1:23-cv-22376
S.D. Fla.Aug 21, 2023 UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
CASE NO.: 1:23-cv-22376-KMW-LMR
THE SMILEY COMPANY SPRL,
Plaintiff,
v.
THE INDIVIDUALS, PARTNERSHIPS AND
UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A,”
Defendants.
/
REPORT AND RECOMMENDATION ON PLAINTIFF’S
MOTION FOR PRELIMINARY INJUNCTION
THIS MATTER comes before the Court on the Plaintiff’s Motion for Entry of Preliminary
Injunction (“Plaintiff’s Motion”). This matter was referred to the Undersigned United States
Magistrate Judge for a Report and Recommendation pursuant to 28 U.S.C. § 636(b)(1). The Plaintiff,
The Smiley Company SPRL (“Plaintiff”), moves for entry of a preliminary injunction against the
Defendants, Individuals, Partnerships, and Unincorporated Associations Identified on Schedule “A”
[ECF No. 20-1] to Plaintiff’s Complaint [ECF No. 1] (collectively “Defendants”), and an order
restraining the financial accounts used by Defendants pursuant to 15 U.S.C. § 1116, 17 U.S.C. § 502,
Federal Rule of Civil Procedure 65, and The All Writs Act, 28 U.S.C. § 1651(a).
The Court convened a hearing on August 21, 2023, at which counsel for Plaintiff was present
and available to present evidence supporting the Motion. Several recently dismissed Defendants
appeared and inquired as to their status in this case. The following Defendants made an appearance:
Defendant numbers 60, 83, 99, 314, 397, 411, 425, 688, 694, 535, and 541. All of these Defendants,
with the exception of Defendants 60 and 99, had been voluntarily dismissed from the case. Plaintiff
acknowledged that it was negotiating with some of the remaining Defendants listed on the attached
Schedule A. [ECF. No. 53].
The Court has carefully considered the Motion for Preliminary Injunction, the record, and the
governing law. For the reasons stated below, it is RECOMMENDED that Plaintiff’s Motion for
Preliminary Injunction be GRANTED with respect to the Defendants listed on Schedule A. [ECF.
No. 53].
I. FACTUAL BACKGROUND1
Plaintiff is the owner of the following trademarks, which are valid and registered on the
Principal Register of the United States Patent and Trademark Office. Plaintiff is the owner of the
following trademarks, which are valid and registered on the Principal Register of the United States
Patent and Trademark Office (collectively the “Smiley Marks”):
1 The factual background is taken from the Plaintiff’s Complaint, Motion, and supporting
Declarations submitted by the Plaintiff.
Registration Registration
Trademark Classes / Goods
Number Date
IC 003. US 001 004 006 050 051
052. G & S: non-medicated cosmetic
preparations for slimming purposes,
namely, skin creams, skin lotions,
[skin pomades, rust removing
preparations,] sun-tanning
preparations for cosmetic purposes,
[fabric softeners for laundry use,
shaving soap, cotton sticks for
cosmetic purposes, skin whitening
creams, laundry bleach, scented
wood, floor polish, hair color, hair
dyes, hair waxing lotions, artificial
eyelashes, shoe care products,
namely, shoe wax, shoe polish, and
shoe cream, depilatory wax, parquet
floor wax, polishing wax for use on
furniture and automobiles, leather
SMILEY 2,747,618 08/05/2003
preservatives, namely, polishing
creams and waxes, cosmetic kits
comprised of eyelash pencils, eyelid
pencils, namely], shampoos, [drain
openers, general purpose scouring
powders, decolorants for cosmetic
purposes, namely, hair decolorants,
degreasing preparations not used in
the manufacturing process for use on
floors, make-up removing
preparations, depilatory creams,
stains removers, paint removers, rust
and mineral removing cleaning
preparations, laundry detergents,]
toilet water, [anti-static dryers sheets,
emery paper, emery cloth, emery
boards, polish for furniture and
flooring, incense, windscreen
cleaning preparations,] essentials oils
for personal use[, hair lacquer, hair
bleaching preparations, sachets for
perfuming linen, hair lotions, false
nails, cotton balls for cosmetic
purposes, abrasive paper for use on
the nails, wallpaper cleaning
preparations, paint stripper, pumice
stones for personal use, adhesives for
cosmetic use, namely, adhesives for
use in connection with artificial hair,
shaving preparations, varnish-
removing preparations]. FIRST USE:
20010226. FIRST USE IN
COMMERCE: 20010226
IC 028. US 022 023 038 050. G & S:
Toys, namely plush stuffed toys and
plastic balls, latex balls and
SMILEY 2,566,529 05/07/2002 squeezable balls [ ; sporting goods,
namely knee pad ]. FIRST USE:
19880516. FIRST USE IN
COMMERCE: 19880516s
IC 003. US 001 004 006 050 051
052. G & S: Bubble bath, Deodorants
for personal use, lotions, false nails.
