Smart Study Co. Ltd. v. Ababyking Store et al

Filing 6

AMENDED PRELIMINARY INJUNCTION ORDER: The injunctive relief previously granted in the TRO shall remain in place through the pendency of this litigation, and issuing this Order is warranted under Federal Rule of Civil Procedure 65 and Section 34 of th e Lanham Act. Accordingly, Defendants are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court: as set forth herein. The $10,000.00 bond posted by Plaintiff shall remain with the Court until a final disposition of this case or until this Order is terminated. This Order shall remain in effect during the pendency of this action, or until further order of the Court. Any Defendants that are subject to this Order may appear and move to dissolve or modify the Order on two (2) days' notice to Plaintiff or on shorter notice as set by the Court. And as set forth herein. SO ORDERED. (Signed by Judge Naomi Reice Buchwald on 3/30/2021) (ama)

Jason M. Drangel (JD 7204)
[e-mail]
Ashly E. Sands (AS 7715)
[e-mail]
Brieanne Scully (BS 3711)
[e-mail]
Danielle S. Yamali (DY 4228)
[e-mail]
EPSTEIN DRANGEL LLP
60 East 42nd Street, Suite 2520
New York, NY 10165
Telephone: [phone]
Facsimile:
[phone]
Attorneys for Plaintiff
Smart Study Co., Ltd.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
SMART STUDY CO., LTD.,
Plaintiff
v.
ABABYKING STORE, AMZPTBOY, BOMCAN,
CLARE-TECH-ONLINE,
CRAFPLAY,
CUTE
CHERRY, DISPLAY IT, DONGXIAO, DOTLITE,
ECSTATICPARTY,
ELSANIKO,
FRUITFUL
PARTY, GLIGLITTR, GLORY PARTERNER,
HABBIPET, JENNIFER PER, JIAZSTYLED, JIEJIN,
JINBAORUI, JU XI, KANGGY, KIDSINWE, KISS
MONKEY,
KOBIT
DIRECT,
KUANCHENGQUXINFAFAXIANSHENGXIAN,
LEJIAWANG, LIANQIANMAOYIY, LYNHEVA,
PAKBOOM, PARTY WELL, PEACOCKUI,
QIYNAO, RONGFUCHANG, SENWAN GIFT
STORE, SHAMI, SIENON, SQZKZC, STARINGIRL,
SUMMERDAYS, TIME-KILLER, TOYS POUCH,
WEI
MI,
WHHOKNB,
XIANHEYUANXINGONGMAOYOUXIANGONGS
I-25, XINGRONGSHENG, YAMATCH DIRECT,
YAWDYA,
YONGCHUNCHENGQINGMAOYIYOUXIANGON
GSI,
YUJIAXINGGONGSI,
YUYOUJIA,

CIVIL ACTION NO.
21-cv-1783 (NRB)
AMENDED
[PROPOSED]
PRELIMINARY
INJUNCTION ORDER

ZHAO2888,
Defendants

ZHONGZHUANG

and

ZITADA,

GLOSSARY
Term
Plaintiff or Smart
Defendants

Amazon

Epstein Drangel
New York Address
Complaint
Application

Yang Dec.
Drangel Dec.

