Free Motion for Default Judgment - District Court of California - California

Case 4:08-cv-01597-CW

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1 TOWNSEND AN TOWNSEND AN CREW LLP
GREGORY S. GILCHRIST (CA State Bar # 111536); gsgilchrist((townsend.com 2 TALI L. ALBAN (CA State Bar # 233694); tlalban((townsend.com Two Embarcadero Center, 8th Floor
3 San Francisco, California 94111

Telephone: (415) 576-0200
4 Facsimile: (415) 576-0300

5 Attorneys for Plaintiff WILLIAMS-SONOMA, INe.
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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

12 WILLIAS-SONOMA, INe., a California
corporation,
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Case No. CV 08-1597 RS

Plaintiff,
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v.
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PLAINTIFF WILLIAMS-SONOMA, INC.'S NOTICE OF APPLICATION AND APPLICATION FOR DEFAULT JUDGMENT BY COURT
Date: Wednesday, August 20, 2008

Danielle SECHREST, an individual, Steven
16 SECHREST, an individual, and James

KILLIA, an individual, doing business as 17 REPLACEMENTSLIPCOVERS.COM,
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Time: 9:30 a.m. Courtroom: # 4 Magistrate Judge Richard Seeborg

Defendants.

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TO ALL PARTIES AN THEIR COUNSEL OF RECORD:
PLEASE TAK NOTICE that on August 20,2008, at 2:30 p.m., or as soon thereafter as the
matter may be heard, before the Honorable Richard Seeborg, Magistrate Judge ofthe United States

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District Court, 2112 Robert F. Peckham Federal Building and United States Courhouse, 280 South
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First Street, San Jose, California 95113, Plaintiff

WILLIAS-SONOMA, INe. ("WSI") will apply to

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this Court for a default

judgment against Defendants Danielle Sechrest, Steven Sechrest and James

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Killian, doing business as Replacementslipcovers.com (collectively, "Defendants"), pursuant to
PLAINTIFF WILLIAMS-SONOMA, INC.'S NOTICE OF MOTION AND MOTION FOR DEF AUL T JUGMENT CASE NO. CV 08-1597 RS

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1 Federal Rule of

Civil Procedure 55(b).

2 The Application wil be based on this Notice; the Memorandum of

Points and Authorities in
exhibits, filed concurrently with this Notice, all of

3 Support; the Declaration of

Tali Alban with

the

4 files and records of this action; and on any additional material that may be elicited at the hearing of

5 this Application.

6 MEMORADUM OF POINTS AND AUTHORITIES
7 i. INTRODUCTION
8 WSI fied its Complaint against Defendants for trademark infrngement, dilution of a famous

9 mark, copyrght infrngement, false designation of origin and false description and unfair competition,
10 to stop Defendants from using WSl's copyrghted photographs and famous Pottery Bar trademarks on
11 Defendants' web

sites and eBay store. After Defendants failed to answer the Complaint, WSI sought
Defendants' default. WSI now moves for entry of a default

12 and obtained entry of

judgment against

13 Defendants, seeking a permanent injunction prohibiting Defendants from using WSl's copyrghted
14 photographs or using WSl's marks in connection with the sale of any of Defendants' goods or
15 unlawfully appropriating WSl's goodwill. WSI also applies for reimbursement of

its attorneys' fees

16 and costs incurred in prosecuting this action.

17 II.

STATEMENT OF FACTS
trademarks that are famous throughout the

18 WSI marks its Pottery Barn(ß products with a set of

19 United States, including the famous Pottery Barn(ß Trademark (collectively, the "Pottery Bar

20 Marks"). Prior to the ,events giving rise to this action, and continuing to the present, WSI has spent
21 substantial time, money, and effort in the promotion and advertisement of its products, and has sold

22 millons of dollars of products under its Pottery Barn trademarks. Through such financial investment
23 and effort, WSI has developed considerable goodwil and a reputation for quality products.

24 (Complaint ii 12.)
25 WSI has been using the Pottery Bar trademark in interstate commerce continuously since
26 1956, and at all time periods relevant to the claims in this Complaint, on a varety of

products,

27 including home furnishings and slipcovers. (Complaint ii 11.) WSIowns federal registrations for its

28 Pottery Barn Marks. (Complaint ii 9 & Exh. A.) The Pottery Barn Mark is famous and potential and

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1 actual consumers accept and recognize the Pottery Bar Marks as identifying WSI's products only and
2 distinguishing them from products manufactured and sold by others. (Complaint ii 13.) WSI also

3 owns valid copyrght registrations for its Pottery Bar(ß catalogs. (Complaint ii 10 & Exh. B.)

