UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

METROPOLIS SPECIAL POLICE DEPARTMENT,

Plaintiff, Civil Action No. 21-cv-2171 (BAH)

v. Chief Judge Beryl A. Howell

D.A.T.A. MANAGEMENT CONSULTING, LLC, et al.,

Defendants.

MEMORANDUM OPINION

Plaintiff Metropolis Special Police Department (“MSPD”) seeks a default judgment,

pursuant to Federal Rule of Civil Procedure 55(b), and monetary and injunctive relief in the

instant action, alleging that defendants D.A.T.A. Management Consulting, LLC (“DMC”) and

Gold Shield Security Consultants, Inc. (“Gold Shield”), engaged in violations of the Copyright

Act of 1976 (the “Copyright Act”),

et seq., section 43(a) of the Trademark Act

of 1946 (“Lanham Act”), as amended,

(a), and unfair competition in violation

of D.C. common law, by using plaintiff’s 2-D artwork logo (the “Artwork Logo”) on defendants’

website and uniforms of defendants’ private security officers. Compl. ¶¶ 1–5, 21, ECF No. 1;

Pl.’s Mot. Default J. (“Pl.’s Mot.”) at 1, ECF No. 11. No attorney has entered an appearance on

defendants’ behalf, filed any response to the Complaint, nor moved to set aside the entry of

default against each defendant. See Clerk’s Entry Default, ECF No. 9; Clerk’s Entry Default,

ECF No. 10.

For the reasons set forth below, default judgment is granted as to all three counts of the

Complaint and plaintiff’s request for a permanent injunction is granted. In addition, plaintiff’s

requests for statutory damages and for attorney’s fees will be granted, but in amounts that are 1 supported by appropriate documentation or other evidence, which has not, to date, been

submitted.

I. BACKGROUND

The relevant factual background, as set out in the Complaint, and procedural history is

summarized below.

A. Factual Background

Plaintiff, a limited liability company with its principal place of business in Washington,

D.C., “provides police, security, and protective services to its customers in the Washington

metropolitan area.” Compl. ¶¶ 8, 15. In May 2017, plaintiff created and published the Artwork

Logo and began using and promoting it extensively in connection with its police, security, and

protective services.

, 16–18. In tandem, plaintiff “has expended significant time and

resources, and developed considerable and valuable goodwill with respect to the Artwork Logo.”

. DMC is a limited liability company with its principal place of business in Maryland.

. Gold Shield is a company with its principal place of business in Washington, D.C.

. Defendants also provide security services in the Washington metropolitan area, and “directly

target[] consumers in the District of Columbia by operating a branch that offers security services

to residents of the District of Columbia.”

. Since 2018, defendants have used,

without plaintiff’s approval, a nearly identical version of the Artwork Logo online and on their

officers’ uniforms.

¶¶ 21–24.

In January 2019, plaintiff registered the Artwork Logo with the U.S. Copyright Office.

; Compl. Ex. A, ECF No.1-1. Shortly after receiving a registration certificate for the

Artwork Logo, plaintiff sent a cease-and-desist letter to defendants, informing them that they

were using a substantially similar logo and demanding that they cease using the Artwork Logo

online. Compl. ¶¶ 27–28; Compl. Ex. B, ECF No. 1-2. Defendants notified plaintiff that they 2 would comply with the demands and subsequently changed their logo online. Compl. ¶ 29.

Defendants, however, resumed using a substantially similar version of the Artwork Logo

sometime around October 2020, including by placing the logo on their employees’ uniforms.

. Plaintiff again sent another cease-and-desist letter to defendants to no avail.

¶¶ 31–33;

Compl. Ex. C, ECF No. 1-3. Defendants continued to use the Artwork Logo, including by

having their security officers “wear[] a security patch almost identical to the one used by

[plaintiff],” even as recently as March 2021. Compl. ¶ 33; Compl. Ex. D, EFC No. 1-4.

B. Procedural Background

On August 13, 2021, plaintiff initiated this litigation, alleging copyright infringement

under the Copyright Act,

et seq., Compl. ¶¶ 34–44 (Count One); trademark

infringement through false designation of origin and false representation under the Lanham Act,

15 U.SC. § 1125(a), id. ¶¶ 45–49 (Count 2); and unfair competition, id. ¶¶ 50–52 (Count Three).

Plaintiff seeks a permanent injunction of defendants’ infringements and unfair competition, a

declaratory judgment that defendants have infringed its trademark and copyrighted Artwork

Logo and engaged in unfair competition, damages, and attorney’s fees. Id. at 9–11; Pl.’s Mem.