FIRST USE: 20150401. FIRST USE
IN COMMERCE: 20180125
IC 004. US 001 006 015. G & S:
candles. FIRST USE: 19720717.
FIRST USE IN COMMERCE:
20180125
IC 005. US 006 018 044 046 051
SMILEY 5,453,732 052. G & S: Food for babies,
adhesive bandages, air deodorant,
feminine hygiene pads, additive for
nutritional purposes, sanitary
napkins, car deodorants, vitamin
supplements; babies' disposable
diapers. FIRST USE: 19720717.
FIRST USE IN COMMERCE:
20180125
IC 006. US 002 012 013 014 023 025
050. G & S: metal keys for locks.
FIRST USE: 19720717. FIRST USE
IN COMMERCE: 20180125
IC 008. US 023 028 044. G & S:
Spoons, hand tools, beard clippers,
scissors, nail clippers, hair removing
tweezers, ice picks, nail files,
manicure sets, hammers, pedicure
sets, pliers, electric and non-electric
razors, screwdrivers and drills;
electric and non-electric flat irons.
FIRST USE: 19720717. FIRST USE
IN COMMERCE: 20180125
IC 009. US 021 023 026 036 038. G
& S: Weighing apparatus, scales,
calculating machines, sound
amplifiers, anti-glare glasses,
computer terminals, electric, neon or
luminous signs, photographic
cameras, magnetic encoded cards,
cartridges for video games, life
jackets, computer keyboards,
electrical connectors, contact lenses,
electrical sockets, eyeglass cases,
blank magnetic data carriers, fire
extinguishers, loudspeakers,
telephone apparatus, sunglasses,
computer memories, computer
peripheral mouse pads, computer
mouse, television sets, video
cameras, and video game cartridges.
FIRST USE: 20121201. FIRST USE
IN COMMERCE: 20180125
IC 014. US 002 027 028 050. G & S:
Precious metals and their alloys sold
in bulk, clocks, works of art of
precious metal, jewelry, jewelry
boxes, earrings, watches, bracelets,
cuff links, brooches, necklaces.
FIRST USE: 20150601. FIRST USE
IN COMMERCE: 20180125
IC 016. US 002 005 022 023 029 037
038 050. G & S: Adhesive tapes for
stationery or household purposes,
posters, photo albums, scrapbooks,
lithographic prints, stickers, loose-
leaf binders, boxes of cardboard or
paper, rubber stamps, calendars,
printing sewing patterns, note books,
business cards, postcards, tags for
index cards, iron-on transfers and
plastic transfers, decalcomanias,
graphic art reproductions, stationery
folders, writing materials, namely,
note books, post cards, ball-point
pens, anniversary books, appointment
books, autograph books, baby books,
sketch books, sketch pads,
bookmarks, daily planners, date
books, address books, diaries,
engagement books, envelopes,
electric and non- electric erasers,
fountain pens, pen or pencil holders,
pen or pencil trays, pencils, artists'
pencils, drawing pencils, pencil
boxes, pencil cases, pen cases,
stationery, and envelopes, rubber
erasers, wrapping paper, pencils,
stationery envelopes, blank or
partially printed paper labels,
announcement cards, writing paper,
school supplies, namely, notebooks,
pencil cases, toilet paper, pictures,
printed matter, namely, magazines in
the field of art, lithographs, table
linen of paper, handkerchiefs of
paper, stationery, paper stationery,
paper banners, paper bags,
unmounted photographs, art prints,
pen and pencil trays, printed
publications, namely, magazines,
newspapers, graphic art
reproductions, plastic or paper
envelopes, bags and pouches for
merchandise packaging, writing pads,
fountain pens, and paper or plastic
transparencies, paper towels,
embroidery design patterns, table
mats of paper, pencil sharpeners.
