1 DICKINSON WRIGHT PLLC Steven A. Caloiaro 2 Nevada Bar No. 12344 100 West Liberty Street 3 Suite 940 Reno, NV 89501 4 Tel: (775) 343-7500 Fax: (844) 670-6009 5 Email: scaloiaro@dickinsonwright.com 6 Attorney for Plaintiff SATA GmbH & Co. KG 7 UNITED STATES DISTRICT COURT 8 DISTRICT OF NEVADA 9 SATA GmbH & Co. KG, a German Case No.: 3:18-cv-00351-MMD-WGC corporation, 10 Plaintiff, ORDER GRANTING 11 PLAINTIFF’S MOTION FOR DEFAULT JUDGMENT, 12 v. PERMANENT INJUNCTION, AND ATTORNEY FEES 13 USA ITALCO INTERNATIONAL LIMITED, a New York Company; Zhejiang Auarita 14 Pneumatic Tools L.L.C. d.b.a. Auarita, a foreign entity 15 Defendants. 16 17 Plaintiff SATA GmbH & Co. KG (“SATA”) moves for default judgment, permanent 18 injunction, and attorney’s fees against Defendants USA ITALCO INTERNATIONAL LIMITED, 19 a New York Company (“ITALCO”); and Zhejiang Auarita Pneumatic Tools L.L.C. d.b.a. Auarita, 20 (“AUARITA”) a foreign entity, (collectively “Defendants”) in this action for trademark 21 counterfeiting, trademark infringement, unfair competition, and patent infringement. (ECF No. 21) 22 Having weighed the factors outlined by the Ninth Circuit in Eitel v. McCool, 782 F.2d 1470, 1471 23 (9th Cir. 1986), the Court grants SATA’s motion for default judgment, awards statutory damages, 24 issues a permanent injunction, and awards attorney’s fees. 25 FINDINGS OF FACT 26 SATA is a century-old German Corporation that manufactures paint spray guns and related 27 equipment worldwide. (ECF No. 21 at 3.) SATA’s United States-directed business produces over 28 $15 million annually with more than 100,000 paint spray guns and reservoirs sold. (Id. at 4.) SATA 1 owns ten (10) trademark registrations that it claims Defendants infringed: (1) a design mark for a 2 green band of color extended around the circumference of a paint spray gun air cap ring 3 (Registration No. 2,770,801); (2) a design mark for a band of any color extended around the 4 circumference of a paint spray gun air cap ring (Registration No. 2,793,583); (3) a design mark for 5 a band of red color extending around the circumference of a paint reservoir for a paint spray gun 6 (Registration No. 3,072,417); (4) a design mark for a band of blue color extending around the 7 circumference of a paint reservoir for a paint spray gun (Registration No. 2,774,593); (5) a design 8 mark for a green grip base plate (Registration No. 3,153,260); (6) “1000” (Registration No. 9 4,920,510); (7) “2000” (Registration No. 4,920,511); (8) “3000” (Registration No. 4,920,512); (9) 10 “4000” (Registration No. 4,666,773); and (10) “5000” (Registration No. 4,731,525) (collectively 11 “SATA Marks”) (Id. at 4-5.) SATA uses the SATA Marks to advertise and promote its products 12 throughout the United States and the world. (Id. at 4.) 13 SATA also has eight (8) design patents that it claims Defendants infringed: (1) an 14 ornamental design for a spray gun head ring (Patent No. U.S. D459,432); and (2) an ornamental 15 design for a paint spray gun head ring (Patent No. U.S. D459,433); (3) an ornamental design for a 16 spray gun head ring (Patent No. U.S. D770,593); (4) an ornamental design for a spray gun (Patent 17 No. U.S. D548,816); (5) an ornamental design for a paint spray gun rear portion (Patent No. U.S. 18 D758,537); (6) an ornamental design for a spray gun (Patent No. U.S. D644,716); (7) an ornamental 19 design for an identification tag (Patent No. U.S. D655,347); and (8) an ornamental design for a 20 paint spray gun (Patent No. U.S. D552,715) (collectively “SATA Patents”) (Id. at 5-6.) 21 In or around July of 2017, SATA discovered that an influx of counterfeit SATA guns were 22 being distributed on the west coast branded under the name ITALCO (“Counterfeit Paint Spray 23 Guns”). (Id. at 6). Upon investigation, SATA uncovered two distributors, one based in Phoenix, 24 Arizona, and one based in Sacramento, California. (Id.) These distributors were distributing, 25 advertising, offering for sale, and selling several ITALCO paint spray gun models. Id. On Friday, 26 June 30, 2017, SATA’s investigator purchased an ITALCO 5000 for $350. Id. The ITALCO model 27 infringes on approximately seven (7) SATA Marks and SATA Patents. Id. On August 25, 2017, 28 SATA’s investigator was able to purchase an ITALCO H-4000 Sprayer and ITALCO H-5000 1 sprayer for a combined amount of $756. Id. Those two models infringe a number of SATA’s 2 intellectual property. 