Motamoa Holdings Limited v. VL Media LLC et al

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF WYOMING
MOTAMOA HOLDINGS LIMITED,
Plaintiff,
vs. 	Case No. 21-CV-198-NDF
VL MEDIA LLC, ILYA
SHEVCHENKO, and VITALII SOSKOV,
Defendants.
ORDER GRANTING IN PART MOTION FOR DEFAULT JUDGMENT
The Clerk entered default against Defendant VL Media LLC (“VL Media” or
“Magicbird”) on January 14, 2022 after the Defendant was served and failed to answer or
otherwise 	defend 	against 	the 	Complaint 	by 	Plaintiff 	Motamoa 	Holdings 	Limited
(“Motamoa” or “Metalbird”). 	ECF 11. 	The Plaintiff now moves for default judgment
against VL Media under Federal Rule of Civil Procedure 55(b)(2). 1 	ECF 34. 	For the
reasons below, the motion is GRANTED in part.
I. 	Background Facts
The Court takes the following facts from Plaintiff’s complaint, ECF 1.
a. 	Facts Regarding Plaintiff Motamoa
1 This motion does not seek default judgment against Vitalii Soskov or Ilya Shevchenko who are also defendants in
this case. For purposes of this Order, “Defendant” refers only to VL Media.
1:00 pm, 2/16/23
FILED
Margaret Botkins
Clerk of Court
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Plaintiff Motamoa is a New Zealand limited company with its principal place of
business in New Zealand. 	Since 2009, Plaintiff Motamoa, doing business as Metalbird
under the Metalbird trademark, (“METALBIRD Mark”), has sold lifelike two-dimensional
metal silhouette sculptures of birds that can be affixed to a post or tree by hammering-in
part of the sculpture itself. 	Motamoa has invested substantial time and effort in creating
and protecting these unique handcrafted designs. As a result, these proprietary designs are
recognizable and identify Metalbird as the source of these distinctive designs.
Since 2016, Metalbird has generated substantial revenue and product sales in the
United States, which support that the Metalbird name is distinctive in the marketplace.
Moreover, customers associated with the products indicate Metalbird as the source. The
extensive use and advertising of the METALBIRD Mark has resulted in public recognition
that Metalbird is the source of well-known and high-quality artwork and retail services.
Plaintiff 	maintains 	internet 	websites 	at 	domain 	names 	incorporating 	its
METALBIRD Mark. The domain name www.metalbird.com ("Metalbird Website") was
originally registered in 2004 and has been owned by Metalbird and its licensees and
predecessors since 2016. The Metalbird Website currently offers the following beautifully
crafted works of art and sculptures (among others): Hummingbird, Cardinal, Chickadees
& Chicks, Bird Feeder, Hummingbird Honeys, Great Horned Owl, Kissing Cardinals,
Woodpecker, Bald Eagle, Pair of Swallows, House Finch, Chickadee, Blue Jay, Nuthatch,
Wren, Road Runner, Peregrine Falcon, Crow, Pelican, Mockingbird, Belted Kingfisher,
Puffin, Fantail, Bat and Turkey (“Metalbird Works of Art”).
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Metalbird's social media accounts prominently feature the Metalbird brand. 	To
distinguish itself from its Metalbird locations outside of the United States, Metalbird uses
the designation Metalbird USA on its primary social media accounts.
On or around November 2019, Glass Elephant, Metalbird's digital ad agency, and
Vitalii Soskov helped create a video for Metalbird that prominently featured the Metalbird
name and was used to showcase and promote Metalbird and its products to the United
States marketplace ("Metalbird Hero Ad"). The Metalbird Hero Ad is wholly original and
owned exclusively by Metalbird.
Metalbird uses the METALBIRD Mark and designs in advertising, marketing, and
promotional materials on a nationwide basis through various media, including but not
limited to, the internet, print, radio, tradeshows, PR, transit media and influencer
marketing. 	The success of Metalbird's Works of Art is due, in part, to the extensive
promotion and advertising it has undertaken for the METALBIRD Mark and designs.
Metalbird annually spends in excess of several million United States dollars on advertising,
marketing and promotional efforts for the METALBIRD Mark and designs. 	The
METALBIRD Mark and designs are assets of incalculable value and identifiers of
Metalbird's goods and services, and goodwill.
The Metalbird Works of Art and the Metalbird Website, which is a compilation, are
wholly original. In 2021, Motamoa applied for, and was granted, copyright registrations
for the Metalbird Website and certain Metalbird Works of Art.
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b. 	Facts Regarding Defendant VL Media
Vitalii Soskov is a Russian citizen that previously resided in New Zealand and is
believed to reside in Turkey. Beginning in September 2019 until sometime in March 2021,
Soskov worked for Glass Elephant, a digital ad agency based in New Zealand. As part of
his job responsibilities, Soskov was the creative lead and managed all digital advertising
for Metalbird, including creating and designing ads, and their placement. Soskov left his
position at Glass Elephant in March 2021.
Ilya Shevchenko claims to own VL Media, which does business as Magicbird, and
resides in Auckland, New Zealand. 	Soskov and Shevchenko manage and direct VL
Media’s conduct at issue in this case.
