GS Holistic, LLC v. Smoke and Vape

[3] 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA [6] 7 GS HOLISTIC, LLC, Case No. 23-cv-00753-AMO (LJC) 8 Plaintiff, REPORT AND RECOMMENDATION 9 v. RE: MOTION FOR DEFAULT JUDGMENT 10 GOKUL PUDASAINI, et al., Re: ECF No. 21 Defendants. [12] 13 Plaintiff GS Holistic, LLC (GS Holistic) filed this action for alleged trademark 14 infringement under 15 U.S.C. § 1114 and false designation of origin and unfair competition under [15] 15 U.S.C. § 1125 (a) against Defendants Gokul Pudasaini d/b/a Smoke and Vape (Smoke and 16 Vape) and Gokul Pudasaini. ECF No. 14 (First Amended Complaint, or FAC) ¶¶ 53–61, 62–70. 17 Defendants failed to appear, and the Clerk of the Court entered default against each of them. ECF 18 No. 21. GS Holistic subsequently filed a Motion for Default Judgment (ECF No. 21), which was 19 referred to the undersigned for a report and recommendation. ECF No. 26. Pursuant to Civil 20 Local Rule 7-1(b), the Court finds this matter suitable for determination without oral argument. 21 Upon consideration of the applicable authority, the papers submitted, and the record in the case, 22 the undersigned RECOMMENDS that the Motion for Default Judgment be DENIED. 23 I. BACKGROUND 24 GS Holistic is a limited liability company incorporated in Delaware, with its principal 25 place of business in Los Angeles, California. FAC ¶ 5. GS Holistic is the federally registered 26 owner of three trademarks related to the “Stüdenglass” brand, which includes glass infusers and 27 accessories. Id. ¶¶ 8, 11 . The Stüdenglass glass infuser is a high-quality smoking apparatus that 1 commerce throughout the United States continuously since at least 2020. Id. ¶ 13 . According to 2 GS Holistic, its Stündenglass products have received significant recognition and publicity in the 3 United States from numerous media publications and through collaborations with celebrities and 4 other companies. Id. ¶¶ 17–19. 5 GS Holistic alleges that Defendants sell counterfeit glass infusers without its authorization 6 that bear “reproductions, counterfeits, copies, and/or colorable imitations” of the Stündenglass 7 trademarks. Id. ¶ 25 . On October 11, 2022, an undercover investigator sent by GS Holistic 8 purchased a glass infuser with a Stündenglass mark affixed to it from Smoke and Vape for a cost 9 of $492.21. Id. ¶¶ 29–30. GS Holistic does not specify which of its three registered trademarks 10 was reproduced on the glass infuser. It then had an agent inspect either “images and/or the 11 physical unit of the product” to determine the product’s authenticity—GS Holistic does not 12 specify which of the two methods of inspection was performed by its agent. Id. ¶ 31 . Through this 13 inspection, the agent “confirmed” that the glass infuser was a counterfeit good with an 14 “[i]nfringing [trademark] affixed to it.” Id. GS Holistic alleges that the unauthorized sale by 15 Smoke and Vape of counterfeit goods is done under the “authority, direction, and/or participation” 16 of Mr. Pudasani. Id. ¶ 34 . GS Holistic further alleges that Defendants’ acts are “willful with the 17 deliberate intent to trade on the goodwill of the Stündenglass [trademarks], cause confusion and 18 deception in the marketplace, and divert potential sales of [its] glass infusers” to Smoke and Vape. [19] Id. ¶ 43 . 20 II. LEGAL STANDARD 21 Obtaining a default judgment is a two-step process. Eitel v. McCool, 782 F.2d 1470 , 1471 22 (9th Cir. 1986). First, “[w]hen a party against whom a judgment for affirmative relief is sought 23 has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the 24 clerk must enter the party’s default.” Fed. R. Civ. P. 55(a). Once a default is entered, the factual 25 allegations of the complaint, other than those pertaining to damages, are deemed admitted. See 26 Fed. R. Civ. P. 8(b)(6) (“An allegation—other than one relating to the amount of damages—is 27 admitted if a responsive pleading is required and the allegation is not denied”); Garamendi v. 1 default judgment. See Fed. R. Civ. P. 55(b)(1) and (2). The decision of whether to grant or deny a 2 request for default judgment lies within the sound discretion of the district court. DIRECTV, Inc. 3 v. Hoa