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`
`
`-against-
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`AMY & BENTON TOYS AND GIFTS CO.,
`LTD., et al.,
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`Defendants.
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`17-CV-5845 (VSB)
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`OPINION & ORDER
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`Plaintiffs,
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF NEW YORK
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`---------------------------------------------------------- X
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`SPIN MASTER, INC. AND SPIN MASTER
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`LTD.,
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`:
`:
`:
`:
`:
`:
`:
`:
`:
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`:
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`---------------------------------------------------------- X
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`Appearances:
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`Ashley Erin Sands
`Jason M. Drangel
`Jennette Elizabeth Wiser
`Mary Catherine Brennan
`Epstein Drangel LLP
`New York, NY
`Counsel for Plaintiffs
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`
`
`VERNON S. BRODERICK, United States District Judge:
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`
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`Plaintiffs, Spin Master, Inc. and Spin Master Ltd. (collectively, “Plaintiffs”), who are part
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`of a large multinational toy and entertainment company, bring this copyright and trademark
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`infringement action against forty-seven Defendants. The Defendants are all China-based
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`businesses that sell to the United States through online storefronts.1 Before me is Plaintiffs’
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`1 Plaintiffs filed notices of voluntary dismissal with respect to twenty-seven Defendants. (Docs. 25–28, 31, 33–53.)
`The forty-seven remaining Defendants are: Guigang KM Oversea Trading Co., Ltd.; Jinhua Yinuo Toys Co., Ltd.;
`Ningbo Holly Intelligent Technology Co., Ltd.; Ningbo Nblossom Craft & Gift Co., Ltd.; Shanghai Greatwall
`Industrial Co., Ltd.; Shantou Denko Electronics Toys Co., Ltd. a/k/a Shantou Denko Electronics Network Co., Ltd.;
`Shantou Easemate Toys Co., Ltd.; Shantou Funnykids Toys Co., Ltd.; Shantou Pretty Coast Plastic Toys Co.,
`Limited; Shenzhen Ownshine Toys Limited; Yiwu Eco-Artifact Co., Ltd.; Yiwu Hei Du Trade Co., Ltd. d/b/a China
`Wholesale supermarket; Yiwu Jiudi Toys Co., Limited; Anlinbaby China Store; BTEFKR Store; Children's Dream
`World; DouQu Toy Ltd. Store; Fashion Your Men; ForestSunshine Store; Hltree Boutique Maternal Supplies & Toy
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`
`
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`2/6/2019
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`
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 2 of 15
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`motion for summary judgment. (Doc. 32.) For the reasons stated below, the motion is
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`GRANTED in part and DENIED in part.
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`
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`Background
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`The following facts are taken from Plaintiffs’ 56.1 Statement and the declarations and
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`exhibits attached to Plaintiffs’ Application. As Defendants have failed to appear, the facts are
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`uncontested. In addition, Defendants have failed to appear or otherwise request additional time
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`to respond to the complaint, therefore admitting all “well-pleaded” factual allegations contained
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`in the complaint. City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir.
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`2011).2
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`Plaintiffs are part of a multinational toy and entertainment company that designs and sells
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`children’s lifestyle products and toys. (56.1 Stmt. ¶ 6.)3 Plaintiffs’ allegations and causes of
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`action relate to one such toy, Bunchems, which are small plastic balls that can be connected to
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`form different shapes and characters and then pulled apart to build new formations, (id. at ¶ 9;
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`Harrs Decl. ¶ 6)4, for which Plaintiffs have a registered trademark, No. 4,980,743, (56.1 Stmt. ¶
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`12). Plaintiffs have registered copyrights in the product’s packaging: U.S. Copyright Reg. No.
