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Ronaldo Designer Jewelry, Inc. v. Prinzo

United States District Court, S.D. Mississippi, Western Division

August 21, 2017

RONALDO DESIGNER JEWELRY, INC. PLAINTIFF
v.
PHILLIP PRINZO DEFENDANT

          MEMORANDUM OPINION AND ORDER

          DAVID BRAMLETTE UNITED STATES DISTRICT JUDGE

         This cause came before the Court on a hearing on damages on July 10, 2017. Counsel and witnesses for the plaintiff Ronaldo Designer Jewelry, Inc. (“Ronaldo”) appeared. The pro se defendant, Phillip Prinzo (“Prinzo”) did not appear despite having been advised of the hearing on several occasions. The Court now therefore makes the following findings of fact and conclusions of law, based on the evidence submitted at the hearing:

         FINDINGS OF FACT

         Defendant Ronaldo filed its Verified Complaint in this case alleging that Prinzo willfully infringed Ronaldo's copyrights in its “Gold Craft Associates Dealer Handbook, ” “Gold Craft Fashions, ” and “Gold Craft Associates Fall Catalog 2000” catalogs and “The Power of Prayer Bracelet, ” “Stackable Bracelet, ” “THE LOVE KNOT, ” “The Tranquility Bracelet, ” “The Angelina Bracelet, ” “The Spring Time Bracelet, ” “I Love You, ” “TRC-S297 Birthstone Bracelet, ” “Forever Fellowship Bracelet, ” and the “Pearl of My Heart” jewelry designs (collectively, the “Works” or “Ronaldo's Works”); willfully infringed Ronaldo's “THE POWER OF PRAYER” BRACELET® trademark; willfully infringed Ronaldo's “Kissing Roof” clasp design trade dress; and otherwise engaged in unfair competition and false advertising by representing to customers that he was authorized to make and sell Ronaldo's copyrighted jewelry designs and jewelry incorporating Ronaldo's proprietary trade dress. Copies of Ronaldo's copyrighted catalogs and photographic representations of its jewelry designs were incorporated as Exhibits B, C, D, E, I, K, N, Q, T, W, Z, BB and DD to the Verified Complaint [DE 2-1, 2-2, 2-3, 2-4, 2-5, 2-6, 2-7, 2-8, 2-9, 2-10, 2-16, 2-18, 2-21, 2-24, 2-27, 2-30, 2-33, 2-35, 2-37]. Photographic representations of Prinzo's allegedly infringing jewelry were incorporated as Exhibits F, J, L, O, R, U, X, AA, CC, and EE to the Verified Complaint [DE 2-11, 2-17, 2-19, 2-22, 2-25, 2-28, 2-31, 2-34, 2-36, 2-38]. Prinzo was properly served and submitted a letter addressed to the Court [DE 27], which, by Order of the Court [DE 53] was deemed as Prinzo's Answer to the Verified Complaint.

         On October 21, 2016, Ronaldo filed its Motion for Discovery Sanctions [DE 83] and Motion to Hold Defendant in Contempt [DE 85], as well as corresponding Memoranda in support [DE 84 and 86]. On December 20, 2016, the Court granted in part and denied in part Ronaldo's Motion for Discovery Sanctions [DE 83] and Motion to Hold Defendant in Contempt [DE 85], and entered an Order [DE 93] ordering Prinzo to comply with various Court Orders and produce certain discovery within ten (10) days or a default judgment would be entered against him. Prinzo failed to comply with the Court's Order and, on February 3, 2017, the clerk entered default against Prinzo [DE 98]. On November 30, 2016, Ronaldo filed its Motion for Summary Judgment [DE 91] and Memorandum in Support [DE 92]. Ronaldo filed its Motion for Default Judgment [DE 99] on February 10, 2017. On May 10, 2017, the Court entered its Order [DE 104] granting Ronaldo's Motion for Default Judgment [DE 99] and Motion for Summary Judgment [DE 91] and, thus, found Prinzo liable for willful copyright infringement, willful trademark infringement, willful trade dress infringement, unfair competition, and false advertising.

