Opinion
1:21-cv-07569-DLC
10-10-2021
ROVIO ENTERTAINMENT CORPORATION, Plaintiff v. ALL PRINTED CLOTHES FACTORY STORE, DAJUN CLOTHES STORE, DEHUA BEAUTY RICH ARTS & CRAFTS CO., LTD., DONGGUAN DREAMY TOY CO., LTD., DONGGUAN JEELI PLASTIC TOYS CO., LTD, DONGGUAN RICH POWER TIN MFG. LTD., DONGGUAN SHANG ZHEN ART GIFTS CO., LTD., DONGGUAN SIYUAN TOY CO., LIMITED, ETST WENDY CHILDREN'S FACTORY OUTLET STORE, ETST WENDY FUNNY STORE, EYEMASK666 STORE, GOLDEN CHILDHOOD01 STORE, GOLDEN CRADLE KIDS STORE, GOLDEN CRADLE STORE, GT COMMANDER STORE, GUANGZHOU CAIDAO INDUSTRIAL CO., LTD., GUANGZHOU KAI RONG INDUSTRIAL CO., LTD., GUANGZHOU TAKU CULTURE MEDIA CO., LTD., GUANGZHOU TOP GLAMOUR COSMETIC CO., LTD, HEARTBEAT PLUSH STORE, HEBEI LINGMOU TRADING CO., LTD., HEY SURPRISE STORE, HIGH QUALITY 847 STORE, HIGH QUALITY 999 STORE, HONGCHENG'S STORE, JEBMQ STORE, JUESEJUJIA STORE, KIDS GAME TSHIRT FACTORY STORE, LABELZONE OFFICIAL STORE, LL-PLUSH STORE, MIAY'S KIDS ROOM STORE, MR YE. STORE, MUGIVALA FRANCHISED STORE, NANCHANG KEDA STATIONERY GIFTS INDUSTRIAL CO., LTD, NEW OOPS STORE, NINGBO GMT LEISURE PRODUCTS CO., LTD., OU YTN STORE, OUR WORLD CHILDREN STORE, PANLANDE ACCESSORIES STORE, PARAGLIDING STORE, PERSONALIZEDSHOES STORE, PLEASANT KEYCHAIN STORE, PRINT CLOTHES FACTORY DISCOUNT STORE, PRINTING CHILDREN'S CLOTHES STORE, PUJIANG MINGJIU E-COMMERCE CO., LTD., QUALITY CHILD TOY STORE, QUANZHOU GUANGHE MINGLIANG TRADING CO., LTD., QUANZHOU ORANGE PEEL E-COMMERCE CO., LTD., QUANZHOU YOHO YOHO TRADING CO., LTD., SHANG HAI ROSE STORE, SHANGHAI FUNNYBUDDY CO., LTD., SHANTOU YACHAO TRADING CO., LTD., SHENZHEN NEWJOY TECHNOLOGY CO., LTD., SHENZHEN USMARTALL TECHNOLOGY CO., LTD., SHENZHEN YOKO LABELWORKS LIMITED, SHOP5282050 STORE, SHOP5379O93 STORE, SHOP57882ll STORE, SHOP910323284 STORE, SHOP910364092 STORE, SHOP911252065 STORE, SHOP911297209 STORE, SHOP9l 1602222 STORE, SHOP911758373 STORE, SMILING CENTER STORE, SOXTOWN (SHANGHAI) INDUSTRIAL CO., LTD., SUNYDREAMS ANIMATION STORE, TAKE OFF STORE, VANQUISH A DIFFERENT STORE, WANCHEN STORE, WENZHOU HIGH AND LONG CO., LTD., XIAMEN HULI HUANGXIAODUAN PET PRODUCTS STORE, XINXIANG YFNGLAIDA IMPORT AND EXPORT TRADING CO., LTD., YANGZHOU TIRIS CRAFTS CO., LTD., YANGZHOU YIYABAO TOYS & GIFTS CO., LTD., YEJIANFELXING STORE, YIWU BIWEI TRADE CO., LTD., YIWU DONGHONG KNITTING CO., LTD., YIWU HEPIN FOOD CO., LTD., YOUPIN TOY STORE, YOUR DIARY STORE, YULIN JEWELLERY STORE, YUZENGXIANGBABY STORE, ZHEN X1ANG TECHNOLOGY CO., LTD., ZHENGHONGKAI03'S STORE and ZHUO JIU STORE, Defendants
Jason M. Drangel (JD 7204) EPSTEIN DRANGEL LLP Attorneys for Plaintiff Rovio Entertainment Corporation
Jason M. Drangel (JD 7204) EPSTEIN DRANGEL LLP Attorneys for Plaintiff Rovio Entertainment Corporation
[PROPOSED] 1) TEMPORARY RESTRAINING ORDER; 2) ORDER RESTRAINING MERCHANT STOREFRONTS AND DEFENDANTS' ASSETS WITH THE FINANCIAL INSTITUTIONS; 3) ORDER TO SHOW CAUSE WHY A PRELIMINARY INJUNCTION SHOULD NOT ISSUE; 4) ORDER AUTHORIZING BIFURCATED AND ALTERNATIVE SERVICE; AND 5) ORDER AUTHORIZING EXPEDITED DISCOVERY
GLOSSARY
| Term | Definition |
| Plaintiff or Rovio | Rovio Entertainment Corporation |
| Defendants | All Printed Clothes Factory Store, Dajun clothes Store, Dehua Beauty Rich Arts & Crafts Co., Ltd., Dongguan Dreamy Toy Co., Ltd., Dongguan Jieli Plastic Toys Co., Ltd, Dongguan Rich Power Tin Mfg. Ltd., Dongguan Shang Zhen Art Gifts Co., Ltd., Dongguan Siyuan Toy Co., Limited, ETST WENDY Children's Factory Outlet Store, ETST WENDY Funny Store, Eyemask666 Store, Golden childhood01 Store, Golden Cradle Kids Store, Golden cradle Store, GT Commander Store, Guangzhou Caldao Industrial Co., Ltd., Guangzhou Kai Rong Industrial Co., Ltd., Guangzhou Taku Culture Media Co., Ltd., Guangzhou Top Glamour Cosmetic Co., Ltd., Heartbeat Plush Store, Hebei Lingmou Trading Co., Ltd., Hey Surprise Store, High quality 847 Store, High quality 999 Store, HongCheng's Store, JEBMQ Store, juesejujia Store, Kids game tShirt Factory Store, labelzone Official Store, LL-plush Store, Miay's Kids Room Store, Mr Ye. Store, MUGIVALA Franchised Store, Nanchang Keda Stationery Gifts Industrial Co., ltd, NEW OOPS Store, Ningbo GMT Leisure Products Co., Ltd., Ou Yin Store, Our World Children Store, Panlande accessories Store, Paragliding Store, Personalizedshoes Store, Pleasant keychain Store, print clothes factory discount Store, printing children's clothes Store, Pujiang Mingjiu E-Commerce Co., Ltd., Quality child toy Store, Quanzhou Guanghe Mingliang Trading Co., Ltd., Quanzhou Orange Peel E-Commerce Co., Ltd., Quanzhou Yoho Yoho Trading Co., Ltd., Shang hai Rose Store, Shanghai Funnybuddy Co., Ltd., Shantou Yachao Trading Co., Ltd., Shenzhen Newjoy Technology Co., Ltd., Shenzhen Usmartall Technology