Microsoft Corp. v. McGee
| Decision Date | 18 May 2007 |
| Docket Number | No. 1:06CV611.,1:06CV611. |
| Citation | 490 F.Supp.2d 874 |
| Parties | MICROSOFT CORPORATION, Plaintiff, v. Mark McGEE, Defendant. |
| Court | U.S. District Court — Southern District of Ohio |
Michael Alvin Marrero, Ulmer & Berne LLP, Cincinnati, OH, Robert E. Chudakoff, Ulmer and Berne LLP, Cleveland, OH, for Plaintiff.
This matter is before the Court upon Plaintiff Microsoft Corporation's Motion for Default Judgment (Doc. 10). Defendant Mark McGee has not filed a Response.
Microsoft develops, markets, distributes and licenses computer software. (Doc. 1, ¶ 7) One such program is Office 2000 Professional ("Office 2000 Pro"), which is a suite of popular Microsoft software programs including Access 2000, Excel 2000, Outlook 2000, PowerPoint 2000, Word 2000, and Publisher 2000. Microsoft holds valid copyrights for all of these programs (including user's reference manuals, user's guides, and screen displays). (Id., ¶ 8) Office 2000 Pro also bears a number of trademarks that Microsoft has registered with the United States Patent and Trademark Office. (Id., ¶ 9)
Defendant is an individual doing business as Computerme.net in Hamilton, Ohio and on the Internet. (Complaint ¶ 2) Defendant owns, operates, does business as or otherwise controls Computerme.net. (Id., ¶ 3) Defendant advertises, markets, installs, and distributes computer hardware and software, including programs covered by Microsoft's registered copyrights and bearing Microsoft's registered trademarks or imitations thereof. (Id., ¶¶ 2, 3, 10) By letters dated March 18, 2005 and November 21, 2005, Microsoft warned Defendant that he may be distributing illegal Microsoft software. (Id., ¶ 11, Exs.1, 2) Defendant did not respond to Microsoft's warnings.
In August of 2006, Defendant distributed to an investigator counterfeit and infringing Office 2000 Pro software. (Id., ¶ 13) This willful infringement was not an isolated incident, but rather is part of a continuous and ongoing business practice of Defendant in blatant violation of Microsoft's copyrights and trademarks. (Id., ¶¶ 14-19)
In its Complaint, Microsoft brings claims for trademark infringement in violation of 15 U.S.C. 1114; false designation of origin, false or misleading description, and false or misleading representation that the imitation visual images originate from or are authorized by Microsoft in violation of 15 U.S.C. 1125(a); violation of Ohio's Deceptive Trade Practices Act, Ohio Rev Code 4165.01; and unfair competition under Ohio law.
On September 15, 2006, Microsoft personally served its Complaint on Defendant (Doc. 6) Defendant failed to timely respond. On December 26, 2006, the Clerk of Court entered default against Defendant. (Doc. 9) Microsoft requests that this Court enter a default judgment against Defendant; award Microsoft statutory damages in an amount of $710,000; award Microsoft attorneys fees, paralegal fees and costs of $3,569.50; and issue a permanent injunction against Defendant to prevent future infringement.
Federal Rule of Civil Procedure 55(b)(2) governs the entry of a default judgment by the court. The Rule provides, in pertinent part:
[T]he party entitled to judgment by default shall apply to the court therefore; but no judgment by default shall be entered against an infant or incompetent person unless represented in the action by a general guardian, committee, conservator, or other such representative who has appeared therein.... If, in order to enable the court to enter judgment or to carry it into effect, it is necessary to take an account or to determine the amount of damages or to establish the truth of any averment by evidence or to make an investigation of any other matter, the court may conduct such hearings or order such references as it deems necessary and proper.
Fed.R.Civ.P. 55(b)(2). Once a default is entered against a defendant, that party is deemed to have admitted all of the well pleaded allegations in the complaint, except those relating to damages. Antoine v. Atlas Turner, Inc., 66 F.3d 105, 110-11 (6th Cir.1995). Microsoft is seeking statutory damages under the Copyright Act and the Lanham Act.
The Copyright Act gives the copyright owner the exclusive right to reproduce a copyrighted work and to distribute copies of the work. See 17 U.S.C. § 106(1)-(3). In a copyright action, "to establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
The registration certificates, which are attached to the Complaint, are prima facie evidence of Microsoft's ownership of valid copyrights. Cannon Group, Inc. v. Better Bags, Inc., 250 F.Supp.2d 893, 898 (S.D.Ohio 2003), citing 17 U.S.C. § 410(c); see also Tennessee Walking Horse Breeders' and Exhibitors' Ass'n v. National Walking Horse Ass'n, 2007 WL 325774, *5 (M.D.Tenn. January 31, 2007) (slip op.). Therefore, Microsoft has proven ownership of the following valid copyrights: TX 4-905-936 ("Office 2000 Professional"), TX 4-905-950 ("Access 2000"), TX 4-905-949 ("Excel 2000"), TX 4-906-019 ("Outlook 2000"), TX 4-905-952 ("PowerPoint 2000"), TX 4-905-937 ("Publisher 2000"), and TX 4-905-951 ("Word 2000"). (Doc. 1, Ex. 1-7) Therefore, Microsoft has established the first element of infringement.
Microsoft alleges that Defendant has copied these copyrighted materials and distributed the infringing materials in the United States without approval or authorization from Microsoft. (Id., ¶¶ 15, 21) Because the Court must deem these allegations as being admitted, Microsoft has established the second element of copyright infringement. Accordingly, the Court finds that Defendant infringed the above-listed copyrights in violation of the Copyright Act.
Microsoft brings two claims under the Lanham Act. The first claim is for trademark infringement under the Act, which provides:
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
15 U.S.C. § 1114(1). Microsoft's second claim is for false designation of origin, false or misleading description, and false or misleading representation under 15 U.S.C. § 1125(a), which provides:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1). The Sixth Circuit uses the same test to decide whether there has been trademark infringement, unfair competition, or false designation of origin: the likelihood of confusion between the two marks. Audi AG v. D'Amato, 469 F.3d 534, 542 (6th Cir.2006), citing Two Pesos v. Taco Cabana, 505 U.S. 763, 780, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).
In the Complaint, Microsoft alleges that the infringing materials that Defendant has and continues to use, offer, advertise, market or distribute are likely to cause confusion, mistake or deception as to their source, origin or authenticity. (Doc. 1, ¶ 31) Microsoft also alleges that Defendant has used Microsoft's marks, name, and/or visual designs, including displays, logos, icons, graphic designs, and/or packaging virtually indistinguishable from Microsoft's. (Id., ¶ 43) Microsoft alleges that Defendant has done so to mislead, deceive, or confuse customers and the public as to the origin and authenticity of the goods and services offered. (Id., ¶ 44) Deeming these allegations as admitted, the Court finds that Microsoft has established that Defendant infringed the following trademarks: 1,200,236 ("MICROSOFT"), 1,256,083 ("MICROSOFT"), 1,475,795 ("POWERPOINT"), 1,791,086 ("MICROSOFT ACCESS"), 1,982,562 ("PUZZLE PIECE LOGO"); and 2,188,125 ("OUTLOOK"). The Court also finds that Defendant's acts constituted false designation of origin, false or misleading description, and false or misleading representation in violation of the Lanham Act.
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