Ploom, Inc. v. iPloom, LLC et al

MOTION for Default Judgment

N.D. Cal.March 18, 2014

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT COLLEEN BAL, State Bar No. 167637 cbal@wsgr.com RIANA S. PFEFFERKORN, State Bar No. 266817 rpfefferkorn@wsgr.com WILSON SONSINI GOODRICH & ROSATI Professional Corporation One Market Plaza, Spear Tower, Suite 3300 San Francisco, California 94105-1126 Telephone: (415) 947-2000 Facsimile: (415) 947-2099 Attorneys for Plaintiff PLOOM, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION PLOOM, INC., a Delaware corporation, Plaintiff, v. IPLOOM, LLC, a Massachusetts limited liability company; and ANTHONY MARINO, an individual, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) CASE NO.: 13-cv-05813-SC PLAINTIFF’S NOTICE OF MOTION AND MOTION FOR DEFAULT JUDGMENT AGAINST DEFENDANTS IPLOOM, LLC AND ANTHONY MARINO Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 1 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -i- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT TABLE OF CONTENTS Page I. INTRODUCTION...............................................................................................................2 II. FACTUAL AND PROCEDURAL BACKGROUND........................................................3 III. ARGUMENT ......................................................................................................................7 A. Legal Standard for Default Judgment .....................................................................7 B. Default Against the Defendants Was Properly Entered ..........................................8 C. Jurisdiction and Venue Are Proper .........................................................................8 1. Subject Matter Jurisdiction..........................................................................8 2. Personal Jurisdiction ...................................................................................9 The Court Has General Jurisdiction over Defendants.....................9a. The Court Has Specific Jurisdiction over Defendants ..................10b. i. Purposeful Availment........................................................ 10 ii. Plaintiff’s Claims Arise from Defendants’ Activities ....... 11 iii. Personal Jurisdiction in This District Is Reasonable......... 11 3. Venue ........................................................................................................12 D. Plaintiff Is Entitled to Injunctive Relief, Transfer of the Infringing Domain Name, and Statutory Damages ..............................................................................12 1. Plaintiff Is Entitled to a Permanent Injunction..........................................13 Federal and Common-Law Trademark and Trade Dressa. Infringement ..................................................................................13 Violation of Lanham Act § 43(a); Common-Law Unfairb. Competition...................................................................................13 Unlawful Business Practices and False Advertising (CAL.c. BUS. & PROF. CODE §§ 17200 & 17500).......................................13 2. Plaintiff Is Entitled to Transfer of the Infringing Domain Name Under the Anticybersquatting Consumer Protection Act (ACPA) ...........14 3. Plaintiff is Entitled to Statutory Damages.................................................14 Statutory Damages for Willful Use of Counterfeit Marks toa. Market and Sell iPloom Pax and Counterfeit Pax.........................14 Statutory Damages for Infringing Domain Name .........................15b. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 2 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -ii- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 4. Plaintiff is Entitled to Attorney’s Fees ......................................................16 5. Plaintiff is Entitled to Its Costs .................................................................16 IV. CONCLUSION .................................................................................................................17 Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 3 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -i- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT TABLE OF AUTHORITIES CASES Allstate Ins. Co. v. Tankovitch, 776 F. Supp. 1394 (N.D. Cal. 1991) ............................................. 7 Aztar Corp. v. MGM Casino, No. NO. 00-833-A, 2001 WL 939070 (E.D. Va. Apr. 9, 2001)........................................ 16 Bancroft & Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082 (9th Cir. 2000) ........................... 9 Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) ............................................................ 9, 11 Data Disc, Inc. v. Sys. Tech. Assocs., Inc., 557 F.2d 1280 (9th Cir. 1977) .................................. 10 Dr. JKL Ltd. v. HPC IT Educ. Ctr., 749 F. Supp. 2d 1038 (N.D. Cal. 2010) ............................... 15 eAdGear, Inc. v. Liu, No. CV-11-05398 JCS, 2012 WL 2367805 (N.D. Cal. June 21, 2012)............................ 16 eAdGear, Inc. v. Liu, No. CV-11-05398 RMW (JCS), 2012 WL 4005454 (N.D. Cal. Sept. 11, 2012) ............. 16 Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210 (9th Cir. 2003)................................. 16 Gordy v. Daily News, L.P., 95 F.3d 829 (9th Cir. 1996)................................................................. 9 Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 (1984)..................................... 9 Int’l Bancorp, L.L.C. v. Societe des Baines de Mer et du Cercle des Etrangers a Monaco, 192 F. Supp. 2d 467 (E.D. Va. 2002)................................................................................ 16 K & N Eng’g, Inc. v. Bulat, 510 F.3d 1079 (9th Cir. 2007) .......................................................... 16 Louis Vuitton Malletier S.A. v. LY USA Inc., 676 F.3d 83 (2d Cir. 2012) .................................... 16 Menken v. Emm, 503 F.3d 1050 (9th Cir. 2007) ........................................................................... 12 Nissan Motor Co. Ltd. v. Nissan Computer Corp., 89 F.Supp.2d 1154 (C.D. Cal. 2000)............ 12 Partners for Health & Home, L.P. v. Seung Wee Yang, 488 B.R. 431 (C.D. Cal. 2012) ............. 16 Roth v. Garcia Marquez, 942 F.2d 617 (9th Cir. 1991)................................................................ 10 Sidco Indus. Inc. v. Wimar Tahoe Corp., 768 F. Supp. 1343 (D. Or. 1991) ................................. 