Ferragamo S.P.A. v. Does 1-56

Background

Salvatore Ferragamo S.p.A., described in the opinion as an Italian retailer of luxury goods, sued 56 unidentified operators of websites selling unauthorized replicas of Ferragamo footwear, handbags, wallets, clothing, and other goods. The websites allegedly displayed Ferragamo’s registered trademarks and logos, and the goods allegedly contained counterfeit reproductions of those marks. Some defendants allegedly registered domain names that incorporated Ferragamo’s trademarks or confusingly similar variations.

The court had authorized service by email. Ferragamo served the defendants with the summons and complaint on February 7, 2019, and served a preliminary injunction on May 29, 2019. The defendants never filed answers or otherwise appeared. The clerk entered certificates of default on June 26, 2019. Ferragamo then moved for default judgment, statutory damages, and a permanent injunction.

Default-judgment standard

A default judgment is a judgment entered when a defendant fails to plead or otherwise defend. The court treated the complaint’s well-pleaded factual allegations as admitted for purposes of the motion, but still independently determined whether those facts established legal liability.

Federal trademark claims

The court granted default judgment on Ferragamo’s claims for trademark counterfeiting, trademark infringement, and false designation of origin under the Lanham Act. Ferragamo alleged that it owned federally registered trademarks, that the defendants used those marks without consent in connection with selling goods, and that the use was likely to confuse consumers. The court found those allegations sufficient to establish the claims.

The court also granted default judgment on trademark dilution. Ferragamo alleged that its marks were famous and distinctive, that the defendants’ use was commercial and began after the marks became famous, and that the use caused blurring and tarnishment.

For the cybersquatting claim against the subset of defendants identified as the Cybersquatting Defendants, the court found sufficient allegations that Ferragamo’s marks were distinctive or famous, that the domain names were identical or confusingly similar to those marks, and that the defendants acted with an intent to profit or otherwise in bad faith. Default judgment was granted on that claim.

New York claims

The court granted default judgment on Ferragamo’s New York trademark-dilution claim. Because the federal dilution claim met a more demanding standard, the court concluded that Ferragamo also stated a claim under New York law.

The court denied default judgment on the claims under sections 349 and 350 of the New York General Business Law, which concern deceptive acts and practices and false advertising. The court said Ferragamo alleged only general consumer confusion of the type ordinarily found in trademark-infringement cases, not a specific and substantial injury to the public interest beyond ordinary infringement or dilution.

The court granted default judgment on Ferragamo’s New York common-law trademark-infringement and unfair-competition claims. It said those claims generally mirror the federal trademark claims, with unfair competition requiring an additional showing of bad faith, and that the use of counterfeit marks established the necessary elements.

Statutory damages

Ferragamo chose statutory damages instead of proving actual damages. The court stated that the defendants’ default meant their infringement was treated as willful for purposes of the damages analysis. Although Ferragamo could have sought at least $2 million from each defendant under the court’s stated calculation, Ferragamo requested $50,000 from each defendant.

The court awarded $50,000 in statutory damages against each defendant. It relied on the value of Ferragamo’s trademarks, the willful nature of the conduct, and the need for deterrence, while noting that the defendants’ default prevented more specific findings about several damages factors. Ferragamo did not seek a separate award of attorney’s fees; it asked that costs and fees be considered in calculating statutory damages.

Permanent injunction

The court granted Ferragamo’s request for a permanent injunction. It found that Ferragamo had succeeded on the merits of the claims on which judgment was granted, and that continued infringement threatened irreparable injury. The court also found that monetary damages were inadequate to precisely compensate for potential harm to reputation, goodwill, and customers; that the balance of hardships favored Ferragamo; and that the public interest favored preventing consumers from being deceived by goods of unknown origin and quality.

Disposition

The court granted Ferragamo’s motion for default judgment and for a permanent injunction. It directed that an accompanying judgment be issued, instructed the clerk to close the motion at Docket Number 23, and directed the clerk to close the case.