Electrolux Home Products, Inc. v. BuyRite Appliances, LLC, d/b/a buyriteappliances.com, No. 1:2014cv02461 - Document 15 (E.D.N.Y. 2014)
Court Description: MEMORANDUM AND ORDER granting in part and denying in part 12 Motion for Default Judgment. For the reasons set forth herein, the Court will issue a permanent injunction, but plaintiff is not entitled to monetary relief, costs, or attorney's fees. The Clerk of Court is directed to mail a copy of this Memorandum and Order and the accompanying permanent injunction to defendant's last known address, and to close this case. Ordered by Judge I. Leo Glasser on 10/14/2014. (Carey, Charles)
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Electrolux Home Products, Inc. v. BuyRite Appliances, LLC, d/b/a buyriteappliances.com Doc. 15 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK ------------------------------------------------------x ELECTROLUX HOME PRODUCTS, INC., Plaintiff, MEMORAN D U M & ORD ER - against 14-CV-2461 (ILG) (SMG) BUYRITE APPLIANCES, LLC, D/ B/ A BUYRITEAPPLIANCES.COM, Defendant. ------------------------------------------------------x GLASSER, Senior United States District J udge: On April 17, 20 14, plaintiff Electrolux Hom e Products, Inc. (“Electrolux”) com m enced this action against defendant BuyRite Appliances, LLC, d/ b/ a buyriteappliances.com (“BuyRite”), alleging violations of the Copyright Act, 17 U.S.C. §§ 10 1 et seq.; the Lanham Act, 15 U.S.C. §§ 10 51 et seq.; and com m on law. Specifically, plaintiff claim ed that BuyRite displayed Electrolux’s copyrighted m aterials and tradem arks on its web site without perm ission in order to sell products. BuyRite did not answer or otherwise respond to Electrolux’s com plaint, and the Clerk of Court noted its default on J une 13, 20 14 (Dkt. No. 11). Electrolux now m oves for a default judgm ent, pursuant to Rule 55(b) of the Federal Rules of Civil Procedure, seeking injunctive relief pursuant to the Copyright and Lanham Acts, statutory dam ages pursuant to the Copyright Act, and an award of costs and attorney’s fees. For the following reasons, that m otion is GRANTED in part and DENIED in part. BACKGROU N D Except where otherwise noted, the following facts are taken from plaintiff’s com plaint, Dkt. No. 1, and are accepted as true for purposes of deciding this m otion. At som e point prior to this litigation, Electrolux created a web site (the “Electrolux Site”) 1 Dockets.Justia.com that it uses to advertise and prom ote its products and brands online. Electrolux eventually registered the Electrolux Site and its com ponents (such as the im ages displayed there) with the United States Copyright Office (“USCO”). The USCO assigned the Electrolux Site registration num ber TX 7-812-523. Electrolux also owns three federally registered tradem arks (Nos. 434720 0 , 3920 361, & 29990 0 84) that it uses to prom ote the Frigidaire lines of appliances and cooking equipm ent (the “Electrolux Marks”). BuyRite used the Electrolux Marks and im ages from the Electrolux Site on its own web site to advertise Electrolux products it sold without Electrolux’s perm ission, despite being told to cease and desist twice by Electrolux’s counsel in letters dated J une 11, 20 13 and August 5, 20 13. See Fialkow Decl. (Dkt. No. 14), Exs. B & C. This litigation ensued. LEGAL STAN D ARD Rule 55 of the Federal Rules of Civil Procedure sets forth a two-step process for obtaining a default judgm ent: first, the clerk of court enters the party’s default pursuant to Rule 55(a), and second, if the defaulting party fails to set aside the default pursuant to Rule 55(c), the plaintiff m ust apply for a default judgm ent pursuant to Rule 55(b). See Finkel v. Universal Elec. Corp., 970 F. Supp. 2d 10 8, 118 (E.D.N.Y. 20 13) (citing Enron Oil Corp. v. Diakuhara, 10 F.3d 90 , 95-96 (2d Cir. 1993)). The plaintiff has the burden of establishing entitlem ent to a default judgm ent, which is not obtained as a m atter of right. See id. at 119 (citing, inter alia, Erwin DeMarino Trucking Co. v. J ackson, 838 F. Supp. 160 , 162 (S.D.N.Y. 