11 Sinatra v. Nat’l Enquirer, Inc., 854 F.2d 1191 (9th Cir. 1988) .................................................... 12 Stomp, Inc. v. NeatO, LLC, 61 F. Supp. 2d 1074 (C.D. Cal. 1999) ........................................ 10, 11 T.M. Hylwa, M.D., Inc. v. Palka, 823 F.2d 310 (9th Cir. 1987) ............................................. 11, 12 TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d 915 (9th Cir. 1987)............................................... 3, 7 Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 4 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -ii- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) .............................................. 11 STATUTES 15 U.S.C. § 1114 ....................................................................................................................... 5, 12 15 U.S.C. § 1114(1)(a) .................................................................................................................. 15 15 U.S.C. § 1116 ........................................................................................................................... 13 15 U.S.C. § 1116(d) ...................................................................................................................... 15 15 U.S.C. § 1116(d)(1)(B)(i)......................................................................................................... 14 15 U.S.C. § 1117(a)....................................................................................................................... 16 15 U.S.C. § 1117(c)................................................................................................................. 15, 16 15 U.S.C. § 1117(c)(2) .................................................................................................................. 15 15 U.S.C. § 1117(d) ...................................................................................................................... 15 15 U.S.C. § 1125(a)....................................................................................................... 5, 12, 13, 16 15 U.S.C. § 1125(d) ............................................................................................................ 5, 12, 14 15 U.S.C. § 1125(d)(1).................................................................................................................. 16 15 U.S.C. § 1125(d)(1)(C) ............................................................................................................ 14 28 U.S.C. § 1331 ............................................................................................................................. 8 28 U.S.C. § 1338 ............................................................................................................................. 8 28 U.S.C. § 1338(b) ........................................................................................................................ 8 28 U.S.C. § 1367 ............................................................................................................................. 8 28 U.S.C. § 1391(b)(2).................................................................................................................. 12 CAL. BUS. & PROF. CODE § 17200 ................................................................................ 5, 12, 13, 14 CAL. BUS. & PROF. CODE § 17500 ................................................................................ 5, 12, 13, 14 CAL. BUS. & PROF. CODE § 17535 ................................................................................................ 14 CAL. CODE CIV. PROC. § 410.10...................................................................................................... 9 RULES Fed. R. Civ. P. 55 ............................................................................................................................ 7 Fed. R. Civ. P. 55(a).................................................................................................................... 7, 8 Fed. R. Civ. P. 55(b)........................................................................................................................ 7 Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 5 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -iii- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT Fed. R. Civ. P. 55(b)(2) ................................................................................................................... 1 N.D. Cal. Civil L.R. 54 ................................................................................................................. 16 Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 6 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -1- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT NOTICE OF MOTION AND MOTION PLEASE TAKE NOTICE that on Friday, May 2, 2014, at 10:00 a.m. in Courtroom 1, 17th floor, United States District Courthouse, 450 Golden Gate Avenue, San Francisco, California 94102, before the Honorable Samuel Conti, Plaintiff Ploom, Inc. (“Plaintiff” or “Ploom”) will and hereby does move, pursuant to Federal Rule of Civil Procedure 55(b)(2), for a default judgment against defendants iPloom, LLC (“iPloom”) and Anthony Marino (“Marino”) (collectively “Defendants”). Plaintiff seeks a default judgment against Defendants pursuant to Federal Rule of Civil Procedure 55(b)(2) due to Defendants’ failure to respond to Plaintiff’s Complaint (Docket [“Dkt.”] 1); Defendants’ failure to appear or participate in this case; and the Clerk’s February 6, 2014 entry of default against both Defendants (Dkt. 18). Plaintiff is entitled to a default judgment, permanent injunction, and award of statutory damages and attorney’s fees and costs against Defendants under Rule 55(b)(2) in the manner and form submitted herewith in Plaintiff’s [Proposed] Default Judgment and Order (“Proposed Order”). This motion is based upon this Notice of Motion; the Memorandum of Points and Authorities in support thereof; the declaration of Riana S. Pfefferkorn (“Pfefferkorn Decl.”) and attached exhibits filed concurrently herewith; the pleadings, records, and papers on file in this action; oral argument of counsel; and any other matters properly before the Court. STATEMENT OF ISSUES 1. Is Plaintiff entitled to an order entering a default judgment, permanent injunction, an award of statutory damages and attorney’s fees, and transfer of an infringing domain name against Defendants iPloom, LLC and Anthony Marino? Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 7 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -2- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION This case is about willful trademark and trade dress infringement, cybersquatting, and unfair competition. Plaintiff Ploom, a San Francisco-based maker of electric vaporizers,1 has built up a reputation and goodwill in its products through years of product development and promotion, and has federal and common-law rights in its trademarks and trade dress. Defendant Marino and his company (Defendant iPloom) have willfully misappropriated and used Plaintiff’s marks and trade dress, and confusingly similar marks and trade dress, in connection with the marketing and sale of inferior counterfeit versions of Plaintiff’s products, and continue to do so. Defendants market and sell these counterfeit goods through a website (the “Infringing Website”) with a domain name (the “Infringing Domain Name”) that is confusingly similar to Plaintiff’s PLOOM mark. Plaintiff brought this lawsuit in order to curtail the harm it has suffered and continues to suffer through Defendants’ deliberate and ongoing efforts to capitalize unlawfully on its success. Defendants have not answered or otherwise responded to the Complaint and have never appeared in this action, and thus have been placed in default. Plaintiff now seeks a default judgment against Defendants on the claims alleged in the Complaint. By this motion, Plaintiff seeks to recover relief sought in the Complaint, specifically:  statutory damages for Defendants’ use of multiple infringing and counterfeit marks applied to multiple counterfeit goods;  statutory damages for Defendant’s cybersquatting;  transfer of Defendants’ infringing domain name to Plaintiff;  a permanent injunction against Defendants to terminate their unlawful conduct; and  costs and attorney’s fees for Defendants’ willful infringement and cybersquatting. 1 Electric vaporizers, such as those Ploom develops and sells, are an emerging category of devices that can heat tobacco, nicotine (as in the case of e-cigarettes), or other compounds to a (continued...) Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 8 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -3- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT II. FACTUAL AND PROCEDURAL BACKGROUND The following facts are set forth in Plaintiff’s Complaint and established as true by the Clerk’s entry of default. See TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d 915, 917-18 (9th Cir. 1987). Plaintiff Ploom and its Trademarks/Trade Dress. Plaintiff Ploom is located in San Francisco. Dkt. 1 at ¶ 8. It develops and sells electric vaporizers, including its most popular product, the PAX electric vaporizer (“PAX Vaporizer”), as well as a variety of replacement parts, accessories, and tobacco branded with Plaintiff’s PLOOM trademark. Id. at ¶¶ 13-15. Plaintiff sells its products throughout the United States and abroad, exclusively through authorized resellers and through its website at (the “Ploom Website”), which receives over 5,000 unique visitors a day. Id. at ¶¶ 14, 27. Plaintiff has common-law rights in the trademarks PLOOM, PLOOM (stylized), PAX, PAX (stylized), and the X Design, and in the distinctive, well-recognized trade dress of the PAX Vaporizer (the “PAX Trade Dress”). Id. at ¶¶ 17-32 & Exs. A-F. Plaintiff has obtained and owns federal trademark registrations on the principal register of the United States Patent and Trademark Office (“USPTO”) for several of these marks: Plaintiff’s PLOOM, PLOOM (stylized), and PAX marks. Id. at ¶¶ 17, 18, 21-23 & Exs. A- E. Plaintiff has filed an application with the USPTO to register its X Design mark. Id. at ¶¶ 24-25 & Ex. F. Plaintiff has invested substantial financial and other resources in establishing the goodwill of these marks and promoting its products, including its investments in establishing the Ploom Website to promote and sell its products utilizing these marks. Id. at ¶¶ 26, 32. Plaintiff has been continuously and exclusively using the PLOOM and PLOOM (stylized) marks in commerce in the U.S. since at least early 2009, and has been continuously and exclusively using the PAX, PAX (stylized), and X Design marks in commerce in the U.S. since at least July 2012. Id. at ¶¶ 17, 21, 24. These marks have become distinctive identifiers of goods offered by (...continued from previous page) temperature which is below the point of combustion, but which allows the compounds to be vaporized and inhaled. See Dkt. 1 at ¶ 1. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 9 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -4- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT Plaintiff as a result of this continuous and exclusive use and Plaintiff’s substantial marketing and promotional efforts. Id. at ¶¶ 17, 21, 24, 32. Defendants’ Infringing Use of Plaintiff’s Marks. Defendants are citizens of Massachusetts. Id. at ¶¶ 9-10. They operate an e-commerce website under the trade name iPloom (the “Infringing Website”) at the Internet domain name . Defendants advertise and sell counterfeit versions of Plaintiff’s PAX-branded vaporizer on the Infringing Website. Id. at ¶ 16. Defendant Marino registered the Infringing Domain Name in September 2013, long after Plaintiff had begun using its marks in commerce. Id. at ¶ 34. Defendants have advertised and sold two types of infringing vaporizers from the Infringing Website. The first type bears the marks “Pax” and “Pax II,” and is referenced in Defendants’ marketing materials as “Pax” or “Pax II” or “New Pax” (the “iPloom Pax”). It is designed to closely resemble the appearance of the genuine PAX Vaporizer. The second type bears the marks “Pax” and “Ploom,” including stylized versions of the PAX and PLOOM marks that are identical to Plaintiff’s stylized versions of its PAX and PLOOM marks (the “Counterfeit Pax”). The Counterfeit Pax also bears a mark identical to Plaintiff’s X Design mark. The Counterfeit Pax appears virtually identical to the genuine Pax Vaporizer, and is sold in packaging that is virtually identical to the genuine Pax Vaporizer packaging. Id. at ¶¶ 16, 33, 35- 36, 42, 45, 46 & Exs. G, H. Defendants use or have used the marks IPLOOM, PLOOM, PLOOM (stylized), PAX, PAX (stylized), and the X Design mark on the Infringing Website in connection with the marketing and sale of the Counterfeit Pax and the iPloom Pax. Id. at ¶ 33 & Ex. G. These marks are confusingly similar or identical to Plaintiff’s marks. Id. at ¶ 1. The trade dress of the iPloom Pax is confusingly similar to the PAX Trade Dress, including in its size, shape, and color. The Counterfeit Pax trade dress is virtually identical to the PAX Trade Dress, including in its size, shape, color, and use of a cutout in the vaporizer housing in the shape of the X Design. Id. at ¶¶ 39-46 & Exs. G, H. Defendants also use or have used the IPLOOM mark to market other products, including tobacco and liquids for use in electronic cigarettes/vaporizers, on the Infringing Website. Id. at ¶¶ 47-48 & Ex. G. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 10 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -5- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT Plaintiff never authorized Defendants to use its trademarks or trade dress. Id. at ¶ 49. Defendants target the same California and U.S. consumers that Plaintiff targets by using confusingly similar marks and trade dress, in order to intentionally create consumer confusion and benefit from the goodwill Plaintiff has built up in its marks, trade dress, website, and products. This causes harm to Plaintiff. Id. at ¶¶ 49-53. Defendants purposefully direct their marketing and sales activities to California, and cause harm they know will likely be suffered by Plaintiff in California. Id. at ¶¶ 38, 43, 53. When confronted with the similarities between Plaintiff’s marks and Defendants’ marks, Defendant Marino laughed and said, “All’s fair in love and war,” and added that he was awaiting the delivery of 10,000 more iPloom Pax units in the near future. Id. at ¶ 37. The Current Lawsuit. By this lawsuit, Plaintiff seeks to end Defendants’ unlawful activities. Plaintiff’s Complaint includes the following causes of action: (1) Infringement of Registered Trademarks under the Lanham Act, 15 U.S.C. § 1114; (2) Federal Unfair Competition, False Representation and False Designation of Origin under Lanham Act § 43(a), 15 U.S.C. § 1125(a); (3) Violation of the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d); (4) Unlawful Business Practices under Cal. Bus. & Prof. Code § 17200 et seq.; (5) False Advertising under Cal. Bus. & Prof. Code § 17500 et seq.; (6) Common-Law Trademark and Trade Dress Infringement; and (7) Common-Law Unfair Competition. Plaintiff filed the Complaint on December 16, 2013. Dkt. 1; Pfefferkorn Decl., ¶ 3. The summons for Defendants issued two days later. Dkt. 7; Pfefferkorn Decl., ¶ 4. Plaintiff served the summons and a copy of the Complaint on each Defendant on December 24, 2013, and filed proofs of service of process on each Defendant with this Court on December 26, 2013. Dkt. 9- 10; Pfefferkorn Decl., ¶¶ 5-6. Defendant Marino is not a minor, incompetent, or abroad in active military service. See Dkt. 16-1, ¶¶ 14-16; Pfefferkorn Decl., ¶ 7. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 11 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -6- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT Defendants’ answer or motion in response to the Complaint was due no later than January 14, 2014. Pfefferkorn Decl., ¶ 8. To date, neither Defendant has filed an answer or any other response to the Complaint. Id., ¶ 9. On February 4, 2014, Plaintiff sought entry of default against Defendants, and served a copy of its request on Defendants the same day. Dkt. 16-17; Pfefferkorn Decl., ¶¶ 10-11. On February 6, 2014, the Clerk entered default in this case against both Defendants. Dkt. 18; Pfefferkorn Decl., ¶ 12. Since filing suit, Plaintiff’s counsel has had no communication with Defendants. Pfefferkorn Decl., ¶ 14. Yet Defendants are and have been on notice of this lawsuit and of the claims asserted by Plaintiff against them: Plaintiff’s counsel served Defendant Marino, as an individual and as agent for service of process of Defendant iPloom, with copies of the Complaint, Plaintiff’s request for entry of default, and the resulting Clerk’s notice entering default against them. Dkt. 9, 10, 17, 20; Pfefferkorn Decl., ¶¶ 2, 5, 11, 13; Pfefferkorn Decl. Exhibit (“Exh.”) A (corporate registration for Defendant iPloom listing Defendant Marino as its registered agent). An Injunction Is Required to Stop Defendants’ Infringement. Defendants’ awareness of the lawsuit has not caused them to cease or even reduce their infringing conduct; if anything, they have stepped up their infringement in the face of Plaintiff’s efforts to stop it. For instance, since the filing of the action, Defendants have engaged in a pattern of shifting from one Internet domain name to another in order to escape Plaintiff’s efforts to shut down their infringing sales. Pfefferkorn Decl., ¶ 16. It has been a frustrating “whack-a-mole” effort: each time Plaintiff takes action to suspend a website where Defendants sell infringing goods, they register a new domain name and start another such website. After Plaintiff submitted a takedown request to Defendants’ web hosting provider for the Infringing Website on or about January 22, 2014, the hosting provider notified Defendants of Plaintiff’s complaint and temporarily took the Infringing Website offline. Id., ¶ 17. While the Infringing Website was down, Defendant Marino registered a second domain name, , from which Defendants continued to offer for sale counterfeit PAX Vaporizers. Id., ¶ 18. The Infringing Website was restored on or about February 3, 2014. Id., ¶ Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 12 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -7- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 19. As of the date of this filing, Defendants continue to use the original Infringing Website to offer for sale counterfeit PAX Vaporizers using Plaintiff’s trademarks and trade dress. Id. In addition, since early February, Defendants have registered at least two more domain names, and , and set up new websites at those domain names from which they have offered counterfeit PAX Vaporizers for sale using Plaintiff’s trademarks and trade dress. Id., ¶ 20. Defendants have also engaged in an email advertising campaign marketing counterfeit PAX Vaporizers in connection with at least one of these new websites. Id., ¶ 21. Plaintiff has recently submitted trademark complaints to the website hosting providers for these new websites in an attempt to suspend Defendants’ infringing activities through those channels; Defendant Marino has already switched hosting providers for at least one