UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Case No. 21-cv-20112-BLOOM/Otazo-Reyes

PLATINUM DRAGON INTERNATIONAL, INC.,

Plaintiff,

v.

THE INDIVIDUALS, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE “A,”

Defendants. __________________________________/

ORDER ON MOTION FOR ENTRY OF FINAL DEFAULT JUDGMENT THIS CAUSE is before the Court upon Plaintiff Platinum Dragon International, Inc.’s (“Plaintiff”) Motion for Entry of Final Default Judgment, ECF No. [57] (“Motion”), filed on March 26, 2021. A Clerk’s Default, ECF No. [55], was entered against Defendants on March 19, 2021, as Defendants failed to appear, answer, or otherwise plead to the Complaint, ECF No. [1], despite having been served. See ECF No. [23]. 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 false designation of origin pursuant to § 43(a) of the Lanham Act,

(a); common law unfair competition; and common law trademark infringement. The Complaint alleges that Defendants are advertising, promoting, and distributing counterfeits and confusingly similar imitations of Plaintiff’s trademarks within the Southern District of Florida by operating the Defendants’ Internet based e-commerce stores operating under each of the Seller IDs identified on Schedule “A” attached to Plaintiff’s Motion for Entry of Final Default Judgment (the “Seller IDs”).

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 consumers; (2) deceived the public as to Plaintiff’s sponsorship of and/or association with Defendants’ products and the websites on online storefronts through which such products are sold, offered for sale, marketed, advertised, and distributed; (3) wrongfully traded and capitalized on Plaintiff’s reputation and goodwill and the commercial value of Plaintiff’s trademarks; and (4) wrongfully damaged Plaintiff’s ability to market its branded products and educate consumers about its brand via the Internet in a free and fair marketplace. In its Motion, Plaintiff seeks the entry of default final judgment against Defendants1 in an

action alleging false designation of origin, common law unfair competition, and common law trademark infringement. Plaintiff further requests that the Court (1) enjoin Defendants unlawful use of Plaintiff’s trademarks; (2) award Plaintiff damages; and (3) instruct any third party financial institutions in possession of any funds restrained or held on behalf of Defendants to transfer these funds to Plaintiff in partial satisfaction of the award of damages.

1 Defendants are the Individuals, Partnerships, or Unincorporated Associations identified on Schedule “A” of Plaintiff’s Motion, and Schedule “A” of this Order. Case No. 21-cv-20112-BLOOM/Otazo-Reyes

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,

(M.D. Ala. 2004) (quoting Nishimatsu Constr. Co., Ltd. v. Hous. Nat’l Bank,

(Sth Cir. 1975)). Granting a motion for default judgment is within the trial court’s discretion. See Nishimatsu,

. Because the defendant is not held to admit facts that are not well pleaded or to admit conclusions of law, the court must first determine whether there is a sufficient basis in the pleading for the judgment to be entered. See id.; see also Buchanan v. Bowman,

(11th Cir. 1987) (“[L]iability is well-pled in the complaint, and is therefore established by the entry of default... .”). Upon a review of Plaintiff’s submissions, it appears there is a sufficient basis in the pleading for the default judgment to be entered in its favor. Il. FACTUAL BACKGROUND? Plaintiff owner of all rights, title, and interest in the standard character mark “Iced Earth” as well as the following associated logo (collectively, the “Iced Earth Marks’): ED EARTH The Iced Earth Marks are used in connection with the design, marketing, and distribution of high- quality goods in at least the categories identified above. See Declaration of Jon Schaffer, ECF No. [5-1] at 4. Plaintiff has exclusive rights in and to the Iced Earth Marks.

The factual background is taken from Plaintiff’s Complaint, ECF No. [1], Plaintiff’s Motion, and supporting evidentiary submissions, ECF Nos. [58] — [66].

Defendants, through the various Internet based e-commerce stores operating under each of the Seller IDs identified on Schedule “A” hereto (the “Seller IDs”) have advertised, promoted, offered for distribution, and/or distributed Iced Earth products under what Plaintiff has determined to be counterfeits, infringements, reproductions, and/or colorable imitations of the Iced Earth Marks. See Declaration of Jon Schaffer, ECF No. [5-1] at 12-15; see also Declaration of Richard

