Opinion
Civil Action 22-cv-4133 (PAE)
06-17-2022
THE PINKFONG COMPANY, INC., Plaintiff v. 7DAY STORE, A PLEASANT TRIP STORE, AIDA TECH LIMITED, ANKANG QINBA MANCHUANG TOYS INDUSTRY OPERATION MANAGEMENT CO., LTD., BABY FAMILY STORE, BOOM PARTY STORE, CHILDREN'S CLOTHES DESIGN STORE, CHILDREN'S WONDER FACTORY STORE, CHINA BEDDING-SET FACTORY STORE, DONGGUAN EVEREST TECHNOLOGY CO., LTD., DONGGUAN MITO TECHNOLOGY CO., LTD., DONGGUAN YIKANG PLUSH TOYS CO., LTD., DROPSHIP PLUSH TOY STORE, EMMABABY BEAUTIFUL BABY STORE, FULA-BAO OFFICIAL STORE, FUZHOU YIBO ELECTRONIC COMMERCE CO., LTD., GUANGDONG JICHENG CRAFT PRODUCTS CO., LTD., GUANGZHOU KINGKONG INDUSTRIAL CO., LTD., HANG WING PLASTIC INDUSTRY CO., LTD., HAPPY HOUSE PARTY STORE, HI PARTY STORE, HMXRBY 2022 CHILDREN S CLOTHING FACTORY STORE, J-L STORE STORE, JOYMEMO PARTY TOWN STORE, KAYOLI BABY STORE, LI DU HOMES STORE STORE, LITCHI BACKDROP STORE, LUCKYHOME66 STORE, MILULU88 STORE, -NAUGHTY BABY STORE, PALALA TOY'S STORE, QIUQIU PARTY STORE, SHENZHEN OXOFUN TECHNOLOGY LIMITED, SHENZHEN YISHANGJU TECHNOLOGY CO., LTD., SHOP 119457639 STORE, SHOP 169276549 STORE, SHOP1100269143 STORE, SHOP912624424 STORE, SWEETHOME376688 STORE, WANGQIANYU STORE, XIAMEN BETTER SUPPLY CHAIN CO., LTD., XIAOBODING STORE, YIWU ALL SHINE IMPORT & EXPORT CO., LTD., YIWU ALLO TRADING CO., LTD., YIWU AULLAN IMPORT & EXPORT CO., LTD., YIWU BAOCHANG TRADING CO., LTD., YIWU JUQI TRADING CO., LTD., YIWU TUYUE ELECTRONIC COMMERCE CO., LTD., YOUNG PLAY STORE, YY WAROOM STORE, ZHAOQING JUNJIE TECHNOLOGY CO., LTD., ZHEJIANG LEADERSHOW HOMETEXTILE CO., LTD and ZHISUXI OFFICIAL STORE, Defendants
Jason M. Drangel (JD 7204) Ashly E. Sands (AS 7715) Danielle S. Futterman (DY 4228)Gabriela N. Nastasi EPSTEIN DRANGEL LLP Attorneys for Plaintiff The Pinkfong Company, Inc.
Jason M. Drangel (JD 7204) Ashly E. Sands (AS 7715) Danielle S. Futterman (DY 4228)Gabriela N. Nastasi EPSTEIN DRANGEL LLP Attorneys for Plaintiff The Pinkfong Company, Inc.
[PROPOSED] PRELIMINARY INJUNCTION ORDER
HON. PAUL A. ENGELMAYER UNITED STATES DISTRICT COURT JUDGE
GLOSSARY
Term
Definition
Plaintiff or Pinkfong
The Pinkfong Company, Inc.