recently-created website. Id., ¶¶ 24-25. Defendants’ ongoing marketing and sale of counterfeit products following the initiation of this lawsuit and following entry of default underscore Plaintiff’s pressing need for a court judgment enjoining Defendants from further engaging in the unlawful conduct alleged in the Complaint. Accordingly, Plaintiff seeks a default judgment on the claims asserted in the Complaint and relief consisting of a permanent injunction, the transfer of the Infringing Domain Name to Plaintiff, and statutory damages and attorney’s fees, in the manner and form set forth below and submitted herewith. III. ARGUMENT A. Legal Standard for Default Judgment Under Federal Rule of Civil Procedure 55, defendants who “have failed to plead or otherwise defend” shall be found to be in default by the Clerk of the Court. Fed. R. Civ. P. 55(a). Once default has been entered by the Clerk, the plaintiff may apply for a default judgment. Fed. R. Civ. P. 55(b). On a motion for default judgment, the factual allegations of the Complaint, except those relating to damages, are taken as true. See TeleVideo Sys., 826 F.2d at 917-18; Allstate Ins. Co. v. Tankovitch, 776 F. Supp. 1394, 1399 (N.D. Cal. 1991). Here, accordingly, entry of default by the Clerk establishes Defendants’ liability, and only the question of relief remains. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 13 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -8- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT B. Default Against the Defendants Was Properly Entered Pursuant to Federal Rule of Civil Procedure 55(a), a clerk must enter a party’s default “[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.” Fed. R. Civ. P. 55(a). Plaintiff served the summons and a copy of the Complaint on both Defendants on December 24, 2013. Dkt. 9-10; Pfefferkorn Decl., ¶ 5. Plaintiff thus effectuated proper service on Defendants Marino and iPloom. Defendants’ response to the Complaint was due on January 14, 2014. Pfefferkorn Decl., ¶ 8. To date, neither Defendant has filed an answer or any response to the Complaint, nor made any appearance whatsoever in this action. Pfefferkorn Decl., ¶ 9. The Clerk of Court properly entered default against Defendants.2 Plaintiff is now entitled to a default judgment against Defendants, as further explained below. C. Jurisdiction and Venue Are Proper 1. Subject Matter Jurisdiction This Court has subject matter jurisdiction over the first cause of action for infringement of federally registered trademarks under the Lanham Act, pursuant to 28 U.S.C. § 1338, which grants district courts original jurisdiction for actions arising from Acts of Congress related to trademarks. This Court also has subject matter jurisdiction over the first, second, and third causes of action under the federal Lanham Act and the Anticybersquatting Consumer Protection Act, pursuant to 28 U.S.C. § 1331. The Court has supplemental jurisdiction over the remaining state- and common-law causes of action pursuant to 28 U.S.C. § 1367, as the remaining claims are so closely related to the first three causes of action that they form part of the same case or controversy. This Court also has subject matter jurisdiction over the fourth and seventh causes of action for state and common-law unfair competition under 28 U.S.C. § 1338(b), because the unfair-competition claims are joined to a substantial and related trademark claim. 2 Plaintiff subsequently served on Defendants copies of Plaintiff’s request for entry of default and the subsequent notice by the Clerk of Court entering default against them. Dkt. 9, 10, 17, 20; Pfefferkorn Decl., ¶¶ 11, 13. Both Defendants are thus on notice of the instant action and of their default status. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 14 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -9- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 2. Personal Jurisdiction California’s long-arm statute, Cal. Code Civ. Proc. § 410.10, extends jurisdiction to the limits of due process. Gordy v. Daily News, L.P., 95 F.3d 829, 831 (9th Cir. 1996). The exercise of jurisdiction over Defendants by this Court comports with due process. Given California’s “manifest interest” in providing its residents “with a convenient forum for redressing injuries inflicted by out-of-state actors,” Defendants may not use the Due Process Clause “as a territorial shield” to avoid being held to account in California for consequences proximately caused here by their voluntary interstate activities from which they “purposefully derive benefit.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 473-74 (1985). Defendants may therefore be held accountable in this District for the harm they caused here by their voluntary interstate sales and marketing activities, through the Infringing Website and otherwise. The Supreme Court has established two bases for personal jurisdiction: (1) general jurisdiction, which permits the exercise of jurisdiction over all claims, whether or not related to the defendant’s contacts with the state, and (2) specific jurisdiction, which exists when the defendant’s contacts with the forum give rise to the claims asserted by the plaintiff. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984). The Court has both general and specific jurisdiction over Defendants in the case at bar. The Court Has General Jurisdiction over Defendantsa. The exercise of general jurisdiction requires that a defendant’s contacts with the forum be so “continuous and systematic” as to approximate a physical presence in that district. Id. at 415; Bancroft & Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082, 1086 (9th Cir. 2000). What is relevant is whether the “defendant makes sales, solicits, or engages in business in the state, [or] serves the state’s markets.” Bancroft & Masters, 223 F.3d at 1086. Defendants transact and do business in California, including by making sales and engaging in marketing activities in California, including over the phone, by e-mail, and through the Infringing Website, which is accessible throughout the United States and abroad, including from California and this District. Defendants target the same California consumers that Plaintiff targets. Dkt. 1 at ¶¶ 5, 37, 38, 43, Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 15 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -10- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 44, 49. In sum, Defendants’ activities in California