Supp. Mot. Default J. (“Pl.’s Mem.”) at 11–13, ECF No. 11-1.

Defendants were served on August 28, 2021, Return Service/Aff., ECF No. 6, and

September 10, 2021, Return Service/Aff., ECF No. 5. Neither defendant timely answered. See

Fed. R. Civ. P. 12(a)(1)(A)(i) (“A defendant must serve an answer . . . within 21 days after being

served with the summons and complaint[.]”). Plaintiff then moved for an entry of default for

both defendants, Aff. Default, ECF No. 7; Aff. Default, ECF No. 8, which the Clerk of the Court

entered against both defendants on October 6, 2021, Clerk’s Entry Default, ECF No. 9; Clerk’s

Entry Default, ECF No. 10. Plaintiff thereafter filed the pending motion for default judgment.

3 Defendants have filed no response to this motion nor made any other filing in connection with

this case.

II. LEGAL STANDARD

The Federal Rules of Civil Procedure “provide for default judgments . . . [to] safeguard

plaintiffs ‘when the adversary process has been halted because of an essentially unresponsive

party,’” and to protect “‘the diligent party . . . lest he be faced with interminable delay and

continued uncertainty as to his rights.’” Mwani v. bin Laden,

(D.C. Cir. 2005)

(quoting Jackson v. Beech,

(D.C. Cir. 1980)). Pursuant to Federal Rule of

Civil Procedure 55(a), “[w]hen a party against whom a judgment for affirmative relief is sought

has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the

clerk must enter the party’s default.” Fed. R. Civ. P. 55(a); see 10A Charles Alan Wright, et al.,

Federal Practice and Procedure § 2682 (4th ed. 2021) (“When the prerequisites of Rule 55(a) are

satisfied, an entry of default may be made by the clerk without any action being taken by the

court . . . [as long as] the clerk [has] examine[d] the affidavits filed and [found] that they meet

the requirements of Rule 55(a).”).

Upon entry of default, “[a]n allegation—other than one relating to the amount of

damages—is admitted.” Fed. R. Civ. P. 8(b)(6); see also Cross v. Equityexperts.org, LLC, No.

19-14067,

, at *2 n.1 (11th Cir. Nov. 12, 2021) (“[A] defaulted

defendant is deemed to admit the plaintiff’s well-pleaded allegations of fact, he is not held to

admit facts that are not well-pleaded or to admit conclusions of law.” (internal quotations

omitted) (quoting Cotton v. Mass. Mut. Life Ins. Co.,

(11th Cir. 2005)));

Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc.,

(7th

Cir. 2020) (“When a court enters a default judgment as to liability, it must accept as true all

4 factual allegations in the complaint, except those regarding the amount of damages.”); Polidoro

v. Saluti,

(3d Cir. 2017) (“In considering a motion for a default judgment

under Rule 55(b)(2), a district court should accept as true the well-pleaded factual allegations of

the complaint, but the court need not accept the moving party’s legal conclusions

or allegations relating to the amount of damages. Rather, the plaintiff must prove that he is

entitled to the damages sought.” (internal citations omitted)).

Default judgment may be entered upon application for such relief, see Fed. R. Civ. P.

55(b)(2), but “is not automatic,” Mwani,

. The procedural posture of a default does

not relieve a federal court of its obligation to “satisfy itself that it has personal jurisdiction before

entering judgment against an absent defendant.”

A plaintiff seeking a default judgment bears

the burden of making a prima facie showing that personal jurisdiction may be exercised over the

absent defendant.

at 6–7. If personal jurisdiction over the absent defendant is present,

whether to grant a motion for default judgment against that defendant is in the court’s discretion.

See Jackson,

.