Huynh, 503 F.3d 847, 852 (9th Cir. 2007). Before assessing the merits of a default 4 judgment, the Court must confirm that it has subject matter jurisdiction over the case and personal 5 jurisdiction over the parties, as well as ensure the adequacy of service on the defendant. See In re 6 Tuli, 172 F.3d 707, 712 (9th Cir. 1999)). If the Court finds these elements satisfied, it turns to the 7 following factors (the Eitel factors) to determine whether it should grant a default judgment: 8 (1) the possibility of prejudice to the plaintiff, (2) the merits of plaintiff’s substantive claim, (3) the sufficiency of the complaint, (4) 9 the sum of money at stake in the action[,] (5) the possibility of a dispute concerning material facts[,] (6) whether the default was due 10 to excusable neglect, and (7) the strong policy underlying the Federal Rules of Civil Procedure favoring decision on the merits. [11] 12 Eitel, 782 F.2d at 1471–72 (citation omitted). In this analysis, “the general rule is that well-pled 13 allegations in the complaint regarding liability are deemed true.” Fair Hous. of Marin v. Combs, [14] 285 F.3d 899, 906 (9th Cir. 2002). “However, a defendant is not held to admit facts that are not 15 well-pleaded or to admit conclusions of law.” DIRECTV, Inc., 503 F.3d at 854 (internal quotation 16 marks and citation omitted). Therefore, “necessary facts not contained in the pleadings, and 17 claims which are legally insufficient, are not established by default.” Cripps v. Life Ins. Co. of N. 18 Am., 980 F.2d 1261, 1267 (9th Cir. 1992). 19 III. DISCUSSION 20 A. Jurisdiction and Service of Process 21 In considering whether to enter default judgment, a district court must first determine 22 whether it has jurisdiction over the subject matter and the parties to the case. See In re Tuli, 172 23 F.3d at 712. While evaluating the existence of jurisdiction, the Court may resolve factual disputes 24 by “look[ing] beyond the complaint” and considering “affidavits or other evidence properly 25 brought before the court.” Savage v. Glendale Union High Sch., Dist. No. 205, Maricopa Cnty., [26] 343 F.3d 1036, 1040, n.2 (9th Cir. 2003) (considering subject matter jurisdiction on a 12(b)(1) 27 motion). 1 1. Subject Matter Jurisdiction 2 This is a civil action against Defendants for trademark infringement and false designation 3 of origin under the Lanham Act ( 15 U.S.C. § 1051 et. seq.) FAC ¶¶ 53–70. Therefore, the Court 4 has federal question jurisdiction pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a). 5 2. Personal Jurisdiction 6 GS Holistic alleges that the Court has personal jurisdiction over Defendants because 7 Smoke and Vape is incorporated and has its principal place of business in California, and Mr. 8 Pudasaini resides in California. FAC ¶ 3. It also alleges that Defendants regularly conduct and 9 solicit business in California, including in the Northern District of California. Id. 10 As an initial matter, for individuals like Mr. Pudasaini, the “paradigm forum for the 11 exercise of general [personal] jurisdiction” is his “domicile.” Goodyear Dunlop Tires Operations, 12 S.A. (Goodyear) v. Brown, 564 U.S. 915, 924 (2011). Although GS Holistic alleges that Mr. 13 Pudasaini resides in California, this does not mean he is domiciled here. See Kanter v. 14 WarnerLambert Co., 265 F.3d 853, 857 (9th Cir. 2001) (“A person’s domicile is her permanent 15 home, where she resides with the intention to remain or to which she intends to return,” however, 16 “[a] person residing in a given state is not necessarily domiciled there, and thus is not necessarily a 17 citizen of that state”) (internal citation omitted). However, another traditional basis for conferring 18 a court with personal jurisdiction is also personal service of the defendant within the forum state. 19 See J. McIntyre Mach., Ltd. v. Nicastro, 564 U.S. 873, 880 (2011). Here, GS Holistic filed a 20 Certificate of Service indicating that Mr. Pudasaini was personally served with summons and a 21 copy of the First Amended Complaint in San Jose, California. ECF No. 18. Thus, the Court can 22 exercise personal jurisdiction over Mr. Pudasaini. 