On March 18, 2021, the entity VL Media LLC was organized with the State of
Wyoming and has an address in Sheridan, Wyoming. The State of Wyoming records do
not identify any of the LLC members.
On or around August 2021, Defendant launched the Magicbird e-commerce website
offering for sale bird silhouettes and works of art (“Magicbird Website”). Defendant sells
the bird silhouettes to customers in the United States and around the world and the
Magicbird Website allows customers to select their language and currency, such as United
States dollars.
Magicbird’s website currently offers multiple designs and works of art, including
but not limited to, Hummingbird, Pair of Robins, Pair of Swallows, Pair of Sparrows, Blue
Tit, Crested Tit, Blackbird, Nuthatch, European Robin, Eagle, and Woodpecker.
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On or around September or October 2021, Defendant launched a Facebook video
that copied several core elements of Plaintiff’s Metalbird Hero Ad. 	Metalbird did not
authorize or license to Magicbird use of the Metalbird Hero Ad.
On or around October 2021, Defendant launched a Facebook ad and video that
included a child holding Plaintiff’s package that prominently featured METALBIRD
Mark. As part of the advertisement, Magicbird added the comment “Opening a Magicbird
box is an experience for the whole family!” 	Defendant subsequently removed the
infringing ad from Facebook after discussions with Metalbird.
Defendant had actual knowledge of Metalbird's use and prior rights because Soskov
had 	direct 	responsibility 	for 	Metalbird's 	digital 	advertising 	creation 	and 	strategy.
Defendant has had actual notice of Metalbird's claims and rights since mid-October 2021
and continued with their infringing conduct since that date.
II. 	Analysis
A. 	Subject-Matter and Personal Jurisdiction
The Court must have both personal and subject matter jurisdiction to enter a valid
judgment. 	See Williams v. Life Savings and Loan, 802 F.2d 1200, 1202-03 (10th Cir.
1986). 	The Court has federal question subject matter jurisdiction over Plaintiff’s claims
for copyright infringement under 17 U.S.C § 101 et seq. and claims for trademark
infringement and unfair competition under the Lanham Act 15 U.S.C. § 1125. 	See
28 U.S.C. § 1331. The Court has supplemental jurisdiction over Plaintiff’s claim of unfair
competition under Wyoming common law. See 28 U.S.C. § 1367.
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Plaintiff Motamoa alleges that Defendant VL Media is a Wyoming limited liability
company with its principal place of business at 30 N Gould St. Ste R, Sheridan, Wyoming
82801. 	ECF 1, ¶4. 	For corporations, “the place of incorporation and principal place of
business are ‘paradig[m]. . . bases for general jurisdiction.’” Daimler AG v. Bauman,
571 U.S. 117, 137 (2014) (citation omitted). “Courts have held that Daimler applies with
equal force to limited liability companies.” Warming Trends, LLC v. Flame Designz, LLC,
No. 22-cv-00252-PAB-STV, 2023 U.S. Dist. LEXIS 7764, at *10 (D. Colo. Jan. 17, 2023)
(quoting Bliss v. Change Healthcare Operations LLC, 2021 U.S. Dist. LEXIS 33412, 2021
WL 706770, at *1 (W.D. Okla. Feb. 23, 2021) (collecting cases)). Chief Judge Skavdahl’s
thorough analysis in Avus Designs, Inc. v. Grezxx, LLC, explains that, even though LLCs
are citizens of their members’ states for purposes of diversity jurisdiction, they are citizens
of their incorporation states for purposes of general personal jurisdiction. 	Avus Designs,
Inc., v. Grezxx, LLC, No. 22-CV-0173-SWS, 2022 U.S. Dist. LEXIS 218066, at *19
(D. Wyo. Dec 2, 2022). Thus, the Court has general personal jurisdiction over VL Media
because it is a Wyoming LLC with a primary place of business in Wyoming. See Daimler,
571 U.S. at 137; Warming Trends, LLC, 2023 U.S. Dist. LEXIS 7764, at *10.
Personal jurisdiction also requires proper service of the Defendant. 	Okla. Radio
Assocs. v. Fed. Deposit Ins. Corp., 969 F.2d 940, 943 (10th Cir. 1992). 	Federal Rule of
Civil Procedure 4(h) provides that service on a corporation, partnership, or association is
adequate if effected “by delivering a copy of the summons and of the complaint to an
officer, a managing or general agent, or any other agent authorized by appointment or by
law to receive service of process.” Fed. R. Civ. P. 4(h)(1)(B). Here, the Complaint and
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summons were delivered to Registered Agents Inc. at 30 N. Gould St., Sheridan, WY on
11/2/21. ECF 5. According to the Wyoming Secretary of State, Registered Agents Inc. is
VL Media’s registered agent. The Court therefore finds service of process was appropriate.
B. 	Legal Standards for Default Judgment
According to Federal Rule of Civil Procedure 55(a), before obtaining a default
judgment, the party seeking relief must show by affidavit or otherwise prove that the party
against whom judgment is sought failed to plead or defend against the party’s complaint.
Cunningham v. Technologic United States, No. 19-CV-00231-F, 2020 U.S. Dist. LEXIS
257373, at *4 (D. Wyo. June 17, 2020). If the party meets these criteria, “the clerk must
enter the party’s default.” Id. The Clerk entered default against VL Media on January 14,
2022 on Plaintiff’s motion. ECF 10, 11.