         On July 10, 2017, the Court heard arguments and testimony relating to damages. The Court took judicial notice of the evidence submitted with Ronaldo's Motion for Summary Judgment [DE 91] and the Memorandum of Support [DE 92]. Ronaldo also presented the testimony of Ronaldo's Executive Vice President, Michael Scheser, and its expert W. Whitaker Rayner, who testified as to the reasonableness of Ronaldo's attorney fees and costs.

         Damages Under the Copyright Act

         For its claim for willful copyright infringement, Ronaldo elected statutory damages and sought damages in the amount of $30, 000 per eligible infringement. The Court finds that, of the thirteen (13) copyrighted works infringed by Prinzo, four (4) were registered within three (3) months of first publication or prior to Prinzo's infringement and, thus, are eligible for statutory damages. Ronaldo's “Gold Craft Associates Dealer Handbook” jewelry design and catalog (Cert. of Reg. VA 1-140-610/Suppl. Reg. VA 1-170-689) was registered effective as of November 13, 2001. See Cert. of Reg. [DE 2-1 - 2-7/92-1]. Ronaldo's “Gold Craft Fashions” jewelry design and catalog (Cert. of Reg. VA 1-125-963) was registered effective as of December 7, 2001. See Cert. of Reg. [2-8/92-1]. Ronaldo's “Gold Craft Associates Fall Catalog 2000” jewelry design and catalog was registered effective as of December 7, 2001. See Cert. of Reg. [2-9/92-1]. Ronaldo's “The Spring Time Bracelet” (Cert. of Reg. VA 1-858-088/ Suppl. Reg. VA 1-433-482) was first published on or after March, 2013 and was registered within three months effective as of April 26, 2013. See Verified Complaint at ¶49 [DE 1] and Cert. of Reg. [2-29/92-2]. Ronaldo first discovered Prinzo's infringing works in November of 2011. See Verified Complaint at ¶11 [DE 1]. The invoices attached to Ronaldo's Motion for Summary Judgment show sales by Prinzo in that general time frame. None of Prinzo's sales occurred prior to registration of Ronaldo's respective catalogs. See Appendix 13 to Mem. in Support of Mot. for Summ. Judg. [DE 92-13]. Prinzo at no time submitted evidence of sales prior to the respective dates of registration.

         Ronaldo argued that enhanced statutory damages should be awarded as a result of Prinzo's willful copyright infringement. The Court found Prinzo's infringement was willful when summary judgment on liability was granted. The Court based this finding on Prinzo's knowledge of and past relationship with Ronaldo's predecessor-in-interest entity (See Mutual Release Agreement [92-3]); Prinzo's deemed admission of intentional copying (See Req. for Admis. Nos. 5-6 [92-4] deemed admitted pursuant to the Court's October 3, 2016 Order [DE 80]); Prinzo's actual admission that the Mutual Release Agreement on which he allegedly relied for justification did not, in fact, give him a right to copy (See Prinzo Dep. at 71); Prinzo's copying of Ronaldo jewelry designs that were created after Prinzo's relationship with Ronaldo ended and to which the Mutual Release Agreement could not possibly apply (See Verified Complaint at ¶¶ 9, 26, 40, 49, 57, 65 [DE 1] and Certs. of Reg. for “The Power of Prayer Bracelet, ” “The Angelina Bracelet, ” “TRC-S297 Birthstone Bracelet, ” and “The Spring Time Bracelet” [DE 92-2]); Prinzo's use of the business name of Ronaldo's predecessor-in-interest entity (See Prinzo Catalogs and Invoices [92-5, 92-6, 92-9, 92-10]. Compare Mutual Release Agreement [92-3] granting Prinzo the right to use the name “Gold Craft Fashions.”); the striking similarity of Prinzo's catalogs and jewelry designs to Ronaldo's copyrighted catalogs and jewelry designs and the sheer number of works copied by Prinzo (See comparisons of catalogs [DE 92-1, 92-5, 92-6] and comparison of works in Mot. for Summ. Judg. [DE 92]); and the actual admission of Prinzo's girlfriend, Janice Bintrim, that she directly copied and manipulated pages from Ronaldo's catalogs for Prinzo to use in his own catalog (See Bintrim Dep. at 45-51). The Court finds that enhanced damages are further justified by Prinzo's bad faith and obstructive conduct in this litigation, which are detailed in the Court's Order [DE 93] partially granting the discovery sanctions and contempt finding requested by Ronaldo. Prinzo's conduct included, without limitation, Prinzo's refusal to participate in the discovery process or produce records from which actual damages could be determined, as well as the inference of willfulness from Prinzo's ordered default in this matter [DE 104].

