Tiffany (NJ), LLC v. Dongping
2010 WL 4450451 (S.D. Fla. 2010)
Facts: Plaintiff Tiffany is a limited liability company engaged in the manufacture, promotion, and distribution of high quality products, which have been sold throughout the United States. Relevant to this case, Tiffany is the owner of 19 federally registered trademarks (name/logo) and six copyright registrations (jewelry designs). Defendant Dongping has advertised, offered for sale, and sold merchandise bearing counterfeits, reproductions, and/or colorable imitations of the Tiffany trademarks and works protected by Tiffany copyrights via various websites (i.e. tiffanybetter.com, tobling.com, besttifany.com). Plaintiff retained an investigator who was able to visually identify several items on Defendant’s websites to be exact duplicates of Tiffany merchandise. Furthermore, the investigator placed an order through one of the websites (traced to a location in China) and received a non-genuine Tiffany branded Heart Tag key ring as well as a branded pouch, gift box and gift bag. Defendant was served with notice of claims for federal trademark counterfeiting and infringement, false designation of origin, cyberpiracy, and copyright infringement. Defendant failed to appear, plead, or otherwise defend the action and Plaintiff has now moved for entry of final default judgment against Defendant.
Issue: Whether Defendant’s advertising and sale of products imitating Tiffany brand products constitutes trademark infringement, false designation of origin, cyberpiracy, and/or copyright infringement.
Holding: Defendant is liable under each claim.
Analysis:
Trademark Infringement/False Designation of Origin: Tiffany trademark registrations prior to Defendant’s use, Defendant’s advertising and sale of goods bearing such marks without Plaintiff’s consent, and the likelihood of confusion resulting from similarity of the marks establish trademark infringement. The same facts that establish trademark infringement also establish the broader claim of false designation of origin under the Lanham Act due mostly to the high likelihood of consumer confusion. Permanent injunctive relief is awarded as well as $513,000 in statutory damages calculated according to the number of marks counterfeited and the various types of goods sold with such mark(s).
Cyberpiracy: Plaintiff’s allegations meet the three requirements under the Anticybersquatting Consumer Protection Act (ACPA) therefore the defendant is liable for cyberpiracy. The evidence demonstrates that the Tiffany mark is distinctive and famous, Defendant’s domain name is confusingly similar to the Tiffany mark and the Defendant registered the domain name with a bad faith intent to profit. Plaintiff is awarded $80,000 in statutory damages calculated according to the number of violating domain names used by Defendant.
Copyright Infringement: Because the Plaintiff’s allegations are unopposed, Plaintiff’s demonstration that it owns valid copyrights and that Defendant created “exact duplicates†is enough to establish infringement. Plaintiff is awarded $180,000 in statutory damages calculated according to the number of copyrights violated. Costs for filing are awarded as well.
2010 WL 4450451 (S.D. Fla. 2010)
Facts: Plaintiff Tiffany is a limited liability company engaged in the manufacture, promotion, and distribution of high quality products, which have been sold throughout the United States. Relevant to this case, Tiffany is the owner of 19 federally registered trademarks (name/logo) and six copyright registrations (jewelry designs). Defendant Dongping has advertised, offered for sale, and sold merchandise bearing counterfeits, reproductions, and/or colorable imitations of the Tiffany trademarks and works protected by Tiffany copyrights via various websites (i.e. tiffanybetter.com, tobling.com, besttifany.com). Plaintiff retained an investigator who was able to visually identify several items on Defendant’s websites to be exact duplicates of Tiffany merchandise. Furthermore, the investigator placed an order through one of the websites (traced to a location in China) and received a non-genuine Tiffany branded Heart Tag key ring as well as a branded pouch, gift box and gift bag. Defendant was served with notice of claims for federal trademark counterfeiting and infringement, false designation of origin, cyberpiracy, and copyright infringement. Defendant failed to appear, plead, or otherwise defend the action and Plaintiff has now moved for entry of final default judgment against Defendant.
Issue: Whether Defendant’s advertising and sale of products imitating Tiffany brand products constitutes trademark infringement, false designation of origin, cyberpiracy, and/or copyright infringement.
Holding: Defendant is liable under each claim.
Analysis:
Trademark Infringement/False Designation of Origin: Tiffany trademark registrations prior to Defendant’s use, Defendant’s advertising and sale of goods bearing such marks without Plaintiff’s consent, and the likelihood of confusion resulting from similarity of the marks establish trademark infringement. The same facts that establish trademark infringement also establish the broader claim of false designation of origin under the Lanham Act due mostly to the high likelihood of consumer confusion. Permanent injunctive relief is awarded as well as $513,000 in statutory damages calculated according to the number of marks counterfeited and the various types of goods sold with such mark(s).
Cyberpiracy: Plaintiff’s allegations meet the three requirements under the Anticybersquatting Consumer Protection Act (ACPA) therefore the defendant is liable for cyberpiracy. The evidence demonstrates that the Tiffany mark is distinctive and famous, Defendant’s domain name is confusingly similar to the Tiffany mark and the Defendant registered the domain name with a bad faith intent to profit. Plaintiff is awarded $80,000 in statutory damages calculated according to the number of violating domain names used by Defendant.
Copyright Infringement: Because the Plaintiff’s allegations are unopposed, Plaintiff’s demonstration that it owns valid copyrights and that Defendant created “exact duplicates†is enough to establish infringement. Plaintiff is awarded $180,000 in statutory damages calculated according to the number of copyrights violated. Costs for filing are awarded as well.