Opinion
Civil Action 21-cv-6691-ER
11-10-2022
BEDFORD, FREEMAN & WORTH PUBLISHING GROUP, LLC d/b/a MACMILLAN LEARNIN G, CENGAGE LEARNING, INC., ELSEVIER INC., MCGRAW HILL LLC, and PEARSON EDUCATION, INC., Plaintiffs, v. AARON L. ENGLISH, CAO TRAN MANH DAT, DIANNA SEIFERT, DU QUANG DUAN, DUNG VUONG, FARM SARCHAO, HONG LAM SON, JAMES WRIGHT, KATHRYN WILCOX, LUAN LE, MARTHA ROBLEDO, NGUYEN KHANG VU, PHONG NGUYEN DINH, QUYEN VU THI BICH, TAMMY COOPER, THE ANH NGUYEN, TOAN LE, TRAN NGOC LONG, VUONG VIET DUNG, YOUSSEF MAHREZ, NGUYET Y NGO, PHONG PHAM, bAC DO NGOC, DO DUC TUAN ANH, HUAN BACH NGUYEN, PHAM UYEN PHI, HUONG NGUYEN THI, NGUYEN VAN LY, ROSTISLAV ZHURAVSKIY, MOHAMED ALI, MOHAMED NOUARI, NGUYEN PHAN NGAN, CHUNG KHAC NGUYEN, MOUSTAGHFIR ANASS, ABDUL SALEWAN BIN ANTONI, JAY KING, RUSLI YASMIN, and DUC MANH PHAM, Defendants.
DEFAULT JUDGMENT, PERMANENT INJUNCTION, AND POST-JUDGMENT RELIF ORDER
EDGARDO RAMOS, UNITED STATES DISTRICT JUDGE.
Plaintiffs Bedford, Freeman & Worth Publishing Group, LLC d/b/a Macmillan Learning (“Macmillan Learning”), Cengage Learning, Inc. (“Cengage”), Elsevier Inc. (“Elsevier”), McGraw Hill LLC (“McGraw Hill”), and Pearson Education, Inc. (“Pearson”) (collectively, “Plaintiffs”) initiated this action on August 9, 2021 against Doe Defendants. See Compl., ECF No. 13. At the same time that they filed the Complaint, Plaintiffs filed an Ex Parte Application for a Temporary Restraining Order, Order to Show Cause Why a Preliminary Injunction Should Not Issue, Expedited Discovery Order, and Alternate Service Order, which the Court granted on August 9, 2021 (“Ex Parte Order”). See Ex Parte Order, ECF No. 51. Pursuant to the Ex Parte Order, Plaintiffs served the Doe Defendants by email with the original Complaint, Summons, Ex Parte Order, and their moving papers. See Decl. of Service, ECF No. 32. On September 3, 2021, the Court issued a Preliminary Injunction. See Prelim. Inj., ECF No. 34. After conducting expedited discovery, Plaintiffs filed the Amended Complaint on February 8, 2022, naming Defendants Cao Tran Manh Dat, Dianna Seifert, Du Quang Duan, Dung Vuong, Hong Lam Son, James Wright, Kathryn Wilcox, Luan Le, Nguyen Khang Vu, Phong Nguyen Dinh, Quyen Vu Thi Bich, The Anh Nguyen, Toan Le, Tran Ngoc Long, Vuong Viet Dung, Youssef Mahrez, Nguyet Y Ngo, Phong Pham, Bac Do Ngoc, Do Duc Tuan Anh, Huan Bach Nguyen, Pham Uyen Phi, Huong Nguyen Thi, Nguyen Van Ly, Rostislav Zhuravskiy, Mohamed Ali, Mohamed Nouari, Nguyen Phan Ngan, Chung Khac Nguyen, Moustaghfir Anass, Abdul Salewan Bin Antoni, Jay King, Rusli Yasmin, and Duc Manh Pham, as further identified and described in Appendix A hereto (collectively, “Defendants”). See Am. Compl., ECF No. 69. On February 10, 2022, Plaintiffs served the Amended Complaint and Summons on Defendants by email pursuant to the Court's February 3, 2022 Alternate Service Order (ECF No. 66), other than with respect to Defendants Wright and Wilcox, who were personally served on March 3 and 4, 2022, respectively, and Defendant Zhuravskiy, who was served on March 9, 2022 pursuant to N.Y. C.P.L.R. § 308(4). See Decl. of Service, ECF No. 72; Affid. of Service, ECF Nos. 80, 81. No Defendant filed an Answer or otherwise responded to the Complaint or the Amended Complaint.