Guerra, ECF No. [5-2] at 4. Although each Defendant may not copy and infringe each of Plaintiff’s trademarks for each category of services protected, Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the Iced Earth Marks at issue. See Declaration of Jon Schaffer, ECF No. [5-1] at 15-18, and Schedule “C” to Declaration of Richard Guerra.3 Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the of the Iced Earth Marks. See Declaration of Jon Schaffer, ECF No. [5-1] at 15-18. As part of its ongoing investigation regarding the sale of counterfeit and infringing

products, Plaintiff hired a third party investigatory to access Defendants’ Internet based e- commerce stores operating under each of the Seller IDs. The third party investigator initiated orders from each Seller IDs for the purchase of various products, all bearing, or suspected of bearing, counterfeits of, at least one of the Iced Earth, and requested each product to be shipped to an address in the Southern District of Florida. Accordingly, Defendants’ Goods are being promoted, advertised, offered for sale, and sold by Defendants within this district and throughout the United States. See Declaration of Richard Guerra ECF No. [5-2] at 5. A representative for

3 Evidence of each Defendant’s infringement was attached as Exhibit 1 to the Declaration of Richard Guerra in Support of Plaintiff’s Motion for Entry of Final Default Judgment filed on March 26, 2021. Plaintiff personally analyzed the Iced Earth branded items wherein orders were initiated via each of the Seller IDs by reviewing the e-commerce stores operating under each of the Seller IDs, or the detailed web page captures and images of the items bearing the Iced Earth Marks, and concluded the products were non-genuine, unauthorized Iced Earth products. See Declaration of Jon Schaffer, ECF No. [5-1] at 15.

III. ANALYSIS A. Claims 1. False Designation of Origin Pursuant to § 43(A) of the Lanham Act (

(a)) (Count I)

To prevail on a claim for false designation of origin under Section 43(a) of the Lanham Act,

(a), Plaintiff must prove that Defendants used in commerce, in connection with any goods or services, any word, term, name, symbol or device, or any combination thereof, or any false designation of origin that is likely to deceive as to the affiliation, connection, or association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval, of Defendants’ services by Plaintiff. See

(a)(1). The test for liability for false designation of origin under

(a) is the same as for a trademark counterfeiting and infringement claim—i.e., whether the public is likely to be deceived or confused by the similarity of the marks at issue. See Two Pesos, Inc. v. Taco Cabana, Inc.,

(1992). 2. Common Law Unfair Competition and Trademark Infringement (Counts II and III)

Whether a defendant’s use of a Plaintiff’s trademarks created a likelihood of confusion between the Plaintiff’s and the defendant’s services or goods is also the determining factor in the analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester, No. 83-8381-Civ-Paine,

, at *3 (S.D. Fla. Dec. 9, 1987) (“The appropriate test for determining whether there is a likelihood of confusion, and thus trademark infringement, false designation of origin, and unfair competition under the common law of Florida, is set forth in John H. Harland, Inc. v. Clarke Checks, Inc.,

(11th Cir. 1983.).”); see also Bos. Prof’l Hockey Ass’n, Inc. v. Dall. Cap & Emblem Mfg., Inc.,

(5th Cir. 1975) (“As a

general rule . . . the same facts which would support an action for trademark infringement would also support an action for unfair competition.”). The 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.,

(S.D. Fla. 2004). 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

(a). Indeed, “[i]njunctive relief is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant’s continuing infringement.” Burger King Corp. v. Agad,

(S.D. Fla. 1995) (citing Century 21 Real Est. Corp. v. Sandlin,

(9th Cir. 1988)). Moreover, even in a default judgment setting, injunctive relief is available. See e.g., PetMed Express, Inc.,

. Defendants’ failure to respond or otherwise appear in this action makes it difficult for Plaintiff to prevent further infringement absent an injunction. See Jackson v. Sturkie,

(N.D. Cal. 2003) (“[D]efendant’s lack of participation in this litigation has given the court no assurance that

defendant’s infringing activity will cease. Therefore, plaintiff is entitled to permanent injunctive relief.”). 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,

, 392-93 (2006). Plaintiff has carried its burden on each of the four factors. Accordingly, permanent injunctive relief is appropriate. 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,

(11th Cir. 1998); see also Levi Strauss & Co. v. Sunrise Int’l Trading Inc.,

, 986 (11th Cir. 1995) (“There is no doubt that the continued sale of thousands of pairs of counterfeit jeans would damage LS & Co.’s business reputation and might decrease its legitimate sales.”). Plaintiff’s Complaint alleges that Defendants’ unlawful actions have caused Plaintiff irreparable injury and will continue to do so if Defendants are not permanently enjoined. See ECF No. [1]. Further, the Complaint alleges, and the unauthorized Iced Earth products sold, offered for sale, marketed, advertised, and distributed by Defendants are nearly identical to Plaintiff’s genuine Iced Earth products and that consumers viewing Defendants’ counterfeit products would actually confuse them for Plaintiff’s genuine products. See id. “The effect of Defendants’ actions will cause confusion of consumers, at the time of initial interest, sale, and in the post-sale setting, who will believe Defendants’ Infringing Goods are genuine goods originating from, associated with, or approved by Plaintiff.” ECF No. [1] at 37. Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Seller IDs because Plaintiff cannot control the quality of what appears to be its Iced Earth 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 and infringing 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 are illegal acts. Finally, the public interest supports the issuance of a permanent injunction against Defendants to prevent consumers from being misled by Defendants’ counterfeit products. See Nike, Inc. v. Leslie, No. 85-960 Civ-T-15,

