Opinion
20-CV-5055 (JGK) (KHP)
05-20-2021
GIANNIS ANTETOKOUNMPO, Plaintiff, v. KENNETH SEARCY d/b/a NOMERCY50 d/b/a MUSICARTHISTORY, Defendant.
ORDER
KATHARINE H. PARKER United States Magistrate Judge
TO: THE HON. JOHN G. KOELTL, UNITED STATES DISTRICT JUDGE
FROM: KATHARINE H. PARKER, UNITED STATES MAGISTRATE JUDGE
REPORT AND RECOMMENDATION
Plaintiff, Giannis Antetokounmpo, commenced this action to recover damages for, among other things, misuse of his trademark, the “GREEK FREAK, ” by the Defendant, Kenneth Searcy d/b/a/ NOMERCY50 d/b/a MUSICARTHISTORY, in violation of the Federal Trademark (“Lanham”) Act, 15 U.S.C. §§ 1051 et seq, New York General Business Law (“GBL”) §§ 349 and 360-1, and New York common law. ECF No. 1, Complaint ¶ 1. The Defendant did not timely answer or move with respect to the Complaint. Plaintiff now moves for a default judgement, statutory damages, pre-judgment interest, attorneys' fees and costs, and injunctive relief with respect to his Lanham Act claims. ECF No. 30.
BACKGROUND
The Plaintiff, a/k/a the “Greek Freak, ” is a professional basketball player for the Milwaukee Bucks, which compete in the National Basketball Association (“NBA”). He has gained notoriety for his skill on the basketball court, for which he won NBA Most Valuable Player award twice, and for his personal history as a Greek-Nigerian. See https://www.nytimes.com/2019/05/03/sports/giannis-antetokounmpo-greece.html; https://www.nytimes.com/2020/09/18/sports/basketball/nba-giannis-antetokounmpo-mvp.html. Compl. ¶¶ 3, 16-18. Plaintiff registered his nickname, “GREEK FREAK, ” as a trademark with the U.S. Patent and Trademark Office on February 13, 2018, although he utilized the mark in commerce as early as 2017. Compl. Ex. B. He also has applied for registration of a variation on this mark, “Greek FR34K, ” which includes the numbers that appear on his NBA jersey. Compl. ¶¶ 21, 25, 29. The Plaintiff's trademark is registered in International Classes 18 (Backpacks) and 25 (Clothing). Compl. Ex. B. His merchandise is distributed through various retailers and websites within the United States. Compl. ¶ 3. He also has entered into licensing and other agreements with third parties to use his mark in commerce for a variety of goods. Compl. ¶¶ 23. He alleges that through his efforts, including by developing, promoting and advertising his Greek Freak-branded products, his mark has become famous and exclusively associated with the Plaintiff. Compl. ¶¶ 4-5, 21-22, 27.
Notwithstanding Plaintiff's rights in the Greek Freak mark, Defendant, Kenneth Searcy d/b/a/ NOMERCY50 d/b/a MUSICARTHISTORY, began selling a variety of items on Redbubble.com with the Greek Freak mark. Compl. ¶ 33. The items include phone cases, pillows, mugs, t-shirts, laptop covers, clocks, cards, pouches, notebooks, scarves, and prints. Compl. ¶ 6. After learning this, the Plaintiff took immediate action by sending a cease and desist letter asking the Defendant to provide him with a full accounting of sold merchandise and to stop selling the products with his image. Compl. Ex. E.
After receiving the Plaintiff's letter, the Defendant responded to Plaintiff's counsel that he would remove the infringing items from Redbubble.com. ECF No. 28.; Pardalis. Decl. ¶ 14; Compl. ¶¶ 32. However, according to the Plaintiff, there are approximately 30 different types of infringing products that are still available to purchase on the website. Compl. ¶¶ 14, 32, 36. Defendant also failed to provide any information about his profits generated from the sale of goods under Plaintiff's mark. Compl. ¶¶ 36-37. Defendant's products compete with Plaintiff's branded products, are a lower quality, and cause confusion as to the source of the goods, diluting Plaintiff's brand. Compl. ¶¶ 38-39.
