ABS-CBN Corporation et al v. cinesilip.net et al
Filing
25
ORDER Granting Application of Preliminary Injunction re 6 Plaintiff's EXPARTE MOTION for Entry of Temporary Restraining Order and Preliminary Injunction filed by ABS-CBN Corporation, ABS-CBN Film Productions, Inc., ABS-CBN International Signed by Judge Robert N. Scola, Jr on 4/28/2017. (ail)
United States District Court
for the
Southern District of Florida
ABS-CBN Corporation and others, )
Plaintiffs,
)
)
)
v.
)
Cinesilip.net, and others,
)
)
Defendants.
Case No. 17-60650-CIV-SCOLA
Order Granting Application for Preliminary Injunction
This matter is before the Court on the Plaintiffs’ Application for
Preliminary Injunction (ECF No. 6), Plaintiffs’ Supplemental Brief to Add
Domain Name to Plaintiffs’ Application for Preliminary Injunction (ECF No. 21),
and upon the Preliminary Injunction Hearing held on March 28, 2017. The
Plaintiffs have moved for entry of a preliminary injunction against the
Defendants, who are identified on Schedule A, pursuant to 15 U.S.C. § 1116,
17 U.S.C. § 502(a), Fed. R. Civ. P. 65, and The All Writs Act, 28 U.S.C.
§ 1651(a) and (d) and the Copyright Act, 17 U.S.C. § 101 et seq. The Court has
carefully reviewed the Motion and the record and is otherwise fully advised in
the premises.
The Court convened a hearing on March 28, 2017, at which only counsel
for Plaintiffs was present and available to present evidence supporting the
Application for Preliminary Injunction. The Defendants have not responded to
the Application for Preliminary Injunction, nor made any filings in this case,
nor have the Defendants appeared in this matter either individually or through
counsel.1 Because the Plaintiffs have satisfied the requirements for the
issuance of a preliminary injunction, the Court grants the Plaintiffs’
Application for Preliminary Injunction (ECF No. 6).
Plaintiffs’ counsel received a telephonic inquiry from Defendant wildpinoy.net (Defendant
Number 18) but this Defendant declined to leave a phone number to return the call. Plaintiffs’
counsel thus replied to the telephone message via e-mail to the Defendant, and advised them of
the April 28, 2017 hearing date and the requirement to submit a formal response. A copy of
Plaintiffs’ counsel’s reply to Defendant Number 18 is on file with the Court [DE 22]. To date, no
formal response or notice of appearance has been filed with the Court.
1
1
1. Factual Background2
Plaintiff ABS-CBN International is the registered owner of the following
trademarks on the Principal Register of the United States Patent and
Trademark Office (collectively, the “ABS-CBN Registered Marks”):
Registration Registration
Trademark Number
Date
ABS-CBN
TFC
2,334,131
3,733,072
Class/Services
IC 036 – telephone calling
card services
IC
038
–
Television
28, broadcasting
services
via
satellite and cable
IC
038
–
Television
broadcasting
services
via
satellite and cable
March
2000
Jan. 5, 2010
IC 041 – Production and
programming of television
shows, entertainment and a
variety
of
programming
distributed over television,
satellite and via a global
computer network
The ABS-CBN Registered Marks are used in connection with the manufacture
and distribution of entertainment content in the categories identified above.
(See Pl.’s Mot. Ex. 1 ¶ 5, ECF No. 6-1)
ABS-CBN International is further the owner of all rights in and to the
following common law trademark (the “ABS-CBN Common Law Mark”):
Trademark
2 The factual background is taken from Plaintiffs’ Complaint, Application for Preliminary
Injunction, and supporting evidentiary submissions.
2
(Id. ¶ 6.) The ABS-CBN Common Law Mark is used in connection with the
manufacture and distribution of high quality entertainment content in the
categories identified above. (Id.) Together, the ABS-CBN Registered Marks and
the ABS-CBN Common Law Mark are referred to herein as the “ABS-CBN
Marks.” ABS-CBN Corporation, ABS-CBN Film Productions, Inc., and ABS-CBN
International share exclusive rights in and to the ABS-CBN Marks. Moreover,
ABS-CBN Corporation, ABS-CBN Film Productions, Inc., and ABS-CBN
International are all licensed to use and enforce the ABS-CBN Marks. (See id.)
