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Decision Motorola Damages

Decision Motorola Damages

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Published by mschwimmer
decision in SDNY awarding motorola damages for trademark infringement
decision in SDNY awarding motorola damages for trademark infringement

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Published by: mschwimmer on Aug 24, 2009
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UNITED STATES DISTRICT COURTEASTER DISTRICT OF NEW YORK---------------------------------------------------------XMOTOROLA, INC.,Plaintiff,REPORT &-against- RECOMMENDATION07-cv-3963 (CPS)GAD ABECKASER a/k/a Gadi Abeckaser, et al.,Defendants.---------------------------------------------------------XGold, S.,
United States Magistrate Judge
:By Memorandum Opinion & Order (“M&O”) dated April 8, 2009, Senior United StatesDistrict Judge Charles P. Sifton granted plaintiff’s motion for partial summary judgment.Docket Entry 29,
also available at
2009 WL 962809 (E.D.N.Y. Apr. 8, 2008). In his decision, JudgeSifton found defendants liable for federal trademark counterfeiting and infringement and falsedesignation of origin, in violation of the Lanham Act, 15 U.S.C. § 1051
et seq.
 , and held thatdefendants’ violation was willful. Judge Sifton granted plaintiff’s motion insofar as it sought apermanent injunction, but concluded that issues of fact precluded granting the statutorydamages and attorney’s fees and costs sought by plaintiff.By letter dated May 26, 2009, plaintiff sought leave to submit additional evidence andcase law in support of an award of statutory damages and attorney’s fees. Docket Entry 47. Inresponse, Judge Sifton issued an order permitting plaintiff to seek suitable relief pursuant toFederal Rule of Civil Procedure 54(b). Docket Entry 48. Plaintiff then moved for judgmentpursuant to Federal Rule of Civil Procedure 54(b), Docket Entry 49, and Judge Sifton referred
Case 1:07-cv-03963-CPS-SMG Document 52 Filed 08/05/09 Page 1 of 15
the motion to me for a report and recommendation on what amount to award plaintiff indamages, fees and costs.
Docket Entry 50.The underlying facts of this case are set forth in detail in Judge Sifton’s M&O, and Itherefore review them only briefly here. Motorola is a Delaware corporation that manufacturesand sells mobile communication devices and accessories. M&O 2-3. Plaintiff owns threeregistered trademarks and actively uses them in promoting and selling its products.
at 3.In March 2007, the United States Customs Service seized merchandise imported bydefendants and bearing counterfeit Motorola trademarks.
at 4. Shortly thereafter, plaintiffsent a cease-and-desist letter to defendants, informing defendants of plaintiff’s trademarks andordering them to stop conducting any business involving merchandise bearing counterfeitversions of plaintiff’s trademarks.
Plaintiff then hired private investigators who, togetherwith New York City police officers, purchased items from defendants in June and August of2007 bearing plaintiff’s trademarks.
at 4-5. Plaintiff determined that the goods purchased bythe police officers and private investigators were counterfeit. In September 2007, New YorkCity police officers executed search warrants at defendants’ businesses and seized counterfeitMotorola goods.
at 7. Thereafter, plaintiff brought this action.
Although plaintiff Motorola moves for entry of judgment pursuant to Rule 54(b), it concedes that theadditional counts in the complaint seek relief for essentially the same conduct. Pl. Mem. 2 n.2. Plaintiffstates that it does not intend to pursue its additional claims against defendants once a final judgment anda permanent injunction are entered on counts one and two.
Accordingly, I do not consider in thisreport whether, as Rule 54(b) generally requires, “there is no just reason for delay,” and insteadrespectfully recommend that, if this report is adopted, a final judgment be entered and this case be closed.
Case 1:07-cv-03963-CPS-SMG Document 52 Filed 08/05/09 Page 2 of 15
 On June 24, 2009, I issued an order pointing out that, although their time to do so hadexpired, defendants had failed to file any opposition to plaintiff’s motion. The order alerteddefendants that I would consider plaintiff’s motion unopposed, and the relief sought byplaintiff conceded, if defendants failed to submit their opposition by June 30, 2009.Nevertheless, defendants, although they have appeared in this action through counsel, havefailed to file any opposition to plaintiff’s motion, seek an extension of time to do so, orotherwise communicate with the court. Accordingly, I conclude that defendants have concededplaintiff’s right to the relief sought in its motion.
I. Statutory Damages
Motorola seeks an award of statutory damages in the minimum amount of $1,500,000 upto a maximum of $16,000,000 for defendants’ willful violation of the Lanham Act. Pl. Mem. 2.
A party electing to recover statutory damages may recover from $1,000 to $200,000 percounterfeit mark per type of goods sold. A plaintiff in a trademark infringement case may elect to recover either actual or statutorydamages. 15 U.S.C. § 1117. The Lanham Act permits recovery of statutory damages because“counterfeiters’ records are frequently nonexistent, inadequate, or deceptively kept . . ., makingproving actual damages in these cases extremely difficult if not impossible.”
Rodgers v. Anderson
 , 2005 WL 950021, at *2 (S.D.N.Y. Apr. 26, 2005) (internal citations omitted).
“Pl. Mem.” refers to plaintiff’s Memorandum of Law in Support of Plaintiff’s Motion for JudgmentPursuant to FRCP 54(b), Docket Entry 49.
15 U.S.C. § 1117(c)(1). A maximum of $2,000,000 per
In 2008, Congress increased the amounts recoverable as statutory damages. The prior version providedthat a court could award $500 to $100,000 per violation and a maximum of $1,000,000 per violation in
Case 1:07-cv-03963-CPS-SMG Document 52 Filed 08/05/09 Page 3 of 15

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