Procedural Posture

Plaintiff, a cigarette manufacturer, sued defendant, an importer of counterfeit cigarettes, for violating 15 U.S.C.S§§ 1114, 1124,1125; 19 U.S.C.S§ 1526(a);the California Unfair Competition Law, CalBus& ProfCode § 17200 et seq.;for common-law unfair competitiontrademark infringementThe manufacturer applied for a default judgment against the importer.

Table of Contents

Overview

The manufacturer filed its action against the importer after the United States Bureau of CustomsBorder Protection (Customs) seized 40,000 cartons of counterfeit cigarettes bearing imitation marks of the manufacturer’s brand cigarettesCustoms’ notice of seizure of infringing merchandise indicated that the importer had imported the counterfeit cigarettesThe importer was served with a summonscomplaintEntry of default against the importer was recorded for its failure to timely respond to the manufacturer’s complaintThe manufacturer’s unopposed application for entry of a default judgment followedAccordingly, the court entered a permanent injunction against the importer, ordered it to pay statutory damages of $ 2 million,ordered it to pay the manufacturer’s attorney’s fees of $ 43,600costs of $ 472.95An EEOC lawyer represented respondent.

Outcome

The court entered a default judgment against the importer.

Overview

HOLDINGS: [1]-Because a notice of voluntary dismissal without prejudice under FedRCivP41(a)(1)(A)(i) was not a final judgment, there was no judgment upon which attorney’s fees under FedRCivP54(d)(2) could be based; [2]-Case law indicated that recovery of attorney’s fees under CalPenCode § 502(e)(2) was limited to prevailing plaintiffs,even if the court had discretion to award fees, doing so would be unreasonable because the claim was neither frivolous nor abusive; [3]-Dismissal without prejudice did not confer prevailing party status under 18 U.S.C.S§ 1836(b)(3)(D) because it did not judicially preclude refiling trade secrets claims in federal court; [4]-Absent evidence of bad faith, the court declined to award attorneys’ fees under inherent power; [5]-Costs could not be awarded under Rule 54(d)(1)S.DCalCivR54.1(f) without prevailing party status.