Rolls-Royce v. Rolls Royce Rizzy Opinion PDF

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 1 of 22 PageID: 172
UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW JERSEY
ROLLS-ROYCE MOTOR CARDS LIMITED

and ROLLS-ROCE MOTOR CARS NA, LLC,
Civ. No. 15-04 17 (KM)
Plaintiff,
OPINION
V.
ROBERT D. DAVIS, dba ROLLS ROYCE

RIZZY,
Defendant.
KEVIN MCNULTY, U.S.D.J.:

Plaintiffs, Rolls-Royce Motor Cars Limited and Rolls-Royce Motor Cars
NA, LLC, (together Rolls-Royce), bring this suit against defendant Robert D.
Davis (a/k/a Rolls Royce Rizzy) related to infringement of Rolls-Royces
trademarks. Plaintiffs assert claims for trademark dilution, trademark
infringement, and unfair competition/false designation of origin under the
Lanham Act, 15 U.S.C.
1051 et seq. Plaintiffs also assert claims under New
Jersey statutory and common law. (Dkt. No. 1 (Cplt.))

Before the Court is plaintiffs unopposed motion for default judgment
(Dkt. No. 9). For the reasons discussed below, I will partially grant the motion
for default judgment.
I. BACKGROUND
Plaintiff Rolls-Royce Motor Cars Limited is a company organized under
the laws of England with its principal place of business in England. (Cplt.
3)
It distributes Rolls-Royce vehicles to Rolls-Royce Motor Cars NA, LLC. (Id.)

Rolls-Royce Motor Cars NA, LLC is a Delaware limited liability company with its
principal place of business in New Jersey. (Cplt.
1
4) It is responsible for the
wholesale distribution of Rolls-Royce vehicles throughout the U.S. (IcL)

Defendant Davis resides in Georgia. He is a musician who records, offers, and
sells his music under the stage name Rolls Royce Rizzy. (Cplt.
5)
Rolls-Royce Motor Cars Limited owns three U.S. registered trademarks

relevant to this actiontwo ROLLS-ROYCE trademarks (Reg. Nos. 325,195,
3,148,743) and one RR Badge trademark (Reg. No. 197,089). (Cplt.
10)
Rolls-Royce Motor Cars NA, LLC is licensed to use the trademarks in

connection with the distribution and sale of Rolls-Royce vehicles. (Cplt.
12)
The ROLLS-ROYCE trademarks have been used in the U.S. in connection with
automobiles since 1935; the RR badge has been in use since 1905. (Cplt. 1314) Plaintiffs allege that these trademarks are famous and distinctive and
that one way Rolls-Royce makes use of the marks is by licensing them. (Cplt.
18, 15)
Plaintiffs allege that Davis records and sells music under the stage name
Rolls Royce Rizzy and that he advertises his music under that name on his
YouTube channel. (Cplt.
19) They also contend that Davis sells shirts that
contain the words Team Rolls Royce through his online store,
http://rollsroycerizzy.spreadshirt.com. (Id.) They also allege that he makes use
of the RR Badge. (See Cplt.
22)
Plaintiffs sent Davis multiple cease and desist letters requesting that he
stop using the stage name Rolls Royce Rizzy and instructing him to
discontinue any other use of plaintiffs marks. (Cplt.
20) Plaintiffs contend
that Davis has nevertheless continued using their marksfor example, by

posting a photograph on Instagram wearing a Team Rolls Royce shirt and a
cap displaying the RR badge. (Cplt.
22) Plaintiffs also allege that Davis posted
references to this lawsuit on Instagram. (Dkt. No. 9-2

the stage name Rolls Royce Rizzy. (Dkt. No. 9-2
16) He continues to use
17)
Plaintiffs do not request any money damages. Rather, they ask the court
for a permanent injunction, restraining Davis from using their trademarks.
They also ask the Court to order defendant to remove any such trademarks
from his business and website and file with the Court an order setting forth his
2
compliance. (See Dkt. No. 9-4 pp. 2-3)

II. DISCUSSION
A. Entry of Default Judgment
[Tjhe entry of a default judgment is left primarily to the discretion of the
district court. Hritz v. Woma Corp., 732 F.2d 1178, 1180 (3d Cir. 1984) (citing
Tozer v. Charles A. Krause Milling Co., 189 F.2d 242, 244 (3d Cir. 1951)).
Because the entry of a default judgment prevents the resolution of claims on
the merits, this court does not favor entry of defaults and default judgments.
United States v. $55,518.05 in U.S. Currency, 728 F.2d 192, 194 (3d Cir. 1984).
Thus, before entering default judgment, the Court must determine whether the
unchallenged facts constitute a legitimate cause of action so that default
judgment would be permissible. DirecTV, Inc. v. Asher, Civ. No. 03-1969, 2006
WL 680533, at *1 (D.N.J. Mar.14, 2006) (citing Wright, Miller, Kane, 1OA
Federal Practice and Procedure: Civil 3d
2688, at 5859, 63).
[D]efendants are deemed to have admitted the factual allegations of the

