Juicy Couture Inc. v. Bella International Limited et al

Filing 39

OPINION AND ORDER: re: 4 MOTION for Preliminary Injunction. filed by Juicy Couture Inc. For the reasons that are set forth in this Order, Plaintiffs motion or a preliminary injunction is granted in part and denied in part. Plaintiff is directed to submit a proposed order consistent with this Opinion by March 22, 2013. By March 18, 2013, the parties shall also submit individual letters, no longer than two pages, addressing the appropriate security to be posted by Plaintiff. (Signed by Judge Ronnie Abrams on 3/12/2013 ) (Attachments: # 1 Supplement Part 2, # 2 Supplement Part 3, # 3 Supplement Part 4, # 4 Supplement Part 5)(pl) Modified on 3/13/2013 (pl).

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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Plaintiff,
No. 12 Civ. 5801 (RA)
-v-

OPINION AND ORDER
BELLA INTERNATIONAL LIMITED, eta!.,
Defendants.

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RONNIE ABRAMS, United States District Judge:
Plaintiff Juicy Couture, Inc. ("Juicy" or "Plaintiff') brings this action against Defendants
Bella International Limited, Juicy Girl Ltd., Gold Stable International Ltd., Goldstable
International Corporation, John Suen, and Jessica Ching Ping Yang (collectively, "Defendants")
asserting, inter alia, claims for trademark infringement, trademark counterfeiting and
cybersquatting. Before the Court is Plaintiffs motion for a preliminary injunction seeking to
enjoin Defendants from counterfeiting and infringing Plaintiffs trademarks. The Court finds
that Plaintiff has demonstrated the need for a preliminary injunction.
however, to exercise

extraterritorial jurisdiction over Defendants'

The Court declines,
foreign

activities.

Accordingly, for the reasons that follow, Plaintiffs motion for a preliminary injunction is
granted in part and denied in part. 1

Plaintiff also names Alison Law as a defendant in this action. (Compl. ~ 7; Pl.'s Mem. 1.) Ms. Law has
not appeared and the Court has no reason to believe she has notice of this action or of Plaintiffs motion for a
preliminary injunction. Defense counsel has indicated that it represents all Defendants except for Ms. Law.
(Transcript of February 14,2013 Hearing ("Tr.") 2-3.) Accordingly, this Order does not bind Ms. Law. See Fed. R.
Civ. P. 65(a)(1) ("The court may issue a preliminary injunction only on notice to the adverse party.").

I.

Background2
A. The Parties
Plaintiff, a California corporation, has sold fashion apparel and related accessories since

1997.

(Craig Samuelson Declaration, Aug. 22, 2012 ("Samuelson Decl.")

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2.)

Juicy' s

collections are sold in Juicy Couture boutiques throughout the world in over 800 specialty stores
and over 280 department stores in the United States. (ld.

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11.) Plaintiff also maintains an

online retail store at www.juicycouture.com. (Id.) Plaintiff has spent hundreds of millions of
dollars advertising its products through traditional media as well as social media platforms such
as Facebook, Twitter and YouTube.

(ld.

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9.)

Juicy prides itself on having introduced a

" ' California lifestyle' to the world - an ' irreverent, fun, and on-trend lifestyle brand. "' (ld.

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7.)

Its best known product is a velour tracksuit, which was introduced in 2001 and has since been
worn by celebrities including Madonna, Jennifer Lopez and Gwyneth Paltrow, as have many of
its other products. (ld. ~~ 7-8, 10.) Juicy products generated over $1.5 billion in sales from 2009
through 2011. (Id.

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11.)

Defendants design, manufacture and sell apparel and accessones, and have been
operating fashion retail shops since 1995. (John Suen Declaration, Sept. 29, 2012 ("Suen Decl.")
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7.)

Defendants sell their products under several different brands throughout the world,

primarily in Hong Kong, the People's Republic of China and Macao. (ld.
brand is Juicy Girl. (Id.

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4.) Their primary

8.) All Defendants, with the exception of Goldstable International

Corporation ("Goldstable Corp."), are Hong Kong corporate entities or citizens of, or individuals
residing in, Hong Kong. (Countercls.

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4-8.) Suen and Yang co-founded Bella Boutique Shop

in Hong Kong in 1997 as a fashion retail shop. (Suen Decl.

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1.) Their business, now under the

The following facts are taken from the Complaint, hearing testimony and exhibits, as well as the parties'
memoranda of law.

2

umbrella of Bella International, Ltd. ("Bella"), has grown to include over fifteen stores. (Id.

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7.)

Defendants use the social media platforms Facebook, Twitter and Sina Weibo (which is largely
directed to consumers in the People's Republic of China) for promotion of their brands. (Id.
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19.) Defendants spent over $250,000 in marketing and advertising in each of the last two years

and had sales in 2011 of close to $13 million. (Suen Dec!.

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12-13 .)