, at *1 (M.D. Fla. June 24, 1985) (“[A]n injunction to enjoin infringing behavior serves the public interest in protecting consumers from

such behavior.”). The Court’s broad equity powers allow it to fashion injunctive relief necessary to stop Defendants’ infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ.,

(1971) (“Once a right and a violation have been shown, the scope of a district court’s equitable powers to remedy past wrongs is broad, for . . . [t]he essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case.” (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical Co.,

(1944) (“Equity has power to eradicate the evils of a condemned scheme by prohibition of the use of admittedly valid parts of an invalid whole.”). Defendants have created an Internet-based infringement scheme in which they are profiting from their deliberate misappropriation of Plaintiff’s rights. Thus, the Court may fashion injunctive relief to eliminate the means by which Defendants are conducting their unlawful activities. D. Damages for the Use of Infringing Marks The damages available under Section 35 of the Lanham Act are set forth in the Section of that Act entitled “Recovery for violation of rights,” and provides,

(a) Profits; damages and costs; attorney fees When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

(a). Thus, the Lanham Act provides that a plaintiff who prevails in a trademark infringement action “shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.”

(a). “The Eleventh Circuit has made clear that in assessing damages under the Act the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., No. 16-cv-21203,

, at *3 (S.D. Fla. Jan. 13, 2018). “Further, if the court finds that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for the sum the court finds to be just, according to the circumstances of the case.”

(citing Slep-Tone Ent. Corp., v. Johnson,

(11th Cir. 2013);

(a)). “Thus, a district court has considerable discretion to

award damages that are appropriate to the unique facts of the case and when the court concludes that an award of profits is ‘excessive,’ the Act expressly provides that it may award an amount of damages as it shall find to be just.”

“Finally, in Burger King v. Mason,

(11th Cir. 1988), the Eleventh Circuit stated, ‘. . . all monetary awards under Section 1117 are ‘subject to the principles of equity,’ [and] . . . no hard and fast rules dictate the form or quantum of relief.’”

(citation omitted). Further, “the Eleventh Circuit has defined an exceptional case as a case that can be characterized as malicious, fraudulent, deliberate and willful … or a case where there is ‘evidence of fraud or bad faith.’” Rain Bird Corp. v. Taylor,

(N.D. Fla.

2009) (citing Dieter v. B & H Indus. of S.W. Fla., Inc.,

, 329 (11th Cir. 1989); Safeway Stores, Inc. v. Safeway Discount Drugs, Inc.,

(11th Cir. 1982); Tire Kingdom, Inc. v. Morgan Tire & Auto, Inc.,

(11th Cir. 2001)). Here, the allegations in the Complaint, which are taken as true, clearly establish Defendants intentionally copied the Iced Earth Marks for the purpose of deriving the benefit of Plaintiff’s world-famous reputation. The evidence in this case demonstrates that each Defendant sold, promoted, distributed, advertised, and/or offered for sale products bearing marks which were in fact confusingly similar to at least one of the Iced Earth Marks. See ECF No. [1]. Based on the above considerations, Case No. 21-cv-20112-BLOOM/Otazo-Reyes

Plaintiff suggests the Court award statutory damages of $100,000.00 against each Defendant. The award should be sufficient to deter Defendants and others from continuing to counterfeit or otherwise infringe Plaintiffs trademarks, compensate Plaintiff, and punish Defendants, all stated goals of

(a). The Court finds that this award of damages falls within the permissible statutory range under

(a) and is just. E. 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 IT) and trademark infringement (Count IJ). Judgment on Count II and Count III are also limited to the amount awarded pursuant to Count I and entry of the requested equitable relief. IV. CONCLUSION Accordingly, itis ORDERED AND ADJUDGED that Plaintiff's Motion, ECF No. [57], is GRANTED against those Defendants listed in the attached Schedule “A.” Final Default Judgment will be entered by separate order pursuant to Federal Rule of Civil Procedure 58. DONE AND ORDERED in Chambers at Miami, Florida, on March 26, 2021.

BETHBLOOM i sts—s UNITED STATES DISTRICT JUDGE Copies to: Counsel of Record

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