Once default is entered in accordance with Rule 55, the party is free to seek a default
judgment. 	Fed. R. Civ. P. 55(b). 	The Clerk of the Court is responsible for entering a
default judgment. Id. The Clerk must enter a default judgment “if the Plaintiff’s claim is
for a sum certain or a sum that can be made certain by computation” in the amount verified
by the Plaintiff as long as “defendant who has been defaulted for not appearing . . . is
neither a minor nor an incompetent person.” Fed. R. Civ. P. 55(b)(1). If a party is unable
to prove the certainty of the sum of their claim pursuant to Rule 55(b)(1), the party must
file a motion with the court requesting a default judgment. 	Fed. R. Civ. P. 55(b)(2).
Furthermore, “the court may conduct hearings or make referrals…when, to enter or
effectuate judgment, it needs to: (A) conduct an accounting; (B) determine the amount of
damages; (C) establish the truth of any allegation by evidence; or (D) investigate any other
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matter.” 	Id. 	Nonetheless, “decisions to enter judgment by default are committed to the
district court’s sound discretion.” Dennis Garberg & Assocs. v. Pack-Tech Int'l Corp., 115
F.3d 767, 771 (10th Cir. 1997). “[A] court may enter a default judgment without a hearing
only if the amount claimed is a liquidated sum or one capable of mathematical calculation.”
Hunt v. Inter-Globe Energy, Inc., 770 F.2d 145, 148 (10th Cir. 1985).
In this case, Plaintiff seeks default judgment on its copyright claim and trademark
claim. Plaintiff seeks injunction under the copyright and trademark claims, but only seeks
damages on the copyright claims. 	ECF 	34-1, pp. 9, 11-14. 	Plaintiff seeks statutory
damages under copyright law which are an amount capable of mathematical calculation.
ECF 34 ¶ 8.C. 	Plaintiff seeks default judgment for unfair competition under Wyoming
common law, ECF 34 ¶ 8.A., but does not support that portion of the motion with argument
and does not request a remedy under that claim.
“Upon the entry of default against a defendant, the well-pleaded allegations in the
complaint are deemed admitted.” Richfield Hosp., Inc. v. Shubh Hotels Detroit, LLC, No.
10-CV-00526-PAB-MJW, 2011 WL 3799031 (D. Colo. Aug. 26, 2011); see Olcott v.
Delaware Flood Co., 327 F.3d 1115, 1125 (10th Cir. 2003). “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.” Bixler v. Foster, 596 F.3d 751,
762 (10th Cir. 2010) (citing 10A Charles A. Wright, Arthur R. Miller & Mary K. Kane,
Federal Practice and Procedure § 2688, at 63 (3d ed. 1998); Nishimatsu Constr. Co., 515
F.2d 1200, 1206-08 (5th Cir. 1975) (vacating district court's entry of default judgment
because the pleadings were insufficient to support the judgment)). 	Plaintiff’s factual
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allegations in this case are deemed admitted by Defendant based on the entry of default
and must be accepted as true.
C. 	Plaintiff’s Count I for Copyright Infringement under 17 U.S.C. § 101 et seq.
1. 	Copyright Liability
Count I alleges copyright infringement under 17 U.S.C. § 101 et seq. ECF 1, ¶ 84.
To establish copyright infringement, “two elements must be proven: (1) ownership of a
valid copyright, and (2) copying of constituent elements of the work that are original.”
Blehm v. Jacobs, 702 F.3d 1193, 1199 (10th Cir. 2012).
Often, Plaintiffs satisfy the ownership element by producing a certificate of
registration from the copyright office. Craft Smith, Ltd. Liab. Co. v. EC Design, Ltd. Liab.
Co., 969 F.3d 1092, 1099 (10th Cir. 2020) (citing Jacobsen v. Deseret Book Co., 287 F.3d
936, 942 (10th Cir. 2002) (finding the first element satisfied by a "federally registered
copyright" in the accused work)). 	See also 17 U.S.C. § 410(c) (“[i]n any judicial
proceedings the certificate of a registration . . . shall constitute prima facie evidence of the
validity of the copyright and of the facts stated in the certificate”).
Plaintiff provided the following certificates of registration that satisfy the copyright
ownership element:
VA 2-256-057 	Kissing Cardinals: sculpture
VA 2-256-058 	Valentine’s 	Day 	Kissing 	Cardinals: 	2-D 	artwork,
compilation of sculpture and photograph
VA 2-259-964 	Hummingbird: sculpture
VA 2-272-087 	Woodpecker: sculpture
VA 2-272-089 	Blue Tit: sculpture
VA 2-272-090 	Pair of Swallows: sculpture
VAu 1-434-775 	Metalbird Website: Photographs, 2-D artwork, new text,
and compilation of text, photographs and graphics.
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ECF 1-6. 	Plaintiff does not provide proof of copyright registration for the
“Metalbird Hero Ad” or otherwise argue that the first copyright element is satisfied
regarding the ad. ECF 1-6; ECF 34.
