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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA
CASE NO. 11-22481-CIV-ALTONAGA/Simonton
SLEP-TONE ENTERTAINMENT CORP.,
vs.
Plaintiff,
KARAOKE MIAMI LLC,
Defendant.
/
ORDER
THIS CAUSE came before the Court upon Plaintiff, Slep-Tone Entertainment Corp.’s
(“Slep-Tone[’s]”) Motion for Default Final Judgment (“Motion”) [ECF No. 78], filed on August 12,
2011. The Motion asks the Court to enter default final judgment on Slep-Tone’s claims against Defendant, Karaoke Miami LLC (“Karaoke Miami”), pursuant to Rule 55(b)(2) of the Federal Rules of Civil Procedure. Slep-Tone asks the Court to award statutory damages in the amount of $750,000, issue a permanent injunction against Karaoke Miami’s further infringement of Slep-Tone’s trademarks, and order the delivery and/or seizure and destruction of any infringing articles in Karaoke Miami’s possession. (See Mot. 3).
Karaoke Miami failed to appear, answer, or otherwise respond to the Complaint filed on April 2, 2010 [ECF No. 1], despite having been served. (See Certificate of Service [ECF No. 21]). A Clerk’s Default was entered against several Defendants, including Karaoke Miami, on February
7, 2011. (See [ECF No. 43]). On July 8, 2011, the portion of the action relating to Karaoke Miami, the sole remaining Defendant with operations in the Southern District of Florida, was transferred to this Court. (See [ECF Nos. 65, 69)]. The Court has carefully considered the Motion, the record, and the applicable law.
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I. BACKGROUND1
Plaintiff, Slep-Tone, sued Defendant, Karaoke Miami, for trademark infringement and unfair competition under the Trademark Act of 1946, 15 U.S.C. § 1051 et seq. (“Lanham Act”), and for deceptive and unfair trade practices under the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.201 et seq. (“FDUTPA”).
Slep-Tone, a North Carolina corporation (see Compl. ¶ 6), “is the manufacturer and distributor of karaoke accompaniment tracks sold under the name ‘Sound Choice’” (id. p.2). Slep- Tone owns the trademark “Sound Choice” under U.S. Trademark Registration No. 1,923,448, and a “Sound Choice” display trademark under U.S. Trademark Registration No. 2,000,725 (collectively, “Sound Choice Marks”). (Id. ¶¶ 64–65). Slep-Tone has, for the entire time the Sound Choice Marks have been registered, provided the public with notice of its registration through the consistent use of the symbol “®”. (Id. ¶ 66).
Over the past twenty-five years, Slep-Tone “came to be recognized as one of the leading producers of high-quality karaoke tracks.” (Id. p.2). Karaoke tracks are produced in a format known as “compact disc plus graphics” (“CD+G”), in which a CD contains music and lyrics that are displayed on a screen. (Id.) The graphics on a CD+G aid the performer and display the Sound Choice trademark when the track is played. (See id. ¶¶ 42–43). Karaoke tracks are played by “karaoke jockeys” (“KJ[s]”), “[e]ntertainers who provide karaoke services in bars, restaurants, and other venues.” (Id. ¶ 44).
A KJ typically maintains a catalog of karaoke tracks (see id. ¶ 45), and “[l]egitimate” KJs
purchase the tracks in CD+G format (id. ¶ 46). Karaoke tracks, however, can be shifted from the
1 The factual background is taken from the Complaint.
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CD+G medium to another medium (“media-shifted”). (Id. ¶ 49). Once a track is media-shifted from CD+G to another digital format, a KJ can “obtain, copy, share, distribute and/or sell media-shifted” tracks, using, inter alia, computer hard drives and the Internet. (Id. ¶ 47). Such media-shifted tracks are “easily copied and distributed between KJs,” who can “build libraries of tens of thousands of karaoke songs without paying for them.” (Id. p.3). This practice has been made easier by “improving and ever cheaper computer technology and memory devices and the easy distribution of digital content over the internet.” (Id. ¶ 58).