III. DISCUSSION

The propriety of a default judgment and award of remedies against defendants is

considered, following determination of whether personal jurisdiction may be exercised over

DMC, which, as alleged in the Complaint, is not incorporated in the District of Columbia nor has

its principal place of business here. 1

1 Plaintiff correctly contends that subject-matter jurisdiction over this action is established, pursuant to

(a)–(b), because plaintiff’s copyright- and trademark-infringement claims arise under acts of Congress relating to copyrights and trademarks and plaintiff’s unfair competition claim is joined with substantial and related claims under copyright and trademark laws. Pl.’s Mem. at 3–4. Furthermore, personal jurisdiction may be exercised as to Gold Shield, which is an organization incorporated under the laws of the District of Columbia with its principal place of business in the District. See Compl. ¶ 10; D.C. Code § 13–422; Richard v. Bell Atl. Corp.,

(D.D.C. 1996) (“[T]he Court may have general personal jurisdiction because [the defendant] is . . . organized under the laws of, or maintain[s] its principal place of business in the District[.]”).

5 A. Personal Jurisdiction

For all three claims, this Court may exercise personal jurisdiction over a non-resident

defendant only if a plaintiff shows that the D.C. long-arm statute is satisfied. See AF Holdings,

Inc. v. Does 1-1058,

(D.C. Cir. 2014) (applying D.C. long-arm statute in

copyright-infringement case); Safex Found., Inc. v. Safeth, Ltd., No. 21-CV-161 (BAH),

, *13–14 (D.D.C. May 12, 2021) (applying D.C. long-arm statute in

trademark-infringement case); see also U.S. v. Ferrara,

, 828 (D.C. Cir. 1995) (“A

personal jurisdiction analysis requires that a court determine whether jurisdiction over a party is

proper under the applicable local long-arm statute and whether it accords with the demands of

due process.”). Plaintiff’s copyright- and trademark-infringement claims and unfair competition

claim are premised on the allegation that defendants copied and used plaintiff’s trademark, the

Artwork Logo, online and in connection with their provision of security services in the

Washington metropolitan area, including in Washington, D.C., where plaintiff has its principal

place of business. Compl. ¶¶ 3–5, 8–10, 13, 21. Subsection (a)(1) of the District of Columbia’s

long-arm statute confers personal jurisdiction over any person “as to a claim for relief arising

from the person’s . . . transacting any business in the District of Columbia.”

-

423(a)(1); see also Forras v. Rauf,

(D.C. Cir. 2016) (noting that § 13-

423(a)(1) “has been held ‘to be coextensive (for cases that fit within its description) with the

Constitution’s due process limit’” (quoting Crane v. Carr,

(D.C. Cir. 1987))).

Thus, two requirements must be satisfied for a claim against a defendant to fall within subsection

(a)(1) of the District of Columbia’s long-arm statute: (1) the defendant must have conducted

business in the District of Columbia, and (2) plaintiff’s claim against the defendant must arise

from that business. See Forras,

.

6 Plaintiff’s claims satisfy both requirements. First, DMC’s operation of a branch offering

security services to residents of the District and provision of security services to D.C. residents

meets the low threshold for “transacting any business.”

(a)(1) (emphasis

added); see Holder v. Haarmann & Reimer Corp.,

, 270–71 (D.C. 2001) (“[T]o

satisfy the due process requirements associated with . . . section 13–423(a)(1), the plaintiff must

show that the defendant has purposefully engaged in some type of commercial or business-

related activity directed at District residents.”); Burger King Corp. v. Rudzewicz,

(1985) (“[A] forum legitimately may exercise personal jurisdiction over a nonresident who

‘purposefully directs’ his activities toward forum residents.”). Second, plaintiff’s claims against

DMC clearly arise from that business as plaintiff alleges that DMC’s infringing use of plaintiff’s

Artwork Logo occurred during its targeting of and provision of security services to D.C.

residents, in direct competition with plaintiff’s own private security services. Compl. ¶¶ 3, 5, 13,

21, 25–26. Accordingly, plaintiff’s copyright- and trademark-infringement claims and unfair

competition claim against DMC satisfy subsection (a)(1) of D.C.’s long-arm statute. Thus, the

Court may exercise personal jurisdiction over DMC. 2

B. Default Judgment

Upon determining that both subject matter and personal jurisdiction requirements are

satisfied as to a defaulting defendant, the entry of default judgment is appropriate when the

defendant fails “to respond to the summons and complaint, the entry of default, or the motion for

default judgment.” Hanley-Wood LLC v. Hanley Wood LLC,

(D.D.C.