Plaintiff ABS-CBN Film Productions, Inc. is the owner of the registered
copyrights in and to the movies identified in Exhibit 2 to the Complaint. (ECF
No. 1-3.) Moreover, Plaintiff ABS-CBN Corporation is the owner of many
unregistered copyrights, including but not limited to those specifically
identified in paragraph 25 of the Complaint and in Exhibit 4 thereto (ECF No.
1-5). (See Pl.’s Mot. Ex. 1 ¶ 4, ECF No. 6-1.) Collectively, these registered and
unregistered copyrighted works are referred to herein as the “Copyrighted
Works.” ABS-CBN Corporation, ABS-CBN Film Productions, and ABS-CBN
International all share exclusive rights in and to the Copyrighted Works. (Id.)
The Defendants, through the fully accessible, Internet websites operating
under the domain names identified on Schedule “A” hereto (collectively, the
“Subject Domain Names”) and via at least one Social Media Profile, have
advertised, promoted, offered for distribution, distributed and/or publicly
performed the Copyrighted Works under what Plaintiffs have determined to be
counterfeits, infringements, reproductions, and/or colorable imitations of the
ABS-CBN Marks. (See id. ¶¶ 12-15; see also relevant web pages from
Defendants’ Internet websites operating under the Subject Domain Names and
Social Media Profile attached as Exhibits 3, 4, and 5 to the Complaint (ECF
Nos. 1-4, 1-5, and 1-6).)
Although each of the Defendants may not copy and infringe each of the
Plaintiffs’ trademarks for each category of services protected, the Plaintiffs have
submitted sufficient evidence showing each of the Defendants has infringed at
least one or more of the trademarks and Copyrighted Works at issue. (See Pl.’s
Mot. Ex. 1 ¶¶ 12-13, ECF No. 6-1.) 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 of the ABS-CBN Marks and/or
perform or distribute the Copyrighted Works. (See id. ¶¶ 12-15.)
The Plaintiffs’ representative, Elisha J. Lawrence, reviewed and visually
inspected the Internet websites operating under the Subject Domain Names, or
the web page captures of the Subject Domain Names, and determined the
distribution services offered by Defendants were not genuine or authorized
distribution services of Plaintiffs’ Copyrighted Works. (See id. ¶¶ 13-15.)
3
On April 4, 2017, the Plaintiffs filed a Complaint (ECF No. 1) against the
Defendants for trademark counterfeiting and infringement, false designation of
origin, common law unfair competition, common law trademark infringement,
direct infringement of copyright, and contributory infringement of copyright.
Also on April 4, 2017, the Plaintiffs filed an Ex Parte Application for Entry of
Temporary Restraining Order and Preliminary Injunction (ECF No. 6). On April
6, 2017, the Court issued an Order Granting Ex Parte Temporary Restraining
Order and Setting Hearing (ECF No. 8). The Plaintiffs subsequently moved for,
and the Court authorized, alternate service of process on the Defendants (ECF
Nos. 14-15). The Plaintiffs provided the Defendants with notice of the Plaintiffs’
Ex Parte Application for Entry of a Temporary Restraining Order and
Preliminary Injunction and copies of the Court’s April 4, 2017 Order via
electronic mail (“e-mail”) to each Defendant’s corresponding e-mail address(es)
and/or via publication (ECF Nos. 10-12, 18-20).
2. 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 non-movant; 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) (per curiam); 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).
3. Analysis
The declarations the Plaintiffs submitted in support of their Application
for Temporary Restraining Order support the following conclusions of law:
A.
The Plaintiffs have a very strong probability of proving at trial that
consumers are likely to be confused by the Defendants’ advertisement,
promotion, distribution and public performance of the Copyrighted Works
using counterfeits, reproductions, and/or colorable imitations of the ABS-CBN
Marks, and that the services the Defendants are offering and promoting are
unauthorized distribution services using the ABS-CBN Marks.