1993)). The defaulting defendant is deem ed to have adm itted all well-pleaded allegations in the com plaint pertaining to liability, but not those pertaining to dam ages, which require an independent evidentiary determ ination. See, 2 e.g., Greyhound ExhibitGroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992); Au Bon Pain Corp. v. Artect, Inc., 653 F. 2d 61, 65 (2d Cir. 1981). Courts m ust “supervise default judgm ents with extrem e care to avoid m iscarriages of justice.” DeMarino Trucking, 838 F. Supp. at 162. Thus, all doubts, whether about the sufficiency of the pleadings or the calculation of dam ages, should be resolved in favor of the defaulting party. See Finkel, 970 F. Supp. 2d at 119 (citing Diakuhara, 10 F.3d at 95-96). D ISCU SSION I. D e fau lt Ju d gm e n t In seeking a default judgm ent, Electrolux relies on its claim s under the Copyright and Lanham Acts and abandons those m ade pursuant to com m on law. BuyRite is liable under both acts. A. Th e Co p yrigh t Act To prove an infringem ent under the Copyright Act, a plaintiff m ust show both (1) ownership of the copyright and (2) that the defendant used the copyrighted m aterial without perm ission. See Rogers v. Koons, 960 F.2d 30 1, 30 6 (2d Cir. 1992). Electrolux has satisfied both elem ents here. It is therefore entitled to a default judgm ent on its Copyright Act claim . See, e.g., Agence Fr. Presse v. Morel, 934 F. Supp. 2d 547, 558-69 (S.D.N.Y. 20 13) (finding Copyright Act violations where com panies re-posted copyrighted im ages from a social m edia site on their own web sites without perm ission), superseded on other grounds on reconsideration, 934 F. Supp. 2d 584 (S.D.N.Y. 20 13); Tangorre v. Mako’s, Inc., No. 0 1 Civ. 4430 , 20 0 3 WL 470 577, at *6-8 (S.D.N.Y. J an. 6, 20 0 3) (finding a Copyright Act violation where a com pany sold a calendar featuring copyrighted im ages used without perm ission). 3 B. Th e Lan h am Act The Lanham Act provides a “false endorsem ent” cause of action for a tradem ark holder if a person uses in com m erce any word, term , nam e, sym bol, device, or com bination thereof that is likely to cause confusion or deceive as to the affiliation, connection, or association of such person with the tradem ark holder. See Fam ous Horse, Inc. v. 5th Ave. Photo, Inc., 624 F.3d 10 6, 10 9 (2d Cir. 20 10 ) (citing 15 U.S.C. § 1125(a)(1)(A)), abrogated in part on other grounds by Lexm ark Int’l, Inc. v. Static Control Com ponents, Inc., 572 U.S. ---, 134 S. Ct. 1377 (20 14). To prevail on such a claim , a plaintiff m ust show “(1) that it possesses a valid, legally protectable tradem ark and (2) that the [sim ilar] m ark [used by the defendant] is likely to cause confusion as to the origin or sponsorship of the product at issue.” U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 80 0 F. Supp. 2d 515, 524 (S.D.N.Y. 20 11) (citing, inter alia, Gruner + J ahr USA Publ’g v. Meredith Corp., 991 F.2d 10 72, 10 74 (2d Cir. 1992)). Electrolux has satisfied both elem ents of this test as well. Its registration of its three m arks is prim a facie evidence of its ownership of and exclusive right to use those m arks. See Christian Louboutin S.A. v. Yves Saint Laurent Am . Holding, Inc., 696 F.3d 20 6, 224 (2d Cir. 20 12). Electrolux has also sufficiently alleged that BuyRite’s use of the Electrolux Marks on its web site leads the public to believe BuyRite is an authorized Electrolux dealer when it is, in fact, not, causing confusion as to the origin or sponsorship of BuyRite’s products. See Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinem a, Ltd., 60 4 F.2d 20 0 , 20 4 (2d Cir. 1979). Default judgm ent is therefore warranted on Electrolux’s Lanham Act claim . 