3 On October 31, 2017, SATA representatives attended the SEMA trade show in Las Vegas, 4 Nevada, and became aware of Defendants’ presence because several vendors and consumers were 5 talking about a knock-off SATA gun that was half the cost that had recently become available. (Id. 6 at 7.) SATA then became aware that a local Las Vegas auto paint company was selling Defendants’ 7 Counterfeit Paint Spray Guns. (Id.) On Tuesday, November 1, 2017, SATA representatives visited 8 the auto paint company’s store and, when they inquired about the availability of the Counterfeit 9 Paint Spray Guns, they were informed that the store had recently sold two pallets, but they could 10 receive a new shipment by request within two weeks. (Id.) The store employees referred to the 11 Counterfeit Paint Spray Guns as “knock off SATAs.” (Id.). The store also provided a 12 representative sample of an ITALCO H-5000. (Id.) On December 21, 2017, SATA filed an action 13 against the store for the Counterfeit Paint Spray Guns. See Case No. 2:17-cv-03101. The case 14 against the store was subsequently settled. 15 During the litigation, SATA learned that Defendants were actively soliciting customers in 16 the United States. (ECF No. 1, Exs. D, E.) An individual named Betty, who listed herself as a 17 “Sales Manager,” sent several versions of the paint spray guns on behalf of the parent company 18 AUARITA. (Id.) The Las Vegas auto paint company later purchased Counterfeit Paint Spray Guns 19 directly from AUARITA, and received the shipment in Las Vegas, Nevada. (Id.) 20 SATA also discovered that Defendants operate websites containing advertisements for the 21 Counterfeit Spray Guns. (ECF No. 21 at 7.) The websites also include the Counterfeit Paint Spray 22 Guns. (Id.) SATA then filed this suit, asserting trademark counterfeiting, trademark infringement, 23 unfair competition, and patent infringement. (ECF No. 1.) 24 On August 28, 2018, ITALCO was served with a copy of the Complaint by personal 25 service. (ECF No. 11.) ITALCO failed to answer or otherwise respond to SATA’s Complaint. See 26 generally, Docket. Accordingly, on September 25, 2018, SATA filed a request for entry of default. 27 (ECF No. 13.) The Clerk of the Court entered Default against ITALCO on September 26, 2018. 28 (ECF No. 14.) 1 On September 17, 2018, this Court entered its notice regarding Intention to Dismiss 2 Pursuant to Rule 4(m) of the Federal Rules of Civil Procedure. (ECF No. 10.) In response, SATA 3 filed a Motion for Leave to Obtain Service of Process through Alternative Means or, in the 4 Alternative, Motion to Extend Time for Service. (ECF No. 12) In its Motion, SATA moved this 5 Court under Fed. R. Civ. P. 4 to allow SATA to serve the Complaint and Summons on AUARITA 6 via electronic mail. A hearing on SATA’s motion was held on October 23, 2018. On October 24, 7 2018, this Court entered its order granting SATA’s motion and allowing SATA to serve 8 AUARITA via email “because: email service is not prohibited by international agreement with 9 China; service under the [Hague Convention] would be expensive and result in an unnecessary 10 delay under these circumstances; service by email is reasonably calculated to apprise Auarita of 11 the action and afford Auarita an opportunity to present its objections, especially given that SATA 12 has been in communication with Auarita via email and they are already aware of the lawsuit.” 13 (ECF No. 16.) 14 On October 26, 2018, AUARITA was served with a copy of the Complaint via email. (ECF 15 No. 18.) AUARITA failed to answer or otherwise respond to SATA’s Complaint. See generally, 16 Docket. SATA thereafter filed a request for entry of default on November 29, 2018. (ECF No. 17 19.) The Clerk of the Court entered Default against AUARITA on November 30, 2018. (ECF No. 18 20.) 