Wiss et al v. Ceide et al

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
-------------------------------------------------------- X
WISS JOSEPH and MARIE JOSEPH,
Plaintiffs,
- against -
DENER CEIDE, DENER CEIDE
PRODUCTIONS, INC., “ZAFEM”,
ZAFEMUSIC.COM, and ZAFEMEPK.COM,
Defendants.
:
:
:
:
:
:
:
:
:
:
:
MEMORANDUM DECISION AND
ORDER
24-cv-6572 (BMC)
-------------------------------------------------------- X
COGAN, District Judge.
This trademark case is before the Court principally on defendants' motion under Rules 55
and 60(b) of the Federal Rules of Civil Procedure to set aside a default judgment, and to stay
enforcement of the judgment pending determination of their motion. The default judgment
enjoined defendants from using plaintiffs’ trademark and awarded plaintiffs statutory damages in
the amount of $1 million. Plaintiffs, in turn, move for contempt, contending that defendants are
violating the injunction contained in the final judgment. For the following reasons, defendants’
motion to vacate is conditionally granted, their motion to stay is partially granted, and the ruling
on plaintiffs’ motion for contempt is deferred pending defendants’ compliance with the
conditions for vacating the default.
BACKGROUND
Plaintiffs are the owners of the registered mark bearing the text “Zafem World
Entertainment.” Plaintiffs registered the mark in 2021 after allegedly using it for nearly a decade
to promote concerts of Haitian-American music, dances, and related entertainment events.
Defendant Dener Ceide is the individual sole owner of corporate defendant Dener Ceide
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 1 of 11 PageID #:
<pageID>

2
Productions, Inc., and the founder of a Haitian musical group known as “Zafem” (collectively,
“defendants”).
Plaintiffs first brought their trademark infringement action against defendants on
September 18, 2024. After plaintiffs had some initial trouble serving defendants, Mr. Ceide was
personally served on March 25, 2025, and Dener Ceide Productions, Inc. on March 26, 2025.
When defendants failed to appear after being served, on September 18, 2025, the Court entered
default judgment in favor of plaintiffs, enjoining defendants from using plaintiffs’ trademark and
awarding plaintiffs $1 million in statutory damages. On September 19, 2025, plaintiffs sent
defendants an email informing them about the default judgment. On October 30, 2025,
defendants brought the present motion to set aside the default judgment, arguing that the
September 19, 2025, email was the first time that they had heard from plaintiffs. They seek to
stay enforcement of the judgment pending determination of their motion to vacate. In the
meantime, plaintiffs moved to hold defendants in contempt for violating the injunctive
provisions of the final judgment.
DISCUSSION
“Pursuant to Federal Rule of Civil Procedure 55(c), a district court may set aside the
entry of a default ‘for good cause,’ and it may set aside a final default judgment under Rule
60(b).” Henry v. Oluwole, 108 F.4th 45, 52 (2d Cir. 2024). “In deciding whether to relieve a
party from a default or a default judgment, a district court considers three factors: ‘(1) whether
the default was willful; (2) whether setting aside the default would prejudice the adversary; and
(3) whether a meritorious defense is presented.’” Id. (citing Enron Oil Corp. v. Diakuhara, 10
F.3d 90, 96 (2d Cir. 1993)). “Other relevant equitable factors may also be considered, for
instance, whether the failure to follow a rule of procedure was a mistake made in good faith and
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 2 of 11 PageID #:
<pageID>

