Opinion
Civil Action 20-cv-8438-LLS
06-15-2022
ELSEVIER INC., BEDFORD, FREEMAN & WORTH PUBLISHING GROUP, LLC d/b/a MACMILLAN LEARNING, CENGAGE LEARNING, INC., MCGRAW HILL LLC, and PEARSON EDUCATION, INC., Plaintiffs, v. FAHED QUTTAINAH, MANSOUR MANSOUR, AHMED NASSAR, DANA OMAR ALSHAFEAI, MAHMOUD MAHMOUD, AHMED ZUREGAT, ZHIMING YANG, PATRICK SMITH, MIKE WALLACE, AYMEN YASEEN, DUONG HOANG THI THUY, HUONG THI THU DINH, THINH VAN CAN, MANH CUONG CAN, QUYNH THI NGUYEN, HOA MY HOANG, CAO THI NGOC DIEP, EISA ALMASRY, ZOHER TAHAMI, HOANG MAI, TUNG VU DANG, CHANH BUI XUAN, HUY QUAN VU, LONG THANH NGUYEN, MAGDIEL GARCIA, HENRY GONZALEZ HERRERA, YUNAYSIS MARTIN MATA, JAVARIA MALIK, NOUMAN MALIK, FARAH MAQSOOD, HASEEB ANJUM, YASSINE LIAS, ROSA LAUMEN, ABDULSALAM MOHAMAD, BIEN TIEN NGUYEN, SHERRY SANDERS, WALESKA CAMACHO, SUSAN RAGON, ANJUM AKHTER, AMNA RIZVI, JAMES COOK, EKATERNIA DEMIDENKO, ID TNAINE ABDELLAH, MAHER JARAR D/B/A ONLINE LEARNING EDU, MICHAEL JAMES FIED, SAID OUAKRIM, DANIEL LEW D/B/A EXAM BUDDY, LLC, ASAAD QURESHI, MANGO REACTOR CORP., IHAB HAMDI, YUSOFF RAMDAN, RYAD MIFTAH, ASIM SAEED, LANDON NETTLES, ALI HASSAN. ABDUL ASZMAN BIN AMIN, ELIZABETH ARTHUR, AMIRUL AMIN RAZAK, YULIANA YULIANA, YI SHI, YONGHO KO, ZHENG YUAN, HESHAM MANSOUR, JOE ZHANG, JAYA BREAD PEORIA, RAGA VENDRAN S S SITHARAMAN SUBRAMANIAN, NGUYEN HUU DUNG, DOE 55 D/B/A TESTBANKFILES.COM, PHUONG GIA NGUYEN, HA NGUYEN, ADAM PETERSON, VAN QUAN PHAM, MOHAMMED RABABAH, TELFORD LIU, TYRA JOHNSON, ANNA REYNOLD, and DOE 81 D/B/A TESTBANKTREE.COM, Defendants.