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`VA 1-999-337; U.S. Copyright Reg. No. VA 2-014-509; and U.S. Copyright Reg. No. VA 2-
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`Store; JKLMOONSALER Store; Kennan's Toy World Store; MA*BB Skies Store; Hunan Leadshopping E-
`Commerce Co., Store f/k/a Mummy's Surprise to Baby Store; ToysKu Store; Trendy Toy Store; ZOU TRADING
`CO., LTD.; baibuju9; Beautylife66; JYD International Co., Ltd. d/b/a Bohao88; C360; Comely2015; Fw781;
`Shenzhen Fuzecheng Technology Co., Ltd. d/b/a Hongkong Gamers Trading Co Ltd d/b/a Gamers; Harveye;
`Huayeyu; Jeantree Baby Clothings; Lbdbaby a/k/a TongTong Yang; Liuliansheng; Scot; Shinana; Bestar
`International Industrial Limited d/b/a Shinxn2008; Smilewo; Sportsoutdoor; Vanilla17; Xiamen Yu Taigu Trade
`Co., Ltd. d/b/a Youyou93; and Zzj905532742. These forty-seven defendants are hereinafter referred to as
`“Defendants.”
`2 “[A] district judge . . . possesses the inherent power to enter a default.” Mickalis Pawn Shop, LLC, 645 F.3d at 128
`(citation omitted).
`3 “56.1 Stmt.” refers to Plaintiffs’ Local Rule 56.1 Statement of Undisputed Material Facts in Support of their
`Motion for Summary Judgment and Permanent Injunction, filed on October 24, 2017. (Doc. 32-2.)
`4 “Harrs Decl.” refers to Declaration of Christopher Harrs, unsealed on August 25, 2017. (Doc. 15.)
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`2
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 3 of 15
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`014-0510. (Id. at ¶ 13.) Plaintiffs also own numerous common law copyrights. (Id.) The
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`success of Bunchems is due in large part to Plaintiffs’ marketing, promotion, and distribution
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`efforts, which include advertising and promotion through Plaintiffs’ website, nationwide
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`television advertising campaigns, print and internet-based publicity, placement of the products at
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`major retail outlets, and participation in trade shows. (Harrs Decl. ¶ 16.)
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`Defendants have numerous listings for Counterfeit Bunchems5 on their online storefronts.
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`(56.1 Stmt ¶ 31–32; Arnaiz Decl. Ex. D.)6 The marks used by Defendants for Counterfeit
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`Bunchems are almost identical to Plaintiffs’ mark. (See Compl. ¶ 113; id. Ex. A; Arnaiz Decl.
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`Ex. A.)7
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` Through their investigation with a third-party consulting firm, Plaintiffs’ counsel
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`observed Defendants offering to sell and ship the Counterfeit Bunchems to customers in New
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`York. (56.1 Stmt. ¶¶ 34–39; Arnaiz Decl. ¶¶ 11–17, Ex. A.) Plaintiffs determined that the
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`Counterfeit Bunchems sold by Defendants are counterfeit through visual examination of
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`Defendants’ listings, (56.1 Stmt. ¶ 41; Harrs Decl. ¶ 26; see also Wolgang Decl. ¶¶ 15–16, Ex.
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`A),8 the low prices at which Defendants are offering Bunchems, (56.1 Stmt. ¶ 40), and because
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`no authentic Bunchems are available on Alibaba.com, AliExpress.com, or DHGate.com, (id.).
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`Defendants are not and have never been authorized distributors or licensees of Bunchems. (Id.
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`¶42; see also Harrs. Decl. ¶ 27.)
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`The websites Alibaba.com, AliExpress.com, and DHGate.com host Defendants’
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`5 “Counterfeit Bunchems” refers products bearing and/or using Plaintiffs’ trademark and/or marks that are
`confusingly similar to, identical to and constitute a counterfeiting and/or infringement of Plaintiffs’ trademark and/or
`displaying and/or incorporating Plaintiffs’ copyrighted materials and/or works that are substantially similar to,
`identical to and constitute infringement of Plaintiffs’ copyrighted material and/or otherwise infringe Bunchems.
`6 “Arnaiz Decl.” refers to Declaration of Jessica Arnaiz, unsealed on August 25, 2017. (Doc. 14.)
`7 “Compl.” refers to the Complaint, unsealed on August 25, 2017. (Doc. 8.)