3
whether the entry of default would bring about a harsh or unfair result.” Enron Oil, 10 F.3d at
96.
“The dispositions of motions for entries of defaults and default judgments and relief from
the same under Rule 55(c) are left to the sound discretion of a district court because it is in the
best position to assess the individual circumstances of a given case and to evaluate the credibility
and good faith of the parties.” Id. at 95. “[B]ecause defaults are generally disfavored and are
reserved for rare occasions, when doubt exists as to whether a default should be granted or
vacated, the doubt should be resolved in favor of the defaulting party.” Henry, 108 F.4th at 51
(alteration in original) (quoting Enron Oil, 10 F.3d at 96). “[A]n understandable zeal for a tidy,
reduced calendar of cases should not overcome a court's duty to do justice in the particular case.”
Enron Oil, 10 F.3d at 96.
I. Willfulness
In considering a motion to set aside a default judgment, “[w]illfulness ‘is the most
significant factor’ but is not dispositive.” Henry, 108 F.4th at 52 (citing In re Orion HealthCorp,
Inc., 95 F.4th 98, 104 n.4 (2d Cir. 2024)). The Second Circuit has interpreted “willfulness,” in
the context of a default, to mean conduct that is “more than merely negligent or careless.” S.E.C.
v. McNulty, 137 F.3d 732, 738 (2d Cir. 1998) (collecting cases). An attorney or litigant’s
conduct that is “egregious and not satisfactorily explained,” is suggestive of willfulness. Id. For
example, the Court has found willful default when an attorney or litigant failed to respond to a
motion for summary judgment for “unexplained” reasons, failed to comply with scheduling
orders for “flimsy” reasons, or failed to answer the complaint after defendants had “purposely
evaded service for months.” Id. at 738-39 (citing United States v. Cirami, 535 F.2d 736, 739 (2d
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 3 of 11 PageID #:
<pageID>

4
Cir. 1976); Chira v. Lockheed Aircraft Corp., 634 F.2d 664, 666 (2d Cir. 1980); Com. Bank of
Kuwait v. Rafidain Bank, 15 F.3d 238, 243-44 (2d Cir. 1994)).
Defendants argue that their default was not willful, because as a touring musician who
spends eighty percent of his time on the road, Mr. Ceide may have been touring with his band
when plaintiffs effectuated service by mail. Defendants assert that Mr. Ceide has no manager
and receives “large volumes of fan correspondence, solicitations, and unsolicited packages.”
Defendants also argue that Mr. Ceide does not recall being served with the summons and
complaint, and that even if he had received those papers, he either did not read them, or did not
understand their significance. Mr. Ceide contends that the first time he found out about the
default was from plaintiffs’ September 19, 2025, email with the default judgment and the Court’s
decision and order attached.
Plaintiffs counter that defendants had actual knowledge of the lawsuit because they sent
defendants physical copies of all relevant filings to the corporate defendant’s registered agent’s
address, and Mr. Ceide’s residential address, and even served Mr. Ceide personally at his home.
Additionally, plaintiffs argue that on September 20, 2024, they sent the Court’s entire docket
with all supporting papers (including the Complaint) to defendants using the same email address
that defendants acknowledge provided them with notice of the default judgment.
Because defendants fail to adequately explain how they did not receive the summons and
complaint after plaintiffs sent multiple copies to defendants’ registered addresses and even after
Mr. Ceide was personally served, the Court finds that defendants did, in fact, receive the
summons and complaint. Even so, doubt exists whether Mr. Ceide opened the papers or
understood their significance, given Mr. Ceide’s status as a touring performer, as Mr. Ceide may
well have overlooked or mistaken the summons and complaint for spam mail, fan mail, or
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 4 of 11 PageID #:
<pageID>