Definition
Smart Study Co., Ltd.
ABabyking Store, AMZPTBOY, Bomcan, Clare-TechOnline, Crafplay, Cute Cherry, Display it,
DONGXIAO, Dotlite, EcstaticParty, Elsaniko, Fruitful
Party, GLIGLITTR, Glory Parterner, Habbipet,
Jennifer Per, Jiazstyled, Jiejin, JINBAORUI, JU XI,
KANGGY, Kidsinwe, Kiss monkey, Kobit Direct,
kuanchengquxinfafaxianshengxian,
Lejiawang,
lianqianmaoyiy, LYNHEVA, PAKBOOM, party well,
peacockui, QIYNAO, rongfuchang, senwan gift store,
ShaMi, sienon, sqzkzc, Staringirl, Summerdays, Timekiller, TOYS POUCH, wei mi, WHHOKNB,
XiAnHeYuanXinGongMaoYouXianGongSi-25,
xingrongsheng,
Yamatch
Direct,
YAWDYA,
yongchunchengqingmaoyiyouxiangongsi,
yujiaxinggongsi, yuyoujia, ZHAO2888, ZhongZhuang
and Zitada
Amazon.com, a Seattle, Washington-based, online
marketplace and e-commerce platform owned by
Amazon.com, Inc., a Delaware corporation, that allows
manufacturers and other third-party merchants, like
Defendants, to advertise, distribute, offer for sale, sell
and ship their retail products, which, upon information
and belief, primarily originate from China, directly to
consumers worldwide and specifically to consumers
residing in the U.S., including New York
Epstein Drangel LLP, counsel for Plaintiff
244 Madison Ave, Suite 411, New York, New York
10016
Plaintiff’s Complaint filed on March 2, 2021
Plaintiff’s Ex Parte Application for: 1) a temporary
restraining order; 2) an order restraining Merchant
Storefronts (as defined infra) and Defendants’ Assets
(as defined infra) with the Financial Institutions (as
defined infra); 3) an order to show cause why a
preliminary injunction should not issue; 4) an order
authorizing bifurcated and alternative service and 5) an
order authorizing expedited discovery filed on March
2, 2021
Declaration of Su Jeong Yang in Support of Plaintiff’s
Application
Declaration of Jason M. Drangel in Support of
Plaintiff’s Application
i

Baby Shark Content
Baby Shark
Applications

Baby Shark
Registrations

One of Smart’s most successful creations, which is the
Pinkfong “Baby Shark” song and viral music video
with characters
U.S. Trademark Serial Application Nos.: 79/253,035
for registration of “BABY SHARK” for a variety of
goods in Classes 41, 25, 16 and 9; 79/249,403 for
registration of “PINKFONG BABY SHARK” for a
variety of goods in Classes 24 and 21; 88/396,786 for
registration of “PINKFONG BABY SHARK” for a
variety of goods in Class 25; 88/529,984 for registration
of “PINKFONG” for a variety of goods in Class 2, 3,
9, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 41;
88/530,086 for registration of “BABY SHARK” for a
variety of goods in Class 2, 3, 9, 14, 16, 18, 20, 21, 24,
25, 26, 27, 28, 29, 30, 32, 41; 88/594,141 for
“PINKFONG” for a variety of goods in Class 5; and
88/594,122 for “BABY SHARK” for a variety of goods
in Class 5
U.S. Trademark Registration Nos.: 5,803,108 for
“BABY SHARK” for a variety of goods in Class 28;
5,483,744 for “PINKFONG” for a variety of goods in
Classes 3 and 21; 5,327,527 for “PINKFONG” for a
variety of goods in Classes 9, 16 and 28; 4,993,122 for
“PINKFONG” a variety of goods in Classes 9 and 25;
6,138,374 for
Class
41;

Baby Shark Marks
Baby Shark Works

Baby Shark Products

Counterfeit Products

and

for a variety of goods in
6,021,523
for

for a variety of goods in
Class 28
The marks covered by the Baby Shark Registrations
and Baby Shark Applications
U.S. Copyright Registration Nos.: VA 2-130-856,
covering Baby Shark; VA 2-130-847, covering Daddy
Shark; VA 2-130-854, covering Mommy Shark; VA 2131-983, covering Pink Fong Mascot; SR 823-609,
covering Baby Shark (Sound Recording and Music);
and PA 2-142-905, covering Baby Shark (Motion
Picture)
An extensive worldwide licensing program for a wide
variety of consumer products such as toys, sound
books, t-shirts, associated with and/or related to the
Baby Shark Content
Products bearing or used in connection with the Baby
Shark Marks and/or Baby Shark Works, and/or
products in packaging and/or containing labels and/or
hang tags bearing the Baby Shark Marks and/or Baby
ii