`8 “Wolgang Decl.” refers to Declaration of Spencer Wolgang, unsealed on August 25, 2017. (Doc. 16.)
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`3
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 4 of 15
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`storefronts, (id. ¶¶ 14, 20, 22, 31), and are “notorious markets” for counterfeiters, according to
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`the United States Trade Representative, (id. ¶ 19). These websites do not terminate a seller’s
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`account despite repeated reports of infringement, (id. ¶ 21), and they permit sellers to operate
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`with almost complete anonymity, (id. ¶ 23). Sellers often use false aliases and addresses to
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`conceal their identities, and they use shipping services that permit incorrect or incomplete return
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`addresses to conceal their identities. (Id. ¶¶ 24–25.)
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`
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`Procedural History
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`Plaintiffs commenced this action with an ex parte application for: (1) a temporary
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`restraining order (“TRO”); (2) an order to show cause why a preliminary injunction should not
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`issue; (3) an asset restraining order; (4) an order authorizing alternative service by electronic
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`mail; and (4) an order authorizing expedited discovery against all Defendants (“Application”).
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`The Complaint alleges eight causes of action: (1) trademark counterfeiting under sections 32, 34,
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`and 35 of the Lanham Act, 15 U.S.C. §§ 1114(1)(b), 1116(d), and 1117(b–c); (2) infringement of
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`registered trademarks, under 15 U.S.C. § 1114/Lanham Act § 32(a); (3) false designation of
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`origin, passing off, and unfair competition, under 15 U.S.C. § 1125(a)/Lanham Act § 43(a); (4)
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`federal copyright infringement, under 17 U.S.C. § 501(a); (5) deceptive acts and business
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`practices, under N.Y. Gen Bus. L. § 349; (6) false advertising, under N.Y. Gen. Bus. L. § 350;
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`(7) unfair competition, under New York common law; and (8) unjust enrichment, under New
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`York common law. (Doc. 8.) On August 3, 2017, I held a hearing on the Application. (See
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`Doc. 23, at 5.) The following day, I entered an order granting Plaintiffs’ Application and
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`ordering Defendants to appear on August 24, 2017 to show cause as to why an order granting a
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`preliminary injunction should not be entered. (See Doc. 17.) No Defendants appeared at the
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`hearing or sought an adjournment, and on September 8, 2017, I entered an order converting the
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`4
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 5 of 15
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`TRO into a preliminary injunction. (Doc. 23.) Despite being properly served in this matter,
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`(Doc. 19), Defendants have failed to appear or request an adjournment at any time since the
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`filing of the action. Accordingly, Plaintiffs submit this unopposed motion for summary
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`judgment pursuant to Federal Rule of Civil Procedure 56. (Doc. 32.)
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` Legal Standard
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`Summary judgment may not be granted unless a movant shows, based on admissible
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`evidence in the record, “that there is no genuine dispute as to any material fact and the movant is
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`entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The moving party bears the
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`initial burden of demonstrating “the absence of a genuine issue of material fact.” Celotex Corp.
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`v. Catrett, 477 U.S. 317, 323 (1986). This burden remains even when a party’s motion is
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`unopposed. See Vt. Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir.
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`2004) (quoting Amaker v. Foley, 274 F.3d 677, 681 (2d Cir. 2001)). In making a determination
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`on summary judgment, the court must “construe all evidence in the light most favorable to the
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`nonmoving party, drawing all inferences and resolving all ambiguities in its favor.” Dickerson v.
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`Napolitano, 604 F.3d 732, 740 (2d Cir. 2010) (citing LaSalle Bank Nat’l Ass’n v. Nomura Asset
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`Capital Corp., 424 F.3d 195, 205 (2d Cir. 2005)). In addition, “only admissible evidence need
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`be considered by the trial court in ruling on a motion for summary judgment.” Porter v.
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`Quarantillo, 722 F.3d 94, 97 (2d Cir. 2013) (internal quotation marks, citation, and alterations
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`omitted).
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`5
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 6 of 15
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` Discussion
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`A.
