Greene v. Brown , 104 F. Supp. 3d 12 ( 2015 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
MARK GREENE,
Plaintiff
v. Civil Action No. 11-2242 (CKK)
WILLIAM “BILLY” BROWN,
Defendant
MEMORANDUM OPINION
(May 15, 2015)
Plaintiff Mark Greene is a performer, an original member of the musical group known as
“The Moments,” and the owner of the federally-registered trademark, “The Moments.” In this
case, Plaintiff brings a claim for trademark infringement and counterfeiting under the Lanham
Act against Defendant William “Billy” Brown, a member of the performing group “Ray,
Goodman & Brown.” Plaintiff seeks monetary and injunctive relief. Plaintiff alleges that
Defendant wrongfully used the “Moments” trademark in advertising live performances of his
performing group and in promoting the group Ray, Goodman & Brown on the Internet. Before
the Court is Plaintiff’s [36] Renewed Motion for Default Judgment. Upon consideration of the
pleadings, 1 the relevant legal authorities, and the record as a whole, the Court GRANTS IN
PART and DENIES IN PART Plaintiff’s [36] Renewed Motion for Default Judgment. The Court
will enter a default judgment in the amount of $83,606.60 in Plaintiff’s favor, including $82,500
in treble profits and $1,106.60 in costs, based on the allegations in the complaint and the
documentation that Plaintiff submitted in support of the Renewed Motion for Default Judgment.
The Court denies Plaintiff’s request for a permanent injunction because Plaintiff has not shown a
1
The Court’s consideration has focused on Plaintiff’s Renewed Motion for Default Judgment
(“Renewed Mot.”), ECF No. 36. In an exercise of its discretion, the Court finds that holding oral
argument in this action would not be of assistance in rendering a decision. See LCvR 7(f).
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threat of continuing harm. The Court denies without prejudice Plaintiff’s request for attorneys’
fees because Plaintiff has not provided the documentation necessary for the Court to issue such
an award.
I. BACKGROUND
Plaintiff and Defendant are both recording and performing artists. Am. Compl. ¶¶ 3-4.
Plaintiff was an original member of The Moments, a recording and performing musical group.
Id. ¶ 6. Plaintiff is the owner of the federally-registered trademark for The Moments, Registration
No. 2656413, Serial No. 76364446 (the “Moments Mark”). Id. ¶ 7. Plaintiff acquired the
trademark on December 3, 2002, and renewed it for a second ten-year period on September 8,
2012. Id. ¶¶ 8-9. Plaintiff uses the Moments Mark to promote his singing group, which he
advertises as “The Moments, featuring Mark Greene.” Id. ¶ 10. Defendant is the last surviving
original member of the performing group, Ray, Goodman & Brown. Id. ¶ 12.
Defendant has used the Moments Mark to advertise live performances of his singing
group, Ray, Goodman & Brown, as “The Moments.” For example, Defendant used the Moments
Mark to advertise live performances in San Diego, California, at the Cox Arena, on or about
February 2010; live performances in Universal City, California, at the Gibson Amphitheatre, on
or about April 2011; and a live performance at The Arc Theater in the District of Columbia on
December 17, 2011. Id. ¶¶ 15, 17, 18. In addition, Defendant has used the Moments Mark on the
internet, specifically on the Ray, Goodman & Brown MySpace and Facebook pages, as well as
on YouTube, to advertise and promote Ray, Goodman & Brown. Id. ¶ 16.
After Plaintiff discovered that Defendant was using the Moments Mark to advertise his
performing group, Plaintiff, through counsel, sent Defendant several cease and desist notices
requesting that Defendant cease using the Moments Mark. Id. ¶ 14. Specifically, Plaintiff sent
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cease and desists notices on April 12, 2010, and on April 19, 2011. Id., Ex. 1(b). Defendant
continued to use the Moments Mark to advertise his group after Plaintiff sent these cease and
desist notices. See id. ¶¶ 15-18.
