Automobili Lamborghini S.P.A. v. Garcia
| Decision Date | 16 June 2020 |
| Docket Number | Case No. 1:18-cv-62 |
| Citation | 467 F.Supp.3d 385 |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | AUTOMOBILI LAMBORGHINI S.P.A., et al., Plaintiffs, v. Jorge Antonio Fernandez GARCIA, Defendant. |
Daniel Yonan, Monica Riva Talley, Sterne, Kessler, Goldstein & Fox PLLC, Washington, DC, for Plaintiffs.
Warren Arthur Zitlau, Cahn & Samuels LLP, Washington, DC, for Defendant.
AMENDED MEMORANDUM OPINION 1
This trademark infringement and declaratory judgment action arises from the alleged marketing and sale of counterfeit Lamborghini-marked merchandise in the United States by defendants on the website www.lamborghinigrupo.com.2 Based on this alleged conduct by defendants, plaintiffs, the owner of the Lamborghini trademark and two corporate affiliates, have asserted claims of (i) trademark infringement and counterfeiting, (ii) cybersquatting, (iii) false designation of origin, and (iv) trademark dilution under the Lanham Act. See 15 U.S.C. Sections 1114, 1116, 1117, 1125(a), 1125(c), 1125(d). Plaintiffs also seek a declaratory judgment against Garcia pursuant to 28 U.S.C. § 2201(a) that Garcia's purported licensing agreements with Lamborghini are (v) invalid, (vi) unenforceable, and (vii) fraudulent.
At issue in this case is plaintiffs' motion for default judgment against Garcia. Plaintiffs' default judgment motion was referred to the Magistrate Judge for a Report and Recommendation pursuant to 28 U.S.C. § 636(b)(1)(B). On April 20, 2020, the Magistrate Judge entered a Report and Recommendation (the "Report") in this case, recommending that plaintiffs' default judgment motion be granted in part and denied in part. Specifically, the Report recommended that default judgment be entered against Garcia on Counts I, III, IV, V, VI, and VII of plaintiffs' First Amended Complaint ("FAC") and that default judgment be denied without prejudice on Count II of the FAC. On May 11, 2020, Garcia filed objections to the Report.3 In his objections, Garcia requests (i) that judgment on plaintiffs' motion for default judgment be postponed until after a decision on his appeal of the November 7, 2019 Order in this case; (ii) that default judgment not be entered so that he can defend himself in this matter; (iii) that default judgment not be entered because service was improper under the Hague Convention; and (iv) that all the recommendations in the Report be rejected.
For the reasons that follow, Garcia's objections are overruled, the Magistrate Judge's Report is adopted, and plaintiffs' motion for default judgment is granted in part and denied in part.
The Magistrate Judge's Report fully and correctly sets forth the procedural and factual history of this case. See Report, Dkt. 209, at 1-7, 9-14. Accordingly, the Court adopts as its own the procedural and factual background set forth in the Report.
On January 12, 2018, plaintiffs filed this lawsuit against four defendants: (i) Jorge Antonio Fernandez Garcia, (ii) Anthony Crudup, (iii) Robert Braner, and (iv) Lamborghini Latino America USA. Plaintiffs brought claims of trademark infringement and counterfeiting, cybersquatting, false designation of origin, and trademark dilution because defendants allegedly "trade[d] upon Lamborghini's world-renowned reputation by selling unauthorized and unlicensed counterfeit products and us[ed] counterfeit versions of Lamborghini's federally-registered trademarks." Complaint, Dkt. 1, at ¶ 2.