2 Plaintiff also contends that personal jurisdiction may be exercised over DMC under

- 423(a)(3) because plaintiff’s claims arise from DMC “causing tortious injury in the District of Columbia by an act or omission in the District of Columbia.”

(a)(3); see Compl. ¶ 13; Pl.’s Mem. at 4–5. Since personal jurisdiction over DMC has already been determined to be proper under § 13-423(a)(1), this other basis for the exercise of personal jurisdiction need not be addressed.

7 2011) (citing Gutierrez v. Berg Contracting Inc., No. 99–3044,

, at *1 (D.D.C.

Mar. 20, 2000)). Given defendants’ failure to respond to the summons and complaint and “the

absence of any request to set aside the default or suggestion by the defendant[s] that [they]

ha[ve] a meritorious defense,” the Court concludes that entry of default judgment is appropriate

in this case. Gutierrez,

, at *1. As discussed more fully below, plaintiff has

presented satisfactory evidence to establish defendants’ liability under the claims asserted and

entitlement to the relief requested.

1. Count I: Copyright Infringement

Plaintiff has provided sufficient evidence to show defendants are liable for copyright

infringement. To prevail on a copyright-infringement claim, a plaintiff “must prove both

ownership of a valid copyright and that the defendant copied original or ‘protectible’ aspects of

the copyrighted work.” Sturdza v. United Arab Emirates,

(D.C. Cir. 2002)

(citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,

(1991)). Plaintiff’s

certificate of registration from the U.S. Copyright Office for the Artwork Logo “constitute[s]

prima facie evidence of the validity of the copyright,” satisfying the first element of its claim.

(c); see Compl. Ex. A.

The factual allegations set out in the Complaint are assumed to be true and easily satisfy

the second element. Plaintiff has shown that defendants copied the Artwork Logo almost

exactly, down to its shape, colors, and designs. Compl. ¶¶ 22–24. The only difference is that

defendants substituted Gold Shield’s name on the logo in lieu of plaintiff’s name. Compl. ¶¶ 23–

24. This nearly verbatim copying establishes infringement of plaintiff’s copyright. See Bucklew

v. Hawkins, Ash, Baptie & Co.,

(7th Cir. 2003) (“[W]hen the similarities

concern details of such an arbitrary character that the probability that the infringer had duplicated

8 them independently is remote, an inference of copying may be drawn without any additional

evidence.”);

(collecting cases); Batiste v. Lewis,

, 502 (5th Cir. 2020) (“[A]

plaintiff may raise an inference of factual copying without any proof of access if the works are

‘strikingly similar.’” (quoting Ferguson v. Nat’l Broad. Co.,

(5th Cir. 1978)));

Parker v. Winwood,

(6th Cir. 2019) (same); Corwin v. Walt Disney Co.,

(11th Cir. 2007) (same); Moore v. Columbia Pictures Indus., Inc.,

,

941 n.1 (8th Cir. 1992) (same). Accordingly, plaintiff’s motion for default judgment as to its

copyright-infringement claim is granted.

2. Counts II–III: False Designation of Origin & Unfair Competition

To succeed on its trademark and unfair competition claims, plaintiff must show that (1) it

owns a valid trademark; (2) its trademark is distinctive or has acquired a secondary meaning; and

(3) there is a substantial likelihood of confusion between the plaintiff’s mark and the alleged

infringer’s mark. See Am. Soc’y for Testing & Materials v. Public.Resource.Org., Inc.,

, 455–56 (D.C. Cir. 2018); Globalaw Ltd. v. Carmon & Carmon L. Off.,

(D.D.C. 2006) (collecting cases holding that the elements for trademark infringement, false

designation of origin, and unfair competition are essentially the same).

Plaintiff’s allegations sufficiently establish all three elements. Plaintiff began using the

Artwork Logo to promote, identify, and distinguish its security services as early as May 2017,

almost a year before defendants began using the logo. Compl. ¶¶ 3, 18–19, 21; see Safex Found.,

Inc. v. Safeth, Ltd.,

, 298 (D.D.C. 2021) (“[T]o show ownership of

trademark, plaintiff[] must show that [it] w[as] the first to use the mark in commerce.”);

(defining “use in commerce”). The overall appearance of the Artwork Logo, with

its bright coloring, intricate images, and interplay of shapes, creates a distinctive visual