Unable to obtain relief through these efforts, Plaintiff commenced this action on July 1, 2020. (ECF No. 1.) He served the Complaint on Defendant on August 6, 2020 by personal service. (ECF No. 7.) The Complaint asserts the following causes of action: trademark infringement of Plaintiff's registered mark, trademark counterfeiting, trademark dilution, false designation of origin/passing off and unfair competition, common law trademark infringement, and unfair trade practices under New York's General Business Law.
Defendant failed to file an answer or otherwise move with respect to the Complaint, and the Clerk of the Court entered a certificate of default with respect to this action on September 2, 2020. (ECF No. 10.) The Honorable John G. Koeltl then referred the matter to the undersigned for inquest on damages after default. (ECF No. 18.) On January 19, 2021, Plaintiff submitted a request to enter default and provided information on damages with a supporting declaration. (ECF Nos. 28-31.) These papers were served on Defendant on January 25, 2021. (ECF No. 34.) On February 1, 2021, this Court held a telephonic inquest hearing, and despite being afforded notice of the hearing, Defendant did not appear or file any submissions. The following recommendations are based on the facts asserted in the pleading, as well as evidence presented in Plaintiff's motion papers and at the hearing.
DISCUSSION
A. Default Judgment
Federal Rule of Civil Procedure (“Rule”) 55 governs judgments against a party that has failed to plead or otherwise defend itself in an action. Gesualdi v. Reid, 198 F.Supp.3d 211, 217 (E.D.N.Y. 2016). Rule 55 requires the Clerk of the Court, upon notification from the moving party, to note the default of the party failing to defend. Priestley v. Headminder, Inc., 647 F.3d 497, 505 (2d Cir. 2011) (citing Fed.R.Civ.P. 55(a)). Once the Clerk issues a certificate of default, the moving party may apply for entry of default judgment, pursuant to Rule 55(b). Id. A default constitutes an admission of all well-pleaded factual allegations in the complaint, and the allegations as they pertain to liability are deemed true. Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992).
In determining whether to grant a motion for default judgment, courts within this District consider three factors: “(1) whether the defendant's default was willful; (2) whether defendant has a meritorious defense to plaintiff's claims; and (3) the level of prejudice the non-defaulting party would suffer as a result of the denial of the motion for default judgment.” Indymac Bank, F.S.B. v. National Settlement Agency, Inc., No. 07-cv-6865 (LTS) (GWG), 2007 WL 4468652, at *1 (S.D.N.Y. Dec. 20, 2007) (internal citation omitted); see also Guggenheim Capital, LLC v. Birnbaum, 722 F.3d 444, 455 (2d Cir. 2013) (applying these factors in review of lower court's grant of a default judgment).
Here, Plaintiff has satisfied the procedural requirements of Rule 55 by submitting a request for both entry of default and default judgment. (See ECF. Nos. 28-31.) Further, all three of the foregoing factors weigh in Plaintiff's favor. First, the Defendant's failure to make an appearance and to respond to either Plaintiff's Complaint or Motion for Default Judgment are indicative of willful conduct, especially since the Defendant responded to Plaintiff's cease and desist letter sent by Plaintiff's counsel. See Indymac Bank, F.S.B., 2007 WL 4468652, at *1 (holding that non-appearance and failure to respond to a complaint or motion for default judgment indicate willful conduct). Second, there is no information before the Court regarding any meritorious defenses to Plaintiff's claims because Defendant has failed to make any appearance and therefore not provided any information to this Court. Third, Plaintiff will be prejudiced if he is denied the ability to seek judgment by default because he has no alternative legal redress. See Flooring Experts, Inc., 2013 WL 4042357, at *5 (stating that Defendant has no security such as an escrow deposit, bond or otherwise, posted with the joint board).
On a default judgment motion, the defendant is deemed to have admitted all of the well pleaded factual allegations contained in the complaint. Fed.R.Civ.P. 8(b)(6); S.E.C. v. Razmilovic, 738 F.3d 14, 19 (2d Cir. 2013). However, “because a party in default does not admit conclusions of law, ” it is incumbent upon the Court to consider whether the plaintiff has pleaded facts sufficient to establish the defendant's liability with respect to each cause of action. See Zhen Ming Chen v. Y Café Ave B Inc., 2019 WL 2324567, at *1 (S.D.N.Y. May 30, 2019). When determining liability from default, the non-defaulting party is entitled to all reasonable inferences from the evidence offered. Mun. Credit Union v. Queens Auto Mall, Inc., 126 F.Supp.3d 290 (E.D.N.Y. 2015).