4 WSI asserts that, Defendants, with knowledge ofWSl's Pottery Barn Marks, have obtained
5 substantial profits using the Pottery Barn Mark in connection with the sale of

their own products on

6 their website and its eBay store. (Complaint iiii 19,20.) Defendants have also systematically made

7 electronic copies of WSl's copyrghted images and displayed them on their
8 -:replacementslipcovers.com:; website in connection with the sale of Defendants' own products.

9 (Complaint ii 14.) WSI believes that Defendants have marketed and sold substantial quantities of
10 products by virte of their infrngement of

the Pottery Barn Marks, and the copyrghted images, and

11 have obtained and continue to obtain profits from these sales. (Complaint ii 19.)

12 On October 16,2007, counsel for WSI contacted Defendants with notice ofWSl's rights and a
13 demand that Defendants cease infrnging WSl's intellectual property rights. (See Declaration of

Tali.

14 L. Alban in Support ofWSl's Application for Default Judgment By Cour, fied herewith, at ii 2.) In
15 response, Defendants assured counsel for WSI that they would cease their infrnging acts. (Id. at ii 3.)
16 However, Defendants did not cease as promised, and WSl's counsel followed up with another letter on

17 November 1,2007. (Id. at ii 4.) After receiving no further response from the Defendants, WSI fied
18 its Complaint on March 24,2008. WSI proceeded to effect personal service of

the complaint, which

19 was accomplished on two ofthe Defendants on March 28, 2008 and on the third on April 10, 2008.

20 Proof of service was fied with the Court on April 16,2008. (Id. at iiii 6,8.) The deadline for
21 Defendants' answers were April 17, 2008, and April 30, 2008, respectively.

22 Neither WSI nor its counsel has received any communications from Defendants or their
23 counsel since receipt of

their initial assurances that they would remove all infrnging marks and

24 photographs from their websites. (Id. at 11.) As recently as April 8, 2008, counsel for WSI observed

25 that Defendants were stil using WSl's copyrghted photos on its websites, and as recently as July 8,
26 2008, on its ebay store. (Id. ii 10.) Defendants' continuing unfair competition, copyright and
27 trademark infringement, trademark dilution and its blatant disregard for the judicial process merit the

28 relief sought by WSI.
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1 III. WSI IS ENTITLED TO ENTRY OF DEFAULT JUDGMENT

2 Once a defendant has defaulted, the well-pleaded allegations ofthe complaint are accepted as
3 true, and the defendant's liability as framed by the complaint is established. See Bambu Sales, Inc. v.

4 Ozak Trading Inc., 58 F.3d 849,854 (2d Cir. 1995); Adriana Int'l Corp. v. Lewis & Co., 913 F.2d
5 1406, 1414 (9th Cir. 1990), cert. denied, 498 US. 1109 (1991); Benny v. Pipes, 799 F.2d 489, 495
6 (9th Cir. 1986), cert. denied, 484 US. 870 (1987); Geddes v. United Fin. Group, 559 F.2d 557,560
7 (9th Cir. 1977). The well-pleaded allegations ofWSI's complaint establish all the elements necessary
8 to entitle WSI to judgment on its claims.

9 The Lanham Act prohibits the unauthorized use in commerce of "any reproduction,

10 counterfeit, copy or colorable imitation of a registered mark" where such use is likely to cause

11 confusion, to cause mistake, or to deceive. 15 US.C. § 1114(1)(a). To prevail on its trademark
12 infrngement claims, WSI must prove that (1) it owns valid and protectable trademarks, and (2)
13 defendant's use of similar designs creates a likelihood of confusion as to the origin or sponsorship of

14 defendant's goods. See Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985);

15 Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637,639 (9th Cir. 1993); Quality
16 Semiconductor, Inc. v. Qlogic Corp., 31 US.P.Q.2d (BNA) 1627 (N.D. CaL. 1994). Likewise, to

17 prevail on its dilution claim, the required elements are ownership of a famous mark and likely dilution,
18 either by tarishment or by blurrng the mark's distinctiveness. Panavision Intl, L.P. v. Toeppen, 141

19 F. 3d 1316, 1324 (9th Cir. 1998); Ringling Bros. Barnum & Bailey Combined Shows, Inc. v. B.E. 20 Windows Corp., 937 F. Supp. 204, 208 (S.D.N.Y. 1996); 15 US.C. § 1125(c) (as recently amended to

21 require only a showing 'of "likely" dilution). Further, .an unfair competition claim for false designation