Co., Ltd., Shenzhen Yoko Label works Limited, Shop5282050 Store, Shop5379093 Store, Shop57882ll Store, Shop910323284 Store, Shop9l 0364092 Store, Shop9l 1252065 Store, Shop911297209 Store, Shop9l 1602222 Store, Shop9l 1758373 Store, smiling center Store, Soxtown (Shanghai) Industrial Co., Ltd., Sunydreams Animation Store, take off Store, Vanquish a different Store, WANCHEN Store, Wenzhou High And Long Co., Ltd., Xiamen Huli Huangxiaoduan Pet Products Store, Xinxiang Yinglaida Import And Export Trading Co., Ltd., Yangzhou Tiris Crafts Co., Ltd., Yangzhou Yiyabao Toys & Gifts Co., Ltd., YeJianFeiXing Store, Yiwu Biwei Trade Co., Ltd., Yiwu Donghong Knitting Co., Ltd., Yiwu Hepin Food Co., Ltd., Youpin toy Store, Your Diary Store, Yulin JEWELLERY Store, YuZengXiangBaby Store, Zhen Xiang Technology Co., Ltd., ZhenghongkaiO3's Store and ZHUO JIU Store |
| Alibaba | Alibaba.com, an online marketplace platform that allows manufacturers, wholesalers and other third-party merchants, like Defendants, to advertise, offer for sale, sell, distribute and ship their wholesale and retail products originating from China directly to consumers across the world and specifically to consumers residing in the U.S., including New York |
| AliExpress | AliExpress.com, an online marketplace platform that allows manufacturers, wholesalers and other third-party merchants, like Defendants, to advertise, offer for sale, sell, distribute and ship their wholesale and retail products originating from China directly to consumers across the world and specifically to consumers residing in the U.S., including New York |
| Epstein Drangel | Epstein Drangel LLP, counsel for Plaintiff |
| New York Addresses | 55 W 105th Street, Apt. 16, New York, NY, 10025 244 Madison Avenue, Suite 411, New York, NY, 10016 |
| Complaint | Plaintiffs Complaint |
| Application | Plaintiffs Ex Parte Application for: 1) a temporary restraining order; 2) an order restraining Merchant Storefronts (as defined infra) and Defendants' Assets (as defined infra) with the Financial Institutions (as defined infra); 3) an order to show cause why a preliminary injunction should not issue; 4) an order authorizing bifurcated and alternative service and 5) an order authorizing expedited discovery |
| Hagelstam Dec. | Declaration of Robert Hagelstam in Support of Plaintiffs Application |
| Futterman Dec. | Declaration of Danielle S. Futterman in Support of Plaintiffs Application |
| Angry Birds | A puzzle video game, where players use a slingshot to launch birds at pigs stationed at various structures with the ultimate goal of destroying all the pigs |
| Angry Birds Products | A wide variety of consumer products such as toys, games and apparel associated with and/or related to the Angry Birds Marks |
| Angry Birds Content | Various entertainment (including the Angry Birds Movie in 2016 and Angry Birds Movie 2 in 2019), consumer product in brand licensing and over a dozen different versions, special editions and spin-offs of the Angry Birds game for various platforms |
| Angry Birds Marks | U.S. Trademark Registration Nos.: 4, 200, 545, 4, 148, 716, and 3, 976, 576 for "ANGRY BIRDS" for a wide variety of goods in Classes 8, 9, 16, 20, 21, 25, 30, 36 and 41; U.S. Trademark Registration Nos. 6, 331, 350, 4, 252, 003, 4, 145, 113 and 3, 988, 064 for (Image Omitted), for a wide variety of goods in Classes 3, 9, 14, 16, 18, 21, 24, 25, 28, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 493, 031 for (Image Omitted), for a wide variety of goods in Classes 9, 16, 18, 20, 23, 28 and 41; U.S. Trademark Registration No. (Image Omitted) 4, 489, 982 for (Image Omitted). for a wide variety of goods in Classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 35, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. (Image Omitted) Trademark Registration No, 4, 489, 981 for for a wide variety of goods in Classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. (Image Omitted) Trademark Registration No. 4, 489, 980 for (Image Omitted) for a wide variety of goods in Classes9, 16, 28 and 41; U.S. Trademark Registration No. 4, 489, 979 for (Image Omitted) for a wide variety of goods in Classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 486, 763 for for a wide variety of goods in Classes 9, 16, 18, 25, 28, 30, 32, 36 and 41; U.S. Trademark Registration No. 4, 486, 762 for (Image Omitted) for goods in Class 28; U.S. Trademark Registration No. 4, 545, 679 for (Image Omitted) for a wide variety of goods in Classes 9, 16, 28 and 43; U.S. Trademark Registration No. 4, 545, 680 for (Image Omitted) for a wide variety of goods in Classes 9, 16, 18, 20, 28 and 41; U.S. Trademark Registration No. 4, 697, 586 for (Image Omitted) for a wide variety of goods in classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 843, 434 for for a wide variety of goods in classes 3, 5, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 683, 222 for (Image Omitted) for a wide variety of goods in classes 9, 14, 16, 18, 20, 21, 24, 25, 28, 35, 38 and 41; U.S. Trademark Registration No. 4, 493, 055 for (Image Omitted), for a wide variety of goods in Classes 9, 16, 28 and 41; U.S. Trademark Registration No. 4, 557, 817 for, for a wide variety of goods in Classes 9, 16, 25, 28 and 41; U.S. Trademark Registration No. 4, 946, 692 for "HOCKEYBIRD", for a wide variety of goods in classes 16, 24 and 25; U.S. Trademark Registration No. 4, 829, 609 for "ANGRY" for a variety of goods in Classes 9 and 28; U.S. Trademark Registration No. 4, 152, 185 for "MIGHTY EAGLE", for a wide variety of goods in Class 28; U.S. Trademark Registration No. 4, 162, 825 for "BAD PIGGIES", for a wide variety of goods in Class 9 and U.S. Trademark No. 4, 607, 595 for "ROVIO", for a wide variety of goods in classes 9, 16, 28, 35, 36, 38 and 41 |
| Counterfeit Products | Products bearing or used in connection with the Angry Birds Marks, and/or products in packaging and/or containing labels bearing the Angry Birds Marks, and/or bearing or used in connection with marks and/or artwork that are confusingly or substantially similar to the Angry Birds Marks and/or products that are identical or confusingly or substantially similar to the Angry Birds Products |
| Infringing Listings | Defendants' listings for Counterfeit Products |
| User Accounts | Any and all websites and any and all accounts with online marketplace platforms such as Alibaba and/or AliExpress, as well as any and all as yet undiscovered accounts with additional online marketplace platforms held by or associated with Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them |
| Merchant Storefronts | Any and all User Accounts through which Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them operate storefronts to manufacture, import, export, advertise, market, promote, distribute, display, offer for sale, sell and/or otherwise deal in Counterfeit Products, which are held by or associated with Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them |
| Defendants' Assets | Any and all money, securities or other property or assets of Defendants (whether said assets are located in the U.S. or abroad) |
| Defendants' Financial Accounts | Any and all financial accounts associated with or utilized by any Defendants or any Defendants' User Accounts or Merchant Storefront(s) (whether said account is located in the U.S. or abroad) |
| Financial Institutions | Any banks, financial institutions, credit card companies and payment processing agencies, such as PayPal Inc. ("PayPal"), Payoneer Inc. ("Payoneer"), the Alibaba Group d/b/a Alibaba.com payment services (e.g., Alipay.com Co., Ltd., Ant Financial Services Group), PingPong Global Solutions, Inc. ("PingPong") and other companies or agencies that engage in the processing or transfer of money and/or real or personal property of Defendants |
| Third Party Service Providers | Online marketplace platforms, including, without limitation, those owned and operated, directly or indirectly by Alibaba and/or AliExpress, as well as any and all as yet undiscovered online marketplace platforms and/or entities through which Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them manufacture, import, export, advertise, market, promote, distribute, offer for sale, sell and/or otherwise deal in Counterfeit Products which are hereinafter identified as a result of any order entered in this action, or otherwise |
On this day, the Court considered Plaintiffs ex parte application for the following: 1) a temporary restraining order; 2) an order restraining Merchant Storefronts and Defendants' Assets with the Financial Institutions; 3) an order to show cause why a preliminary injunction should not issue; 4) an order authorizing bifurcated and alternative service and 5) an order authorizing expedited discovery against Defendants, Third Party Service Providers and Financial Institutions in light of Defendants' intentional and willful offerings for sale and/or sales of Counterfeit Products. A complete list of Defendants is attached hereto as Schedule A, which also includes links to Defendants' Merchant Storefronts and Infringing Listings. Having reviewed the Application, Declarations of Robert Hagelstam and Danielle S. Futterman, along with exhibits attached thereto and other evidence submitted in support thereof, the Court makes the following findings of fact and conclusions of law:
Where a defined term is referenced herein and not defined herein, the defined term should be understood as it is defined in the Glossary.
