River Light V, L.P. v. Zhangyali, No. 15 C 5918, Slip Op. (N.D. Ill. Aug. 22, 2016) (Shah, J.).
Judge Shah granted plaintiffs (collectively “Tory Burch”) summary judgment and awarded statutory damages of $100,000, a permanent injunction and attorney’s fees in an amount to be determined in this Lanham Act dispute involving counterfeit Tory Burch product.
As an initial matter, defendant I Love You to the Moom [sic] and Back (“ILYMB”) did not respond to Tory Burch’s Local Rule 56.1 statement of undisputed material facts. Furthermore, instead of filing a statement of additional undisputed material facts, ILYMB submitted two expert reports with ten thousand pages of exhibits which it called declarations, as well as a declaration of ILYMB’s president. Because ILYMB did not dispute Tory Burch’s facts or provide its own, the Court accepted Tory Burch’s facts as undisputed and disregarded ILYMB’s declarations. The Court also excluded the expert reports pursuant to Fed. R. Civ. P. 37 because they were untimely – having been filed after expert disclosure deadlines – and prejudicial.
Because ILYMB did not dispute liability or the underlying facts, the only issue was the amount of statutory damages. Tory Burch sought $150,000, well below the allowable $2M pursuant to § 1117(c)(2). Tory Burch argued that ILYMB used text targeted to make sure its items would be found by searches for Tory Burch merchandise and that ILYMB’s online sales had a wide reach, even if there were not a large number of sales. The Court noted that ILYMB’s willfulness was somewhat mitigated by its decision to hire counsel and appear in the action instead of just defaulting. But citing the need to punish counterfeiters, the Court awarded $100,000.
ILYMB did not oppose a permanent injunction and the Court held that Tory Burch met the standard for an injunction. The public interest is served by stopping counterfeiters. ILYMB would not be harmed by the injunction because it had promised not to sell product incorporating the Tory Burch trademarks in the future. And counterfeit sales irreparably damage the Tory Burch brand. The Court, however, refused to enjoin ILYMB from using or owning any website that could be used to sell counterfeit goods. Such an injunction would be overbroad.
The Court also awarded Tory Burch its attorney’s fees, in an amount to be determined later following the Local Rules requirements.