Campbell v. Huertas

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CLIVE CAMPBELL, Plaintiff, v. CARLOS HUERTAS, Defendant.

No. 20-CV-3471(KAM)

United States District Court, E.D. New York

February 13, 2023

MEMORANDUM AND ORDER

KIYO A. MATSUMOTO, United States District Judge:

Clive Campbell (“Plaintiff”) commenced this action on July 31, 2020 against Carlos Huertas (“Defendant”), alleging, inter alia violations of the Lanham Act, 15 U.S.C. §§ 1051 et seq. for infringement of the Plaintiff's DJ KOOL HERC registered trademark. (See ECF No. 1 Complaint, (“Compl.”).) Plaintiff's motion for default judgment seeks the following relief for trademark infringement: (1) statutory damages pursuant to 15 U.S.C § 1117; (2) pre-judgment interest at the rate set forth in 26 U.S.C. § 6621(a)(2); (3) attorneys' fees and costs; and (4) injunctive relief preventing Defendant from using Plaintiff's DJ KOOL HERC mark. (See ECF No. 26-1, Plaintiff's Memorandum of Law in Support of Plaintiff's Motion for Default Judgement, (“Pl. Mem.”), at 5-6.)^[1]

For the reasons set forth below, Plaintiff's motion for default judgment is GRANTED in part and DENIED in part. The Court awards Plaintiff (1) $4,000 in statutory damages; (2) costs of $463, (3) post-judgment interest at the rate set forth in 28 U.S.C. § 1961(a), to be calculated from the date judgment is entered until the date of payment; and (4) permanent injunctive relief. The Court denies Plaintiff's application for attorneys' fees and prejudgment interest.

BACKGROUND

I. Factual Background

Where a defendant defaults, a court must accept the plaintiff's well-pleaded factual allegations as true and draw all reasonable inferences in the plaintiff's favor. Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009); Bricklayers & Allied Craftworkers Local 2 v. Moulton Masonry & Constr., LLC, 779 F.3d 182, 187-88 (2d Cir. 2015). The Court consequently accepts Plaintiff's well-pleaded factual allegations as true for the purpose of reviewing his motion for default judgment.

Plaintiff Clive Campbell is “an internationally famous entertainer and disc jockey, born in Jamaica West Indies and currently residing in the United States.” (Compl. ¶ 16.) Plaintiff is widely known under his nickname “DJ Kool Herc” and has “continued to remain an iconic figure in the hip-hop and music industry” since the 1970s. (Id. ¶ 18.) On May 29, 2018, Plaintiff filed a trademark for “DJ KOOL HERC,” which was registered on July 9, 2019. The registration states that the mark “consists of standard characters without claim to any particular font style, size or color.” (See ECF No. 26-5, Ex. B.)

Plaintiff alleges he has been using the “DJ Kool Herc” nickname (the “DJ Kool Herc Mark”) as a trademark throughout the United States, and that he has expended substantial time, money and resources successfully developing, promoting, and advertising this mark and his brand. (Compl. ¶¶ 3, 4, 22.) Plaintiff also alleges that the DJ Kool Herc Mark has been in use “continuously and exclusively,” and that the mark has become famous. (Compl. ¶¶ 5, 23, 30, 33, 34.) Plaintiff further states that he has “entered into licensing and other similar agreements with third parties, for the authorized use of the DJ KOOL HERC mark” for a “variety of goods” sold in commerce. (Pl. Mem. at 6.)

Plaintiff alleges that Defendant has been designing, selling and distributing “various products,” including t-shirts using the KOOL HERC mark, without authorization. (Compl. ¶ 6.) This alleged infringement postdates the first use of the mark by Plaintiff. (Compl. ¶ 37.) Plaintiff contends that Defendant sold these “various products” through various media, platforms, and websites, namely www.rageon.com. (Compl. ¶ 35.) Plaintiff only proffers one example of these “various products,” which is a black t-shirt portraying an individual using turntables. (ECF No. 267, Ex. D at 9.) The portrayed individual has the year “1973” printed on his shirt with the words “HIP-HOP” above and “KOOL HERC” below the individual. (Id.) Plaintiff alleges that he is the individual portrayed on the t-shirt. (Compl. ¶ 6.)

Plaintiff asserts Defendant's products “were of a particular aesthetic not aligned with Plaintiff,” and they are of a “substantially lower quality than the products offered by Plaintiff or his licensees.” (Compl. ¶ 42; Pl. Mem. at 7.) Plaintiff also alleges that the Defendant's use of the trademark has caused confusion, mistake, and deception regarding the source of these goods. (Compl. ¶¶ 43, 45.) Specifically, Plaintiff claims that the Defendant's use was meant to confuse and mislead customers into thinking they were buying products associated with Plaintiff. (Id.)

II. Procedural Background

Plaintiff commenced the instant action on July 31, 2020, and thereafter properly served the Summons and Complaint on Defendant. (ECF No. 5, Summons Issued as to Carlos Huertas; ECF No. 11, Summons Returned Executed [by Plaintiff's Process Server].)