FACTUAL FINDINGS & CONCLUSIONS OF LAW
1. Rovio is a leading media entertainment company that creates, develops and publishes mobile games, which have been downloaded over 4.5 billion times.
2. One of Rovio's most successful creations is Angry Birds - a puzzle video game, where players use a slingshot to launch birds at pigs stationed at various structures with the ultimate goal of destroying all the pigs. Rovio has expanded the Angry Birds game to include various entertainment (including the Angry Birds Movie in 2016 and Angry Birds Movie 2 in 2019), consumer product in brand licensing and over a dozen different versions, special editions and spinoffs of the Angry Birds game for various platforms. Since its release in 2009, the Angry Birds games have been downloaded more than 4.5 billion times and include 66.8 million monthly active users across all platforms, including both regular and special editions.
3. Rovio has been nominated for and won multiple awards for the various versions, special editions and spin-offs of the Angry Birds games. In February 2010, Angry Birds was a nominee for the "Best Casual Game" award at the 6th annual International Mobile Gaming Awards in Barcelona, Spain. In June 2010, Macworld named Angry Birds as the winner of the 2010 Macworld Award for "Best iPhone Entertainment & Lifestyle App". In September 2010, IGN named Angry Birds as the fourth best iPhone game of all time. At the 15th edition of the Webby Awards in 2011, Angry Birds was awarded "Best Game for Handheld Devices". In April 2011, Angry Birds won both the "Best Game App" and "App of the Year" at the UK Appy Awards.
4. Rovio and its Angry Birds Content have received widespread press and media coverage. News stories, reports, reviews, features, press releases and blog posts acclaiming the Angry Birds games and its immense popularity have appeared in worldwide print and online publications such as: USA Today, TIME, The New York Times, The Washington Post, Forbes, The Los Angeles Times, The Chicago Tribune, The Associated Press, Reuters and the Huffmgton Post, among many others.
5. Rovio sells its Angry Birds Products through its online shops accessible through the Angry Birds website at https://www.angrybirds.com/shop/, to a number of countries, including but not limited to, United States, Greece, Malaysia, Belgium, Germany, etc. In the United States, Rovio sells its Angry Birds Products throughout major retailers and online marketplaces, including, but not limited to Walmart and Amazon.
6. The Angry Birds Products retail from $5.99 (toys) to $54.99 (sweatshirts).
7. Rovio has gained significant common law trademark and other rights in the Angry Birds Mark and Angry Birds Products through its use, advertising, and promotion.
8. Rovio Entertainment Corporation is the owner of all right, title and interest to the following U.S. Trademark Registration numbers.