The second element, copying of constituent elements of the work that are original,
is itself comprised of two components. 	First, the plaintiff must demonstrate factual
copying. 	Craft Smith, Ltd. Liab. Co., 969 F.3d at 1101 (10th Cir. 2020) (citing Savant
Homes, Inc. v. Collins, 809 F.3d 1133, 1138 (10th Cir. 2016)). 	The alleged facts easily
establish the first component, factual copying, as Soskov, Plaintiff’s former web designer
is one of the parties alleged to have started VL Media to sell sculptures that resemble
Plaintiff’s sculptures.
However, “the mere fact that a work is copyrighted does not mean that every
element of the work may be protected.” Blehm, 702 F.3d at 1196. The second component
of the copying element requires the showing “substantial similarity between the allegedly
infringing work and the elements of the copyrighted work that are legally protected.”
Blehm, 702 F.3d at 1199. 	The Court first distills out the protected elements from the
unprotected elements and then considers whether any of the protected elements are
substantially similar to the accused work. 	See Savant Homes, 809 F.3d at 1138 (citing
Blehm, 702 F.3d at 1200). “[I]n looking at . . . two works of art to determine whether they
are substantially similar, focus must be on the similarity of the expression of an idea or
fact, not on the similarity of the facts, ideas or concepts themselves. 	Blehm, 702 F.3d at
1200 (10th Cir. 2012) (quoting Rogers v. Koons, 960 F.2d 301, 308 (2d Cir. 1992));
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Jacobsen, 287 F.3d at 942. 	The ultimate question is whether an “ordinary reasonable
person 	would 	conclude 	that 	the 	defendant 	unlawfully 	appropriated 	the 	plaintiff's
protectable expression by taking material of substance and value.” 	Blehm, 702 F.3d at
1202 (10th Cir. 2012) (cleaned up) (citing Country Kids, 77 F.3d at 1288).
“In no case does copyright protection. . . extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery, regardless of the form in
which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C.
§ 102(b). Applying this principle to the sculptures at issue, the concept or idea of a two-
dimensional metal bird silhouettes is not protectable. Moreover, the functional aspect of
the sculpture, that the sculpture may be hammered into a tree or post for display, is similarly
not protectable. See Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
(explaining that pictorial, graphic or sculptural work is protectable to the extent it can be
“imagined separately” from the useful aspect of the article).
Turning next to the subjects of the sculptures, courts in this circuit have followed
the holding Ninth Circuit’s holding in Satava v. Lowry that a copyright holder "may not
prevent others from copying aspects of his [realistic wildlife] sculptures resulting from
either [the animal's]-physiology or from [the animal's] depiction in the [particular artistic]
medium." 323 F.3d 805, 810 (9th Cir. 2003); see Sportsmans Warehouse, Inc. v. Fair, 576
F. Supp. 2d 1175, 1180-81 (D. Colo. 2008) (“[a]n accurate portrayal of something that
exists in the world . . . cannot be copyrighted but original expressions of those facts and
ideas receive ‘thin’ copyright protection, perhaps only from exact duplication by others”)
(holding that realistic sculptures of elk enjoyed thin copyright protection from exact
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duplication, but not a “monopoly on portraying subjects that occur in nature or aspects of
animals that naturally result from their physiology, behavior, or environment”); see also
Tomelleri v. Zazzle, Inc., No. 13-CV-02576-EFM-TJJ, 2015 U.S. Dist. LEXIS 165007, at
*32 (D. Kan. Dec. 9, 2015) (silhouettes and line drawings did not violate “thin” protections
for meticulously-realistic illustrations of fish because overlaying the silhouettes and line
drawing on the Plaintiff’s realistic illustrations demonstrated that any copying by the
defendant was not exact).
Plaintiff’s sculptures are lifelike two-dimensional metal silhouettes of realistic birds
posing on branches that can be affixed to a post or tree by hammering-in part of the
sculpture to a tree or post. 	The sculptures utilize cut-outs to outline the bird’s general
features. The Court finds that Plaintiff’s sculptures are akin to the Sportsman’s Warehouse
elk sculptures and Tomelleri fish illustrations. The selection of birds, their poses, and their
features are aspects of realistic portrayals of animals in natural settings that are entitled
only to thin copyright protection from exact copy. Similarly, the cut-outs used to highlight
each bird’s features are also entitled to only thin protection because, although there is
perhaps greater abstraction and artistry required in designing the cutouts, they ultimately
serve to outline the birds’ realistic features.
The Court finds that Plaintiff cannot establish copyright infringement for Kissing
Cardinals, Valentine’s Day Kissing Cardinals¸ Woodpecker, or Blue Tit. These sculptures,
like the majority of Defendant’s sculptures, are not exact copies of Plaintiff’s copyrighted
works and thus do not violate the thin copyright protection against exact copy that is
afforded realistic sculptures of natural subjects. 	Even where Defendant has chosen the
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same species as Plaintiff’s copyrighted works, Defendant generally uses obviously
different poses and different artistic cut-outs to highlight the birds’ features.
However, 	the 	Court 	finds 	that 	Plaintiff 	can 	establish 	infringement 	for 	two
copyrighted bird sculptures. Plaintiff’s complaint includes pictures showing that the
hummingbird used by Defendant as part of its Magicbird logo is substantially similar to
Plaintiff’s copyrighted Hummingbird sculpture registered at VA 2-259-964. The pose and
silhouette appear identical, as do the detailed cutouts under the neck, the belly, and the tail.