“Once liability is established, the sole remaining issue before the court is whether the plaintiff has provided adequate support for the relief it seeks.” Bleecker v. Zetian Sys., Inc., No. 12-cv-2151 (DLC), 2013 WL 5951162, at *6 (S.D.N.Y. Nov. 1, 2013) (citing Transatlantic Marine Claims Agency, Inc. v. Ace Shipping Corp., Div. of Ace Young Inc., 109 F.3d 105, 111 (2d Cir. 1997)). “Even when a default judgment is warranted based on a party's failure to defend, the allegations in the complaint with respect to the amount of the damages are not deemed true. The district court must instead conduct an inquiry in order to ascertain the amount of damages with reasonable certainty.” Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d 151, 155 (2d Cir. 1999) (internal citations omitted).
“Establishing the appropriate amount of damages involves two steps: (1) ‘determining the proper rule for calculating damages on . . . a claim'; and (2) ‘assessing plaintiff's evidence supporting the damages to be determined under this rule.'” Begum v. Ariba Disc., Inc., No. 12-cv-6620 (DLC), 2015 WL 223780, at *4 (S.D.N.Y. Jan. 16, 2015) (alteration in original) (quoting Credit Lyonnais, 183 F.3d at 155). “[A] hearing is not required where a sufficient basis on which to make a calculation exists.” Trustees of the Sheet Metal Workers' Intl. Assn. Local Union No. 28 Benefit Funds v Maximum Metal Manufacturers, Inc., 14-CV-2890 (JLC), 2015 WL 8031380, at *2 (S.D.N.Y. Dec. 7, 2015); see also, Cement and Concrete Workers Dist. Council Welfare Fund, Pension Fund, Annuity Fund, Educ. and Training Fund and Other Funds v. Metro Found. Contractors Inc., 699 F.3d 230, 234 (2d Cir. 2012).
I address below whether the facts pleaded in the Complaint are sufficient to establish the Defendant's liability under the Lanham Act. I then address the appropriate amount of damages and other relief to which the Plaintiff is entitled.
B. Trademark Infringement and Defendant's Liability
1. Liability Under the Lanham Act
To prevail on a trademark infringement claim under 15 U.S.C. § 1114, a plaintiff must first establish that it has a valid mark that is entitled to protection under the Lanham Act; and that the defendant used the mark in commerce and in connection with the sale or advertising of goods or services without the plaintiff's consent. 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005). Second, Plaintiff must show that defendant's use of that mark is likely to cause confusion . . . as to the affiliation, connection, or association of [defendant] with [plaintiff], or as to the origin, sponsorship, or approval of [the defendant's] goods, services, or commercial activities by [plaintiff].” Id. at 407.
In considering the likelihood of confusion, courts in this Circuit generally look to the factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). The Polaroid factors are: (1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer's product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market. Id. “No single factor is dispositive, nor is a court limited to consideration of only these factors.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 118 (2d Cir. 2006). Additionally, courts often adjust the factors when dealing with false endorsement claims; for instance, in such cases, the quality of the products (factor seven) and “bridging the gap” (factor four) are often not considered. Jackson v. Odenat, 9 F.Supp.3d 342, 355-56 (S.D.N.Y. 2014), reconsideration denied (June 12, 2014). Under a “false endorsement” allegation, the “public's belief that the mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.” Id. at 355 (emphasis added).
The Court finds that the Plaintiff has met each of these requirements. First, the Plaintiff owns one federally registered mark (i.e. “GREEK FREAK”) and has another pending trademark (i.e. “GREEK FR34K”). Documents provided from Plaintiff illustrate that Defendant's website is selling items with the registered trademark.