9. Rovio is also the owner of the following U.S. Trademark Registration Nos.: 4, 200, 545, 4, 148, 716, and 3, 976, 576 for "ANGRY BIRDS" for a wide variety of goods in Classes 8, 9, 16, 20, 21, 25, 30, 36 and 41; U.S. Trademark Registration Nos. 6, 331, 350, 4, 252, 003, 4, 145, 113 and 3, 988, 064 for for a wide variety of goods in Classes 3, 9, 14, 16, 18, 21, 24, 25, 28, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 493, 031 for (Image Omitted), for a wide variety of goods in Classes 9, 16, 18, 20, 23, 28 and 41; U.S. Trademark Registration No. 4, 489, 982 for (Image Omitted) for a wide variety of goods in Classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 35, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No, 4, 489, 981 for for a wide variety of goods in Classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 489, 980 for (Image Omitted) for a wide variety of goods in Classes 9, 16, 28 and 41; U.S. Trademark Registration No. 4, 489, 979 for (Image Omitted) for a wide variety of goods in Classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 486, 763 for for a wide variety of goods in Classes 9, 16, 18, 25, 28, 30, 32, 36 and 41; U.S. Trademark Registration No. 4, 486, 762 for (Image Omitted) for goods in Class 28; U.S. Trademark Registration No. 4, 545, 679 for (Image Omitted) for a wide variety of goods in Classes 9, 16, 28 and 43; U.S. Trademark Registration No. 4, 545, 680 for (Image Omitted) for a wide variety of goods in Classes 9, 16, 18, 20, 28 and 41; U.S. Trademark Registration No. 4, 697, 586 for (Image Omitted) for a wide variety of goods in classes 3, 5, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 843, 434 for (Image Omitted) for a wide variety of goods in classes 3, 5, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43; U.S. Trademark Registration No. 4, 683, 222 for (Image Omitted) for a wide variety of goods in classes 9, 14, 16, 18, 20, 21, 24, 25, 28, 35, 38 and 41; U.S. Trademark Registration No. 4, 493, 055 for (Image Omitted) for a wide variety of goods in Classes 9, 16, 28 and 41; U.S. Trademark Registration No. 4, 557, 817 for, for a wide variety of goods in Classes 9, 16, 25, 28 and 41; U.S. Trademark Registration No. 4, 946, 692 for "HOCKEYBIRD", for a wide variety of goods in classes 16, 24 and 25; U.S. Trademark Registration No. 4, 829, 609 for "ANGRY" for a variety of goods in Classes 9 and 28; U.S. Trademark Registration No. 4, 152, 185 for "MIGHTY EAGLE", for a wide variety of goods in Class 28; U.S. Trademark Registration No. 4, 162, 825 for "BAD PIGGIES", for a wide variety of goods in Class 9 and U.S. Trademark No. 4, 607, 595 for "ROVIO", for a wide variety of goods in classes 9, 16, 28, 35, 36, 38 and 41.
10. Defendants are manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale or Counterfeit Product through Defendants' User Accounts and Merchant Storefronts with Alibaba and/or AliExpress (see Schedule A for links to Defendants' Merchant Storefronts and Infringing Listings).
11. Alibaba and AliExpress are online marketplace and e-commerce platforms, that allow manufacturers and other third-party merchants, like Defendants, to advertise, distribute, offer for sale, sell and ship their retail products, which, upon information and belief, primarily originate from China, directly to consumers worldwide and specifically to consumers residing in the U.S., including New York.
12. Defendants are not, nor have they ever been, authorized distributors or licensees of the Angry Birds Products. Neither Plaintiff, nor any of Plaintiffs authorized agents, have consented to Defendants' use of the Angry Birds Marks, nor has Plaintiff consented to Defendants' use of marks that are confusingly similar to, identical to and constitute a counterfeiting or infringement of the Angry Birds Marks.
13. Plaintiff is likely to prevail on its Lanham Act and related common law claims at trial.
14. As a result of Defendants' infringements, Plaintiff, as well as consumers, are likely to suffer immediate and irreparable losses, damages and injuries before Defendants can be heard in opposition, unless Plaintiffs Application for ex parte relief is granted:
a. Defendants have offered for sale and sold substandard Counterfeit Products that infringe the Angry Birds Marks;
b. Plaintiff has well-founded fears that more Counterfeit Products will appear in the marketplace; that consumers may be misled, confused and disappointed by the quality
of these Counterfeit Products, resulting in injury to Plaintiffs reputation and goodwill; and that Plaintiff may suffer loss of sales for the Angry Birds Products; and
c. Plaintiff has well-founded fears that if they proceed on notice to Defendants on this Application, Defendants will: (i) secret, conceal, destroy, alter, sell-off, transfer or otherwise dispose of or deal with Counterfeit Products or other goods that infringe the Angry Birds Marks, the means of obtaining or manufacturing such Counterfeit Products, and records relating thereto that are in their possession or under their control, (ii) inform their suppliers and others of Plaintiff s claims with the result being that those suppliers and others may also secret, conceal, sell-off or otherwise dispose of Counterfeit Products or other goods infringing the Angry Birds Marks, the means of obtaining or manufacturing such Counterfeit Products, and records relating thereto that are in their possession or under their control, (iii) secret, conceal, transfer or otherwise dispose of their ill-gotten proceeds from its sales of Counterfeit Products or other goods infringing the Angry Birds Marks and records relating thereto that are in their possession or under their control and/or (iv) open new User Accounts and Merchant Storefront under new or different names and continue to offer for sale and sell Counterfeit Products with little to no consequence.
15. The balance of potential harm to Defendants of being prevented from continuing to profit from their illegal and infringing activities if a temporary restraining order is issued is far outweighed by the potential harm to Plaintiff, its business, the goodwill and reputation built up in and associated with the Angry Birds Marks and to its reputations if a temporary restraining order is not issued.
16. Public interest favors issuance of the temporary restraining order in order to protect Plaintiffs interests in and to its Angry Birds Marks, and to protect the public from being deceived and defrauded by Defendants' passing off of their substandard Counterfeit Products as Angry Birds Products.
