Case 5:15-cv-00084-JGB-SP Document 17 Filed 09/08/15 Page 1 of 11 Page ID #:202

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTESGENERAL
Case No.

Date

EDCV 15-0084 JGB (SPx)

September 8, 2015

Title Monster Energy Company v. Mike McNamee

Present: The Honorable

JESUS G. BERNAL, UNITED STATES DISTRICT JUDGE

MAYNOR GALVEZ

Not Reported

Deputy Clerk

Court Reporter

Attorney(s) Present for Plaintiff(s):

Attorney(s) Present for Defendant(s):

None Present

None Present

Proceedings:

Order (1) GRANTING IN PART Plaintiffs Motion for Default Judgment

(Doc. No. 15); and (2) VACATING the September 14, 2015 Hearing (IN
CHAMBERS)

Before the Court is Plaintiffs Motion for Default Judgment against Defendant Mike
McNamee (Defendant). (Motion, Doc. No. 15.) This matter is appropriate for resolution
without a hearing, see Fed. R. Civ. P. 78; L.R. 7-15, and the Court therefore VACATES the
September 14, 2015 hearing. The Court has considered all papers filed in connection with the
Motion, and, for the reasons set forth below, GRANTS IN PART the Motion.
I. BACKGROUND
A. Procedural History
On January 15, 2015, Plaintiff Monster Energy Company (Plaintiff) filed a Complaint
against Defendant Mike McNamee. (Compl., Doc. No. 1.) The Complaint asserts seven
causes of action: (1) trademark infringement and false designation of origin under 15 U.S.C.
1125(a); (2) trademark infringement unfair under 15 U.S.C. 1114; (3) dilution under 15
U.S.C. 1125(c); (4) copyright infringement under 17 U.S.C. 501, et seq.; (5) dilution under
California Business & Professions Code 14247; (6) common law unfair competition; and
(7) statutory unfair competition under California Business & Professions Code 17200, et seq.
(Id.)
The Complaint alleges that Plaintiff is the exclusive owner of several marks associated

with its energy drink, including (1)

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(the Claw Icon Mark), (2) the MONSTER mark,

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and (3) the MONSTER ENERGY mark.1 (Mot. at 2; Compl. 7.) Plaintiff also uses a distinct
trade dress (the MONSTER Trade Dress2). (Mot. at 2; Compl. 7.) In addition, Plaintiff
owns several valid copyright registrations for its Claw Icon Mark. (Compl. 13.) Plaintiff
alleges that Defendant develops, markets, and sells motorcycle decals, graphics, kits, and seat
covers under the name ENJOY MFG. (Id. 25.) The Complaint further alleges that, without
Plaintiffs authorization, Defendant sells decals, motorcycle graphic kits, and motorcycle
accessories (the Accused Products) using Plaintiffs Claw Icon Mark, MONSTER Marks, and
MONSTER Trade Dress and/or using designs confusingly similar to Plaintiffs marks and trade
dress. (Id. 26-27, 31, 35.) Moreover, the Accused Products contain substantial similarities to
Plaintiffs copyrighted designs. (Id. 26.) Plaintiff alleges that Defendant is aware of its
trademarks, trade dress, and copyrights, and that Plaintiff hand-delivered letters to Defendant in
August and September 2014 that demanded Defendant cease his infringement of Plaintiffs
marks and copyrights. (Id. 28-29.) Plaintiff asserts that Defendants infringing activities are
willful and deliberate. (Id. 40.) The Complaint seeks a permanent injunction and monetary
damages. (Compl. at 25-28.)
Plaintiff served Defendant with the summons and Complaint on February 4, 2015. (Doc.
No. 11.) Defendant failed to answer the Complaint. Accordingly, the Clerk entered default
against Defendant on March 30, 2015. (Doc. No. 14.) On August 11, 2015, Plaintiff filed a
Motion for Default Judgment. (Mot., Doc. No. 19.) Defendant did not oppose the Motion.
II. LEGAL STANDARD
Even if entry of default has been made by the court clerk, granting a default judgment is
not automatic; rather, it is left to the sound discretion of the court. PepsiCo v. Triunfo-Mex,
Inc., 189 F.R.D. 431, 432 (C.D. Cal. 1999) (citing Aldabe v. Aldabe, 616 F.2d 1089, 1092 (9th
Cir. 1980)). When exercising its discretion to grant or deny an application for default judgment,
the Court considers the following factors:
(1) the possibility of prejudice to plaintiff if relief is denied; (2) the
sufficiency of the complaint; (3) the substantive merits of the
plaintiffs claim; (4) the amount of money at stake; (5) the
possibility of a dispute as to material facts; (6) whether the default
was the result of excusable neglect; and (7) the strong policy of the
Federal Rules that favors decisions on the merits.
Eitel v. McCool, 782 F.2d 1470, 147172 (9th Cir. 1986) (collectively, the Eitel factors).
Upon a motion for default judgment, all well-pleaded factual allegations are taken as true, see
1

