United States District Court, N.D. California
ADOBE SYSTEMS INCORPORATED, a Delaware Limited Liability Company, Plaintiffs,
FRAZ TANVIR, an Individual; and DOES 1-10, Inclusive, Defendants.
ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR
CHARLES R. BREYER UNITED STATES DISTRICT JUDGE
Adobe Systems Inc. (“Adobe”) brings this Motion
for Default Judgment against Defendant Fraz Tanvir
(“Tanvir”). See generally Mot. for
Default J. (“MDJ”) (dkt. 29). In addition to
Tanvir, Adobe named an additional ten “Doe”
defendants. Compl. (dkt. 1). On February 24, 2017, the court
clerk entered default against Tanvir. See generally
Entry of Default (dkt. 18). Tanvir has neither filed a
response nor appeared in this action. Adobe alleges that
Tanvir sold on www.ebay.com (“eBay”)
computers with counterfeit and unauthorized Adobe-branded
software. Compl. ¶ 24 (dkt. 1).
was properly served with summons and complaint in his
Pennsylvania home on January 19, 2017. Decl. of Nicole Drey
Huerter (“Huerter Decl.”) ¶ 14 (dkt. 29-1).
Adobe's attorney spoke over the phone with Tanvir's
attorney once before the February 9, 2017 answer deadline,
and she received an email on February 3, 2017. Id.
¶¶ 15-16. Despite this, neither Tanvir nor his
attorney has appeared before this Court, filed a response, or
since contacted Adobe's counsel. Id. For the
reasons outlined below, the Court GRANTS in part and DENIES
in part Adobe's default judgment motion. The Court
further GRANTS reduced damages and injunctive relief.
allegedly operates web stores on www.ebay.com
(“eBay”) under the seller IDs
“fzitelectronics.” Compl. ¶ 24. According to
Adobe, Tanvir advertises, offers for sale, sells, and/or
distributes computers that are pre-loaded with software
infringing on Adobe-branded products. Id. Tanvir has
allegedly sold “$8, 039.99 . . . of computers
specifically identified as containing Adobe-Branded Software;
$641, 180.40 . . . of computers identified as coming
‘bundled' or with ‘extras' or
‘more'; and $115, 415.65 . . . of computers that
lacked any indication of whether they contained added
software.” MDJ at 4 (citing Exs. M, N, O, & P
(dkts. 29-14-29-17)). Moreover, despite Adobe's
cease-and-desist letter and two follow-up emails, Tanvir
continues to offer for sale and sell personal computers
pre-loaded with Adobe-branded software. See Compl.
Plaintiff's Trademarks, Copyrights, and Licensing
attributes its software's success “in part to [its
own] marketing and promotional efforts, ” which include
time and effort in developing consumer recognition,
awareness, and goodwill. Compl. ¶ 13. Through these
efforts, the quality of the software, and word-of-mouth
promotion, “Adobe-Branded Software and the associated
marks thereto have been prominently placed in the minds of
the public.” Id. ¶ 15. Adobe owns
numerous registered trademarks and copyright registrations
for its Adobe-branded software. See Id. ¶¶
17-18. In addition to Adobe's trademarks and copyrights,
“[e]very piece of Adobe-Branded Software is licensed,
” and Adobe “maintains title to the Adobe-Branded
Software at all times . . . .” Id. ¶ 19.
as the standard individual software licenses that anyone can
buy, Adobe offers volume and beta licenses.
Id. ¶¶ 20-21. Volume-licensed
software allows organizations to “purchase a piece of
Adobe-Branded Software and activate it on multiple computers,
simply paying an additional fee (often discounted from the
full retail price) for each additional license.”
Id. ¶ 20. “These licenses are not to be
sold to individuals, ” and any use of such a license by
anyone other than the licensee is unauthorized. Id.
software is a pre-release version of software that Adobe
distributes before releasing final versions of a software
product. Id. ¶ 21. Under Adobe's licensing
agreements, “[b]eta software may not be resold . . .
.” Id. Beta software that has been resold is
alleges (i) the infringement of its trademarks; (ii) the
false designation of origin, false or misleading advertising,
and unfair competition; (iii) the dilution of its trademarks;
(iv) the infringement of its copyrights; and (v) unlawful,
unfair, fraudulent business practices. Id. at 14-19;
see also MDJ at 6-13 (discussing only
Plaintiff's trademark infringement (along with unfair
competition and business practices), trademark dilution, and
copyright infringement claims).
Tanvir's Use of Plaintiff's Trademarks and
to Adobe, Tanvir advertises, markets, offers for sale, sells,
and distributes “numerous counterfeit and/or
unauthorized Adobe-Branded Software products to consumers . .
. .” Compl. ¶¶ 35, 37. Adobe purchased two
computers from Tanvir during an investigation into pirated
and counterfeit Adobe-branded software. Id.