5
solicitation for legal services. Because doubt exists as to whether defendants’ conduct was
willful, the Court resolves that doubt in favor of the defaulting party. See Henry, 108 F.4th at
51.
Defendants’ failure to read and understand the summons and complaint suggests
defendants were negligent and careless in responding to plaintiffs’ complaint. Such negligence
falls short of the “egregious” and inexplicable conduct the Court requires for a finding of
willfulness. See McNulty, 137 F.3d at 738.
II. Prejudice
To establish prejudice, a court must look beyond mere delay. Henry, 108 F.4th at 52
(citing Davis v. Musler, 713 F.2d 907, 916 (2d Cir. 1983)). “Rather, it must be shown that delay
will result in the loss of evidence, create increased difficulties of discovery, or provide greater
opportunity for fraud and collusion.” Id. at 52-53.
Defendants argue that plaintiffs would not be prejudiced in any meaningful way if the
Court sets aside the default judgment, because the only prejudice plaintiffs would suffer from is
delay, and there is no danger of increased difficulty in discovery, such as fading witness
memories, in this case. The Court agrees. Plaintiffs emphasize that they have litigated their case
in good faith for more than a year, but do not explain how setting aside default judgment now
would result in the “loss of evidence” or “create increased difficulties of discovery.” Plaintiffs’
only evidence of prejudice is that defendants’ non-cooperation has provided “greater opportunity
for fraud and collusion,” because defendants have apparently filed three new “bogus” trademark
applications with the USPTO and formed a new company under the name “ZAFEM LLC,” even
after defendants knew about the default judgment against them.
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 5 of 11 PageID #:
<pageID>

6
To the extent plaintiffs are concerned that setting aside the default judgment will provide
defendants with the “ability to engage in further infringement,” plaintiffs have their remedies,
including opposing defendants’ efforts in the USPTO or seeking preliminary injunctive relief.
See generally Sunward Electronics, Inc. v. McDonald, 362 F.3d 17, 24-27 (2d Cir. 2004).
III. Meritorious Defense
“In order to make a sufficient showing of a meritorious defense in connection with a
motion to vacate a default judgment, the defendant need not establish his defense conclusively,
but he must present evidence of facts that, if proven at trial, would constitute a complete
defense.” State St. Bank & Tr. Co. v. Inversiones Errazuriz Limitada, 374 F.3d 158, 167 (2d Cir.
2004) (quoting McNulty, 137 F.3d at 740). “Judging the merit of a defense for the purposes of a
motion to vacate a default judgment pursuant to a more rigorous standard would be
inappropriate.” Id. at 167-68. Without establishing conclusively that defendants have a
meritorious defense, the Court finds that defendants have sufficiently presented evidence of facts
that, if proven at trial, would constitute a complete defense.
First, defendants assert the common law defense of prior use. “Neither application for
nor registration of a mark at the federal level wipes out the prior non-registered, common law
rights of others.” Jackpocket, Inc. v. Lottomatrix NY LLC, 645 F. Supp. 3d 185, 230 (S.D.N.Y.
2022) (quoting 5 McCarthy on Trademarks § 26:53), aff'd, No. 23-12-cv, 2024 WL 1152520 (2d
Cir. March 18, 2024). “Even if a mark has become incontestable, ‘the senior user retains a right
to use the mark in the geographic area wherein that user accrued common law rights superior to
the registrant prior to the date of registration.’” Id. (quoting Dial-A-Mattress Operating Corp. v.
Mattress Madness, Inc., 841 F. Supp. 1339, 1353 (E.D.N.Y. 1994)). “In order to maintain a prior
use defense, the defendant must prove ‘(1) present rights in the mark; (2) acquired prior to the
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 6 of 11 PageID #:
<pageID>