Throughout this order, the second and third marks are referenced collectively as the
MONSTER Marks.
2

The MONSTER Trade Dress is depicted in the Complaint. (See Compl. 7.) The
Complaint describes it as includ[ing] the common elements of a black or black and gray
background, a clawed letter M, a bright contrasting accent color, [and] the word MONSTER
in a white, stylized font. (Compl. 8.)

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DirecTV, Inc. v. Hoa Huynh, 503 F.3d 847, 854 (9th Cir. 2007); Fed. R. Civ. P. 8(b)(6), but
allegations relating to the amount of damages need not be accepted, see Geddes v. United Fin.
Grp., 59 F. 2d 557, 560 (9th Cir. 1977).
III. DISCUSSION
A. Requirements of Local Rule 551
Local Rule 55-1 provides that an application for default judgment must be accompanied
by a declaration in compliance with Federal Rule of Civil Procedure 55(b), which sets forth
(1) when and against what party the default was entered; (2) the identification of the pleading to
which default was entered; (3) whether the defaulting party is an infant or incompetent person,
and if so, whether that person is represented by a general guardian, committee, conservator, or
other representative; (4) that the Servicemembers Civil Relief Act does not apply; and (5) that
notice has been served on the defaulting party if required by Federal Rule of Civil Procedure
55(b)(2).
Plaintiff has satisfied the procedural requirements of Local Rule 55-1. (Mot. at 6-7;
Declaration of Lynda J. Zadra-Symes (Zadra-Symes Decl.) 3-5, Doc. No. 15-3.)
B. Liability
1. Trademark Infringement, False Designation of Origin, and Unfair Competition
Pursuant to Federal Rule of Civil Procedure 8(b)(6), the Court accepts as true the
allegations in the unanswered Complaint and statements in the declarations made in support of
the Motion. See Trs. of the Operating Engrs Pension Trust v. Munson Plumbing, Inc., No.
EDCV 10-00970 VAP, 2011 WL 245732, at *2 (C.D. Cal. Jan. 21, 2011).
Establishing a claim for federal trademark infringement requires a plaintiff to
demonstrate that (1) it owns the trademark at issue, (2) the defendant has used in commerce,
without authorization, a copy, reproduction, counterfeit or colorable imitation of the plaintiffs
mark in connection with the sale, distribution, or advertising of goods and services, and (3) the
defendants use of the mark is likely to cause confusion or mistake or to deceive. See 15 U.S.C.
1114(1)(a); Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988).
Although there are some differences between a claim under Section 1114 (trademark
infringement) and Section 1125(a) (false designation of origin), the analysis under the two
provisions is oftentimes identical. Brookfield Commcns, Inc. v. W. Coast Entmt Corp., 174
F.3d 1036, 1047 n.8 (9th Cir. 1999). Furthermore, the Ninth Circuit has consistently held that
state common law claims of unfair competition and actions pursuant to California Business and
Professions Code 17200 are substantially congruent to claims under the Lanham Act.
Cleary v. News Corp., 30 F.3d 1255, 126263 (9th Cir. 1994). Therefore, the Court jointly
analyzes Plaintiffs trademark infringement, false designation of origin, state statutory unfair
competition, and common law unfair competition claims. See Wecosign, Inc. v. IFG Holdings,
Inc., 845 F. Supp. 2d 1072, 1079 (C.D. Cal. 2012) (analyzing all claims together for purposes of
default judgment).

