384 F. Supp. 3d 941
E.D. Ill.2019Background
- Entertainment One UK Ltd. (Plaintiff) owns registered U.S. trademarks for PEPPA PIG (word mark) and a Peppa Pig design mark and markets licensed Peppa Pig merchandise, including kitchen items.
- Plaintiff sued hundreds of online sellers for trafficking counterfeit Peppa Pig goods; most defendants defaulted or were dismissed; two eBay sellers remain: luckyjerryxiang (Jian Feng) and 6guys9 (HaiJie Lin), located in China.
- Each defendant sold a “Peppa Pig Head Cookie Cutter” (3D‑printed outline of Peppa Pig’s head) via eBay and accepted PayPal payments to Illinois; neither was an authorized seller.
- Plaintiff moved for summary judgment on trademark infringement (15 U.S.C. § 1114), false designation of origin (15 U.S.C. § 1125), and Illinois deceptive trade practices; requested statutory damages ($100,000 each), attorneys’ fees, costs, and a permanent injunction; defendants sought termination of the preliminary injunction and lifting of an asset freeze.
- Defendants failed to properly respond to Plaintiff’s Local Rule 56.1 statement; the court treated Plaintiff’s material facts as admitted and granted summary judgment on liability for counterfeiting and related claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Protectable mark / standing | Peppa Pig marks are registered and prima facie valid | Denies infringement but not registration/validity | Marks are registered and protectable; no dispute on validity |
| Counterfeiting / likelihood of confusion | Defendants sold counterfeit goods using the PEPPA PIG name and a design substantially indistinguishable from the registered design; presumption of confusion applies | Claims they merely liked the design, sold only one item, and did not intend to infringe | Court found goods counterfeit, applied presumption, and under seven‑factor test found likelihood of confusion (6 of 7 factors favor plaintiff) |
| Willfulness and statutory damages | Defendants acted willfully (3D printing, long eBay histories, no due diligence); seeks high statutory damages | Denies intent to counterfeit; points to low sales volume | Court inferred willfulness (reckless indifference); reduced requested statutory award by half and awarded $50,000 per defendant ($100,000 total) |
| Injunction, asset freeze, attorneys' fees | Requests permanent injunction, continued asset restraint, and attorneys' fees as prevailing party in an exceptional counterfeiting case | Seeks termination of preliminary injunction and release of frozen PayPal funds | Preliminary injunction and asset restraint continued; permanent injunction granted; attorneys’ fees to be awarded as case is exceptional and no extenuating circumstances were shown |
Key Cases Cited
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment standard)
- Celotex Corp. v. Catrett, 477 U.S. 317 (moving party’s burden on summary judgment)
- AutoZone, Inc. v. Strick, 543 F.3d 923 (seven‑factor likelihood‑of‑confusion test)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (trademark/UDTPA element overlap)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (weight of actual confusion evidence)
- Chi‑Boy Music v. Charlie Club, Inc., 930 F.2d 1224 (discretion in awarding statutory damages)
- Sorensen v. WD‑40 Co., 792 F.3d 712 (bad faith intent/burdens in palming off)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (injunctive relief prerequisites)