23 Because GS Holistic alleges that Smoke and Vape is a California corporation, this Court 24 has personal jurisdiction over it as well. See Goodyear, 564 U.S. at 924 (identifying “place of 25 incorporation” and “principal place of business” as “‘paradig[m]’ bases for the exercise of general 26 [personal] jurisdiction” over corporations) (internal citation omitted). The Court does note for the 27 record that a search of the California Secretary of State’s Business Search website produced no 1 results for Smoke and Vape and/or Gokul Pudasaini d/b/a Smoke and Vape.1 But “the absence of 2 a record with the Secretary of State…does not necessarily establish” that Smoke and Vape is a 3 “non-existent entity.” Sanchez v. Inland-Temple Corp., No. CV 09-6987 ODW (SHX), 2009 WL 4 10675627, at *2 (C.D. Cal. Dec. 17, 2009) (noting that the defendant corporation could be “an 5 unregistered entity” or “registered under a different name,” and therefore the lack of a record with 6 the Secretary of State did not mean that the non-existence of the corporation had been 7 “conclusively established.”) Moreover, at the default judgment stage, GS Holistic’s factual 8 allegations are deemed admitted by Defendants. See Garamendi, 683 F.3d at 1080. Accordingly, 9 GS Holistic has sufficiently alleged a basis for the Court’s exercise of personal jurisdiction over 10 Smoke and Vape. 11 3. Service of Process 12 Rule 4(e) of the Federal Rules of Civil Procedures allows for service of an individual by 13 “delivering a copy of the summons and of the complaint to the individual personally.” Fed. R. 14 Civ. P. 4(e)(2)(A). As noted above, on July 10, 2023, GS Holistic personally served Mr. 15 Pudasaini with summons and a copy of the First Amended Complaint. ECF No. 18. The process 16 server confirmed Mr. Pudasaini’s identity by having Mr. Pudasaini state his name. Id. at 1. 17 Accordingly, Mr. Pudasaini was properly served. 18 Rule 4(h)(1) authorizes service upon a domestic corporation such as Smoke and Vape “in 19 the manner prescribed by Rule 4(e)(1) for serving an individual,” which, in turn, allows for service 20 “following state law for serving a summons in an action brought in courts of general jurisdiction 21 in the state where the district court is located or where service is made.” Fed. R. Civ. P. 4(e)(1). 22 Pursuant to Rule 4(h)(1), service of a corporation can be effectuated by following state law for 23 serving a summons in the state where the district court is located. Under California law, a [24] 1 The Court can sua sponte take judicial notice of business records maintained on the California [25] Secretary of State’s Business Search website pursuant to Federal Rule of Evidence 201. See Gerritsen v. Warner Bros. Entm’t Inc., 112 F. Supp. 3d 1011, 1033 (C.D. Cal. 2015) (taking [26] judicial notice of a business profile on California Secretary of State’s website on the basis that under Rule 201, a court can take judicial notice of “[p]ublic records and government documents [27] available from reliable sources on the Internet, such as websites run by governmental agencies”) 1 corporation may be served by delivering a copy of the summons and complaint (1) to the person 2 designated as an agent for service of process under certain provisions of the California 3 Corporations Code, or (2) to the “president, chief executive officer, or other head of the 4 corporation, a vice president, a secretary or assistant general, or a person authorized by the 5 corporation to receive service of process.” Cal. Civ. Proc. Code § 416.10 (a), (b). 6 Here, the Certificate of Service indicates that Mr. Pudaisini was served on behalf of Smoke 7 and Vape as its registered agent pursuant to Section 416.10 of the California Code of Civil 8 Procedure. ECF No. 17 at 1–2. Although the process server confirmed Mr. Pudaisini’s identity 9 by having him state his name (id. at 1), there is nothing to indicate that Mr. Pudaisini confirmed he 10 is Smoke and Vape’s registered agent for service of process. The lack of a record for Smoke and 11 Vape with the California Secretary of State also means there is no public record that identifies its 12 registered agent for service of process. However, “[a] sworn proof of service constitutes prima 13 facie evidence of valid service which can be overcome only by strong and convincing evidence.” 