[PROPOSED] DEFAULT JUDGMENT, PERMANENT INJUNCTION, AND POST-JUDGMENT RELIEF ORDER
LOUIS S. STANTON, UNITED STATES DISTRICT JUDGE
Plaintiffs Elsevier Inc. (“Elsevier"), Bedford, Freeman & Worth Publishing Group, LLC d/b/a Macmillan Learning (“Macmillan Learning"), Cengage Learning, Inc. (“Cengage”), McGraw Hill LLC (“McGraw Hill''), and Pearson Education, Inc. ("Pearson") (collectively, "Plaintiffs'") initiated this action on October 9, 2020 against Doe Defendants. See Compl, ECF No. 12. 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 October 9, 2020 ("Ex Parte Order"). See Ex Parte Order, ECF No. 28. 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. 25. On November 4, 2020, the Court issued a Preliminary Injunction. See Prelim. Inj., ECF No. 10. After conducting expedited discovery, Plaintiffs filed the Amended Complaint on October 5, 2021, naming Defendants Fahed Quttainah, Mansour Mansour, Ahmed Nassar, Dana Omar Alshafeai, Mahmoud Mahmoud, Ahmed Zuregat. (translated Zhiming Yang), Patrick Smith, Mike Wallace, Aymen Yaseen, Duong Hoang Thi Thuy, Huong Thi Thu Dinh. Thinh Van Can. Manh Cuong Can, Quynh Thi Nguyen, Hoa My Hoang, Cao Thi Ngoc Diep, Eisa Almasry, Zoher Tahami, Hoang Mai, Tung Vu Dang, Chanh Bui Xuan, Huy Quan Vu, Long Thanh Nguyen, Javaria Malik, Nouman Malik, Farah Maqsood, Haseeb Anjum, Yassine Lias, Rosa Laumen, Abdulsalam Mohamad, Bien Tien Nguyen, Sherry Sanders, Waleska Camacho, Susan Ragon, Anjum Akhter, Amna Rizvi, James Cook, Id. Tnaine Abdellah, Maher Jarar d/b/a Online Learning Edu, Michael James Fied, Said Ouakrim, Daniel Lew d/b/a Exam Buddy, LLC, Asaad Qureshi, Mango Reactor Corp., Ihab Hamdi, Yusoff Ramdan, Ryad Miftah, Asim Saeed, Landon Nettles, Ali Hassan, Abdul Aszman Bin Amin, Elizabeth Arthur, Amirul Amin Razak, Yuliana Yuliana, Yi Shi, Yongho Ko (translated Zheng Yuan), Hesham Mansour, (translated Joe Zhang), Jaya Bread Peoria, Ragavendran S S Sitharaman Subramanian, Nguyen Huu Dung, Doe 55 d/b/a testbankfiles.com, Phuong Gia Nguyen, Ha Nguyen, Adam Peterson, Van Quan Pham, Mohammed Rababah, (translated Telford Liu), Tyra Johnson, Anna Reynold, and Doe 81 d/b/a testbanktree.com, as further identified and described in Appendix A hereto (collectively, "Defendants”). See Am. Compl., ECF No. 76. On October 7, 2021, Plaintiffs served the Amended Complaint and Summons on Defendants by email pursuant to the Court's October 9.2020 Alternate Service Order (ECF No. 28), other than with respect to Defendant Sanders, who was personally served on October 20, 2021. See Decl, of Service, ECF No. 79; Affid. of Service, ECF No. 86. No Defendant filed an Answer or otherwise responded to the Complaint or the Amended Complaint.
This Order does not pertain to defendants Magdiel Garcia, Yunaysis Martin Mata, Henry Gonzalez Herrera, and Ekaterina Demidenko. Garcia and Mata filed Answers on December 2, 2021, and Gonzalez Herrera filed an Answer on December 8, 2021. See ECF Nos. 89-91. As to Demidenko, Plaintiffs reached a settlement agreement with her, and the Court has already entered a Final Judgment and Permanent Injunction with respect to her. See May 23, 2022 Order, ECF No. 110.
On January 4 and 26, 2022, the Clerk of Court issued Certificates of Default as to Defendants. See Certificates of Default, ECF Nos. 102, 106.
On June 7, 2022, Plaintiffs submitted a memorandum of law and an attorney declaration with supporting exhibits in support of their motion for a default judgment, a permanent injunction, and post-judgment relief against Defendants ('‘Motion”).
Having reviewed the Amended Complaint, Plaintiffs' papers filed in support of the Motion, 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. Plaintiffs also publish test banks and instructor solutions manuals (“ISMs”) as supplemental materials to their textbooks that provide questions, answers, and solutions for professors' and instructors' use and comprise a key part of the assessment process in higher education.
C. Defendants own, control, and/or operate websites through which they have infringed Plaintiffs' federally registered copyrights in Plaintiffs' textbooks, test banks, and/or ISMs 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 12, as identified in Appendix A, jointly operate their respective Infringing Sites and, therefore, are jointly and severally liable to Plaintiffs as set forth herein.
