Chanel, Inc. v. Replicachanelbag
Chanel, Inc. v. Replicachanelbag
Opinion of the Court
THIS CAUSE is before the Court upon Plaintiff Chanel, Inc.'s ("Plaintiff"), Motion for Entry of Final Default Judgment Against Defendants, ECF No. [31] ("Motion"), filed on January 16, 2019. A Clerk's Default, ECF No. [27], was entered against Defendants on January 9, 2019, as Defendants failed to appear, answer, or otherwise plead to the Complaint, ECF No. [1], despite having been served. See ECF No. [15]. The Court has carefully considered the Motion, the record in this case, the applicable law, and is otherwise fully advised. For the following reasons, Plaintiff's Motion is GRANTED .
I. Introduction
Plaintiff sued Defendants for trademark counterfeiting and infringement under § 32 of the Lanham Act,
Plaintiff further asserts that Defendants' unlawful activities have caused and will continue to cause irreparable injury to Plaintiff because Defendants have (1) deprived Plaintiff of its right to determine the manner in which its trademarks are presented to the public through merchandising; (2) defrauded the public into thinking Defendants' goods are goods authorized by Plaintiff; (3) deceived the public as to Plaintiff's association with Defendants' goods and the websites that market and sell the goods; and (4) wrongfully traded and capitalized on Plaintiff's reputation and goodwill, as well as the commercial value of Plaintiff's trademarks.
In its Motion, Plaintiff seeks the entry of default final judgment against Defendants *1259
Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a final judgment of default against a party who has failed to plead in response to a complaint. "[A] defendant's default does not in itself warrant the court entering a default judgment." DirecTV, Inc. v. Huynh,
II. Factual Background
Plaintiff is the registered owner of the following trademarks which are valid and registered on the Principal Register of the United States Patent and Trademark Office (the "Chanel Marks"):
*1260Trademark Registration Registration Date Classes/Goods Number CHANEL 0,626,035 May 1, 1956 IC 018 - Women's Handbags CHANEL 0,902,190 November 10, 1970 IC 014 - Bracelets, Pins, and Earrings IC 025 - Suits, jackets, skirts, &sign; 1,241,264 June 7, 1983 dresses, pants, blouses, tunics, sweaters, cardigans, tee-shirts, coats, raincoats, scarves, shoes and boots IC 025 - Suits, Jackets, Skirts, CHANEL 1,241,265 June 7, 1983 Dresses, Pants, Blouses, Tunics, Sweaters, Cardigans, Coats, Raincoats, Scarves, Shoes and Boots &sign; 1,314,511 January 15, 1985 IC 018 - Leather Goods-Namely, Handbags CHANEL 1,347,677 July 9, 1985 IC 018 - Leather Goods-Namely, Handbags IC 006 - Keychains IC 014 - Costume Jewelry &sign; 1,501,898 August 30, 1988 IC 025 - Blouses, Shoes, Belts, Scarves, Jackets, Men's Ties IC 026 - Brooches and Buttons for Clothing IC 018 - Leather Goods; namely, Handbags, Wallets, Travel Bags, CHANEL 1,733,051 November 17, 1992 Luggage, Business and Credit Card Cases, Change Purses, Tote Bags, Cosmetic Bags Sold Empty, and Garment Bags for Travel IC 018 - Leather Goods; namely, Handbags, Wallets, Travel Bags, &sign; 1,734,822 November 24, 1992 Luggage, Business Card Cases, Change Purses, Tote Bags, and Cosmetic Bags Sold Empty CHANEL 3,890,159 December 14, 2010 IC 009 - Cases for Telephones IC 018 - Key Cases IC 009 - Protective Covers for Portable Electronic Devices, &sign; 4,074,269 December 20, 2011 Handheld Digital Devices, Personal Computers and Cell Phones IC 018 - Key Cases
See Declaration of Jennifer Bleys, ECF No. [5-1], at 4; ECF No. [1-2] (containing Certificates of Registrations for the Chanel Marks at issue). The Chanel Marks are used in connection with the manufacture and distribution of high quality goods in the categories identified above. See Declaration of Jennifer Bleys, ECF No. [5-1], at 4-5.
