PHILIP MORRIS USA, INC. v. Jackson
826 F. Supp. 2d 448
E.D.N.Y2011Background
- Philip Morris USA, Inc. sued three defendants for selling counterfeit Marlboro cigarettes in violation of the Lanham Act.
- Plaintiff sought a default judgment after defendants failed to answer or participate in discovery.
- Magistrate Judge Wall recommended default judgment, $200,350 damages (statutory damages and costs), and a permanent injunction.
- Defendants George Jackson, Muhammad A. Jackson, and James Watkins defaulted; Watkins never appeared.
- Court granted a temporary restraining order and preliminary injunction prior to the entry of default judgment.
- Court found evidence supported liability and determined damages were appropriate given willfulness and counterfeiting scale.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Liability under Lanham Act | Plaintiff asserts ownership of valid marks and counterfeit sale occurred. | Defendants did not respond; no argument presented in record. | Liability established; defaults admitted the facts of infringement. |
| Damages amount under Lanham Act | Plaintiff seeks $200,000 statutory damages total, per trademark infringed. | Not advanced due to default; argued limiting damages cannot be determined from records. | Award of $200,000 in statutory damages approved, given willfulness and determent rationale. |
| Equitable relief and injunction | Permanent injunction barring sale of counterfeit cigarettes and cooperation with investigations is warranted. | No response; no contrary argument. | Permanent injunction granted requiring cessation of counterfeit sales and cooperation with investigations. |
Key Cases Cited
- Arrow Fastener v. Stanley Works, 59 F.3d 384 (2d Cir. 1995) (ownership and protectable mark essential in Lanham Act claims)
- Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F. Supp. 2d 284 (S.D.N.Y. 2003) (counterfeit goods establish liability once ownership shown)
- Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir. 1999) (USPTO registration constitutes prima facie ownership and exclusive use)
- Kepner-Tregoe, Inc. v. Vroom, 186 F.3d 283 (2d Cir. 1999) (willfulness shown when defendant knew or disregarded possibility of infringement)
- Philip Morris USA Inc. v. Tammy's Smoke Shop Inc., 726 F. Supp. 2d 223 (E.D.N.Y. 2010) (factors for determining statutory damages and deterrence rationale)
- Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366 (2d Cir. 1993) (infringement involves willful conduct and deterrence considerations)