Plaintiff filed this action on December 16, 2011. 2 Defendant Brown was served
personally in Washington, D.C., on December 17, 2011. Affidavit of Service by Private Process
Server, ECF No. 3. After Defendant Brown failed to file a timely answer or otherwise respond to
the complaint, Plaintiff moved for the entry of default, see ECF No. 6, and the Clerk of the Court
entered default as to Defendant Brown on April 4, 2012. On April 12, 2012, Plaintiff filed his
first Motion for Entry of Default Judgement, ECF No. 9. 3 The Court denied that motion without
prejudice because it did not specify the damages sought, and it did not include any evidentiary
support. See Order dated April 30, 2012, ECF No. 12. Plaintiff filed a [18] Revised Motion for
Default Judgment, including evidentiary support, on October 15, 2013. The Court denied without
prejudice that Revised Motion for Default Judgment, as well, due to a fundamental inconsistency
between Plaintiff’s Complaint and the Revised Motion for Default Judgment. See Order dated
May 27, 2014, ECF No. 24, at 2. Specifically, while Plaintiff sought damages in the Revised
Motion for Default Judgment under 15 U.S.C. § 1114 of the Lanham Act, Plaintiff never cited
this provision or asserted a claim under this provision in the original Complaint. See id. at 2.
Pursuant to the Court’s orders, Plaintiff amended his Complaint and served the Amended
Complaint on Defendant Brown on November 7, 2014. See Amended Affidavit of Service, ECF
No. 32. Upon Plaintiff’s request, the Clerk of the Court entered default as to Defendant Brown
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The Complaint also named Building Bridges Across the River, Inc., as a defendant. Plaintiff
never successfully served that defendant, and the claim against Building Bridges was dismissed
on April 30, 2012. See Order, dated April 30, 2012, ECF No. 11.
3
Plaintiff amended the first motion for default judgment that same day to add a proposed order
to the motion. See ECF No. 10.
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on January 13, 2015, and Plaintiffs filed the Renewed Motion for Default Judgment that is now
before the Court.
II. LEGAL STANDARD
After a default has properly been entered by the Clerk, a party may move the court for a
default judgment. Fed. R. Civ. P. 55(b)(2). “The determination of whether default judgment is
appropriate is committed to the discretion of the trial court.” Int’l Painters & Allied Trades
Indus. Pension Fund v. Auxier Drywall, LLC, 531 F. Supp. 2d 56, 57 (D.D.C. 2008) (citing
Jackson v. Beech, 636 F.2d 831, 836 (D.C. Cir. 1980)). Upon entry of default by the clerk of the
court, the “defaulting defendant is deemed to admit every well-pleaded allegation in the
complaint.” Int’l Painters & Allied Trades Indus. Pension Fund v. R.W. Amrine Drywall Co.,
Inc., 239 F. Supp. 2d 26, 30 (D.D.C. 2002) (internal citation omitted). “Although the default
establishes a defendant’s liability, the court is required to make an independent determination of
the sum to be awarded unless the amount of damages is certain.” Id. (citing Adkins v. Teseo, 180
F. Supp. 2d 15, 17 (D.D.C. 2001)). Accordingly, when moving for a default judgment, the
plaintiff must prove its entitlement to the amount of monetary damages requested. Id. “In ruling
on such a motion, the court may rely on detailed affidavits or documentary evidence to determine
the appropriate sum for the default judgment.” Id.
III. DISCUSSION
In his Renewed Motion for Default Judgment, Plaintiff requests injunctive and monetary
relief. The Court discusses, in turn, its jurisdiction over this action, Defendant’s liability, and the
various forms of relief that Plaintiff requests.
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A. Jurisdiction
Because Defendant has not responded or appeared, the Court will briefly address its
jurisdiction. “[T]he procedural posture of a default does not relieve a federal court of its
‘affirmative obligation’ to determine whether it has subject-matter jurisdiction over the action.”