Defendants, by operating Internet based photo albums accessible via the image hosting website Yupoo.com, or social media website Instagram.com, under the user identities set forth on Schedule "A" hereto (the "Seller IDs"), in tandem with electronic communication via private messaging applications and/or services, have advertised, promoted, offered for sale, and *1261sold goods bearing what Plaintiff has determined to be counterfeits, infringements, reproductions, or colorable imitations of the Chanel Marks. See Declaration of Jennifer Bleys, ECF No. [5-1], at 9-14.
Although each Defendant may not copy and infringe each Chanel Mark for each category of goods protected, Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the Chanel Marks. See Declaration of Jennifer Bleys, ECF No. [5-1], at 11-14. Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Chanel Marks. See Declaration of Jennifer Bleys, ECF No. [5-1], at 9, 13-14.
Counsel for Plaintiff retained AED Investigations, Inc. ("AED"), a licensed private investigative firm, to investigate the promotion and sale of counterfeit and infringing versions of Plaintiff's products by Defendants and to determine Defendants' payment account data for receipt of funds paid for the sale of counterfeit versions of Plaintiff's branded products. See Declaration of Jennifer Bleys, ECF No. [5-1], at 10; Declaration of Stephen M. Gaffigan, ECF No. [5-2], at 2; Declaration of Eric Rosaler, ECF No. [5-4], at 3. Through the Internet websites Yupoo.com or Instagram.com,
At the conclusion of the process, the detailed web pages and images reflecting the various products bearing Plaintiff's trademarks offered for sale and purchased from Defendants were sent to Plaintiff's representative for inspection. See Declaration of Eric Rosaler, ECF No. [5-4], at 5; Declaration of Jennifer Bleys, ECF No. [5-1], at 11, 13; Declaration of Stephen M. Gaffigan, ECF No. [5-2], at 2, n.2.
Plaintiff's representative conducted a review and visually inspected the detailed *1262web pages and images produced by AED and Plaintiff's counsel's firm, reflecting the various products offered for sale and sold bearing the Chanel Marks by Defendants via the Seller IDs, and determined the products were non-genuine, unauthorized versions of Plaintiff's goods. See Declaration of Jennifer Bleys, ECF No. [5-1], at 12-14.
III. Analysis
A. Claims
1. Trademark Counterfeiting and Infringement Under
Section 32 of the Lanham Act,
2. False Designation of Origin Under
To prevail on a claim for false designation of origin under Section 43(a) of the Lanham Act,
3. Common-Law Unfair Competition and Trademark Infringement (Counts III and IV)
Whether a defendant's use of a plaintiff's trademarks created a likelihood of confusion between the plaintiff's and the defendant's products is also the determining factor in the analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester ,
*1263The analysis of liability for Florida common law trademark infringement is the same as the analysis of liability for trademark infringement under § 32(a) of the Lanham Act. See PetMed Express, Inc. v. MedPets.com, Inc. ,
B. Liability
The well-pled factual allegations of Plaintiff's Complaint properly allege the elements for each of the claims described above. See ECF No. [1]. Moreover, the factual allegations in Plaintiff's Complaint have been substantiated by sworn declarations and other evidence and establish Defendants' liability under each of the claims asserted in the Complaint. Accordingly, default judgment pursuant to Federal Rule of Civil Procedure 55 is appropriate.