19 CONCLUSIONS OF LAW 20 A. Default Judgment Standard 21 Federal Rule of Civil Procedure 55(b)(2) permits a plaintiff to obtain a default judgment 22 after the clerk enters default based on a defendant’s failure to defend. After entry of default, the 23 complaint’s factual allegations are taken as true except those relating to damages. TeleVideo Sys., 24 Inc. v. Heidenthal, 826 F.2d 915, 917–18 (9th Cir. 1987) (per curiam); Fed. R. Civ. P. 8(b)(6) (“An 25 allegation—other than one relating to the amount of damages—is admitted if a responsive pleading 26 is required and the allegation is not denied.”). “[N]ecessary facts not contained in the pleadings, 27 and claims [that] are legally insufficient, are not established by default.” Cripps v. Life Ins. Co., 28 980 F.2d 1261, 1267 (9th Cir. 1992). The court may require a plaintiff to provide additional proof 1 of facts or damages in order to ensure that the requested relief is appropriate. See Fed. R. Civ. P. 2 55(b)(2). Whether to grant a motion for default judgment lies within the district court’s discretion, 3 Eitel, 782 F.2d at 1471, which is guided by the seven factors outlined by the Ninth Circuit in Eitel 4 v.McCool: 5 (1) the possibility of prejudice to the plaintiff; (2) the merits of plaintiff’s substantive claim; (3) the sufficiency of the complaint; (4) 6 the sum of money at stake in the action; (5) the possibility of a dispute concerning material facts; (6) whether the default was due to 7 excusable neglect; and (7) the strong policy underlying the Federal Rules of Civil Procedure favoring decisions on the merits. 8 Id. at 1471–72. 9 B. Analyzing the Eitel Factors 10 1. Possibility of prejudice to plaintiffs 11 SATA sued Defendants to stop them from infringing SATA’s distinctive design and marks. 12 SATA served Defendants with adequate process and served Defendants with SATA’s request for 13 entry of clerk’s default and clerk’s default. Defendants ignored it. SATA would be prejudiced by 14 requiring SATA to expend additional resources litigating an action that appears to be uncontested. 15 And SATA has no other recourse to prevent Defendants’ further infringement of its trademarks and 16 patents. This factor thus weighs in favor of default judgment. 17 2. Substantive merits and sufficiency of the claims 18 The second and third Eitel factors require SATA to demonstrate that it has stated a claim 19 on which it may recover. See Danning v. Lavine, 572 F.2d 1386, 1388 (9th Cir. 1978). SATA 20 sufficiently alleges its trademark infringement, unfair competition, trademark counterfeiting, and 21 design patent infringement claims. 22 To establish trademark-infringement and unfair-competition claims, SATA must show that: 23 (1) it is the owner of a valid, protectable mark, and (2) Defendants are using a confusingly similar 24 mark that is likely to cause deception concerning the origin of the goods. 15 U.S.C. § 1114 (2012); 25 15 U.S.C. § 1116 (2012); Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 26 1046 (9th Cir. 1999); see also New W. Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1201 (9th Cir. 27 1979) (explaining that the elements for trademark infringement and unfair competition are 28 1 essentially the same). SATA has federal trademark registrations for: (1) a design mark for a green 2 band of color extended around the circumference of a paint spray gun air cap ring (Registration No. 3 2,770,801); (2) a design mark for a band of any color extended around the circumference of a paint 4 spray gun air cap ring (Registration No. 2,793,583); (3) a design mark for a band of red color 5 extending around the circumference of a paint reservoir for a paint spray gun (Registration No. 6 3,072,417); (4) a design mark for a band of blue color extending around the circumference of a 7 paint reservoir for a paint spray gun (Registration No. 2,774,593); (5) a design mark for a green 8 grip base plate (Registration No. 3,153,260); (6) “1000” (Registration No. 4,920,510); (7) “2000” 9 (Registration No. 4,920,511); (8) “3000” (Registration No. 4,920,512); (9) “4000” (Registration 10 No. 4,666,773); and (10) “5000” (Registration No. 4,731,525). SATA has provided screenshots of 11 Defendants’ websites showing products with confusingly similar marks during the same time 12 period that SATA was selling its own products. SATA alleges that the concurrent advertising of 13 confusingly similar products is likely to cause deception regarding the origin of the goods. (ECF 14 No. 21 at 12-13.) 