FIRST USE: 20130901. FIRST USE
IN COMMERCE: 20180125
IC 021. US 002 013 023 029 030 033
040 050. G & S: Combs, toilet
brushes, water troughs, thermal
insulated containers for food, terra-
cotta or glass, figurines, table plates
not of precious metal, brooms,
cocktail picks, drinking flasks for
travelers, drinking vessels, beer
mugs, soap boxes, dispensing paper
towels for household use, non-
electric kettles, bottles sold empty,
bottle openers, pitchers not of
precious metal, non-electric
toothbrushes, perfume burners,
coffee services, not of precious
metal, egg cups not of precious
metal, beverage glassware, jugs,
cookery molds, cooking utensils,
toothpicks, cutting boards for the
kitchen, trivets, toilet paper holders,
soap dispensers, sponges for
household purposes, scouring
sponges for toilets, earthenware
basins in the nature of bowls,
household utensils, flower pots;
gloves for household purposes,
gloves for gardening, ice buckets,
non-electric portable coolers for food
and beverages, goblets, not of
precious metal, mugs, not of precious
metal, bottle- gourds, not of precious
metal, crumb trays, dishes, soap
holders, sponge holders, ironing
boards, pepper shakers, garbage cans,
trash cans, napkin rings, thermal
insulated bags for food or beverages,
statutes, statuettes, table plates,
napkin holders, non-metal piggy
banks, earthenware mugs, drinking
glasses, tableware services not of
precious metal. FIRST USE:
20130901. FIRST USE IN
COMMERCE: 20180125
IC 025. US 022 039. G & S:
Clothing, namely, suits, dresses, t-
shirts, sweatshirts, raincoats, shorts,
stockings, cloth bibs, berets, hosiery,
boots, suspenders, pants, baseball
caps, golf caps, athletic shoes,
masquerade costumes, hats, babies
pants, neckties, sashes for wear,
scarves, gloves, layettes, slippers, ear
muffs, aprons, sportswear, namely,
jogging suits, and training suits.
FIRST USE: 20121201. FIRST USE
IN COMMERCE: 20180125
IC 026. US 037 039 040 042 050. G
& S: Hair accessories, electric hair
curlers. FIRST USE: 19720717.
FIRST USE IN COMMERCE:
20180125
IC 027. US 019 020 037 042 050. G
& S: carpets. FIRST USE: 20141201.
FIRST USE IN COMMERCE:
20180125
IC 028. US 022 023 038 050. G & S:
Games, playthings, namely, toys in
the nature of flying disks, sporting
articles, golf balls, handballs,
playground balls, soccer balls,
baseballs, basketballs, bowling balls,
footballs, tennis balls, rubber balls,
sports balls, table tennis balls, volley
balls, beach balls balloons, toys,
namely, jigsaw puzzles; Christmas
tree ornaments, party favors in the
nature of small toys; namely,
confetti. FIRST USE: 20121201.
FIRST USE IN COMMERCE:
20180125
IC 029. US 046. G & S: Meat. FIRST
USE: 19720717. FIRST USE IN
COMMERCE: 20180125
IC 030. US 046. G & S: Sugar, pasta,
corn flakes, chewing gum. FIRST
USE: 20170301. FIRST USE IN
COMMERCE: 20180125
IC 032. US 045 046 048. G & S:
Mineral and aerated waters, fruit
juices. FIRST USE: 19720717.
FIRST USE IN COMMERCE:
20180125
IC 034. US 002 008 009 017. G & S:
Cigarette cases, cigarette lighters,
ashtrays not of precious metal,
cigarette holders, not of precious
metal, ashtrays of precious metal for
smokers. FIRST USE: 20141201.
FIRST USE IN COMMERCE:
20180125
IC 035. US 100 101 102. G & S:
Advertising and marketing. FIRST
USE: 20150601. FIRST USE IN
COMMERCE: 20180125
IC 036. US 100 101 102. G & S:
Credit card services, monetary
exchange. FIRST USE: 19720717.