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`Infringement Claims
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`1. Trademark
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`In a Lanham Act action, summary judgment is appropriate “where the undisputed
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`evidence would lead only to one conclusion” as to whether confusion is likely. Louis Vuitton
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`Malletier S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d 485, 493 (S.D.N.Y. 2015) (quoting Sports
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`Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 960 (2d Cir. 1996)). To prevail on a trademark-
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`infringement claim, “a plaintiff must establish that (1) it has a valid mark that is entitled to
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`protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4)
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`in connection with the sale or advertising of goods or services, (5) without the plaintiff's
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`consent” and (6) “that defendant’s use of that mark is likely to cause confusion as to the
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`affiliation, connection, or association of defendant with plaintiff, or as to the origin, sponsorship,
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`or approval of the defendant’s goods, services, or commercial activities by plaintiff.” 1-800
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`Contacts, Inc. v WhenU.com, Inc., 414 F.3d 400, 406–07 (2d Cir. 2005) (internal quotation
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`marks omitted).
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`On the undisputed facts recounted above, I find that Defendants’ use of counterfeit copies
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`of Plaintiffs’ mark is likely cause consumer confusion. See Fendi Adele S.R.L. v. Filene’s
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`Basement, Inc., 696 F. Supp. 2d 368, 383 (S.D.N.Y. 2010). Here, the marks used by Defendants
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`are nearly identical to Plaintiffs’ mark. (See Compl. ¶ 113; id. Ex. A; Arnaiz Decl. Ex. D.)
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`Although courts in the Second Circuit typically evaluate consumer confusion by considering the
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`eight Polaroid factors, see Polaroid Corp v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.
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`1961), in cases involving the use of counterfeit marks, “the Court need not undertake a factor-by-
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`factor analysis under Polaroid because counterfeits, by their very nature, cause confusion,”
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`6
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 7 of 15
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`Philip Morris USA Inc. v. Marlboro Express, No. CV-03-1161 (CPS), 2005 WL 2076921, at *4
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`(E.D.N.Y. Aug. 26, 2005) (quoting Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F. Supp. 2d
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`284, 287 (S.D.N.Y. 2003)).
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`Because Plaintiffs are entitled to summary judgment on their trademark counterfeiting
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`and infringement claims, Plaintiffs are also entitled to summary judgment on their claims for
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`false designation of origin, passing off, and unfair competition under § 43(a) of the Lanham Act.
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`15 U.S.C. § 1125(a); see Richemont N. Am., Inc. v. Huang, No. 12 Civ. 4443(KBF), 2013 WL
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`5345814, at *5 n.15 (S.D.N.Y. Sept. 24, 2013) (finding that a claim for unfair competition under
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`the Lanham Act requires an identical test to that for infringement).
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`Accordingly, Plaintiffs’ motion for summary judgment as to their Lanham Act claims is
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`GRANTED.
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`2. Copyright
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`Copyright infringement requires the copyright holder to prove “ownership of a valid
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`copyright, and . . . copying of constituent elements of the work that are original.” Feist Publ'ns,
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`Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). To establish copyright infringement, a
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`plaintiff “must demonstrate that (1) the defendant has actually copied the plaintiff’s work; and
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`(2) the copying is illegal because a substantial similarity exists between the defendant’s work and
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`the protectable elements of plaintiff’s [work].” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101,
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`110 (2d Cir. 2001) (internal quotation marks and emphasis omitted).
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`Plaintiffs have also established sufficient uncontroverted facts to support their copyright
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`infringement claims. It is undisputed that Plaintiffs have valid certificates of registration for
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`their Bunchems copyrights, specifically in Bunchems Mega Pack 400 packaging artwork, the
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`Bunchems Bugs Creation Pack 1.0 packaging artwork, and the Bunchems Pets Creation Pack 1.0
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`7
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 8 of 15
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`packaging artwork, (56.1 Stmt. ¶ 13; Harrs Decl., Ex. C.), which creates a presumption of
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`copyright validity, Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980). In
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`addition, Plaintiffs have numerous common law copyrights. (56.1 Stmt. ¶ 13.) The undisputed
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`facts further show that “the defendant has actually copied the plaintiff’s work,” and that “a
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`substantial similarity exists between the defendant’s work and the protectable elements of
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`plaintiff’s [work].” Yurman Design, Inc., 262 F.3d at 110. A side-by-side comparison of
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`Plaintiffs’ Bunchems artwork and Defendants’ listings for these products reveals that Defendants
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`have sought and succeeded to recreate Plaintiffs’ imagery for their products. (See Compl. ¶¶
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`113, 115.)
