Safex Foundation, Inc. v. Safeth, Ltd.

District Court, District of Columbia·Decided May 12, 2021·No. Civil Action No. 2021-0161·Published

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

SAFEX FOUNDATION, INC., et al.,

Plaintiffs, Civil Action No. 21-cv-161

v. Chief Judge Beryl A. Howell

SAFETH, LTD., et al.,

Defendants.

MEMORANDUM OPINION

Plaintiffs Daniel Dabek, Safex Foundation, Inc., and Safe Exchange Foundation, LLC,

brought the instant lawsuit seeking to enjoin pro se defendants Joseph Lathus and Cynthia

Lathus (together “the Lathuses”) and Safeth, Ltd. (“Safeth”), a limited company owned and

controlled by the Lathuses, from infringing on plaintiffs’ trademarks and from disseminating

written or oral statements that Safex or Mr. Dabek are engaged in a scam or any other criminal

activity. Compl. at 38–39, ECF No. 1; see also Pl.’s Mot. Prelim. Inj. at 1, ECF No. 4. Plaintiffs

develop cryptocurrencies and a cryptocurrency-based e-commerce platform, and allege that

defendants infringed plaintiffs’ trademark, used the trademark to market their own competing

cryptocurrency and cryptocurrency-based e-commerce exchange, and defamed plaintiffs by

publicly stating both that plaintiffs are infringing defendants’ trademark, and that plaintiffs are

engaged in criminal activity. On January 27, 2021, following a hearing on January 26, 2021, at

which plaintiffs and defendants both participated, see Min. Entry (Jan. 26, 2021), a temporary

restraining order was entered enjoining defendants from infringing on plaintiffs’ trademark and

from publicly stating that plaintiffs were infringing on defendants’ trademark, see Amended

Temporary Restraining Order, ECF No. 20. Upon consideration of additional submissions from

the parties, a preliminary injunction substantively identical to the temporary restraining order 1 was entered roughly eight weeks later, on March 26, 2021, see Order (“Preliminary Injunction”)

at 1–2, ECF No. 31.

Now pending is plaintiffs’ Motion for Default Judgment, ECF No. 35, against defendant

Safeth Ltd., for whom no counsel has entered an appearance. Additionally, the parties have

agreed that a permanent injunction, equivalent in scope to both the temporary restraining order

and preliminary injunction, should be entered against the Lathuses. For the following reasons,

that permanent injunction will be entered, and plaintiffs’ Motion for Default Judgment against

Safeth is granted in part and denied in part, largely paralleling the terms of the permanent

injunction against the Lathuses.

I. BACKGROUND

The factual and procedural background of the instant lawsuit has been exhaustively

described in a previous opinion, see Safex Found., Inc. v. Safeth Ltd., Civil Action No.

21-cv-161, 2021 WL 1167266, at *2–5 (D.D.C. Mar. 26, 2021), and will not be repeated here,

except to the extent necessary to resolve plaintiffs’ pending Motion for Default Judgment and

enter the agreed-upon permanent injunction against the Lathuses.

Plaintiffs filed the instant lawsuit on January 18, 2021, seeking to enjoin defendants from

infringing on plaintiffs’ trademarks and from disseminating written or oral statements that Safex

or Dabek are engaged themselves in trademark infringement or in criminal activity. Compl. at

38–39; see also Pl.’s Mot. Prelim. Inj. at 1. Plaintiffs sought a temporary restraining order and a

preliminary injunction. Proceedings as to each request are described separately, followed by

discussion of procedural developments since the entry of the preliminary injunction.

2 A. Plaintiff’s Motion for a Temporary Restraining Order

On January 26, 2021, at a hearing held on plaintiffs’ motion for a temporary restraining

order, defendants represented themselves pro se. See Min. Entry (Jan. 26, 2021).1 At the outset

of the hearing, defendants were orally advised that “the organizational entity that [the

Lathuses] . . . are responsible for [and] officers of, Safeth, Ltd., is required to have counsel in this

case.” Hr’g Tr. at 4:24–5:2 (Jan. 26, 2021), ECF No. 22. In response, defendants requested that

counsel for Safeth be appointed, but the Court informed plaintiffs that it “ha[d] no power to

appoint counsel for an organizational entity in a civil case.” Id. at 5:4–7.

Following the hearing, plaintiffs’ motion for a temporary restraining order was granted in

part and denied in part, based on a determination that plaintiffs met the requirements for

temporary injunctive relief as to defendants’ alleged trademark infringement and their public

statements that plaintiffs were infringing defendants’ trademark, but not as to defendants’

allegedly defamatory statements that Safex was an “exit scam” and Safex’s products would

facilitate illegal transactions, in particular because plaintiffs had not met their burden to show

that such statements were false. See Hr’g Tr. at 67:11–22, 74:6–75:1. Accordingly, a temporary

restraining order was entered enjoining defendants from (1) “[u]sing in commerce or in

connection with any good or service plaintiffs’ ‘Safex’ mark and logo,” including any “mark,

name, or design that creates a likelihood of confusion with plaintiffs’ ‘Safex’ mark and logo”; (2)

“[d]isseminating, on . . . [any] public forums, any written or oral statements that plaintiffs are

infringing upon defendants’ trademarks”; and (3) “making . . . misrepresentations to the U.S.

1 Although defendants had not filed a formal opposition to plaintiffs’ Motion for a Temporary Restraining Order, between January 20, 2021 and January 25, 2021, defendant Joey Lathus sent the Court nine emails, which the Court docketed under seal. See Defs.’ Sealed Document, ECF No. 15. Nearly all these emails sent to the Court included links to third party websites and attached image files, consisting primarily of screenshots of online news articles and social media posts. Thus, although defendants did not file a formal opposition, they made their views known, at least as to some of the claims of the Complaint, primarily relating to plaintiffs’ allegations of defamation.

3 Patent and Trademark Office” concerning defendants’ infringing trademark. Amended

Temporary Restraining Order at 1–2.

B. Defendant Safeth’s Default

Both before and after the January 26, 2021 hearing and the entry of the temporary

restraining order, defendants were repeatedly advised that defendant Safeth, as a limited

company, “must be represented by counsel in this matter, . . . and is subject to entry of default if

no counsel registers an appearance” Min. Order (Jan. 25, 2021) (quoting Greater Se. Cmty.

Hosp. Found. v. Potter, 586 F.3d 1, 4 (D.C. Cir. 2009)); see also Min. Order (Feb. 3, 2021)

(same); Safex Found., Inc., 2021 WL 1167266, at *1 n.1 (same). Nevertheless, no counsel has

entered an appearance for Safeth, more than three and a half months after the initiation of the

instant lawsuit. On February 23, 2021, plaintiffs accordingly filed an Affidavit for Default, ECF

No. 26, against defendant Safeth, and the Clerk of the Court subsequently, on March 11, 2021,

entered a default against Safeth, see Entry of Default, ECF No. 29.

C. Plaintiffs’ Motion for a Preliminary Injunction

Meanwhile, on February 3, 2021, following entry of the temporary restraining order, a

scheduling order governing resolution of plaintiffs’ motion for a preliminary injunction was

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