Municipal Credit Union v. Queens Auto Mall, Inc.

126 F. Supp. 3d 290, 2015 U.S. Dist. LEXIS 113949, 2015 WL 5089144
CourtDistrict Court, E.D. New York
DecidedAugust 27, 2015
DocketNo. 14 Civ. 4895(BMC)
StatusPublished
Cited by8 cases

This text of 126 F. Supp. 3d 290 (Municipal Credit Union v. Queens Auto Mall, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Municipal Credit Union v. Queens Auto Mall, Inc., 126 F. Supp. 3d 290, 2015 U.S. Dist. LEXIS 113949, 2015 WL 5089144 (E.D.N.Y. 2015).

Opinion

MEMORANDUM DECISION AND ORDER

COGAN, District Judge.

This case is before me for a determination of damages following default judgment. See Mun. Credit Union v. Queens Auto Mall, Inc., No. 14-cv-4895, 2014 WL 6870960 (E.D.N.Y. Dec. 5, 2014). This is a trademark infringement action in which it was never disputed that defendants prominently displayed a distinctive service mark belonging to plaintiff, a consumer finance company, for a period of several years, on the awning above defendants’ used car dealership. At the parties’ joint request, I have proceeded on written proofs and briefing to determine plaintiffs damages and entitlement to fees, costs, and injunctive relief. See Fed.R.Civ.P. 55(b); Transatlantic Marine Claims Agency, Inc. v. Ace Shipping Corp., Div. of Ace Young Inc., 109 F.3d 105 (2d Cir.1997). Plaintiff seeks $2,000,000 in statutory damages; $1,640 in court costs; and $88,064.62 in attorney’s fees pursuant to § 35 of the Lanham Act, 15 U.S.C. § 1117, as well as a permanent injunction pursuant to § 34 of the Lanham Act, 15 U.S.C. § 1116.

For reasons set forth below, I find that plaintiff is entitled to an award of $330,000 in statutory damages, $1,640 in costs, and $70,612.50 in attorney’s fees. In addition, a permanent injunction against defendants’ further use of plaintiffs service mark is appropriate.

BACKGROUND

Plaintiff Municipal Credit Union (“MCU”) is a members-only credit union established in 1916 with branches in New York City’s five boroughs, having approximately 400,000 members. Plaintiff owns a federally-registered service mark consisting of the letters “MCU” with a silhouetted cityscape forming the bottom portion of the “M,” as shown here:

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Plaintiff uses the mark to promote its products and services through print materials, online marketing, billboards, and subway advertising. The mark is also featured in MCU 'branches and at MCU Park, a minor league baseball stadium in Coney Island. Over the past five years, plaintiff has spent over $11 million on advertisements featuring the mark.

Plaintiff offers automobile financing as a service to its members. Plaintiff finances cars that are less than six years old and have less than 60,000 miles. Plaintiff selectively partners with dealerships to offer this service and “will move quickly to sever the relationship” if a partner dealership develops a bad reputation. Plaintiffs partner dealerships prominently display the mark. Plaintiff books an average of 117 new loans per year, each of which generates several thousand dollars in interest over its lifetime.

Defendant Queens Auto Mall, Inc. (“Queens Auto”) is a used car dealership. [294]*294Defendant Stylianou is the owner of Queens Auto. Defendant Stylianou also owns a company called MCU Auto Funding Corporation (“MCUAF”), which he founded in February 2009. MCUAF, which is not a party to this lawsuit, is unrelated to MCU.

In 2009, after forming MCUAF, Stylia-non commissioned an awning for Queens Auto to be designed by a third party company. Stylianou explained at his deposition that “I gave [the designer] the name of my corporation, and I said make me an awning[,] and that is what he created.” Stylianou admits that he approved the design of the awning for installation over Queens Auto. From 2010 through August 2014, Queens Auto displayed the awning over its entrance next to the words “Auto Funding” and “Auto Loans” and above the words “Credit Union,” as shown here:

Stylianou admits that he was “familiar with MCU” and knows they “make loans.” Defendants did not print the mark on any other promotional materials.

In August 2010, plaintiff notified defendants via a cease and desist letter that they were infringing the mark and requested that the awning be removed. In May 2014, the awning had not been removed, and plaintiff sent another cease and desist letter.1 Following each letter, Stylianou contacted his accountant to ask whether Queens Auto was in “good standing,” but otherwise took no action. Stylia-nou did not call his lawyer because, according to Stylianou, he charges “an arm and a leg.” At some point between May and August 2014, defendants blacked out the words “Credit Union” beneath the mark on the awning, but otherwise the mark remained in place. In August 2014, defendants removed the awning.

During the period that the awning was in place, defendants sold and financed 3,048 cars. Of those, 440 met plaintiffs financing criteria. Defendants’ tax returns reflect a net operating profit of $765,378 during that time, after overhead, which comes out to about $251.11 per car.

Defendants have twice been investigated and twice settled with the New York City Department of Consumer Affairs — once in 2000 resulting in a $30,000 fine, and once in 2009 resulting in a $425,000 fine — for attempting to represent affiliation with the government by advertising Queens Auto with aliases such as “Federal Auto Auction,” “New York State Auction,” and the like.

DISCUSSION

I.

Liability attaches upon a defendant’s default so long as the well-pleaded [295]*295allegations in the complaint give rise to liability. See Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61 (2d Cir.1981). To succeed in establishing liability for infringement under the Lanham Act, a plaintiff must prove that he owns a valid protecta-ble trademark; that the defendant used the trademark in commerce and without consent; and that there was a likelihood of consumer confusion. See 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir.2005). When determining liability from default, a district court should accept as true “all of the factual allegations of the complaint, except those relating to damages.” Au Bon Pain Corp., 653 F.2d at 66. Additionally, the non-defaulting party “is entitled to all reasonable inferences from the evidence offered.” Id.

Liability is easily established in this case. It is uncontroverted that plaintiff owns a federally registered service mark, and that defendants used an identical mark without plaintiffs consent. Likelihood of consumer confusion is typically examined by reference to the so-called Polaroid factors. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961). However, application of the Polaroid factors is unnecessary where use of an identical or “counterfeit” mark is at issue, because such use is “inherently confusing,” and so “consumer confusion is presumed.” C=Holdings B.V. v. Asiarim Corporation, 992 F.Supp.2d 223, 240-41 (S.D.N.Y.2013) (internal quotation marks omitted).

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126 F. Supp. 3d 290, 2015 U.S. Dist. LEXIS 113949, 2015 WL 5089144, Counsel Stack Legal Research, https://law.counselstack.com/opinion/municipal-credit-union-v-queens-auto-mall-inc-nyed-2015.