Audemars Piguet Holding S.A. v. Swiss Watch International, Inc.

42 F. Supp. 3d 540, 2014 U.S. Dist. LEXIS 126003, 2014 WL 4384085
District Court, S.D. New York·Decided August 20, 2014·No. No. 12 Civ. 5423(LAP)·Published·Cited by 1 cases

Opinion

OPINION, ORDER, AND JUDGMENT

LORETTA A. PRESKA, Chief Judge:

Before the Court is Audemars Piguet Holding S.A. (“APSA”) and Audemars Piguet’s (North America) Inc. (“APNA”) (collectively “Plaintiffs”) application for additional treble profits and for attorney’s fees and costs, pursuant to 15 U.S.C. § 1117(b) and Judge Harold Baer, Jr.’s January 6, 2014 Opinion and Order, and Defendants Swiss Watch International Inc. (“SWI”), ILS Holdings, and Lior BenShmuel’s (collectively “Defendants”) Response. For the following reasons, Plaintiffs’ application is GRANTED in part and DENIED in part.

I. BACKGROUND

Following a four-day bench trial, Judge Harold Baer, Jr. issued Findings of Fact and Conclusions of Law, pursuant to Fed. R. Civ. Pro. 52(a)(1). Dckt. No 165; Audemars Piguet Holding S.A. v. Swiss Watch Int’l, Inc., 46 F.Supp.3d 255, 2014 WL 47465 (S.D.N.Y. Jan. 6, 2014) (“Audemars ”). The Court presumes familiarity with that opinion and incorporates the pri- or analysis and determinations by reference. Therein, the Court found that Defendants acted in bad faith and willfully infringed on Plaintiffs’ trade dress and that Plaintiffs were entitled to an accounting of profits, treble damages and attorney’s fees, pursuant to 15 U.S.C. § 1117(b). Id. at 280-81, 288-89, 291-94, at *12, *20, *23-26.

[542]*542II. DISCUSSION

A. Pretrial Damages (Prior to April 30, 2013)

Notwithstanding* Judge Baer’s direction to brief damages after April 30, 2013, see id. at 294, at *26, Defendants have produced voluminous records, amounting, to over 1,300 pages, concerning damages before April 30, 2013. However, Defendants failed to provide this evidence during discovery or at trial and will not be permitted to retry this case on posttrial briefing. Indeed, Defendants provide no explanation as to why they did not present this evidence at the appropriate time, i.e., during discovery and at trial. Defendants do not argue, nor could they, that they were not aware at trial that Plaintiffs intended to seek an accounting of profits, pursuant to 15 U.S.C. § 1117(a)-(b). Under this statute, it is the defendant who is responsible to “prove all elements of cost or deduction claimed.” 15 U.S.C. § 1117(a). See also GTFM, Inc. v. Solid Clothing, Inc., 215 F.Supp.2d 273, 304 (S.D.N.Y.2002) (“ ‘This sequence of proof ... places the burden of proving costs on the party with the superi- or access to such information, namely the infringing defendant.’ ”) (quoting Am. Honda Motor Co., Inc. v. Two Wheel Corp., 918 F.2d 1060, 1063 (2d Cir.1990)). At trial, Defendants failed to produce adequate evidence to prove their overhead expenses or direct costs for the pretrial period, except with respect to watches, which the Court credited. Audemars, 46 F.Supp.3d at 292-93, 2014 WL 47465 at *24.

Even if Defendants had presented new evidence of pretrial costs, it would be inappropriate for the Court to reconsider its trial findings: “a trial court should be most reluctant to set aside that which it has previously decided unless convinced that it was based on a mistake of fact or clear error of law, or that refusal to revisit the earlier decision would work a manifest injustice.” LiButti v. United States, 178 F.3d 114, 118 (2d Cir.1999) (citing Arizona v. California, 460 U.S. 605, 618 n. 8, 103 S.Ct. 1382, 75 L.Ed.2d 318 (1983)). Although the Court has not yet entered judgment, the Court had reached a decision and was prepared to enter judgment but for the form of the injunction. Defendants have not identified “a mistake of fact or clear error of law” for which the prior ruling of the Court ought be disturbed. See LiButti, 178 F.3d at 118.

B. Posttrial Damages (Subsequent to May 1, 2013)

With respect to damages within the scope of this motion, i.e., damages after May 1, 2013, the Court will consider new evidence submitted by Defendants because these costs were neither known nor contemplated at trial. Plaintiffs’ argument that Defendants’ failure to recover for certain categories of costs for the pretrial period precludes recovery in those categories for the posttrial period is unpersuasive. While it is true that Defendants failed to provide adequate information at trial for the pretrial period, see Tr. 303; Audemars, 46 F.Supp.3d at 292-93, 2014 WL 47465 at *24, this failure does not preclude Defendants from submitting proper documentation for costs for the posttrial period. Indeed, it would be inappropriate to limit recovery for a period that was not even considered at trial. In keeping with Judge Baer’s opinion and the law in this circuit, the Court will apply the legal standard set out in 15 U.S.C. § 1117(a) to Defendants’ costs and deductions for the posttrial period. See Audemars, 46 F.Supp.3d at 291-93, 2014 WL 47465 at *23-*24. For overhead expenses, the Court will conduct the required two-step process. Audemars, 46 F.Supp.3d at 292 n. 4, 2014 WL 47465 at *23 n. 4, quoting Fendi Adele S.R.L. v. Burlington [543]*543Coat Factory Warehouse Corp., 642 F.Supp.2d 276, 290 (S.D.N.Y.2009).

1. Sales Revenue

For the posttrial period, Defendants’ total revenue on infringing Trimix products was $574,268. Declaration of Sergio Rodicio, January 21, 2014; Dckt. No. 175 (“Rodicio Jan. Decl.”) ¶¶ 34, 35; Ex. 1 ($569,104 from 5/1/13 through 12/31/13 and $5,164 from 1/1/14 through 1/15/14).

2. Direct Costs

“In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.” 15 U.S.C. § 1117(a). Here, the posttrial account period began on May 1, 2013 and extended until February 11, 2014. Defendants sold 6,878 infringing Trimix watches during that period. Rodicio Jan. Decl. Ex. 1 (6,813 from 5/1/13 through 12/31/13 and 65 from 1/1/14 through 1/15/14).

a.Watches

Plaintiffs do- not dispute the direct cost of watches at $25.69 per unit, based upon the summaries of invoices admitted into evidence at trial. Pl.’s Mem. at 4. Thus, the Court will allow this cost.1 At $25.69 per unit for 6,878 units, the total cost is $176,695.82.

b.Movements

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Audemars Piguet Holding S.A. v. Swiss Watch International, Inc., 42 F. Supp. 3d 540, 2014 U.S. Dist. LEXIS 126003, 2014 WL 4384085 (S.D.N.Y. 2014).

42 F. Supp. 3d 540 (Audemars Piguet Holding S.A. v. Swiss Watch International, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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