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Plaintiff has met its burden by sufficiently alleging facts to support the necessary
elements of the federal trademark infringement claim. First, Plaintiff alleges its ownership of the
Claw Icon Mark and MONSTER Marks and includes the registration numbers for its numerous
trademark registrations for those marks. (Compl. 9-10.) Moreover, Plaintiff attached to the
Complaint copies of its trademark registrations. (Compl., Exs. A1 to A26.) Second, the
Complaint alleges that Defendant has, without authorization, used the Claw Icon Mark and
MONSTER Marks in connection with his sale of decals, motorcycle graphic kits, and motorcycle
accessories. (Compl. 26-27, 31, 35.)
The key, third inquiry required to establish trademark infringement is whether an
alleged trademark infringers use of a mark creates a likelihood that the consuming public will be
confused as to who makes what product. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th
Cir. 2008) (citation and internal quotation marks omitted). Evaluating that likelihood involves a
courts consideration of eight non-exhaustive factors (the Sleekcraft factors), the relative
importance of which varies from case to case:
(1) the similarity of the marks; (2) the strength of the plaintiffs
mark; (3) the proximity or relatedness of the goods or services;
(4) the defendant's intent in selecting the mark; (5) evidence of
actual confusion; (6) the marketing channels used; (7) the
likelihood of expansion into other markets; and (8) the degree of
care likely to be exercised by purchasers of the defendants
product.
Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1030 (9th
Cir. 2010) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 34849 (9th Cir. 1979)). As
depicted in the Complaint, the symbols and lettering used by Defendant on his decals and
motorcycle accessories are identical, or virtually identical, to Plaintiffs Claw Icon Mark and
MONSTER Marks. (Compl. 26.) Plaintiffs marks are fairly strong, having been used by
Plaintiff since 2002 in connection with its energy drink brand, stickers/decals, apparel, and
accessories. (Id. 7, 18.) Like Defendant, Plaintiff sells stickers/decals depicting its marks.
(Compl. 16-17.) Plaintiff has continuously marketed its products in a variety of marketing
channels since 2002 and has sold over thirteen billion cans displaying its marks. (Compl. 1819.) Since 2002, Plaintiff has spent approximately $3 billion on marketing and promotions. (Id.)
Marketing efforts include those in magazines and on the internet, point of sale materials, as well
as sponsoring athletes and athletic teams, concert tours, and sporting events around the world.
(Id. 19-22.) Sponsorships include those for motorcycle sports, such as the X Games and the
MONSTER ENERGY AMA Supercross Series. (Id. 20-22; Mot. at 3-4, 11-12.) Plaintiffs
use of the marks is thus closely related to Defendants use of them on decals and motorcycle
accessories. Accordingly, Plaintiff has demonstrated a likelihood of confusion resulting from
Defendants use of Plaintiffs Claw Icon Mark and MONSTER Marks.
In sum, Plaintiff has adequately pleaded its claims for federal trademark infringement,
false designation of origin, and both California statutory and common law unfair competition.