4 II. Re lie f So u gh t Electrolux seeks three rem edies: injunctive relief, statutory dam ages, and costs. It is entitled to injunctive relief only. A. In ju n ctive Re lie f Both the Copyright and Lanham Acts allow courts to grant injunctive relief as a rem edy for their violations. See 15 U.S.C. § 1116; 17 U.S.C. § 50 2(a). In this Circuit, once a plaintiff has established liability in a copyright or tradem ark case, courts consider four factors in determ ining whether injunctive relief should issue: (1) the likelihood that the plaintiff will suffer irreparable harm in the absence of an injunction, (2) whether rem edies at law (such as m onetary dam ages) are adequate to com pensate the plaintiff for that harm , (3) whether the balance of hardships tips in the plaintiff’s favor, and (4) whether the public interest would be served by the issuance of an injunction. See Salinger v. Colting, 60 7 F.3d 68, 80 (2d Cir. 20 10 ) (citing eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 390 (20 0 6)).1 The first factor, irreparable harm , is autom atically satisfied by Electrolux prevailing on its tradem ark claim , since the likelihood of confusion is itself irreparable harm . See Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997). The second factor, lack of an adequate rem edy at law, is satisfied because a willingness to continue infringing a plaintiff’s tradem ark or copyright, even in the face of substantial dam ages, m ay be inferred from a defendant’s default. See Sexy Hair Concepts, LLC v. Sexy Hair Inc., No 12-CV-3937, 20 13 WL 5460 629, at *4 (E.D.N.Y. Sept. 30 , 20 13). The 1 Salinger applied the test articulated in eBay (a patent case) to a copyright case, and indicated that there was “no reason that eBay would not apply with equal force to an injunction in any type of case.” See 60 7 F.3d at 78 n.7 (em phasis in original). Given that pronouncem ent, courts have extended the eBay test to tradem ark actions as well. See, e.g., CJ Products LLC v. Snuggly Plushez LLC, 80 9 F. Supp. 2d 127, 142 (E.D.N.Y. 20 11); U.S. Polo Ass’n, 80 0 F. Supp. 2d at 539. 5 third factor, the balance of hardships, favors Electrolux because BuyRite, in failing to appear, “has not identified any hardships for the Court to consider.” See Hounddog Prods., LLC v. Em pire Film Grp., Inc., 826 F. Supp. 2d 619, 633 (S.D.N.Y. 20 11). As to the final factor, the public’s interest is served by an injunction because “the public has an interest in not being deceived” by BuyRite’s m isuse of Electrolux’s copyright and tradem arks. See NYC Triathalon, LLC v. NYC Triathalon Club, LLC, 70 4 F. Supp. 2d 30 5, 328 (S.D.N.Y. 20 10 ). The Court will therefore perm anently enjoin BuyRite from using any of Electrolux’s tradem arks or copyrights. B. Statu to ry D am age s In lieu of actual dam ages, Electrolux seeks statutory dam ages for BuyRite’s violation of the Copyright Act. 17 U.S.C. § 50 4(a) allows for such dam ages “[e]xcept as otherwise provided by this title.” 17 U.S.C. § 412 states that, except in certain lim ited situations not applicable here, . . . no award of statutory dam ages, or of attorney’s fees, as provided by sections 50 4 and 50 5, shall be m ade for-(1) any infringem ent of copyright in an unpublished work com m enced before the effective date of its registration; or (2) any infringem ent of copyright com m enced after first publication of the work and before the effective date of its registration, unless such registration is m ade within three m onths after the first publication of the work. Although Electrolux provides the registration dates for its tradem arks, it is silent on the date its copyrighted m aterials were first published or registered, leaving the Court with no m eans of determ ining whether Electrolux is entitled to the statutory dam ages that it seeks on the face of its filings. Com pare Com pl. ¶ 27 with id. ¶¶ 19-22. The Court, however, m ay take judicial notice of registrations in the USCO’s public 6 catalog, and does so now. See Island Software & Com puter Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 20 0 5) (citing Fed. R. Evid. 20 1(b)(2)). USCO registration num ber TX 7-812-523, the sole copyright that Electrolux alleges BuyRite infringed, is annexed hereto as Appendix “1.” It describes an Electroluxowned web site—one that was published on Decem ber 12, 20 13 and registered on March 19, 20 14 (less than a m onth before this litigation