Godinger Silver Art. v. Shenzen Tangson Houseware Co.
| Decision Date | 31 January 2023 |
| Docket Number | 21 Civ. 2674 (LDH) (VMS) |
| Parties | GODINGER SILVER ART LTD., Plaintiff, v. SHENZEN TANGSON HOUSEWARE CO., LTD. d/b/a AMAZON STOREFRONT HOMESIGNATURE, LIGHTEN UP LIFE INC., Defendants. |
| Court | U.S. District Court — Eastern District of New York |
REPORT AND RECOMMENDATION
Plaintiff Godinger Silver Art Ltd. (“Plaintiff”) brought this action against Defendant Light Up Life Inc.[1] (hereafter, “Defendant”), alleging that Defendant (1) infringed on Plaintiff's patent in violation of 35 U.S.C. § 271[2] (“Count I”); (2) committed federal unfair competition in violation of 15 U.S.C. § 1125(a)(1)(A)[3] (“Count II”); (3) committed unfair competition under New York common law (“Count III”); and (4) violated N.Y. Gen. Bus. Law §§ 349[4] and 350[5] (“Count IV”). See ECF No. 6 passim. Before the Court is Plaintiff's motion for default judgment against Defendant, which has not appeared. See ECF No. 13. The Honorable LaShann DeArcy Hall referred the motion to this Court for a report and recommendation. For the following reasons, I respectfully recommend that the District Judge grant Plaintiff's motion for default judgment with respect to Count I; deny without prejudice the motion with respect to Counts II, III and IV with leave to replead; and grant a permanent injunction enjoining Defendants from infringing U.S. Patent No. D846,947 (hereafter, “the ‘947 Patent”) in the future.
The following facts are drawn from the docket and Plaintiff's amended complaint. See ECF No. 6.
Plaintiff, a New York corporation that specializes in crafted silver and crystal goods, is the assignee of the ‘947 Patent, which patents a drinking glass with a built-in cigar holder. Id. ¶¶ 2, 11-12. Among other products, Defendant manufactures, markets and sells the “Lighten Life Cigar Glass,” consisting of a drinking glass with built-in cigar holder identical to the ‘947 Patent. Id. ¶ 13. The Lighten Life Cigar Glass comes in a rounded form and semi-circular form, both of which have been sold by Defendant since at least July 14, 2020, and are available for purchase on Amazon.com. Id. ¶¶ 13-15. Plaintiff provided side-by-side comparisons of the ‘947 Patent and both forms of the Lighten Life Cigar Glass. Id. ¶ 25.
Plaintiff claims that Defendant “ha[s] been aware of the ‘947 Patent” and “ha[s] continued to infringe . . . with knowledge, understanding and appreciation of the ‘947 Patent and the rights it bestows upon Plaintiff.” Id. ¶¶ 16-17. Defendant's continued sale of the Lighten Life Cigar Glass “evidence[s] a willful and wanton disregard of Plaintiff's right vis-a-vis the ‘947 Patent and a desire to profit, without regard or respect for U.S. patent laws.” Id. ¶ 19. Plaintiff submitted with the amended complaint a copy of the ‘947 Patent, see ECF No. 6-1; and screenshots of Defendant's Amazon store pages for both forms of the Lighten Life Cigar Glass, see ECF No. 6-2.
Plaintiff commenced the action against Defendant. See ECF No. 1. Plaintiff filed an amended complaint. See ECF No. 6. Plaintiff's summons against Defendant was returned executed; Plaintiff provided an affidavit of service indicating that it had delivered the summons and amended complaint to the Office of the Secretary of State of New York. See ECF No. 10. Defendant did not answer or otherwise respond to the amended complaint.
Plaintiff requested a certificate of default, which the Clerk of Court entered. See ECF Nos. 11, 12. Plaintiff filed the instant motion. See ECF No. 13. In the motion, Plaintiff seeks a permanent injunction barring Defendant from further infringing the ‘947 Patent. See ECF No. 13-1 at 9-11. Plaintiff requests an inquest to determine monetary damages. Id. At 11-12. Plaintiff also requests attorney's fees and costs, without specifying a total dollar amount requested or the hours worked by Plaintiff's attorneys. Id. at 11.
The Court scheduled a telephone conference to discuss the default judgment motion; attempted to invite Defendant to attend by mailing the Order, docket sheet and amended complaint to 228 Park Avenue, Suite #79525, New York, NY 10003, and 1060 Broadway Suite 3000, Albany, NY, 12204; and warned Defendant that failure to participate in the lawsuit may result in a judgment against Defendant. See ECF No. 14. Plaintiff filed a certificate of service stating that it served the Order and full docket sheet on Defendant by giving them to the New York Secretary of State. See ECF No. 15. The Court's mailings to Defendant's purported Albany address were returned as undeliverable with notations that there was “No Such Customer.” See ECF No. 16. The Court ordered Plaintiff to provide a valid mailing address for Defendant. See Dkt. Entry 10/28/2022 Order.
