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Viacom International, Inc. v. Baca

United States District Court, D. New Mexico

November 15, 2018

VIACOM INTERNATIONAL INC., Plaintiff,
v.
MARK ANTHONY BACA and GUARDIAN ANTI-BULLYING CAMPAIGN, INC., Defendants.

          MEMORANDUM OPINION AND ORDER

         On June 22, 2018, Plaintiff Viacom International Inc. (“Viacom”) filed a Motion for Default Judgment and Memorandum in Support Thereof (ECF No. 22). The Court, having considered the motion, exhibits, pleadings, declarations, relevant law, and being otherwise fully informed of the record, will grant the motion for default judgment.

         PROCEDURAL BACKGROUND

         On March 22, 2018, Viacom filed a Motion for Substituted Service and Memorandum in Support of Same (ECF No. 12), setting forth the grounds for why constructive service should be permitted under NMRA 004. The Honorable Kevin R. Sweazea granted Viacom's motion for substituted service, ordering substituted service by a variety of means: email, service by publication in three different newspapers, service by first class mail to all known addresses, service by first-class mail on Defendant Baca's mother, service by first-class mail on Charla Hicks, and notice by text message to Defendants' previously used phone. See Order 1-2, ECF No. 14.

         Viacom subsequently filed a notice of service by publication in the Eastern New Mexico News on April 13, 2018, see Notice, ECF No. 15; notice of publication in the Crestview News Bulletin on April 18, 2018, see Notice, ECF No. 16; and notice of service by publication in the Los Angeles Times on April 13, 2018, see Notice, ECF No. 17. On May 15, 2018, Viacom filed a Certificate of Service Regarding Substituted Service (ECF No. 19), asserting it followed the Court's Order regarding service by email, publication, first-class mail, and text message. The next day Viacom filed a Motion for Clerk's Entry of Default (ECF No. 20). The Acting Clerk of the Court filed an Entry of Default (ECF No. 21) on May 17, 2018. Based on the record, the Court finds that Defendants were properly served.

         Nevertheless, to date, Defendants have failed to answer or otherwise respond to the Complaint. The record indicates that Defendants have actual notice of this litigation. See, e.g., Mot. for Clerk's Entry of Default, Ex. A, ECF No. 20-1 (response by text message from Defendant Baca on April 11, 2018, indicating receipt of text message in which Viacom notified him of this pending litigation). Because Defendants failed to answer or otherwise respond to the allegations made in the Complaint, they have admitted the factual allegations contained therein. See Tripodi v. Welch, 810 F.3d 761, 764-65 (10th Cir. 2016). The Court nevertheless must determine whether the well-pleaded facts state a claim upon which relief may be granted, because a party in default does not admit conclusions of law. See Bixler v. Foster, 596 F.3d 751, 762 (10th Cir. 2010) (holding that default judgment was improper on claims that were barred or subject to dismissal under Rule 12(b)). In ruling on a motion for default judgment, courts should consider (1) jurisdiction, (2) liability, and (3) entitlement to the relief requested. See SPFM, L.P. v. Felix, SA-16-CV-00179-XR, 2016 WL 5854286 (W.D. Tex. Oct. 5, 2016) (and cited authority).

         JURISDICTION

         This Court has federal question jurisdiction over the subject matter pursuant to 17 U.S.C. § 501 (Count I), 15 U.S.C. § 1125(a) (Count II), and 15 U.S.C. § 1125(c) (Count III). This Court has supplemental jurisdiction over the state-law claims (Counts IV, V, and VI) under 28 U.S.C. § 1367. Personal jurisdiction is proper in New Mexico. At the time of the filing of the Complaint, Defendant Mark Anthony Baca was residing in New Mexico and Defendant Guardian Anti-Bullying Campaign, Inc., (“Guardian”) had its principal place of business in New Mexico. See Compl. ¶¶ 13-14, ECF No. 1. Defendant Baca is an officer, trustee, and/or director of Guardian. Id. ¶ 15. Venue is proper in this state and district. See 28 U.S.C. § 1391.

