ABC v. DEF
1:19-cv-07725
S.D.N.Y.Jul 3, 2020Background
- Plaintiff Smart Study Co., Ltd. (owner of PINKFONG/Baby Shark marks and multiple U.S. trademark registrations and copyright registrations) sued numerous online merchants for selling counterfeit Baby Shark products.
- Defendants are dozens of individual and business sellers, primarily located in China, operating merchant storefronts on eBay and other online marketplaces and failing to appear or respond in five related cases.
- Plaintiff obtained clerks’ defaults and moved for default judgments asserting claims under the Lanham Act (counterfeiting, infringement, false designation of origin/unfair competition), the Copyright Act, and state law, and sought statutory damages ($50,000 per defaulting defendant under 15 U.S.C. § 1117(c)), permanent injunctions, and asset restraints.
- The court accepted the well-pleaded allegations as true for liability, found personal jurisdiction based on defendants’ online sales into New York, and concluded the allegations established trademark and copyright infringement and related claims as a matter of law.
- The court found defendants’ defaults and the similarity of goods established willfulness, awarded statutory damages of $50,000 per defaulting defendant, entered permanent injunctions (Lanham Act and Copyright Act), and authorized continuance/post-judgment asset restraints and electronic service procedures.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction | Defendants transact business in NY by offering/selling counterfeit goods via online storefronts viewable and purchasable by NY consumers. | No appearance or opposition (default). | Court: CPLR §302(a)(1) and due process satisfied; jurisdiction proper based on purposeful online sales into NY. |
| Trademark liability (Lanham Act counterfeiting/infringement) | Smart Study owns valid registrations and defendants sold virtually identical counterfeit products causing likelihood of confusion. | Default/no defense. | Court: Liability established—registered marks + counterfeits = infringement/counterfeiting. |
| Copyright liability | Smart Study holds valid registrations and products sold by defendants copy original Baby Shark works. | Default/no defense. | Court: Copyright ownership and unauthorized copying established; liability found. |
| Remedies: statutory damages, injunctions, asset restraints | Seeks $50,000 statutory damages per defaulting defendant under §1117(c); permanent injunctions and asset restraints to prevent ongoing infringement. | No appearance. | Court: $50,000 per defendant is "just" for willful counterfeiting; permanent injunctions and continuance/post-judgment asset restraints granted; post-judgment interest awarded. |
Key Cases Cited
- City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114 (2d Cir. 2011) (two-step default/default-judgment framework; defaults not admissions of damages)
- New York v. Green, 420 F.3d 99 (2d Cir. 2005) (Clerk may enter default under Rule 55(a))
- Grand River Enters. Six Nations, Ltd. v. Pryor, 425 F.3d 158 (2d Cir. 2005) (personal jurisdiction analysis overview)
- Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2d Cir. 2010) (online sales into forum can satisfy CPLR §302(a)(1))
- Finkel v. Romanowicz, 577 F.3d 79 (2d Cir. 2009) (on default, court accepts well-pleaded allegations but must decide legal sufficiency)
- Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011) (elements of a copyright claim)
- Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001) (registration is prima facie evidence of copyright ownership)
- Credit Lyonnais Secs. (USA), Inc. v. Alcantara, 183 F.3d 151 (2d Cir. 1999) (court must ascertain damages with reasonable certainty after default)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunction prerequisites for equitable relief)
- All-Star Mktg. Grp., LLC v. Media Brands Co., Ltd., 775 F. Supp. 2d 613 (S.D.N.Y. 2011) (statutory damages guidance for willful counterfeiting)
- CommScope, Inc. v. Commscope (U.S.A.) Int’l Grp. Co., Ltd., 809 F. Supp. 2d 33 (N.D.N.Y. 2011) (injunctions following default in trademark cases)
- Hounddog Prods., L.L.C. v. Empire Film Grp., Inc., 826 F. Supp. 2d 619 (S.D.N.Y. 2011) (permanent injunctions for copyright infringement after default)