14 Johnson v. Duke of Edinburgh, Inc., No. 21-CV-03286-SVK, 2022 WL 6219495 , at *2 (N.D. Cal. 15 June 24, 2022), report and recommendation adopted, No. 5:21-CV-03286-EJD, 2022 WL 16 6167350 (N.D. Cal. Oct. 7, 2022) (internal quotation marks and citation omitted). And in the First 17 Amended Complaint, GS Holistic alleges that Mr. Pudasaini “owned, managed, and/or operated” 18 Smoke and Vape, that he “regularly exercised the authority” to decide which products it offered 19 for sale, and that he “controlled the finances and operations” for the company. FAC ¶ 7. At the 20 default judgment stage, GS Holistic’s factual allegations must be accepted as true. See 21 Garamendi, 683 F.3d at 1080. Given all the above, GS Holistic has sufficiently established that 22 Smoke and Vape was properly served via personal service to Mr. Pudasaini. 23 B. Eitel Factors 24 Overall, the undersigned finds GS Holistic’s analysis of the Eitel factors in its Motion for 25 Default Judgment to be conclusory and lacking in detail. See ECF No. 21. Particularly as to Eitel 26 factors two and three, which concern the merits of GS Holistic’s substantive claims and the 27 sufficiency of the First Amended Complaint, respectively, GS Holistic’s allegations are not 1. The Merits of Plaintiff’s Substantive Claims and Sufficiency of the 1 Complaint [2] The second and third Eitel factors are analyzed together, “and the Ninth Circuit has [3] suggested that these two factors require that a plaintiff ‘state a claim on which the [plaintiff] may [4] recover.’” PepsiCo, Inc. v. California Sec. Cans, 238 F. Supp. 2d 1172, 1175 (C.D. Cal. 2002) [5] (internal citation omitted); see also Danning v. Lavine, 572 F.2d 1386, 1388 (9th Cir. 1978). In [6] this analysis, “the general rule is that well-pled allegations in the complaint regarding liability are [7] deemed true.” Fair Hous. of Marin, 285 F.3d at 906 . [8] Here, GS Holistic’s First Amended Complaint includes two separate claims: 1) Trademark [9] infringement under 15 U.S.C. § 1114 (FAC ¶¶ 53-61); and 2) False designation of origin and [10] unfair competition under 15 U.S.C. § 1125 (a) (FAC ¶¶ 62-70). [11] a. Trademark Infringement [12] To prevail on a trademark infringement claim, “the trademark holder must show that it is [13] (1) the owner of a valid, protectable mark, and (2) that the alleged infringer is using a confusingly [14] similar mark.” Grocery Outlet Inc. v. Albertson’s Inc., 497 F.3d 949, 951 (9th Cir. 2007); see 15 15 U.S.C. § 1114 (1) (imposing civil liability for infringing use of a trademark that “is likely to cause [16] confusion, or to cause mistake, or to deceive.”) “The core element of trademark infringement is [17] the likelihood of confusion, i.e., whether the similarity of the marks is likely to confuse customers [18] about the source of the products.” Freecycle Network, Inc. v. Oey, 505 F.3d 898, 902 (9th Cir. [19] 2007) (internal quotation marks and citation omitted). To determine whether a “likelihood of [20] confusion” exists between related goods, the Ninth Circuit has established an eight-part test: 1) [21] strength of the mark; 2) proximity of the goods; 3) similarity of the marks; 4) evidence of actual [22] confusion; 5) marketing channels used; 6) type of goods and the degree of care likely to be [23] exercised by the purchaser; 7) defendant’s intent in selecting the mark; and 8) likelihood of [24] expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 , 348–49 (9th Cir. [25] 1979), abrogated in part on other grounds by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 26 792, 810, n.19 (9th Cir. 2003). [27] Here, GS Holistic alleges that it owns three federally registered trademarks, thus satisfying 1 the first element of a trademark infringement claim. See FAC ¶ 11. However, its allegations 2 regarding whether Defendants willfully infringed on its trademarks are insufficient. First and 3 foremost, GS Holistic relies only on one instance in October 2022 where its undercover 4 investigator purchased one single glass infuser from Smoke and Vape with a “Stündenglass Mark” 5 affixed to it for $492.21, which is less than the $599.95 retail price of GS Holistic’s product. Id. 6 ¶¶ 21, 29–30. But GS Holistic does not specify which of its three trademarks was affixed to the 7 counterfeit product. Nor does it specify whether its agent physically examined the product— 8 versus looking only at images—to confirm the similarities of the trademarks. Id. ¶ 31. And 9 although GS Holistic alleges that “[t]he Defendants’ use of the counterfeit Stündenglass 10 [t]rademarks began long after the registration of the Stündenglass [t]rademarks,” (id. ¶ 33), it does 11 not allege when Defendants began selling counterfeit products or provide any other details about 12 Defendants’ allegedly infringing actions. 