United States District Court, D. New Mexico
MEMORANDUM OPINION AND ORDER
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
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.
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.
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).
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.
Admitted and Undisputed Facts
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.
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.
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.
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,
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. ¶ 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 ...