist. LEXIS 28713, 2014 WL 888902, at *5 (N.D. Ind. Mar. 6. 2014). lights of Defendant’s willful Accordingly, and in counterfeiting, Plaintiffs are awarded reasonable attorneys’ fees and costs in an amount to be determined by the Court. III. CONCLUSION For the reasons stated herein, the Court rules as follows: 1. Defendant’s Motion to Dismiss based on forum non conveniens is denied; 2. Defendant’s Motion to Strike the affidavit of Erin Lewis is denied; 3. Plaintiffs’ Motion for Summary Judgment is granted and the Court awards Plaintiffs the sum of $50,000.00 for statutory damages; - 22 - 4. Plaintiffs’ Motion to Strike Defendant’s Sur-reply is denied; 5. Plaintiffs’ Motion to Dismiss the Counterclaim of the Defendant is granted; 6. Defendant’s Motion to Release the funds in its PayPal account is granted; and 7. Plaintiffs are awarded reasonable attorneys’ fees and costs in an amount to be determined by the Court. IT IS SO ORDERED. Harry D. Leinenweber, Judge United States District Court Dated: March 17, 2017 - 23 -