Defendants
7day Store, A pleasant trip Store, AIDA TECH LIMITED, Ankang Qinba Manchuang Toys Industry Operation Management Co., Ltd., Baby Family Store, Boom Party Store, Children's Clothes Design Store, Children's Wonder Factory Store, China Bedding-Set Factory Store, Dongguan Everest Technology Co., Ltd., Dongguan Mito Technology Co., Ltd., Dongguan Yikang Plush Toys Co., Ltd., Dropship Plush Toy Store, Emmababy Beautiful Baby Store, FULA-bao Official Store, Fuzhou Yibo Electronic Commerce Co., Ltd., Guangdong Jicheng Craft Products Co., Ltd., Guangzhou Kingkong Industrial Co., Ltd., Hang Wing Plastic Industry Co., Ltd., Happy House Party Store, Hi party Store, HMXRBY 2022 Children s Clothing Factory Store, J-L Store Store, JOYMEMO Party Town Store, Kayoli baby Store, LI DU Homes Store Store, LITCHI backdrop Store, luckyhome66 Store, MILULU88 Store, -Naughty baby Store, Palala Toy's Store, Shenzhen Yishangju Technology Co., Ltd., Shop 119457639 Store, Shop 169276549 Store, Shop 1100269143 Store, Shop912624424 Store, sweethome376688 Store, WangQianYu Store, Xiamen Better Supply Chain Co., Ltd., Xiaoboding Store, Yiwu All Shine Import & Export Co., Ltd., Yiwu Allo Trading Co., Ltd., Yiwu Aullan Import & Export Co., Ltd., Yiwu Baochang Trading Co., Ltd., Yiwu Juqi Trading Co., Ltd., Yiwu Tuyue Electronic Commerce Co., Ltd., Young Play Store, YY Waroom Store, Zhaoqing Junjie Technology Co., Ltd., Zhejiang Leadershow Hometextile Co., Ltd and ZHISUXI Official 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 Address
244 Madison Ave, Suite 411, New York, New York 10016
Complaint
Plaintiff's Complaint
Application
Plaintiff's 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
Yang Dec.
Declaration of Su Jeong Yang in Support of Plaintiff's Application
Nastasi Dec.
Declaration of Gabriela N. Nastasi in Support of Plaintiff's Application
Baby Shark Content
One of Pinkfong's most successful creations, which is the Pinkfong “Baby Shark” song and viral music video with characters
Baby Shark Applications
U.S. Trademark Serial Application Nos.: 88/396, 786 for registration of “PINKFONG BABY SHARK” for a variety of goods in Class 25; 88/529, 984 for registration of “PINKFONG” for a variety of goods in Classes 2, 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32 and 41; 88/530, 086 for registration of “BABY SHARK” for a variety of goods in Classes 2, 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32 and 41; 88/594, 141 for “PINKFONG” for a variety of goods in Class 5; and 88/594, 122 for “BABY SHARK” for a variety of goods in Class 5
Baby Shark Registrations
U.S. Trademark Registration Nos.: 5, 803, 108 for “BABY SHARK” for a variety of goods in Class 28; 6, 488, 471 for “BABY SHARK” for a variety of goods in Classes 9, 16, 25 and 41; 5, 483, 744 for “PINKFONG” for a variety of goods in Classes 3 and 21; 5, 327, 527 for “PINKFONG” for a variety of goods in Classes 9, 16 and 28; 4, 993, 122 for “PINKFONG” for a variety of goods in Classes 9 and 25; 6, 487, 494 for “PINKFONG” for a variety of goods 2, 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 30 and 41; 6, 138, 374 for pinkfong for a variety of goods in Class 41; 6, 021, 523 for Pinkfong Baby Shark for a
variety of goods in Class 28; 6, 337, 210 for “PINKFONG BABY SHARK” for a variety of goods in Class 21; 6, 343, 519 for “PINKFONG BABY SHARK” for a variety of goods in Class 25; 6, 503, 438 for “PINKFONG” for a variety of goods in Class 5; 6, 495, 600 for for a variety of goods in Classes 9 and 41; and 4, 515, 238 for “BABY SHARK U.S.A” for a variety of goods in Classes 22 and 39
Baby Shark Marks
The marks covered by the Baby Shark Registrations and Baby Shark Applications
Baby Shark Works
U.S. Copyright Registration Nos.: VA 2-130-856, covering Baby Shark; VA 2-130-847, covering Daddy Shark; VA 2-130-854, covering Mommy Shark; VA 2131-983, covering Pink Fong Mascot; SR 823-609, covering Baby Shark (Sound Recording and Music); and PA 2-142-905, covering Baby Shark (Motion Picture)
Baby Shark Products
An extensive worldwide licensing program for a wide variety of consumer products such as toys, sound books, t-shirts, associated with and/or related to the Baby Shark Content