B. The Relevant Trademarks and Their Use
Plaintiff owns several federally registered trademarks (the "Juicy Marks").

These

registered trademarks include JUICY, JUICY COUTURE, JUICY GIRL, CHOOSE JUICY,
JUICY BABY, BORN IN THE GLAMOROUS USA and several design marks, including but
not limited to the following:

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(List of Plaintiffs Registered Marks ("Samuelson Dec!. Ex. A.").) 3 Plaintiff uses the Juicy
Marks in connection with the sale of apparel and accessories, retail store services and online
retail store services. (Id.) The Juicy Marks are among Plaintiffs most important and valuable
assets. (Id.

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14.)

Defendants use the marks JUICY GIRL, JUICYLICIOUS and JG in the promotion and
sales of their Juicy Girl products. (Tamara Tarbutton Declaration, Aug. 17, 2012 ("Tarbutton
Dec!.")~~

26, 31; Nanny Munno Declaration, Aug. 6, 2012 ("Munno Decl.")

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7.) Defendants

also use the following design mark, which incorporates the phrase Juicy Girl, the initials JG, a
crown and gothic lettering:

3

Plaintiff also asserts rights in numerous unregistered marks. This Opinion solely addresses Plaintiff's registered
marks.

3

(Screenshots of Defendants' Facebook Page ("Tarbutton DecI. Ex. G").)
While the majority of Defendants' sales are made abroad, Defendants have sold products
containing these marks in the United States through the website www.juicygirl.com.hk (the "HK
Website").

(Suen Decl.

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16; Tarbutton Decl.

maintained and operated in Hong Kong.

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9; Munno Decl.

(Suen Decl.

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7.) The HK Website is

14; Defs.' Opp' n 1.)

It contains

I

information about the Juicy Girl brand and is capable of accepting online orders from around the
world through PayPal. (Suen Decl. ~~ 14, 17; Tarbutton Decl. ~~ 6,

13l

All of Defendants'

known sales to the United States, which total less than $3,000, were made through this website.
(Suen DecI.

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16.) A portion of these sales were made to Plaintiffs investigators in connection

with this litigation. (Id.) Plaintiffs investigators ordered, purchased and received Defendants'
merchandise from the HK Website. (Tarbutton Decl.

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23, 25-26, 31; Munno Decl.

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5-7.)

The clothing and packaging delivered to the investigators in the United States displayed the
marks in question. (Tarbutton Decl.

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26, 31; Munno Decl.

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7.)

A google.com search for "Juicy Girl" yields Plaintiffs website as the first hit (which
appears to be a paid advertisement) and Defendants' website as the second unpaid hit.
(Screenshot of google.com search ("Tarbutton Decl. Ex. F.").)

Defendants also own or control three other domain names: (I) www.juicylicious.us, (2) www.juicygirl.us,
and (3) www.justglam.us. (Suen Dec!. ~ 20.) These websites do not offer products for sale and have never been
used to make sales to the United States. (!QJ Plaintiff alleges that Defendants are also registrants of the website
www.juicylicious.com.hk. (Compl. ~ 26; Tarbutton Decl. ~~ 16-17.)

4

C. Procedural History
In 2008, Plaintiff sued Defendants for trademark infringement in Hong Kong (the "Hong
Kong action"). (Suen Decl.

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25.) Discovery in the Hong Kong action has been completed and

the parties anticipate a trial sometime in 2013. (Defs.' Opp'n 8; Transcript of February 14,2013
Hearing ("Tr. ") 11.)
On July 27, 2012, Plaintiff filed a complaint against Defendants in this Court alleging the
following six causes of action: ( 1) trademark infringement and counterfeiting pursuant to 15
U.S.C. § 1114; (2) unfair competition and false designation of origin pursuant to 15 U.S.C.
§ 1125(a); (3) cybersquatting pursuant to the Anticybersquatting Consumer Protection Act, 15

U.S.C. § 1125(d)(l); (4) unlawful deceptive acts and practices under New York Business Law;
(5) common law trademark infringement; and (6) common law unfair competition. (Compl.
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44-78.) The instant motion, filed on August 27, 2012, seeks to enjoin Defendants from the

following during the pendency of this action:
1. Using the Juicy Marks, or any reproduction, counterfeit, copy or colorable imitation of
the Juicy Marks in connection with the distribution, advertising, offer for sale and/or sale
of merchandise not the genuine products of Plaintiff;
2. Passing off, inducing or enabling others to sell or pass off any infringing products as and
for Juicy Couture products;
3. Shipping, delivering, holding for sale, distributing, returning, transferring or otherwise
moving, storing or disposing of in any manner apparel or other items falsely bearing the
Juicy Marks, or any reproduction, counterfeit, copy or colorable imitation of same; and
4. Utilizing the [Defendants' websites] and registering any additional domain names that
use or incorporate any of the Juicy Marks.
(Pl.'s Mot. 2.) Plaintiffs motion also requests that the Court "further order[], to effect the
requested relief, that, during the pendency of this [a]ction, Defendants' websites ... be disabled
by the appropriate domain name registries or registrars." (Id.) After the motion was fully

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