B.
Because of the infringement of the ABS-CBN Marks and
Copyrighted Works, the Plaintiffs are likely to suffer immediate and irreparable
injury if a preliminary injunction is not granted. It clearly appears from the
following specific facts, as set forth in the Plaintiffs’ Complaint, Application for
Preliminary Injunction, supplemental brief, and accompanying declarations on
4
file, that immediate and irreparable loss, damage, and injury will result to the
Plaintiffs and to consumers because it is more likely true than not that:
1.
The Defendants own or control Internet websites, domain
names, or businesses which advertise, promote, and/or offer distribution
services using counterfeit and infringing trademarks and infringe the
Copyrighted Works in violation of the Plaintiffs’ rights;
2.
There is good cause to believe that the Defendants will
continue to violate the Plaintiffs’ intellectual property rights and offer more
distribution services of copyrighted content under counterfeit and infringing
versions of the Plaintiffs’ trademarks; that consumers are likely to be misled,
confused, or disappointed by the quality of these services; and that the
Plaintiffs may suffer loss of sales for their genuine services and an unnatural
erosion of the legitimate marketplace in which they operate; and
C.
The balance of potential harm to the Defendants in restraining
their trade in counterfeit and infringing branded services if a preliminary
injunction is issued is far outweighed by the potential harm to the Plaintiffs,
their reputations, and their goodwill as a manufacturer and distributor of
quality entertainment content if such relief is not issued.
D.
The public interest favors issuance of the preliminary injunction to
protect the Plaintiffs’ trademark and copyright interests and protect the public
from being defrauded by the palming off of counterfeit services as the Plaintiffs’
genuine services.
4. Conclusion
For the foregoing reasons, it is ordered and adjudged that the Plaintiffs’
Application for Preliminary Injunction (ECF No. 6) is hereby granted as follows:
(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 hereby restrained
and enjoined until further Order of this Court:
a. From advertising, promoting, copying, broadcasting, publicly
performing, and/or distributing any of the Plaintiffs’ content or
copyrighted works;
b. From advertising, promoting, offering, distributing, using,
and/or causing to be advertised, promoted, offered and/or
distributed, any services using the ABS-CBN Marks, or any
confusingly similar trademarks, other than those actually
offered or distributed by the Plaintiffs; and
5
c. From secreting, concealing, destroying, selling off, transferring,
or otherwise disposing of: (i) any evidence relating to the
promotion, advertisement, and/or distribution of services or
copyrighted content bearing or under the ABS-CBN Marks, or
any confusingly similar trademarks or public performances or
distributions of the Plaintiffs’ Copyrighted Works.
(2)
Each of the Defendants, its officers, directors, employees, agents,
subsidiaries, distributors, and all persons in active concert or participation
with any Defendant having notice of this Order shall immediately discontinue,
until further Order of this Court, the use of the ABS-CBN Marks or any
confusingly similar trademarks, on or in connection with all Internet websites,
social media profiles, domain names, or businesses owned and operated, or
controlled by them, including the Internet websites operating under the Subject
Domain Names;
(3)
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 use of the ABS-CBN Marks, or any confusingly similar
trademarks within domain name extensions, metatags or other markers within
website source code, from use on any webpage (including as the title of any
web page), from any advertising links to other websites, from search engines'
databases or cache memory, and any other form of use of such terms which is
visible to a computer user or serves to direct computer searches to websites
registered by, owned, or operated by each of the Defendants, including the
Internet websites operating under the Subject Domain Names;
(4)
Each of the Defendants shall not transfer ownership of the Subject
Domain Names during the pendency of this action, or until further order of the
Court;
(5)
The domain name registrars for the Subject Domain Names are
directed, to the extent not already done, to transfer to the Plaintiffs’ counsel, for
deposit with this Court, domain name certificates for the Subject Domain
Names;
(6)
Upon the Plaintiffs’ request, the privacy protection service for any
of the Subject Domain Names for which the registrant uses such privacy