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2. Copyright Infringement
Establishing a claim for copyright infringement, requires a plaintiff to (1) show
ownership of the allegedly infringed material, and (2) demonstrate that the alleged infringer[]
violated[d] at least one exclusive right granted to copyright holders under 17 U.S.C. 106.
A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). Absent direct
evidence of copying, proof of infringement involves fact-based showings that the defendant had
access to the plaintiffs work and that the two works are substantially similar. Three Boys
Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (quoting Smith v. Jackson, 84 F.3d
1213, 1218 (9th Cir. 1996)). Furthermore, one way of demonstrating access to the plaintiffs
work is to show that the work has been widely disseminated. Id. at 482.
First, the Complaint alleges Plaintiffs ownership of valid and enforceable copyrights in
the Claw Icon Mark as well as can art and packaging designs featuring its Claw Icon Mark.
(Compl. 13, 70.) Plaintiff asserts that it has obtained copyright registration numbers
VA 1-727-577, VA 1-737-654, VA 1-749-215, and VA 1-789-900. (Id. 71.) As exhibits, the
Complaint attaches copies of its four copyright registrations. (Compl., Exs. B to E.) The Court
thus finds that Plaintiff has adequately alleged ownership.
Second, the Complaint alleges that Defendant has infringed on Plaintiffs exclusive rights
(pursuant to 17 U.S.C. 106(1)(3) and (5)) by reproducing copies, making derivative works,
distributing copies, and displaying the copyrighted designs. (Compl. 72.) Plaintiff does not set
forth direct evidence of copying and instead alleges Defendants access to its designs as well as
substantial similarity between their designs. Plaintiffs copyrighted designs, particularly its Claw
Icon, have been widely disseminated, and thus Defendants access to the designs can be
presumed. As described above, the designs have appeared in various marketing channels, on
promotional materials, in connection with numerous events, as well as on the over thirteen
billion cans of Plaintiffs energy drinks that have been sold worldwide. (Compl. 16-22.) The
Complaint alleges that Defendant reproduced a design that is identical or substantially similar to
Plaintiffs copyrighted works and directly copied Plaintiffs copyrighted Claw Icon, including by
displaying it on his website and social media site. (Compl. 26, 37-38.) Moreover, the Court
finds that Defendants infringement appears to have been willful; in the very least, Defendant has
been aware of Plaintiffs copyrights since Plaintiff hand-delivered two cease-and-desist letters to
Defendant on approximately August 11, 2014 and September 12, 2014. (Compl. 28-29.)
In sum, Plaintiff has adequately alleged facts to support the necessary elements of its
copyright infringement claim.
3. Trademark Dilution
Plaintiff also asserts trademark dilution claims under both (i) the Federal Trademark
Dilution Act, Section 43(c) of the Lanham Act, 15 U.S.C. 1125, and (ii) California Business &
Professions Code Section 14247. A finding of liability for trademark dilution would afford
Plaintiff[] no greater remedies than a finding of liability for trademark infringement.
Sennheiser Elec. Corp. v. Eichler, No. 12-10809 MMM (PLAx), 2013 WL 3811775, at *3 n.21
(C.D. Cal. July 19, 2013) (citing Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 708 n.6
(9th Cir. 1999); Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 205 n.8 (5th Cir. 1998)
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(declining to discuss federal trademark dilution claim because all remedies sought were available
based on finding of trademark infringement)). The Court need not consider the claim for
trademark dilution because the Court enters default judgment in Plaintiffs favor on its claim for
trademark infringement. Id.
C. Remaining Eitel Factors
After a review of the papers submitted, the Court finds that Plaintiff has properly
supported its Motion, thus satisfying the Eitel factors and entitling it to entry of default
judgment. As noted above, the Eitel factors are as follows:
(1) the possibility of prejudice to plaintiff if relief is denied; (2) the
sufficiency of the complaint; (3) the substantive merits of the
plaintiffs claim; (4) the amount of money at stake; (5) the
possibility of a dispute as to material facts; (6) whether the default
was the result of excusable neglect; and (7) the strong policy of the
Federal Rules that favors decisions on the merits.
Eitel, 782 F.2d at 147172. The Court discusses each factor in turn.
First, Plaintiff would suffer prejudice if the Court does not grant its Motion for Default
Judgment because Defendant will continue to profit from his infringement and Plaintiff will be
deprived of the opportunity to obtain judicial resolution of its claim. (Mot. at 8-9.) As
Defendant has not filed a responsive pleading in this case, Plaintiff will effectively be without a
remedy if default judgment is not granted. See Elektra Entmt Grp. Inc. v. Crawford, 226 F.R.D.
388, 392 (C.D. Cal. 2005).
Second and third, as discussed above, Plaintiff submitted a well-pleaded complaint,
pursuant to Local Rule 551, and its claims appear to have merit. The unopposed evidence
submitted with the Complaint sufficiently supports Plaintiffs substantive claims for trademark
infringement, false design of origin, and unfair competition.
The fourth requirement considers the money at stake. Although entry of default
judgment may not be appropriate where a large sum of money is at stake, Plaintiff[s] requested