Counterfeit Products
Products bearing or used in connection with the Baby Shark Marks and/or Baby Shark Works, and/or products in packaging and/or containing labels and/or hang tags bearing the Baby Shark Marks and/or Baby Shark Works, and/or bearing or used in connection with marks and/or artwork that are confusingly or substantially similar to the Baby Shark Marks and/or Baby Shark Works and/or products that are identical or confusingly or substantially similar to the Baby Shark 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
WHEREAS, Plaintiff having moved ex parte on May 20, 2022 against Defendants 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;
WHEREAS, on that same day, May 20, 2022, the Court entered an Order granting Plaintiff's Application (“TRO”) which ordered Defendants to appear on June 3, 2022 at 8:30 a.m. to show cause why a preliminary injunction should not issue (“Show Cause Hearing”);
WHEREAS, on May 27, 2022, Plaintiff filed a letter requesting to modify and extend the TRO;
WHEREAS, on that same day, May 27, 2022, the Court entered an Order granting Plaintiff's request to extend and modify the TRO, and rescheduled the Show Cause Hearing to June 17, 2022 at 8:30 a.m. (“May 27, 2022 Order”);
WHEREAS, on June 8, 2022, pursuant to the alternative methods of service authorized by the TRO, Plaintiff served the Summons, Complaint, TRO, all papers filed in support of the Application and the May 27, 2022 Order on each and every Defendant, except for Defendants QiuQiu Party Store, SHENZHEN OXOFUN TECHNOLOGY LIMITED and Shop1100269143 Store;
WHEREAS, on June 13, 2022, Plaintiff filed a letter requesting that the Show Cause Hearing be telephonic;
WHEREAS, on June 13, 2022, the Court entered an Order granting Plaintiff's request making the Show Cause Hearing telephonic;
WHEREAS, on June 16, 2022, Plaintiff served the June 13, 2022 Order on each and every Defendant, except for Defendants QiuQiu Party Store and SHENZHEN OXOFUN TECHNOLOGY LIMITED;
After the service of the June 13, 2022 Order was successful on Defendant Shop1100269143 Store, Plaintiff reattempted service of the Summons, Complaint, TRO and all papers filed in support of the Application and the May 27, 2022 Order on Defendant Shop1100269143 Store, which was successful.
WHEREAS, on June 17, 2022 at 8:30 a.m., Plaintiff appeared at the Show Cause Hearing, however, no Defendants appeared.
ORDER
1. The injunctive relief previously granted in the TRO shall remain in place through the pendency of this litigation, and issuing this Order is warranted under Federal Rule of Civil Procedure 65 and Section 34 of the Lanham Act.
a) Accordingly, Defendants are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court:
i. 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 Baby Shark Marks and/or Baby Shark Works and/or marks and/or artwork that are confusingly and/or substantially similar to, identical to and constitute a counterfeiting or infringement of the Baby Shark Marks and/or Baby Shark Works;
ii. directly or indirectly infringing in any manner Plaintiff's Baby Shark Marks and/or Baby Shark Works;
iii. using any reproduction, counterfeit, copy or colorable imitation of Plaintiff's Baby Shark Marks and/or Baby Shark Works to identify any goods or services not authorized by Plaintiff;
iv. using Plaintiff's Baby Shark Marks and/or Baby Shark Works and/or any other marks that are confusingly similar to the Baby Shark Marks and/or any artwork that is substantially similar to the Baby Shark Works, on or in connection with Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale, selling and/or otherwise dealing in Counterfeit Products;
v. 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;
vi. 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;
vii. 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
viii. knowingly instructing, any other person or business entity in any of the activities referred to in subparagraphs 1(a)(i) through 1(a)(vii) above and 1(b)(i) through 1(b)(ii) and 1(c)(i) below.