combine to constitute “continuous and systematic” business contacts with the forum. The Court Has Specific Jurisdiction over Defendantsb. Specific jurisdiction requires (1) that the defendant did some act or consummated some transaction in the district by which it purposefully availed itself of the privilege of conducting activities in the district; (2) that the plaintiff’s claims arise out of that activity; and (3) that the Court’s exercise of jurisdiction is reasonable. Data Disc, Inc. v. Sys. Tech. Assocs., Inc., 557 F.2d 1280, 1287 (9th Cir. 1977). Plaintiff’s allegations and supporting evidence in the Complaint satisfy all three of the requirements for specific jurisdiction. i. Purposeful Availment Defendants purposefully availed themselves of the benefits of doing business in California by consummating transactions with customers in this District and throughout California, while knowingly harming Plaintiff’s San Francisco-based business, reputation, and goodwill in California and this District. Defendants use means including the Infringing Website to sell, falsely advertise, and pass off their inferior counterfeit products as authentic Ploom products in California. E.g., Dkt. 1 at ¶¶ 5, 6, 38, 43, 53, 97, 111 & Ex. G. The Infringing Website supports the exercise of personal jurisdiction here. “By advertising and offering its products for sale via the internet, [a defendant] has placed its products into the stream of commerce intending that they would be purchased by consumers with access to the Web, including California citizens.” Stomp, Inc. v. NeatO, LLC, 61 F. Supp. 2d 1074, 1078 (C.D. Cal. 1999). Defendants intended for consumers in California (and throughout the country) to place orders by credit card through the Infringing Website, and consumers in California and throughout the country have in fact done so. Dkt. 1 at ¶¶ 5, 6, 38, 43 & Ex. G. Defendants’ infringing activities likewise support the exercise of jurisdiction. In tort actions such as this, specific jurisdiction is established if the defendant engages in an act that has an effect in the forum, even if the act itself takes place outside the forum. Roth v. Garcia Marquez, 942 F.2d 617, 621 (9th Cir. 1991). The effects of trademark violations occur in the forum where the infringing goods or services are offered, because that is where the confusion or Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 16 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -11- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT injury to business reputation occurs and where a plaintiff’s business is harmed. See Sidco Indus. Inc. v. Wimar Tahoe Corp., 768 F. Supp. 1343, 1346-47 (D. Or. 1991) (“The cause of action for a trademark violation arises in the place where the confusion is likely to occur”). Defendants use the Infringing Website to purposefully direct to California consumers their marketing and sales activities for counterfeit products bearing marks and trade dress that Defendants know infringe Plaintiff’s marks and trade dress. E.g., Dkt. 1 at ¶¶ 5, 37, 52, 53, 111. This satisfies the purposeful availment requirement necessary for specific personal jurisdiction.3 ii. Plaintiff’s Claims Arise from Defendants’ Activities As noted, Plaintiff is based in this District, and Defendants offer, sell, falsely advertise, and pass off their trademark-infringing goods as authentic Ploom products in this District. Therefore, the harm to Plaintiff’s business, reputation, and goodwill occurs here and Plaintiff’s claims arise in this District. iii. Personal Jurisdiction in This District Is Reasonable Once purposeful availment is established, jurisdiction is presumptively reasonable, see T.M. Hylwa, M.D., Inc. v. Palka, 823 F.2d 310, 315 (9th Cir. 1987), and the burden is on the defendant to defeat jurisdiction by “present[ing] a compelling case that the presence of some other considerations would render jurisdiction unreasonable.” Burger King, 471 U.S. at 477. Defendants have not appeared and thus have presented no such arguments. Accordingly, the exercise of personal jurisdiction over Defendants in this action is presumed to be reasonable.4 In sum, the Court may properly exercise personal jurisdiction over Defendants in this action. 3 While Defendants are located in Massachusetts, not California, physical presence in a district is not necessary to establish purposeful availment. See World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297-98 (1980) (noting that a “forum State does not exceed its powers under the Due Process Clause if it asserts personal jurisdiction over a corporation that delivers its products into the stream of commerce with the expectation that they will be purchased by consumers in the forum State”); Stomp Inc. v. NeatO, LLC, 61 F. Supp. 2d 1074, 1078 (C.D. Cal. 1999) (purposeful availment prong met based upon website and sales in forum). 4 A reasonableness analysis would fully support the presumption of reasonableness. The following factors are considered: (1) the extent of the defendant’s purposeful interjection into the forum state; (2) the burden on the defendant of defending in the forum; (3) the plaintiff’s interest in convenient and effective relief; (4) the most efficient forum for judicial resolution of the dispute; (5) the forum state’s interest in adjudicating the dispute; and (6) the extent of the (continued...) Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 17 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -12- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 3. Venue Pursuant to 28 U.S.C. § 1391(b)(2), venue is proper in “a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred.” As explained more fully above with respect to personal jurisdiction, a substantial part of Defendants’ conduct that gave rise to Plaintiff’s trademark and trade dress infringement, false advertising, unfair competition, and related claims occurred in this District. Thus, venue is proper in this District. D. Plaintiff Is Entitled to Injunctive Relief, Transfer of the Infringing Domain Name, and Statutory Damages The factual allegations of the Complaint, which are now established as true by the Clerk’s entry of default on February 6, 2014, are sufficient to establish, at a minimum, Defendants’ liability for Infringement of Registered Trademarks under the Lanham Act, 15 U.S.C. § 1114; Federal Unfair Competition, False Representation and False Designation of Origin under Lanham Act § 43(a), 15 U.S.C. § 1125(a); Violation