Shanghai Zhenglang Technology Co., Ltd v. Mengku Technology Co., Ltd
2:20-cv-05209
E.D.N.YDec 18, 2020Background
- Plaintiff Shanghai Zhenglang Technology Co., Ltd. owns the federally registered trademark "LinkDesks" and distributes game apps on Google Play.
- Plaintiff alleges defendants Qianan Li and Mengku used "LinkDesks" in the package names and Google Play URLs for two games (Bubble Shooter Genies and Bubble Shooter Legend), causing trademark infringement.
- A 2018 Transfer Agreement/Shareholder Resolution from Hangzhou Huiwan Tech split assets: the Bubble Shooter games and their Google Play URLs (which include the LinkDesks wording) were assigned to Li; LinkDesks the trademark was later assigned to Plaintiff.
- Plaintiff obtained a temporary restraining order (after reconsideration) disabling the apps and freezing associated Google Play assets; Plaintiff then moved for a preliminary injunction to continue that relief.
- Defendants contend the Transfer Agreement permits their continued use of the URLs/package names, assert equitable defenses (estoppel, acquiescence, laches, unclean hands), and raise a fair- use/technical-use argument; the court found the record ambiguous and these defenses colorable.
- The Court denied the preliminary injunction, finding Plaintiff failed to make the required clear showing on likelihood of success and irreparable harm; the balance of equities and public interest did not favor the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of Transfer Agreement / Assignment | Transfer did not assign LinkDesks mark to Li; Plaintiff owns mark and thus Defendants cannot use it | Transfer expressly assigned the Bubble Shooter games and their Google Play URLs (showing LinkDesks wording) to Li | Assignment language is ambiguous; a plausible reading supports Li's right to use the existing URLs/package names, so Plaintiff not likely to succeed on merits |
| Trademark infringement / likelihood of confusion | Use of LinkDesks in URL/package name will confuse users and infringes trademark | Use is an internal/hidden identifier on Google Play and may not cause consumer confusion; fair use defense plausible | Court cannot find a clear likelihood of confusion at this stage; Romeo & Juliette analogy not controlling here |
| Equitable defenses (estoppel, laches, acquiescence) | Plaintiff timely enforced rights after assignment of the mark to it | Plaintiff (via its president Ji) signed the shareholder resolution and waited years before objecting, supporting estoppel/laches/acquiescence defenses | Defendants raised colorable equitable defenses that further undermine Plaintiff's likelihood of success |
| Irreparable harm, balance of equities, public interest | Continued use harms trademark and can be cured by simple package-name change; injunction warranted | Plaintiff delayed and the games have used these URLs for years; changing package name is technically costly and disruptive | Plaintiff failed to show imminent irreparable harm; court could not conclude the equities/public interest favor injunction |
Key Cases Cited
- Winter v. Nat'l Res. Def. Council, 555 U.S. 7 (2008) (sets the four-part preliminary injunction standard)
- Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) (preliminary injunction standard in trademark context)
- Moore v. Consol. Edison Co., 408 F.3d 506 (2d Cir. 2005) (movant must make a "clear showing" for extraordinary relief)
- Buffalo Forge Co. v. Ampco-Pittsburgh Corp., 638 F.2d 568 (2d Cir. 1981) (preliminary injunction is an extraordinary and drastic remedy)
- Coscarelli v. ESquared Hospitality LLC, 364 F. Supp. 3d 207 (S.D.N.Y. 2019) (contract ambiguity can preclude a showing of likelihood of success)