15 For its trademark-counterfeiting claim, SATA must show that: (1) it is the owner of a valid, 16 protectable mark; and (2) Defendants intentionally used the mark in commerce, knowing that it was 17 counterfeit. 15 U.S.C. § 1114(1)(a) (2012). A mark is counterfeit if “[i]t is registered on the 18 principal register in the United States Patent and Trademark Office for such goods or services sold, 19 offered for sale, or distributed and that is in use, whether or not the person against whom relief is 20 sought knew such mark was so registered.” 15 U.S.C. § 1116(d)(1)(B)(i) (2012). If the mark is 21 intentionally and knowingly distributed, a defendant is susceptible to heightened liability. 15 U.S.C. 22 §1117 (b)(1) (2012); Idaho Potato Comm’n v. G & T Terminal Packaging, Inc., 425 F.3d 708, 721 23 (9th Cir. 2005). SATA has valid trademarks for the SATA Marks, and Defendants advertise 24 identical, counterfeit versions of those marks for sale. (ECF No. 21 at 7-8). SATA argues that 25 Defendants have intentionally counterfeited its marks because: (1) SATA has been a leader in the 26 paint spray gun industry for over a century, so Defendants would have known of its brand and 27 trademarked design; (2) Defendants place the exact marks in the exact same place as the SATA 28 Marks; and (3) Defendants are using their counterfeit marks on paint spray guns, the exact type of 1 good covered by SATA’s Marks. (ECF No. 21 at 11-12). The Court therefore finds that SATA has 2 sufficiently pled that Defendants intentionally and knowingly engaged in unlawful trademark 3 counterfeiting. 4 Finally, design-patent infringement is governed by the “ordinary observer” test. Gorham 5 Mfg. v. White, 81 U.S. 511, 528 (1871); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 6 (Fed. Cir. 2008). Infringement of a design patent occurs if “an ordinary observer, familiar with the 7 prior art, would be deceived into thinking that the accused design was the same as the patented 8 design.” Egyptian Goddess, 543 F.3d at 672; see also Gorham, 81 U.S. at 528. Complete similarity 9 is not required. Gorham, 81 U.S. at 527–28 (discussing that an infringing product may be dissimilar 10 to experts as long as it is similar to the ordinary observer). Defendants’ products have the same 11 general visual appearance as SATA’s, such that it is likely that a purchaser would confuse 12 Defendants’ product with SATA’s patented designs. So, the Court finds that SATA has sufficiently 13 pled all of its claims, and the second and third Eitel factors weigh in favor of entering default 14 judgment. 15 3. Amount at stake 16 The fourth Eitel factor requires the Court to consider “the amount of money at stake in 17 relation to the seriousness of Defendants’ conduct.” PepsiCo, Inc. v. Cal. Sec. Cans, 238 F. Supp. 18 2d 1172, 1176 (C.D. Cal. 2002). SATA seeks Ten Million Dollars ($10,000,000) in statutory 19 damages under the Lanham Act. (ECF No. 21 at 30.) The Lanham Act awards no less than $1,000 20 and no more than $200,000 in statutory damages “per type of goods or services sold, offered for 21 sale, or distributed,” 15 U.S.C. § 1117(c)(1) (2012), and willful infringements increase the 22 statutory-damages ceiling to $2,000,000. 15 U.S.C. § 1117(c)(2) (2012). District courts have “wide 23 discretion” to grant statutory damages within those boundaries. Cable/Home Commc’n Corp. v. 24 Network Prod., Inc., 902 F.2d 829, 852 (11th Cir. 1990); see also Nintendo of Am., Inc. v. Dragon 25 Pac. Int’l, 40 F.3d 1007, 1010 (9th Cir. 1994) (stating that courts have wide discretion in awarding 26 statutory damages under an analogous provision of the Copyright Act). 