         Damages Under the Lanham Act

         For its claims of willful trademark infringement, willful trade dress infringement, unfair competition, and false advertising under the Lanham Act, Ronaldo requested actual damages trebled. The Court finds that Prinzo sold various bracelets totaling at least $27, 696.75. See Invoices gathered by Ronaldo, found at [DE 92-13]. Given the cryptic nature of Prinzo's invoices, Ronaldo could only specifically attribute sales of at least $6, 809.00 to sales of infringing copies of Ronaldo's “The Power of Prayer Bracelet, ” “Stackable Bracelet, ” “THE LOVE KNOT, ” “The Angelina Bracelet, ” “The Spring Time Bracelet, ” and the “Pearl of My Heart” jewelry designs, most of which copy Ronaldo's “Kissing Roof” clasp design trade dress. Of the bracelets sold, the Court finds that Prinzo sold at least 55 bracelets using variations of or terms substantially similar to Ronaldo's “THE POWER OF PRAYER” BRACELET® trademark for a total of $2, 305.00 as evidenced by his use of such terms as “Prayer Bracelet” or abbreviations thereof in the invoices and on at least one bracelet tag. The Court finds that half of Prinzo's invoices infringing Ronaldo's trademark were dated after the trademark was registered on December 4, 2012 and all of the aforementioned bracelets were sold through Prinzo's false representations that he was authorized to copy and sell Ronaldo designs. The Courts further finds that Prinzo's refusal to participate in discovery or produce records of his sales makes it impossible to determine the actual number of Prinzo's infringing sales. Prinzo failed to submit any evidence of costs or deductions related to such sales.

         Ronaldo argued that, had Prinzo participated in good faith in the discovery process, Ronaldo would be able to identify more infringing sales. Ronaldo argued that damages should be trebled due to Prinzo's intentional conduct and obstruction of the discovery process. The Court found Prinzo's infringement was intentional when summary judgment on liability was granted [DE 104]. The Court based this finding on Prinzo's knowledge of and past relationship with Ronaldo's predecessor-in-interest entity; Prinzo's deemed admission of intentional copying (See Req. for Admis. No. 14 [DE 92-4] deemed admitted pursuant to the Court's October 3, 2016 Order [DE 80]); Prinzo's actual admission of using terms substantially similar to Ronaldo's trademark (See Prinzo Dep. at 55-57; see also Bintrim Dep. at 36); Prinzo's actual admission that the Mutual Release Agreement on which he allegedly relied for justification did not, in fact, give him a right to copy (See Prinzo Dep. at 71); Prinzo's admission that he provided copies of the Mutual Release Agreement to one customer to allay the customer's concerns and induce the customer to buy from Prinzo and the statements from yet another customer as to similar conduct by Prinzo (See Prinzo Dep. at 75); Prinzo's continued use of terms substantially similar to Ronaldo's trademark after it was registered (See Prinzo Invoices [DE 92-9, 92-10, 92-13]); Prinzo's use of the business name of Ronaldo's predecessor-in-interest entity (See Prinzo Catalogs and Invoices [DE 92-5, 92-6, 92-9, 92-10, 92-13]. Compare Mutual Release Agreement [92-3] granting Prinzo the right to use the name “Gold Craft Fashions.”); and the actual admission of Prinzo's girlfriend, Janice Bintrim, that she directly copied and manipulated pages from Ronaldo's catalogs for Prinzo to use in his own catalog (See Bintrim Dep. at 45-51). The Court finds that treble damages are further justified by Prinzo's bad faith and obstructive conduct in this litigation, which conduct was detailed in the Court's Order [DE 93] partially granting the discovery sanctions and contempt finding requested by Ronaldo and included, without limitation, Prinzo's refusal to participate in the discovery process or produce records from which actual damages could be determined.