On March 11 and April 1, 2022, the Clerk of Court issued Certificates of Default as to all Defendants. See Certificates of Default, ECF Nos. 84, 89.
On October 14, 2022, Plaintiffs submitted a memorandum of law and an attorney declaration with supporting exhibits in support of their proposed default judgment, permanent injunction, and post-judgment relief order against Defendants (“proposed Order”).
Having reviewed the Amended Complaint, Plaintiffs' papers filed in support of the proposed Order, and the entire record herein, the Court HEREBY FINDS that:
A. Plaintiffs are leading educational publishers. Plaintiffs' publications include physical and digital textbooks that are widely available in the United States marketplace to consumers and sold through direct sales channels and legitimate distributors and stores, including through online sales.
B. Defendants own, control, and/or operate multiple, illegal websites through which they have infringed Plaintiffs' federally registered copyrights in Plaintiffs' textbooks and/or federally registered trademarks (“Infringing Sites”). Such currently known Infringing Sites are identified in Appendix A hereto. Appendix A also lists Defendants' names, “Group” numbers, if applicable, aliases, and email addresses identified by Plaintiffs through discovery. The Defendants within each Group in Groups 1 through 5, as identified in Appendix A, jointly operate their respective Infringing Sites and, therefore, are jointly and severally liable to Plaintiffs as set forth herein.
C. Defendants have been properly served in this action with the Complaint, the Amended Complaint, and the Summonses.
D. Because Defendants have not filed Answers, otherwise responded to the Complaint or the Amended Complaint, or otherwise appeared in this action, the Clerk of Court entered default against Defendants on March 11 and April 1, 2022.
E. The Court has personal jurisdiction over Defendants pursuant to N.Y. C.P.L.R. §§ 302(a)(1) and/or (3).
F. Plaintiffs own or exclusively control the rights in copyright in and to their respective federally registered copyrighted works described in Appendix B hereto (“Plaintiffs' Authentic Works”).
G. Plaintiffs Cengage and McGraw Hill, who seek damages for trademark counterfeiting, own their respective federally registered trademarks described in Appendix B hereto.
H. Defendants have willfully infringed Plaintiffs' copyrights in Plaintiffs' Authentic Works in connection with their knowing reproduction and/or distribution of unauthorized electronic copies thereof. Defendants are liable for willful copyright infringement under the Copyright Act, 17 U.S.C. §§ 101, et seq.
I. Certain Defendants, as set forth in Appendix B, have willfully infringed Cengage's and McGraw Hill's trademarks by knowingly using in commerce, without authorization, identical or substantially indistinguishable reproductions thereof in connection with the sale, offering for sale, distribution, and/or advertising of infringing copies of Authentic Works. Defendants are liable for willful trademark counterfeiting under the Lanham Act, 15 U.S.C. §§ 1114(1)(a) and 1127.
J. As a result of Defendants' unlawful conduct, Plaintiffs have been irreparably harmed.
K. As a result of Defendants' unlawful conduct, Plaintiffs are entitled to the entry of a default judgment and permanent injunction against Defendants as set forth herein.
NOW, THEREFORE, IT IS HEREBY ORDERED, in accordance with Federal Rule of Civil Procedure 65(d), the Copyright Act, and the Lanham Act, that Defendants, their officers, agents, servants, employees, and attorneys, and all those in active concert or participation with any of them, who receive actual notice of this Order, are permanently enjoined from directly or indirectly: (1) infringing the copyrights owned or exclusively controlled by any of the Plaintiffs, or any parent, subsidiary, or affiliate of a Plaintiff (“Plaintiffs' Copyrights”), including any copyrighted work published under any of the imprints identified in Appendix C hereto (the “Imprints”); and (2) infringing the trademarks with respect to which any of the Plaintiffs, or any parent, subsidiary, or affiliate of a Plaintiff, is the registrant under the Lanham Act (“Plaintiffs' Marks”), including such trademarks associated with the Imprints.
With respect to Macmillan Learning, the above provisions do not include its affiliates and its parents other than its immediate parent company.
