United States District Court, S.D. New York
MEMORANDUM OPINION & ORDER
KATHERINE B. FORREST, District Judge.
action commenced with an ex parte application for a
temporary restraining order (“TRO”) and
preliminary injunction in which plaintiff alleged trademark
infringement under 15 U.S.C. §§ 1051 et
seq.; counterfeiting in violation of 15 U.S.C.
§§ 1114(1)(a)-(b), 1116(d), and 1117(b)-(c); false
designation of origin and unfair competition under 15 U.S.C.
§1125(a); copyright infringement under 17 U.S.C.
§§ 101 et seq.; and related state and
common-law claims. (See Compl., ECF No. 6.) The TRO
was granted, and the Court held a duly noticed hearing on
plaintiff's application on February 13, 2017, at which
defendants failed to appear. (ECF No. 4.) The Court
thereafter issued an order to show cause why the TRO should
not be extended, and on March 2, 2017, the Court held a duly
noticed hearing at which defendants again failed to appear.
(EF Nos. 22, 29.) The Court then converted the TRO to a
preliminary injunction and directed plaintiff to move for
summary judgment. (ECF No. 28.) Despite being properly served
with all orders and filings in this matter, defendants have
the Court is plaintiff's unopposed motion for summary
judgment and a permanent injunction. (ECF No. 23). For the
following reasons, the motion is GRANTED.
judgment may not be granted unless a movant shows, based on
admissible evidence in the record, “that there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a). The moving party bears the initial burden of
demonstrating “the absence of a genuine issue of
material fact.” Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). This burden remains even when a
party's motion is unopposed. See Vt. Teddy Bear Co.,
Inc. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir.
2004) (quoting Amaker v. Foley, 274 F.3d 677, 681
(2d Cir. 2001)). In making a determination on summary
judgment, the court must “construe all evidence in the
light most favorable to the nonmoving party, drawing all
inferences and resolving all ambiguities in its favor.”
Dickerson v. Napolitano, 604 F.3d 732, 740 (2d Cir.
2010) (citing LaSalle Bank Nat'l Ass'n v. Nomura
Asset Capital Corp., 424 F>3d 195, 205 (2d Cir.
2005)). In addition, “only admissible evidence need be
considered by the trial court in ruling on a motion for
summary judgment.” Porter v. Quarantillo, 722
F.3d 94, 97 (2d Cir. 2013) (internal quotation marks,
citation and alterations omitted).
Lanham Act action, summary judgment is appropriate
“where the undisputed evidence would lead only to one
conclusion as to whether confusion is likely.”
Louis Vuitton Malletier S.A. v. Sunny Merch. Corp.,
97 F.Supp.3d 485, 492 (S.D.N.Y. 2015) (quoting Medici
Classics Prods. LLC v. Medici Group LLC, 683 F.Supp.2d
304, 308 (S.D.N.Y. 2010)). To prevail on a
trademark-infringement claim, “a plaintiff must
establish that (1) it has a valid mark that is entitled to
protection under the Lanham Act; and that (2) the defendant
used the mark, (3) in commerce, (4) in connection with the
sale or advertising of goods or services, (5) without the
plaintiff's consent” and (6) “that
defendant's use of the 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.” 1-800
Contacts, Inc. v WhenU.com, Inc., 414 F.3d 400, 406-07
(2d Cir 2005) (internal quotations omitted).
the Lanham Act, a trademark owner may elect to recover
statutory damages rather than actual damages, and a court may
award statutory damages of $500 to $100, 000 “per
counterfeit mark per type of goods sold as the court
considers just.” 15 U.S.C. § 1117(c). For willful
infringement, a court may award up to $1, 000, 000 “per
counterfeit mark per type of good as the court considers
just.” Id. Courts in this district have used
the following factors when determining a statutory damages
award: “(1) ‘the expenses saved and the profits
reaped;' (2) ‘the revenues lost by the
plaintiff;' (3) ‘the value of the copyright;'
(4) ‘the deterrent effect on others besides the
defendant;' (5) ‘whether the defendant's
conduct was innocent or willful;' (6) ‘whether a
defendant has cooperated in providing particular records from
which to assess the value of the infringing material
produced;' and (7) ‘the potential for discouraging
the defendant.'” Gucci Am., Inc. v. Duty Free
Apparel, Ltd., 315 F.Supp.2d 511, 520 (S.D.N.Y. 2004)
(quoting Fitzgerald Publ'g Co. v. Baylor Publ'g
Co., 807 F.2d 1110, 1117 (2d Cir. 1986)).
infringement requires the copyright holder to prove
“ownership of a valid copyright, and . . . copying of
constituent elements of the work that are original.”
