2010 order is modified to award Fenditreble damages for all of thecounterfeit goods at issue.
I. Standard of Review
[HN1] The standard for willfulnessis whether the defendant had knowledgethat his or her conduct representedinfringement or recklessly disregardedthe possibility.
Kepner-Tregoe, Inc.v. Vroom, 186 F.3d 283, 288 (2d Cir.1999)
see Koon Chun Hing Kee Soy &Sauce Factory, Ltd. v. Star Mark Mgmt,No 04 Civ. 2293 (JFB), 2007 U.S. Dist.LEXIS 1404, 2007 WL 74304, at * 11(E.D.N.Y. Jan. 8, 2007)
(applying thewillfulness standard in
to claims brought under the LanhamAct);
Nike, Inc. v. Top Brand Co., No.00 Civ. 8179 (KMW), 2005 U.S. Dist.LEXIS 42374, 2005 WL 1654859, at * 6 (S.D.N.Y. July 13, 2005)
(same). Whilecaution must be exercised in grantingsummary judgment when state of mind isan issue, the summary judgment rule"would be rendered sterile" if themere existence of an issue as to stateof mind would automatically defeat anotherwise [**5] valid motion.
NoraBeverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114, 125 (2d Cir. 2001)
. Where the defendant offersno probative evidence raising agenuine issue of material factregarding willfulness, summaryjudgment is appropriate. [*609]
Tanning Research Lab., Inc. v.Worldwide Import & Export Corp., 803F. Supp. 606, 610 (E.D.N.Y. 1992)
II. Willfulness of Pre-2004 Sales
[HN2] "Willful infringement may beattributed to the defendant's actionswhere he had knowledge that hisconduct constituted infringement orwhere he showed a reckless disregardfor the owner's rights."
Johnson &Johnson Consumer Companies, Inc. v.Aini, 540 F. Supp. 2d 374, 396 (E.D.N.Y. 2008)
see also Cartier Int'l B.V. v. Ben-Menachem No. 06 Civ.3917 (RWS), 2007 U.S. Dist. LEXIS95366, 2008 WL 64005, at * 14(S.D.N.Y. Jan. 3, 2008)
(Conduct canbe found to be willful where thedefendant "recklessly disregarded thepossibility" that his or her conductconstituted infringement.). Courtshave repeatedly found willfulnesswhere a defendant receives a cease anddesist letter but continues theinfringing conduct.
See Fendi, 2010U.S. Dist. LEXIS 10628, 2010 WL431509, at * 10
(collecting cases).Courts have also found willfulinfringement where the infringingparty was [**6] found liable and thendid not alter or cease the infringingactivity.
See Burberry Ltd. v. EuroModa, No. 08 Civ. 5781 (CM), 2009 U.S.Dist. LEXIS 113407, 2009 WL 4432678,at * 3 (S.D.N.Y. Dec. 4, 2009)
(finding ample evidence of willfulnesswhere a prior settlement putdefendants on notice of the infringingactivity, yet defendants persisted inthe same conduct);
Kepner-Tregoe,Inc., 186 F.3d at 288
(findingcopyright infringement was willfulwhere the defendant "chose to ignorethe injunction [issued by a Texasdistrict court and upheld by the FifthCircuit] and continued to use the MPOprogram" that had been found to beinfringing);
Viacom Int'l Inc. v.Fanzine Int'l, Inc., No. 98 Civ. 7448(RCC), 2001 U.S. Dist. LEXIS 11925,2001 WL 930248, at * 4 (S.D.N.Y. Aug.16, 2001)
(where the defendant hadbeen sued at least two times in theprevious year, with one suit resultingin a default judgment against thedefendant, the court found that thedefendant's subsequent "strikinglysimilar conduct" suggests that thedefendant "knew or should have knownthat its actions constituted[copyright] infringement.").When Burlington took no action tocomply with the 1987 Injunction andbegan violating the injunction asearly as 1993,
Burlington showed[**7] a reckless disregard for Fendi'strademark rights.
Johnson & Johnson,540 F. Supp. 2d at 396
. The 1987Injunction, like a cease and desistletter or a finding of liability, putBurlington on notice that its behaviorwas potentially infringing on Fendi'strademark. In fact, the injunction waseven more specific than a cease and