22 of origin is established when there is a "likelihood of confusion." Walter v. MatteI, Inc., 210 F. 3d
23 1108, 1111 (9th Cir. 2000). (T)he owner of copyrght under Title 17 has the exclusive rights to

24 reproduce, distribute to the public, or display copyrghted works. 17 US.C § 106. "Anyone who

25 violates any of the exclusive rights of the copyrght owner. .. is an infrnger of the copyrght." 17

26 US.e. § 501(a). To prevail on its copyrght infrngement claim, "two elements must be proven: (1)
27 ownership of the valid copyrghts, and (2) copying of constituent elements of

the work that are

28 originaL." Feist Publications, Inc. v. Rural Tel. Servo Co., 499 U.S. 340,361 (1991).
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1 The complaint sets forth WSI's registered Pottery Barn(ß trademark and the WSI registrations,

2 applications and common law marks incorporating the Pottery Bar(ß name, including PB, and
3 properly alleges that Defendants' intentional infrngement of

the Pottery Barn Marks creates a

4 likelihood of confusion, mistake and deception among consumers as to the source of the infrnging
5 slipcovers, causes the public falsely to associate WSI with the defendant and vice versa, dilutes the

6 distinctive value ofthe Pottery Barn(ß trademark and other Pottery Barn Marks, and causes damage to

7 WSI (Complaint iiii 14-15; 19-20; 34-37); see 15 US.C. §§ 1114, 1125. The Complaint also sets
8 forth WSl's valid copyrght registrations for its Pottery Bar(ß catalogs and photographs and properly
9 alleges that Defendants intentionally, willfully and in bad faith display and/or reproduce WSl's

10 copyrghted photographs. These allegations are deemed true, and, accordingly, WSI is entitled to the

11 following relief authorized by federal and state trademark laws.
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A.

Injunctive Relief

13 Federal law expressly authorizes courts to grant injunctions to remedy violations of a
14 trademark owner's rights. 15 US.e. § 1116. WSl's complaint specifically alleges that Defendants'

15 actions have caused and, unless enjoined, wil cause WSI irreparable harm for which money damages
16 are inadequate. (Complaint ii 35.) Because Defendants' infrngement ofWSl's continues, only

17 injunctive relief prohibiting its infrnging activities can remedy WSl's injures. Indeed, federal courts
18 have held that damages caused by trademark infrngement are "by their very nature irreparable and not
19 susceptible of

adequate measurement for remedy at law." Int'l Kennel Club, Inc. v. Mighty Star, Inc.,

20 '846 F.2d 1079, 1092 (7th Cir. 1988) (quoting Processed Plastic Co. v. Warner Communications, Inc.,
21 675 F.2d 852, 858 (7th Cir. 1982)); see also Lone Star Steakhouse & Saloon v. Alpha of

Virginia, 43

22 F.3d 922,939 (4th Cir. 1995) ("we recognize that irreparable injury regularly follows from trademark
23 infrngement"). Accordingly, "(i)njunctive relief

is the remedy of choice for trademark and unfair

24 competition cases, since there is no adequate remedy at law for the injury caused by a defendant's

25 continuing infrngement." Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir.
26 1988); see also Lermer Germany GmbH v. Lermer Corp., 94 F.3d 1575, 1577 (Fed. Cir. 1996) ("(a) 27 permanent injunction issues to a party after winning on the merits and is ordinarily granted upon a
28 finding of

trademark infringement"), cert. denied, 519 US. 1059 (1977). A permanent injunction is

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1 particularly appropriate here where there is evidence that the infrnger has not ceased use of

the

2 infrnging marks and photographs. Absent injunctive relief, Defendants' infrngement will continue
3 unabated.

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B.

Attorneys' Fees and Costs
1.

Attorneys Fees and Costs under the Copyright Act

6 WSI also seeks an award of its attorneys' fees and costs in this action. The award of costs and
7 attorneys fees is explicitly authorized by the Copyrght Act, 17 US.e. § 505, which provides:

8 "In any civil action under this title, the court in its discretion may allow the recovery of full costs by or
9 against any party other than the United States or an officer thereof. Except as otherwise provided this

10 title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs."

11 The policy in favor of awarding attorney fees to the prevailing party in copyrght infrngement cases
12 are well-summarzed in Branch v. Ogilvy, 772 F.Supp. 1359, 1365 (S.D.N.Y. 1991): "Although
13 discretionary, awarding attorney's fees is the rule rather than the exception." Micromanipulator Co. v.