Complaint by virtue of their default, except those factual allegations related to
the amount of damages. Doe v. Simone, Civ. No. 12-5825, 2013 WL 3772532,
at *2 (D.N.J. July 17, 2013). While courts must accept the plaintiffs wellpleaded factual allegations as true, they need not accept the plaintiffs factual
allegations regarding damages as true. Id. (citing Chanel, Inc. v.
Gordashevsky, 558 F.Supp.2d 532, 536 (D.N.J. 2008)). Moreover, if a court
finds evidentiary support to be lacking, it may order or permit a plaintiff
seeking default judgment to provide additional evidence in support of the
allegations. Doe, 2013 WL 3772532, at
1.
2.
Prerequisites
Before a court may enter default judgment against a defendant, the

plaintiff must have properly served the summons and complaint, and the
defendant must have failed to file an answer or otherwise respond to the
complaint within the time provided by the Federal Rules, which is twenty-one
days. See Gold Kist, Inc. v. Laurinburg Oil Co., Inc., 756 F.2d 14, 1819 (3d Cir.
3
1985); FED. R. Civ. P. 12(a).

Here, Davis was properly served and has failed to respond to the
complaint. (See Dkt. No. 9-2
10) Defendants time to respond to the
complaint has long since expired. Accordingly, I am satisfied that the

prerequisites to filing a default judgment are met. See Gold Kist, Inc., 756 F.2d
at 1819.
2.
Default judgment factors
I must now evaluate the following three factors: (1) whether the party
subject to default has a meritorious defense, (2) the prejudice suffered by the
party seeking default, and (3) the culpability of the party subject to default.
Doug Brady, Inc. v. N.J. Bldg. Laborers Statewide Funds, 250 F.R.D. 171, 177
(D.N.J. 2008) (citing Emcasco Ins. Co. v. Sambrick, 834 F.2d 71, 74 (3d Cir.
1987)). These factors weigh in favor of entry of a default judgment as to certain
of plaintiffs alleged causes of action.
a.
Meritorious Defense
As to the first factor, I am disadvantaged, of course, by the lack of any

submission by the defendant, but I will review the record that is before me. See
Coach, Inc. v. Bags & Accessories, Civ. No. 10-2555, 2011 WL 1882403, at *6
(D.N.J. May 17, 2011) (Because the Defendants did not respond, the Court
cannot determine whether the Defendants had meritorious defenses that are
not reflected in the record.). Accepting the factual allegations as true, as I
must, I am satisfied that plaintiffs have stated certain of their claims for relief. I
find that plaintiffs are entitled to judgment on their claims for trademark
dilution under federal and state law (Counts I and IV). My independent review
of the record has not revealed any reason to believe that these claims are
legally flawed or that there is a meritorious defense to them. See Doe, 2013 WL
3772532, at
5. I will decline to grant plaintiffs judgment as to their remaining
claims.
1. Trademark Infringement, Unfair Competition,

and False Designation of Origin
Under the Lanham Act Section 32, 15 U.S.C. Section 1114(1):
(1) Any person who shall, without the consent of the registrant-(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with
the sale, offering for sale, distribution, or advertising of any
goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive
Shall be liable in a civil action by the registrant.

15 U.S.C.A.
11 14(1)(a). Furthermore, the Lanham Act Section 43(a)
proscribes unfair competition or, as the statute refers to it, false designation of
origin or false description. 15 U.S.C.A.
1125(a). The statute provides that:
(1) Any person who, on or in connection with any goods or services,

or any container for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person
shall be liable in a civil action by any person who believes
that he or she is or is likely to be damaged by such act.
15 U.S.C.A.
1125(a)(1)(A).
To state a claim for trademark infringement, 15 U.S.C.

unfair competition/false designation of origin, 15 U.S.C.
5
1114(1), and
1 125(a)(1), under the
Lanham Act, a plaintiff must show three elements: (1) it has a valid and legally
protectable mark; (2) it owns the mark; and (3) the defendants use of the mark
to identify goods or services causes a likelihood of confusion. A & H
Sportswear, Inc. v. Victorias Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir.
2000) (We measure federal trademark infringement, 15 U.S.C.
federal unfair competition, 15 U.S.C.
1114, and
1 125(a)(1)(A), by identical standards);
*10 n.6
See also Chanel, Inc. v. Matos, Civ. No. 14-3509, 2015 WL 4773072, at
(D.N.J. Aug. 13, 2015) (Courts in the Third Circuit consider claims for
trademark infringement and for false designation of origin under an identical
standard.) (citing A&H Sportswear). A plaintiff bears the burden of proving
these elements.
As to the first element, plaintiffs have alleged ownership of three
trademarks and provide registration numbers and the date of registration for
each. (See Cplt.
10) Plaintiffs allege that the registrations were duly and
legally issued, are valid and subsisting, and are incontestable pursuant to 15
U.S.C. 1605. (Id. 11) They have also provided the certificates of
registration. (See Dkt. No. 11) A certificate of registration issued by the United
States Patent and Trademark Office constitutes prima facie evidence of the
validity and ownership of a disputed mark. Coach, Inc. v. Cosmetic House, Civ.
No. 10-2794, 2011 WL 1211390, *2 (D.N.J. Mar. 29, 2011) (certificate of
registration by U.S. Patent and Trademark Office is sufficient to establish the
first and second elements of trademark infringement and unfair competition
claims). As such, I am satisfied that the first two elements are met.
As to the third element, a likelihood of confusion exists where
consumers viewing the mark would probably assume that the product or
service it represents is associated with the source of a different product or
*3 (quoting
service identified by a similar mark. Coach, 2011 WL 1211390, at
Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 292 (3d Cir. 1991)).
Courts consider a variety of factors when assessing whether two marks are
likely to cause consumer confusion. In this Circuit these factors include, but
are not limited to
6
(1) the degree of similarity between the owners mark and the
alleged infringing mark; (2) the strength of the owners mark; (3)
the price of the goods and other factors indicative of the care
and attention expected of consumers when making a purchase;