¶¶ 24-29. The two computers, purchased from Tanvir
through the eBay seller IDs “theephonedealer” and
“fzitelectronics, ” were received by Adobe's
investigator, who analyzed the computers' software.
Id. ¶¶ 26-29. On one computer, Adobe
determined that there was “a counterfeit copy” of
Adobe Creative Suite Master Collection CS6 (“Adobe
Creative Suite”). Id. ¶ 27; Huerter Decl.
¶ 7. On the other computer, Adobe determined that there
was an unauthorized volume-licensed version of Adobe
Photoshop Lightroom and unauthorized beta versions
of other Adobe-branded software. Id. ¶ 29.
Plaintiffs Send Cease and Desist Notices and Serve
August 14, 2015, Adobe's counsel mailed a
cease-and-desist letter to Tanvir “at the address
listed on the package.” Compl. ¶ 30. Adobe sent
follow-up emails on September 8, 2015 and September 21, 2015.
Id. Adobe received neither a confirmation of receipt
nor a response. Id.; Ex. K (dkt. 29-12). Adobe filed
its complaint against Tanvir on November 29, 2016.
See Compl. Tanvir was served with copies of the
summons and complaint on January 23, 2017. See
Executed Summons (dkt. 14).
Plaintiff Obtains Limited Discovery
to Federal Rule of Civil Procedure 45 and Magistrate Judge
Elizabeth D. Laporte's Order allowing limited and
expedited discovery, see Order (dkt. 24), Adobe
“served a subpoena on PayPal, Inc.
(“PayPal”), seeking [Tanvir's] sales record
to determine the extent of his infringing conduct.”
See Huerter Decl. ¶ 19. On April 18, 2017,
PayPal produced documents responsive to Adobe's Rule 45
subpoena. Id.; Ex. M (dkt. 29-14) at 1. Adobe
alleges that Tanvir has sold a total of 1071 infringing
products. Huerter Decl. ¶ 21.
Plaintiff Moves for Entry of Default Judgment
8, 2017, Adobe filed the Motion for Default Judgment now
before the Court. See MDJ. Tanvir was properly
served, see Proof of Service (dkt. 14), and after he
failed to respond, the Clerk of Court entered default against
him on February 24, 2017, see Entry of Default (dkt.
to Federal Rule 55(b), the Court may enter a default
judgement upon motion by the Plaintiff after entry of default
by the clerk. See Fed.R.Civ.P. 55(b). “The
district court's decision whether to enter a default
judgment is a discretionary one.” Aldabe v.
Aldabe, 616 F.2d 1089, 1092 (9th Cir. 1980); accord
Lau Ah Yew v. Dulles, 236 F.2d 415, 416 (9th Cir. 1956).
Judicial economy, however, should not outweigh “a
court's duty to do justice.” Enron Oil Corp. v.
Diakuhara, 10 F.3d 90, 96 (2d Cir. 1993)
(“[B]ecause defaults are generally disfavored and are
reserved for rare occasions, when doubt exists as to whether
a default should be granted or vacated, the doubt should be
resolved in favor of the defaulting party.”). Upon an
entry of default by the clerk, the factual allegations of the
plaintiff's complaint will be taken as true, except those
relating to the amount of damages. See Derek Andrew, Inc.
v. Poof Apparel Corp., 528 F.3d 696, 702 (9th Cir.
2008); accord TeleVideo Systems, Inc. v. Heidenthal,
826 F.2d 915, 917-918 (9th Cir. 1987). If the facts necessary
to determine damages are not contained in the complaint, or
are legally insufficient, they will not be established by
default. See Cripps v. Life Ins. Co. of N. Am., 980
F.2d 1261, 1267 (9th Cir. 1992). “It is well settled
that a default judgment for money may not be entered without
a hearing unless the amount claimed is a liquidated sum or
capable of mathematical calculation.” Davis v.
Fendler, 650 F.2d 1154, 1161-62 (9th Cir. 1981) (citing
United Artists Corp. v. Freeman, 605 F.2d 854, 857
(5th Cir. 1979)).
should consider seven discretionary factors, often referred
to as the “Eitel factors, ” before
issuing a decision on a motion for default judgment.
Eitel v. McCool, 782 F.2d 1470, 1471-72 (9th Cir.
1986). The Eitel Factors are as follows: (1) the
possibility of prejudice to the plaintiff; (2) the merits of
the plaintiff's substantive claims; (3) the sufficiency
of the complaint; (4) 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 excusable neglect;
and (7) the likelihood of obtaining a decision on the merits.
Default Judgment Under Eitel
Court examines the following factors in determining whether
to enter a default judgment: (1) the possibility of prejudice
to the plaintiff; (2) the merits of the plaintiff's
substantive claims; (3) the sufficiency of the complaint; (4)
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 excusable neglect; and (7) the likelihood
of obtaining a decision on the ...