Philadelphia Indem. Ins. Co. v. Emerson, No. CV 14-301(ESH), 2015 WL 1359681, at *2, ---
F.R.D. ---- (D.D.C. Mar. 24, 2015) (quoting James Madison Ltd. v. Ludwig, 82 F.3d 1085, 1092
(D.C. Cir. 1996)). Here, the Court has subject matter jurisdiction over the Lanham Act claim –
the sole claim in this action – pursuant to 28 U.S.C. § 1338. In addition, “a court should satisfy
itself that it has personal jurisdiction before entering judgment against an absent defendant.”
Mwani v. Bin Laden, 417 F.3d 1, 6 (D.C. Cir. 2005). Here, the Court is satisfied that it has
personal jurisdiction over the Defendant because Defendant personally performed in a concert in
the District of Columbia – on December 17, 2011 – that gave rise to this litigation. See 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” where “the litigation results from alleged injuries that arise out of or relate to those
activities.” (internal quotations and citations omitted)). The Court notes, as well, that Defendant
Brown was served with the original Complaint while inside the District of Columbia for the
purpose of performing the aforementioned December 2011 concert, which is the subject of this
litigation. See Affidavit of Service by Private Process Server, ECF No. 3. Accordingly, the Court
is satisfied that it has subject matter jurisdiction over this action and that it has personal
jurisdiction over Defendant Brown.
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B. Liability
Where, as here, there is a complete “absence of any request to set aside the default or
suggestion by the defendant that it has a meritorious defense, it is clear that the standard for
default judgment has been satisfied.” Auxier Drywall, LLC, 531 F. Supp. 2d at 57 (internal
quotation marks omitted). The Clerk of the Court has entered Defendant’s default, and the
factual allegations in the Amended Complaint are therefore taken as true. R.W. Amrine Drywall
Co., Inc., 239 F. Supp. 2d at 30. The Court finds that Plaintiff’s Amended Complaint sufficiently
alleges facts to support Plaintiff’s claim of trademark infringement and counterfeiting under the
Lanham Act, 15 U.S.C. §§ 1051 et seq.
To prevail on a claim for federal trademark infringement, “the plaintiff must show (1) that
it owns a valid trademark, (2) that its trademark is distinctive or has acquired a secondary
meaning, and (3) that there is a substantial likelihood of confusion between the plaintiff’s mark
and the alleged infringer’s mark.” Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp.
2d 1, 26-27 (D.D.C. 2006) (internal quotation marks omitted). By default, Defendant admits that
Plaintiff has a valid mark that has a secondary meaning and that there is substantial likelihood of
confusion between Plaintiff’s valid mark and Defendant’s use of the Moments Mark. See Am.
Compl. ¶¶ 7-9, 25-27.
To establish trademark counterfeiting, Plaintiff must show that Defendant infringed a
registered trademark in violation of 15 U.S.C. § 1114(1)(a) and that Defendant “intentionally
us[ed] a mark ..., knowing such mark ... is a counterfeit mark.” 15 U.S.C. § 1117(b); see also
Lifted Research Group, Inc. v. Behdad, Inc., 591 F. Supp. 2d 3, 7 (D.D.C. 2008); Babbit Elec.,
Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir. 1994). As discussed above, Plaintiff has
established that Defendant infringed Plaintiff’s registered trademark. Through his default,
Defendant has admitted the intentional use of Plaintiff’s mark while knowing that mark is
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counterfeit with respect to his use of the Moments Mark after April 2010 – when Plaintiff first
sent him a cease and desist letter. See Am. Compl. ¶ 14, Ex. 1(b). Defendant’s willfulness is
demonstrated by the fact that he had knowledge of Plaintiff’s trademark registration for the
Moments Mark, and yet continued to use the Moments Mark to advertise his performing group
after receiving a cease and desist letter from Plaintiff. Indeed, Defendant continued to use the
Moments Mark after he was served with the original Complaint in this action: he was served on
December 17, 2011, but advertised concerts that occurred in February 2012 as “Ray, Goodman &
Brown” performing as “The Moments.” See Renewed Mot., Ex. 2, Affidavit of Alan Beck
(“Beck Aff.”) ¶ 8. Accordingly, Defendant is liable for trademark infringement and
counterfeiting.