(4) the length of time the defendant has used the mark without
evidence of actual confusion arising; (5) the intent of the
defendant in adopting the mark; (6) the evidence of actual
confusion; (7) whether the goods, though not competing, are
marketed through the same channels of trade and advertised
through the same media; (8) the extent to which the targets of
the parties sales efforts are the same; (9) the relationship of the
goods in the minds of consumers because of the similarity of
function; (10) other factors suggesting that the consuming
public might expect the prior owner to manufacture a product
in the defendants market, or that he is likely to expand into
that market.
Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 471 (3d Cir. 2005)
(quoting Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983)). The
Third Circuit has repeatedly insisted that the Lapp factors are not to be
mechanically tallied, but rather that they are tools to guide a qualitative
decision. A & H Sportswear, Inc., 237 F.3d at 216. Reviewing those factors, I
find that they point in both directions. Overall, I cannot find that defendants
use of the allegedly infringing marks is likely to cause consumer confusion.
The single most important factor in determining likelihood of confusion
is mark similarity. Id. Marks are confusingly similar if ordinary consumers
would likely conclude that [the two products] share a common source,
affiliation, connection, or sponsorship. Id. (quoting Fisons Horticulture, Inc. v.
Vigoro Indus., Inc., 30 F.3d 466, 477 (3d Cir. 1994)). Where the goods or
services are not in direct competition, as is the case here, the degree of
7
similarity required to prove likelihood of confusion is higher than for similar

products. Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 713 (3d Cir. 2004)
(citation omitted). Here, Rolls-Royce has demonstrated that Davis is using
marksnot just similar tobut, in fact, identical to their marks. Therefore,
this element weighs strongly in favor of plaintiffs.
Plaintiff also alleges that the marks are famous and distinctive. (Cplt.
18) To evaluate this factor, a court must examine: (1) the marks
distinctiveness or conceptual strength (the inherent features of the mark) and
(2) its commercial strength (factual evidence of marketplace recognition).
Freedom Card, Inc., 432 F.3d at 472 (citation omitted). The conceptual
strength of a mark is measured by classifying the mark in one of four
categories ranging from the strongest to the weakest: (1) arbitrary or fanciful
(such as KODAK); (2) suggestive (such as COPPERTONE); (3) descriptive
(such as SECURITY CENTER); and (4) generic (such as DIET CHOCOLATE
FUDGE SODA) . Id. To determine commercial strength, courts examine the
marketplace recognition of the trademark.
I find that Rolls-Royces marks are conceptually strong. They appear to
fall into the strongest conceptual category of arbitrary or fanciful marks. See
ProFoot, Inc. v. MSD Consumer Care, Inc., Civ. No. 11-7079, 2012 WL 2262904,
at *8 (D.N.J. June 14, 2012)(Arbitrary or fanciful marks use terms that neither
describe nor suggest anything about the product; they bear no logical or
suggestive relation to the actual characteristics of the goods.). The marks are
certainly not descriptive or generic; at the very least they are suggestive
(perhaps Rolls weakly suggests the idea of wheels on pavement, but it is also
someones name).
With respect to commercial strength, plaintiffs allege that the marks are
well known and unique and are identified by the public solely with Plaintiffs
and their products and services. (Cplt. 17) Plaintiffs assert that the marks
have been used for nearly a century around the world, and that they spend
large sums of money for worldwide advertising of their products. (Id.)
8
Commercial strength is also implied by plaintiffs allegations that they license

their marks. (Cplt.
15) While specific figures would help to support plaintiffs
contentions (for example, sales numbers, company valuation, etc.), I will accept
that the Rolls-Royce marks have commercial viability.
As to the third factor (purchasers care and sophistication), I find that
this factor points in favor of Davis. See Sabinsa Corp. v. Creative Compounds,
LLC, 609 F.3d 175, 186 (3d Cir. 2010) (noting that courts have found there is
not a strong likelihood of confusion
...
[w]here the relevant products are
expensive, or the buyer class consists of sophisticated or professional