relief is not so large or burdensome to necessitate denying the motion on this basis alone.
Broadcast Music, Inc. v. Kiflit, No. 12CV00856LHK, 2012 WL 4717852, at *3 (N.D. Cal.
Oct. 2, 2012). Plaintiff seeks statutory damages in the total amount of $25,000. (Mot. at 17.)
That amount is less than the $30,000 maximum available under 17 U.S.C. 504(c)(1) and well
below the $150,000 maximum for cases involving willful infringement pursuant to 17 U.S.C.
504(c)(2).
The fifth and sixth requirements concern the possibility of a dispute as to material facts
and whether Defendants default was the result of excusable neglect. Defendants failure to file
an answer in this case or a response to the default application supports the conclusion that the
possibility of a dispute as to the material facts is minimal. Given the sufficiency of the
Complaint as well as evidence of Defendants infringement and default, a dispute is unlikely.
See, e.g., Landstar Ranger, Inc. v. Parth Enters., Inc., 725 F. Supp. 2d 916, 921-22 (C.D. Cal.
2010) (Since [plaintiff] has supported its claims with ample evidence, and defendant has made
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no attempt to challenge the accuracy of the allegations in the complaint, no factual disputes exist
that preclude the entry of default judgment.). No evidence of excusable neglect is apparent;
Defendant was personally served with the Complaint and yet failed to respond. Id. at 922; (Mot.
at 17-18; Doc. No. 11). Moreover, Plaintiff served Defendant by mail with its request for entry
of default, (Doc. No. 12-1), and this Motion, (Doc. No. 15-5).
Seventh, although public policy favors a decision on the merits, such a decision does not
appear to be possible in this case because of Defendants failure to litigate.
Having reviewed the Complaint, Plaintiffs Motion, and the evidence submitted in
support thereof, the Court finds that the Eitel factors favor entry of default judgment. The Court
now turns to the reasonableness of the damages and other relief sought by Plaintiff.
D. Requested Relief
In light of Defendants trademark violation, Plaintiff requests two forms of relief from
Defendant: permanent injunctive relief and statutory damages.
A court need not accept as true allegations in a complaint that relate to the amount of
damages and can instead require that those allegations be proven. See Fed. R. Civ. P. 8(b)(6);
Geddes v. United Fin. Grp., 559 F.2d 557, 560 (9th Cir. 1977).
1. Injunctive Relief
Plaintiff seeks a permanent injunction against Defendant, enjoining him from infringing
upon the marks and copyrights at issue in this case.
The Lanham Act gives the Court [p]ower to grant injunctions according to the rules of
equity and upon such terms as the court may deem reasonable, to prevent the violation of a
mark holders rights. 15 U.S.C. 1116(a). In addition, Section 502(a) of the Copyright Act
provides that a court may . . . grant temporary and final injunctions on such terms as it may
deem reasonable to prevent or restrain infringement of a copyright. 17 U.S.C. 502(a). As a
general rule, a permanent injunction will be granted when liability has been established and there
is a threat of continuing violations. MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 520
(9th Cir. 1993). Before the Court will grant a permanent injunction, Plaintiff must show
(1) actual success on the merits; (2) a likelihood of irreparable harm in the absence of injunctive
relief; (3) that the balance of equities tips in its favor; and (4) that an injunction is in the public
interest. See Wecosign, 845 F. Supp. 2d at 1084 (citing Winter v. Natural Res. Def. Council,
Inc., 555 U.S. 7, 19-20 (2008)).
As discussed above, Plaintiff has demonstrated success on the merits of its trademark and
copyright claims. Second, Plaintiff has already suffered, and is likely to continue to suffer,
irreparable harm unless injunctive relief is granted. Defendants infringing activities threaten
Plaintiffs business, goodwill, and reputation. (Mot. at 20; Declaration of Rodney Sacks (Sacks
Decl.) 6, Doc. No. 15-2); see Stuhlbarg Intl Sales Co. v. John D. Brush & Co., 240 F.3d 832,
841 (9th Cir. 2001) ([T]hreatened loss of prospective customers or goodwill certainly supports a
finding of the possibility of irreparable harm.). Continuing infringement appears likely.
Plaintiff alleges that Defendants infringing activities continued after Plaintiff hand-delivered
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two cease-and-desist letters in 2014. (Compl. 28.) Moreover, along with its Motion, Plaintiff
submitted some evidence that Defendants infringing activities continued until at least April 30,
2015. (See Zadra-Symes Decl. 6-7, Exs. A, B.) Weighing the balance of equities, the Court
finds the balance tips in favor of issuance. Plaintiff is only seeking to enjoin illegal activity.
The injunction will not adversely affect any of Defendant[s] legitimate business operations, nor
will [he] suffer any cognizable hardship as a result of its issuance. Conversely, Plaintiff will
suffer harm in the form of disfavor from clients if Defendant[s] activities continue. Phillip
Morris USA Inc. v. Shalabi, 352 F. Supp. 2d 1067, 1075 (C.D. Cal. 2004). Because Defendant
continued to infringe after Plaintiff notified him of his infringement, it appears that the balance
of hardships tips in Plaintiffs favor. (Compl. 28; Zadra-Symes Decl. 6-7, Exs. A, B.)
Finally, an injunction is in the public interest because Plaintiff has put considerable time,
effort, and money into its marks and copyrights, which have been used by Plaintiff since