C. Injunctive Relief
Pursuant to the Lanham Act, a district court is authorized to issue an injunction "according to the principles of equity and upon such terms as the court may deem reasonable," to prevent violations of trademark law. See
Permanent injunctive relief is appropriate where a plaintiff demonstrates that (1) it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship favors an equitable remedy; and (4) an issuance of an injunction is in the public's interest. eBay, Inc. v. MercExchange, LLC ,
Specifically, in trademark cases, "a sufficiently strong showing of likelihood of confusion ... may by itself constitute a showing of a substantial threat of irreparable harm." McDonald's Corp. v. Robertson ,
id="p1264" href="#p1264" data-label="1264" data-citation-index="1" class="page-label">*1264
Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Internet based photo albums under the Seller IDs, in tandem with electronic communication via private messaging applications and/or services, because Plaintiff cannot control the quality of what appears to be its products in the marketplace. An award of monetary damages alone will not cure the injury to Plaintiff's reputation and goodwill that will result if Defendants' infringing and counterfeiting actions are allowed to continue. Moreover, Plaintiff faces hardship from loss of sales and its inability to control its reputation in the marketplace. By contrast, Defendants face no hardship if they are prohibited from the infringement of Plaintiff's trademarks, which is an illegal act.
Finally, the public interest supports the issuance of a permanent injunction against Defendants to prevent consumers from being misled by Defendants' products. See Nike, Inc. v. Leslie ,
Defendants have created an Internet-based counterfeiting scheme in which they are profiting from their deliberate misappropriation of Plaintiff's rights. Accordingly, the Court may fashion injunctive relief to eliminate the means by which Defendants are conducting their unlawful activities by requiring their Seller IDs, photo albums, and messaging service accounts be disabled and/or terminated, and their listings and images of goods bearing one or more of Plaintiff's trademarks be removed to further prevent the use of these instrumentalities of infringement.
D. Statutory Damages for the Use of Counterfeit Marks
In a case involving the use of counterfeit marks in connection with a sale, offering for sale, or distribution of goods,
The Court has wide discretion to determine the amount of statutory damages. See PetMed Express, Inc. ,
This Court may award statutory damages "without holding an evidentiary hearing based upon affidavits and other documentary evidence if the facts are not disputed." Perry Ellis Int'l, Inc. v. URI Corp. , No. 06-22020-CIV,
Here, the allegations in the Complaint, which are taken as true, clearly establish Defendants intentionally copied the Chanel Marks for the purpose of deriving the benefit of Plaintiff's world-famous reputation. As such, the Lanham Act permits the Court to award up to $ 2,000,000.00 per infringing mark on each type of good as statutory damages to ensure that Defendants do not continue their intentional and willful counterfeiting activities.
The evidence in this case demonstrates that each Defendant promoted, distributed, advertised, offered for sale, and/or sold goods bearing marks which were in fact counterfeits of at least one of the Chanel Marks. See ECF No. [1]. Based on the above considerations, Plaintiff suggests the Court award statutory damages of $ 1,000,000.00 against each Defendant. The award should be sufficient to deter Defendants and others from continuing to counterfeit or otherwise infringe Plaintiff's trademarks, compensate Plaintiff, and punish Defendants, all stated goals of *1266
E. Damages for False Designation of Origin
Plaintiff's Complaint also sets forth a cause of action for false designation of origin pursuant to § 43(a) of the Lanham Act (Count II). See
F. Damages for Common Law Unfair Competition and Trademark Infringement
Plaintiff's Complaint further sets forth a cause of action under Florida's common law of unfair competition (Count III) and trademark infringement (Count IV). Judgment on Count III and Count IV are also limited to the amount awarded pursuant to Count I and entry of the requested equitable relief.
IV. CONCLUSION
Based on the foregoing, it is ORDERED AND ADJUDGED that Plaintiff's Motion, ECF No. [31], is GRANTED against those Defendants listed in the attached Schedule "A." Final Default Judgment will be entered by separate order.
DONE AND ORDERED in Miami, Florida, this 16th day of January, 2019.