D. Defendants have been properly served in this action with the Complaint, the Amended Complaint, and the Summonses.
E. 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 January 5 and 26. 2022.
F. The Court has personal jurisdiction over Defendants pursuant to N.Y. C.P.L.R. §§ 302(a)(1) and/or (3).
G. 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").
H. Plaintiffs Cengage and McGraw Hill, who seek damages on default for trademark counterfeiting, are the registrants, pursuant to 15 U.S.C. § 1127, of their respective federally registered trademarks described in Appendix B.
1. Defendants have willfully infringed Plaintiffs' copyrights in Plaintiffs' Authentic Works in connection with Defendants' know ing 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., and have caused Plaintiffs irreparable harm.
J. 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, and have caused Plaintiffs irreparable harm.
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 of which any of the Plaintiffs, or any parent, subsidiary, or affiliate of a Plaintiff, is the registrant (“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, 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 the Lanham Act. respectively, 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 - Fahed Quttainah, Mansour Mansour, Ahmed Nassar, Dana Omar Alshafeai, Mahmoud Mahmoud, Ahmed Zuregat, and Zhiming Yang
$ 4, 500, 000.00
$ 1, 000, 000.00
$ 5.500, 000.00
Group 2 Defendants - Patrick Smith and Mike Wallace
$ 600, 000.00
$ 2, 000, 000.00
$ 2, 600, 000.00
Group 3 Defendants - Aymen Yasen, Duong Hoang Thi Thuy, and Huong Thi Thu Dinh
$ 1, 200, 000.00
$ -
$ 1.200, 000.00
Group 4 Defendants - Thinh Van Can. Manh Cuong Can, and Quynh Thi Nguyen
$ 900, 000.00
$ 1, 000, 000.00
$ 1, 900, 000.00
Group 5 Defendants - Hoa My Hoang and Cao Thi Ngooc Diep
$ 600, 000.00
$ -
$ 600, 000.00
Group 6 Defendants - Eisa Almasry and Zoher Tahami
$ 600, 000.00
$ -
$ 600, 000.00
Group 7 Defendants - Hoang Mai, Tung Vu Dang, Chanh Bui Xuan, Huy Quan Vu. and Long Thanh Nguyen
$ 900, 000.00
$ -
$ 900, 000.00
Group 9 Defendants - Javaria Malik, Nouman Malik, and Farrah Maqsood
$ 750, 000.00
$ 1, 000, 000.00
$ 1, 750, 000.00
Group 10 Defendants - Haseeb Anjum. Yassine Lias, Rosa Laumen, Abdulsalam Mohamad, Bien Tien Nguyen, Sherry Sanders, Waleska Camacho, Susan Ragon, Anjum Akhter, and Amna Rizvi
$ 750, 000.00
$ 3.000.000.00
$ 3, 750, 000.00
Group 11 Defendants - James Cook, Id. Tnaine Abdellah, Maher Jarar, Michael James Fied, Daniel Lew d/b/a Exam Buddy, LLC, and Said Ouakrim
$ 1, 650.000.00
$ 2, 000.000.00
$ 3, 650, 000.00
Group 12 Defendants - Asaad Qureshi and Mango Reactor Corp.