Slep-Tone tolerates, but does not authorize, media-shifting of its tracks on condition that a KJ follow Slep-Tone’s policy of “one-to-one correspondence,” which requires that a media-shifted track have originated from an original Sound Choice CD+G format, the track be shifted to only one alternative medium at a time, the KJ maintain ownership of the media-shifted track, and the original
CD+G not be used for any commercial purpose while a track is media-shifted.2 (Id. ¶¶ 49–50). Slep-
Tone receives no royalties when media-shifted tracks are copied, shared, distributed or sold; and
Slep-Tone does not authorize such activity by any license agreement. (See id. ¶ 51).
Media-shifting and widespread creation of unauthorized copies of Slep-Tone’s karaoke tracks have denied Slep-Tone the benefit of its investments. (See id. ¶ 55). These investments include “spen[ding] millions of dollars” on studios, artists, a distribution facility, royalties to owners of the copyright of the underlying musical works, and building a company and “one of the pre-eminent brands in the industry.” (Id. ¶ 54). The unauthorized copies bear Slep-Tone’s registered trademarks, so that the unauthorized copies “are virtually indistinguishable from genuine Sound Choice
2 Media-shifted tracks that do not meet the criteria of Slep-Tone’s “one-to-one correspondence”
policy are referred to as “unauthorized copies.”
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materials” to consumers. (Id. ¶ 56). For Slep-Tone’s recent releases, “dozens” of unauthorized copies have been created for every legitimate copy sold. (Id. ¶ 57). KJs who deal in unauthorized copies have an unfair competitive advantage over KJs who purchase CD+G tracks. (See id. ¶¶
60–61). Thus, KJs who purchase CD+G tracks are pressured to commit piracy themselves instead of doing business with Slep-Tone, in order to compete. (See id. ¶¶ 62–63). As a result of the proliferation of unauthorized copies, Slep-Tone has nearly been driven out of business. (See id. p.3).
Defendant, Karaoke Miami, a Florida corporation, “is engaged in the business of providing karaoke entertainment, and it conducts its business activities at numerous venues in [Florida].” (Id.
¶ 10). Slep-Tone’s investigators observed Karaoke Miami, along with the other Defendants named in the Complaint, “possessing, using, or authorizing or benefiting [sic] from unauthorized counterfeit copies of at least one work bearing the Sound Choice Marks.” (Id. ¶ 67). Karaoke Miami operated a karaoke system to produce a show in Florida using unauthorized copies of Slep-Tone’s tracks. (See id. ¶ 82). In connection with that show, Karaoke Miami “repeatedly displayed the Sound Choice Marks without right or license.” (Id. ¶ 83). Karaoke Miami has put on as many as eleven shows per week at as many as eight different venues. (See id. ¶ 84). Karaoke Miami maintains a library of over
33,000 songs stored on each of its karaoke systems. (See id. ¶ 85). Based on the popularity of Slep- Tone’s tracks and the size of the Defendants’ music libraries, including that of Karaoke Miami, Slep- Tone “has a good faith belief that discovery [would] show” that Karaoke Miami possesses unauthorized copies of Slep-Tone’s track, with the Sound Choice Marks. (Id. ¶ 172).
Slep-Tone filed its Complaint on April 2, 2010, against thirty-five named Defendants, including Karaoke Miami. (See id.). The Complaint alleges three claims against all Defendants,
including Karaoke Miami, for: (1) infringing the Sound Choice Marks under the Lanham Act, (2)
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engaging in unfair competition under the Lanham Act, and (3) engaging in deceptive and unfair trade practices under the FDUTPA. (See id.). In the Motion, Slep-Tone seeks entry of default judgment against Karaoke Miami on all three claims alleged in the Complaint.