b) Accordingly, the Third Party Service Providers and Financial Institutions are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court:
i. secreting, concealing, transferring, disposing of, withdrawing, encumbering or paying Defendants' Assets from or to Defendants' Financial Accounts until further ordered by this Court;
ii. secreting, concealing, destroying, altering, selling off, transferring or otherwise disposing of and/or dealing with any computer files, data, business records, documents or any other records or evidence relating to Defendants' Assets and Defendants' Financial Accounts; and
iii. knowingly instructing any person or business entity to engage in any of the activities referred to in subparagraphs 1(a)(i) through 1(a)(vii) and 1(b)(i) through 1(b)(ii) above and 1(c)(i) below.
c) Accordingly, the Third Party Service Providers are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court:
i. providing services to Defendants, Defendants' User Accounts and Defendants' Merchant Storefronts, including, without limitation, continued operation of Defendants' User Accounts and Merchant Storefronts; and
ii. knowingly instructing any other person or business entity to engage in any of the activities referred to in subparagraphs 1(a)(i) through 1(a)(vii), 1(b)(i) through 1(b)(ii) and 1(c)(i) above.
2. As sufficient cause has been shown, the expedited discovery previously granted in the TRO shall remain in place through the pendency of this litigation, including that:
a) 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 Plaintiff's counsel.
b) Plaintiff may serve requests for the production of documents pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure 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 Plaintiff's counsel.
c) Within fourteen (14) days after receiving notice of this Order, all Financial Institutions who receive service of this Order shall provide Plaintiff's counsel with 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, User Accounts and Merchant Storefronts, including, but not limited to, documents and records relating to:
i. account numbers;
ii. current account balances;
iii. any and all identifying information for Defendants, Defendants' User Accounts and Defendants' Merchant Storefronts, including but not limited to, names, addresses and contact information;
iv. 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;
v. any and all deposits and withdrawals during the previous year from each and every 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 vi. 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.
d) Within fourteen (14) days of receipt of service of this Order, the Third Party Service Providers shall provide to Plaintiff's 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:
i. 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) of the TRO;
ii. 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) of the TRO;
iii. 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 iv. Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale and/or selling of Counterfeit Products, or any other products bearing the Baby Shark Marks and/or Baby Shark Works and/or marks and/or artwork that are confusingly and/or substantially similar to, identical to and constitute an infringement of the Baby Shark Marks and/or Baby Shark Works.
3. As sufficient cause has been shown, and pursuant to FRCP 4(f)(3), service may be made on, and shall be deemed effective as to Defendants if it is completed by one of the following means:
a) delivery of (i) a PDF copy of this Order, and (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 a PDF copy of this Order to Defendants' e-mail addresses as identified by Alibaba and/or AliExpress pursuant to Paragraph V(C) of the TRO; or
b) delivery of a message to Defendants through the system for communications established by the Third Party Service Providers on their respective platforms, notifying where each Defendant will be able to download a PDF copy of this Order.
4. As sufficient cause has been shown, that such alternative service by electronic means ordered in the TRO and herein shall be deemed effective as to Defendants, Third Party Service Providers and Financial Institutions through the pendency of this action.
5. As sufficient cause has been shown, service of this Order shall be made on and deemed effective as to the Third Party Service Providers and Financial Institutions if it is completed by the following means:
a) 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;
b) 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 to members of the Legal & Compliance Department - IP, including Joyce Xiang, joyce.xiang@antgroup.com, Ann, wb-wny616059@antgroup.com, and Yuki, wb-yj965636@antgroup.com;
c) 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;
d) 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 subpoenas@payoneer.com and Holly Clancy and Melissa Godwin, counsel for Payoneer Inc., at Holly.Clancy@us.dlapiper.com and Melissa.Godwin@us.dlapiper.com, respectively; and
e) 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 PingPong Global Solutions Inc.'s Legal Department legal@pingpongx.com.
6. Defendants are hereby given notice that they may be deemed to have actual notice of the terms of this Order and any act by them or anyone of them in violation of this Order may be considered and prosecuted as in contempt of this Court.
7. The $5,000.00 bond posted by Plaintiff shall remain with the Court until a final disposition of this case or until this Order is terminated.
8. This Order shall remain in effect during the pendency of this action, or until further order of the Court.
9. Any Defendants that are subject to this Order may appear and move to dissolve or modify the Order on two (2) days' notice to Plaintiff or on shorter notice as set by the Court.
SO ORDERED.