9 impression, and the dominant features of the logo, such as the dome of the Capitol Building and

the leaves surrounding the dome, are either arbitrary, having “no intrinsic connection” to

plaintiff’s services, or merely suggestive of the security services plaintiff offers. Blinded

Veterans Ass’n v. Blinded Am. Veterans Found.,

(D.C. Cir. 1989) (holding

marks composed of “suggestive” or “arbitrary” terms “are inherently distinctive”); see also All.

for Good Gov’t v. Coal. for Better Gov’t,

, 509–10 (5th Cir. 2018) (noting that

courts should “give more weight to the distinctive portions of a mark and less weight to

unremarkable or generic portions” (quoting Xtreme Lashes v. Xtended Beauty,

(5th Cir. 2009))). Finally, plaintiff has sufficiently alleged a substantial likelihood of confusion

given that the defendants are using a nearly identical mark to sell substantially similar services.

See Safex, 531 F. Supp. 3d at 299–300. Thus, plaintiff’s motion for default judgment as to its

trademark and unfair competition claims is granted.

C. Remedies

Plaintiff seeks injunctive relief as well as statutory damages and attorney’s fees. Pl.’s

Mem. at 11–13. “A defaulting defendant concedes all well-pleaded factual allegations as to

liability,” but a court may require additional evidence regarding the appropriate remedies. Al-

Quraan v. 4115 8th St. NW, LLC,

(D.D.C. 2015); see also SEC v. Mgmt.

Dynamics, Inc.,

, 814 (2d Cir. 1975) (requiring district court to “make an

independent determination” before granting an injunction, “which is appropriately entered only

after the exercise of a court’s discretion, and upon a finding of the likelihood that the defendant

would commit future violations if not enjoined”); Carazani v. Zegarra,

(D.D.C. 2013) (“Although default judgment establishes the defaulting party’s liability for every

well-pleaded allegation in the complaint, it does not automatically establish liability in the

amount claimed by the plaintiff.”). “[U]nless the amount of damages is certain, the court is 10 required to make an independent determination of the sum to be awarded.” Adkins v. Teseo,

(D.D.C. 2001) (entering default judgment for an arbitration award under

Federal Rule of Civil Procedure 55(b)(1)). “[T]he court may rely on detailed affidavits or

documentary evidence to determine the appropriate sum for the default judgment.” Int’l Painters

& Allied Trades Indus. Pension Fund v. R.W. Amrine Drywall Co.,

(D.D.C. 2002); see also United Artists Corp. v. Freeman,

(5th Cir. 1979)

(holding a default judgment awarding statutory damages for copyright infringements requires “a

hearing or a demonstration by detailed affidavits establishing the necessary facts” because such

damages are “not liquidated or capable of mathematical calculation”). As explained below,

plaintiff has sufficiently demonstrated entitlement to the relief requested, but the Court requires

plaintiff to submit additional information before a default judgment for statutory damages and

attorney’s fees may be entered.

1. Permanent Injunction

Both the Copyright Act and the Lanham Act authorize the Court to grant injunctive relief

to prevent infringement of a copyright or trademark.

(a) (authorizing a court in a

copyright-infringement suit to “grant temporary and final injunctions on such terms as it may

deem reasonable to prevent or restrain infringement of a copyright”);

(authorizing a court in a trademark-infringement suit “to grant injunctions, according to the

principles of equity and upon such terms as the court may deem reasonable”). Courts in the D.C.

Circuit have long held that when a plaintiff has established liability as well as a threat of

continuing infringement, the plaintiff “is entitled to an injunction.” Walt Disney Co. v. Powell,

, 567–68 (D.C. Cir. 1990) (emphasis in original) (applying this principle to

11 copyright infringement); Hanley-Wood,

(applying this principle to

trademark infringement).

Plaintiff has shown such entitlement. Defendants have continued to infringe on

plaintiff’s trademark and copyright despite two demands to cease and desist. Compl. ¶¶ 27–33.

Defendants’ continuous willful disregard for plaintiff’s copyright and trademark demonstrates

that they likely will continue to infringe on plaintiff’s rights absent an injunction. See Hanley-

Wood,

; Harrison Music Corp. v. Tesfaye,

(D.D.C.