27 As this Court has recognized, “[s]tatutory damages for trademark counterfeiting are 28 particularly appropriate in default cases,… where there is a lack of information about a defendant’s 1 sales and profits.” Avnet, Inc. v. Avana Techs. Inc., 2014 U.S. Dist. LEXIS 177436, *18 (D. Nev. 2 Dec. 3, 2014) (external citations omitted); see also Hand & Nail Harmony, Inc. v. Guangzhou Shun 3 Yan Cosmetics Co., 2015 WL 4378197, at *6 (D. Nev. July 15, 2015). A statutory damages award 4 should “not merely compel[ ] restitution of profit and reparation for injury but also discourage 5 wrongful conduct.” F.W. Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 233 (1952). The 6 purpose of § 1117 is to take the incentive out of counterfeiting and strengthen the civil remedies 7 against counterfeiters. See S.Rep. No. 177, 104th Cong. (1995). 8 Here, Defendants intentionally used the SATA Marks in commerce and knew that the marks 9 were counterfeit. When seeking the enhanced award for willful counterfeiting, “an allegation of 10 willful trademark infringement is deemed true on default.” Derek Andrew, Inc. v. Poof Apparel 11 Corp., 528 F.3d 696, 698 (9th Cir. 2008). As alleged in the Complaint, Defendants advertised and 12 offered for sale products containing the infringing marks. (ECF No. 1.) Further, as alleged in the 13 Complaint, Defendants knew that the infringing marks were counterfeit of the SATA Marks. Id. 14 Additional factors weigh in favor of awarding Ten Million Dollars ($10,000,000) in 15 statutory damages. Defendants’ failure to appear in this action has hindered SATA’s ability to 16 discover Defendants’ financial situation or status. Defendants also have continued to advertise the 17 Counterfeit Paint Spray Guns on their websites. (ECF No. 21-1 Caloiaro Decl., Exs. 1-7.) Finally, 18 Defendants are a large corporation that conducts international business. (ECF No. 21 at 24.) They 19 should have known better than to infringe upon SATA’s federally protected rights. SATA also 20 notes that the requested award is in line with this Court’s other decisions. See Penn Eng'g & Mfg. 21 Corp. v. Dongguan Fenggang Pinconn Hardware Factory, No. 217CV02679RJCPAL, 2018 WL 22 3014794, at *3 (D. Nev. June 15, 2018) (finding that “an award of the maximum statutory damages 23 is appropriate” based on defendants’ “refusal to participate in th[e] case and the egregious nature 24 of the counterfeiting.”) 25 In light of this information, the Court finds that statutory damages of Ten Million Dollars 26 ($10,000,000) for this willful infringement are appropriate and this sum-at-stake factor weighs in 27 favor of a default judgment. 28 1 4. Possibility of dispute 2 The next Eitel factor the Court considers is the possibility that material facts are disputed. 3 SATA adequately alleged its trademark infringement, trademark counterfeiting, patent 4 infringement, and unfair competition claims against Defendants. Defendants failed to respond or 5 appear, so all of SATA’s well-pled, material facts are admitted and presumed true. So this factor, 6 too, weighs in favor of default judgment. 7 5. Possibility of excusable neglect 8 The sixth Eitel factor requires the Court to consider whether Defendants’ default may have 9 resulted from excusable neglect. There is no evidence that Defendants defaulted due to excusable 10 neglect. The record reflects that, on August 28, 2018, ITALCO was served with a copy of the 11 Complaint by personal service. (ECF No. 11.) Moreover, on October 26, 2018, AUARITA was 12 served with a copy of the Complaint via email. (ECF No. 18.) Defendants failed to answer or 13 otherwise respond to the Complaint. The Clerk of the Court entered Default against ITALCO on 14 September 26, 2018. (ECF No. 14.) The Clerk of the Court entered Default against AUARITA on 15 November 30, 2018. (ECF No. 20.) This action has been pending for more than one year, giving 16 Defendants—who are still absent—ample time to appear in the litigation. This factor weighs in 17 favor of default judgment. 