II. DEFAULT JUDGMENT STANDARD
Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a final judgment of default against a party who has failed to plead in response to a complaint. “‘[A] defendant’s default does not in itself warrant the court entering a default judgment.’” DIRECTV, Inc. v. Huynh, 318 F. Supp. 2d 1122, 1127 (M.D. Ala. 2004) (quoting Nishimatsu Constr. Co., Ltd. v. Houston Nat’l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975)). Granting a motion for default judgment is within the trial court’s discretion. See Nishimatsu, 515 F.2d at 1206. Because the defendant is not held to admit facts that are not well-pleaded or to admit conclusions of law, the court must first determine whether there is a sufficient basis in the pleading for the judgment to be entered. See id.; Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987) (“[L]iability is well-pled in the complaint, and is therefore established by the entry of default . . . .”).
III. DISCUSSION
Upon a review of Slep-Tone’s submissions, it appears there is a sufficient basis in the pleadings for a default judgment to be entered in favor of Slep-Tone on Claims I-III.
A. Analysis of Liability
1. Claim I — Trademark Infringement Under the Lanham Act
Under the Lanham Act, a defendant is liable for trademark infringement if, without consent, he “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or
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services” which “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§ 1114(1)(a). Accordingly, to prevail on a trademark infringement claim, a plaintiff must demonstrate (1) plaintiff’s mark has priority; (2) defendant used plaintiff’s mark in commerce; and (3) defendant’s mark is likely to cause consumer confusion. See Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir. 1997); Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d 1297, 1300–01 (11th Cir. 2001). Here, Slep-Tone’s allegations satisfy these three elements and therefore establish Karaoke Miami’s liability for federal trademark infringement.
First, Slep-Tone’s Sound Choice Marks have priority as they are registered trademarks owned by Slep-Tone. (See Compl. ¶¶ 64–65). Registration of a trademark is prima facie evidence of “the registrant’s exclusive right to use the registered mark in commerce,” 15 U.S.C. § 1057(b), and confers “a right of priority, nationwide in effect, . . . against any other person,” id. § 1057(c).
Second, Karaoke Miami has used the Sound Choice Marks in commerce. Karaoke Miami “repeatedly displayed the Sound Choice Marks” during shows in which Karaoke Miami used unauthorized copies of Slep-Tone tracks. (Compl. ¶¶ 82–83). Karaoke Miami has put on “as many as 11 shows per week at as many as eight different venues, as many as three simultaneously.” (Id.
¶ 84).
Third, Slep-Tone has established the likelihood of consumer confusion. In assessing whether or not a likelihood of consumer confusion exists, courts in the Eleventh Circuit generally consider the following seven factors: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties’ retail outlets (trade channels) and customers; (5) similarity of advertising media; (6) defendant’s intent; and (7) actual confusion. See Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). A brief analysis of the
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allegations in light of these factors demonstrates the balance of factors clearly weighs in favor of
Plaintiff.
(1) Type of Mark
A mark can fall into one of four categories — generic, descriptive, suggestive, and arbitrary
— depending on the relationship between the name and the service or good it describes.3
See id.
The Sound Choice Marks are at least suggestive if not arbitrary. They may refer to a characteristic of Slep-Tone’s karaoke tracks by the word “Sound,” but at the very least “require[] a leap of the imagination to get from the mark to the product.” Knights Armament Co. v. Optical Sys. Tech., Inc., No. 09-14480, 2011 WL 3889156, at *6 (11th Cir. Sep. 2, 2011) (citation omitted). As suggestive or arbitrary marks, the Sound Choice Marks are protectable. See id.
(2) Similarity of Mark
In analyzing the similarity of the marks, a court must compare the marks and consider the overall impressions the marks create, including their sound, appearance, and the manner in which they are used. See Frehling, 192 F.3d at 1337. In this case, the marks are identical, as Karaoke Miami has displayed copies of the Sound Choice Marks by using media-shifted unauthorized copies of Slep-Tone’s karaoke tracks. (See Compl. ¶¶ 67, 82–83).