7
date of registration; (3) continual use of the mark since that date; and (4) use prior to the
registrant on the goods or services that are in issue.’” Id. at 230-31 (citing Pilates, Inc. v. Current
Concepts, Inc., 120 F. Supp. 2d 286, 311 (S.D.N.Y. 2000)).
Defendants assert that Mr. Ceide founded the band “Zafem” in 2016, began performing
and recording in 2017, released Zafem’s first single and video in 2019, and that there is no
evidence plaintiffs continuously used the mark “Zafem World Entertainment” in 2016 and 2017.
Defendants further argue that they have consistently performed and distributed music under the
name “Zafem,” and that this shows that they possess present and continuing rights in the mark.
Defendants’ second meritorious defense is that the band name “Zafem” will not likely
cause confusion with plaintiffs’ trademark. An essential element of a trademark infringement
claim is that the defendant’s use of its mark is likely to cause consumer confusion. Jackpocket,
Inc., 645 F. Supp. 3d at 235 (citing Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.
2003)). To determine whether a mark is likely to cause consumer confusion, courts in this
Circuit consider the eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287
F.2d 492, 495 (2d Cir. 1961): “(1) the strength of the plaintiff's mark, (2) the degree of similarity
between the two marks, (3) the proximity of the parties' areas of commerce, (4) the likelihood
that the plaintiff will bridge the gap separating their areas of activity, (5) actual consumer
confusion, (6) whether the defendant acted in bad faith or was otherwise reprehensible in
adopting the mark, (7) the quality of the defendant's product, and (8) the sophistication of the
relevant consumer group.” Id.
Applying these factors, defendants argue that plaintiffs’ “Zafem World Entertainment”
mark is weak, because defendants’ usage of “Zafem” has been continuous and prominent for
nearly a decade in contrast to plaintiffs’ comparatively minimal use; their usage of “Zafem” is
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 7 of 11 PageID #:
<pageID>

8
dissimilar to plaintiffs’ because the word “Zafem” is inseparable from their band’s distinct
identity, while plaintiffs’ use is in conjunction with the phrase “Zafem World Entertainment”;
there is no evidence of actual confusion among concertgoers, promoters, or streaming audiences,
and that the public consistently associates “Zafem” with defendants; their adoption and use of the
name “Zafem” was in good faith and before plaintiffs’ registration; the quality and authenticity
of their music reduces any risk that consumers would confuse their music for plaintiffs’; and
because the public has long-standing familiarity with their “Zafem” band, the likelihood of
confusion is remote and implausible.
Defendants’ third meritorious defense is that plaintiffs procured their trademark
registration in bad faith. The doctrine of unclean hands “is recognized as a valid defense in an
appropriate trademark infringement or unfair competition case.” Jackpocket, Inc., 645 F. Supp.
3d at 276 (quoting Estee Lauder, Inc. v. Fragrance Counter, Inc., 189 F.R.D. 269, 272 (S.D.N.Y.
1999)). “The application of unclean hands is appropriate ‘where the party applying for such
relief is guilty of conduct involving fraud, deceit, unconscionability, or bad faith related to the
matter at issue to the detriment of the other party.’” Id. (quoting William Penn Life Ins. Co. of
New York v. Viscuso, 569 F. Supp. 2d 355, 362 (S.D.N.Y. 2008)).
Defendants argue that their band had already achieved widespread public recognition and
commercial success well before plaintiffs’ application for registration. Defendants suggest that
plaintiffs’ decision to register the mark “Zafem World Entertainment,” despite this established
public recognition, is evidence of plaintiffs’ appropriation of defendants’ established goodwill
and reputation, and that plaintiffs may have made a material misrepresentation when they
registered their mark, because a registrant is required to affirm that to the best of their
knowledge, no other person has the right to use that mark in commerce.
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 8 of 11 PageID #:
<pageID>