$ 300, 000.00
$ -
$ 300.000.00
Abdul Aszman Bin Amin
$ 1, 200, 000.00
$ -
$ 1.200, 000.00
Adam Peterson
$ 300, 000.00
$ -
$ 300, 000.00
Ali Hassan
$ 600, 000.00
$ -
$ 600, 000.00
Amirul Amin Razak
$ 750.000.00
$ 1, 000, 000.00
$ 1, 750, 000.00
Anna Reynold
$ 450.000.00
$ -
$ 450.000.00
Asim Saeed
$ 300, 000.00
$ -
$ 300, 000.00
Doe 55 d/b/a testbankfiles.com
$ 300.000.00
$ -
$300,000.00
Doe 81 d/b/a testbanktree.com
$ 300.000.00
$ -
$300.000.00
Elizabeth Arthur
$ 300, 000.00
$ -
$300.000.00
Ha Nguyen
$ 150, 000.00
$ -
$150.000.00
Hesham Mansour
$ 150, 000.00
$ -
$150.000.00
Ihab Hamdi
$ 450, 000.00
$ -
$450.000.00
Jaya Bread Peoria
$ 450.000.00
$ -
$450.000.00
(translated Joe Zhang)
$ 150, 000.00
$ -
$150,000.00
Landon Nettles
$ 450, 000.00
$ 1.000, 000.00
$ 1.450, 000.00
Mohammed Rababah
$ 150, 000.00
$ -
$150,000.00
Nguyen Huu Dung
$ 150, 000.00
$ -
$150.000.00
Phuong Gia Nguyen
$ 300, 000.00
$ -
$300,000.00
Ragavendran S S Sitharaman Subramanian
$ 1.200, 000.00
$ -
$ 1, 200, 000.00
Ryad Miftah
$ 150, 000.00
$ -
$150,000.00
(translated Telford Liu)
$ 150, 000.00
$ -
$150,000.00
Tyra Johnson
$ 300, 000.00
$ -
$300,000.00
Van Quan Pham
$ 150, 000.00
$ -
$150.000.00
Yi Shi
$ 300, 000.00
$ -
$300.000.00
Yongho Ko
$ 150.000.00
$ -
$150,000.00
Yuliana Yuliana
$ 150, 000.00
$ -
$150.000.00
Yusoff Ramdan
$ 900, 000.00
$ -
$900.000.00
(translated Zheng Yuan)
$ 300.000.00
$ 1, 000.000.00
$ 1.300, 000.00
TOTAL DAMAGES
$ 23, 400, 000.00
$ 13, 000, 000.00
$ 36, 400, 000.00
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 the ownership and control of Plaintiffs, through 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 the ownership and control of Plaintiffs, through 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 $100,000 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, pursuant to Federal Rule of Civil Procedure 54(b), and because there is no just reason for delay in certifying judgment against the Defendants at issue, the Clerk of Court is directed to enter final judgment against each of the Defendants as set forth herein.
DEFAULT JUDGMENT is hereby entered in favor of Plaintiffs against Defendants Fahed Quttainah, Mansour Mansour, Ahmed Nassar, Dana Omar Alshafeai, Mahmoud Mahmoud, Ahmed Zuregat, (translated Zhiming Yang), Patrick Smith, Mike Wallace, Aymen Yaseen, Duong Hoang Thi Thuy, Huong Thi Thu Dinh, Thinh Van Can, Manh Cuong Can, Quynh Thi Nguyen, Hoa My Hoang, Cao Thi Ngoc Diep, Eisa Almasry, Zoher Tahami, Hoang Mai, Tung Vu Dang, Chanh Bui Xuan, Huy Quan Vu, Long Thanh Nguyen, Javaria Malik, Nouman Malik, Farah Maqsood, Haseeb Anjum, Yassine Lias, Rosa Laumen, Abdulsalam Mohamad, Bien Tien Nguyen, Sherry Sanders, Waleska Camacho. Susan Ragon, Anjum Akhter, Amna Rizvi. James Cook, Id. Tnaine Abdellah, Maher Jarar d/b/a Online Learning Edu, Michael James Fied, Said Ouakrim, Daniel Lew d/b/a Exam Buddy. LLC, Asaad Qureshi, Mango Reactor Corp.. Ihab Hamdi, Yusoff Ramdan, Ryad Miftah, Asim Saeed. Landon Nettles, Ali Hassan, Abdul Aszman Bin Amin, Elizabeth Arthur, Amirul Amin Razak, Yuliana Yuliana. Yi Shi. Yongho Ko, (translated Zheng Yuan). Hesham Mansour, (translated Joe Zhang), Jaya Bread Peoria, Ragavendran S S Sitharaman Subramanian, Nguyen Huu Dung, Doe 55 d/b/a testbankfiles.com, Phuong Gia Nguyen, Ha Nguyen, Adam Peterson, Van Quan Pham, Mohammed Rababah, (translated Telford Liu), Tyra Johnson, Anna Reynold, and Doe 81 d/b/a testbanktree.com in the total amount of $36,400,000, 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 OMITTED
[*]Each Defendant within a Group is jointly and severally liable for the total damages indicated with respect to such Group.