The Court notes that Section 43(a) of the Lanham Act also “protect[s] an unregistered trademark[s] . . . against infringement.” Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997) (internal quotation marks omitted) (ellipses in original). See also, Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 381 (2d Cir. 2005) (An unregistered mark merits protection under the Lanham Act if it would qualify for registration as a trademark, meaning it “either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning”). Here, the unregistered trademark is the same name that is already trademarked and is made even more distinctive by the use of numbers as letters to convey the Plaintiff's jersey number. The Court understands that Defendant did not use the unregistered trademark, so it does not further address this mark in this opinion.
Second, the Court finds that the Polaroid factors weigh in favor of the Plaintiff. There can be no dispute that Defendant is using Plaintiff's exact mark - Greek Freak. Plaintiff's notoriety as a player and widespread use of his nickname render the mark strong. Thus, it is likely that consumers would believe that the Defendant is somehow associated with the Plaintiff or at least has consented to the use of its trademark. Thus, Defendant's use of Plaintiff's mark likely causes confusion amongst Plaintiff's fan base and purchasers of Greek Freak merchandise. To the extent Plaintiff has no control over the quality of the goods Defendant sells, any complaints or problems with the quality could be attributed to Plaintiff and harm his mark. Many of the products Defendant sells are similar to the products Plaintiff sells, leading to further confusion. Defendant's conduct also suggests bad faith. Defendant displayed the Plaintiff's mark on a variety of products and sold them on his website without authorization. He continued to sell the products and use Plaintiff's mark even after receiving a cease and desist letter. Finally, because Defendant failed to answer the Complaint in this case or otherwise provide any information in this action, the Court cannot comment on other of the Polaroid factors. This is not necessary, however, given the weight of the evidence before the Court regarding Defendant's conduct and his clear misuse of Plaintiff's mark.
2. Damages and Other Relief
Having found that the well-pleaded allegations support a finding that Defendant violated the Lanham Act, I next turn to the requested relief.
a. Damages Legal Standard
Under Section 35(a) of the Lanham Act, a trademark owner may choose to recover either actual or statutory damages. 15 U.S.C. § 1117(a), (c); Gucci Am., Inc. v. MyReplicaHandbag.com, No. 07 Civ. 2438(JGK)(DFE), 2008 WL 512789, at *2 (S.D.N.Y. Feb. 26, 2008). In this case, Plaintiff seeks to recover statutory damages. (Pardalis. Decl. ¶ 25).
If a trademark owner opts to recover statutory damages, it may be awarded “not less than $1,000 or more than $200,000 per counterfeit mark” or “if the court finds that the use of the counterfeit was willful, not more than $2,000,000 per counterfeit mark.” 15 U.S.C. § 1117(c)(1), (2). See Cengage Learning, Inc. v. Shi, No. No. 13 CIV. 7772 (VSB), 2017 WL 1063463 (S.D.N.Y. Mar. 21, 2017). To be awarded damages, a plaintiff also must prove either actual consumer confusion or deception resulting from the violation, or that the defendant's actions were intentionally deceptive thus giving rise to a rebuttable presumption of consumer confusion. “[M]any courts in [the Second Circuit] treat a default as evidence of willfulness for the purposes of determining statutory damages.” See Rolls-Royce PLC v. Rolls-Royce USA, Inc., 688 F.Supp.2d 150, 157 (E.D.N.Y. 2010). In this case, given Defendant's default, the strength of Plaintiff's marks, Defendant's non-answer after responding to the cease and desist letter, and Defendant's decision to continue profiting from the illegal use of the mark, the Court finds that the Defendant's infringement is willful, thereby entitling Plaintiff to statutory damages. Indeed, “[t]he lack of information regarding defendants' sales and profits make statutory damages particularly appropriate for these kinds of default cases.” See DC Comics, Inc. v. Bobtron Int'l, Inc., No. 89 CIV. 4358 (MBM), 1990 WL 106771, at *2 (S.D.N.Y. July 25, 1990) (ordering damages in the amount of three times Defendant's profits because, among other considerations, the infringement was willful); Polo Ralph Lauren, L.P. v. 3M Trading Co., No. 97 CIV. 4824(JSM)(MH, 1999 WL 33740332, at *4 (S.D.N.Y. Apr. 19, 1999) (“In crafting the statutory damages provision of the Lanham Act . . . Congress took into account that oftentimes, counterfeiters records are nonexistent, inadequate or deceptively kept in order to willfully deflate the level of counterfeiting activity actually engaged in, making proving actual damages in these cases extremely difficult if not impossible.”).