SCHEDULE "A"
DEFENDANTS BY NUMBER, SELLER ID, PRIVATE MESSAGING ACCOUNT, AND PAYMENT ACCOUNT AND ADDITIONAL EMAIL ADDRESS
*1267Def. Defendant/Seller ID WhatsApp/WeChat PayPal Account/Additional No. ID/Instagram7 Email Address 1 replicachanelbag +8615986634263 [email protected] 2 alexli418 +85298350060 [email protected] aka alexshop 3 aliluxurybag +8613755520670 [email protected] 4 fashionrepmia +584141141444 [email protected] 5 king165681 +8618738180715 [email protected] King 6 luxury_brands2018 +972526304454 [email protected] 7 luxurycguangz4483 DM [email protected] 8 luxuryworldo +923405712338 [email protected] aka Luxury Eve 9 martinlay7470 DM [email protected] aka Martin Lay 10 onlineshopforbrandbags +8618833032774 [email protected] [email protected] [email protected] 11 pps_ps +8613631305562 [email protected] 12 yu_replica_bags DM [email protected] 13 brandgift +85265735354 [email protected] aka brand gift wholesale [email protected] 14 chanellove +8618814117950 [email protected] aka Mary's Store [email protected] 15 cnshfj998 +8615203863868 [email protected] [email protected] [email protected] 16 cpbrands +8618358592262 [email protected] 17 fashionhandbags01 FRH0120 [email protected] aka fashionhandbags [email protected] aka FRH0120 18 fashionworld8023 +8613612849301 [email protected] aka 13612849301 *126819 handbag588 +8617312317182 [email protected] aka brand bag wholesale [email protected] [email protected] 20 ivyonlinestore +8613860129842 [email protected] 22 linsheng668868 +8618321163940 [email protected] aka David 1 23 lmf9125 +8618588649295 [email protected] 24 marineroceanben +8613486694424 [email protected] aka marinerocean 25 mengfeixiangyun +8618537648591 [email protected] [email protected] 26 mybrandfashion +8615071742332 [email protected] 28 nkss520 +8618623992886 [email protected] [email protected] [email protected] 29 qzone4782782174 +8615727571835 [email protected] 31 topfootlocker +8613003852321 [email protected] 32 topsmyluxury +8618302097759 [email protected] aka Top Luxury 33 wholesalebest +8613799685635 [email protected] aka vv99
[Editor's Note: The preceding image contains the reference for footnote
Defendants are the Individuals, Partnerships, and Unincorporated Associations identified on Schedule "A" of Plaintiff's Motion, and Schedule "A" of this Order. See ECF No. [31], at 19-20.
The factual background is taken from Plaintiff's Complaint, ECF No. [1], Plaintiff's Motion for Entry of Final Default Judgment Against Defendants, ECF No. [31], and supporting evidentiary submissions.
Defendants operate Internet based photo albums under their user names through the third-party image hosting website Yupoo.com, or social media website Instagram.com. See Declaration of Eric Rosaler, ECF No. [5-4], at 4, n.1; Declaration of Stephen M. Gaffigan, ECF No. [5-1], at 2, n.1.
Defendant 33 uses multiple Internet based photo albums in tandem - wholesalebest and vv99, in connection with its advertisement and offer for sale of products bearing Plaintiff's trademarks. See Declaration of Eric Rosaler, ECF No. [5-4], at 4, n.3.
Defendants use their Seller IDs in tandem with electronic communication via private messaging applications and/or services such as WhatsApp, WeChat, and Instagram.com, in order to complete their offer and sale of products bearing Plaintiff's trademarks. See Declaration of Eric Rosaler, ECF No. [5-4], at 4, n.2; Declaration of Stephen M. Gaffigan, ECF No. [5-1], at 2, n.1; Declaration of Jennifer Bleys, ECF No. [5-1], at 13, n.1.
Certain Defendants provided additional contact e-mail addresses in connection with their Internet based photo albums. See Declaration of Eric Rosaler, ECF No. [5-4], at 4, n.5; ECF No. [5] (identifying additional contact e-mail addresses on Schedule "A").
Defendants' private messaging accounts via WhatsApp, WeChat ID, and Instagram.com are denoted in this chart as telephone numbers, identifications names, and direct messaging ("DM"), respectively. See Declaration of Eric Rosaler, ECF No. [5-4], at n.6.
Reference
- Full Case Name
- CHANEL, INC. v. REPLICACHANELBAG
- Cited By
- 21 cases
- Status
- Published