         Attorney Fees and Costs

         Ronaldo argued that it is entitled to recovery of its reasonable attorney fees and costs under both the Copyright Act and Lanham Act. In its summary judgment motion, Ronaldo presented testimony as to the amount and payment of attorney fees and costs leading up to and submitted with Ronaldo's Motion for Summary Judgment. Ronaldo also presented the testimony of W. Whitaker Rayner, a local attorney with a long-standing reputation and significant experience in the area of intellectual property. Mr. Rayner testified that, in his expert opinion, the attorney fees and costs submitted by Ronaldo were reasonable in light of the work required in this matter.

         The Court finds that Ronaldo's lead counsel, Kyle Anne Citrynell, a partner with the law firm of Seiller Waterman LLC, has been practicing law for 36 years in the area of intellectual property, including but not limited to copyright litigation. Over the three years of this litigation, Ms. Citrynell billed 165.85 hours at rates from $325 to $340 per hour for a total legal fee associated with her work of $56, 177.00.

         The Court finds that C. Shawn Fox, a non-equity partner with the law firm of Seiller Waterman LLC, has been practicing law for 16 years in the area of intellectual property, including but not limited to copyright litigation. Over the three years of this litigation, Mr. Fox billed 186.70 hours at rates from $260 to $285 per hour for a total legal fee associated with his work of $52, 908.00.

         The Court finds that Christopher A. Bates, a non-equity partner with the law firm of Seiller Waterman LLC, has been practicing law for more than 18 years in the area of intellectual property, including but not limited to copyright litigation. Over the three years of this litigation, Mr. Bates billed 11.65 hours at rates from $280 to $285 per hour for a total legal fee associated with his work of $3, 274.50.

         The Court finds that Keith J. Larson, an associate with the law firm of Seiller Waterman LLC, billed 165.85 hours at a rate of $250 per hour for a total legal fee associated with his work of $2, 862.50.

         The Court finds that Morgan K. Mottley, formerly a law clerk and now an associate with the law firm of Seiller Waterman LLC billed 4.7 hours at rates of $125 per hour as a law clerk and $225 per hour as an attorney for a total legal fee associated with her work of $587.50.

         The Court finds that Laura A. Bevarly, a paralegal with the law firm of Seiller Waterman LLC, billed 17.75 hours at rates from $95 to $110 per hour for a total legal fee associated with her work of $1, 710.25.

         The Court finds that Karen K. McWhorter, a paralegal with the law firm of Seiller Waterman LLC, billed 14.0 hours at a rate of $100 per hour for a total legal fee associated with her work of $1, 400.00.

         The Court finds that Colleen M. Hawk, a paralegal with the law firm of Seiller Waterman LLC, billed 12.10 hours at a rate of $125 per hour for a total legal fee associated with her work of $1, 512.50.

         The Court finds that Seiller Waterman LLC billed $925 for other law clerk time in this case.

         The Court finds that Ronaldo's local counsel, Alec M. Taylor, a partner with the law firm of Krebs Farley PLLC, has been practicing law for almost 9 years in the area of litigation, including but not limited to copyright litigation. Over the three years of this litigation, Mr. Taylor billed 102.4 hours at a current rate of $250 per hour for a total legal fee associated with his work of $24, 530.50.

         The Court finds that Ronaldo also incurred taxable costs of $110 for service of process fees and incurred $6, 560.17 in delivery fees, outside copies, deposition fees, and other document fees billed by Seiller Waterman LLC. Ronaldo incurred $1, 887.45 in taxable costs for service of process fees, delivery fees, outside copies, deposition fees, and ...


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