18 6. Policy for deciding cases on the merits 19 “Generally, default judgments are disfavored because cases should be decided upon their 20 merits whenever reasonably possible.” Twentieth Century Fox v. Streeter, 438 F. Supp. 2d 1065, 21 1072 (D. Ariz. 2006) (quoting Eitel, 782 F.2d at 1472). Defendants’ failure to participate in this 22 case renders a decision on the merits “impractical, if not impossible.” See PepsiCo, 238 F. Supp. 23 2d at 1177 (citing Columbia Pictures Tele., Inc. v. Krypton Broad. of Birmingham, Inc., 259 F.3d 24 1186, 1194 (9th Cir. 2001)). Although this factor almost always weighs against default judgment, 25 the other factors outweigh this policy and balance in favor of a default judgment. 26 C. Permanent Injunctive Relief 27 The Lanham Act permits a court to grant injunctions “according to the principles of equity 28 and upon such terms as the court may deem reasonable” to prevent further trademark infringement. 1 15 U.S.C § 1116 (2012); Reno Air Racing Ass’n v. McCord, 452 F.3d 1126, 1137 (9th Cir. 2006). 2 A plaintiff seeking a permanent injunction must show: 3 (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to 4 compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and the defendant, a remedy in 5 equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. 6 La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 879 (9th Cir. 2014) (quotation 7 omitted). “[A]ctual irreparable harm must be demonstrated to obtain a permanent injunction in a 8 trademark infringement action.” Herb Reed Enter., LLC v. Florida Entm’t Mgmt., 736 F.3d 1239, 9 1249 (9th Cir. 2013). 10 1. Irreparable injury and insufficiency of monetary damages 11 A permanent injunction is appropriate here because SATA has pled sufficient facts to 12 support an inference of irreparable injury. The Ninth Circuit has recognized that, in trademark 13 cases, irreparable harm may be shown through evidence of the loss of prospective customers, 14 goodwill, or reputation. Stuhlbarg Intern. Sales Co. v. John D. Brush & Co., 240 F.3d 832, 841 15 (9th Cir. 2001). SATA has suffered and will continue to suffer irreparable injury to its goodwill, 16 and monetary damages are inadequate to compensate for SATA’s injury. Additionally, despite 17 failing to respond to the Complaint, Defendants continue to advertise the Counterfeit Paint Spray 18 Guns, export goods and make sales within the United States. 19 Accordingly, the lost opportunities and diminished value of goodwill resulting from 20 Defendants’ continued infringement of SATA’s Intellectual Property will cause irreparable harm. 21 Toyo Tire & Rubber Co. v. Kabusikiki Kaisha Tokyo Nihoon Rubber Corp, 2015 WL 6501228, at 22 *3 (D. Nev. Oct. 26, 2015); See also Rent-A-Center, Inc. v. Canyon Television & Appliance Rental, 23 Inc., 944 F.2d 597, 603 (9th Cir. 1991) (citation omitted) (“[I]ntangible injuries, such as damage to 24 . . . goodwill, qualify as irreparable harm.”); MySpace, Inc. v. Wallace, 498 F. Supp. 2d 1293, 1305 25 (C.D. Cal. 2007) (“Harm to business goodwill and reputation is unquantifiable and considered 26 irreparable.”). 27 Here, SATA has alleged sufficient facts to demonstrate that SATA is a renowned paint 28 1 spray gun manufacturer that owns federal trademark registrations for its marks and has invested 2 millions of dollars advertising and promoting its products. (ECF No. 1, ¶¶ 7-17.) Further, SATA 3 has established that SATA and Defendants are competitors in the paint spray gun industry and that 4 Defendants are using confusingly similar trademarks, and have continued their infringement. 5 Finally, Defendant AUARITA is a Chinese company making the recovery of actual monetary 6 damages unlikely. SATA has thus suffered irreparable harm to which there is no adequate remedy. 