purchasers) (internal quotations and citation omitted). Rolls-Royce vehicles
are high-end, luxury cars that are expensive (prohibitively so for most of the
general public). Accordingly, I must assume that individuals in the market to
purchase such vehicles exercise a higher standard of care than the average
consumer and would therefore be less susceptible to confusion by Daviss use
1
of the marks.
In regard to the fifth factor, Daviss intent in using the marks, I find that
this factor points in both directions but ultimately favors Davis. Plaintiffs
allege that Davis intends by his unauthorized use of the Rolls-Royce mark and
RR Badge to trade off the goodwill of Plaintiffs business. (Cplt.
25) I agree
that plaintiff appears to have intentionally used exact replicas of plaintiffs

marks to promote his music career. In addition, the evidence supports
plaintiffs contention that Davis continued to do so even after plaintiffs
informed him of their ownership. (See Cplt.
20-22) I am also inclined to agree
that Davis intended to benefit from the reputation and high-end luxury image
of Rolls-Royce, i.e., their goodwill (I assume this is why he adopted their
The fourth and sixth factors are the length of time the defendant has used the
mark without evidence of actual confusion arising and the evidence of actual
confusion. Though evidence of actual confusion is not required, such evidence is
highly probative of a likeithood of confusion. Sabinsa Corp., 609 F.3d at 187. The
record does not contain evidence relating to either factor. This may be because
plaintiff has not had the opportunity to conduct discovery as to actual confusion due
to Daviss lack of appearance in this case. In any event, I do not grant these factors
weight in my analysis.
9
marks and not a lesser brand of vehicle). However, [a] defendants mere intent
to copy without intent to confuse customers is not enough to find in
plaintiffs favor. Sabinsa Corp., 609 F.3d at 187 (emphasis in original) (internal
quotations and citation omitted). Plaintiffs have not demonstrated that Davis
intended to cause confusion about his relationship with Rolls-Royce. In
addition, Davis posting about the litigation on social media would seem to
undercut that argument. (See Dkt. No. 9-2
16). Therefore, because plaintiffs
have not demonstrated an intent to confuse, I find that this factor leans slightly
in favor of Davis.
The seventh, eighth, and ninth factors address the nature of the services
provided, the customers targeted, and the methods used to reach those
customers. Primepoint, L.L.C. v. PrimePay, Inc., 545 F. Supp. 2d 426, 444
(D.N.J. 2008) (addressing these factors together). These factors weigh in Daviss
favor. The greater the similarity in advertising and marketing campaigns, the
greater the likelihood of confusion. Checkpoint Sys., Inc., 269 F.3d at 28889.
When the parties target their sales efforts to the same group of consumers,
there is a greater likelihood of confusion between two marks. Sabinsa Corp.,
609 F.3d at 188. The parties operate in entirely separate industries and offer
dissimilar products and services. There is no evidence that the parties target
their sales efforts to the same market segment, or that the parties use the same
methods of promotion to target these consumers; in fact, the evidence tends to
point in the opposite direction. (See Dkt. Nos. 1-2; 9-2 Ex. 7-8). Overall, these
factors do not lead me to believe that Daviss use of the marks would cause
consumer confusion.
Upon review of the relevant factors, I find that plaintiffs have not
established a likelihood of confusion due to Daviss use of the marks. The most
likely risk of confusion, in my view, is the risk that a consumer may believe
that there is an association, sponsorship, or relationship of approval
between Rolls Royce and Davis. 15 U.S.C.A.
1125(a)(1)(A). For example,
Daviss actions could lead an unsuspecting consumer to believe he has

obtained permission from Rolls-Royce to use their marks, or perhaps even that
10
Rolls-Royce affirmatively requested that Davis use their marks in order to

promote the Rolls-Royce brand. I sympathize with plaintiffs desire to dispel
this notion. However, I find that the risk of any confusion is fatally undercut by
(1) the sophistication of Rolls-Royce customers and (2) the dissimilarity of the
products at issue. In short, plaintiffs have not established any real risk of
consumer confusion. Accordingly, I will not enter final judgment on plaintiffs
claims of trademark infringement, unfair competition, and false designation of
origin under the Lanham Act (Counts II and III).
In addition, I find the same with respect to plaintiffs claims for unfair
competition under New Jerseys statute, N.J.S.A. 56:41,2 and trademark
infringement and unfair competition under common law. See N. V.E., Inc. v.
Day, No. 07 Civ. 4283, 2009 WL 2526744, at *2 (D.N.J. Aug. 18, 2009) (quoting
Am. Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1433
(3d Cir. 1994)) (By virtue of
...
Lanham Act violations, the defendant also
established its common law and state law claims for unfair competition.);
Coach, Inc., 2011 WL 1882403, at *5 ([L]iability for common law trademark
infringement is established when a defendant violates the federal Lanham Act
for trademark infringement.) I will decline to enter default judgment as to
these claims (Counts V and VI). Much of this analysis, however, is relevant to
trademark dilution, as to which I will award a default judgment.
ii. Trademark Dilution

