Metropolis Special Police Department v. D.A.T.A. Management Consulting, LLC ( 2022 )

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”), 17 U.S.C. §§ 101 et seq., section 43(a) of the Trademark Act
of 1946 (“Lanham Act”), as amended, 15 U.S.C. § 1125(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
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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. Id. ¶¶ 3, 16–18. In tandem, plaintiff “has expended significant time and
resources, and developed considerable and valuable goodwill with respect to the Artwork Logo.”
Id. ¶ 20. DMC is a limited liability company with its principal place of business in Maryland.
Id. ¶ 9. Gold Shield is a company with its principal place of business in Washington, D.C. Id. ¶
10. 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.” Id. ¶¶ 5, 13. Since 2018, defendants have used,
without plaintiff’s approval, a nearly identical version of the Artwork Logo online and on their
officers’ uniforms. Id. ¶¶ 21–24.
In January 2019, plaintiff registered the Artwork Logo with the U.S. Copyright Office.
Id. ¶ 17; 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
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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. Id.
¶ 30. Plaintiff again sent another cease-and-desist letter to defendants to no avail. Id. ¶¶ 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, 17 U.S.C. §§ 501 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.
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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, 417 F.3d 1, 7 (D.C. Cir. 2005)
(quoting Jackson v. Beech, 636 F.2d 831, 836 (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, 2021 U.S. App. LEXIS 33623, 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., 402 F.3d 1267, 1278 (11th Cir. 2005)));
Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc., 961 F.3d 942, 948 (7th
Cir. 2020) (“When a court enters a default judgment as to liability, it must accept as true all
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factual allegations in the complaint, except those regarding the amount of damages.”); Polidoro
v. Saluti, 675 F. App’x 189, 190 (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, 417 F.3d at 6. 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.” Id. 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. Id. 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, 636 F.2d at 835.
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
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Plaintiff correctly contends that subject-matter jurisdiction over this action is established, pursuant to 28
U.S.C. § 1338(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., 946
F. Supp. 54, 68 (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[.]”).
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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, 752 F.3d 990, 996 (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), 2021
U.S. Dist. LEXIS 90417, *13–14 (D.D.C. May 12, 2021) (applying D.C. long-arm statute in
trademark-infringement case); see also U.S. v. Ferrara, 54 F.3d 825, 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.” D.C. Code § 13-
423(a)(1); see also Forras v. Rauf, 812 F.3d 1102, 1106 (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, 814 F.2d 758, 762 (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, 812 F.3d at 1106.
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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.” D.C. Code § 13-423(a)(1) (emphasis
added); see Holder v. Haarmann & Reimer Corp., 779 A.2d 264, 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, 471 U.S. 462,
473 (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, 783 F. Supp. 2d 147, 150 (D.D.C.
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Plaintiff also contends that personal jurisdiction may be exercised over DMC under D.C. Code § 13-
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.” D.C. Code § 13-423(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.
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2011) (citing Gutierrez v. Berg Contracting Inc., No. 99–3044, 2000 WL 331721, 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, 2000 WL 331721, 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, 281 F.3d 1287, 1295 (D.C. Cir. 2002)
(citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348 (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. 17
U.S.C. § 410(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., 329 F.3d 923, 926 (7th Cir. 2003) (“[W]hen the similarities
concern details of such an arbitrary character that the probability that the infringer had duplicated
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them independently is remote, an inference of copying may be drawn without any additional
evidence.”); id. (collecting cases); Batiste v. Lewis, 976 F.3d 493, 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., 584 F.2d 111, 113 (5th Cir. 1978)));
Parker v. Winwood, 938 F.3d 833, 836 (6th Cir. 2019) (same); Corwin v. Walt Disney Co., 475
F.3d 1239, 1253 (11th Cir. 2007) (same); Moore v. Columbia Pictures Indus., Inc., 972 F.2d 939,
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., 896 F.3d
437, 455–56 (D.C. Cir. 2018); Globalaw Ltd. v. Carmon & Carmon L. Off., 452 F. Supp. 2d 1,
26 (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., 531 F. Supp. 3d 285, 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.”); 15
U.S.C. § 1127 (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
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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., 872 F.2d 1035, 1040 (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, 901 F.3d 498, 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, 576 F.3d 221, 227
(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, 123 F. Supp. 3d 1, 1 (D.D.C. 2015); see also SEC v. Mgmt.
Dynamics, Inc., 515 F.2d 801, 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, 972 F. Supp. 2d 1, 12
(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
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required to make an independent determination of the sum to be awarded.” Adkins v. Teseo, 180
F. Supp. 2d 15, 17 (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., 239 F. Supp. 2d 26, 30
(D.D.C. 2002); see also United Artists Corp. v. Freeman, 605 F.2d 854, 857 (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. 17 U.S.C. § 502(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”); 15 U.S.C. § 1116(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,
897 F.2d 565, 567–68 (D.C. Cir. 1990) (emphasis in original) (applying this principle to
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copyright infringement); Hanley-Wood, 783 F. Supp. 2d at 151 (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, 783 F. Supp. 2d at 151; Harrison Music Corp. v. Tesfaye, 293 F. Supp. 2d 80, 83 (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 17 U.S.C. § 504(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.” 17 U.S.C. §
504(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
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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.” Id. at 83. A defendant willfully
infringes when “he has actual knowledge of his infringement or if he recklessly disregards the
possibility of infringing a copyright.” Id. at 84. 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. 17 U.S.C. §
505. Plaintiff qualifies as “the prevailing party” here. See Serrano v. Chicken-Out, Inc., 209 F.
Supp. 3d 179, 194 (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., 510 U.S. 517, 534 (1994) (quoting Hensley v. Eckerhart, 461 U.S. 424, 436 (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., 579 U.S. 197, 202 (2016) (alteration in original) (quoting Fogerty, 510 U.S.
at 534, n.19). “Although objective reasonableness carries significant weight, courts must view
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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.” 15 U.S.C.
§1117(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., 821 F.2d 800, 808 (D.C. Cir. 1987), overruled on other grounds by
Fogerty v. Fantasy, Inc., 510 U.S. 517 (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
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which the case was litigated.” 572 U.S. 545, 554 (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. Id. (citing Fogerty, 510 U.S. at 534, n.19). 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, 292 F. Supp. 3d 337, 366 (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 15 U.S.C. §1117(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. 987 F.3d 1124, 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.
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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., 913 F.2d 958, 966 (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, 793 F.3d 97, 100 (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, 57 F.3d
1101, 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.
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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
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