The cutouts of the wings show only a small difference in shape and are perhaps the only
portion not exactly copied from Plaintiff’s Hummingbird:
ECF 1, p 31. The overlay of Plaintiff’s hummingbird over Defendant’s logo demonstrates
that the images are near exact duplicates except upon the closest inspection. 	And since
copyright protections extend to the creation of derivative art, it makes no difference that
Plaintiff’s image is a two-dimensional sculpture while Defendant’s is a two-dimensional
logo. See Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1198-99 (10th Cir.
2005); 17 U.S.C. §106. 	Even considering the thin copyright protection available for
realistic sculptures, an ordinary reasonable person could conclude that the Defendant
Meialbird Hummi•&l>lrd 	Magicblrd
Ru••iD&binl
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unlawfully appropriated the plaintiff's protectable expression in Hummingbird. See Blehm,
702 F.3d at 1202 (10th Cir. 2012).
Plaintiff also includes examples of its copyrighted work Pair of Swallows and the
purported copy by Defendant. 	Accounting for the slightly different perspective of the
photographs, the taller bird in each sculpture is nearly identical, except that the vertical
median line demarking the swallow’s wing extends higher on Plaintiff’s sculpture and there
is a small additional cutout in the tail of Defendant’s sculpture. 	The pose and silhouette
appear identical as do the cutouts on the neck, wingtips, and tail. Defendant’s version adds
an additional cutout in the tail.
ECF 1, p. 23. The appearance of the photos in Plaintiff’s brief makes it look like Plaintiff’s
sculpture is substantially shorter than Defendant’s, but this reasonably appears to be an
illusion of perspective or a result of an error maintaining proportions when drafting the
complaint. Another photo from Plaintiff’s website shows the Plaintiff’s Pair of Swallows
Mttalblrd's Origlllal Works & Distinctive
Des 	,
Pair of Swallows
Maglcbird's Infringing Works &
lnfrin in Ima ••
Pair of Swal lows
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with perspective and proportions that highlight the similarity of Defendant’s sculpture,
although this view is from the opposite side:
ECF 1-1, p. 3. As with Hummingbird, an ordinary reasonable person could conclude that
Defendant copied the protectable expressive elements of Plaintiff’s sculpture.
Plaintiff also seeks default judgment on infringement of the Metalbird Website. The
registered copyright includes photographs, two-dimensional artwork, new text, and
compilation of text, photographs, and graphics. ECF 1-6. The Plaintiff’s and Defendant’s
websites share generally similar layouts, color schemes, and overall structure, but in large
part the Defendant’s website shows meaningful variation from Plaintiff’s website. 	For
instance, the photos and product descriptions are all different. However, the Court finds
that some of the text and graphics on Defendant’s website support a finding of copyright
infringement. Plaintiff alleges that the Metalbird Website contains the following phrase:
With the simple tap of a hammer, this beautifully crafted, iconic, life-like bird
silhouette will transform your backyard, garden or environment into a work of art
and put smiles on faces for years to come.
ECF 1, ¶ 27.
The complaint then alleges that Defendant’s website includes the following phrase:
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With the simple tap of a hammer Magicbird has the ability to instantly transform
your backyard, garden or environment into a small work of art, a beautiful focal
point to enjoy for many years to come, and an interesting topic for discussion at
your next get together.
ECF 1. ¶ 56. 	Additionally, Plaintiff’s website includes the following installation
instruction text and graphics:
ECF 1-1, p. 4. While Defendant’s website and packaging include:
ERSY TO IISTRll
lhe,.,r,ct.-toryow 	•pnt. ....'!lffor 	..tlcr-•Oht'llngie,calD11 Yeit-.t:ti.tl'lllt; 	9'llflly
gr.b. nannllll'_, tip 	iwOQd
m, 	--
HOW TO INST Al l
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ECF 1-8, pg. 33. Although there are differences, these excerpts are at least as similar as
the competing passages in Jacobsen, 287 F.3d at 945 n.7 (10th Cir. 2002). In that case the
Tenth Circuit found it plausible that a historical account infringed on the Plaintiff’s
autobiography when both described the same factual events using a few of the same words
and phrases. Id.
For the reasons above, the Court finds that Plaintiff’s complaint establishes that
Defendant infringed on Plaintiff’s copyright of Pair of Swallows, Hummingbird, and the
Metalbird Website.
2. 	Copyright Damages
Plaintiff seeks the maximum statutory damages for willful copyright infringement.
ECF 34-1, p. 11. 	The Copyright Act provides a range of statutory damages for each
infringed work “in a sum of not less than $750 or more than $30,000 as the court considers
just.” 17 U.S.C. § 504(c)(1); see DP Creations, Ltd. Liab. Co. v. Lyn, No. 2:22-cv-00200-
BSJ, 2022 U.S. Dist. LEXIS 229314, at *5 (D. Utah Dec. 20, 2022). See Walt Disney Co.
v. Powell, 897 F.2d 565, 569, 283 U.S. App. D.C. 111 (D.C. Cir. 1990) (“[a] single
infringer of a single work is liable for a single amount . . . no matter how many acts of
infringement are involved in the action and regardless of whether the acts were separate,
isolated or occurred in a related series.” (citation omitted)). If the infringement is willful,
“the court in its discretion may increase the award of statutory damages to a sum of not
more than $150,000.” 17 U.S.C. § 504(c)(2).
