V Secret Catalogue v. Zdrok

Citation: V Secret Catalogue, Inc. v. Zdrok, 2002 U.S. Dist. LEXIS 14283 (S.D. Ohio June 11, 2002) (plaintiff's request for fees and costs), 2002 U.S. Dist. LEXIS 14286 (S.D. Ohio July 1, 2002) (entering final judgment and awarding attorney's fees and statutory damages), reh'g denied, 215 F. Supp. 2d 510 (D.N.J. 2002) (plaintiff's motion to vacate judgment and granting defendant's motion for sanctions, costs, and attorney's fees), reh'g denied, 2003 U.S. Dist. LEXIS 16159 (S.D. Ohio Aug. 28, 2003) (provisionally denying defendant's motion to set aside judgment), 108 Fed. Appx. 692 (3d Cir. 2004)(unpublished) (vacating and remanding motion for declaratory relief and reconsideration of attorney's fees).

Factual Background
Plaintiff owns the federally registered trademark VICTORIA'S SECRET for women's lingerie, clothing, and accessories. Defendant Victoria Zdrok, a former Playboy Playmate, registered the domain name "victoriassecretdesires.com" for an adult-oriented website, which included auctions of her worn, used lingerie. Her website also featured a page titled "Victoria's Secret of the Month."

Trial Court Proceedings
Plaintiff sued defendant in Ohio for cybersquatting and various trademark claims. Following defendant's failure to respond, the court entered default judgment and awarded plaintiff statutory damages for cybersquatting in the amount of $100,000 and attorney's fees to be determined. Plaintiff moved to conditionally withdraw its right to damages on other claims pending the outcome of a suit filed by defendant in California to set aside the default judgment entered in Ohio. The California district court, however, dismissed defendant's claim based on a lack of jurisdiction to hear defendant's Rule 60(b) request. Plaintiff then pursued its attorney's fees in Ohio, and the court awarded plaintiff $32,727.05.

After the dismissal of the case in California, defendant filed a similar suit in her home state of New Jersey seeking vacatur of the Ohio Court's default judgment, which the court there dismissed because it was barred by claim preclusion. Defendant also asserted a claim for declaratory relief of non-infringement. In addition, the New Jersey court found that defendant's attorneys "demonstrated willful bad faith by instituting multiple proceedings to resolve a single cause of action" and ordered defendant's attorneys to pay plaintiff's attorney's fees and costs.

Finally, defendant moved the Ohio court to set aside the default judgment under FRCP 60(b). The court found, however, that defendant did not have any meritorious defense that would justify setting aside the default judgment. First, the Ohio court ruled that personal jurisdiction existed over defendant in part because of the interactive nature of defendant's website and provisionally denied defendant's motion, but it did order an evidentiary hearing to determine whether defendant was properly served. Second, the court rejected defendant's defense that all references to plaintiff's marks were removed from her website, stating that the "cessation of allegedly illegal conduct does not constitute a defense." Finally, the court rejected defendant's defense that, due to changes in dilution law after ‘‘Moseley’’, the dilution judgment should be set aside because "changes in decisional law do not serve as a basis for Rule 60(b) relief." However, the Ohio district court later vacated the default judgment of $100,000 because defendant had not been properly served.

Appellate Court Proceedings
Defendant appealed the New Jersey district court's decision. The Third Circuit initially noted that the Ohio district court's vacatur of the default judgment mooted defendant's Rule 60(b) motion in the New Jersey court. However, because the New Jersey district court never had an opportunity to address the merits of defendant's claim for declaratory relief, the court of appeals vacated and remanded for further consideration the claim for declaratory relief as well as reconsideration of the award of attorney's fees.

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.