Summary
awarding Orthodox Union $300,000 for unauthorized use of the OU Mark on at least four types of spices
Summary of this case from UNION OF ORTHODOX JEWISH CON. v. A. FOOD BEVOpinion
CIVIL NO. CCB-07-3122.
September 10, 2008
MEMORANDUM
Now pending is the request for statutory damages, costs, and attorneys' fees filed by plaintiff Union of Orthodox Jewish Congregations of America ("Orthodox Union") following the court's entry of permanent injunction by default against defendant The Wilder Spice Company ("Wilder"). As determined by the court in its April 23, 2008 Order, incorporated by reference herein, Wilder willfully infringed the plaintiff's registered certification mark (the "OU mark") by unauthorized use of an identical mark, falsified a Letter of Certification, and failed to stop or correct its infringing activity despite notice from the Orthodox Union.
The Lanham Act, 15 U.S.C. § 1117(c)(2), provides for an award of statutory damages of up to $1,000,000 for willful use of a counterfeit mark. Statutory damages are intended to deter wrongful conduct, Louis Vuitton Malletier v. Veit, 211 F.Supp.2d 567, 583 (E.D. Pa. 2002), and may be particularly appropriate in cases of default judgment because of non-disclosure by the infringer. PetMed Express, Inc. v. MedPets.com, Inc., 336 F.Supp.2d 1213, 1220 (S.D. Fla. 2004). Using factors applicable under the Copyright Act, 17 U.S.C. § 504(c), by analogy, courts have granted large awards in cases of wilful infringement involving multiple sales over the internet. PetMed Express, 336 F.Supp.2d at 1221 ($800,000); Tiffany (NJ) Inc. v. Luban, 282 F.Supp.2d 123, 125 ($550,000) (S.D.N.Y. 2003); Louis Vuitton, 211 F.Supp.2d at 583-85 ($1,500,000). Another significant factor relevant to this case is wrongful use of a registered mark affecting the mark holder's ability to maintain quality controls. S ee Idaho Potato Comm'n v. G T Terminal Packaging, 425 F.3d 708, 721-22 (9th Cir. 2005) (maximum $100,000 awarded for non-willful infringement).
This case involves willful infringement of a certified mark on one type of good (spices), which was displayed on the internet; falsification of a certification letter; and default by the infringer. On the other hand, it does not appear that the internet was used to carry out substantial sales. Accordingly, an award of treble the maximum damages for a non-willful infringement, a total of $300,000, plus reasonable attorney's fees and costs as shown justified in the amount of $19,198.53, is warranted under all the relevant circumstances.
A separate Order follows.
ORDER
For the reasons stated in the accompanying Memorandum and the Order of this court entered April 23, 2008, which is incorporated herein by reference, it is hereby ORDERED that:1. Judgment is entered in favor of the plaintiff Union of Orthodox Jewish Congregations of America and against the defendant The Wilder Spice Company in the amounts of:
a) $300,000 in statutory damages; and
b) $19,198.53 in attorney's fees and costs; and
2. the Clerk shall CLOSE this case.