14 Bough, 779 F.2d 255,259 (5th Cir. 1985). Attorney's fees are awarded in order to assure equal access
15 to the courts, to provide an economic incentive to challenge infrngements, and to penalize the losing

16 pary. Oboler v. Goldin, 714 F.2d 211,213 (2d Cir. 1983) (citing Quinto v. Legal Times of
17 Washington, Inc., 511 F.Supp. 579, 581 (D.D.C. 1981)). Thus, because the puroses of Section 505 18 are to encourage the assertion of colorable copyrght claims and to deter infrngement, prevailing

19 plaintiffs usually recover their fees. The copyrght act makes clear that WSI is entitled to recovery of
20 its attorneys' fees and costs, the amount of

which is set forth in the attached Declaration.

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2.

Attorneys fees and Costs for Trademark Infringement

22 Cours also award a prevailing trademark plaintiff its attorneys' fees and costs when the
23 defendant's infringements were deliberate or willfuL. Intel Corp. v. Terabyte Int'l, Inc., 6 F.3d 614,

24 621 (9th Cir. 1993). "(G)enerally, a trademark case is exceptional for puroses of an award of
25 attorneys' fees when the infrngement is malicious, fraudulent, deliberate, or willfuL" Id. (quoting
26 Lindy Pen Co. v. Bic Corp., 982 F.2d 1400, 1409 (9th Cir.), cert. denied, 510 US. 815 (1993)). WSI
27 has alleged in its complaint that Defendants' infringement was intentional and this is an "exceptional"
28 case. (Complaint ii 41.) This allegation must be deemed true as a result of

Defendants' default and it

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1 is well established that a case may be considered "exceptional" where the defendant disregards the
2 proceedings and does not appear. See, e.g, Taylor Made Golf

Co., Inc., 1997 US. Dist. LEXIS 16998

3 at *663. That is this case. WSI, again, is entitled to recover its attorneys' fees and costs.

4 iv. CONCLUSION
5 For the foregoing reasons, WSI respectfully requests that this Court enter a default judgment

6 against defendant Defendants, Inc., grant injunctive relief and reimburse WSI for its attorneys' fees

7 and costs incurred, as set forth in the accompanying proposed Judgment.
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DATED: July 9,2008

Respectfully submitted,

TOWNSEND AN TOWNSEND AND CREW LLP

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By: Isl Tali L. Alban
Gregory S. Gilchrst Tali L. Alban Attorneys for Plaintiff

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WILLIAS-SONOMA, INe.

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1

CERTIFICATE OF SERVICE
(e.e.P. §§ 1011 and 1013, e.R.C.§ 2008, F.R.C.P. Rule 5, F.R.A.P. 25)

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I declare that I am employed in the City and County of San Francisco, California; I am over the age of 18 years and not a pary to the within action; my business address is Two Embarcadero Center, Eighth Floor, San Francisco, California, 94111. On the date set forth below, I served a true
and accurate copy of

the document(s) entitled:

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lLAINTIFF WILLIAMS-SONOMA, INC.'S NOTICE OF APPLICATION AND APPLICATION FOR DEFAULT JUDGMENT BY COURT
on the party(ies) in this action by placing said copy(ies) in a sealed envelope each addressed as follows:
Danielle Sechrest 21036 Torrence Chapel Road Cornelius, NC 28031
Steven Sechrest 21036 Torrence Chapel Road Cornelius, NC 28031
James Killan 19219 Dutch Irs Drive

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Cornelius, NC 28031

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L8 (By First Class Mail) I am readily familiar with my employer's practice for collecting and processing documents for mailing with the United States Postal Service. On the date listed herein, following ordinary business practice, I served the within document(s) at my place of business, by
placing a tre copy thereof, enclosed in a sealed envelope, with postage thereon fully prepaid, for

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United States Postal Service that same day in the ordinary course of

collection and mailing with the United States Postal Service where it would be deposited with the business.

D (By Overnight Courier) I ca~sed each envelope to be delivered by a commercial carrer
service for overnight delivery to the offces of

the addressee(s).

D (By Hand) I directed each envelope to the party(ies) so designated on the service list to
be delivered by courier this date.

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transmission to the fax number indicated for the pary(ies) listed above.

D (By Facsimile Transmission) I caused said document to be sent by facsimile

D (By Electronic Transmission) I caused said document to be sent by electronic
transmission to the e-mail addressees) indicated for the pary(ies) listed above.

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I declare under penalty ofpeijury that the foregoing is true and correct and that this declaration was executed this date at San Francisco, California.
Dated: July 9, 2008

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PROOF OF SERVICE CASE NO. CV-08-1597 RS