Without limiting the foregoing, IT IS FURTHER ORDERED that Defendants, their officers, agents, servants, employees, and attorneys, and all those in active concert or participation with any of them, who receive actual notice of this Order, are permanently enjoined from engaging in any of the following acts:
1) Copying, reproducing, manufacturing, importing, downloading, uploading, transmitting, distributing, selling, offering for sale, advertising, marketing, promoting, or otherwise exploiting any of Plaintiffs' Copyrights without Plaintiffs' express written authorization; or enabling, facilitating, permitting, assisting, soliciting, encouraging, or inducing others to engage in such activities;
2) Copying or reproducing Plaintiffs' Marks, using Plaintiffs' Marks in connection with manufacturing, importing, downloading, uploading, transmitting, distributing, selling, offering for sale, advertising, marketing, or promoting goods or services, or otherwise exploiting Plaintiffs' Marks, without Plaintiffs' express written authorization; or enabling, facilitating, permitting, assisting, soliciting,
encouraging, or inducing others to engage in such activities; and
3) Using, hosting, operating, maintaining, creating, or registering any computer server, website, domain name, domain name server, cloud storage, e-commerce platform, online advertising service, search engine, social media platform, payment processing service, or financial service to infringe or to enable, facilitate, permit, assist, solicit, encourage, or induce the infringement of Plaintiffs' Copyrights or Plaintiffs' Marks.
IT IS FURTHER ORDERED that, pursuant to 17 U.S.C. § 504(c) and 15 U.S.C. § 1117(c), Plaintiffs' request for statutory damages under the Copyright Act and Cengage and McGraw Hill's request for statutory damages under the Lanham Act is granted, and Plaintiffs are awarded statutory damages as follows (and as further detailed in Appendix B):
| Defendant/Group * | Copyright Damages | Trademark Damages | Total Damages for Defendant or Group |
| Group 1 Defendants: Cao Tran Manh Dat, Dianna Seifert, Du Quang Duan, Dung Vuong, Hong Lam Son, Luan Le, Ngyuen Khang, Phong Nguyen Dinh, Quyen Vu Thi Bich, The Anh Nguyen, Toan le, Tran Ngoc Long, Vuong Vier Dung, Youssef Mahrez | $6,750,000 | $4,000,000 | $10,750,000 |
| Group 2 Defendants: Nguyệt Ý Ngô and Phong Pham | $3,600,000 | $1,000,000 | $4,600,000 |
| Group 3 Defendants: Bắc Đỗ Ngọc (d/b/a Nguyen Van Linh) and Do Duc Tuan Anh | $3,300,000 | - | $3,300,000 |
| Group 4 Defendants: Huan Bach Nguyen and Pham Uyen Phi | $8,100,000 | $2,000,000 | $10,100,000 |
| Group 5 Defendants: Huong Nguyen Thi and Nguyen Van Ly | $3,150,000 | $2,000,000 | $5,150,000 |
| Abdul Salewan Bin Antoni | $2,250,000 | $1,000,000 | $3,250,000 |
| Chung Khac Nguyen | $3,450,000 | - | $3,450,000 |
| Duc Manh Pham | $4,800,000 | - | $4,800,000 |
| Jay King | $1,500,000 | $2,000,000 | $3,500,000 |
| Mohamed Ali | $3,300,000 | - | $3,300,000 |
| Mohamed Nouari | $1,650,000 | - | $1,650,000 |
| Moustaghfir Anass | $1,950,000 | - | $1,950,000 |
| Nguyen Phan Ngan | $7,500,000 | $3,000,000 | $10,500,000 |
| Rostislav Zhuravskiy | $1,350,000 | $1,000,000 | $2,350,000 |
| Rusli Yasmin | $5,400,000 | - | $5,400,000 |
| TOTAL DAMAGES | $58,050,000 | $16,000,000 | $74,050,000 |
*Each Defendant within a Group is jointly and severally liable for the total damages indicated with respect to such Group.
IT IS FURTHER ORDERED that the stay to enforce a judgment pursuant to Federal Rule of Civil Procedure 62(a) is hereby dissolved, and Plaintiffs may immediately enforce the judgment set forth herein.
IT IS FURTHER ORDERED that, pursuant to the Copyright Act, Federal Rules of Civil Procedure 64, 65, and/or 69, and/or this Court's inherent equitable powers and its power to coerce compliance with its lawful orders, Defendants and banks, payment processing companies, savings and loan associations, credit card companies, credit card processing agencies, merchant acquiring banks, and other companies or agencies that engage in the processing or transfer of money or other financial assets (“Financial Institutions”) shall continue to cease transferring, withdrawing, or otherwise disposing of any money or other assets in currently restrained accounts holding or receiving money or other assets of Defendants' pursuant to the Amended Preliminary Injunction, including those accounts specified in Appendix D hereto (“Defendants' Accounts”), or allowing such money or other assets in Defendants' Accounts to be transferred, withdrawn, or otherwise disposed of, except as specified in this paragraph, until such time as the judgment set forth herein is satisfied with respect to the relevant Defendant(s). Further, Financial Institutions holding currently restrained money or other assets in Defendants' Accounts shall release such money or other assets to Plaintiffs in full or partial satisfaction of the damages set forth herein within thirty (30) days following actual notice of this Order, unless the relevant Defendant(s) has filed with the Court and served upon Plaintiffs' counsel a request that such money or other assets be excluded from release to Plaintiffs because they constitute income, benefits, or other funds that are exempt by law, including those described in N.Y. C.P.L.R. § 5222-a (“Exemption Request”). Additionally, in the event Plaintiffs discover money or other financial assets belonging to Defendants in any accounts that are not currently restrained, Plaintiffs may continue to serve this Order on Financial Institutions, together with the relevant information known to Plaintiffs identifying Defendants' accounts, and such Financial Institutions shall cease allowing Defendants' money or other assets in such accounts to be transferred, withdrawn, or otherwise disposed of and, within thirty (30) days following actual notice of this Order, shall release such money or other assets to Plaintiffs in full or partial satisfaction of the damages set forth herein, unless the relevant Defendant(s) has filed with the Court and served upon Plaintiffs' counsel an Exemption Request.