I move on to what I regard as the stronger claim: trademark dilution. 15
U.S.C. Section 1125(c) of the Lanham Act, Section 43, provides:
Subject to the principles of equity, the owner of a famous mark
that is distinctive, inherently or through acquired distinctiveness,
shall be entitled to an injunction against another person who, at
any time after the owners mark has become famous, commences
use of a mark or trade name in commerce that is likely to cause
dilution by blurring or dilution by tarnishment of the famous
N.J.S.A. 56:4-1 provides that [n]o merchant, firm or corporation shall
appropriate for his or their own use a name, brand, trade-mark, reputation or goodwill
of any maker in whose product such merchant, firm or corporation deals.
11
mark, regardless of the presence or absence of actual or likely

confusion, of competition, or of actual economic injury.
15 U.S.C.
1 125(c)(1). The statute defines a famous mark as a mark that is
widely recognized by the general consuming public of the United States as a

designation of source of the goods or services of the marks owner.
1 125(c)(2)(A). Furthermore, Section 1 125(c)(2)(B) defines dilution by blurring
as association arising from the similarity between a mark or trade name and a
famous mark that impairs the distinctiveness of the famous mark. Section
1 125(c)(2)(C) defines dilution by tarnishment as an association arising from
the similarity between a mark or trade name and a famous mark that harms
the reputation of the famous mark.
The federal cause of action for trademark dilution grants extra
protection to strong, well-recognized marks even in the absence of a likelihood
of consumer confusionthe classical test for trademark infringementif the
defendants use diminishes or dilutes the strong identification value associated
with the plaintiffs famous mark. Times Mirror Magazines, Inc. v. Las Vegas
Sports News, L.L.C., 212 F.3d 157, 163 (3d Cir. 2000). The Third Circuit has
provided that a plaintiff must prove the following elements to establish a prima
facie claim under the federal dilution statute:
1. The plaintiff is the owner of a mark that qualifies as a famous
mark in light of the totality of the eight factors listed in
1 125(c)(1),
2. The defendant is making commercial use in interstate commerce
of a mark or trade name,
3. Defendants use began after the plaintiffs mark became famous,
and
4. Defendants use causes dilution by lessening the capacity of the
plaintiffs mark to identiiy and distinguish goods or services.
Id.
As discussed supra, plaintiffs have provided evidence of the first element.

12
That evidence consists of trademark registrations establishing ownership of a

valid and legally protectable mark. See Cplt.
10-11; Dkt. No. 11; see also
Coach, 2011 WL 1211390, at *2. As to whether the marks are famous under 15
U.S.C.
1 125(c)(1), I find that they are. The Third Circuit has considered the
following factors when determining whether a mark is distinctive or famous:

(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used; (C) the duration
and extent of advertising and publicity of the mark; (D) the
geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the
mark is used; (F) the degree of recognition of the mark in the
trading areas and channels of trade used by the mark& owner and
the person against whom the injunction is sought; (G) the nature
and extent of use of the same or similar marks by third parties.
Id. (citing 15 U.S.C.
1125(c)(1)(A)-(H)).
I take judicial notice that the name Rolls-Royce is well established and
very well known. Plaintiffs marks are distinctive, as outlined in the preceding
section discussing infringement, supra. In addition, plaintiffs allege that they
have spent well over three quarters of a century producing goods and
rendering services recognized in the United States and throughout the world to
be of the highest quality. (Cplt.
16) They assert that they have
continuously used the ROLLS-ROYCE marks and RR Badge since 1935 and
1905, respectively. (Cplt.
12-13) As a result, plaintiffs say, their trademarks
have become well known and unique and are identified by the public solely
with Plaintiffs and their products and services. (Cplt.
17) Plaintiffs contend
that they enjoy an exceedingly valuable reputation around the world both
with purchasers of their products as well as other members of the public. (Cplt.
18). In sum, plaintiffs allege that their trademarks are famous and
distinctive. (Id.
19) I note that Daviss choice to use Rolls-Royces marks to

13
promote his music career would itself tend to corroborate plaintiffs point. In
short, I find that the marks are famous within the meaning of the statute.
The second element is defendants use of the mark in interstate
commerce. See Times Mirror Magazines, Inc., 212 F.3d at 163. Even in the case
of a default judgment, there must be some showing, but the quantum of
commercial activity needed to demonstrate interstate commerce is not great,
Coach, Inc., 2011 WL 1882403, at *4 Congress intended to regulate to the
Constitutional limit. See 15 U.S.C.
1127 (The word commerce means all
commerce which may lawfully be regulated by Congress). Thus, even an intra

state infringement may be reached under the Lanham Act if it has a
substantial effect, economic or otherwise, upon plaintiffs interstate use of the
mark. See McCarthy on Trademarks
25:56. Here, plaintiffs allege that Davis
is a musician, that he employs the stage name Rolls Royce Rizzy, that he
advertises his recordings under that name on his YouTube channel, and that
he sells Team Rolls Royce shirts in his online store. (Cplt.
119) These
activities, by their very nature, involve interstate commerce.