FIRST USE IN COMMERCE:
20180125
IC 038. US 100 101 104. G & S:
Telecommunication services, namely,
personal communication. FIRST
USE: 20170701. FIRST USE IN
COMMERCE: 20180125
IC 003. US 001 004 006 050 051
052. G & S: Soaps, bath gels,
makeup, perfumes, body lotions, nail
care preparations, cosmetic
SMILEY 2,970,055 07/19/2005 preparations for skin renewal, hair
shampoos, hair gel. FIRST USE:
20010226. FIRST USE IN
COMMERCE: 20010226
IC 009. US 021 023 026 036 038. □
& S: Downloadable computer
software program for use in
SMILEY 3,016,430 11/15/2005 attaching, icons or other symbols, in
e-mail correspondence and instant
messaging. FIRST USE: 20001200.
FIRST USE IN COMMERCE:
20001200
IC 025. US 022 039.G & S:
Clothing, namely, pullovers,
SMILEY 2,801,529 12/30/2003 | [trousers] and shirts. FIRST USE:
19700000. FIRST USE IN
COMMERCE: 19700000
IC 016. US 002 005 022 023 029 037
038 050. G & S: Printed matter,
namely, children's books, stationery,
greeting cards, note cards, post cards,
posters, newspapers, printed
calendars, printed forms, printed
invitations, photo albums,
scrapbooks, photographs;
bookbinding materials, namely,
bookbinding papers or cloth,
bookbinding adhesive tape or glue;
adhesive tapes for stationery or
household purposes; artists’ materials,
¢ ¢ namely, artists' paintbrushes, typeset
printing blocks, printing type, art
pads, art paper, paper, cardboard,
5,348,135 12/05/2017 | dressmaking patterns, drawings,
watercolors, paintings both framed
and unframed; lithographic or
engraved art objects; writing
implements, namely, pens, pencils,
fountain pens, artists’ pencils;
drawing instruments, namely,
charcoal pencils, drawing pencils,
pencil cases; typewriters and office
requisites except furniture, namely,
magnetic boards, file folders, desktop
stationery cabinets; Printed
instructional, educational, and
teaching materials in the field of
primary education; cardboard or
paper boxes; paper products, namely,
paper handkerchiefs, paper towels,
11
paper table linen, toilet paper, babies'
disposable napkins of paper and
cellulose; bags, namely, paper or
plastic for use as gift bags, paper
bags or pouches, paper and plastic
bags for merchandise packaging
purposes, paper and plastic garbage
bags; pamphlets in the field of
fashion, home, decorating and
licensing; prospectuses in the field of
fashion, home, decorating and
licensing
IC 018. US 001 002 003 022 041. G
& S: Leather and imitation leather,
animal skins and hides; trunks and
suitcases; umbrellas, parasols and
walking sticks; whips, harness and
saddlery; wallets, purses not of
precious metal; handbags, backpacks,
wheeled bags; sports bags for
climbers; sports bags for campers;
traveling bags, beach bags, school
bags, unfitted vanity cases; collars
and clothing for animals, namely, pet
clothing and collars; mesh shopping
bags, mesh shopping nets for use in
an automobile; leather bags or
pouches
IC 027. US 019 020 037 042 050. G
& S: Bath mats; Rugs; Floor mats for
SMILEY 6,428,755 05/14/2019 vehicles. FIRST USE: 20110228.
FIRST USE IN COMMERCE:
20190331
See Declaration of Nicolas Loufrani in Support of Plaintiff’s Motion for TRO (“Loufrani Decl.”)
[ECF No. 7-2 at ¶ 9 and Schedule B [ECF No. 7-3]; see also Complaint (ECF No. 1), at ¶ 25. The
Smiley Marks are used in connection with the design, marketing, and distribution of high-quality
goods in the category identified above. See id.
Plaintiff is also the owner of the following copyrights registered in the United States of
America:
Registration Registration Title of Work
Number Date
VAu000446942 1999 Andazia International--Millennium 2000 T-shirts : no.
280-283, 287-289.