Between May 2018 and December 2018, plaintiffs were granted three extensions of time to serve defendant Garcia because Garcia was utilizing evasive tactics to avoid plaintiffs' attempts to serve him in Argentina pursuant to the Hague Convention and Rule 4(f)(1), Fed. R. Civ. P.4 Specifically, plaintiffs hired two different foreign service firms and spent nearly twelve months attempting to serve Garcia in Argentina in accordance with the Hague Convention and Rule 4(f)(1), Fed. R. Civ. P.5 These efforts culminated on October 2, 2018 when Argentinian authorities, acting in accordance with the Hague Convention, attempted to serve Garcia at his known address and discovered that it was vacant and under construction.6 Moreover, Garcia and his Mexican attorney were communicating with plaintiffs via email during this same time period, and they ignored plaintiffs' inquiries related to service of the complaint in this lawsuit.7 After these failed attempts to effect service on Garcia in accordance with the Hague Convention, plaintiffs requested on December 12, 2018 that they be allowed to serve Garcia via email pursuant to Rule 4(f)(3), Fed. R. Civ. P.8 On January 18, 2019, an Order issued granting plaintiffs' request to serve Garcia via email.9
On February 12, 2019, over a year after plaintiffs filed the original complaint, counsel filed a notice of appearance on behalf of Garcia.10 On February 27, 2019, Garcia, by counsel, filed a motion to dismiss for lack of personal jurisdiction and for failure to state a claim. After extensive briefing and an evidentiary hearing held on August 1, 2019, Garcia's motion to dismiss was denied by Order dated August 21, 2019 because (i) personal jurisdiction could be exercised over Garcia pursuant to Rule 4(k)(2), Fed. R. Civ. P., and (ii) plaintiffs alleged sufficient facts to state a claim on which relief could be granted.11
On September 4, 2019, Garcia, by counsel, filed an answer to plaintiffs' complaint. Shortly thereafter, Garcia's attorneys filed a motion to withdraw as counsel of record because circumstances rendered their further services "impossible."12 On September 26, 2019, plaintiffs filed a motion for leave to file the FAC. On October 4, 2019, after holding a hearing on Garcia's attorneys' motion to withdraw, an Order issued that held the motion in abeyance and ordered that Garcia hire new counsel or enter a sworn declaration that he intended to proceed pro se by November 4, 2019.13 On October 23, 2019, Garcia sent a letter to the Court which was docketed, and the letter (i) represented that he terminated his attorneys because he could no longer afford their services, (ii) stated that he intended to proceed pro se in this matter, (iii) requested that a pro bono counsel be appointed to represent him, and (iv) requested that all matters related to this case be sent to him via his email address (joanferci@gmail.com).14
On October 28, 2019, an Order issued that denied Garcia's request for pro bono representation and granted Garcia's attorneys' motion to withdraw.15 The October 28, 2019 Order further reminded Garcia of his ongoing discovery obligations and granted Garcia an additional fourteen days to object to plaintiffs' motion for leave to file the FAC. On November 6, 2019, Garcia submitted another letter. Garcia's November 6, 2019 letter requested reconsideration of the denial of his request for pro bono counsel and objected to plaintiffs' motion for leave to file the FAC.16 On November 7, 2019, an Order issued that denied Garcia's motion for reconsideration and granted plaintiffs' motion for leave to file the FAC.17 On November 8, 2019, plaintiffs filed the FAC and served the FAC on Garcia via the email address Garcia had provided for all case-related materials and communication.18 On November 18, 2019, Garcia filed a notice of appeal of the November 7, 2019 Order.
Despite sending multiple letters to the Court that were docketed during November 2019, Garcia failed to respond to the FAC within the fourteen days provided pursuant to Rule 15(a)(3), Fed. R. Civ. P. Accordingly, on November 26, 2019, plaintiffs requested the clerk's entry of default as to Garcia, and the clerk entered default on November 27, 2019.19 On December 13, 2019, plaintiffs filed the instant motion for default judgment against Garcia.20 Plaintiffs' default judgment motion was referred to the Magistrate Judge for a Report and Recommendation pursuant to 28 U.S.C. § 636(b)(1)(B). On December 20, 2019, a hearing was held on plaintiffs' motion for default judgment, Garcia did not appear, and the Magistrate Judge took the matter under advisement.21 On April 20, 2020, the Magistrate Judge entered the Report in this case, recommending that plaintiffs' default judgment motion be granted in part and denied in part. On May 11, 2020, Garcia filed objections to the Report.
In addition to failing to respond to plaintiffs' FAC, Garcia has refused to fulfill his discovery obligations in this matter. Specifically, Garcia has refused (i) to produce materials responsive to plaintiffs' First Set of Requests for Production, (ii) to respond to plaintiffs' First Set of Interrogatories, and (iii) to make himself available for a deposition.22 Plaintiffs served these discovery requests on Garcia's counsel on October 2, 2019, and re-served them on Garcia on October 28, 2019 and November 8, 2019 after Garcia chose to proceed pro se in this matter.23 On November 26, 2019, plaintiffs filed a motion to compel full discovery responses and to compel the deposition appearance of Garcia.24 On December 10, 2019, an Order issued that granted plaintiffs' motion to compel and ordered Garcia to respond to plaintiffs' discovery requests and to appear for a deposition.25 Garcia has still not responded to plaintiffs' discovery requests nor made himself available for a deposition in this matter.
Although the procedural history of this matter is quite lengthy, the factual record can be succinctly set forth.26 Garcia is an individual residing in Argentina. Plaintiffs manufacture and sell high-end automobiles, automobile parts and accessories, and branded merchandise, all of which utilize a bull logo to represent the brand, through a network of licensed dealerships in the United States and through online stores at www.lamborghini.com and www.lamborghinistore.com.27 Plaintiff Lamborghini owns several distinctive trademarks that are registered with the U.S. Patent and Trademark Office ("USPTO").28
The FAC alleges that the four defendants...
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