Plaintiff requests $9,000.00 in statutory damages-this is the minimum amount of compensation he can recover from the statute (i.e. $1,000) based on the number of categories of goods that Defendant is selling using Plaintiff's mark. 15 U.S.C. § 1117(c)(1). Plaintiff has provided evidence of the following nine categories of items Defendant is offering for sale (ECF No. 1. Ex. A.) on REDBUBBLE bearing the Greek Freak mark:
• Apparel;
• Mobile phone accessories;
• Tablet and laptop accessories;
• Prints and posters;
• Pillows;
• Blocks and notebooks;
• Accessories (bags, pouches, scarfs);
• Greeting cards and postcards; and
• Wall clocks.
While Plaintiff's mark is classified under International Classes 18 (Backpacks) and 25 (Clothing), “classification schedules shall not limit or extend the applicant's rights.” 37 CFR § 2.85(g). See Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975 (Fed. Cir. 1993) (“Classification is meant to facilitate searching for registered marks which is primarily for “the convenience of the PTO [Patent Trade Office].”)
In cases involving several different marks and/or several different types of merchandise, judges have discretion on how to determine the amount of the damages award. For example, some courts award the statutory maximum without regard to the number of marks or categories of infringing goods, while others award amounts for each mark infringed and/or each type of infringing product. See MyReplicaHandbag.com, 2008 WL 512789, at *5; Diesel S.P.A. v. Does, No. 14-CV-4592 (KMW), 2016 WL 96171, at *12 (S.D.N.Y. Jan. 8, 2016); Chanel, Inc. and Louis Vuitton Malletier v. Craddock, 2006 WL 1128733, at *1 (D.N.J. Apr. 27, 2006). Plaintiff's approach is imminently reasonable and well within the range of awards in similar cases. Thus, I recommend granting Plaintiff's request for statutory damages in the amount of $9,000, which equates to the minimum statutory damages award for each of the nine categories of goods sold by Defendant using Plaintiff's trademark.
b. Pre-Judgment Interest
Plaintiff argues that he should receive interest at 3.14% from March 18, 2020 amounting to $9,235.50. “Although Section 1117(a) does not provide for prejudgment interest, such an award is within the discretion of the trial court and is normally reserved for ‘exceptional' cases.” Am. Honda Motor Co., Inc. v. Two Wheel Corp., 918 F.2d 1060, 1064 (2d Cir. 1990); Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 263-64 (2d Cir. 2014); see also Nat'l Ass'n for Specialty Food Trade, Inc. v. Construct Data Verlag AG, No. 04 Civ. 2983(DLC)(KNF), 2006 WL 5804603, at *7 (S.D.N.Y. Dec. 11, 2006) (“In the case at bar, the Court finds that awarding prejudgment interest to the plaintiff is appropriate to give effect to the compensatory scheme Congress contemplated would be employed when trademark rights have been infringed.”), Report and Recommendation of Magistrate Judge adopted, 2007 WL 656274 (S.D.N.Y. Feb. 23, 2007); GTFM, Inc. v. Solid Clothing, Inc., 215 F.Supp.2d 273, 307 (S.D.N.Y. 2002) (“In light of Solid's willful intent to profit illegally from the goodwill of GTFM's '05' brand, prejudgment interest is appropriate in this case.”).
In this case, the Defendant responded to the initial cease and desist letter without complete information, then failed to respond or defend itself before this Court, while he continued to sell and profit off the Plaintiff's mark. The Court finds that this conduct demonstrates Defendant's willfulness and bad faith sufficient to deem this to be an exceptional case to warrant an award of pre-judgment interest pursuant to Section 1117(a). See S. Rep. No. 93-1400, at 2 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7133 (describing “exceptional cases” under the Lanham Act as cases where infringement is “malicious, ” “deliberate, ” or “willful”). Therefore, I recommend that pre-judgment interest of 3.14% be added to the Plaintiff's statutory damages of $9,000.00 for a total of $9,235.50.