I also am satisfied that the third element of plaintiffs prima facie case of
dilution is met. According to plaintiffs, Davis began using their trademarks
after the marks became famous. (See Cplt.
16, 20-23). The record supports
such a contention. The marks have been registered since 1905 and 1935, and
plaintiffs allegations about Daviss misuse of the marks stem from conduct in
2014. (See Cplt.
J 13-14, 19-22)
Finally, I find that that the fourth element, that Defendants use causes
dilution by lessening the capacity of the plaintiffs mark to identify
and
distinguish goods or services, is met. Times Mirror Magazines, 212 F.3d at

163. Dilution occurs when there is blurring or tarnishing of the trademark.
World Wrestling Fedn Entmt Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d
413, 441 (W.D. Pa. 2003). Blurring occurs when defendants use of the mark
causes the identifying features of plaintiffs mark to become vague and less
distinctive. Id. (citing Times Mirror Magazines Inc. v. Las Vegas Sports News,
212 F.3d 157, 163 (3d Cir. 2000). Defendants use of the mark lessens
14
plaintiffs ability to use the mark to serve as a unique identifier of its product.
Id. Tarnishment occurs when the effect of defendants use of a mark is to
dilute by tarnishing or degrading positive associations of the mark and diluting
the distinctive quality of the mark. Id. at 442 (citing McCarthy on Trademarks
and Unfair Competition
24.95). A mark is tarnished, therefore, when it is
improperly associated with an inferior or offensive product or service

presenting a danger that customers will form unfavorable associations with the
mark. Id. at 443 (emphasis in original) (quoting Avery Dennison Corp. v.
Sumpton, 189 F.3d 868, 881
(9th
Cir. 1999) (internal quotations and citation
omitted); See also Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497,
507 (2d Cir. 1996)(The sine qua non of tarnishment is a finding that plaintiffs
mark will suffer negative associations through defendants use.).
Here, plaintiffs base their dilution claim on allegations that they have
suffered damage to the goodwill associated with their ROLLS-ROYCE
trademark and RR Badge. (Cplt.
32) Plaintiffs assert that they have a
valuable reputation in the U.S. and around the world, and they argue that if
defendants actions continue, he will irreparably harm Plaintiffs and the
goodwill they enjoy under their marks. (Dkt. No. 9-1 pp. 4-5) This appears to
be a claim based on tarnishment. I find that plaintiffs have sufficiently alleged
their tarnishment claim.
Specifically, plaintiffs have submitted materials from Daviss social media
account, advertisements, and promotional materials that reflect language and
imagery that could create negative associations with plaintiffs products.
Hormel, 73 F.3d at 507. For example, plaintiffs have submitted an
advertisement for an event hosted by Rolls Royce Rizzy, entitled Call of
Booty, which features a scantily-clad woman and advertises a Booty Shaking
Contest. (Dkt. No. 1-2 p. 14) Plaintiffs have submitted other materials that
promote Rolls Royce Rizzy and reference his hit singles entitled Gah Damn
and Hoe in You. (Dkt. No. 9-3 p. 62) The apparent cover of Daviss album,
also advertised under the name Rolls Royce Rizzy, is named Pimpn and
features a parental advisory for explicit lyrics. (Id. p. 73) Under these facts, I
15
find that plaintiffs have met the fourth element of their prima facie case of
dilution under a tarnishment theory.
In addition, Courts in this district have found liability under federal law
to be sufficient to establish liability under state law. Coach, Inc. v. Cosmetic
House, Civ. No. 10-2794, 2011 WL 1211390, at*5 (D.N.J. Mar. 29, 2011); See
also 800-JR Cigar, Inc. v. GoTo.com, Inc., 437 F. Supp. 2d 273, 294 (D.N.J.
2006) (Dilution claims under New Jersey law are subject to the same
considerations as federal dilution claims.).
Accordingly, I will enter default judgment as to plaintiffs claim of federal
trademark dilution under the Lanham Act (Count I), as well as New Jersey law
(Count IV).
iii. Unjust enrichment

Under New Jersey law, to establish unjust enrichment, a plaintiff must
show (1) that defendant received a benefit and (2) that retention of that
benefit without payment would be unjust. VRG Corp. v. GKN Realty Corp., 135
N.J. 539, 554 (1994) (internal citations omitted); Alboyacian v. BPProds. N.
Am., Civ. No. 01-5143, 2011 WL5873039, at*4 (D.N.J. Nov. 22, 2011).
Plaintiffs allege in very general terms that Davis is making use of, and
profiting from, Plaintiffs ROLLS-ROYCE and RR Badge mark without
permission from Plaintiffs. (Cplt.
60) However, plaintiffs have not set forth
any facts establishing that Davis has profited as a musician as a direct result
of his use of the Rolls-Royce marks (as opposed to his talent or business
acumen); nor have they alleged any facts suggesting to what degree or in what
amount they believe Davis has been unjustly enriched; nor have they stated
how a benefit was conferred on defendant with the expectation of payment. In
addition, I note that plaintiffs are not requesting monetary damages in this
action, only injunctive relief. (See Dkt. No. 9 p. 8)
Accordingly, I will not enter default judgment as to plaintiffs claim
of unjust enrichment, which in any event is superfluous. (Count VII).
16
b. Prejudice suffered by the party seeking default