Plaintiff has properly alleged jurisdiction under the Lanham Act, 15 U.S.C. § 1051, and 28 U.S.C. §§ 1331 and 1338(a). Plaintiff has also properly alleged that this court has personal jurisdiction over Defendant pursuant to N.Y. C.P.L.R. § 302(a)(1) and N.Y. C.P.L.R. § 302(a)(3), or in the alternative Fed.R.Civ.P. 4(k), because Defendant regularly conducts, transacts, and solicits business in New York and in this judicial district via his online store, www.rageon.com. (See Compl. ¶ 14.) Venue is proper pursuant to 28 U.S.C. § 1391(b)(2) and (c)(2) as acts giving rise to this complaint occurred within this district. (Id. ¶ 15.)

Although Defendant was properly served on November 11, 2020, he failed to answer, move, or otherwise respond to the Complaint. The Clerk of Court certified Defendant's default on December 10, 2020. (ECF No. 14, Clerk's Entry of Default.) On December 14, 2020, Plaintiff moved for default judgment. (ECF Nos. 16, 17.) In an order dated April 19, 2021, this Court denied Plaintiff's motion without prejudice for failure to serve the Defendant with notice of the motion for default and supporting documents, pursuant to Local Civil Rule 55.2(c), and for failure to prove the alleged damages with reasonable certainty. Plaintiff then filed his second motion for default judgment on May 10, 2021. (ECF Nos. 20, 21.) On September 28, 2021, this Court referred the motion to Magistrate Judge Robert M. Levy.

On February 22, 2022, Judge Levy entered his Report and Recommendation (“R&R”) recommending that Plaintiff's motion for default judgment be granted. Judge Levy further recommended that Plaintiff be awarded statutory damages of $4,000 plus pre-judgment interest; that Defendant be permanently enjoined from infringing Plaintiff's trademark; and that Plaintiff's request for attorney's fees and costs be denied. (ECF No. 23.) No objections were filed to the well-reasoned R&R, however, on March 17, 2022, the Court respectfully declined to adopt the R&R and denied the motion for default judgement without prejudice on procedural grounds: Plaintiff failed to comply again with Local Civil Rule 55.2(c), regarding service of the motion for default judgment and supporting materials on Defendant.

On April 18, 2022, Plaintiff renewed the motion (ECF No. 26, Third Proposed Motion for Default Judgement), and properly complied with Local Civil Rule 55.2(c). (See ECF No. 26-13, Certificate of Service.) To date, Defendant has not answered or otherwise responded to Plaintiff's Complaint or motion for entry of default judgement.

LEGAL STANDARD

Pursuant to Federal Rule of Civil Procedure 55, a movant must complete a two-step process to obtain a default judgment. Rodriguez v. Almighty Cleaning, Inc., 784 F.Supp.2d 114, 123 (E.D.N.Y. 2011); La Barbera v. Fed. Metal &amp Glass Corp., 666 F.Supp.2d 341, 346-47 (E.D.N.Y. 2009).

First, the Clerk of the Court must enter 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); Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 95 (2d Cir. 1993). Second, upon the Clerk's entry of default, the movant “may then make an application for entry of a default judgment, pursuant to Fed.R.Civ.P. 55(b).” Rodriguez, 784 F.Supp.2d at 123. “ ‘The court is to exercise sound judicial discretion' in determining whether the entry of default judgment is appropriate.” Trs. of Local 7 Tile Indus. Welfare Fund v. City Tile, Inc., 2011 WL 917600, at *1 (E.D.N.Y. Feb. 18, 2011) (quoting Badian v. Brandaid Commc'ns Corp., No. 03-CV-2424, 2004 WL 1933573, at *2 (S.D.N.Y. Aug. 30, 2004)), report and recommendation adopted, 2011 WL 864331 (E.D.N.Y. Mar. 10, 2011). “In evaluating a motion for default judgment pursuant to Federal Rule of Civil Procedure 55(b)(2), the [c]ourt must accept as true the well-pleaded allegations in the complaint,” except those relating to damages. Id. at *2 (citing Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d 151, 154-55 (2d Cir. 1999)). Further, the non-defaulting party is “entitled to all reasonable inferences from the evidence offered.” See Mun. Credit Union v. Queens Auto Mall, Inc., 126 F.Supp.3d 290, 295 (E.D.N.Y. 2015) (citing Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61, 65 (2d Cir. 1981)).

Here the Clerk of Court entered default against Defendant on December 10, 2020. (ECF No. 14.) Plaintiff thereafter filed the third successive unopposed motion for default judgment presently before the court. (ECF No. 26.) As noted, the Summons and Complaint were properly served on Defendant (ECF Nos. 5, 11), as was the third motion for default judgement. (ECF No. 26-13, Certificate of Service of the Notice of Motion of Default Judgement and Supporting Materials.) Defendant has neither appeared, nor moved to vacate the Clerk's entry...