3 Generic marks “refer to a class of which an individual service is a member (e.g., ‘liquor store’
used in connection with the sale of liquor)” and are not entitled to protection. Frehling, 192 F.3d at 1335. Descriptive marks “describe a characteristic or quality of an article or service (e.g., ‘vision center’ denoting a place where glasses are sold).” Id. Suggestive marks “‘suggest characteristics of the goods and services and require an effort of the imagination by the consumer in order to be understood as descriptive,’” such as “penguin” being suggestive of refrigerators. Id. (quoting Dieter v. B &H Indus. of S.W. Fla., Inc., 880 F.2d
322, 326 (11th Cir. 1989)). Finally, an arbitrary mark is “a word or phrase that bears no relationship to the product (e.g., ‘Sun Bank’ when applied to banking services).” Id. Arbitrary marks are the strongest and are entitled to the most protection. See id. at 1336.
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(3) Similarity of the Products
“This factor requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.” Frehling, 192 F.3d at 1338. In this case, the products are again identical, as Karaoke Miami is using media-shifted unauthorized copies of Slep-Tone’s products. (See Compl. ¶¶ 67, 82–83). To consumers, it would seem impossible to distinguish the source of the digitally-shifted unauthorized copies from that of the CD+G format tracks sold by Slep- Tone. (See id. ¶ 56).
(4) Similarity of Retail Outlets (Trade Channels) and Customers
“This factor takes into consideration where, how, and to whom the parties’ products are sold.” Frehling, 192 F.3d at 1339. Slep-Tone has alleged facts demonstrating that the retail outlets and customers for legitimately purchased CD+G tracks versus those for unauthorized copies are indistinguishable. KJs that purchase CD+G format tracks compete directly in providing the same karaoke entertainment services with KJs using unauthorized copies, often in the same venues. (See Compl. ¶¶ 61–63).
(5) Similarity of Advertising Media
This factor examines each party’s method of advertising. See Frehling, 192 F.3d at 1339. Here, Slep-Tone has not alleged facts regarding the advertising media of KJs purchasing tracks as opposed to KJs using unauthorized copies. However, the fact that these two groups of KJs directly compete with each other, providing the same services in the same venues, strongly suggests that the advertising channels would be similar if not indistinguishable. (See Compl. ¶¶ 61–63).
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(6) Defendant’s Intent
“If it can be shown that a defendant adopted a plaintiff’s mark with the intention of deriving a benefit from the plaintiff’s business reputation, this fact alone may be enough to justify the inference that there is confusing similarity.” Frehling, 192 F.3d at 1340. Slep-Tone has alleged sufficient facts establishing that Karaoke Miami intended to use unauthorized copies of Slep-Tone tracks to derive a commercial benefit in providing karaoke services, in which Karaoke Miami repeatedly displayed the Sound Choice Marks. (See Compl. ¶¶ 82–85). Slep-Tone’s allegations support that Karaoke Miami used the Sound Choice Marks to derive a benefit from Slep-Tone and Sound Choice’s reputation.
(7) Actual Confusion
Although evidence of actual confusion is not a prerequisite to trademark protection, it “is the best evidence of a likelihood of confusion.” Frehling, 192 F.3d at 1340. Slep-Tone has not provided evidence of actual confusion by consumers, but it seems likely that consumers would mistake unauthorized copies for legitimately purchased CD+G format tracks, given that both types of tracks look identical and are played in similar venues in similar contexts. (See Compl. ¶ 62).
In sum, Karaoke Miami’s use of the Sound Choice marks is likely to confuse consumers into believing that unauthorized copies were in fact the original CD+G format track. Slep-Tone is entitled to default judgment on Claim I of the Complaint for federal trademark infringement.
2. Claim II — Unfair Competition Under the Lanham Act
To prove a claim for unfair competition under the Lanham Act, a plaintiff must establish “(1) that it had prior rights to the mark at issue and (2) that the defendant adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the
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two.” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001); see 15
U.S.C. § 1125(a). As discussed, Slep-Tone’s well-pleaded allegations establish that Slep-Tone had priority to the Sound Choice Marks, that Karaoke Miami employs the same mark on its unauthorized copies, and that consumers are likely to confuse CD+G originated tracks with unauthorized copies. It is appropriate to enter default judgment on Claim II for federal unfair competition.