2003). Thus, because defendants’ actions constitute a willful disregard for plaintiff’s rights and

because the requested relief directly addresses the harm caused, the Court finds that plaintiff’s

request for injunctive relief is reasonable, and plaintiff’s requested permanent injunction

enjoining defendants from further trademark- and copyright-infringement activities will be

entered. See Pl.’s Proposed Order at 1–2, ECF No. 11-2.

2. Statutory Damages

Plaintiff also requests the maximum amount of statutory damages, i.e., $30,000, for the

copyright-infringement claim pursuant to

(c)(1). Pl.’s Mem. at 12–13. Under §

504(c)(1) “the copyright owner may elect, at any time before final judgment is rendered, to

recover, instead of actual damages and profits, an award of statutory damages for all

infringements involved in the action, with respect to any one work, for which any one infringer is

liable individually, or for which any two or more infringers are liable jointly and severally, in a

sum of not less than $750 or more than $30,000 as the court considers just.”

(c)(1). The Copyright Act’s statutory damages can be imposed for more than just the

purposes of compensation or restitution; they can also be imposed as means of deterrence. See

Harrison, 293 F. Supp. 2d at 83–84. “In deciding what amount of statutory damages to award, a

12 court should consider the expenses saved and profits reaped by defendant in connection with the

infringements, revenues lost by plaintiffs as a result of defendant’s conduct, and whether the

infringer[’]s state of mind was willful, knowing, or innocent.”

. A defendant willfully

infringes when “he has actual knowledge of his infringement or if he recklessly disregards the

possibility of infringing a copyright.”

. Plaintiff requests the maximum amount of

statutory damages but has not provided the Court with any evidence concerning the

aforementioned factors or argument to substantiate why $30,000 would be a “just” damages

award. Accordingly, plaintiff is directed to submit affidavits and other relevant documentation

supporting its request for damages by no later than thirty days from the date of this opinion and

its contemporaneously issued order.

3. Attorney’s Fees

Plaintiff also seeks to recover $20,000 in attorney’s fees for its copyright and trademark

claims. Pl.’s Mem. at 13; Pl.’s Proposed Order at 3. Under the Copyright Act, the Court has the

discretion to award full costs and reasonable attorney’s fees to the prevailing party.

. Plaintiff qualifies as “the prevailing party” here. See Serrano v. Chicken-Out, Inc.,

(D.D.C. 2016). The Supreme Court has issued “no precise rule or formula” to

guide courts in exercising their discretion to award attorney’s fees under § 505, Fogerty v.

Fantasy Inc.,

(1994) (quoting Hensley v. Eckerhart,

(1983),

but has identified “‘several nonexclusive factors’ to inform a court’s fee-shifting decisions:

‘frivolousness, motivation, objective unreasonableness[,] and the need in particular

circumstances to advance considerations of compensation and deterrence,’” Kirtsaeng v. John

Wiley & Sons, Inc.,

(2016) (alteration in original) (quoting Fogerty,

). “Although objective reasonableness carries significant weight, courts must view

13 all the circumstances of a case on their own terms, in light of the Copyright Act’s essential

goals.” Id. at 209.

Here, several factors weigh in favor of awarding plaintiff reasonable attorney’s fees for

its copyright-infringement claim. Plaintiff’s claim is objectively reasonable. Defendants

repeatedly used the Artwork Logo without permission even after plaintiff sent two cease-and-

desist letters, which included a copy of plaintiff’s valid copyright registration for the Artwork

Logo. Defendants’ knowing and repeated copyright infringement, coupled with its failure to

answer in this case, warrant an award of fees to compensate plaintiff for bringing and

maintaining a suit to protect its substantive rights and creative work and to deter future

infringement. See id. at 205, 209.

The Lanham Act also provides courts discretion to “award reasonable attorney fees to the

prevailing party” in trademark-infringement cases but only in “exceptional cases.”

(a). When the plaintiff is the prevailing party, the D.C. Circuit has construed the

“exceptional cases” standard to require a court to “find willful or bad faith infringement by the

defendant in order to award attorney’s fees to the plaintiff.” Reader’s Dig. Ass’n, Inc. v.

Conservative Dig., Inc.,

(D.C. Cir. 1987), overruled on other grounds by

Fogerty v. Fantasy, Inc.,

(1994).

Recent Supreme Court and D.C. Circuit cases, however, call into question whether this

interpretation of the “exceptional cases” standard remains viable. In Octane Fitness, LLC v.