         LIABILITY

         I. Admitted and Undisputed Facts

         Viacom is the owner of numerous copyrights and trademarks related to the Teenage Mutant Ninja Turtles (“Ninja Turtles”), and through its media franchise, Viacom has made the Ninja Turtles famous and distinctive throughout the world and in New Mexico through its high-quality professional television series, films, video games, toys, and other merchandise. See Compl. ¶¶ 1, 6, 25-33, 43, 88, 105, 124, ECF No. 1, & Ex. 7, ECF No. 1-8, & Ex. 8, ECF No. 1-9; Decl. of Andrew Hughes ¶¶ 8-15, 54, 57, ECF No. 27. The Ninja Turtles are adolescent anthropomorphic turtles named after Renaissance artists and trained in ninjutsu to fight crime. Decl. of Andrew Hughes ¶ 8, ECF No. 27. Viacom owns registered and unregistered trademarks related to the Ninja Turtles. Compl. ¶¶ 36, 88, 94, ECF No. 1, & Ex. 8, ECF No. 1-9; Decl. of Andrew Hughes ¶¶ 16, 57, ECF No. 27. The federal registrations for the Ninja Turtle Trademarks are in full force and effect, and many are incontestable. Compl. ¶ 37, ECF No. 1. Viacom and its predecessor in interest have continuously used the Ninja Turtle Trademarks from the registration date or earlier until the present, and Viacom has numerous license agreements for the Ninja Turtle Trademarks throughout the United States and world. Id. ¶¶ 38-39. The Ninja Turtle Trademarks are distinctive, have acquired secondary meaning so the public associates them exclusively with Viacom, have become a symbol of Viacom, and have come to be known as source identifiers for high-quality, authentic Viacom-licensed consumer products. Id. ¶¶ 40-42, 88, 90-92, 107, 119. The design, configuration, conceptual qualities, and distinctive features of the Ninja Turtles copyrighted material, including the characters, are wholly original. Id. ¶ 34.

         Viacom produces dramatic animated television series and feature films about the Ninja Turtles. Id. ¶¶ 30-32. Viacom also produces entertainment content in live events. See Id. ¶ 23.

         Defendants produce a “Ninja Turtles Live Action Parody” show (the “Show”), related marketing, and related advertising, but they do not have a license or other authorization to use any of Viacom's copyrights or trademarks. See Id. ¶¶ 1, 7. The Show is based on the Ninja Turtles; the characters have the same names as Viacom's protected Ninja Turtle characters; the Show's plot points mimic those that appear in authorized Ninja Turtles storylines; the Show makes use of the Ninja Turtles' distinctive costumes that identify the Ninja Turtle characters; the Show's characters act in accordance with the Ninja Turtles' well-recognized personality traits, interact with one another and engage in the same activities as the Ninja Turtles in authorized programming; and at least two of the Shows made use of the unique catchphrases of the Ninja Turtle characters, such as “cowabunga.” See Id. ¶¶ 45-50; Decl. of Andrew Hughes ¶¶ 23-30, ECF No. 27. The Show is not a parody and provides no meaningful commentary upon or criticism of the Ninja Turtles; nor are the Ninja Turtle characters portrayed with irony or self-awareness to indicate a parodic element to the Show. Compl. ¶ 52, ECF No. 1; Decl. of Andrew Hughes ¶ 31, ECF No. 27. An anti-bullying message is not the focus of the Show. Compl. ¶ 53, ECF No. 1; Decl. of Andrew Hughes ¶ 32, ECF No. 27; Decl. of Steven Collins ¶ 6, ECF No. 26.

         Defendant Baca sells merchandise with Ninja Turtle logos, although Defendants are not licensed or authorized to sell it. See Compl. ¶¶ 7, 68, ECF No. 1; Decl. of Steven Collins ¶ 7, ECF No. 26. Defendants sell tickets to the Show and tickets for a greater price where ticketholders can meet actors dressed up in Ninja Turtle character costumes, who pose for photographs and sign autographs. Compl. ¶ 67, ECF No. 1; Decl. of Andrew Hughes ¶ 43, ECF No. 27. The Show is an amateur, low-quality production with non-professional actors and it infringes Viacom's copyrights and trademarks. See Compl. ¶ 105, ECF No. 1; Decl. of Andrew Hughes ¶¶ 33, 55, 58, ECF No. 27. Defendants have adopted and used unauthorized reproductions of one or more of the Ninja Turtle trademarks in connection with the advertising, sale, offering for sale, and/or distribution of goods in New Mexico and in interstate commerce for their own financial gain. Compl. ¶ 92, ECF No. 1. Defendants' unauthorized use of Plaintiff's famous marks occurred long after the Ninja Turtle trademarks became famous in New Mexico and elsewhere. See Id. ¶¶ 109-10, 126.

         Defendants knowingly, willfully, and confusingly made use of Viacom's well-established and famous trademarks and copyrights in the Ninja Turtles, with the intent to trade in on the goodwill associated with Viacom's copyrights and trademarks. See Id. ¶¶ 6-7, 9-10. Over the past few years, Viacom made repeated demands that Defendants cease their infringement. See Id. ¶¶ 2-3. Viacom first learned of the Show in 2015 and contacted Defendants around August 2015 to request they cease and desist using all Ninja Turtle trademarks and copyrighted materials. See Decl. of Andrew Hughes ¶¶ 18-19, ECF No. 27. Viacom again contacted Defendants in November 2016 because of continued infringement by Defendants. Id. ΒΆ 20. Defendants acknowledged their infringement in January 2017 and again in January 2018, both times Defendants agreed to cease the infringing conduct, but they continued to infringe ...


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