approximately 2002. (Compl. 7, 15-24.) The marks and copyrights have been commonly
associated with Plaintiff, and Plaintiff has made the effort to establish a strong association in the
minds of consumers through advertising and sponsorship of events. (Id.) Defendant has
attempted to mislead the public and benefit from Plaintiffs investments. (Compl. 25-42). As
such, the public has an interest in not being misled as to the source of trademarked goods and
copyrighted items. See State of Idaho Potato Commn v. G & T Terminal Packaging, Inc., 425
F.3d 708, 715 (9th Cir. 2005) (citation omitted) (Trademarks protect the public from confusion
by accurately indicating the source of a product. They preserve a producers good will in order
that the purchasing public may not be enticed into buying As product when it wants Bs
product.); Phillip Morris, 352 F. Supp. 2d at 1075. Plaintiff has thus demonstrated the
propriety of injunctive relief.
Having determined that Plaintiff is entitled to injunctive relief, the Court must determine
the appropriate scope of that relief. Federal Rule of Civil Procedure 65 requires that [e]very
order granting an injunction . . . shall set forth the reasons for its issuance; shall be specific in
terms; [and] shall describe in reasonable detail . . . the act or acts sought to be restrained. Fed.
R. Civ. P. 65(d). Generally, an injunction must be narrowly tailored to remedy only the specific
harms shown by the plaintiffs rather than to enjoin all possible breaches of the law. Iconix, Inc.
v. Tokuda, 457 F. Supp. 2d 969, 998-1002 (N.D. Cal. 2006) (citing Price v. City of Stockton,
390 F.3d 1105, 1117 (9th Cir. 2004)).
The Court concludes that Plaintiff is entitled to a permanent injunction enjoining
Defendants from using the Claw Icon Mark, the MONSTER Marks, the MONSTER Trade
Dress, and Plaintiffs copyrighted designs. See Moroccanoil, Inc. v. Allstate Beauty Prods., Inc.,
847 F. Supp. 2d 1197, 1203 (C.D. Cal. 2012); Penpower Tech. Ltd. v. S.P.C. Tech., 627 F. Supp.
2d 1083, 1094 (N.D. Cal. 2008).
The proposed judgment submitted by Plaintiff suggests that the Courts permanent
injunction should require Defendant to destroy all items bearing Plaintiffs marks, trade dress,
and copyrighted designs. (Proposed Judgment at 3, Doc. No. 15-4.) The Lanham Act
provides that a court may order an infringing defendant to deliver[] up and destroy[] all
infringing labels, signs, prints, packages, wrappers, receptacles, and advertisements in the
possession of the defendant. 15 U.S.C. 1118 (emphasis added). However, where an
injunction is issued under the Lanham Act enjoining an infringer from further infringement, the
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rights of the plaintiff are adequately protected and an order requiring destruction of infringing
articles, though permitted, may be unnecessary. Kelley Blue Book v. Car-Smarts, Inc., 802
F. Supp. 278, 293 (C.D. Cal. 1992). Because an injunction is to be entered against Defendant
that enjoins him from further infringement, an order requiring the destruction of infringing items
is unnecessary. Moreover, because the Court refuses to order Defendant to destroy the infringing
items in his possession, the Court concludes that ordering Defendant to file a written report
under oath, setting forth in detail the manner and form in which Defendant has complied with
th[e] injunction, (Proposed Judgment at 2), would be unnecessary to enforce the Courts order
that Defendant cease using Plaintiffs marks, trade dress, and copyrighted designs. In any event,
Plaintiff cites no authority in support of its assertion that requiring the submission of such a
report would be appropriate.
2. Statutory Damages
An infringer of a copyright may be held liable for statutory damages in lieu of a
plaintiffs actual damages. See 17 U.S.C. 504(a)(2). Copyright owners may elect to recover
statutory damages instead of actual damages for all infringements involved in the action for any
one work for an amount not less than $750 or more than $30,000 as the court considers just.
17 U.S.C. 504(c)(1). Upon a finding that that the infringement was committed willfully, a
court has discretion to increase the award of statutory damages up to $150,000. 17 U.S.C.
504(c)(2).
The district courts are vested with wide discretion in determining the amount of
statutory damages to be awarded, constrained only by the specified maxima and minima. Peer
Intl Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1336 (9th Cir. 1990) (quoting Harris v. Emus
Records Corp., 734 F.2d 1329, 1335 (9th Cir. 1984)). Courts are properly guided by what is
just in the particular case, considering the nature of the copyright, the circumstances of the
infringement[,] and the like. Id. (quoting F.W. Woolworth Co. v. Contemporary Arts, Inc., 344
U.S. 228, 232 (1952)). They may consider whether the amount of damages requested bears a
plausible relationship to actual damages. See DFSB Kollective Co., Ltd. v. Tran, No. 11-CV01049-LHK, 2011 WL 6730678, at *9 (N.D. Cal. Dec. 21, 2011). Additionally, courts consider
such factors as (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. Microsoft
Corp. v. Nop, 549 F. Supp. 1233, 1238 (E.D. Cal. 2008) (quoting Tiffany (NJ) Inc. v. Luban, 282
F. Supp. 2d 123, 125 (S.D.N.Y. 2003)). Finally, [a]n award of statutory damages should not
merely compel[] restitution of profit and reparation for injury but also . . . discourage wrongful
conduct. Broadcast Music, Inc. v. Kiflit, No. 12CV00856LHK, 2012 WL 4717852, at *4
(N.D. Cal. Oct. 2, 2012) (second and third alterations in original) (quoting F.W. Woolworth Co.,
344 U.S. at 233).