The 	Court 	first 	evaluates 	whether 	Defendant’s 	infringement 	was 	willful.
“Willfully,” as used in § 504(c)(2), means “with knowledge that the defendant’s conduct
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constitutes copyright infringement.” 	Viper Nürburgring Record LLC v. Robbins Motor
Co. LLC, No. 5:18-cv-04025-HLT, 2019 U.S. Dist. LEXIS 152931, at *19 (D. Kan. Sep.
9, 2019) (citing 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
14.04[B][3][a]). 	Most of Defendant’s sculptures show sufficient novelty to avoid
copyright liability, and the vast majority of Defendant’s website shows some amount of
creative variation from Plaintiff’s copyrighted website. 	Even the copying of Pair of
Swallows shows that only one of the two birds was copied and that there was some minor
modification to the copied bird. Similarly, the website used varied phrases and graphics,
even where text and graphics were sufficiently similar to establish default judgment.
Considering 	Defendant’s 	efforts 	to 	introduce 	novelty, 	Plaintiff 	has 	not 	established
Defendant knew the conduct constituted copyright infringement, and the Court does not
find that infringement of Pair of Swallows and the Metalbird Website was willful.
But Hummingbird is different. 	Here Defendant not only copied Plaintiff’s’
Hummingbird with almost no variation, Defendant then used the copy as the defining
graphic feature of its own logo. 	That logo was visible on every page of Defendant’s
website and, as a result, Plaintiff’s copyrighted work became a small part of every sale that
Defendant made. 	ECF 1-8. 	The variation on Hummingbird was so imperceptible, and
Defendant’s use of Hummingbird was so pervasive and flagrant, that the Court finds that
Defendant’s copying of Hummingbird was willful.
Courts consider several factors in determining the amount of statutory damages,
such as: “(i) the expenses saved and the profits reaped; (ii) the revenues lost by the plaintiff;
(iii) the value of the copyright; (iv) the deterrent effect on others besides the defendant; (v)
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whether the defendant's conduct was innocent or willful; (vi) whether a defendant has
cooperated in providing particular records from which to assess the value of the infringing
material produced; and (vii) the potential for discouraging the defendant.” Fitzgerald Pub.
Co., Inc. v. Baylor Pub. Co., Inc., 807 F.2d 1110, 1117 (2d Cir. 1986).
The Court agrees with the Plaintiff that it is impossible to ascertain evidence of
Defendant VL Media’s actual profits because Defendant has not participated in the
litigation. 	For the same reason, it is impossible to determine the effects on Plaintiff’s
business. But although Defendant has provided no records to establish damages, Plaintiff
has left the Court similarly in the dark, only stating that “Metalbird annually spends in
excess of several million U.S. dollars on advertising, marketing and promotional efforts
for the METALBIRD Mark and designs.” Plaintiff has provided little financial context to
aid the Court in understanding the magnitude of the harm.
In large part, Defendant appears to have borne the cost of creating different
sculptures and a different website. Except for one bird in Pair of Swallows there was no
infringement by the creation, production, and photography of Defendant’s sculptures,
which were authorized to legitimately compete with Plaintiff. The Court concludes that,
to the extent that Plaintiff suffered lost sales, a significant portion of the lost sales would
have been due to legitimate competition from Defendant’s competing sculptures and not
from the infringing conduct.
The Court also keeps in mind that copyright law only protects infringements in the
United States, and Defendant’s “magicbird.eu” website appears tailored to European
audiences. IMAPizza, LLC v. At Pizza, Ltd., 448 U.S. App. D.C. 231, 236, 965 F.3d 871,
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876 (2020) (citing Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1368 (Fed. Cir.
2008)). For example, the Magicbird website has the suffix “.eu” and the United States is
not among the forty European countries individually listed on the site for shipping. 	The
Court concludes that the majority of the harm has taken place outside of the Unites States
and is not compensable under United States copyright law.
On 	the 	other 	hand, 	Defendant’s 	conduct 	was 	brazen. 	Exact 	copying 	of
Hummingbird by Defendant, most likely by Plaintiff’s former advertising designer Soskov,
shows complete and willful disregard for the Plaintiff’s rights. As a result of the copying,
Plaintiff’s Hummingbird was used as Defendant’s logo, appeared in every aspect of
Defendant’s marketing, and was intended to be viewed as part of Defendant’s commercial
identity. Such copying should be emphatically deterred.
The Court finds that the appropriate damages in this case are based upon the
difficulty of proving actual damages, the scope of VL Media’s willful infringement,
contempt for this Court and these proceedings, Plaintiff’s decision to forego their attorneys’
fees and costs, the harm caused to Plaintiff and the public at large by VL Media’s conduct
and the need to deter VL Media from engaging in such conduct in the future. The Court
finds 	that 	$10,000 	each 	for 	the 	Website 	infringement 	and 	the 	Pair 	of 	Swallows
infringement together with $150,000 for the hummingbird infringement is just and
appropriate in this case, for a total of $170,000 in damages.
