809 F. Supp. 2d 127
E.D.N.Y2011Background
- CJ Products LLC and Ontel Products Corp sue Snuggly Plushez LLC and Berkant Keiskbas in the EDNY for copyright and trademark infringement regarding the Pillow Pets line; CJ owns design copyrights and licenses to Ontel; eight registrations within five years create presumptive validity; two registrations are older but given weight in court’s discretion; defendants allegedly copied designs and used confusing marks and AdWords to direct traffic; preliminary injunction granted in full for copyright, trademark, and related false advertising/AdWords claims.
- CJ alleges Pillow Pets marks (MY PILLOW PETS, IT'S A PILLOW, IT'S A PET, etc.) and Pillow Pets domain/branding; Snuggly Plushez allegedly operated a competing line and used similar marks and AdWords to confuse consumers; CJ and Ontel seek to restrain manufacturing, marketing, advertising, and sale of infringing plush toys and the use of Pillow Pets-related marks; the court applies the Salinger-eBay framework for injunctions in IP contexts, including trademark and false advertising claims.
- The court analyzes ownership and infringement of copyrights, validity and protectability of marks (registered and unregistered Pillow Pets marks), likelihood of confusion for false designation and false advertising claims, irreparable harm, balance of hardships, public interest, and an award of a bond; discovery supervision is referred to in a separate order.
- The motion for a preliminary injunction is granted on all asserted claims, with the order to be filed separately; the case is recommitted to the Magistrate Judge for discovery supervision.
- The underlying dispute centers on the alleged use of Pillow Pets marks and designs in a manner that risks consumer confusion and harms plaintiffs’ goodwill and market position.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether CJ’s copyrights are valid and infringed | CJ owns valid copyrights, with eight registrations creating prima facie validity | CJ’s copyrights lack originality/are functional | Publishs upheld: copyrights valid and infringing likelihood found |
| Whether plaintiffs established irreparable harm and inadequate remedies at law | Irreparable harm from consumer confusion and loss of goodwill | Damages could compensate | Irreparable harm established; legal remedies inadequate |
| Whether false advertising under Lanham Act §43(a) is likely | Defendants’ use of As Seen On TV, favorable reviews, and authentic/original claims mislead | Expressions are permissible marketing terms; no falsehood | Likely to prevail on false advertising theories; injunction granted |
| Whether false designation of origin and AdWords usage infringe under Lanham Act | Defendants’ Pillow Pets mark usage confuses consumers and diverts traffic | AdWords usage is permissible descriptive use | Likely to succeed; injunction granted for false designation and AdWords conduct |
| Whether laches/estoppel bar equitable relief | No undue delay; ceasing conduct promptly | Delay prejudicial | Laches/estoppel not bar to relief |
Key Cases Cited
- eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (rejected presumption; requires balancing of harms and irreparable injury for injunctions)
- Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) (abrogated old copyright standard; requires irreparable harm and other four-factor test via eBay framework)
- Winter v. NRDC, 555 U.S. 7 (U.S. 2008) (establishes likelihood of irreparable harm and standards for injunctions)
- Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144 (2d Cir. 2007) (false advertising requires materiality and potential deception)
- Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) (literal falsity and false-by-implication analysis for ads)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (classification of marks for strength/distinctiveness (Abercrombie spectrum))
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (Polaroid factors for likelihood of confusion)