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Plaintiff seeks $25,000 in statutory damages. (Mot. at 22.) Defendant knew he was
copying Plaintiffs copyrighted design.3 However, beyond the assertion of willfulness, Plaintiff
has not provided the Court with any evidence that an award of $25,000 is appropriate in
consideration of the factors listed above. The only evidence Plaintiff has submitted of
Defendants infringement are images of some infringing products from Defendants website and
Facebook page. (Zadra-Symes Decl., Exs. A, B.) Plaintiff provides no indication of how much
Defendant has profited from the items or how those sales have impacted Plaintiffs revenues.
Plaintiff has provided no estimate for its actual damages. Nevertheless, the Court is cognizant of
the fact that Defendant has not cooperated with this litigation.
Although Plaintiff is correct that the need to deter this type of willful conduct warrants a
statutory damages award, the award need not be substantial to achieve that goal. See Coach, Inc.
v. Am. Fashion Gift, No. 12-7647, 2013 WL 950938, at *2 (C.D. Cal. March 12, 2013) (noting
that $10,000 in statutory damages was sufficient where the record ma[de] clear that Coachs
trademarks [were] highly valuable and that Defendants acted willfully, and noting that any
award would have a deterrent effect on other would-be infringers and would discourage
Defendants from committing future infringement); Adobe Systems, Inc. v. Tilley, No. 09-1085,
2010 WL 309249, at *5-6 (N.D. Cal. Jan.19, 2010) ([W]hile the plaintiff in a trademark or
copyright infringement case is entitled to damages that will serve as a deterrent, it is not entitled
a windfall.).
Accordingly, the Court awards Plaintiff $15,000 in statutory damages from Defendant
Mike McNamee. The Court finds that this award is reasonable, bears a plausible relationship to
relationship to Defendants infringing conduct, and is sufficient to have a deterrent effect on
other potential infringement. See Sennheiser Elec. Corp., 2013 WL 3811775, at *9.
IV. CONCLUSION
For the reasons stated above, the Court GRANTS IN PART Plaintiffs Motion for
Default Judgment against Defendant Mike McNamee. Judgment shall be entered as follows:
1. Plaintiff shall recover $15,000.00 in statutory damages from Defendant;
2. Defendant Mike McNamee and his officers, principals, agents, servants, employees,
attorneys, successors, assigns, and all other persons in active concert or participation with
any of them who receive actual notice of the injunction by personal service or otherwise
are permanently enjoined from the following:
a. Using Plaintiffs Claw Icon Mark, MONSTER Marks, or MONSTER Trade Dress
in connection with Defendants business or the goods and/or services offered by
3