Second, I am persuaded that plaintiffs would suffer prejudice if default
judgment were denied. Davis was properly served over a year ago, yet failed to
appear or defend himself in any manner. See Teamsters Pension Fund of
Philadelphia & Vicinity v. Am. Helper, Inc., Civ. No. 11-624, 2011 WL 4729023,
at *4 (D.N.J. Oct. 5, 2011); Dkt. No. 9-2 10. Given defendants continued
infringement and refusal to respond to the complaint (other than poking fun at
it on social media), I find that plaintiffs would suffer ongoing harm and
prejudice if a default judgment were denied. (See Dkt. No. 9-2
17) Plaintiffs
have been prejudiced by defendants failure to answer because they have

incurred additional costs and attorneys fees associated with protecting their
rights and because Daviss failure to appear has impeded plaintiffs ability to
proceed in this action, including its ability to gain access to relevant discovery.
It would be inequitable to allow Davis to preclude plaintiffs requested relief by
simply failing to appear.
c. Culpability of the party subject to default

Third, absent any evidence to the contrary, the Defendants failure to
answer evinces the Defendants culpability in its default. There is nothing
before the Court to show that the Defendants failure to file an answer was not
willfully negligent. Teamsters Pension Fund of Philadelphia & Vicinity, 2011 WL
4729023, at *4 (citing Prudential Ins. Co. of America v. Taylor, Civ. No. 08
2 108, 2009 WL 536403 at *1 (D.N.J. February 27, 2009) (finding that when
there is nothing before the court to suggest anything other than that the
defendants willful negligence caused the defendant to fail to file an answer, the
defendants conduct is culpable and warrants default judgment). Defendant
was served with the complaint back on January 16, 2014. (See Dkt. No. 9-2
10) Defendant has not responded. Again, I note that it is clear that Davis is
aware of plaintiffs suit based on his social media activity. (See Dkt. No. 9-2
16) The obvious conclusion is that Davis is culpable for this failure and unable
to offer a plausible defense.
17
Accordingly, I find that the entry of a default judgment is appropriate as

to Counts I and IV.
B. Remedies
Plaintiffs request that the Court enter a permanent injunction against
Davis enjoining him from any further use of their marks.
The Supreme Court requires, in general, that any plaintiff seeking a
permanent injunction show
(1) that it has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the balance of
hardships between the plaintiff and defendant, a remedy in equity
is warranted; and (4) that the public interest would not be
disserved by a permanent injunction.
eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391(2006) (citations omitted).
The Court may issue a permanent injunction in the context of a default
judgment where these requirements are met. See Coach, Inc. v. Ocean Point
Gifts, Civ. No. 09-42 15, 2010 WL 2521444, at *10 (D.N.J. June 14, 2010). The
Lanham Act in particular contains a specific statutory authorization for
permanent injunctive relief to prevent or restrain trademark dilution. 15 U.S.C.
1116(a). I find that a permanent injunction is warranted here.

First, I find that plaintiffs would suffer irreparable injury if Davis were to
continue use of their marks. Plaintiffs allege that Davis continues to use their
marks and that allowing him to do so will undermin[e] Plaintiffs ability to
control their reputation and threaten[] the goodwill they have established in
their marks. (Dkt. No. 9 p. 12) This Circuit has recognized that [g]rounds for
irreparable injury include loss of control of reputation, loss of trade, and loss of
good will. Kos Pharm., Inc., 369 F.3d at 726 (quoting Pappan Enters., Inc. v.
Hardees Food Sys., Inc., 143 F.3d 800, 805 (3d Cir. 1998)).
I also find that an injunction is appropriate here because monetary
damages are inadequate to compensate for dilution of plaintiffs marks,
particularly where it is ongoing. See Opticians Assn of Am. v. Indep. Opticians
18
of Am., 920 F.2d 187, 195 (3d Cir. 1990) (reasoning, in the context of a
preliminary injunction, that [glrounds for finding irreparable injury include

loss of control of reputation, loss of trade, and loss of good will). The remedy of
injunctive relief will protect plaintiffs against the threat of future tarnishment
of their marks, a threat that cannot be averted by compensatory relief alone.
See Coach, Inc., 2011 WL 1882403, at *9 (citation omitted).
In balancing the hardships, I find that equity indeed warrants the relief
plaintiffs seek. Defendant will not be unduly burdened by an injunction. The
only hardship imposed upon Davis is that he refrain from engaging in
unlawful conduct. Id. Moreover, defendant has continued his infringing
behavior even upon notification of plaintiffs protected marks. Finally, I find
that the public interest would not be disserved by issuing an injunction. To the
contrary, the public can only benefit from the cessation of illegal conduct.
There is certainly a public interest in a truthful and accurate marketplace. See
Kos Pharm., Inc., 369 F.3d at 730.
Accordingly, I will grant plaintiffs the following injunctive relief:

Defendant, his partners, officers, agents, servants, representatives,
employees, successors, and all other persons in active concert or
participation with defendant, are hereby permanently enjoined and
restrained from the following:
a. Using the name Rolls Royce Rizzy or any other reproduction,

copy, or colorable imitation of the ROLLS-ROYCE mark in any
manner in connection with the conduct of his business, either
alone or in conjunction with other words;
b. Wearing or otherwise displaying or using the RR Badge in any
manner in connection with his business;
19
c. Making any other representation or taking any other action

likely to dilute, or to confuse, mislead, or deceive others into
believing that defendant, or his products or services, come from or
are connected with, sponsored by, or approved by plaintiffs.
In addition, defendant is directed to:
a. Obliterate, delete, and remove the ROLLS-ROYCE name and
mark and RR Badge from his websites, business offices,
stationery, telephone and other listings, signs, advertising,
promotional material, and wherever else the same appear and
to destroy or surrender to plaintiffs any and all materials in his
possession or subject to his control wherein the name ROLLS
ROYCE and RR Badge and any other Rolls-Royce marks may
appear;
b. Change his stage! trade name and his internet domain name
and to cause the cancellation, withdrawal, or amendment of all
filings, licenses, and permits issued by or with federal, state, or
local governmental authorities or agencies so as to omit the
name ROLLS-ROYCE, or any reproduction, copy, counterfeit, or
colorable imitation thereof, from his business.
20
III. CONCLUSION
For the foregoing reasons, default judgment will be entered in favor of

plaintiffs as to their trademark dilution claims (Counts I and IV). The motion
for default judgment is denied as to plaintiffs remaining claims. An appropriate
order is filed with this opinion.
Dated: March 11, 2016
Newark, New Jersey
United States District JikdgI
21

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Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 1 of 22 PageID: 172

UNITED STATES DISTRICT COURT

ROLLS-ROYCE MOTOR CARDS LIMITED

Civ. No. 15-04 17 (KM)

ROBERT D. DAVIS, dba ROLLS ROYCE

KEVIN MCNULTY, U.S.D.J.:

1051 et seq. Plaintiffs also assert claims under New

Jersey statutory and common law. (Dkt. No. 1 (Cplt.))

It distributes Rolls-Royce vehicles to Rolls-Royce Motor Cars NA, LLC. (Id.)

4) It is responsible for the

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 2 of 22 PageID: 173

wholesale distribution of Rolls-Royce vehicles throughout the U.S. (IcL)

Rolls-Royce Motor Cars Limited owns three U.S. registered trademarks

Rolls-Royce Motor Cars NA, LLC is licensed to use the trademarks in

19) They also contend that Davis sells shirts that

20) Plaintiffs contend

that Davis has nevertheless continued using their marksfor example, by

22) Plaintiffs also allege that Davis posted

references to this lawsuit on Instagram. (Dkt. No. 9-2

16) He continues to use

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 3 of 22 PageID: 174

compliance. (See Dkt. No. 9-4 pp. 2-3)

2688, at 5859, 63).

[D]efendants are deemed to have admitted the factual allegations of the

Before a court may enter default judgment against a defendant, the

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 4 of 22 PageID: 175

1985); FED. R. Civ. P. 12(a).

10) Defendants time to respond to the

complaint has long since expired. Accordingly, I am satisfied that the

Default judgment factors

As to the first factor, I am disadvantaged, of course, by the lack of any

5. I will decline to grant plaintiffs judgment as to their remaining

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 5 of 22 PageID: 176

1. Trademark Infringement, Unfair Competition,

Shall be liable in a civil action by the registrant.

11 14(1)(a). Furthermore, the Lanham Act Section 43(a)

1125(a). The statute provides that:

(1) Any person who, on or in connection with any goods or services,

To state a claim for trademark infringement, 15 U.S.C.

1 125(a)(1), under the

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 6 of 22 PageID: 177

1 125(a)(1)(A), by identical standards);

10) Plaintiffs allege that the registrations were duly and

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 7 of 22 PageID: 178

and attention expected of consumers when making a purchase;

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 8 of 22 PageID: 179

similarity required to prove likelihood of confusion is higher than for similar

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 9 of 22 PageID: 180

Commercial strength is also implied by plaintiffs allegations that they license

15) While specific figures would help to support plaintiffs

[w]here the relevant products are

expensive, or the buyer class consists of sophisticated or professional

that plaintiff appears to have intentionally used exact replicas of plaintiffs

20-22) I am also inclined to agree

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 10 of 22 PageID: 181

16). Therefore, because plaintiffs

1125(a)(1)(A). For example,

Daviss actions could lead an unsuspecting consumer to believe he has

Case 2:15-cv-00417-KM-JBC Document 13 Filed 03/11/16 Page 11 of 22 PageID: 182