protection service to conceal the registrant’s identity and contact information
6
are ordered, to the extent not already done, to disclose to the Plaintiffs the true
identities and contact information of those registrants;
(7)
The domain name registrars for the Subject Domain Names shall
immediately, to the extent not already done, assist in changing the registrar of
record for the Subject Domain Names, to a holding account with a registrar of
the Plaintiffs’ choosing (the “New Registrar”), excepting any such domain
names which such registrars have been notified in writing by the Plaintiffs have
been or will be dismissed from this action, or as to which the Plaintiffs have
withdrawn their request to immediately transfer such domain names. To the
extent the registrars do not assist in changing the registrars of record for the
domains under their respective control within one (1) business day of receipt of
this Order, the top-level domain (TLD) registries for the Subject Domain Names
or their administrators, including backend registry operators or administrators,
within five (5) business days of receipt of this Order shall change, or assist in
changing, the registrar of record for the Subject Domain Names to a holding
account with the New Registrar, excepting any such domain names which such
registries have been notified in writing by the Plaintiffs have been or will be
dismissed from this action or as to which the Plaintiffs have withdrawn their
request to immediately transfer such domain names. Upon the change of the
registrar of record for the Subject Domain Names, the New Registrar will
maintain access to the Subject Domain Names in trust for the Court during the
pendency of this action. Additionally, the New Registrar shall immediately
institute a temporary 302 domain name redirection which will automatically
redirect any visitor to the Subject Domain Names to the following Uniform
Resource Locator (“URL”) http://servingnotice.com/B5C4GF0/index.html
whereon copies of the Complaint, this Order, and all other documents on file in
this action shall be displayed. Alternatively, the New Registrar may update the
Domain Name System (“DNS”) data it maintains for the Subject Domain
Names, which link the domain names to the IP addresses where their
associated
websites
are
hosted,
to
NS1.MEDIATEMPLE.NET
and
NS2.MEDIATEMPLE.NET, which will cause the domain names to resolve to the
website where copies of the Complaint, this Order, and all other documents on
file in this action shall be displayed. After the New Registrar has effected this
change, the Subject Domain Names shall be placed on lock status, preventing
the modification or deletion of the domains by the New Registrar or the
Defendants;
(8)
Each Defendant shall continue to preserve copies of all computer
files relating to the use of any of the Subject Domain Names and shall take all
7
steps necessary to retrieve computer files relating to the use of the Subject
Domain Names that may have been deleted before the entry of this Order;
(9)
This Order shall apply to the Subject Domain Names, associated
websites, and any other domain names and websites properly brought to the
Court’s attention and verified by sworn affidavit that such new domain names
are being used by the Defendants for the purpose of counterfeiting the ABSCBN Marks, infringing the Copyrighted Works, or unfairly competing with the
Plaintiffs on the World Wide Web;
(10) As a matter of law, this Order shall no longer apply to any
Defendant or associated domain name dismissed from this action or as to
which the Plaintiffs have withdrawn its request for a preliminary injunction;
(11) Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), the
Plaintiffs shall maintain their previously posted bond in the amount of Ten
Thousand Dollars and Zero Cents ($10,000.00), 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; and
(12) This preliminary injunction shall remain in effect during the
pendency of this action, or until further Order of this Court.
Done and ordered at Miami, Florida, on April 28, 2017.
________________________________
Robert N. Scola, Jr.
United States District Judge
8
SCHEDULE A
DEFENDANTS BY NUMBER AND SUBJECT DOMAIN NAME
Def.
No.
1
2
2
2
3
4
5
6
7
8
8
9
10
11
11
12
13
14
15
16
17
18
19
Subject
Domain
Name
cinesilip.net
pinoychanneltv.me
pinoytambayantv.me
pinoytambayanreplay.net
drembed.com
embeds.me
fullpinoymovies.com
lambingan.ph
magtvna.com
pinoy1tv.ch
pinoy1tv.cc
pinoychannel.co
pinoye.com
wowpinoytambayan.ws
pinoytelebyuwers.se
pinoyteleserye.org
pinoytvnetwork.net
pinoytopmovies.info
pinoytvreplay.ws
teleserye.me
watchpinaytv.com
wildpinoy.net
pinoy-hd.com
9
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?