United States District Court, N.D. California, San Jose Division
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 ...