Estate of Ellington Ex Rel. Ellington v. Harbrew Imports Ltd.
812 F. Supp. 2d 186
E.D.N.Y2011Background
- Ellington Estate sues Harbrew Imports Ltd. and Iconic Brands, Inc. for unauthorized use of the DUKE ELLINGTON marks in selling Duke Ellington XO Cognac under Lanham Act §§ 1125(a),(c) and NY dilution/unfair competition claims.
- Defendants failed to retain counsel, stopped defending the action, and were repeatedly warned about default risks, leading to Plaintiff's default-judgment motion.
- Plaintiff alleges the marks are valid, owned by Ellington, and that Defendants used the marks without authorization to promote a cognac product beginning around October 2006.
- Negotiations for a licensing agreement occurred but were unsuccessful; Defendants allegedly treated the negotiations as an opportunity to infringe.
- Magistrate Judge Carter recommended default judgment, statutory damages of $325,000, permanent injunction, turnover of infringing goods, and dismissal of counterclaims/third-party claims with prejudice.
- Court adopted the R&R, found liability under Lanham Act § 43(a) and NY law, and approved statutory damages and injunctive relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Liability for unfair competition | Ellington owns registrations; likelihood of confusion shown. | Shifts focus to absence of defense; no explicit defense argued before the court. | Defendants liable under Lanham Act § 43(a) and NY law. |
| Trademark dilution claim viability | Defendants' use after fame dilutes the mark. | No specific defense articulated; default context supports plaintiff's theory. | Injunctions appropriate; dilution claim sustained under FTDA/TDRA and NY law. |
| Damages – actual vs statutory | Actual profits unavailable; statutory damages appropriate. | Not providing substantial profits evidence; would contest if defenses existed. | Actual damages declined; statutory damages awarded at $325,000. |
| Attorney's fees | Fees unnecessary given statutory damages. | No attorney's fees awarded. | |
| Injunctive relief and turnover | Permanent injunction necessary to prevent ongoing infringement; turnover of infringing goods. | Permanent injunction granted; turnover and compliance affidavits required. |
Key Cases Cited
- Enron Oil Corp. v. Diakuhara, 10 F.3d 90 (2d Cir. 1993) (default judgment standards and considerations)
- Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61 (2d Cir. 1981) (liability and damages standards in default judgments)
- Rolls-Royce plc v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150 (E.D.N.Y. 2010) (court's obligation to ensure liability supports relief in default)
- Gucci Am., Inc. v. Gold Ctr. Jewelry, 997 F. Supp. 399 (S.D.N.Y. 1999) (discretion in awarding statutory damages)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (Supreme Court 2006) (standards for permanent injunctions in trademark cases)