3. Claim III — Deceptive and Unfair Trade Practices Under FDUTPA
Karaoke Miami’s liability for trademark infringement and unfair competition under the Lanham Act also establishes its liability for deceptive and unfair trade practices under the FDUTPA. See Pepsico, Inc. v. Distribuidora La Matagalpa, Inc., 510 F. Supp. 2d 1110, 1114 (S.D. Fla. 2007) (noting that “the law long has recognized that trademark infringement and unfair competition are considered to be unfair and deceptive trade practices in violation of FDUTPA”). Thus, Slep-Tone is entitled to default judgment on Claim III for deceptive and unfair trade practices under Florida law.
The well-pled factual allegations of Slep-Tone’s Complaint properly contain the elements for each of the above claims and are admitted by virtue of Karaoke Miami’s default. Accordingly, default judgment pursuant to Rule 55 of the Federal Rules of Civil Procedure is appropriately entered against Karaoke Miami.
B. Relief
Slep-Tone seeks statutory damages, injunctive relief, and the seizure and/or destruction of infringing articles in Karaoke Miami’s possession. (See Mot. 3). Federal Rule of Civil Procedure
55(b) permits the Court to conduct hearings on damages for default judgment, but such hearings are
not necessary if the plaintiff submits sufficient evidence to support the request for damages. See
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Taverna Opa Trademark Corp. v. Ismail, No. 08-20776-DIV, 2010 WL 1838384, at *2 (S.D. Fla. May 6, 2010). In this case, a hearing is not necessary, particularly given Slep-Tone’s decision to seek statutory damages, considered in conjunction with the documents submitted with the Motion. See Tiffany (NJ), LLC v. Dongping, No. 10-61214, 2010 WL 4450451, at *3 (S.D. Fla. Oct. 29,
2010) (observing that “[i]n this case, a hearing on damages is unnecessary as Plaintiff seeks statutory damages and has submitted detailed declarations with accompanying documentary evidence in support of its damages request”).
1. Statutory Damages Under the Lanham Act
Slep-Tone seeks statutory damages for Karaoke Miami’s willful conduct in the total amount of $750,000. (See Mot. 14). Section 1117(c) of the Lanham Act allows a plaintiff to elect statutory damages “[i]n a case involving a counterfeit mark (as defined in section 1116(d) of this title).” 15
U.S.C. § 1117(c). Section 1116(d) defines a “counterfeit mark” as “a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office.” Id. § 1116(d). “Counterfeit” is defined as a “spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” Id. § 1127.
Statutory damages may be “specially appropriate in default judgment cases due to infringer nondisclosure.” PetMed Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d 1213, 1220 (S.D. Fla.
2004). See also Mitchell Grp. USA LLC v. Xtreme Tools Int’l, Inc., No. 10-21153-CV, 2011 WL
589997, at *4 (S.D. Fla. Feb. 10, 2001) (finding that where the plaintiff could only speculate as to actual damages from counterfeiting, it was appropriate to permit statutory damages). Moreover, “[d]istrict courts have wide discretion in awarding statutory damages.” PetMed, 336 F. Supp. 2d at
1219 (citing Cable/Home Commc’n Crop. v. Network Prod., Inc., 902 F.2d 829, 852 (11th Cir.
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1990); Microsoft Corp. v. Tierra Computer, Inc., 184 F. Supp. 2d 1329, 1331 (N.D. Ga. 2001)).
The facts alleged in the Complaint establishing Karaoke Miami’s liability for trademark infringement also establish Karaoke Miami’s use of a counterfeit mark. See PetMed, 336 F. Supp.
2d at 1220 (noting that plaintiff established trademark infringement and thus demonstrated defendants’ use of counterfeit marks). The statutory damages for use of a counterfeit mark are
(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court consider just.