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`Given the similarity, the Court need not have direct evidence of Defendants’ copying,
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`O’Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 515 (S.D.N.Y. 2008)
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`(“[W]here the works in question are so strikingly similar as to preclude the possibility of
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`independent creation, copying may be proved without an affirmative showing of access.”
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`(internal quotation marks omitted)). In any event, given Plaintiffs’ significant advertising efforts
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`and online presence, (Harrs Decl. ¶ 16), Defendants would have had ample opportunities to
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`access to Plaintiffs’ work. See O’Keefe, 590 F. Supp. 2d at 515 (“As proof of access, a plaintiff
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`may show that . . . the infringed work has been widely disseminated.” (internal quotation marks
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`omitted)). Accordingly, Plaintiffs’ motion for summary judgment as to their Copyright Act
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`claims is GRANTED.
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`B.
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`State Law Claims
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`In addition, because Plaintiffs are entitled to summary judgment on their trademark
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`passing off claim, they are also entitled to summary judgment on their deceptive practices and
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`false advertising claims under New York state law. (Compl. ¶¶ 165–174; Samsung Display Co.
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`8
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`
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 9 of 15
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`v Acacia Research Corp., No. 14-CV-1353 (JPO), 2014 WL 6791603, at *5 (S.D.N.Y. Dec. 3,
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`2014) (“The analysis applied under § 43(a) of the Lanham Act, New York common law, and
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`§ 349 [and § 350] of the General Business Law is ‘substantially the same.’” (quoting Avon
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`Prods., Inc. v. S.C. Johnson & Son, Inc., 984 F. Supp. 768, 800 (S.D.N.Y. 1997))).)
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`Whether the claims of unfair competition and unjust enrichment can survive is a more
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`complicated question because such claims maybe preempted by federal law. Although the
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`Lanham Act does not preempt equivalent state law claims, Section 301 of the Copyright Act
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`does preempt state law actions that seek to vindicate rights equivalent to those protected under
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`the Copyright Act. See 17 U.S.C. § 301(a); Urbont v. Sony Music Entm’t, 831 F.3d 80, 93 (2d
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`Cir. 2016). However, if an “extra element is required instead of or in addition to the acts of
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`reproduction, performance, distribution or display, in order to constitute a state-created cause of
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`action, then the right does not lie within the general scope of copyright, and there is no
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`preemption.” Barclays Capital Inc. v. Theflyonthewall.com, Inc., 650 F.3d 876, 893 (2d Cir.
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`2011) (internal quotation marks omitted). “[T]he essence of an unfair competition claim is that
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`the defendant has misappropriated the labors and expenditures of another and has done so in bad
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`faith.” Carson Optical, Inc. v. Prym Consumer USA, Inc., 11 F. Supp. 3d 317, 329 (E.D.N.Y.
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`2014) (internal quotation marks omitted). Unfair competition under New York law “closely
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`parallels the elements of unfair competition under the Lanham Act, except that a plaintiff must
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`show ‘either actual confusion or a likelihood of confusion, and there must be ‘some showing of
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`bad faith’ on the part of the defendants.’” Richemont N. Am., Inc., 2013 WL 5345814, at *5 n.15
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`(quoting Medisim Ltd. v. BestMed LLC, 910 F. Supp. 2d 591, 606 (S.D.N.Y. 2012)).