As explained above, the Court finds that Defendant willfully violated Plaintiffs
copyright. Plaintiff has set forth some evidence that Defendant continued to infringe Plaintiffs
copyright despite two cease-and-desist letters and the commencement of this lawsuit. (Compl.
28; Zadra-Symes Decl., Exs. A, B (showing images of infringing products as depicted on
Defendants website and Facebook page as of April 30, 2015).)

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Case 5:15-cv-00084-JGB-SP Document 17 Filed 09/08/15 Page 11 of 11 Page ID #:212

Defendant, in advertising, promoting, selling, or offering to sell Defendants

unauthorized goods or services, and/or using confusingly similar variations of the
Claw Icon Mark, MONSTER Marks, MONSTER Trade Dress, and/or any
confusingly similar marks in any manner that is likely to create the impression
that Defendant or the goods or services offered by Defendant originate from
Plaintiff, are endorsed by Plaintiff, or are connected in any way with Plaintiff;
b. Manufacturing, distributing, shipping, importing, reproducing, displaying,
advertising, marketing, promoting, transferring, selling, and/or offering to sell any
unauthorized products or services bearing or using the Claw Icon Mark,
MONSTER Marks, or MONSTER Trade Dress, and/or any confusingly similar
marks or trade dress;
c. Manufacturing, distributing, shipping, importing, reproducing, displaying,
advertising, marketing, promoting, transferring, selling, and/or offering to sell any
unauthorized products bearing or using Plaintiffs Copyrighted Designs (i.e., U.S.
copyright registration numbers VA 1-727-577, VA 1-737-654, VA 1-749-215,
and VA 1-789-900), or any design substantially similar thereto;
d. Without permission or authorization from Plaintiff, copying, reproducing,
distributing, displaying, creating derivative works of Plaintiffs Copyrighted
Designs, and/or importing, manufacturing, or producing any products bearing
copies of Plaintiffs Copyrighted Designs; and
e. Otherwise infringing or diluting Plaintiffs Claw Icon Mark, MONSTER Marks,
or MONSTER Trade Dress.
The September 14, 2015 hearing is VACATED. The Court will enter final judgment in
accordance with this order. The Clerk is directed to close the case following the entry of
judgment.
IT IS SO ORDERED.

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