VAu000446948 1999 Berkshire--Smiley babies outerwear, socks, Smiley
rainwear, umbrellas, Smilette : no. BERK001-BER019.
VAu000446941 1999 Commonwealth toy--Smiley Babies packaging labels : no.
CTN01-CTN05.
VAu000304029 1998 Freeze/Millennium 2000 T-shirts : no. FR001-
FR118.
VAu000446947 1999 Freeze--Millennium 2000 T-shirts : no. FR119-FR168.
VAu000446946 1999 Home Group, Inc.--Smiley headwear : no. HG001-HG004.
VAu000456386 1999 Jacques Moret Intimates/SHB intimates ... : no. JM045-
JM068.
VAu000446943 1999 Maru artwork--Smiley characters, millennium 2000 : no.
MARU01-MARU06.
VAu000446940 1999 Millennium 2000 socks : no. 6209-6248, 6250-6256.
VAu000456387 1999 NTD Apparel, Inc. : no. NTD181-NTD280.
VAu000446944 1999 Pro Specialties Group--Millennium 2000 : no. PS005-
PS006.
VAu000446945 1999 Ralph Marlin--Millennium 2000 boxers : no. RM001-
RM005.
VAu000440872 1998 "Smiley for kids" December 98.
PAu002457240 1999 Smiley forever.
PAu002457241 1999 Smiley trend book--fall/winter 2000-01.
See Loufrani Decl. at ¶ 10; Complaint, at ¶ 32. The copyrighted works identified in
Schedules C [ECF No. 7-4] to the Loufrani Declaration hereto are collectively referred to herein
as the “Copyrighted Works.”
The Defendants, through the various Internet based e-commerce stores operating under the
seller identities identified on Schedule “A” to the Complaint (the “Seller IDs”), have advertised,
promoted, offered for sale, or sold goods bearing and/or using what the Plaintiff has determined to
be counterfeits, infringements, reproductions, or colorable imitations of the Smiley Marks and
Copyrighted Works. See Loufrani Decl. at ¶¶ 15-18; Declaration of Richard Guerra (“Guerra
Decl.”) in Support of Plaintiff’s Motion for TRO [ECF No. 7-5] at ¶ 5.
Although each of the Defendants may not copy and infringe each of the Smiley Marks
for each category of goods protected and/or Copyrighted Works, the Plaintiff has submitted
sufficient evidence showing each of the Defendants has infringed at least one or more of the
Smiley Marks and/or Copyrighted Works. See Guerra Decl. at ¶ 4, Schedule D [ECF No. 7-6];
see also Amended Schedule D, [ECF Nos. 14-1, 14-2, 14-3, and 14-4]. The Defendants are not
now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits,
reproductions, or colorable imitations of the Smiley Marks or Copyrighted Works. See Loufrani
Decl. at ¶ 15.
The Plaintiff investigated the promotion and sale of counterfeit and infringing versions
of the Plaintiff’s branded and copyright protected products by the Defendants. See Loufrani
Decl. at ¶¶ 15-18. Plaintiff accessed each of the e-commerce stores operating under the
Defendants’ Seller IDs, initiated the ordering process for the purchase of a product from each of
the Seller IDs, bearing counterfeits of, at least, one of the Smiley Marks and Copyrighted Works
at issue in this action, and requested each product to be shipped to an address in the Southern
District of Florida. See id.; see also Loufrani Decl. at ¶ 17. The Plaintiff conducted a review and
visually inspected the Smiley branded items for which orders were initiated by Plaintiff’s third
party investigator via the Seller IDs and determined the products were nongenuine, unauthorized
versions of the Plaintiff’s products. See id.
II. LEGAL STANDARD
To obtain a preliminary injunction, a party must demonstrate “(1) a substantial likelihood
of success on the merits; (2) that irreparable injury will be suffered if the relief is not granted; (3)
that the threatened injury outweighs the harm the relief would inflict on the nonmovant; and (4)
that the entry of the relief would serve the public interest.” Schiavo ex. Rel Schindler v. Schiavo,
403 F.3d 1223 , 1225–26 (11th Cir. 2005); see also Levi Strauss & Co. v. Sunrise Int’l. Trading
Inc., 51 F.3d 982 , 985 (11th Cir. 1995) (applying the test to a preliminary injunction in a Lanham
Act case).