13 Moreover, GS Holistic’s allegations regarding Mr. Pudasaini’s ownership and control of 14 Smoke and Vape are equally conclusory and lacking in detail. See, e.g., id. ¶ 32 (“[Mr. Pudasaini] 15 authorized, directed, and/or participated in [Smoke and Vape’s] offer for sale, in commerce, of the 16 [c]ounterfeit [g]oods. [Mr. Pudasaini’s] acts were a moving, active, and/or conscious force behind 17 [Smoke and Vape’s] infringement of the Stündenglass [t]rademarks.”) “As recognized by the 18 Ninth Circuit, ‘[c]ases which have found personal liability on the part of corporate officers have 19 typically involved instances where the defendant was the ‘guiding spirit’ behind the wrongful 20 conduct, ... or the ‘central figure’ in the challenged corporate activity.’” Wolf Designs, Inc. v. 21 DHR Co., 322 F. Supp. 2d 1065, 1072 (C.D. Cal. 2004) (quoting Davis v. Metro Prods., Inc., 885 22 F.2d 515, 524 (9th Cir. 1989)). GS Holistic’s First Amended Complaint is “unsupported by facts 23 explaining how [Mr. Pudasaini] participated in the allegedly wrongful conduct at issue in this 24 case.” Deckers Outdoor Corp. v. Fortune Dynamic, Inc., No. CV 15-769 PSG (SSX), 2015 WL 25 12731929, at *9 (C.D. Cal. May 8, 2015) (granting motion to dismiss trade dress infringement, 26 patent infringement, and unfair competition law claims against individual defendant where the 27 complaint’s “conclusory pleading [was] insufficient to state a claim for relief.”) 1 identical) allegations by GS Holistic equally insufficient. See, e.g., GS Holistic, LLC v. Ashes 2 Plus Nine et al., No. 22-CV-07101-LJC, 2023 WL 5993055 , at *1 (N.D. Cal. Aug. 25, 2023), 3 report and recommendation adopted, No. 4:22-CV-07101-YGR, 2023 WL 6932565 (N.D. Cal. 4 Sept. 21, 2023); GS Holistic LLC, v. Puff N Go Gift Shop LLC, et al., No. 22-CV-07634-VKD, [5] 2023 WL 4146232 , at *4 (N.D. Cal. June 22, 2023), report and recommendation adopted, No. 226 CV-07634-EJD (N.D. Cal. Aug. 23, 2023); GS Holistic, LLC v. Alien Smoke Shop, No. 7 222CV05622JLSDFM, 2023 WL 3402589 , at *2 (C.D. Cal. Mar. 17, 2023). 8 b. False Designation of Origin 9 “To establish a claim for false designation of origin under 15 U.S.C. § 1125 (a), a plaintiff 10 must show: ‘(1) the defendants used a false designation of origin; (2) the use occurred in interstate 11 commerce; (3) that such false designation is likely to cause confusion, mistake or deception as to 12 the origin, sponsorship, or approval of defendants’ goods or services by another person; and (4) 13 that plaintiff has been or is likely to be damaged.’” Puff N Go Gift Shop LLC, 2023 WL 4146232 , 14 at *5 (quoting Hokto Kinoko Co. v. Concord Farms, Inc., 810 F. Supp. 2d 1013, 1039 (C.D. Cal. 15 2011)). “The elements of a claim for false designation of origin under § 1125 are virtually the 16 same as the elements of a claim for trademark infringement under § 1114, although a § 1114 claim 17 requires ownership of a registered trademark while a § 1125 claim does not.” Iglesia Ni Cristo v. 18 Cayabyab, No. 18-CV-00561-BLF, 2020 WL 1531349 , at *7 (N.D. Cal. Mar. 31, 2020). In its 19 Motion for Default Judgment, GS Holistic relies on the same case law and the same factual 20 allegations from the First Amended Complaint for both its trademark infringement and false 21 designation of origin claim. ECF No. 21 at 10 (citing AK Futures LLC v. Smoke Tokes, LLC, No. 22 821CV01061JVSADSX, 2021 WL 5359019 , at *3 (C.D. Cal. Nov. 17, 2021) (analyzing false 23 designation of origin claim using same elements as trademark infringement claim)). But 24 ultimately, GS Holistic’s “claim for false designation of origin is insufficient for the same reasons 25 stated above with respect to [GS Holistic’s] trademark infringement claim.”2 Puff N Go Gift Shop [26] 2 Because the undersigned finds that GS Holistic has failed to satisfy the second and third Eitel [27] factors, which require it to state a claim(s) upon which relief may be granted, she will forego 1 LLC, 2023 WL 4146232 , at *5. 