IT IS FURTHER ORDERED that, pursuant to the Copyright Act, Federal Rule of Civil Procedure 65(d), and/or this Court's inherent equitable powers and its power to coerce compliance with its lawful orders, within ten (10) business days following actual notice of this Order, the registries and/or the individual registrars shall transfer the domain names of all active Infringing Sites, as listed in Appendix A, to Plaintiffs' ownership and control, including, inter alia, by changing the registrar of record to the registrar of Plaintiffs' choosing, or, at Plaintiffs' direction, release such domain names.
IT IS FURTHER ORDERED that, pursuant to the Copyright Act, Federal Rule of Civil Procedure 65(d), and/or the Court's inherent equitable powers and its power to coerce compliance with its lawful orders, and due to Defendants' ongoing operation of their infringing activities, in the event Plaintiffs identify any additional Infringing Sites registered to or operated by any Defendant and used in conjunction with the reproduction or distribution of works protected by Plaintiffs' Copyrights (“New Infringing Sites”), the registries and/or the individual registrars of such New Infringing Sites shall transfer the domain names thereof to Plaintiffs' ownership and control, including, inter alia, by changing the registrar of record to the registrar of Plaintiffs' choosing, or, at Plaintiffs' direction, release such domains, within ten (10) business days following actual notice of this Order and the receipt of information provided by Plaintiffs that demonstrates to the registries and/or the individual registrars that the domains constitute New Infringing Sites as described herein.
IT IS FURTHER ORDERED that Defendants shall deliver to Plaintiffs for destruction all electronic copies of Plaintiffs' Authentic Works, or derivative works thereof, that Defendants have in their possession, custody, or control, and all devices by means of which such copies have been created, pursuant to 17 U.S.C. § 503.
IT IS FURTHER ORDERED that the Clerk of Court is hereby directed to release the $5,000 cash bond, posted in accordance with the Ex Parte Order, to Plaintiffs by sending it to their attorneys of record, Oppenheim + Zebrak, LLP, at 4530 Wisconsin Avenue, NW, 5th Floor, Washington, DC 20016.
IT IS FURTHER ORDERED that this Court shall retain jurisdiction over the parties and the subject matter of this litigation for the purpose of interpretation and enforcement of this Permanent Injunction.
IT IS FURTHER ORDERED that the Clerk of Court is directed to enter final judgment in favor of Plaintiffs.
DEFAULT JUDGMENT is hereby entered in favor of Plaintiffs against Defendants Cao Tran Manh Dat, Dianna Seifert, Du Quang Duan, Dung Vuong, Hong Lam Son, James Wright, Kathryn Wilcox, Luan Le, Nguyen Khang Vu, Phong Nguyen Dinh, Quyen Vu Thi Bich, The Anh Nguyen, Toan Le, Tran Ngoc Long, Vuong Viet Dung, Youssef Mahrez, Nguyet Y Ngo, Phong Pham, Bac Do Ngoc, Do Duc Tuan Anh, Huan Bach Nguyen, Pham Uyen Phi, Huong Nguyen Thi, Nguyen Van Ly, Rostislav Zhuravskiy, Mohamed Ali, Mohamed Nouari, Nguyen Phan Ngan, Chung Khac Nguyen, Moustaghfir Anass, Abdul Salewan Bin Antoni, Jay King, Rusli Yasmin, and Duc Manh Pham (collectively, “Defendants”), in the total amount of $74,050,000, as described above and detailed in Appendix B, plus post-judgment interest calculated at the rate set forth in 28 U.S.C. § 1961.
SO ORDERED.
(Appendix A Omitted)
(Appendix B Omitted)
(Appendix C Omitted)
(Appendix D Omitted)