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 361 (1991). To establish copyright infringement,
plaintiff “must demonstrate that (1) the defendant has
actually copied the plaintiff's work; and (2) the copying
is illegal because a substantial similarity exists between
the defendant's work and the protectable elements of
plaintiff's [work].” Yurman Design, Inc. v. PAJ
Inc., 262 F.3d 101, 110 (2d Cir. 2001). The Copyright
Act also permits copyright holders to elect statutory rather
than actual damages. 17 U.S.C. § 504(c)(1). A court may
award from $750 to $30, 000 per work infringed “as the
court considers just.” Id. For willful
infringement, a court may award statutory damages of
“not more than $150, 000” per work infringed.
have failed to appear or to oppose any of plaintiff's
motions, including the present motion for summary judgment.
Nonetheless, the Court must independently assess whether
plaintiff has met its burden of showing that there are no
triable issues of material fact, even when a motion is
unopposed. Vt. Teddy Bear, 373 F.3d at 244.
Plaintiff has met that burden here.
claims relate to its trademark, copyright, and other
intellectual property rights in a ceramic hair straightening
brush that plaintiff markets under its “SIMPLY
STRAIGHT” registered trademark. (Plaintiff's Rule 56.1
Statement of Undisputed Facts (“Pl. 56.1”)
¶¶ 9-10, ECF No. 25 at 7-8.) Plaintiff alleges that
since October 2014, plaintiff has found over a thousand
listings for counterfeit or infringing products on
defendants' online storefronts hosted at websites such as
Alibaba.com, AliExpress.com, and DHGate.com. (Pl. 56.1
¶¶ 22, 28-31, ECF No. 25 at 10-12.) Through
investigation, plaintiff's counsel determined that each
defendant offered sales of the infringing products to U.S.
customers and offered shipping of the infringing products to
the United States. (Id. ¶¶ 40-50, ECF No.
25 at 14-16.) Additionally, through visual inspection of
defendants' listings for infringing products, plaintiff
confirmed that every defendant was using a counterfeit copy
of plaintiff's SIMPLY STRAIGHT mark on or in connection
with marketing and sales of counterfeit products.
(Id. ¶¶ 40-41.) On these undisputed facts,
the Court finds that defendants' use of counterfeit
copies of plaintiff's mark is likely to cause consumer
confusion. See Fendi Adele S.R.L. v. Filene's
Basement, Inc., 696 F.Supp.2d 368, 383 (S.D.N.Y. 2010).
Ontel is entitled to summary judgment on its trademark
counterfeiting and infringement claims, Ontel is also
entitled to summary judgment on its claims for false
designation of origin, passing off, and unfair competition
under 15 U.S.C. § 1125(a). See Richemont N. Am.,
Inc. v. Linda Lin Huang, No. 12-cv-4443, 2013 WL
5345814, at *14-*16 n.15 (S.D.N.Y. Sep. 24, 2013) (internal
citations omitted) (finding that a claim for unfair
competition under the Lanham Act requires an identical test
to that for infringement); Le Book Publ'g, Inc. v.
Black Book Photography, Inc., 418 F.Supp.2d 305, 312
(S.D.N.Y. 2005) (internal citations omitted) (concluding that
the test for a claim for false designation of origin under
the Lanham Act is virtually the same as the test for
trademark infringement). In addition, because Ontel is
entitled to summary judgment on its Lanham Act claims, it is
also entitled to summary judgment on its state-law claims.
See Samsung Display Co. v Acacia Research Corp., No.
14-cv-1353, 2014 WL 6791603, at *15-*16 (S.D.N.Y. Dec. 3,
2014) (“The analysis applied under § 43(a) of the
Lanham Act, New York common law, and § 349 [and §
350] of the General Business Law is ‘substantially the
same.'” (quoting Avon Products, Inc. v. S.C.
Johnson & Son, Inc., 984 F.Supp. 768, 800 (S.D.N.Y.
has also proffered sufficient uncontroverted facts to support
its claims for copyright infringement. First, it is
undisputed that plaintiff has a valid certificate of
registration for its Simply Straight copyright, which creates
an presumption, here unrebutted, that the copyright is valid.
Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908
(2d Cir. 1980); see also Feist Publ'ns, 499 U.S.
the undisputed facts demonstrate that “the defendant
has actually copied the plaintiff's work, ” and
“a substantial similarity exists between the
defendant's work and the protectable elements of
plaintiff's [work].” Yurman Design, 262
F.3d at 110. Comparison of plaintiff's Simply Straight
work to defendants' works makes clear that defendants
have copied by displaying substantially similar, and
frequently identical, imitations of the works in connection
with marketing and selling counterfeit products. (See,
e.g., Pl. 56.1 ¶¶ 41, 51.) These undisputed
facts, coupled with plaintiff's undisputed significant
and widespread advertising efforts for its Simply Straight
products, (id. ¶¶ 15-18, ECF No. 25 at
8-9), also support the conclusion that defendants had access
to plaintiff's Simply Straight works and, therefore,
support a finding of indirect copying. See P&G v.