Adobe Systems Inc. v. Nwubah

          ORDER DENYING MOTION FOR DEFAULT JUDGMENT WITHOUT PREJUDICE RE: DKT. NO. 34

          LUCY H KOH UNITED STATES DISTRICT JUDGE

         Before the Court is Plaintiff Adobe Systems Incorporated's (“Plaintiff”) motion for default judgment. ECF No. 34. Having considered the filings of Plaintiff, the relevant law, and the record in the instant case, the Court DENIES Plaintiff's motion for default judgment without prejudice.

         I.BACKGROUND

         A. Factual Background

         Plaintiff is a Delaware corporation with a principal place of business in San Jose, California. ECF No. 1 (“Compl.”) ¶ 1. Defendant Bernard Nwubah (“Defendant”) is an individual who resides in New Orleans, Louisiana. Id. ¶ 2. Defendant does business under the names “Bright Optics” and “Bright Optics 544.” Id. Plaintiff alleges that ten Doe Defendants also serve as employees and agents of Defendant. Id. ¶ 4.

         Plaintiff develops and distributes computer software (collectively, “Adobe-Branded Software”). Id. ¶ 12. In connection with Plaintiff's business, Plaintiff owns numerous trademarks that Plaintiff uses to market and sell software. Id. ¶ 17. Of relevance to the instant case, Plaintiff has registered the following six word and design marks, which Plaintiff uses in connection with Plaintiff's sale of computer software programs: ADOBE® (USPTO Reg. No. 1, 475, 793), A ADOBE® (USPTO Reg. No. 1, 901, 149), A® (USPTO Reg. Nos. 1, 852, 943 and 2, 081, 343), and ACROBAT® (USPTO Reg. Nos. 1, 833, 219 and 3, 652, 382). Id. Plaintiff has also secured copyright registrations for various versions of software, such as Adobe Acrobat X Pro (TX 7-358-035) and Adobe Acrobat XI Pro (TX 7-624-519), among others, with the United States Copyright Office. Id.

         Plaintiff alleges that Defendant advertised and sold counterfeit Adobe-Branded Software through numerous internet sales platforms. Id. ¶ 22. For example, Plaintiff alleges that Defendant used www.ebay.com (“eBay”) to sell counterfeit Adobe-Branded Software through numerous seller IDs, such as “wal4732, ” “bernarnwuba0, ” “jbiggs2me4, ” and others. Id. Plaintiff asserts that when Defendant conducted sales of counterfeit Adobe-Branded Software through eBay, Defendant utilized the payment platform PayPal, Inc. (“PayPal”). Id. ¶ 23.

         Plaintiff alleges that Defendant also sold counterfeit Adobe-Branded Software through other online sales platforms, such as the ones located at www.amazon.com (“Amazon”), www.bonanza.com (“Bonanza”), www.dealscube.com (“dealsCube”), and www.toucandeal.com (“Toucan Deal”). Id. ¶ 24. Defendant purportedly used a number of seller IDs to sell Adobe-Branded Software on these platforms, such as “sambiggs, ” “Top Shop, ” “Bright Optics, ” “gregla, ” “Bcnwubah, ” “Lashop112, ” “lashop, ” “lagreg, ” and “lashopster, ” among others. Id.

         Plaintiff alleges that Plaintiff regularly investigates the sale of counterfeit Adobe-Branded Software on the foregoing platforms. Id. ¶ 22. In the course of these investigation efforts, Plaintiff alleges that Plaintiff made eight “evidentiary buys” from Defendant, the details of which are outlined below.

         On or about March 1, 2016, Plaintiff purchased a purported “Adobe Acrobat X Pro Full Version for Windows” from Defendant's eBay account “wal4732” for a cost of $88.99. Id. ¶ 27. Payment was made through PayPal to the email address “pablorange@yahoo.com” identified in the PayPal receipt as “Pablo Orange.” Id. On or about March 3, 2016, Plaintiff received a shipment pursuant to this order with a return address of “Bright Optics, P.O. Box 870662, New Orleans, LA 70187.” Id. The shipment contained a copy of software that purported to be ADOBE ACROBAT X PRO© contained in packaging virtually identical to Plaintiff's packaging, complete with Plaintiff's trademarks and copyrights. Id. Plaintiff confirmed that the item provided by Defendant contained a counterfeit copy of ADOBE ACROBAT X PRO©. Id. ¶ 28. Plaintiff also confirmed that the disc and packaging were counterfeit and had not been manufactured or authorized for manufactured by Plaintiff. Id. Moreover, the serial number affixed to the product was counterfeit and would not decode. Id. On July 25, 2016, Plaintiff mailed a cease-and-desist letter to Defendant at the return address identified in the aforementioned package. Id. ¶ 29. Plaintiff received no response. Id. When Plaintiff sent follow-up correspondences to Defendant via email on August 22, 2016, and September 6, 2016, Plaintiff again received no response. Id.

