Zinganything, LLC v. Import Store

Citation158 F.Supp.3d 668
Decision Date22 January 2016
Docket NumberCASE NO. 5:14-cv-1121
Parties Zinganything, LLC, Plaintiff, v. Import Store, et al, Defendants.
CourtUnited States District Courts. 6th Circuit. United States District Court of Northern District of Ohio

C. Vincent Choken, David A. Welling, Choken & Welling, Akron, OH, John D. Gugliotta, Fairlawn, OH, for Plaintiff.

Marzotti Inc., Center Valley, PA, pro se.

MEMORANDUM OPINION AND ORDER

HONORABLE SARA LIOI

, UNITED STATES DISTRICT JUDGE

Presently before the Court is the motion of plaintiff Zinganything LLC (plaintiff or “Zinganything”) for default judgment against defendant Marzotti, Inc. (defendant or “Marzotti”) pursuant to Fed. R. Civ. P. 55(b)(2)

for counterfeiting, including patent infringement, copyright infringement, and trademark infringement. (Doc. No. 59 (Motion for Default Judgment [“Motion”] ).) In support of the motion, plaintiff filed the affidavit of its counsel, David Welling. (Doc. No. 59-1 (Affidavit in Support [“Welling Aff.”] ).).

For the reasons that follow, plaintiff's motion for default judgment is granted in part and denied in part.

I. BACKGROUND

Defendant was properly served with a summons and the complaint, but failed to file a responsive pleading, or otherwise defend the lawsuit. (See Welling Aff. ¶ 5; Doc. No. 11.) Default was entered against defendant. (Doc. No. 58.).1

Once default is entered, the defaulting party is deemed to have admitted all of the well-pleaded factual allegations in the complaint regarding liability, including jurisdictional averments. Ford Motor Co. v. Cross , 441 F.Supp.2d 837, 846 (E.D.Mich.2006)

(citing Visioneering Constr. v. U.S Fid. & Guar. , 661 F.2d 119, 124 (6th Cir.1981) ); see also Fed. R. Civ. P. 8(b)(6) (“An allegation—other than one relating to the amount of damages—is admitted if a responsive pleading is required and the allegation is not denied.”). The following factual allegations from the second amended complaint are deemed admitted due to defendant's default.

Plaintiff Zinganything is a limited liability company organized under the laws of Ohio with its principal place of business in Akron, Ohio. (Doc. No. 25 (Second Amended Complaint [“SAC”] ) ¶ 1.) Plaintiff introduced a product line and technology designed for the purpose of extracting the essence of all natural ingredients and allowing these flavors to infuse directly into a liquid of choice. (SAC ¶ 22.) On December 24, 2013, United States Patent No. 8,613,402

, entitled “Essence Extractor” (the “402 patent ”), was issued to Joshua A. Lefkovitz, as inventor, for the aforementioned invention, attached as exhibit 1 to the second amended complaint. (SAC ¶ 31.) All rights to the 402 patent

, including but not limited to the right to recover for infringement, have been assigned to plaintiff. (SAC ¶ 32.)

The Citrus Zinger® was the plaintiff's first product and most successful, and plaintiff's products are sold worldwide via its website, and through distributors and retailers. (SAC ¶ 24.) Plaintiff's product line, including the Citrus Zinger®, reads on the 402 patent

. (SAC ¶ 33.).

On August 20, 2013, U.S. Trademark No. 4,386,433 (the “433 mark”) was registered to plaintiff for the trademark “zinger” in the classification of beverage dispensers and water bottles (attached as exhibit 2 to the second amended complaint), and on March 4, 2014, U.S. Trademark No. 4,490,831 (the “831 mark”) was registered to the plaintiff for the trademark “citrus zinger” in the classification of bottles, plastic bottles, and beverage dispensers (attached as exhibit 3 to the second amended complaint). (SAC ¶¶ 34-35.).

On May 29, 2013, plaintiff obtained Copyright Registration No. TX 7-765-274 for original content, including text, photos, and artwork on its website, zinganything.com (attached as exhibit 4 to the second amended complaint). (SAC ¶ 36.).