9
Although the Court has some skepticism about defendants’ lack of confusion defense,
defendants have sufficiently alleged facts that, if proven at trial, would constitute a complete
defense to plaintiffs’ trademark infringement claim. Plaintiffs dispute the elements of
defendants’ meritorious defenses, but in a motion to set aside default judgment, defendants need
not establish their defenses conclusively. See State St. Bank & Tr. Co., 374 F.3d at 167.
IV. Conditions
It is well established that a court can impose conditions on a defendant in vacating a
default. See Powerserve Int'l, Inc. v. Lavi, 239 F.3d 508, 515 (2d Cir. 2001) (“In determining
whether to exercise its discretion to set aside a default . . . a district court has inherent power to
impose a reasonable condition on the vacatur in order to avoid undue prejudice to the opposing
party.”). Most commonly, courts will require a defendant to reimburse the plaintiff for the
attorneys’ fees that the plaintiff has incurred in seeking a default. See, e.g., Richardson v.
Nassau County, 184 F.R.D. 497, 503 (E.D.N.Y. 1999); cf. United States Fidelity and Guaranty
Co. v. Petroleo Brasileiro S.A., 220 F.R.D. 404, 407 (S.D.N.Y. 2004) (conditioning the denial of
a motion for a default judgment on payment of costs and attorneys' fees in bringing such
motion).
An award of attorneys' fees and costs upon vacating an entry of default does not require a
finding of willfulness on the part of the defaulting party. See RLS Assoc., LLC v. The United
Bank of Kuwait PLC, No. 01-cv-1290, 2002 WL 122927, at *8 (S.D.N.Y. Jan. 29, 2002).
Rather, the “power to impose a reasonable condition on the vacatur” allows the Court to balance
any “undue prejudice” to the movant against this Circuit's “preference for resolving disputes on
the merits.” Powerserve Int'l, 239 F.3d at 514, 515. In addition, to the extent there is reason to
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 9 of 11 PageID #:
<pageID>

10
be concerned about a defendant’s ability to pay a judgment, the Court may require the defendant
to post a judgment bond. Id.
Both of those concerns are present here. Defendant Ceide may be a touring musician, but
pop musicians in particular should certainly know the importance of “taking care of business.”
The papers here were served on him in multiple ways, including putting them in his hands. The
Court has given him the benefit of the doubt that his default was not willful, but it was certainly
negligent. There is no reason why plaintiffs should pay for defendants’ neglect. The Court
therefore directs defendants to reimburse plaintiffs for the reasonable attorneys’ fees and costs in
seeking entry of default, moving for default judgment, and opposing defendants’ motion to
vacate the default.
In addition, defendants’ submissions in support of their motion to vacate, and to stay
execution of the judgment pending a determination of the motion to vacate, raise a substantial
question whether any judgment that plaintiffs might later obtain will be worth more than the
value of the paper on which it is printed. In support of their motion to stay, they assert that
although they have “developed a large and loyal fan base, the Defendants do not derive
substantial income from these activities and are not readily able to post a bond in this case.”
Rather than convincing the Court to refrain from imposing a bond requirement, and considering
that bond premiums are generally only 1%-10% of the amount bonded, this statement raises the
possibility that a judgment may be uncollectible.
On the other hand, by seeking solely statutory damages, plaintiffs have not convinced the
Court that their business is at substantial risk of loss pending the litigation, or that the measure of
statutory damages awarded in defendants’ absence will be appropriate in the non-default context.
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 10 of 11 PageID #:
<pageID>

11
Under these circumstances, the Court directs defendants to post a bond in the amount of
$100,000 as a condition for vacating the default judgment. Defendants may seek to have that
amount reduced upon a full showing of their financial situation, and plaintiffs may seek to have
it increased upon a full showing of its risk of uncollectibility of a judgment, which the Court
recognizes may require discovery.
CONCLUSION
For the foregoing reasons, defendants’ motion to set aside the default judgment is
granted, subject to the conditions that defendants pay plaintiffs’ reasonable attorneys’ fees and
costs incurred from moving for default judgment and opposing the present motion to vacate, and
that defendants post a judgment bond in the amount of $100,000 within seven days. The parties
are directed to attempt to stipulate to the amount of attorneys’ fees and costs as described above.
Should the parties fail to stipulate, plaintiffs may move the Court to fix the amount within 14
days of this Order. Plaintiffs are cautioned that an overly aggressive approach in seeking
attorneys’ fees may lead to a material reduction of the amount requested.
Both vacatur and enforcement are stayed pending satisfaction of these conditions, and the
hearing on plaintiffs' motion for contempt is continued sine die.
SO ORDERED.
______________________________________
U.S.D.J.
Dated: Brooklyn, New York
November 14, 2025
Case 1:24-cv-06572-BMC Document 50 Filed 11/17/25 Page 11 of 11 PageID #:
<pageID>