III. CONCLUSIONS OF LAW
The declarations the Plaintiff submitted in support of its Motion for Preliminary Injunction
support the following conclusions of law:
A. The Plaintiff has a strong probability of proving at trial that (1) consumers are likely
to be confused by the Defendants’ advertisement, promotion, sale, offer for sale, or distribution of
goods bearing and/or using counterfeits, reproductions, or colorable imitations of the Smiley
Marks, that (2) the products Defendants are selling and promoting for sale are copies of the
Plaintiff’s products which bear copies of the Smiley Marks, and/or that (3) Defendants are
infringing the Copyrighted Works.
B. Because of the infringement of the Smiley Marks and/or the Copyrighted Works,
the Plaintiff is likely to suffer immediate and irreparable injury if a preliminary injunction is not
granted. The following specific facts, as set forth in the Plaintiff’s Complaint, Motion, and
accompanying declarations, demonstrate that immediate and irreparable loss, damage, and injury
will result to the Plaintiff and to consumers in view of the following considerations:
1. The Defendants own or control Internet based e-commerce stores and
websites which advertise, promote, offer for sale, and sell products bearing counterfeit and
infringing trademarks in violation of the Plaintiff’s rights; and
2. There is good cause to believe that more counterfeit and infringing products
bearing the Plaintiff’s trademarks and/or copyrights will appear in the marketplace; that consumers
are likely to be misled, confused, and disappointed by the quality of these products; and that the
Plaintiff may suffer loss of sales for its genuine products and an unnatural erosion of the legitimate
marketplace in which it operates.
C. The balance of potential harm to the Defendants in restraining their trade in
counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by
the potential harm to the Plaintiff, its reputation, and its goodwill as manufacturers and distributors
of quality products if such relief is not issued.
D. The public interest favors issuance of a preliminary injunction to protect the
Plaintiff’s trademark and copyright interests, to encourage respect for the law, to facilitate the
invention and development of innovative products, and to protect the public from being defrauded
by the illegal sale of counterfeit goods.
E. Under 15 U.S.C. § 1117(a), the Plaintiff may be entitled to recover, as an equitable
remedy, the illegal profits gained through the Defendants’ distribution and sales of goods bearing
counterfeits and infringements of the Smiley Marks. See Reebok Int’l, Ltd. v. Marnatech Enters.,
Inc., 970 F.2d 552 , 559 (9th Cir. 1992) (quoting Fuller Brush Prods. Co. v. Fuller Brush Co., 299
F.2d 772, 777 (7th Cir. 1962) (“An accounting of profits under § 1117(a) is not synonymous with
an award of monetary damages: ‘[a]n accounting for profits . . . is an equitable remedy subject to
the principles of equity.’”)).
F. Requesting equitable relief “invokes the district court’s inherent equitable powers
to order preliminary relief, including an asset freeze, in order to assure the availability of
permanent relief.” Levi Strauss & Co., 51 F.3d at 987 (citing Federal Trade Commission v. United
States Oil & Gas Corp., 748 F.2d 1431 , 1433-34 (11th Cir. 1984)).
G. In light of the inherently deceptive nature of the counterfeiting business, and the
likelihood that the Defendants have violated federal trademark and copyright laws, the Plaintiff
has good reason to believe the Defendants will hide or transfer their ill-gotten assets beyond the
jurisdiction of this Court unless those assets are restrained.
Upon review of the Plaintiff’s Complaint, Motion, and supporting evidentiary submissions,
it is RECOMMENDED that the Plaintiff’s Motion for Preliminary Injunction be GRANTED,
under the terms set forth below:
(1) Each of the Defendants, its officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with any of the Defendants having
notice of this Order are restrained and enjoined until further order from this Court as follows:
a. From manufacturing, importing, advertising, promoting, offering to sell,
selling, distributing, or transferring any products bearing the Smiley Marks, or any confusingly
similar trademarks, other than those actually manufactured or distributed by the Plaintiff;
b. From secreting, concealing, destroying, selling off, transferring, or
otherwise disposing of: (i) any products, not manufactured or distributed by the Plaintiff, bearing
and/or using the Smiley Marks, or any confusingly similar trademarks; (ii) any evidence relating
to the manufacture, importation, sale, offer for sale, distribution, or transfer of any products bearing
and/or using the Smiley Marks, or any confusingly similar trademarks; or (iii) any assets or other
financial accounts subject to this Order, including inventory assets, in the actual or constructive
possession of, or owned, controlled, or held by, or subject to access by, any of the Defendants,
including, but not limited to, any assets held by or on behalf of any of the Defendants; and
c. From using any reproduction, counterfeit, copy, or colorable imitation of
the Smiley Copyrighted Works in connection with the publicity, promotion, sale, or advertising of
any goods sold by Defendants.