ICON Health and Fitness, Inc., the Supreme Court, in interpreting the attorney’s fees provision

in the Patent Act, which is identical to § 1117(a), held “that an ‘exceptional’ case is simply one

that stands out from others with respect to the substantive strength of a party’s litigating position

(considering both the governing law and the facts of the case) or the unreasonable manner in

14 which the case was litigated.”

(2014). Notably, the Court did not require

different findings for different prevailing parties or a finding of willfulness or bad faith, but

instead instructed district courts to “determine whether a case is ‘exceptional’ in the case-by-case

exercise of their discretion, considering the totality of circumstances” and the considerations

previously identified in Fogerty.

(citing Fogerty,

). As noted, because

the language in § 1117(a) is identical to the language interpreted by the Supreme Court in Octane

Fitness, every federal appellate court to consider the question has since held that the Octane

Fitness standard applies to requests for attorney’s fees under the Lanham Act. See Yah Kai

World Wide Enterprises, Inc. v. Napper,

(D.D.C. 2018) (collecting

cases).

The D.C. Circuit also appears to have concluded that the Octane Fitness standard is

applicable to district courts considering requests for attorney’s fees under

(a). In

Xereas v. Heiss, the D.C. Circuit highlighted the Supreme Court’s interpretation of an identical

provision to § 1117(a) under the Patent Act in Octane Fitness and held that, like the Patent Act’s

provision, the Lanham Act’s fee-shifting provision in § 1117(a) places the determination of

whether a case is exceptional under the discretion of the district court.

, 1136–37

(D.C. Cir. 2021). Consistent with Octane Fitness, the D.C. Circuit explained that, under §

1117(a) “district courts ‘may determine whether a case is “exceptional” in the case-by-case

exercise of their discretion, considering the totality of the circumstances.’” Id. at 1137. Without

expressly abrogating the D.C. Circuit’s prior caselaw requiring a finding of willfulness or bad

faith to award attorney’s fees to a prevailing plaintiff under §1117(a), the Court’s decision in

Xereas strongly suggests this finding may simply no longer be required.

15 Regardless of whether Octane Fitness and Xereas spell the end to the D.C. Circuit’s

willfulness/bad faith requirement, plaintiff is entitled to attorney’s fees. Willfulness or bad faith

in a trademark-infringement case “means passing off a product or service as another seller’s

better-established one, or some other deliberate theft of a mark holder’s good will—in sum,

conduct aimed at a victim targeted by the defendant.” ALPO Petfoods, Inc. v. Ralston Purina

Co.,

(D.C. Cir. 1990). Defendants’ willfulness is apparent: despite being

warned twice, defendants repeatedly used plaintiff’s Artwork Logo on their website and in the

course of providing similar services as plaintiff, copying every last detail of plaintiff’s logo

except for the company name. Additionally, the repeated and deliberate use of the Artwork

Logo, including after two cease-and-desist letters, sets the substantive strength of plaintiff’s

litigating position far apart from run-of-the-mill trademark-infringements cases. In short,

whether the Octane Fitness standard or the willfulness standard governs, plaintiff has sufficiently

established the appropriateness of an award for attorney’s fees for its trademark-infringement

claim.

Having found that plaintiff is entitled to attorney’s fees for both claims, the Court directs

plaintiff to submit additional information to support its request for $20,000 in attorney’s fees.

See Eley v. District of Columbia,

(D.C. Cir. 2015) (“The ‘fee applicant bears

the burden of establishing entitlement to an award, documenting the appropriate hours, and

justifying the reasonableness of the rates.’” (quoting Covington v. District of Columbia,

, 1107–08 (D.C. Cir. 1995))). Plaintiff will have thirty days from the date of this opinion

and its contemporaneously issued order to submit the necessary materials in support of its

request for attorney’s fees.

16 IV. CONCLUSION

For the foregoing reasons, plaintiff’s motion for default judgment is granted.

Accordingly, a permanent injunction will be entered against defendants enjoining them from

infringing on plaintiff’s copyright and trademark. The Court will award plaintiff statutory

damages and attorney’s fees in an amount to be determined after plaintiff submits the requested

additional evidence.

An Order consistent with this Memorandum Opinion will issue contemporaneously.

Date: January 6, 2022

__________________________ BERYL A. HOWELL Chief Judge

17