Defendant Marzotti is a corporation located in Pennsylvania, which does business as a seller on amazon.com, and which makes, uses, sells, offers for sale, and/or imports products in the United States in this judicial district and elsewhere. (SAC ¶ 4.) Defendant Marzotti's product offering for the “Zing Anything Citrus Zinger,” shown at exhibit 9 of plaintiff's second amended complaint, is counterfeit. Defendant utilizes copyrighted images of plaintiff's Citrus Zinger® from plaintiff's website. The picture of the bottle is copyrighted and is a picture plaintiff took of its own product for display on plaintiff's website. However, the product actually being sold and shipped by defendant Marzotti is a Chinese counterfeit not manufactured by plaintiff. Marzotti wrongfully displays plaintiff's copyrighted images, which contain a picture of plaintiff's product with the plaintiff's trademark thereon, and then the defendant ships to customers a counterfeit product not made by plaintiff. Defendant is engaged in “across the board” intellectual property infringement and counterfeiting, and is attempting to ‘pass off’ counterfeit goods as products associated with plaintiff. (SAC ¶ 43.) Marzotti has sold the infringing products in this judicial district in Ohio and elsewhere. (SAC ¶ 49.).

Marzotti has been, and is currently, willfully making, using, offering for sale, selling, and/or importing products that infringe the 402 patent

, and is inducing infringement of the 402 patent by selling infringing product to dealers who, in turn, offer the product for sale and sell the product to end users. (SAC ¶¶ 54, 57, 58.) Moreover, Marzotti's use of plaintiff's federally registered trademarks in connection with the sale, offer for sale, distribution and advertising of defendant's counterfeit products has caused, and will continue to cause, mistake, confusion, and deception among consumers with respect to the authenticity, and origin of defendant's products, and association between plaintiff and defendant. (SAC ¶¶ 73, 80.) Moreover, defendant has intentionally misused the counterfeit marks in commerce. (SAC ¶ 74.).

Plaintiff has not authorized defendant Marzotti to sell infringing counterfeit products or to use plaintiff's intellectual property in any way. The aforementioned activities of the defendant have injured, and threaten future and immediate injury to the plaintiff. More specifically, the defendant's activities have diminished plaintiff's goodwill and have caused plaintiff to lose sales that it otherwise would have made but for the sales of the defendant. (SAC ¶¶ 50-51.).

The second amended complaint claims that defendant has: (1) willfully infringed the 402 patent

in violation of 35 U.S.C. § 271 et seq. (SAC ¶¶ 53-59); (2) infringed plaintiff's copyrighted works in violation of 17 U.S.C. § 501 et seq. (SAC ¶¶ 60-64); (3) knowingly trafficked in counterfeit labels, documentation, and packaging in violation of 18 U.S.C. § 2318(e)(1)

et seq. (SAC ¶¶ 65-70); (4) infringed plaintiff's trademarks in violation of 15 U.S.C. § 1114(1)

et seq. (SAC ¶¶ 71-76); (5) engaged in unfair competition in violation of 15 U.S.C. § 1125(a) (SAC ¶¶ 77-81); and (6) engaged in unfair competition in violation of Ohio Rev. Code § 4165.02 et seq. (SAC ¶¶ 82-83).

II. DISCUSSION
A. Default Judgment—Liability
Federal Rule of Civil Procedure 55

governs default and default judgment. Default has been entered by the clerk against defendant Marzotti pursuant to Rule 55(a). (Doc. No. 9.) After default has been entered, the Court may enter default judgment against the defendant with or without a hearing. Fed. R. Civ. P. 55(b). Based on the well-pleaded factual allegations in the second amended complaint, and the declaration submitted by the plaintiff in support of the motion, the Court concludes that there is a sufficient basis for determining defendant's liability without the need for a hearing.

Even though the well-pleaded factual allegations of the complaint are accepted as true for the purpose of determining liability, the Court must still determine whether those facts are sufficient to state a claim for relief with respect to plaintiff's claims for counterfeiting, patent infringement, trademark infringement, copyright infringement, and unfair competition, for which the plaintiff seeks default judgment. J & J Sports Prods., Inc. v. Rodriguez , No. 1:08–CV–1350, 2008 WL 5083149, at *1 (N.D.Ohio Nov. 25, 2008)

(citation omitted).

1. Patent infringement

35 U.S.C. § 271(a)

and (b) provide that:

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

Based on the admitted factual allegations in the complaint, which the Court accepts as true, plaintiff owns the 402 patent

and defendant is making, using, selling, offering for sale in the United States, and/or importing a product that infringes plaintiff's patented invention into the United States, as well as actively inducing infringement of the patent by others. Accordingly, plaintiff is entitled to default judgment against Marzotti for infringement of the 402 patent.

2. Trademark infringement and counterfeiting

15 U.S.C. § 1114(1)(a) and (b)

provides that:

(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with
...

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