7 2. Balance of hardships 8 The hardships also balance in SATA’s favor. When balancing hardships, the Court must 9 consider the respective difficulties that SATA and Defendants would face with and without 10 injunctive relief. MGM Studios, Inc., v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1220 (C. D. Cal 11 2007). The Court finds no hardships that Defendants would endure besides being compelled to 12 cease their unlawful conduct. But without an injunction, SATA will continue to be harmed because 13 Defendants are likely to continue to infringe on SATA’s marks and designs. Thus, this factor 14 strongly favors injunctive relief. 15 3. Public interest 16 The primary purpose of the Lanham Act is to “[p]rotect consumers against deceptive 17 designations of the origins of goods.” Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 18 912, 918 (9th Cir. 1980). Given the similarity between SATA’s Marks and Defendants’ counterfeit 19 marks, injunctive relief also serves the interest of the public by protecting consumers from 20 unwittingly purchasing these counterfeit products. 21 In sum, SATA has shown that it is entitled to a permanent injunction that: 22 a. Enjoins Defendants—and their officers, agents, servants, employees, confederates, 23 attorneys, and any persons acting in concert with any of them and who have knowledge of 24 this order by service or actual notice—from using any reproduction, counterfeit, copy, or 25 colorable imitation of the SATA Marks in commerce including, without limitation: (i) by 26 selling, offering for sale, distributing, promoting, or advertising any good or service in 27 connection with such reproduction, counterfeit, copy, or colorable imitation of the SATA 28 Marks; (ii) by displaying any unlawful reproduction, counterfeit, copy, or colorable 1 imitation of the SATA Marks on the websites accessible through the domain names 2 http://www.italcojet.com/ and http://www.auarita.com/ or any other website owned or 3 controlled by Defendants or that display Defendants’ products (collectively, the “Enjoined 4 Websites”); or (iii) by displaying any reproduction, counterfeit, copy, or colorable imitation 5 of the SATA Marks at any trade show in the United States, including but not limited to, at 6 any future SEMA trade show; and 7 b. Enjoins Defendants—and their officers, agents, servants, employees, confederates, 8 attorneys, and any persons acting in concert with any of them and who have knowledge of 9 this order by service or actual notice—from manufacturing, using, selling, offering to sell, 10 or importing into the United States, paint spray guns embodying designs that are the same 11 as or substantially similar to the designs claimed in U.S. design patents D459,432; 12 D459,433; D770,593; D548,816; D758,537; D644,716; D655,347; and D552,715, 13 including, without limitation, by: (i) offering to sell and selling such products to individuals 14 or companies in the United States through the Enjoined Websites or otherwise; or (ii) 15 offering to sell or selling such products at any trade show in the United States, including, 16 but not limited to, at any future SEMA show; 17 c. Defendants shall immediately and permanently take down any website, including but not 18 limited to http://www.italcojet.com/ which was registered on November 13, 2012 with 19 website registrar Alibaba Cloud Computing (Beijing) Co., Ltd. and 20 http://www.auarita.com/ which was registered on November 18, 2005 with the website 21 registrar XINNET TECHNOLOGY CORPORATION that contains any depiction, 22 description, or advertisement of product that infringes the intellectual property owned by 23 SATA and asserted in the present action. 24 D. Attorney’s fees 25 SATA also requests attorney’s fees in the amount of Sixteen Thousand Three Hundred 26 Forty-Three Dollars ($16,343.00). (ECF No. 21 at 30). The Lanham Act permits an award of 27 attorneys’ fees to the prevailing party in “exceptional cases,” 15 U.S.C. § 1117(a) (2012), and the 28 Ninth Circuit has held that willful infringement cases like this one are “exceptional.” Gracie v. 1 Gracie, 217 F.3d 1060, 1068 (9th Cir. 2000) (quoting Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 2 1400, 1409 (9th Cir. 1993)). Pursuant to Local Rule 54-14(b)(1), SATA has provided a reasonable 3 itemization and description of the work performed to support an award of attorneys’ fees, and the 4 Court determines that the requested fees are reasonable. 