3. 	Copyright Injunction
The Copyright Act provides that “[a]ny court having jurisdiction of a civil action
arising under this title may . . . grant temporary and final injunctions on such terms as it
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may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C.
§ 502(a). However, “an injunction [does not] automatically follow[] a determination that
a copyright has been infringed.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
“An injunction should issue only where the intervention of a court of equity is essential in
order effectually to protect property rights against injuries otherwise irremediable.”
Weinberger v. Romero-Barcelo, 456 U.S. 305, 312 (1982).
For an injunction, the plaintiff must establish (1) actual success on the merits; (2)
irreparable harm unless the injunction is issued; (3) the threatened injury outweighs the
harm that the injunction may cause the opposing party; and (4) the injunction, if issued,
will not adversely affect the public interest. 	Sw. Stainless, LP v. Sappington, 582 F.3d
1176, 1191 (10th Cir. 2009) (citation omitted). “A copyright holder that establishes past
infringement and a substantial likelihood of infringement in the future is normally entitled
to a permanent injunction against the infringer pursuant to § 502(a).” DP Creations, Ltd.
Liab. Co. v. Lyn, 2022 U.S. Dist. LEXIS 229314, at *9 (citing Harolds Stores, Inc. v.
Dillard Dep't Stores, Inc., 82 F.3d 1533, 1555 (10th Cir. 1996)).
Although the Plaintiff has succeeded on the merits, Plaintiff has not shown likely
harm in the future or that irreparable harm is likely without an injunction. 	At the status
conference the Plaintiff indicated that the offending Magicbird website was not currently
working and the Court takes judicial notice that the Magicbird.eu website is presently not
working. 2 There is little indication that Defendant is still infringing or will infringe in the
2 Under Federal Rule of Evidence 201(b), “The court may judicially notice a fact that is not subject to reasonable
dispute because it: (1) is generally known within the trial court's territorial jurisdiction; or (2) can be accurately and
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future. 	The Court finds that, under the copyright claim, the Plaintiff is not entitled to a
permanent injunction.
D. 	Plaintiff’s Count II for Federal Trademark Infringement and Unfair
Competition under the Lanham Act, 15 U.S.C. 1125(a)
1. 	Trademark Liability
Count II alleges trademark infringement and unfair competition under § 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a). To make out a claim under § 43(a) for an unregistered
mark, the plaintiff must prove: (1) the identifying mark is inherently distinctive or has
acquired distinctiveness through secondary meaning, (2) the mark is nonfunctional, and (3)
the competitor’s alleged violation of the plaintiff's rights in its mark is likely to cause
consumer confusion. Forney Indus. v. Daco of Mo., Inc., 835 F.3d 1238, 1244 (10th Cir.
2016) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). “Secondary
meaning exists only if most consumers have come to think of the word as not descriptive
at all but as the name of the product [or service].” Donchez v. Coors Brewing Co., 392 F.3d
1211, 1218 (10th Cir. 2004). 	A plaintiff may establish secondary meaning by direct
evidence, which includes either customer surveys or testimony, or by circumstantial
evidence regarding: (1) the length and manner of its use, (2) the nature and extent of
advertising and promotion of the mark and (3) the efforts made in the direction of
promoting a conscious connection, in the public's mind, between the name or mark and a
particular product or venture.
readily determined from sources whose accuracy cannot reasonably be questioned.” See O'Toole v. Northrop
Grumman Corp., 499 F.3d 1218, 1225 (10th Cir. 2007).
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In assessing the third element, whether the alleged violation is likely to cause
confusion, the court considers the following non-exhaustive factors: (1) the degree of
similarity between the marks; (2) the intent of the alleged infringer in adopting its mark;
(3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5)
the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of
the marks. 	Affliction Holdings, LLC v. Utah Vap or Smoke, LLC, 935 F.3d 1112, 1115
(10th Cir. 2019) (citing Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir.
2002)). “These factors are interrelated and no one factor is dispositive.” Id. But the degree
of similarity is the most important factor. Id. (citing Ornady Mfg., Inc. v. Doubletap, Inc.,
746 F.3d 995, 1001 (10th Cir. 2014)). “A lower degree of similarity is required when the
marks are placed on closely related goods.” See Nautilus Grp., Inc., 372 F.3d at 1345.”
Plaintiff’s pleading adequately shows that Plaintiff’s extensive use and promotion
of the METALBIRD trademark is protectable and that Defendant made an advertisement
that used Plaintiff’s METALBIRD trademark. 	Defendant’s advertisement included a
picture of a child holding Plaintiff’s package that conspicuously featured Plaintiff’s
METALBIRD Mark:
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ECF. 1, p. 29. The Court finds that such use of Plaintiff’s mark to sell the same kind of
sculpture is likely to cause confusion and therefore establishes infringement under the
Lanham act. 3
3 Plaintiff does not argue, and the Court therefore does not find, that VL Media’s use of the name “Magicbird” is a
trademark infringement of Plaintiff’s METALBIRD Mark.
magicbird.eu
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2. 	Trademark Injunction
For an injunction, the plaintiff must establish (1) actual success on the merits; (2)
irreparable harm unless the injunction is issued; (3) the threatened injury outweighs the
harm that the injunction may cause the opposing party; and (4) the injunction, if issued,
will not adversely affect the public interest. Sw. Stainless, LP v. 582 F.3d at 1191.