C. Relief
Plaintiff requests relief in the form of injunctive relief and monetary damages, including
attorneys’ fees and costs. The Court addresses, in turn, each of these requests.
1. Damages and Profits
The Lanham Act allows a Plaintiff to “recover (1) defendant’s profits” and “(2) any
damages sustained by the plaintiff.” 15 U.S.C. § 1117(a). In addition, in a case involving a
counterfeit mark, “the court shall, unless the court finds extenuating circumstances, enter
judgment for three times such profits or damages, whichever amount is greater” in circumstances
when the “the violation consists of … intentionally using such mark or designation, knowing
such mark or designation is a counterfeit mark.” Id. § 1117(b). Plaintiff seeks treble profits in the
amount of $192,000, and nominal damages in the amount of $5,000.
With respect to Plaintiff’s request for nominal damages, the Plaintiff concedes that he has
not suffered any actual, non-nominal damages as a result of Defendant’s violations. See Renewed
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Mot. at 16. The Court notes, first, that Plaint does not seek statutory damages, the alternative
remedy provided pursuant to 15 U.S.C. § 1117(c), which allows statutory damages “instead of
actual damages and profits.” Id. In contrast, the provisions of section 1117(a) and (b), on which
Plaintiff relies, do not provide for the recovery of nominal damages. The Lanham Act allows the
Court to exercise its equitable discretion to enter judgment “for such sum as the court shall find
to be just, according to the circumstances of the case” if the Court finds “that the amount of the
recovery based on profits is either inadequate or excessive.” Id. § 1117(a). However, the Act caps
the award of damages at three times the amount of the actual damages. Id. Because Plaintiff
concedes that he suffered no actual damages, the Court is precluded from exercising its equitable
discretion to award nominal damages. Plaintiff chose not rely on the statutory damages provision
of the statute, which allows damages without proof of damages or profits, and is, therefore,
limited to the damages and profits provisions of section 1117(a) and (b). Accordingly, the Court
shall not award Plaintiff nominal damages.
Profits are available as a remedy for trademark infringement upon a showing of
willfulness or bad faith. See ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 966 (D.C.
Cir. 1990) (citing Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 641 (D.C. Cir. 1982)). The Court
concludes that, through Defendant’s default, Defendant has admitted willfulness with respect to
all occasions of trademark infringement that followed Plaintiffs initial cease-and-desist letter,
sent in April 2010. See Am. Compl. ¶ 14, Ex. 1(b).
“In assessing profits the plaintiff shall be required to prove defendant’s sales only;
defendant must prove all elements of cost or deduction claimed.” 28 U.S.C. § 1117(a). Plaintiff
provides evidence of $19,500 in profits by Defendant in the years 2011 and 2012. However,
Plaintiff argues that this is an inadequate recovery because “Defendant would have performed an
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average of 8 times” in each of those years. Renewed Mot. at 16. Accordingly, Plaintiff seeks
recovery for profits in the amount of $64,000 based on an estimate of 16 performances over the
course of two years at a rate $4,000 in profit for each performance. Plaintiff bases his estimate of
8 performances per year on his experience as a soul music artist. See Renewed Mot. at 9-10
(citing Greene Aff. ¶¶ 10-14). Notwithstanding Plaintiff’s experience, the Court concludes that
this is an inadequate basis for determining Defendant’s profits. The estimate of eight concerts per
year is speculation as applied to these two specific years by this specific performer. While the
Court agrees with Plaintiff that the evidence of profits per concert is substantially within
Defendant’s control, evidence as to the total number of concerts is freely available to Plaintiff,
whether through research on the Internet on the various websites that advertise musical
performances or by contacting concert venues individually. 4 Accordingly, the Court will not
award profits based on Plaintiff’s estimate of 16 performances over the course of two years.
However, the Court will consider profits from the concerts specifically described by Plaintiff.
