Case 4:19-cv-01299-JPW Document 134 Filed 03/31/22 Page 1 of 4

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
THE PENNSYLVANIA STATE : Civil No. 4:19-CV-01299
UNIVERSITY, :
:
Plaintiff, :
:
v. :
:
PAUL L. PARSHALL, d/b/a SPORTS :
BEER BREWING COMPANY, :
:
Defendant. : Judge Jennifer P. Wilson

ORDER

Before the court is the report and recommendation of United States

Magistrate Judge Karoline Mehalchick recommending that Plaintiff’s motion for

summary judgment be granted and Defendant’s motion for summary judgement be

denied. (Doc. 133.) Specifically, Judge Mehalchick recommends that summary

judgment be granted in Plaintiff’s favor on all counts of the second amended

complaint, the court enter a permanent injunction, order the seizure of counterfeit

goods, and award attorneys’ fees and costs. (Id.) She further recommends that

Plaintiff be permitted to file a supplementary motion for summary judgment solely

on the amount of statutory damages because Plaintiff did not submit sufficient

evidence to determine an amount of statutory damages. (Id.) No party has filed

objections to the reports and recommendation, resulting in the forfeiture of de novo

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review by this court. Nara v. Frank, 488 F.3d 187, 194 (3d Cir. 2007) (citing

Henderson v. Carlson, 812 F.2d 874, 878–79 (3d Cir. 1987)).

Following an independent review of the report and record, and affording

“reasoned consideration” to the uncontested portions of the report, EEOC v. City of

Long Branch, 866 F.3d 93, 100 (3d Cir. 2017) (quoting Henderson, 812 F.2d at

879), to “satisfy [the court] that there is no clear error on the face of the record,”

Fed. R. Civ. P. 72(b), advisory committee notes, the court finds that Judge

Mehalchick’s analysis is well-reasoned and fully supported by the record and

applicable law with exception to the recommendation that Plaintiff be permitted to

file a supplemental motion for summary judgment regarding the request for

statutory damages. In that regard, the court will decline to adopt that

recommendation because Plaintiff, the counseled party in this case, had ample time

and expertise to provide the court with the necessary evidence to make a specific

finding regarding statutory damages. The court finds it would be inequitable to

give Plaintiff another chance to do so.

Accordingly, IT IS ORDERED THAT:

1) The court ADOPTS the report and recommendation, Doc. 133, with
exception to the recommendation that Plaintiff be permitted to file a
supplemental motion for summary judgment to support an amount of
statutory damages.

2) Defendant’s motion for summary judgment, Doc. 85, is DENIED.

3) Plaintiff’s motion for summary judgment, Doc. 105, is GRANTED.

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4) Judgment is entered in Plaintiff’s favor on all counts of the second

amended complaint, see Doc. 101.

5) Defendant is permanently ENJOINED from any use of or trademark

application or registration of any portion, form, or derivative of any of
Penn State’s marks, including but not limited to PENN STATE,
NITTANY LIONS, and HAPPY VALLEY, in any business or
trademark manner whatsoever as well as within any domain name.

6) The Pennsylvania Department of State shall CANCEL Defendant’s

trademark registrations (Registration Nos. 6450052 and 6445173) for
PENN STATE NITTANY BEER and PENN STATE NITTANY
BREWING CO., as well as any other marks of his which include any
portion, form, or derivative of Penn State’s marks, including but not
limited to PENN STATE, NITTANY LIONS, and HAPPY VALLEY.

7) The Illinois Secretary of State shall CANCEL Defendant’s trademark

registration (Registration No. 113080) for PENN STATE NITTANY
LION CIGARS as well as any other marks of his which include any
portion, form, or derivative of Penn State’s marks, including but not
limited to PENN STATE, NITTANY LIONS, and HAPPY VALLEY.

8) Defendant shall TRANSFER to Plaintiff any and all domain names

including any portion, form, or derivative of Penn State’s marks,
including but not limited to PENN STATE, NITTANY LIONS, and
HAPPY VALLEY.

9) Defendant shall TRANSFER to Plaintiff the domain,

sportsbeerbrewing.com, so that Plaintiff can cease operation of that
website.

10) Defendant shall not engage in any further acts or conduct that would
likely cause consumers to erroneously believe that Defendant’s goods
or services or offers of licenses are sponsored by, authorized by,
license by, or in any other way associated with Plaintiff.

11) The court will not award statutory damages because there was
insufficient evidence presented to award any particular amount.

12) Plaintiff may file a motion for attorneys’ fees and costs within 14
days of this order.
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13) The court will defer entering formal judgment in this matter until the
motion for attorneys’ fees is resolved or the deadline for filing such
motion has passed.

s/Jennifer P. Wilson
JENNIFER P. WILSON
United States District Court Judge
Middle District of Pennsylvania

Dated: March 31, 2022