17. Plaintiff has not publicized their request for a temporary restraining order in any way.
18. Service on Defendants via electronic means is reasonably calculated to result in proper notice to Defendants.
19. If Defendants are given notice of the Application, they are likely to secret, conceal, transfer or otherwise dispose of their ill-gotten proceeds from their sales of Counterfeit Products or other goods infringing the Angry Birds Marks. Therefore, good cause exists for granting Plaintiffs request for an asset restraining order. It typically takes the Financial Institutions a minimum of five (5) days after service of the Order to locate, attach and freeze Defendants' Assets and/or Defendants' Financial Accounts and it is anticipated that it will take the Third Party Service Providers a minimum of five (5) days to freeze Defendants' Merchant Storefronts. As such, the Court allows enough time for Plaintiff to serve the Financial Institutions and Third Party Service Providers with this Order, and for the Financial Institutions and Third Party Service Providers to comply with the Paragraphs I(B)(1) through I(B)(2) and I(C)(1) of this Order, respectively, before requiring service on Defendants.
20. Similarly, if Defendants are given notice of the Application, they are likely to destroy, move, hide or otherwise make inaccessible to Plaintiff the records and documents relating to Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale and/or sale of Counterfeit Products. Therefore, Plaintiff has good cause to be granted expedited discovery.
ORDER
Based on the foregoing findings of fact and conclusions of law, Plaintiffs Application is hereby GRANTED as follows:
I. Temporary Restraining Order
A. IT IS HEREBY ORDERED, as sufficient cause has been shown, that Defendants are hereby restrained and enjoined from engaging in any of the following acts or omissions for fourteen (14) days from the date of this order, and for such further period as may be provided by order of the Court:
1) manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale, selling and/or otherwise dealing in Counterfeit Products, or any other products bearing the Angry Birds Marks and/or marks that are confusingly similar to, identical to and constitute a counterfeiting or infringement of the Angry Birds Marks;
2) directly or indirectly infringing in any manner Plaintiffs Angry Birds Marks;
3) using any reproduction, counterfeit, copy or colorable imitation of Plaintiff s Angry Birds Marks to identify any goods or service not authorized by Plaintiff;
4) using Plaintiffs Angry Birds Marks and/or any other marks that are confusingly similar to the Angry Birds Marks on or in connection with Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, offering for sale, selling and/or otherwise dealing in Counterfeit Products;
5) using any false designation of origin or false description, or engaging in any action which is likely to cause confusion, cause mistake and/or to deceive members of the trade and/or the public as to the affiliation, connection or association of any product manufactured, imported, exported, advertised, marketed, promoted, distributed, displayed, offered for sale or sold by Defendants with Plaintiff, and/or as to the origin, sponsorship or approval of any product manufactured, imported, exported, advertised, marketed, promoted, distributed, displayed, offered for sale or sold by Defendants and Defendants' commercial activities and Plaintiff;
6) secreting, concealing, destroying, altering, selling off, transferring or otherwise disposing of and/or dealing with: (i) Counterfeit Products and/or (ii) any computer files, data, business records, documents or any other records or evidence relating to their User Accounts, Merchant Storefronts or Defendants' Assets and the manufacture, importation, exportation, advertising, marketing, promotion, distribution, display, offering for sale and/or sale of Counterfeit Products;
7) effecting assignments or transfers, forming new entities or associations, or creating and/or utilizing any other platform, User Account, Merchant Storefront or any other means of importation, exportation, advertising, marketing, promotion, distribution, display, offering for sale and/or sale of Counterfeit Products for the purposes of circumventing or otherwise avoiding the prohibitions set forth in this Order; and
8) knowingly instructing any other person or business entity to engage in any of the activities referred to in subparagraphs I(A)(1) through I(A)(7) above and I(B)(1) through I(B)(2) and I(C)(1) below.
B. IT IS HEREBY ORDERED, as sufficient cause has been shown, that the Third Party Service Providers and Financial Institutions are hereby restrained and enjoined from engaging in any of the following acts or omissions for fourteen (14) days from the date of this order, and for such further period as may be provided by order of this Court:
1) secreting, concealing, transferring, disposing of, withdrawing, encumbering or paying Defendants' Assets from or to Defendants' Financial Accounts until further ordered by this Court;
2) secreting, concealing, destroying, altering, selling off, transferring or otherwise disposing of and/or dealing with any computer feds, data, business records, documents or any other records or evidence relating to Defendants' Assets and Defendants' Financial Accounts; and 3) knowingly instructing, aiding or abetting any person or business entity in engaging in any of the activities referred to in subparagraphs I(A)(I) through I(A)(7) and I(B)(1) through I(B)(2) above and I(C)(1) below. C. IT IS HEREBY ORDERED, as sufficient cause has been shown, that the Third Party Service Providers are hereby restrained and enjoined from engaging in any of the following acts or omissions for fourteen (14) days from the date of this order, and for such further period as may be provided by order of this Court:
1) within five (5) days after receipt of service of this Order, providing services to Defendants, Defendants' User Accounts and Defendants' Merchant Storefronts, including, without limitation, continued operation of Defendants' User Accounts and Merchant Storefronts; and
2) knowingly instructing, aiding, or abetting any other person or business entity in engaging in any of the activities referred to in subparagraphs I(A)(I) through I(A)(4), I(B)(1) through, I(B)(2) and above.
A. Defendants are hereby ORDERED to show cause before this Court in Courtroom 1813 of the United States District Court for the Southern District of New York at 500 Pearl ___ New York, New York on or at such other time that this Court deems appropriate, why a preliminary injunction, pursuant to Fed.R.Civ.P. 65(a), should not issue.