15 U.S.C. § 1117(c). Because Slep-Tone alleges infringement of two marks, the Lanham Act would authorize an award for willful conduct of up to $4,000,000, or $2,000,000 per mark. Slep-Tone requests a base award of statutory damages of $150,000 against Karaoke Miami, enhanced by a multiplier of five based on Karaoke Miami’s willfulness, for a total award of $750,000. (See Mot.
14).
Slep-Tone has alleged enough facts for the Court to conclude that Karaoke Miami’s use of counterfeit marks was willful. In determining whether such use is willful, courts have looked to whether “the infringer acted with actual knowledge or reckless disregard.” PetMed, 336 F. Supp.
2d at 1220. In PetMed, the court found use of counterfeit marks to be willful where the defendants used confusingly similar marks, from which the Court inferred an intent to confuse consumers, and where the defendants refused to cooperate and continued using the marks after the plaintiff notified them of the infringement. Id. The same facts are present here.
As noted, the counterfeit marks are identical digital copies of the registered marks, from
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which an intent to confuse customers can be inferred. Slep-Tone has also presented evidence that Karaoke Miami has willfully refused to cooperate and continued to use the counterfeit marks after being notified by Slep-Tone of the infringement. Slep-Tone sent a notice of this lawsuit to Mr. Bernard Ravelo of Karaoke Miami on April 3, 2010. (See Mot. Ex. B [ECF No. 78-2]). Karaoke Miami appears to have then filed Articles of Dissolution with the Florida Secretary of State on May
10, 2010, with the dissolution backdated to April 1, 2010, or the day before the Complaint was filed. (See Mot. Ex. C [ECF No. 78-3]). In the filing, Karaoke Miami indicated that it was “no longer in Business” and that “[t]here [were] no suits pending against the company in any court.” (Id.). Slep- Tone further alleges that Karaoke Miami has continued its operations and trademark infringement at some of the same venues, employing the same
http://karaoke-miami.com web address. (See Mot.
10; Mot. Ex. D [ECF No. 78-4]). This is more than sufficient evidence of willful infringement. See Tiffany (NJ), LLC, 2010 WL 4450451, at *1 (considering the documentary evidence submitted in support of motion for entry of final default judgment in deciding whether to grant motion). In any event, the Court may infer willfulness from Karaoke Miami’s default. See Arista Records, Inc. v. Beker Enter., Inc., 298 F. Supp. 2d 1310, 1313 (S.D. Fla. 2003).
The Court therefore concludes that Slep-Tone is entitled to statutory damages on the basis of Karaoke Miami’s willful use of counterfeit marks, and that an award of $750,000 is reasonable and well within the statutory maximum of $4,000,000 for willful infringement of the two Sound Choice marks.
2. Injunction Under the Lanham Act
Slep-Tone also moves the Court to issue a permanent injunction barring the unauthorized use or display of the Sound Choice Marks. Under the Lanham Act, the Court may issue an injunction
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“according to the principles of equity and upon such terms as the court may deem reasonable.” 15
U.S.C. § 1116(a). Indeed, “[i]njunctive relief is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant’s continuing infringement.” Burger King Corp. v. Agad, 911 F. Supp. 1499, 1509–10 (S.D. Fla. 1995) (citation omitted). In a default judgment context, a defendant’s failure to respond or otherwise appear makes it difficult for a plaintiff to prevent further infringement absent an injunction. See Jackson v. Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal. 2003).
Permanent injunctive relief is appropriate where a plaintiff demonstrates (1) it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship favors an equitable remedy; and (4) issuance of an injunction is in the public’s interest. See eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 392–93 (2006). In trademark cases, “a sufficiently strong showing of likelihood of confusion . . . may by itself constitute a showing of a substantial threat of irreparable harm.” McDonald’s Corp. v. Robertson, 147 F.3d 1301, 1306 (11th Cir. 1998).