c. Attorney's Fees
Plaintiff also seeks attorney's fees. Under 15 U.S.C. § 1117(a) of the Lanham Act, a court may award attorneys' fees in “exceptional” circumstances. Cases involving instances of bad faith or willful infringement are “exceptional cases.” Crazy Dog T-Shirts, Inc. v. Design Factory Tees, Inc., No. 15-CV-6740-FPG, 2017 WL 3166921, at *3 (W.D.N.Y. July 26, 2017). Because, as discussed above, Defendants' infringement was willful, an award of reasonable attorney's fees is appropriate. In this case, Plaintiff seeks $9,730.20 in attorney's fees. (Paradis Decl. ¶ 28).
When determining whether a fee request is reasonable, courts typically assess whether the number of hours expended on the litigation were reasonable and multiply those hours by a reasonable hourly rate. Arbor Hill Concerned Citizens Neighborhood Ass'n v. County of Albany, 522 F.3d 182, 186 (2d Cir. 2008), quoting Hensley v. Eckerhart, 461 U.S. 424, 433, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983). The hourly rates used in making a fee award should be “what a reasonable, paying client would be willing to pay.” Arbor Hill Concerned Citizens Neighborhood Ass'n v. County of Albany, supra, 522 F.3d at 184. This rate should be “in line with those [rates] prevailing in the community for similar services by lawyers of reasonably comparable skill, experience and reputation.” Blum v. Stenson, 465 U.S. 886, 896 n. 11, 104 S.Ct. 1541, 79 L.Ed.2d 891 (1984); accord Reiter v. MTA N.Y. City Tran. Auth., 457 F.3d 224, 232 (2d Cir.2006), cert. denied, 549 U.S. 1211, 127 S.Ct. 1331, 167 L.Ed.2d 84 (2007).
The work in this case was performed by Anastasi Pardalis, a partner at Pardalis & Nohavicka, LLP with an hourly rate of $400.00. Her hourly rate of $400.00 per hour is reasonable in light of her approximately fifteen years' experience in the practice of law and her experience in trademark infringement cases. It is also in line with rates of similarly experienced lawyers in this District. See e.g. See, e.g. Bass v. Diversity Inc. Media, No. 19-CV-2261 (AJN), 2020 WL 2765093, at *1 (S.D.N.Y. May 28, 2020); Entral Group Int'l, LLC v. Sun Sports Bar Inc., 05-CV-4836 (CBA), 2007 WL 2891419 at *10 (E.D.N.Y. Sept. 28, 2007) (approving hourly rate of $560.00 in copyright infringement case); Nat'l Ass'n for the Specialty Food Trade, Inc. v. Construct Data Verlag AG, 04 Civ. 2983(DLC)(KNF), 2006 WL 5804603 at *6 (S.D.N.Y. Dec. 11, 2006) (in a trademark infringement case, awarding attorney's fees of $400-$540 per hour for partners); Yurman Designs, Inc. v. PAJ, Inc., 125 F.Supp.2d 54, 58 (S.D.N.Y.2000), aff'd, 262 F.3d 101 (approving partner rate of $520.69 per hour for attorneys handling copyright and trademark infringement litigation).
In assessing the number of hours for which compensation should be awarded, “[t]he court's role is not to determine whether the number of hours worked by [the movant's] attorneys represents the most efficient use of resources, but rather whether the number is reasonable.” In re Arbitration Between P.M.I. Trading Ltd. v. Farstad Oil, 160 F.Supp.2d 613, 616 (S.D.N.Y. 2001). According to Plaintiff's counsel, she has “spent more than 20 hours in prosecuting this matter.” (Pardalis Decl. at ¶¶ 31, 32). Plaintiff's counsel provided a copy of contemporaneous time records and a copy of her invoice for $9,730.20 to Plaintiff. The attorney's fees relate, among other things, to preparing and drafting the cease and desist letter; preparing and drafting the Complaint and arranging for service of process; preparing and filing the motion for default judgment, and preparing for the default motion hearing. Counsel's invoice provides the date legal services were performed and a record of what legal service was provided, along with the amount of time spent on that task. (ECF No. 26.) Plaintiff's invoice represents approximately 23 hours of work expended on this matter. Id. I find these hours to be reasonable for the work performed and that they are properly supported by contemporaneous time records. Therefore, I recommend that Plaintiff be awarded attorneys' fees in the amount of $9,730.20.