B. IT IS FURTHER ORDERED that opposing papers, if any, shall be filed electronically with the Court and served on Plaintiffs counsel by delivering copies thereof to the office of Epstein Drangel LLP at 60 East 42nd Street, Suite 2520, New York, NY 10165, Attn: Jason M. Drangel on or before ___, 2021. Plaintiff shall file any Reply papers on or before __, 2021.
C. IT IS FURTHER ORDERED that Defendants are hereby given notice that failure to appear at the show cause hearing scheduled in Paragraph II(A) above may result in the imposition of a preliminary injunction against them pursuant to Fed.R.Civ.P. 65, which may take effect immediately upon the expiration of this Order, and may extend throughout the length of the litigation under the same terms and conditions set forth in this Order.
III. Asset Restraining Order
A. IT IS FURTHER ORDERED pursuant to Fed.R.Civ.P. 64 and 65 and N.Y. C.P.L.R. 6201
and this Court's inherent equitable power to issue provisional remedies ancillary to its authority to provide final equitable relief, as sufficient cause has been shown, that within five (5) days of receipt of service of this Order, the Financial Institutions shall locate and attach Defendants' Financial Accounts and shall provide written confirmation of such attachment to Plaintiffs counsel.
IV. Order Authorizing Bifurcated and Alternative Service by Electronic Means
A. IT IS FURTHER ORDERED pursuant to Fed.R.Civ.P. 4(f)(3), as sufficient cause has been shown, that service may be made on, and shall be deemed effective as to Defendants if it is completed by the following means:
1) delivery of: (i) PDF copies of this Order together with the Summons and Complaint, or (ii) a link to a secure website (including NutStore, a large mail link created through Rmail.com and via website publication through a specific page dedicated to this Lawsuit accessible through ipcounselorslawsuit.com) where each Defendant will be able to download PDF copies of this Order together with the Summons and Complaint, and all papers filed in support of Plaintiffs Application seeking this Order to Defendants' e-mail addresses to be determined after having been identified by Alibaba and/or AliExpress pursuant to Paragraph V(C); or 2) delivery of a message to Defendants through the same means that Plaintiffs agents have previously communicated with Defendants, namely the system for communications established by the Third Party Service Providers on their respective platforms, notifying Defendants that an action has been filed against them in this Court and providing a link to a secure website (such as NutStore or a large mail link created through Rmail.com) where each Defendant will be able to download PDF copies of this Order together with the Summons and Complaint, and all papers filed in support of Plaintiff s Application seeking this Order.
B. IT IS FURTHER ORDERED, as sufficient cause has been shown, that such alternative service by electronic means ordered herein shall be deemed effective as to Defendants, Third Party Service Providers and Financial Institutions through the pendency of this action.
C. IT IS FURTHER ORDERED, as sufficient cause has been shown, that such alternative service by electronic means ordered herein shall be made within five (5) days of the Financial Institutions and Third Party Service Providers' compliance with Paragraphs III(A) and V(C) of this Order.
D. IT IS FURTHER ORDERED, as sufficient cause has been shown, that the Clerk of the Court shall issue a single original summons directed to all Defendants as listed in an attachment to the summons that will apply to all Defendants.
E. IT IS FURTHER ORDERED, as sufficient cause has been shown, that service may be made and shall be deemed effective as to the following if it is completed by the below means:
1) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where PayPal Inc. will be able to download a PDF copy of this Order via electronic mail to PayPal Legal Specialist at EEOMALegalSpecialist@paypal.com;
2) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where AliPay.com Co., Ltd., Ant Financial Services will be able to download a PDF copy of this Order via electronic mail Mr. Di Zhang, Member of the Legal & Compliance Department - IP, at di.zd@alipay.com;
3) delivery of: (I) a PDF copy of this Order, or (ii) a link to a secure website where Alibaba will be able to download a PDF copy of this Order via electronic mail to Ms. Rachel Wang, Legal Counsel, Alibaba Group at rachel.wy@alibaba-inc.com and Ms. Yujuan He, Paralegal, Alibaba Group at chloe.he@alibaba-inc.com;
4) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where Payoneer Inc. will be able to download a PDF copy of this Order via electronic mail to Payoneer Inc.'s Customer Service Management at customerservicemanager@payoneer.com and Edward Tulin, counsel for Payoneer Inc., at Edward.Tulin@skadden.com; and
5) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where PingPong Global Solutions Inc. will be able to download a PDF copy of this Order via electronic mail to legal@pingpongx.com.
V. Order Authorizing Expedited Discovery
A. IT IS FURTHER ORDERED, as sufficient cause has been shown, that:
1) Within fourteen (14) days after receiving service of this Order, each Defendant shall serve upon Plaintiffs counsel a written report under oath providing:
a. their true name and physical address;
b. the name and location and URL of any and all websites that Defendants own and/or operate and the name, location, account numbers and URL for any and all User Accounts and Merchant Storefronts on any Third Party Service Provider platform that Defendants own and/or operate;
c. the complete sales records for any and all sales of Counterfeit Products, including but not limited to number of units sold, the price per unit, total gross revenues received (in U.S. dollars) and the dates thereof;
d. the account details for any and all of Defendants' Financial Accounts, including, but not limited to, the account numbers and current account balances; and
e. the steps taken by each Defendant, or other person served to comply with Section I, above.
