United States District Court, M.D. Florida, Orlando Division
ISLAND STONE INTERNATIONAL LIMITED and ISLAND STONE NORTH AMERICA, INC., Plaintiffs,
ISLAND STONE INDIA PRIVATE LIMITED and AJAY GUPTA, Defendants.
REPORT AND RECOMMENDATION
R. SPAULDING, UNITED STATES MAGISTRATE JUDGE.
THE UNITED STATES DISTRICT COURT:
cause came on for consideration without oral argument on the
following motion filed herein:
MOTION: PLAINTIFFS' MOTION FOR ENTRY OF FINAL
DEFAULT JUDGMENT AND PERMANENT INJUNCTION AGAINST DEFENDANTS
(Doc. No. 104)
FILED: September 13, 2017
Island Stone International Limited (“Island Stone
International”) and Island Stone North America, Inc.
(“Island Stone North America”), filed a complaint
against Defendants, Island Stone India Private Limited
(“Island Stone India”) and Ajay Gupta. Doc. No.
1. Plaintiffs allege that Island Stone International is the
owner of a federal trademark in the United States for the
“ISLAND STONE” mark. Id. ¶ 11.
Plaintiffs further allege that Island Stone International
licensed Island Stone North America to use the ISLAND STONE
mark in connection with the manufacture and wholesale
distribution of tiles, floor and wall coverings. Id.
¶ 12. Plaintiffs further allege that Island Stone North
America is the owner of copyright registrations in the United
States in multiple photographs of tile, wall and flooring
products (sometimes referred to as the “Works”).
Id. ¶ 14.
allege that Defendants solicited Terry and Maria Stout to
form Style in Stones, LLC (“Style in Stones”) in
Orlando, Florida to distribute and sell tile and stone
products similar to those offered by Plaintiffs. Id.
¶¶ 16, 17. They allege that Island Stone India
supplied Style in Stones with tile and stone products, and
that Defendants directed and controlled Style in Stones'
marketing, sales and distribution decisions. Id.
¶ 17. They allege that Defendants registered the domain
name styleinstones.com and used the website
www.styleinstones.com (the “Website”) to
display numerous unauthorized and infringing copies of the
Works, including superimposing the text
www.styleinstones.com onto Island Stone North
America's copyrighted images. Id. ¶ 18.
They further allege that the Website uses the ISLAND STONE
mark without authorization from Plaintiffs. Id.
allege that Defendants have committed copyright infringement
in violation of 17 U.S.C. §§ 101, et seq.
(Count I); federal trademark infringement in violation of 15
U.S.C. § 1114(a)(a) (Count II); unfair competition in
violation of 15 U.S.C. § 1125(a) (Count III); false
designation of origin in violation of 15 U.S.C. §
1125(a) (Count IV); deceptive and unfair trade practices in
violation of Fla. Stat. § 501.201, et seq.
(Count V); misleading advertising in violation of Fla. Stat.
§§ 817.41, et seq. (Count VI); and, unjust
enrichment in violation of Florida common law (Count VII).
They seek injunctive relief, damages, an accounting and
attorneys' fees and costs.
to the direction of the Court, the Clerk of Court issued a
default against each Defendant. Doc. Nos. 25, 28, 98, 99.
Plaintiffs now ask the Court to issue a default judgment
against Defendants. Plaintiffs caused the motion for a
default judgment to be served on Defendants by registered
email on September 13, 2017. Doc. Nos. 107, 107-1. As of the
writing of this Report and Recommendation, Defendants have
not responded to the motion and the time for responding has
expired. Accordingly, the motion is ripe for resolution. The
motion has been referred to the undersigned for issuance of a
Report and Recommendation.
may enter a default judgment only if the factual allegations
of the complaint, which are assumed to be true, provide a
sufficient legal basis for entry of a default judgment.
Nishimatsu Constr. Co. v. Houston Nat'l Bank,
515 F.2d 1200, 1206 (5th Cir. 1975) (“The defendant is
not held to admit facts that are not well-pleaded or to admit
conclusions of law.”). Therefore, in considering a
motion for default judgment, a court must examine the
sufficiency of the allegations in the complaint to determine
whether the plaintiff is entitled to a default judgment.
Fid. & Deposit Co. v. Williams, 699 F.Supp. 897,
899 (N.D.Ga. 1988).
a defaulted defendant admits well-pleaded allegations of
liability, allegations relating to the amount of damages are
not admitted by virtue of default. Rather, the Court
determines the amount and character of damages to be
awarded.” Miller v. Paradise of Port Richey,
Inc., 75 F.Supp.2d 1342, 1346 (M.D. Fla. 1999). If a
default judgment is warranted, the court may hold a hearing
for the purposes of assessing damages. Transatlantic
Marine Claims Agency, Inc. v. Ace Shipping Corp., 109
F.3d 105, 111 (2d Cir. 1997) (citing Federal Rule of Civil
Procedure 55(b)(2)). However, a hearing is not necessary if
sufficient evidence is submitted to support the request for
Court previously determined that it has personal jurisdiction
over Defendant Gupta. Doc. Nos. 70, at 5-7; 76. Because the
allegations against Island Stone India are the same as the
allegations against Gupta for purposes of exercise of
personal jurisdiction, I recommend that the Court find that
it can also exercise personal jurisdiction over Defendant
Copyright Infringement (Count I).
prevail on the claim for copyright infringement, Plaintiffs
must plead facts establishing that they own a valid copyright
and that Defendants copied constituent elements of the
copyrighted work that are original. Feist Publ'ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
a judicial proceeding, a certificate of a registration made
before or within five years after first publication of the
work shall constitute prima facie evidence of the validity of
the copyright and of the facts stated in the
certificate.” 17 U.S.C. § 410(c). In the
complaint, Plaintiffs allege that Island Stone North America
has obtained valid copyright registrations in multiple
photographs of tile, wall and flooring products. Doc. No. 1
¶ 14. Copies of sixteen copyright registrations are
attached as Exhibit C to the complaint. Doc. No. 1-3. Each of
these registrations reflect that the registration was made
within five years after the date of first publication of
satisfy the second element of copyright infringement,
Plaintiffs must allege facts that establish that the
Defendants actually copied the copyrighted material.
Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1233
(11th Cir. 2010). Plaintiffs allege that Defendants displayed
on the Website the Works with the text
“www.styleinstones.com” superimposed on
the copyrighted images. Id. ¶ 18; see
also Doc. Nos. 1-3 and 1-4. This is sufficient to
establish the second element of copyright infringement.
the well-pleaded facts in the complaint are sufficient to
establish each element of the prima facie case of copyright
infringement, I recommend that the Court find Defendants
liable to Island Stone North America for copyright
infringement as alleged in Count I of the complaint.
Trademark Infringement (Count II).
prevail on a claim of federal trademark infringement,
Plaintiffs must allege facts that show that (1) they own a
valid trademark; (2) Defendants used the mark or a colorable
imitation thereof in commerce in connection with the sale or
advertising of good or services; and, (3) Defendants used the
mark in a manner likely to confuse consumers. Sound