Spike Cable Networks Inc. v. Yellowstone Merch
1:21-cv-06468-LLS
S.D.N.Y.Nov 2, 2021Background:
- Plaintiff Spike Cable Networks Inc. (Paramount Network) owns the YELLOWSTONE trademarks and holds separate copyright registrations for individual episodes of the TV series Yellowstone; it sells licensed Yellowstone-branded merchandise.
- Defendants registered the domains <YellowstoneMerch.com> and <YellowstoneOutfits.com>, used a privacy service, copied Plaintiffs' copyrighted images and character names, imitated the Y logo, and sold unlicensed "replica" merchandise.
- Plaintiff sent cease-and-desist communications; Defendants initially removed some images, then reposted infringing material, launched a new site after promising compliance, and added new infringing content after suit was filed.
- Plaintiff obtained court permission to serve defendants by email; Defendants were properly served but did not appear, answer, or defend (entry of default entered).
- The Court found Defendants’ conduct willful, awarded statutory damages and equitable relief, and entered a permanent injunction plus domain-transfer and destruction/impoundment obligations; attorneys' fees were denied but post-judgment interest was ordered.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction & service of process | New York jurisdiction: defendants operated business from NY address; email service authorized by the Court | No response; no contest | Court exercised general and specific personal jurisdiction over both defendants and approved email service as valid |
| Copyright infringement liability | Plaintiff owns registrations; defendants copied episode stills, character names, and made derivative uses; infringement was willful | No response | Defendants liable for willful copyright infringement; Christopher personally liable |
| Trademark infringement & ACPA/domain-name liability | Plaintiff owns registered Yellowstone marks; domains are identical/confusingly similar and registered/used in bad-faith to profit | No response | Defendants liable under Lanham Act and ACPA; domain names to be transferred; Christopher personally liable |
| Remedies: statutory damages, injunctive relief, fees, domain transfer | Sought $150,000 per willful infringement (17 works) and statutory ACPA damages; permanent injunction, domain transfer, destruction/impoundment, attorneys' fees | No response | Awarded $2,550,000 for copyright (max per work) + $20,000 for two ACPA domain damages = $2,570,000 joint & several; permanent injunction, domain transfer, impoundment/destruction ordered; attorneys' fees denied; post-judgment interest awarded |
Key Cases Cited
- Ford Motor Co. v. Montana Eighth Judicial Dist. Ct., 141 S. Ct. 1017 (2021) (personal-jurisdiction principles for corporations domiciled or doing business in forum)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (standards for purposeful availment and specific jurisdiction)
- Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2d Cir. 2010) (interactive website commercial activity supports personal jurisdiction in New York)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (Polaroid factors for likelihood of consumer confusion)
- Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366 (2d Cir. 1993) (separately registered television episodes are distinct "works" for statutory damages)
- WPIX, Inc. v. ivi, Inc., 691 F.3d 275 (2d Cir. 2012) (an infringer cannot complain about loss of ability to offer infringing product when injunction issued)