(2) Each of the Defendants, its officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with any of the Defendants having
notice of this Order shall immediately discontinue the unauthorized use of the Smiley Marks,
confusingly similar trademarks, or unauthorized copies of the Copyrighted Works on or in
connection with all Internet based e-commerce stores owned and operated, or controlled by them,
including the Internet based e-commerce stores operating under the Seller IDs.
(3) Each of the Defendants shall not transfer ownership of the Seller IDs during the
pendency of this action, or until further Order of the Court.
(4) Upon receipt of notice of this Order, the Defendants and any third party financial
institutions, payment processors, banks, escrow services, money transmitters, or marketplace
platforms who is providing services for any of the Defendants, including but not limited to,
AliExpress, Alipay, Dhgate, Dhpay, Joom, Wish, Wishpay, Amazon, Amazon Pay, Ebay, Etsy,
and/or Taobao, and their related companies and affiliates (collectively, the “Third Party
Providers”), shall after receipt of notice of this Order, restrain the transfer of all funds, including
funds relating to ongoing account activity, held or received for the Defendants’ benefit or to be
transferred into the Defendants’ respective financial accounts, and restrain any other financial
accounts tied thereto. Such restraining of the funds and the disclosure of the related financial
institution account information (as provided below) shall be made without notice to the account
owners or the financial institutions until after those accounts are restrained. No funds restrained
by this Order shall be transferred or surrendered by any Third Party Provider for any purpose (other
than pursuant to a chargeback made pursuant to their security interest in the funds) without the
express authorization of this Court.
(5) Any Defendant or Third Party Provider subject to this Order may petition the Court
to modify the asset restraint set out in this Order.
(6) This Order shall apply to the Seller IDs, associated ecommerce stores and websites,
and any other seller identification names, e-commerce stores, domain names, websites, or financial
accounts which are being used by Defendants for the purpose of counterfeiting and infringing the
Smiley Marks and Copyrighted Works at issue in this action and/or unfairly competing with
Plaintiff.
(7) This Order shall remain in effect during the pendency of this action, or until such
further dates as set by the Court or stipulated to by the parties.
(8) Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Federal Rule of Civil Procedure 65(c),
the Plaintiff shall maintain its previously posted bond in the amount of Ten Thousand Dollars and
Zero Cents ($10,000.00) (ECF No. 25), as payment of damages to which the Defendants may be
entitled for a wrongful injunction or restraint, during the pendency of this action, or until further
Order of the Court. The bond set forth herein was deposited with the Clerk of the Court on August
10, 2023.
IV. OBJECTIONS
Pursuant to 28 U.S.C. § 636(b)(1) and Local Magistrate Rule 4(a), Plaintiff has THREE
(3) days from the date of this Report and Recommendation to serve and file written objections, if
any, with the District Judge. See generally Jeffrey S. by Ernest S. v. State Bd. of Educ. of State of
Ga., 896 F.2d 507 (11th Cir. 1990). Failure to timely file objections will bar a de novo
determination by the district judge of anything in this Report and shall constitute a waiver of a
party’s “right to challenge on appeal the District Court’s order based on unobjected-to factual and
legal conclusions.” 11th Cir. R. 3-1; see also Harrigan v. Metro-Dade Police Dep’t Station #4,
977 F.3d 1185 , 1191-92 (11th Cir. 2020); 28 U.S.C. § 636(b)(1)(C).
SIGNED in Miami, Florida this 21st day of August, 2023.
HONORABLE LISETTE M. REID
UNITED STATES MAGISTRATE JUDGE
ce: counsel of record
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