Fore! An Interesting Copyright and Trademark Default Judgment

  • United States
  • 06/05/2019
  • By Susan Ross (US) on April 26, 2019

On March 15, 2019, a federal trial court judge ruled in favor of famous golfer Jack Nicklaus’ company in a case that may be of interest to copyright and trademark owners. (Nicklaus Cos. LLC. v. Bryan Hepler Golf LLC, No. CV-18-01748-PHX-ROS (D. Ariz. March 15, 2019) (2019 WL 1227198).)

The case began in a way that is probably all too familiar with copyright owners: photos and videos owned by the plaintiff began appearing without permission the defendant’s website and were posted by the defendant on social media sites. The plaintiff sent a demand letter to the defendant, but the conduct did not stop.The plaintiff then filed a complaint in federal court, alleging both copyright and trademark infringement. The plaintiff attempted to serve the complaint on the defendant’s statutory agent, but was informed that the defendant was no longer located at that address. The plaintiff then served the state agency that was designated for this purpose (here, the Arizona Corporation Commission). The defendant failed to respond to the complaint.

The plaintiff moved for a default judgment, but requested more than a finding of infringement.

The plaintiff sought, and the court awarded, statutory damages of $150,000. Under the U.S. copyright law, a plaintiff may seek actual damages or may elect to seek statutory damages for infringement ranging from $750 to $30,000 per work, or an amount up to $150,000 per work if the infringement is “willful.” (17 U.S.C. § 504©(1) & (2).)

The trial court found that the defendant’s lack of cooperation meant that actual damages were not available to the plaintiff because the defendant held the information necessary for the computation of actual damages. As a result, the court ruled that the defendant’s actions were “willful” and “in light of the valuable intellectual property rights at issue,” the court awarded statutory damages in the amount of $150,000.

The defendant also moved for a permanent injunction. The court found that the defendant’s continued actions after the plaintiff’s demand letter “establishes defendant does not respect plaintiff’s intellectual property rights and there is no guarantee defendant will not continue its infringing acts.” Therefore, because the plaintiff would suffer irreparable injury, and the balance of hardships was in plaintiff’s favor, and the public interest would not be dis-served by an injunction, the court granted the permanent injunction.

The injunction prohibits the defendant and its agents from:

Advertising or promoting Jack Nicklaus’ registered marks or name, likeness, or image.
Directly or indirectly implying endorsement by Jack Nicklaus.
Infringing upon the registered trademarks, violating Jack Nicklaus’ publicity rights, or unfairly competing; and
Infringing his registered copyrights.
But the injunction did not stop there. The court’s order also includes social media:

IT IS FURTHER ORDERED any third party internet service provider, website hosting provider, social media platform, or other entity, that facilitates the publication or display of content that constitutes a violation of paragraph 1 of this Order [the injunction described above], who is served with this Order, shall immediately disable access to and remove from public view, the prohibited content.

Although this case is a default judgment, it serves as a reminder to update your copyright and trademark injunction requests to include social media takedowns for infringing material.