         On or about June 7, 2017, Plaintiff purchased a purported “Adobe Acrobat XI Pro Full Version 2PCs for Windows Digital/Download with Updates” from Defendant's Bonanza account “sambiggs” for a cost of $45.00. Id. ¶ 30. Payment was made via Amazon Pay, and the Bonanza receipt identified “bcnwubah@ymail.com” as the seller. Id. On or about that same date, Plaintiff received an email from the seller through Bonanza that provided a serial number and a link to a download of software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff confirmed that the file downloaded from the link contained a counterfeit copy of ADOBE ACROBAT XI PRO©. Id. ¶ 31. Moreover, the serial number provided by Defendant was counterfeit. Id. On July 7, 2017, Plaintiff mailed Defendant another cease-and-desist letter, this time to Defendant's residence. Id. ¶ 32. Plaintiff received no response. Id. Plaintiff sent follow-up correspondences to Defendant via email on August 1, 2018 and August 16, 2018. Id.

         On or about August 10, 2017, Plaintiff purchased a purported “Adobe Acrobat XI Pro Full Version 2PCs for Windows with Updates Download” from Defendant's Bonanza account “gregla” for a cost of $35.00. Id. ¶ 34. On or about that same date, on August 10, 2017, Plaintiff received an email from Defendant through Bonanza that contained a serial number and a link to download the software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff then confirmed that the file contained a counterfeit copy of ADOBE ACROBAT XI PRO©. Id. ¶ 35. Moreover, the serial number provided by Defendant was counterfeit. Id. Plaintiff sent a third cease-and-desist letter to Defendant via email on August 30, 2017. Id. ¶ 36. Plaintiff sent follow-up emails on September 25, 2017 and October 9, 2017. Id. Plaintiff received no response. Id.

         On or about October 12, 2017, Plaintiff purchased a purported “Adobe Acrobat Xi Pro Full Version for Windows 3pc with Updates!!” from Defendant's dealsCube account “Bcnwubah” for a cost of $30.00. Id. ¶ 37. Payment was made through dealsCube, which identified the seller on the invoice as “Bright Optics, PO Box 870612, New orleans [sic], Louisiana 70187, United States.” Id. On or about that same date, Plaintiff received an email from the seller from the email address “brightoptics544@yahoo.com.” Id. The email provided a serial number and a link to download a copy of software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff confirmed that the file contained a counterfeit copy of ADOBE ACROBAT XI PRO©. Id. ¶ 38. Moreover, the serial number provided by Defendant was counterfeit. Id.

         On or about November 16, 2017, Plaintiff purchased a purported “Adobe Acrobat Xi Pro Full Version 2 PC's for Windows” from Defendant's Bonanza account “Lashop112” for a cost of $35.00. Payment was made via Amazon Pay, which identified the seller with the email address “sambiggsny@yahoo.com.” Id. ¶ 39. On or about that same date, Plaintiff received an email from Defendant through Bonanza with a serial number and a link to download a copy of software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff confirmed that the file contained a counterfeit copy of ADOBE ACROBAT XI PRO©. Id. ¶ 40. Moreover, the serial number provided by Defendant was counterfeit. Id. On January 30, 2018, Plaintiff sent another cease-and-desist letter to Defendant via email but once again received no response. Id. ¶ 41.

         On or about March 19, 2018, Plaintiff purchased a purported “Adobe Acrobat Xi Pro Download full American Version” from Defendant's Toucan Deal account “Top Shop” for a cost of $29.99. Id. ¶ 42. Payment was made through PayPal to “Big Nard, ” with the email address “bignard504@gmail.com.” Id. On or about that same date, Plaintiff received an email from “Bright Optics, ” from the email address “brightoptics544@yahoo.com, ” that provided a serial number and a link to download a copy of software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff confirmed that the file downloaded at the link contained a counterfeit copy of ADOBE ACROBAT XI PRO©. Id. ¶ 43. Moreover, the serial number provided by Defendant was counterfeit. Id.

         On or about June 26, 2018, Plaintiff made a purchase of a purported “Adobe Acrobat Xi Pro Download Full Version!! for Windows (2 PC's)” from Defendant's eBay account “bernarnwuba0” for a cost of $23.00. Id. ¶ 44. Payment was made via credit card to “WAL4732.” Id. On or about that same date, Plaintiff received an email through eBay that provided a serial key and a link to download a copy of software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff confirmed that the file downloaded at the link contained a counterfeit copy of ADOBE ACROBAT XI PRO©. Id. ¶ 45. Moreover, the serial number provided by Defendant was counterfeit. Id.

         Finally, on or about January 9, 2019, Plaintiff purchased a purported “Adobe Acrobat XI Pro Download Full Version!! For Windows()” from Toucan Deal from Defendant's Toucan Deal account “Icey Deals” for a cost of $45.00. ECF No. 34-1 at 9. Payment was made through PayPal to “The Deals, ” with an email address of “chuknwubah@gmail.com.” Id. On or about the same date, January 9, 2019, Plaintiff received an email from “La Shop, ” from the email address “lashop808@gmail.com, ” that provided a serial number and a link to download a copy of software that purported to be ADOBE ACROBAT XI PRO©. Id. Plaintiff confirmed that both the file and the serial number were counterfeit. Id.

         B. Procedural History

         On October 3, 2018, Plaintiff filed a complaint against Defendant that alleged five claims: (1) federal trademark infringement, 15 U.S.C. § 1114, (2) false designation of origin and unfair competition, 15 U.S.C. § 1125(a), (3) trademark dilution, 15 U.S.C. § 1125(c), (4) federal copyright infringement, 17 U.S.C. § 501(a), and (5) violation of the ...