The Court finds that Slep-Tone has no adequate remedies at law. Monetary damages are unlikely to deter Karaoke Miami, which thus far has refused to participate in this litigation, and there is every indication Karaoke Miami will continue to use unauthorized copies in providing karaoke entertainment services. Furthermore, continued proliferation of the unauthorized copies will cause hardship to Slep-Tone from the significant competitive pressure placed on KJs who would otherwise purchase CD+G format tracks. The public interest supports the issuance of an injunction to prevent further consumer confusion. See Nike, Inc. v. Leslie, 227 U.S.P.Q. 574, 575 (1985) (noting that “an injunction to enjoin infringing behavior serves the public interest in protecting consumers from such
behavior”).
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Slep-Tone has alleged enough facts to establish its entitlement to an injunction against Karaoke Miami’s further infringement of its trademarks. This is particularly true in light of the fact that the unauthorized copies are identical to the CD+G tracks Slep-Tone produces under the Sound Choice Marks, and Karaoke Miami’s infringement is willful. See Tiffany (NJ), 2010 WL 4450451, at *15 (finding it appropriate to issue an injunction where plaintiff’s goodwill would be undermined, counterfeit products “[bore] identical markings” to legitimate merchandise, and defendant’s infringement was willful and would therefore likely continue to harm plaintiff’s trademarks).
3. Seizure and/or Destruction of Karaoke Miami’s Infringing Articles
Finally, Slep-Tone asks that the Court order the seizure and/or delivery and destruction of Karaoke Miami’s equipment, specifically its hard drives and other media containing counterfeit Sound Choice Marks. The Lanham Act provides
In any action arising under this chapter, in which a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) of this title, or a willful violation under section 1125(c) of this title, shall have been established, the court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark or, in the case of a violation of section 1125(a) of this title or a willful violation under section
1125(c) of this title, the word, term, name, symbol, device, combination thereof, designation, description, or representation that is the subject of the violation, or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same, shall be delivered up and destroyed.
15 U.S.C. § 1118. As discussed, Slep-Tone has established Karaoke Miami’s violation under section
1125(a) of the Lanham Act for unfair competition. Slep-Tone notes that because the infringing unauthorized copies are so easily duplicated, even under an injunction Karaoke Miami could easily make additional counterfeit copies for sale, transfer, or other disposal allowing other parties to
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Case 1:11-cv-22481-CMA Document 79 Entered on FLSD Docket 09/14/2011 Page 16 of 16
Case No. 11-22481-CIV-ALTONAGA/Simonton
infringe the Sound Choice Marks. (See Mot. 20–21). “Destruction of infringing materials is a common term and form of relief in trademark infringement actions.” E.I. DuPont De Nemours and Co. v. Magic Touch Cleaning and Restoration, Inc., No. 5:10-cv-381, 2011 WL 2631854, at *1 (M.D. Fla. July 5, 2011) (citing Compania Cervecera de Nicaragua v. Cervezas Victoria y Tona Beers, Inc., No. 92-639-Civ, 1993 WL 556426 (M.D. Fla. Sept. 14, 1993); Playboy Enters., Inc. v. P.K. Sorren Exp. Co. Inc. of Fla., 546 F. Supp. 987, 997 (S.D. Fla. 1982)). The Court finds that the delivery and destruction of Karaoke Miami’s equipment, to the extent it contains counterfeit content, is a reasonable and appropriate means of preventing further infringement of Slep-Tone’s rights.
IV. CONCLUSION
For the foregoing reasons, Slep-Tone is entitled to the entry of final default judgment. Accordingly, it is
ORDERED AND ADJUDGED that Plaintiff, Slep-Tone’s Motion for Default Final Judgment [ECF No. 78] is GRANTED. Final judgment, a permanent injunction, and an order for delivery and destruction shall be entered by separate order.
DONE AND ORDERED in Chambers at Miami, Florida, this 14th day of September, 2011.
cc: counsel of record
CECILIA M. ALTONAGA
UNITED STATES DISTRICT JUDGE
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