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`Here, because Plaintiffs have already established unfair competition under the Lanham
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`Act, the only question is whether Plaintiffs have made “some showing of bad faith.” Id. I find
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`9
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 10 of 15
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`that because there is ample evidence of bad faith, Plaintiffs have established their unfair
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`competition claim based on Defendants’ use of the Bunchems trademark. The undisputed facts
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`show that Defendants have been selling counterfeit goods and concealing their identities to
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`frustrate enforcement of a judgment. (See 56.1 Stmt. ¶¶ 31–40; Coach, Inc. v. Horizon Trading
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`USA Inc., 908 F. Supp. 2d 426, 436 (S.D.N.Y. 2012) (noting that “bad faith is presumed” in
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`counterfeiting cases). In addition, Defendants have failed to appear in this action. Cf. Chloe v.
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`Zarafshan, No. 1:06-cv-3140-RJH-MHD, 2009 WL 2956827, at *7 (S.D.N.Y. Sept. 15, 2009)
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`(noting that default suggests a willful violation “because an innocent party would presumably
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`have made an effort to defend itself”).
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`Although Plaintiffs have established their unfair competition claim based on Defendants’
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`use of the Bucchems mark, they cannot establish unfair competition based on Defendants’
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`reproduction of Plaintiffs’ copyrighted packaging—as such a claim is preempted by the
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`Copyright Act. It is true that the unfair competition claim includes an element of bad faith,
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`which is an “extra element” that could theoretically save it from preemption. However, the
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`Second Circuit has clearly stated that “[a]n action will not be saved from preemption by elements
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`such as awareness or intent, which alter the action’s scope but not its nature.” See Nat’l
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`Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 851 (2d Cir. 1997) (internal quotation marks
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`omitted); see also Med. Educ. Dev. Servs., Inc. v. Reed Elsevier Grp., PLC, No. 05 Civ.
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`8665(GEL), 2008 WL 4449412, at *13 (S.D.N.Y. Sept. 30, 2008) (“[A]llegations of bad faith or
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`ill-intent are insufficient to transform an otherwise equivalent claim into one that is qualitatively
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`different from a copyright infringement claim.” (internal quotation marks omitted)).
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`Plaintiffs’ final claim is unjust enrichment. To state a claim for unjust enrichment under
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`New York law, a plaintiff must provide proof that “(1) defendant was enriched, (2) at plaintiff’s
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`10
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 11 of 15
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`expense, and (3) equity and good conscience militate against permitting defendant to retain what
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`plaintiff is seeking to recover.” See Coach, Inc., 908 F. Supp. 2d at 436 (quoting Perfect Pearl
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`Co. v. Majestic Pearl & Stone, Inc., 887 F. Supp. 2d 519, 544 (S.D.N.Y. 2012)). I conclude that
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`Plaintiffs have established their claim for unjust enrichment as a matter of law where Defendants
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`were enriched by the sale of products bearing Plaintiffs’ trademark and where such profits were
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`procured at Plaintiffs’ expense and without their consent. In addition, equity and good
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`conscience militate in favor of Plaintiffs in a case involving counterfeiters that have used
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`deception and declined to appear in this case.
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`However, like the unfair competition claim above, this claim is preempted to the extent it
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`relies on a theory that Defendants reproduced Plaintiffs’ copyrighted artwork. Although unjust
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`enrichment contains the additional element of enrichment, which “is not required for copyright
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`infringement,” such extra element does not go “far enough to make the unjust enrichment claim
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`qualitatively different from a copyright infringement claim.” Briarpatch Ltd., L.P. v. Phoenix
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`Pictures, Inc., 373 F.3d 296, 306 (2d Cir. 2004).
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`C.
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`Damages
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`Plaintiffs seek statutory damages “for willful counterfeiting and trademark infringement
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`under the Lanham Act” and “for willful copyright infringement pursuant to the Copyright Act.”
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`(Pls. Mem. 19.)9 Specifically, Plaintiffs seek an award of $50,000 for each of the thirty
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`remaining Defendants, for a total of $2,350,000.10
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`9 “Pls. Mem.” refers to Plaintiffs’ Memorandum of Law in Support of Their Motion for Summary Judgment and a
`Permanent Injunction, dated October 24, 2017. (Doc. 32-3.)