Plaintiff provided information about its service efforts. See ECF No. 17. Plaintiff responded that Plaintiff was unable to find a valid mailing address for Defendant. Id. at 1. The Park Avenue address had been found in Defendant's 2018 articles of incorporation and 2020 biennial statement with the New York Department of State. See ECF Nos. 17-1, 17-2. Plaintiff learned that the Park Avenue address is a rented mailbox at which Defendant is no longer receiving mail as of October 11, 2022. See ECF Nos. 17 at 1, 17-3. The Albany address was listed as its address for service of process on Defendant's September 2022 biennial statement with the New York Department of Service. See ECF No. 17-4. Plaintiff sent a process server to the Albany address; the process server learned that the Albany address was a secure mail location called Secure Scan, which “make[s] a digital copy of all mail that the recipient receives and then they send them a preview of it and they decide whether . . . they want to accept the mail or not.” See ECF No. 17-5. The process server noted that the attempted Albany delivery was “unsuccessful.” Id. The signing incorporator of Defendant's 2018 articles of incorporation, Yunxiao Zhao, listed 245 E. Main St. # 107, Alhambra, CA 91801 as his address, but it was unclear “whether the Alhambra address has any connection” with Defendant; Plaintiff did not allege that it had attempted mailing to the Alhambra address. See ECF Nos. 17 at 2; 17-1. Plaintiff argued that it had sufficiently served process on Defendant by delivering the summons and amended complaint to the Secretary of State, and that Defendant's apparent failure to provide accurate information to the Secretary of State did not invalidate service of process. See ECF No. 17 at 2-4.
Defendants did not attend the Court conference. See Dkt. Entry 12/21/2022 Order.
Rule 55 of the Federal Rules of Civil Procedure establishes a two-step procedure by which a party may obtain a default judgment. See Bricklayers & Allied Craftworkers Local 2, Albany, N.Y. Pension Fund v. Moulton Masonry & Constr., LLC, 779 F.3d 182, 186 (2d Cir. 2015) (citing Fed.R.Civ.P. 55); Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 95-96 (2d Cir. 1993). First, if a party has failed to plead or otherwise defend against an action, the Clerk of Court must enter a certificate of default by making a notation on the record. See Fed.R.Civ.P. 55(a). Second, after this entry of default, if the defaulting party still fails to appear or move to set aside the default, the court may enter a default judgment if the complaint is well-pleaded. See Fed.R.Civ.P. 55(b). The trial court has the “sound discretion” to grant or deny a motion for default judgment. See Enron Oil, 10 F.3d at 95. In light of the Second Circuit's “oft-stated preference for resolving disputes on the merits,” default judgments are “generally disfavored,” and doubts should be resolved in favor of the defaulting party. Id. at 95-96 ().
The court must therefore ensure that the plaintiff satisfied all required procedural steps in moving for default judgment, see Local Civ. R. 55.2; and the plaintiff's allegations, when accepted as true, establish liability as a matter of law, see Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009).
In considering a motion for default judgment, the court accepts as true all factual allegations of the complaint, except those relating to damages. See Bricklayers, 779 F.3d at 189 (). Once liability has been established, a court must “conduct an inquiry in order to ascertain the amount of damages with reasonable certainty.” Am. Jewish Comm. v. Berman, No. 15 Civ. 5983 (LAK) (JLC), 2016 WL 3365313, at *3 (S.D.N.Y. June 15, 2016) (quoting Credit Lyonnais Sec. (USA), Inc. v Alcantara, 183 F.3d 151, 155 (2d Cir. 1999)), report & recommendation adopted, 2016 WL 4532201 (S.D.N.Y. Aug. 29, 2016). Entitlement to recovery “must be established by the plaintiff” and requires the plaintiff to support its claim with sufficient evidence. Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992); Dunn v. Advanced Credit Recovery Inc., No. 11 Civ. 4023 (PAE) (JLC), 2012 WL 676350, at *2 (S.D.N.Y. Mar. 1, 2012) (). The evidence the plaintiff submits must be admissible. See Poulos v. City of New York, No. 14 Civ. 3023 (LTS) (BCM), 2018 WL 3750508, at *2 (S.D.N.Y. July 13, 2018), report & recommendation adopted, 2018 WL 3745661 (S.D.N.Y. Aug. 6, 2018). If a plaintiff's...
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