of the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d); Unlawful Business Practices under Cal. Bus. & Prof. Code § 17200 et seq.; False Advertising under Cal. Bus. & Prof. Code § 17500 et seq.; Common-Law Trademark and Trade Dress Infringement; and Common-Law Unfair Competition. As set forth in the Complaint’s prayer for relief, these claims entitle Plaintiff to an injunction against Defendants, as well as statutory damages and the other relief set forth below. (...continued from previous page) conflict with the sovereignty of the defendant’s state. See T.M. Hylwa, M.D., Inc. v. Palka, 823 F.2d 310, 315 (9th Cir. 1987). Defendants, both Massachusetts citizens, purposefully directed their business activities toward California, harming Plaintiff here. The burden on Defendants is reasonable given “the advances in transportation and telecommunications and the increasing interstate practice of law.” Menken v. Emm, 503 F.3d 1050, 1060 (9th Cir. 2007) (internal quotation marks omitted). There is no apparent conflict with the sovereignty of Massachusetts, as California has a strong interest in allowing a local Plaintiff to seek redress here for injuries caused here by Defendants’ acts, which affected not just Plaintiff, but California consumers as well. See Sinatra v. Nat’l Enquirer, Inc., 854 F.2d 1191, 1200 (9th Cir. 1988); see also Nissan Motor Co. Ltd. v. Nissan Computer Corp., 89 F.Supp.2d 1154, 1161 (C.D. Cal. 2000) (“California has a strong interest in protecting its citizens from trademark infringement and consumer confusion”). Even if an alternative forum exists, this is a convenient forum for the adjudication of the matter, as Plaintiff is based here, California is the likely location of many witnesses and sources of evidence, and the Infringing Website is equally accessible from here as from any other forum. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 18 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -13- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 1. Plaintiff Is Entitled to a Permanent Injunction Federal and Common-Law Trademark and Trade Dress Infringementa. Defendants infringe Plaintiff’s trademarks and trade dress by using in commerce (1) marks identical or confusingly similar to (a) Plaintiff’s federally-registered PLOOM, PLOOM (stylized), and PAX marks and (b) Plaintiff’s PAX (stylized) and X Design marks; (2) the IPLOOM mark, which is confusingly similar to Plaintiff’s federally-registered PLOOM mark; (3) trade dress that is confusingly similar to Plaintiff’s PAX Trade Dress; and (4) the Infringing Domain Name, to market and sell counterfeit products in a manner that is likely to cause confusion, deception or mistake among consumers. Plaintiff has therefore established the elements of its first and sixth causes of action. It is entitled to an injunction against Defendants pursuant to 15 U.S.C. § 1116. Violation of Lanham Act § 43(a); Common-Law Unfair Competitionb. By marketing and selling counterfeit products and passing them off as authentic Ploom products, Defendants are making materially false representations of fact and are using in commerce trademarks and trade dress highly similar or identical to Plaintiff’s trademarks and trade dress, in a manner that causes or is likely to cause confusion, mistake, deception, or misunderstanding as to source, origin, sponsorship, affiliation, or approval of Defendants’ goods. Such conduct constitutes federal and common-law unfair competition as well as false representation and false designation of origin in violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)). Plaintiff has therefore established the elements of its second and seventh causes of action. It is entitled to an injunction against Defendants pursuant to 15 U.S.C. § 1116. Unlawful Business Practices and False Advertising (CAL. BUS. & PROF. CODEc. §§ 17200 & 17500) Defendants’ use of marks and trade dress confusingly similar or identical to Plaintiff’s marks and trade dress on the Infringing Website, in Defendants’ marketing and sales materials Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 19 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -14- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT (such as e-mails to iPloom customers), and on materials such as packaging and user guides for Defendants’ counterfeit products, constitutes unlawful and unfair business practices in violation of Cal. Bus. & Prof. Code § 17200. This conduct also constitutes unfair, deceptive, untrue, or misleading advertising in violation of Cal. Bus. & Prof. Code § 17500. Defendants’ use of these marks in connection with offers to sell their counterfeit goods is disseminated to and received by the public in California via the Infringing Website. Plaintiff has therefore established the elements of its fourth and fifth causes of action. It is entitled to an injunction against Defendants pursuant to Cal. Bus. & Prof. Code §§ 17200 and 17535. 2. Plaintiff Is Entitled to Transfer of the Infringing Domain Name Under the Anticybersquatting Consumer Protection Act (ACPA) Long after Plaintiff established its rights in its federally-registered PLOOM mark, Defendant Marino registered the Infringing Domain Name, . The Infringing Domain Name is confusingly similar to Plaintiff’s distinctive PLOOM mark. Defendants have used and continue to use the Infringing Domain Name in order to market and sell counterfeit Ploom products, with the intent to divert consumers seeking Plaintiff’s goods for Defendants’ own commercial gain. Plaintiff has therefore established the elements of its third cause of action for violation of the ACPA, 15 U.S.C. § 1125(d). It is entitled to an order for the transfer of the Infringing Domain Name to Plaintiff pursuant to 15 U.S.C. § 1125(d)(1)(C). 