2 C. Relief Sought 3 GS Holistic seeks statutory damages, costs, a permanent injunction, and other equitable 4 relief. Even if GS Holistic’s allegations were sufficient to support entry of default judgment, the 5 relief it seeks is inadequately supported by the evidence. 6 1. Damages 7 The Court may award statutory damages of “not less than $1,000 or more than $200,000 8 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the 9 [C]ourt considers just.” 15 U.S.C. § 1117 (c)(1). “[I]f the [C]ourt finds that the use of the 10 counterfeit mark was willful, [the Court may award] not more than $2,000,000 per counterfeit 11 mark per type of goods or services sold, offered for sale, or distributed, as the [C]ourt considers 12 just.” Id. § 1117(c)(2). Here, GS Holistic seeks $50,000 per infringing trademark, for a total of 13 $150,000 in statutory damages. ECF No. 21 at 2. According to GS Holistic, this is “only a 14 fraction of the actual losses” to its business. Id. at 15. An affidavit from GS Holistic’s owner and 15 CEO, Christopher Folkerts, as to the “value” of damages in this case, provides that through GS 16 Holistic’s own “research,” it “determined that at least 3 out of every 10 products sold is a 17 counterfeit.” ECF No. 21-5, ¶ 16. Although its 2021 sales were approximately $9,600,000, if the 18 market had not been impacted by counterfeit goods, Mr. Folkerts estimates that GS Holistic’s 19 2021 sales would have been approximately $38,400,000.00. Id. ¶¶ 15-16. 20 Even if $150,000 is a “fraction of the actual losses” to its business, GS Holistic has not 21 provided enough evidence supporting its request for that amount. Both of Folkerts’ affidavits as 22 to damages (ECF Nos. 21-5, 21-6) are equally as insufficient as the allegations in the First 23 Amended Complaint. Mr. Folkerts focuses extensively on the general sale of counterfeit products, 24 which presumably includes other retailers in the marketplace, and which is not relevant to 25 damages caused by Defendants’ allegedly infringing actions. See ECF No. 21-5, ¶¶ 3, 12–16; 26 ECF No. 21-6 ¶¶ 3, 22; GS Holistic, LLC v. MSA-Bossy Inc., No. 22-CV-07638-JSC, 2023 WL 27 1 3604322, at *5 (N.D. Cal. May 22, 2023) (“[C]ourts may consider deterrence, but must base a 2 damages award on the particular defendant’s violation. Here, Defendants should not be 3 responsible for other trademark violations by other retailers across the market.”) 4 Nor does Mr. Folkerts provide any detail on the “research” done by GS Holistic in support 5 of its “market share” theory. Ultimately, both of Mr. Folkerts’ affidavits are full of conclusory 6 statements lacking factual support. See, e.g., ECF No. 21-6, ¶ 21 (“The counterfeiting and 7 infringing actions of the Defendants have caused the Plaintiff to suffer losses, as he has lost 8 consumer good-will, loss of brand reputation, confusion in the marketplace, and lost profits based 9 on the systematic sale of fake Stündenglass products.”) In addition, “[GS Holistic’s] request for 10 $150,000 in statutory damages (at $50,000 for each of the three Stündenglass [trademarks]) is 11 disproportionate to the [First Amended C]omplaint’s allegations of only one sale of a single 12 product, bearing one counterfeit [trademark], at a price of [$400].” Puff N Go Gift Shop LLC, [13] 2023 WL 4146232 , at *5. Therefore, GS Holistic has failed to meet its burden of proving 14 statutory damages in this case. 15 2. Costs 16 A plaintiff who establishes a trademark violation “shall be entitled, ... subject to the 17 principles of equity, to recover ... the costs of the action.” 