C. Permanent Injunction
Plaintiff also seeks an injunction barring Defendant from infringing on his marks. Section 34(a) of the Lanham Act authorizes courts to issue injunctions, “according to the principles of equity and upon such terms as the court may deem reasonable” to protect the rights of the trademark registrant. See 15 U.S.C. § 1116(a). A court may issue an injunction when the moving party establishes that there is a statutory basis for relief and that it “meets the prerequisites for the issuance of an injunction.” Pitbull Prods., Inc. v. Universal Netmedia, Inc., No. 07 Civ. 1784(RMB)(GWG), 2007 WL 3287368, at *5 (S.D.N.Y. Nov. 7, 2007) (quoting Kingvision Pay-Per-View Ltd. v. Lalaleo, 429 F.Supp.2d 506, 516 (E.D.N.Y. 2006)). The second of these requirements compels a party seeking an injunction to “demonstrate irreparable harm and the absence of an adequate remedy at law.” Id. In intellectual property actions, permanent injunctions generally are granted when there is “a threat of continuing [violations].” See Software Freedom Conservancy, Inc. v. Best Buy Co., No. 09 Civ. 10155(SAS), 2010 WL 2985320, at *2-3 (S.D.N.Y. July 27, 2010) (granting permanent injunction because defendant continued its violations even after being “informed of its unlawful infringement”).
The first requirement for injunctive relief is satisfied here because the Lanham Act provides that federal courts “have power to grant injunctions, according to the principles of equity” in trademark infringement cases. 15 U.S.C. § 1116(a). The second requirement for injunctive relief also is satisfied because the Defendant has defaulted and Plaintiff has demonstrated to this Court's satisfaction that Defendant has violated the Lanham Act. The Defendant's use of his website to continue to sell and profit from the Plaintiff's mark further evidences the Defendants intention to continue infringing the trademark despite having received a demand to cease and desist. Therefore, an injunction against the Defendant should be entered with the language set forth in the proposed default judgment, “. . . the Defendant is enjoined immediately and permanently from selling, offering to sell, advertising or marketing products bearing the ‘GREEK FREAK' mark and using any mark that is confusingly similar to the marks at issue in connection with the manufacture, promotion, sale and/or offering for sale of any products. The Defendant shall immediately recall all of the products bearing the ‘GREEK FREAK' mark.” (ECF No. 30.)
CONCLUSION
For the reasons set forth above, I recommend that default judgment be granted against Defendant and in favor of Plaintiff for the total amount of $18,965.70 and that a permanent injunction be issued barring Defendant from using the Plaintiffs mark.
SO ORDERED
NOTICE
The Defendant shall have seventeen days from the service of this Report and Recommendation to file written objections pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure (i.e., until February 5, 2017). See also Fed. R. Civ. P. 6(a), (d) (adding three additional days only when service is made under Fed.R.Civ.P. 5(b)(2)(C) (mail), (D) (leaving with the clerk), or (F) (other means consented to by the parties)). Plaintiff shall have fourteen days from the service of this Report and Recommendation to file written objections pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure (i.e., until February 2, 2017).
If the Defendant files written objections to this Report and Recommendation, the Plaintiff may respond to the Petitioner's objections within fourteen days after being served with a copy. Fed.R.Civ.P. 72(b)(2). Alternatively, if Plaintiff files written objections, the Defendant may respond to such objections within seventeen days after being served with a copy. Fed.R.Civ.P. 72(b)(2); see also Fed. R. Civ. P. 6(a), (d). Such objections shall be filed with the Clerk of the Court, with courtesy copies delivered to the chambers of the Honorable Lewis J. Liman at the United States Courthouse, 500 Pearl Street, New York, New York 10007, and to any opposing parties. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), 6(d), 72(b). Any requests for an extension of time for filing objections must be addressed to Judge Koeltl. The failure to file these timely objections will result in a waiver of those objections for purposes of appeal. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), 6(d), 72(b); Thomas v. Arn, 474 U.S. 140 (1985).