`10 One issue that is unsettled in the Circuit is whether a plaintiff may obtain statutory damages for both trademark
`and copyright infringement based on the same infringing conduct. Ontel Prods. Corp. v. Amico Int’l Corp., No. 07
`Civ. 7356(JGK)(FM), 2008 WL 4200164, at *4 (S.D.N.Y. Aug. 19, 2008) (collecting cases), adopted by 2008 WL
`4298504 (S.D.N.Y. Sept. 11, 2008). However, the Court need not resolve this issue where, as here, either the
`Lanham Act or the Copyright Act alone allow for substantial damages as a result of Defendants’ willful
`infringement. See, e.g., Ontel Prods. Corp. v. Airbrushpainting Makeup Store, No. 17 Civ. 0871, ECF No. 40, at 2–
`4 (S.D.N.Y. June 29, 2017) (observing that either the Lanham Act or Copyright Act permit damage awards of well
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`11
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 12 of 15
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`Under the Lanham Act, a trademark owner may elect to recover statutory damages rather
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`than actual damages, and a court may award statutory damages of $1,000 to $200,000 “per
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`counterfeit mark per type of goods sold . . . as the court considers just.” 15 U.S.C. § 1117(c).
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`For willful infringement, a court may award up to $2,000,000 “per counterfeit mark per type of
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`goods or services sold . . . as the court considers just.” Id. Courts in this district have used the
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`following factors when determining a statutory damages award: “(1) ‘the expenses saved and the
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`profits reaped;’ (2) ‘the revenues lost by the plaintiff;’ (3) ‘the value of the copyright;’ (4) ‘the
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`deterrent effect on others besides the defendant;’ (5) ‘whether the defendant's conduct was
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`innocent or willful;’ (6) ‘whether a defendant has cooperated in providing particular records
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`from which to assess the value of the infringing material produced;’ and (7) ‘the potential for
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`discouraging the defendant.’” Gucci Am., Inc. v. Duty Free Apparel, Ltd., 315 F. Supp. 2d 511,
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`520 (S.D.N.Y. 2004) (quoting Fitzgerald Publ’g Co. v. Baylor Publ’g Co., 807 F.2d 1110, 1117
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`(2d Cir. 1986)).
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`The Copyright Act also permits copyright holders to elect statutory rather than actual
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`damages. 17 U.S.C. § 504(c)(1). A court may award from $750 to $30,000 per work infringed
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`“as the court considers just.” Id. For willful infringement, a court may award statutory damages
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`of “not more than $150,000” per work infringed. § 504(c)(2).
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`Courts in this district have used the following factors when determining a statutory
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`damages award for copyright or trademark infringement: (1) the expenses saved and the profits
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`reaped; (2) the revenues lost by the plaintiff; (3) the value of the trademark or copyright; (4) the
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`deterrent effect on others besides the defendant; (5) whether the defendants’ conduct was
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`over $100,000 for willful infringement, declining to resolve the unsettled legal issue, and finding plaintiff’s statutory
`damages request of $50,000 total per defendant for willful infringement to be reasonable).
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 13 of 15
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`innocent or willful; (6) whether a defendant has cooperated in providing particular records from
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`which to assess the value of the infringing material produced; and (7) the potential for
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`discouraging the defendant. Innovation Ventures, LLC v. Ultimate One Distrib. Corp., 176 F.
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`Supp. 3d 137, 165 (E.D.N.Y. 2016) (citing Fitzgerald Publ’g. Co., 807 F.2d at 1116–17).
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`Here, Defendants’ default has denied Plaintiffs the ability to take fact discovery, and thus
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`frustrated the Court’s ability to calculate precisely the profits reaped and lost. Thus, the Court
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`cannot meaningfully assess factors one and two. As for factor three, the value of the trademark
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`or copyright, Plaintiffs have submitted no evidence that quantifies the value of Bunchems.
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`Nonetheless, the Court can infer substantial value from Plaintiffs’ large national advertising
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`campaign using multiple platforms, (56.1 Stmt. ¶¶ 7–8, 12), and from the product’s success, (id.