The Tenth Circuit has held that "[c]ourts may presume irreparable harm only when
a party is seeking an injunction under a statute that mandates injunctive relief as a remedy
for a violation of the statute." Plasmacam, Inc. v. Worden, No. 18-cv-02075-PAB-KMT,
2020 U.S. Dist. LEXIS 37790, at *13 (D. Colo. Mar. 4, 2020) (quoting First W. Capital
Mgmt. Co. v. Malamed, 874 F.3d 1136, 1140 (10th Cir. 2017)). 	In 2020, “Congress
amended the Lanham Act to expressly allow a presumption of irreparable injury” upon
finding of a violation or upon a finding of likelihood of success on the merits. 	See Trial
Laws. Coll. v. Gerry Spence Trial Laws. Coll., 23 F.4th 1262, 1270 (10th Cir. 2022) (citing
Trademark Modernization Act of 2020, Pub. L. 116-260, § 226(a), 134 Stat. 2200, 2208
(codified at 15 U.S.C. § 1116(a) (2020))). Thus, for the claim of Trademark infringement,
Plaintiff is entitled to a presumption of irreparable injury.
The first two injunction elements are met by the default judgment and the statutory
presumption of irreparable harm. As to the third element, there is no hardship to defendant
because a permanent injunction “will merely prevent Defendant[] from engaging in further
unlawful activity.” DP Creations, LLC v. Reborn Baby Mart, No. 2:21-cv-00574-JNP,
2022 U.S. Dist. LEXIS 139585, at *24 (D. Utah Aug. 3, 2022). 	Further, prohibiting
Defendant from violating trademark law will not adversely affect the public interest.
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Accordingly, the Court finds that a permanent injunction is appropriate, and pursuant to
Federal Rule of Civil Procedure 65(d)(2)(A) the Court will extend the injunction to the
Defendant, the Defendant’s officers, agents, servants, employees, attorneys and others “in
active concert or participation with” the Defendant. Fed. R. Civ. P. 65(d)(2)(A).
E. 	Plaintiff’s Count III for Unfair Competition under Wyoming Common Law
Plaintiff seeks default judgment for unfair competition under Wyoming common
law but does not support that portion of the motion with argument and does not request a
Wyoming common law remedy. 	ECF 34 ¶ 8.A. 	The Court denies this portion of the
motion.
III. 	Conclusion
For the reasons above, Plaintiff’s Motion for Default Judgment, ECF 34, is
GRANTED in part.
IT IS HEREBY ORDERED:
1. 	Plaintiff’s motion for default judgment on Count I for copyright infringement
under 17 U.S.C. § 101 et seq. against Defendant VL Media is GRANTED in part. Plaintiff
is awarded $170,000 on Count I. 	Plaintiff’s claim for a permanent injunction under the
Copyright Act is denied.
2. 	Plaintiff’s motion for default judgment on Count II for federal trademark
infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) against
Defendant VL Media is GRANTED. Plaintiff is entitled to injunctive relief on Count II as
ordered below.
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3. Plaintiff’s motion for default judgment on Count III for unfair competition under
Wyoming common law against Defendant VL Media is unsupported by argument and is
DENIED.
IT IS FURTHER ORDERED:
1. 	That VL Media LLC and its officers, directors, agents, servants, employees,
affiliates, successors, shareholders, assigns and attorneys, as well as all those in active
concert or participation with them, (collectively, “VL Media”) be preliminarily and
permanently enjoined and restrained from:
A. Using the METALBIRD Mark or any reproduction, counterfeit, copy, or
colorable imitation thereof in any manner in connection with the sale, offering for
sale, distribution, or advertising of any goods or services;
B. 	Using 	any 	name, 	mark, 	or 	domain 	name 	that 	wholly 	incorporates 	the
METALBIRD Mark or is confusingly similar to, including but not limited to any
reproduction, counterfeit, copy or a colorable imitation of, the METALBIRD Mark;
C. Registering, transferring, selling, owning or exercising control over any domain
name that incorporates, in whole or in part, the METALBIRD Mark or anything
confusingly similar thereto;
D. Doing any other act or thing calculated or likely to induce or cause confusion or
the mistaken belief that VL Media is in any way affiliated, connected, or associated
with Plaintiff or its goods and services;
E. Licensing or authorizing others to use the METALBIRD Mark or any confusingly
similar mark;
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F. Injuring Metalbird’s business reputation and the goodwill associated with the
METALBIRD Mark,
G. Passing off VL Media’s goods or services as those of Metalbird.
2. That VL Media be required to deliver up and destroy all products, labels, signs,
packages, wrappers, advertisements, promotions, and all other matter in the custody or
under the control of VL Media that bear the METALBIRD Mark or any other mark or trade
dress that is likely to be confused with the METALBIRD Mark.
SO ORDERED this ___ day of February, 2023.
_______________________________________
NANCY D. FREUDENTHAL
UNITED STATES SENIOR DISTRICT JUDGE
16th
______________________________________________
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