The Court now addresses each concert occurring in 2011 and 2012 enumerated by
Plaintiff. 5 Through the Amended Complaint and Plaintiff’s Renewed Motion for Default
Judgment, Plaintiff provides details about the following concerts:
• February 11-12, 2011. 6 Defendant performed twice at the Gibson Amphitheatre, in
Universal City, California. Am. Compl., Ex. 1(d); id., Ex. 2, Beck Aff. ¶ 5. Defendant
4
Plaintiff does not claim that Defendant obtained profits through private events that would not
be recorded in publically available sources.
5
Plaintiff alleges that Defendant performed as The Moments on February 12, 2010. See Am.
Compl. ¶ 17. However, because this concert occurred before Plaintiff informed Defendant that he
was infringing on Plaintiff’s trademark, this concert cannot be the basis for an award of profits to
Plaintiff. See ALPO Petfoods, 913 F.2d at 966 (profits not available absent willful violation).
6
It appears that the February 2011 concerts are the ones referenced in the Amended Complaint
as occurring “on or about April 2011.” Am. Compl. ¶ 18 (“Defendant Brown wrongfully used the
Moments Mark to advertise performances of ‘Ray Goodman & Brown’ in Universal City,
California at the Gibson Amphitheatre.”).
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was paid $4,000 for the February 11 performance and was paid $4,000 for the
February 12 performance. Beck Aff. ¶ 5.
• August 1, 2011. Defendant advertised a performance under the name “The Moments
with Lavi,” at the Beechman Theatre, in New York. See Am Compl., Ex. 1(f).
Plaintiff does not identify the amount of profits associated with this performance.
• October 22, 2011. A concert that was scheduled to occur in Providence was
advertised online at songkick.com. See Am. Compl., Ex. 1(f). However, that concert
was canceled before it occurred. See id. Plaintiff does not identify any profits
associated with this concert.
• December 17, 2011. It was advertised that Defendant would perform at The Arc
Theater as The Moments. Am. Compl. ¶ 15. Plaintiff was unable to identify profits
associated with this concert.
• February 10, 2012. Defendant performed as Ray, Goodman & Brown and as The
Moments in Sacramento, California. Beck Aff. ¶ 9. Defendant was paid $4,000. Id.
• February 11, 2012. Defendant performed as Ray, Goodman & Brown and as The
Moments in Fresno, California. Id. Defendant was paid $4,000. Id.
• February 11, 2012. Defendant performed as part of Ray, Goodman & Brown,
performing also as “The Moments,” at the Orleans Hotel in Las Vegas, Nevada. Id.
Defendant was paid $3,500. Id.
Plaintiff has identified $19,500 in profits, in total, from five of these concerts. The Court now
considers whether it can impute profits to the concerts where no profits were specifically
identified. With respect to the October 22, 2011, concert, which was cancelled, the Court will not
attribute any profits to a concert that did not occur without any indication that Plaintiff was paid
for that cancelled event. With respect to Defendant’s August 1, 2011, and December 17, 2011,
concerts, Plaintiff was also unable to identify Defendant’s actual profits. The Court recognizes
that Defendant himself controls the best evidence of his profits, and the Court acknowledges that
Plaintiff reported that it proved impossible to obtain this information from third parties. Given
that the Court is charged with “enter[ing] judgment for such sum as the court shall find to be
just,” 15 U.S.C. § 1117(a), the Court will impute profits to those two concerts based on the other
evidence submitted by Plaintiff. See Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d
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966, 973 (2d Cir. 1985) (where “the defendant controls the most satisfactory evidence of sales
the plaintiff needs only establish a basis for a reasoned conclusion as to the extent of injury
caused by the deliberate and wrongful infringement.”). As shown above, Plaintiff has provided
evidence showing that Defendant was paid $4,000 for each of four concerts in 2011 and 2012
and was paid $3,500 for a fifth concert in that same time period. The Court finds that $4,000 is a
reasonable estimate of the profits Defendant earned from each concert in which he performed in
2011 and 2012. Therefore, the Court imputes a profit of $4,000 to the August 1, 2011, concert
and a profit of $4,000 to the December 17, 2011, concert. In sum, the Court finds that Plaintiff
has provided sufficient support for $19,500 in profits that have been specifically enumerated by
Plaintiff and for $8,000 in profits that the Court imputes to Defendant’s violations, for a total of
$27,500 in profits.