5 To obtain an award of costs, “A prevailing party who claims costs must file and serve a bill 6 of costs and disbursements on the form provided by the clerk no later than 14 days after the date of 7 entry of the judgment or decree.” LR 54–1(a). “A bill of costs and disbursements must be supported 8 by an affidavit and distinctly set forth each item so that its nature can be readily understood. An 9 itemization and, where available, documentation of requested costs in all categories must be 10 attached to the bill of costs.” LR 54–1(b). SATA will provide this court with the appropriate bill of 11 costs within 14 days of entry of this judgment. 12 CONCLUSION 13 Accordingly, IT IS HEREBY ORDERED that SATA’s Motion for Default Judgment (ECF 14 No. 21) is GRANTED and the Clerk of the Court is directed to ENTER JUDGMENT in favor of 15 SATA and against Defendants on Plaintiff’s Complaint, as follows: 16 a. Statutory damages in the amount of Ten Million Dollars ($10,000,000); 17 b. Attorney fees in the amount of Sixteen Thousand Three Hundred Forty-Three 18 Dollars ($16,343); 19 c. Costs in the amount of the forthcoming Bill of Costs; and 20 d. Post-judgment interest on the principal sum at the judgment rate from the date of 21 entry of the Judgment until paid in full. 22 IT IS HEREBY FURTHER ORDERED that, Defendants, and their officers, agents, 23 servants, employees, confederates, attorneys, and any persons acting in concert or participation 24 with any of them are hereby permanently enjoined and restrained from: 25 a. Using any reproduction, counterfeit, copy, or colorable imitation of the SATA Marks in 26 commerce including, without limitation: (i) by selling, offering for sale, distributing, 27 promoting, or advertising any good or service in connection with such reproduction, 28 counterfeit, copy, or colorable imitation of the SATA Marks; (ii) by displaying any unlawful 1 reproduction, counterfeit, copy, or colorable imitation of the SATA Marks on the websites 2 accessible — through the domain names http://www. italcojet.com/ and 3 http://www.auarita.com/ or any other website owned or controlled by Defendnats or that 4 display Defendants’ products (collectively, the “Enjoined Websites”); or (111) by displaying 5 any unlawful reproduction, counterfeit, copy, or colorable imitation of the SATA Marks at 6 any trade show in the United States, including but not limited to, at any future SEMA trade 7 show; and 8 b. Manufacturing, using, selling, offering to sell, or importing into the United States, paint 9 spray guns embodying designs that are the same as or substantially similar to the designs 10 claimed in U.S. design patents D459,432; D459,433; D770,593; D548,816; D758,537; 11 D644,716; D655,347; and D552,715, including, without limitation, by: (i) offering to sell 12 and selling such products to individuals or companies in the United States through the 13 Enjoined Websites or otherwise; or (ii) offering to sell or selling such products at any trade 14 show in the United States, including, but not limited to, at any future SEMA show. 15 IT IS HEREBY FURTHER ORDERED that, 16 c. Defendants shall immediately and permanently take down any website, including but not 17 limited to http://www.italcojet.com/ which was registered on November 13, 2012 with 18 website registrar Alibaba Cloud Computing (Beijing) Co. Ltd. and 19 http://www.auarita.com/ which was registered on November 18, 2005 with the website 20 registrar XINNET TECHNOLOGY CORPORATION that contains any unlawful depiction, 21 description, or advertisement of product that infringes the intellectual property owned by 22 SATA and asserted in the present action. 23 24 ENTERED THIS 20thday of September , 2019. 25 ( ( ( 26 07 UNITED STATES DISTRICT JUDGE 28 -14-