45 F. Supp. 3d 1190
C.D. Cal.2014Background
- Plaintiff Olga Curtis (Idaho) used and sold topical anesthetic marks (TATTOONUMB, SUPERNUMB, DEEPNUMB, and registered NUMB-FAST®) in commerce starting in 2011 and sells via eBay and her website.
- Defendants ShinSachi Pharmaceutical Inc. and Seung-woo Shin (Canada) later applied for and obtained USPTO registrations for TATTOONUMB, SUPER-NUMB, and DEEPNUMB, listing later first-use dates.
- Defendants submitted numerous takedown notices to eBay, Google AdWords, and Curtis’s web host alleging copyright/trademark infringement, prompting removals, eBay strikes, and termination of Google AdWords access; Curtis filed counter-notices and this suit.
- Defendants registered domain names (numbfast.com, supernumb.com, deepnumb.com) and posted false statements about Curtis’s products, redirecting visitors to Defendants’ site.
- Curtis sued (declaratory/injunctive relief, DMCA §512(f) misrepresentation, Lanham Act cancellation, ACPA cybersquatting, trade libel, intentional interference). Defendants were served but did not respond; Court entered default and heard Plaintiff’s default-judgment motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction / notice | Curtis: service proper under Hague/Canadian law; Defendants directed wrongful acts (takedowns, sales, domain registration) at California service providers and residents. | Defendants did not appear; no opposing jurisdictional facts. | Court: service was proper; specific jurisdiction in California exists under the Calder effects test. |
| DMCA §512(f) misrepresentation (takedown notices) | Curtis: Defendants knowingly submitted false takedowns to eBay/Google/host, lacking any copyrighted material, harming her business. | No response. | Court: Adequately pleaded actual-knowledge misrepresentation under §512(f); liability sustained. |
| Lanham Act cancellation / priority of use | Curtis: she used the NUMB marks in commerce before Defendants’ listed dates, so registrations are invalid. | No response. | Court: Curtis is senior user of DEEPNUMB, SUPERNUMB, TATTOONUMB; cancels Registrations Nos. 4290428, 4321983, 4326072. |
| ACPA (cybersquatting), domain transfer, statutory damages | Curtis: Defendants registered confusing domain names in bad faith, posted false statements and diverted consumers; seeks transfer and $100,000 per domain ($300,000 total). | No response. | Court: Found bad faith, ordered transfer/forfeiture of the three domains; awarded $300,000 statutory damages under ACPA. |
| Intentional interference with contract/prospective advantage | Curtis: Defendants knew of contracts with eBay/Google and intentionally induced terminations via false takedowns, causing damages. | No response. | Court: Adequately pleaded elements under California law; claims sustained. |
| Declaratory judgment re: resale/first-sale doctrine | Curtis: resale of DR. NUMB products she lawfully purchased does not infringe under first-sale doctrine. | No response. | Court: Declared Curtis’s resale of Defendants’ products lawful under the first-sale doctrine (modified limited language). |
| Permanent injunction against future takedowns | Curtis: irreparable harm from repeated false notices; seeks injunction barring future false takedowns. | No response. | Court: Denied permanent injunction as unnecessary and impracticable (alternative remedies exist; Defendants abroad; remedies at law adequate). |
Key Cases Cited
- Int'l Shoe Co. v. Washington, 326 U.S. 310 (minimum contacts/due process for personal jurisdiction)
- Calder v. Jones, 465 U.S. 783 (effects test for purposeful direction in tort cases)
- Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (application of Calder/expressly aimed test in Ninth Circuit)
- Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218 (website contacts plus something more for jurisdiction)
- Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217 (priority of use governs trademark ownership)
- DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213 (ACPA elements and bad-faith factors)
- Prestonettes, Inc. v. Coty, 264 U.S. 359 (first-sale doctrine in trademark law)