The Court will award treble profits pursuant to section 1117(b) because Plaintiff has
established Defendant’s liability for trademark counterfeiting. Specifically, Plaintiff has
established, through Defendant’s default and through the information submitted in the record,
that Defendant had been informed of his infringement on Plaintiff’s trademark prior to the
occurrence of any of the events that are the basis for this award of profits. Accordingly, the Court
will award treble profits in the total amount of $82,500.
2. Injunctive Relief
Plaintiff requests the Court permanently enjoin Defendant from infringing Plaintiff’s
mark. A district court has authority under the Lanham Act to grant injunctive relief “according to
the principles of equity and upon such terms as the court may deem reasonable” to prevent
further violation of Plaintiff’s trademark rights and copyrights. 15 U.S.C. § 1116(a). “In
determining whether to enter a permanent injunction, the Court considers a modified iteration of
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the factors it utilizes in assessing preliminary injunctions: (1) success on the merits, (2) whether
the plaintiffs will suffer irreparable injury absent an injunction, (3) whether, balancing the
hardships, there is harm to defendants or other interested parties, and (4) whether the public
interest favors granting the injunction.” American Civil Liberties Union v. Mineta, 319 F. Supp.
2d 69, 87 (D.D.C. 2004).
As discussed above, Plaintiff has succeeded, by default, in establishing Defendant’s
liability in this action. “When a copyright plaintiff has established a threat of continuing
infringement, he is entitled to an injunction.” Walt Disney Co. v. Powell, 897 F.2d 565, 567 (D.C.
Cir. 1990) (quoting Universal City Studios v. Sony Corp. of America, 659 F.2d 963, 976 (9th
Cir.1981), rev’d on other grounds, 464 U.S. 417 (1984)). However, here, Plaintiff has not shown
a threat of continuing infringement. The most recent examples of infringement identified by
Plaintiff in the record before the Court are concerts that occurred in February 2012. See Beck
Aff. ¶¶ 7, 9. The absence of any more recent examples of infringement is particularly notable as
Plaintiff filed the Amended Complaint in June 2014, and filed the Renewed Motion for Default
Judgment in February 2015. In those filings, Plaintiff did not identify any examples of
infringement that occurred over the past three years. The Court notes that, if Defendant is
continuing to use the Moments Mark, that information would be freely available to Plaintiff, and
there is no reason why Plaintiff would not be able to provide that information to the Court. In
sum, Plaintiff has provided no evidence that Defendant has infringed on his trademark since
February 2012, and the Court will not infer from the record in front of it that ongoing
infringement is occurring. Without a demonstration of a threat of ongoing harm, the Court cannot
conclude that Plaintiff will suffer any irreparable injury. For that reason, the Court concludes that
a preliminary injunction against Defendant is not warranted.
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3. Attorneys’ Fees and Costs
Finally, Plaintiff requests attorneys’ fees and costs in this matter. The Court addresses the
request for costs followed by the request for attorneys’ fees.
The Lanham Act permits a plaintiff to recover “the costs of the action.” 15 U.S.C.
§ 1117(a). Plaintiff seeks costs in the amount of $1,106.60, including the initial filing fee for this
action, costs for service of the original Complaint and the Amended Complaint, and postage for
serving subpoenas via certified mail. There is adequate support for this request in the record. 7
See Am. Compl., Ex. 3, Greene Aff. ¶¶ 2-5 and attachments; id., Ex. 4, Declaration of Lita
Rosario ¶ 7. Accordingly, the Court awards Plaintiff costs in the amount of $1,106.60.
