United States District Court, D. Minnesota
N. ERICKSEN United States District Judge
Otter Products, LLC (“Otter”), d/b/a OtterBox,
alleges that Defendant Mean Cat Creations Co.
(“MCCC”) has infringed Otter's intellectual
property rights related to its cell phone protector products.
MCCC has not appeared in this action. On March 3, 2017, Otter
applied to the Clerk of Court for entry of default, which was
entered on March 7. Otter moved for entry of default judgment
on April 3, 2017. The Court held a hearing on Otter's
Motion for Default Judgment on May 16, 2017. MCCC did not
oppose the motion or appear at the hearing.
default, the factual allegations of a complaint (except those
relating to the amount of damages) are taken as true, but
‘it remains for the court to consider whether the
unchallenged facts constitute a legitimate cause of action,
since a party in default does not admit mere conclusions of
law.'” Murray v. Lene, 595 F.3d 868, 871
(8th Cir. 2010) (citation omitted); see also Martinizing
Int'l, LLC v. BC Cleaners, LLC, -- F.3d --, No.
16-1069, 2017 WL 1521508, at *1 (8th Cir. Apr. 28, 2017). The
Court must still “ensure that ‘the unchallenged
facts constitute a legitimate cause of action' prior to
entering final judgment.” Marshall v. Baggett,
616 F.3d 849, 852-53 (8th Cir. 2010) (quoting
Murray, 595 F.3d at 871). “A default judgment
must not differ in kind from, or exceed in amount, what is
demanded in the pleadings.” Fed.R.Civ.P. 54(c).
of Fact and Conclusions of Law
Otter has obtained federal registrations for the mark
“DEFENDER SERIES” and for its yellow, rounded
rectangle mark, both used in connection with its cell phone
protective covers: U.S. Trademark Registration Nos. 3, 623,
789; 4, 616, 874; and 4, 293, 603. Compl. ¶¶ 9-10;
id. Exs. A-C. Otter uses these marks in commerce.
Compl. ¶¶ 11-13. The marks have accumulated
goodwill throughout the United States as a result of
Otter's marketing efforts and sales. See Id.
¶¶ 14-16. Similarly, the OtterBox packaging trade
dress-a curved box with, among other things, yellow side
panels and a black back, with rounded square icons and yellow
and white text-is inherently distinctive, has been in use
since 2012, is nonfunctional, and has acquired secondary
meaning. See Id. ¶¶ 17-22.
Otter owns copyrights in the content and artwork on its
DEFENDER SERIES packaging. Compl. ¶ 23. Otter does not
allege that the copyrights are registered or that it has
applied for registration. It conceded at the hearing that
they are not registered. With certain exceptions not
implicated by the Complaint's allegations, “[n]o
civil action for infringement of the copyright in any United
States work shall be instituted until preregistration or
registration of the copyright claim has been made in
accordance with [the Copyright Act].” 17 U.S.C. §
411(a); see also 2 Melville B. Nimmer and David
Nimmer, Nimmer on Copyright § 7.16(B)(1)(a)
(2017). The Court therefore will not enter default judgment
on the copyright cause of action.
Otter's product, which includes a “case” and
a “holster, ” is subject to design patents for
both parts: U.S. Patent Nos. D683, 955; D738, 365; D703, 197;
and D703, 654. Compl. ¶¶ 24-25, 28-29, 32-35;
id. Exs. E, G, I, J. Otter also has design patents
as to the ornamental design of and handle on its packaging:
U.S. Patent Nos. D710, 195 and D703, 530. Compl. ¶¶
26-27, 30-31; id. Exs. F, H. Otter owns each of
these patents. Compl. ¶¶ 24, 26, 28, 30, 32, 34.
Otter, MCCC sells protective cases for portable electronic
devices and related accessories, including cell phone
protectors. MCCC has targeted Otter, a direct competitor, and
knocked off Otter's trademarks, trade dress, and patented
designs in an effort to trick consumers into purchasing
MCCC's “iDefender” copycat products in lieu
of Otter's products. Compl. ¶ 36.
markets and sells a cell phone protector that it calls the
“iDefender.” The use of this mark, which is
confusingly similar to DEFENDER SERIES, on cell phone
protectors infringes Otter's DEFENDER SERIES mark.
See Compl. ¶¶ 37-39; id. Ex. K.
The MCCC product also infringes Otter's ‘197 and
‘654 design patents in the OtterBox case. Compl. ¶
also markets and sells a cell phone protector that is a near
counterfeit of Otter's packaging and products. These
“iDefender” branded products are sold in
packaging that bears a replica of Otter's yellow rounded
rectangle mark and that is nearly identical to Otter's
packaging. See Compl. ¶¶ 41-42;
compare with Id. ¶ 17. MCCC's packaging
infringes Otter's design patents relating to its DEFENDER
SERIES packaging. See Id. ¶ 43.
MCCC's near-counterfeit products are replicas of
Otter's DEFENDER SERIES cell phone protectors and
infringe Otter's ‘365 and ‘955 design patents
in its case and holster. See Compl. ¶¶ 40,
sells these infringing cases through the same retail channels
as Otter's DEFENDER SERIES brand products, including but
not limited to Amazon.com. MCCC sells these cases to
Otter's customer base, the general public. See
Compl. ¶¶ 12, 37, 45.
quality of MCCC's “iDefender” products is
significantly lower than Otter's DEFENDER SERIES branded
products. Evidence of the poor quality and of confusion with
Otter's marks and products, is shown in some customer
comments on Amazon.com. See Compl. ¶ 46;
id. Exs. K, L.
MCCC's use of confusingly similar marks and trade dress
in commerce and its unauthorized infringement of Otter's
design patents harms Otter, its direct ...