com m enced). Although Electrolux claim s that BuyRite has been im properly using copyrighted im ages since at least J une 10 , 20 13 (see Fialkow Decl., Ex. B at 2), the specific copyrighted m aterial it alleges BuyRite m isappropriated was first published by Electrolux on Decem ber 12, 20 13, and Electrolux therefore cannot recover statutory dam ages for any infringem ent com m enced prior to that date. See 17 U.S.C. § 412(1). Additionally, since Electrolux registered its site m ore than three m onths after it was first published, it cannot recover statutory dam ages for any infringem ent com m enced after the publication date and before the date of registration. See id. § 412(2). None of the pages of BuyRite’s web site that Electrolux subm itted in support of this m otion are dated later than J anuary 10 , 20 14 (see Fialkow Decl., Ex. D), so even if the Court were to accept that as the date the infringement com m enced, Electrolux could not obtain the m onetary relief it seeks. In other words, “[p]laintiff failed to register [its] copyrights . . . before the infringem ents occurred and therefore is not entitled to statutory dam ages. . . .” Fitzgerald Pub. Co. v. Baylor Pub. Co., 670 F. Supp. 1133, 1128 (E.D.N.Y. 1987). Its request for such relief is therefore denied. C. Co s ts an d Fe e s Electrolux, in its m em orandum of law and proposed injunction, seeks “costs” and “fees” without describing the legal basis for such awards or providing the Court with any 7 records on which to base them . See Dkt. No. 13 at 1, 4; Dkt. No. 12-1 at 1. In any event, as noted above, Electrolux is precluded from seeking attorney’s fees under the Copyright Act. An award for other costs under that Act is a m atter of the Court’s discretion. See 17 U.S.C. § 50 5. Under the Lanham Act, awards for costs are also discretionary, and fees are awarded only in “exceptional cases.” See 15 U.S.C. § 1117. Electrolux’s decision to unsuccessfully seek statutory dam ages while failing to provide the prerequisite dates of registration and first publication of its copyrighted m aterial m oves the Court to exercise its discretion to deny the requested award for costs, and, on the whole, there is nothing to warrant the characterization of this case as “exceptional.” Accordingly, plaintiff’s requests for costs and fees are denied. CON CLU SION For the foregoing reasons, Electrolux’s m otion for default judgm ent is GRANTED in part and DENIED in part. The Court will issue a perm anent injunction against BuyRite, but Electrolux is not entitled to m onetary relief, costs, or attorney’s fees. The Clerk of Court is directed to m ail a copy of this Mem orandum and Order and the accom panying perm anent injunction to BuyRite’s last known address, and to close this case. SO ORDERED. Dated: Brooklyn, New York October 14, 20 14 / s/ I. Leo Glasser Senior United States District J udge 8 Mem orandum and Order, Electrolux Hom e Prods., Inc. v. BuyRite Appliances, LLC, No. 14-CV-2461, Dkt. No. 15 (E.D.N.Y. Oct. 14, 20 14) APPENDIX 1 U.S. Copyright Office, Copyright No. TX 7-812-523 (registered Mar. 19, 20 14) (last accessed Oct. 14, 20 14) 10/14/2014 Type of Work: cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi Computer File Registration Number / Date: TX000 / 0 -0 - Application Title: Frigidaire Home Page. Title: Frigidaire Home Page. Description: Compact disk CD + Print material. Copyright Claimant: Electrolux Home Products, Inc. Date of Creation: 0 Date of Publication: 0 - - Nation of First Publication: United States Authorship on Application: Electrolux Home Products, Inc., Employer for Hire; Domicile: United States; Citizenship: United States. Authorship: Text, Images, Computer Code, and Compilation. Alternative Title on Application: Frigidaire.com Pre-existing Material: Third-party text, images, and data. Names: Electrolux Home Products, Inc. ================================================================================ http://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi 1/1
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