3. Plaintiff Is Entitled to Statutory Damages The factual allegations of the Complaint (established as true by the Clerk’s entry of default) are also sufficient to establish Plaintiff’s entitlement to statutory damages for (1) Defendants’ use of counterfeit marks as defined in 15 U.S.C. § 1116(d)(1)(B)(i) in connection with the marketing and sale of (a) the iPloom Pax product and (b) the Counterfeit Pax product, and (2) Defendants’ violation of the ACPA, 15 U.S.C. § 1125(d). Statutory Damages for Willful Use of Counterfeit Marks to Market and Sella. iPloom Pax and Counterfeit Pax Plaintiff’s PLOOM, PLOOM (stylized), and PAX marks are in use and are registered on the principal register of the USPTO. Defendants have used counterfeits of these marks in Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 20 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -15- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT connection with the sale and offering for sale of the infringing iPloom Pax and the Counterfeit Pax. These uses of the counterfeit marks (as defined in 15 U.S.C. § 1116(d)) cause or are likely to cause confusion, mistake, or deception, in violation of 15 U.S.C. § 1114(1)(a). Accordingly, Plaintiff is entitled to statutory damages pursuant to 15 U.S.C. § 1117(c) for (1) each of the marks PLOOM and PAX in connection with the iPloom Pax, and (2) each of the marks PLOOM, PLOOM (stylized), and PAX in connection with the Counterfeit Pax. Furthermore, Plaintiff is entitled to increased statutory damages because Defendants’ use of these counterfeit marks was willful. “Willful infringement occurs when the defendant knowingly and intentionally infringes on a trademark. . . . Willfulness can also be inferred from a defendant’s failure to defend.” Dr. JKL Ltd. v. HPC IT Educ. Ctr., 749 F. Supp. 2d 1038, 1050- 51 (N.D. Cal. 2010) (internal citations omitted) (finding willfulness where defendant’s infringing conduct was likely to confuse, mistake, or deceive customers and defendant “fail[ed] to comply with the judicial process or to participate in a meaningful way” in the case). Here, Defendants have not appeared, and their infringements are knowing and intentional: Defendant Marino has openly acknowledged that he knows “all about” Plaintiff but is not affiliated with Plaintiff, and laughed and said “All’s fair in love and war” when asked about the similarities between Plaintiff’s marks and Defendants’ marks. Dkt. 1 at ¶ 37. Accordingly, Plaintiff is entitled to a finding of willfulness and a heightened award of statutory damages pursuant to 15 U.S.C. § 1117(c)(2). Statutory Damages for Infringing Domain Nameb. With a bad-faith intent to profit from Plaintiff’s PLOOM mark, Defendants registered and use the Infringing Domain Name , which is confusingly similar to Plaintiff’s distinctive PLOOM mark. Plaintiff is therefore entitled to statutory damages pursuant to 15 U.S.C. § 1117(d) for the registration and use of the Infringing Domain Name in violation of 15 U.S.C. § 1125(d)(1). Defendants’ willfulness, as discussed above, merits a damages amount at the upper end of the statutory damages range. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 21 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -16- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT 4. Plaintiff Is Entitled to Attorney’s Fees The Lanham Act permits the recovery of reasonable attorney’s fees by a prevailing plaintiff in “exceptional cases.” 15 U.S.C. § 1117(a). A trademark case is exceptional where the defendant acted maliciously, fraudulently, deliberately, or willfully. Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir. 2003). For the reasons explained above, Defendants’ conduct in this case was willful and deliberate. Defendants knew of and intended to harm Plaintiff by their infringing activity, and used such means as counterfeit marks, infringing trade dress, false advertising, and the Infringing Domain Name to deceive consumers and compete directly with Plaintiff. The case is therefore exceptional, and Plaintiff is entitled to its attorney’s fees.5 5. Plaintiff Is Entitled to Its Costs Under the Lanham Act, a plaintiff that prevails on an ACPA claim is entitled to costs. 15 U.S.C. § 1117(a); eAdGear, Inc. v. Liu, No. CV-11-05398 JCS, 2012 WL 2367805, at *19-20 (N.D. Cal. June 21, 2012) (magistrate’s report recommending $100,000 maximum statutory damages and costs on ACPA claim), adopted in full, No. CV-11-05398 RMW (JCS), 2012 WL 4005454 (N.D. Cal. Sept. 11, 2012). As explained above, Defendants are liable to Plaintiff on its ACPA claim, and Plaintiff is therefore entitled to an award of costs consistent with Civil Local Rule 54. 5 While an election to receive statutory damages under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under § 1117(b), see K & N Eng’g, Inc. v. Bulat, 510 F.3d 1079 (9th Cir. 2007), Plaintiff is nevertheless entitled to fees on its Lanham Act § 43(a) claims and the ACPA claim. 15 U.S.C. § 1117(a); see Int’l Bancorp, L.L.C. v. Societe des Baines de Mer et du Cercle des Etrangers a Monaco, 192 F. Supp. 2d 467, 490-91 (E.D. Va. 2002) (“exceptional” ACPA cases “warrant[] attorneys’ fees”); Aztar Corp. v. MGM Casino, No. NO. 00-833-A, 2001 WL 939070, at *6 (E.D. Va. Apr. 9, 2001) (awarding both $100,000 statutory damages and attorney’s fees on ACPA claim). And because these other claims are supported by the same proof as that required for its claim for infringement of its registered trademarks, the claims are “inextricably intertwined.” Plaintiff is therefore entitled to “an award of all fees reasonably incurred.” Partners for Health & Home, L.P. v. Seung Wee Yang, 488 B.R. 431, 439-40 (C.D. Cal. 2012) (citing Louis Vuitton Malletier S.A. v. LY USA Inc., 676 F.3d 83 (2d Cir. 2012) (distinguishing K & N Engineering, 510 F.3d 1079)). Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 22 of 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S NOTICE OF MOTION -17- CASE NO.: 13-CV-05813-SC AND MOTION FOR DEFAULT JUDGMENT IV. CONCLUSION For the reasons set forth herein, Plaintiff seeks a permanent injunction, transfer of the infringing domain name, statutory damages, costs, and attorney’s fees in the manner and form submitted herewith in Plaintiff’s Proposed Order. Without such an Order, Plaintiff will continue to suffer significant economic harm, to be unable to protect its professional reputation, to suffer damage to the goodwill it enjoys in its trademarks and trade dress, and to suffer other great and irreparable harm. Since the filing of the Complaint, Defendants have continued and intensified their conduct which Plaintiff seeks to restrain, so the prompt issuance of such an Order is essential to prohibit Defendants from continuing to seriously injure Plaintiff. Accordingly, Plaintiff respectfully requests that the Court grant its Motion for Default Judgment and issue an Order granting Plaintiff the relief requested in the Proposed Order. Respectfully submitted, Dated: March 18, 2014 WILSON SONSINI GOODRICH & ROSATI Professional Corporation By: /s/ Colleen Bal Colleen Bal Riana S. Pfefferkorn Attorneys for Plaintiff PLOOM, INC. Case 3:13-cv-05813-SC Document 21 Filed 03/18/14 Page 23 of 23