15 U.S.C. § 1117 (a). GS Holistic is 18 requesting $1089.21 in costs, which consists of the filing fee ($402.00), the process server fee 19 ($130.00), and investigation fees ($557.21). ECF No. 21 at 16. However, “[w]hile filing and 20 service of process expenses are reasonable and routinely awarded,” this Court has previously 21 concluded that “pre-suit investigation costs are not appropriate ‘costs of the action’ under § 22 1117(a).” Puff N Go Gift Shop LLC, 2023 WL 4146232 , at *6; see also MSA-Bossy Inc., 2023 23 WL 3604322 , at *6 (“Plaintiff does not cite any authority for shifting the cost of pre-suit 24 investigation to Defendants. The plain language ‘the costs of the action,’ 15 U.S.C. § 1117 (a), is 25 limited to costs incurred after ‘the action’—the court case—has begun.”) Therefore, GS Holistic 26 would be entitled at most to $532 in costs. 27 3. Injunctive Relief 1 such terms as the [C]ourt may deem reasonable, to prevent the violation of any right of the 2 registrant of a mark[.]” 15 U.S.C. § 1116 (a). “According to well-established principles of equity, 3 a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant 4 such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that 5 remedies available at law, such as monetary damages, are inadequate to compensate for that 6 injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy 7 in equity is warranted; and (4) that the public interest would not be disserved by a permanent 8 injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). 9 GS Holistic offers no argument in its Motion for Default Judgment to support its request 10 for injunctive relief. ECF No. 21 at 17. Mr. Folkerts’ affidavit is conclusory on this point and 11 simply repeats language found in the First Amended Complaint. ECF No. 21-6, ¶ 14; FAC at 18. 12 In addition, “the scope of [GS Holistic’s] proposed injunction is overbroad in that it seeks to 13 enjoin [D]efendants from ‘[a]ssisting, aiding or attempting to assist or aid any other person or 14 entity’ in performing prohibited activities—relief that is not sought in [GS Holistic’s] [First 15 Amended C]omplaint.” Puff N Go Gift Shop LLC, 2023 WL 4146232 , at *7; see ECF No. 21 at 16 17; FAC at 18. More importantly, as stated above, GS Holistic only alleges the sale of one 17 counterfeit product with one Stündenglass trademark but requests injunctive relief as to all 18 Stündenglass trademarks. Ultimately, GS Holistic has not demonstrated that it is entitled to the 19 injunctive relief it seeks. 20 4. Other Equitable Relief 21 GS Holistic also requests “an order requiring the Defendants, at their cost, deliver to the 22 Plaintiff for destruction all products…in their possession, custody or control bearing any of the 23 Stündenglass Marks.” ECF No. 21 at 17 (citing 15 U.S.C. § 1118 ). But it offers no argument, nor 24 does it provide any evidence, in support of this request. And as with the request for a permanent 25 injunction, GS Holistic seeks an order encompassing all three Stündenglass trademarks when the 26 allegations in the First Amended Complaint only discuss one allegedly counterfeit product with 27 one infringing trademark. 1 “requiring that the Defendants provide complete accountings and for equitable relief, including 2 || that the Defendants disgorge and return or pay their ill-gotten gains” and “that an asset freeze or 3 || constructive trust be imposed on all monies and profits in the” possession of Mr. Pudasaini, 4 || “which rightfully belong to the Plaintiff’ FAC at 18-19. GS Holistic does not request this relief 5 || in its Motion for Default Judgment and offers no argument or evidence for the Court to consider. 6 || Therefore, GS Holistic has not demonstrated that it is entitled to this type of equitable relief. 7 || IV. CONCLUSION 8 For the reasons discussed above, it is RECOMMENDED that GS Holistic’s Motion for 9 Default Judgment be DENIED. GS Holistic shall serve a copy of this report and recommendation 10 || on Defendants within three business days from the filing date of this report and recommendation 11 and shall file a proof of service with the Court. Any party may serve and file specific written 12 || objections to this recommendation within fourteen days after being served with a copy. See 28 5 13 || U.S.C. § 636(b)(1)(C); Fed. R. Civ. P. 72(b); Civil L.R. 72-3. 14 IT IS SO ORDERED AND RECOMMENDED. 3 15 || Dated: February 21, 2024 17 Las | sari LAF CIS ROS United States Magistrate Judge