The Act provides for the award of reasonable attorneys’ fees to the prevailing party in a
trademark infringement claim only “in exceptional cases,” 15 U.S.C. § 1117(a), and for claims of
trademark counterfeiting, see id. § 1117(b). Because the Court concluded, above, that Plaintiff
prevailed on his claim for trademark counterfeiting as a result of Defendant’s default, Plaintiff is
eligible for attorney’s fees under section 1117(b). Therefore, the Court need not determine
whether this case represents exceptional circumstances that merit attorneys’ fees under section
1117(a). 8
7
It appears that the costs reported in the record come to a total of $1151.60, not a total of
$1106.60. See Renewed Mot. at 12. However, the Court will award no more in costs than
requested by Plaintiffs.
8
The Court notes that, in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749
(2014), the Supreme Court interpreted the phrase “exceptional circumstances” in the attorneys’
fees provision of the Patent Act, holding 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 which the case
was litigated.” Id. at 1756. Subsequently, the Fourth Circuit Court of Appeals concluded that,
because the language of the attorneys’ fees provision in section 1117(a) is identical to the
language of the Patent Act, “there is no reason not to apply the Octane Fitness standard when
considering the award of attorneys fees under § 1117(a).” Georgia-Pac. Consumer Products LP
v. von Drehle Corp., 781 F.3d 710, 721 (4th Cir. 2015), as amended (Apr. 15, 2015). Because the
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While the Court concludes that Plaintiff is eligible for an award of attorneys’ fees,
Plaintiff has provided insufficient support for his request for $25,668.75 in fees. “In the
preparation of fee applications it is insufficient to provide the District Court with very broad
summaries of work done and hours logged.” Nat’l Ass’n of Concerned Veterans v. Sec’y of Def.,
675 F.2d 1319, 1327 (D.C. Cir. 1982). Here, through the declaration of Plaintiff’s attorney, Lita
Rosario, Plaintiff only provides the total number of hours spent in connection with this matter by
Rosario and by her associate, broken down into two time periods, as well as the attorneys’
billable rates. Plaintiff does not provide any details about the activities that each individual
attorney performed. “Without additional information as to the experience of each attorney at
issue, as well as the work performed by each attorney for specific periods of time, the Court
cannot determine whether the rates and hours billed by the Plaintiffs’ attorneys were reasonable.”
SEIU v. Artharee, 942 F. Supp. 2d 27, 31 (D.D.C. 2013). Because Plaintiff has not submitted
documentation itemizing the activities in which each attorney engaged on Plaintiff’s behalf, as
well as information about each attorney’s qualifications that would support the billable rates
presented, the Court cannot issue an award of attorneys’ fees.
While the Court denies without prejudice Plaintiff’s request for attorneys’ fees because of
the lack of documentation, the Court notes that it had previously denied without prejudice
Plaintiff’s first Revised Motion for Default Judgment because the original Complaint failed to
identify the relevant provisions of the Lanham Act on which Plaintiff relied for relief. Plaintiff
subsequently filed an Amended Complaint to comply with the May 27, 2014, decision of this
Court. The Court concludes that activities by Plaintiff’s counsel solely to remedy Plaintiff’s
Court concludes that Plaintiff is eligible for attorneys’ fees under section 1117(b), the Court need
not consider the applicability of the Octane Fitness test to the circumstances of this case.
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counsel’s earlier failure to rely on the appropriate provisions of the Lanham Act in the original
Complaint are not compensable. It would not be reasonable for Defendant to pay to remedy a
mistake by Plaintiff’s counsel.
IV. CONCLUSION
For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART
Plaintiff’s [36] Renewed Motion for Default Judgment. The Court will enter a default judgment
in the amount of $83,606.60 in Plaintiff’s favor, including $82,500 in treble profits and
$1,106.60 in costs, based on the allegations in the complaint and the documentation that Plaintiff
submitted in support of the Renewed Motion for Default Judgment. The Court denies Plaintiff’s
request for a permanent injunction for the reasons stated above. The Court denies without
prejudice Plaintiff’s request for attorneys’ fees because Plaintiff has not provided the
documentation necessary for the Court to issue such an award.
An appropriate Order accompanies this Memorandum Opinion.
Dated: May 15, 2015
/s/
COLLEEN KOLLAR-KOTELLY
United States District Judge
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