2) Plaintiff may serve interrogatories pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure as well as Local Civil Rule 33.3 of the Local Rules for the Southern and Eastern Districts of New York and Defendants who are served with this Order shall provide written responses under oath to such interrogatories within fourteen (14) days of service to Plaintiffs counsel.
3) Plaintiff may serve requests for the production of documents pursuant to Fed.R.Civ.P. 26 and 34, and Defendants who are served with this Order and the requests for the production of documents shall produce all documents responsive to such requests within fourteen (14) days of service to Plaintiffs counsel.
B. IT IS FURTHER ORDERED, as sufficient cause has been shown, that within five (5) days of receipt of service of this Order the Financial Institutions shall identify any and ail of Defendants' Financial Accounts, and provide Plaintiffs counsel with a summary report containing account details for any and all such accounts, which shall include, at a minimum, identifying information for Defendants, including contact information for Defendants (including, but not limited to, mailing addresses and e-mail addresses), account numbers and account balances for any and all of Defendants' Financial Accounts and confirmation of said compliance with this Order.
C. IT IS FURTHER ORDERED, as sufficient cause has been shown, that within five (5) days of receipt of service of this Order, the Third Party Service Providers shall identify any and all of Defendants' User Accounts and Merchant Storefronts, and provide Plaintiffs counsel with a summary report containing account details for any and all User Accounts and Merchant Storefronts, which shall include, at a minimum, identifying information for Defendants and Defendants' User Accounts and Defendants' Merchant Storefronts, contact information for Defendants (including, but not limited to, mailing addresses and e-mail addresses) and confirmation of said compliance with this Order.
D. IT IS FURTHER ORDERED, as sufficient cause has been shown, that:
1) Within fourteen (14) days of receiving actual notice of this Order, all Financial Institutions who are served with this Order shall provide Plaintiffs counsel all documents and records in their possession, custody or control (whether located in the U.S. or abroad) relating to any and all of Defendants' Financial Accounts, including, but not limited to, documents and records relating to:
a. account numbers;
b. current account balances;
c. any and all identifying information for Defendants, Defendants' User Accounts and Defendants' Merchant Storefronts, including, but not limited to, names, addresses and contact information;
d. any and all account opening documents and records, including, but not limited to, account applications, signature cards, identification documents and if a business entity, any and all business documents provided for the opening of each and every of Defendants' Financial Accounts;
e. any and all deposits and withdrawals during the previous year from each and every one of Defendants' Financial Accounts and any and all supporting documentation,
including, but not limited to, deposit slips, withdrawal slips, cancelled checks and account statements; and f. any and all wire transfers into each and every one of Defendants' Financial Accounts during the previous year, including, but not limited to, documents sufficient to show the identity of the destination of the transferred funds, the identity of the beneficiary's bank and the beneficiary's account number.
E. IT IS FURTHER ORDERED, as sufficient cause has been shown, that:
1) Within fourteen (14) days of receipt of service of this Order, the Third Party Service Providers shall provide to Plaintiffs counsel all documents and records in its possession, custody or control (whether located in the U.S. or abroad) relating to Defendants' User Accounts and Defendants' Merchant Storefronts, including, but not limited to, documents and records relating to:
a. any and all User Accounts and Defendants' Merchant Storefronts and account details, including, without limitation, identifying information and account numbers for any and all User Accounts and Defendants' Merchant Storefronts that Defendants have ever had and/or currently maintain with the Third Party Service Providers that were not previously provided pursuant to Paragraph V(C);
b. the identities, location and contact information, including any and all e-mail addresses of Defendants that were not previously provided pursuant to Paragraph V(C);
c. the nature of Defendants' businesses and operations, methods of payment, methods for accepting payment and any and all financial information, including, but not limited to, information associated with Defendants' User Accounts and Defendants' Merchant Storefronts, a full accounting of Defendants' sales history and listing history under such accounts and Defendants' Financial Accounts with
any and all Financial Institutions associated with Defendants' User Accounts and Defendants' Merchant Storefronts; and
d. Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale and/or selling of Counterfeit Products, or any other products bearing the Angry Birds Marks and/or marks that are confusingly similar to, identical to and constitute an infringement of the Angry Birds Marks.
VI. Security Bond
A. IT IS FURTHER ORDERED that Plaintiff shall place security in the amount of ___ Court which amount is determined adequate for the payment of any damages any person may be entitled to recover as a result of an improper or wrongful restraint ordered hereunder.
VII. Sealing Order
A. IT IS FURTHER ORDERED that Plaintiffs Complaint and exhibits attached thereto, and Plaintiffs ex parte Application and the Declarations of Robert Hagelstam and Danielle S. Futterman in support thereof and exhibits attached thereto, and this Order shall remain sealed until the Financial Institutions and Third Party Service Providers comply with Paragraphs I(B)-(C), III(A) and V(C) of this Order.
SO ORDERED.