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`¶ 10; cf. AW Licensing, LLC v. Wang Bao, No. 15 Civ. 1373, 2016 U.S. Dist. LEXIS 101150, at
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`*7 (S.D.N.Y. Aug. 2, 2016) (inferring from reputation that a mark was valuable)). The fifth
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`factor asks whether Defendants’ conduct was innocent or willful. Here, because Defendants
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`marks are almost identical to Plaintiffs’ marks, (see Compl. Ex. A; Arnaiz Decl. Ex. D), “the
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`conclusion is inescapable that defendants’ infringement and counterfeiting is intentional.”
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`Coach, Inc. v. Melendez, No. 10 Civ. 6178(BSJ)(HBP), 2011 WL 4542971, at *5 (S.D.N.Y.
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`Sept. 2, 2011). The sixth factor asks whether Defendants have cooperated; in the case of default,
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`the answer is clearly no. For the fourth and seventh factors, deterrence, the Court believes a
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`substantial award is justified to help discourage Defendants and other counterfeiters. See All-
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`Star Mktg. Grp., LLC v. Media Brands Co., 775 F. Supp. 2d 613, 617 (S.D.N.Y. 2011) (finding
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`an award of statutory damages of $25,000 for infringement of a website was appropriate as a
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`specific deterrent to the defendants and as a general deterrent to others).
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`Of the factors that the Court can weigh, all militate in favor of a substantial award of
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`Case 1:17-cv-05845-VSB Document 57 Filed 02/06/19 Page 14 of 15
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`statutory damages. Accordingly, Plaintiffs’ request for a statutory damage award of $50,000 per
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`Defendant is reasonable considering that the maximum damages for willful infringement under
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`the Copyright Act are $150,000 per infringement and $2,000,000 under the Lanham Act.
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`Numerous courts in this Circuit have granted similar damages in cases where defendants
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`defaulted. E.g., id. at 624 (awarding damages between $25,000 and $50,000 per mark); Ontel
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`Prods. Corp., No. 17 Civ. 0871, ECF No. 40, at 4 (awarding $50,000 total per defendant). And
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`others have granted statutory damages far exceeding Plaintiffs’ request here. E.g., Peer Int’l
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`Corp. v. Max Music & Entm’t, Inc., No. 03 Civ. 996, 2004 WL 1542253, at *5 (S.D.N.Y. July 9,
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`2004) (awarding $900,000 for defendant’s willful infringement of thirty copyrights despite
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`plaintiff’s inability to show actual damages).
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`Conclusion
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`For the reasons stated above, Plaintiffs’ motion for summary judgment is GRANTED in
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`part and DENIED in part. Plaintiffs’ motion is GRANTED with respect to Plaintiffs’ Lanham
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`Act claims, federal copyright infringement claim, and their claims under N.Y. Gen. Bus. Law
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`§§ 349–350. Plaintiffs’ motion is DENIED with respect to Plaintiffs’ unfair competition and
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`unjust enrichment claims under New York common law. Accordingly, it is hereby:
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`ORDERED that statutory damages are awarded in the amount of $50,000 for each of the
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`forty-seven remaining Defendants plus post-judgment interest.
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`IT IS FURTHER ORDERED that the preliminary injunction is converted into a
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`permanent injunction, including an extension of the asset restraint.
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`IT IS FURTHER ORDERED that the parties appear for a conference on April 4, 2019 at
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`3:30 p.m. to discuss the nature and volume of Defendants’ restrained assets and Plaintiffs’
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`application for attorneys’ fees. Plaintiffs shall submit, no later than seven (7) days prior to the
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`conference, contemporaneous billing records and a letter of no more than three (3) pages
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`providing support for the reasonableness of the fees and costs requested.
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`IT IS FURTHER ORDERED that, within thirty (30) days of this order, Plaintiffs shall
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`serve this order on Defendants by electronic service and file proof of service on the docket.
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`The Clerk of Court is respectfully directed to terminate the motion at Document 32.
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`SO ORDERED.
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`Dated: February 6, 2019
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`New York, New York
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`______________________
`Vernon S. Broderick
`United States District Judge
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`15
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