Infringing Listings
User Accounts

Merchant Storefronts

Defendants’ Assets
Defendants’ Financial
Accounts
Financial Institutions

Third Party Service
Providers

Shark Works, and/or bearing or used in connection with
marks and/or artwork that are confusingly or
substantially similar to the Baby Shark Marks and/or
Baby Shark Works and/or products that are identical or
confusingly or substantially similar to the Baby Shark
Products
Defendants’ listings for Counterfeit Products
Any and all websites and any and all accounts with
online marketplace platforms such as Amazon, as well
as any and all as yet undiscovered accounts with
additional online marketplace platforms held by or
associated with Defendants, their respective officers,
employees, agents, servants and all persons in active
concert or participation with any of them
Any and all User Accounts through which Defendants,
their respective officers, employees, agents, servants
and all persons in active concert or participation with
any of them operate storefronts to manufacture, import,
export, advertise, market, promote, distribute, display,
offer for sale, sell and/or otherwise deal in Counterfeit
Products, which are held by or associated with
Defendants, their respective officers, employees,
agents, servants and all persons in active concert or
participation with any of them
Any and all money, securities or other property or
assets of Defendants
Any and all financial accounts associated with or
utilized by any Defendants or any Defendants’ User
Accounts or Merchant Storefront(s)
Any banks, financial institutions, credit card companies
and payment processing agencies, such as
Amazon.com, Inc., Amazon Payments, Inc. (“Amazon
Pay”), PayPal Inc. (“PayPal”), Payoneer Inc.
(“Payoneer”), PingPong Global Solutions, Inc.
(“PingPong”) and other companies or agencies that
engage in the processing or transfer of money and/or
real or personal property of Defendants
Online marketplace platforms, including, without
limitation, those owned and operated, directly or
indirectly, by Amazon, such as Amazon.com, as well
as any and all as yet undiscovered online marketplace
platforms and/or entities through which Defendants,
their respective officers, employees, agents, servants
and all persons in active concert or participation with
any of them manufacture, import, export, advertise,
market, promote, distribute, offer for sale, sell and/or
iii

otherwise deal in Counterfeit Products which are
hereinafter identified as a result of any order entered in
this action, or otherwise

iv

WHERAS, Plaintiff having moved ex parte on March 2, 2021 against Defendants for the
following: 1) a temporary restraining order; 2) an order restraining Merchant Storefronts and
Defendants’ Assets with the Financial Institutions; 3) an order to show cause why a preliminary
injunction should not issue; 4) an order authorizing bifurcated and alternative service and 5) an
order authorizing expedited discovery;
WHEREAS, the Court entered an Order granting Plaintiff’s Application on March 3, 2021
(“TRO”) which ordered Defendants to appear on March 16, 2021 at 11:00 a.m. to show cause why
a preliminary injunction should not issue (“Show Cause Hearing”);
WHEREAS, on March 10, 2021, Plaintiff filed a request for modification and extension of
the TRO;
WHEREAS, the Court granted Plaintiff’s request and entered an Order on March 11, 2021
(“March 11, 2021 Order”) extending the TRO until March 30, 2021 and rescheduling the Show
Cause Hearing to March 30, 2021 at 11:00 a.m.;
WHEREAS, on March 15, 2021, pursuant to the alternative methods of service authorized
by the TRO, Plaintiff served the Summons, Complaint, TRO, all papers filed in support of the
Application and the March 11, 2021 Order on each and every Defendant;
WHEREAS, on March 30, 2021 at 11:00 a.m., Plaintiff appeared at the Show Cause
Hearing, however, no Defendants appeared.
ORDER
1. The injunctive relief previously granted in the TRO shall remain in place through the
pendency of this litigation, and issuing this Order is warranted under Federal Rule of Civil
Procedure 65 and Section 34 of the Lanham Act.
a) Accordingly, Defendants are hereby restrained and enjoined from engaging in any of

1

the following acts or omissions pending the final hearing and determination of this
action or until further order of the Court:
i. manufacturing, importing, exporting, advertising, marketing, promoting,
distributing, displaying, offering for sale, selling and/or otherwise dealing in
Counterfeit Products or any other products bearing the Baby Shark Marks
and/or Baby Shark Works and/or marks or works that are confusingly or
substantially similar to, identical to and constitute a counterfeiting and/or
infringement of the Baby Shark Marks and/or Baby Shark Works;
ii. directly or indirectly infringing in any manner Plaintiff’s Baby Shark Marks
and/or Baby Shark Works;
iii. using any reproduction, counterfeit, copy or colorable imitation of Plaintiff’s
Baby Shark Marks and/or Baby Shark Works to identify any goods or services
not authorized by Plaintiff;
iv. using Plaintiff’s Baby Shark Marks and/or Baby Shark Works or any other
marks or artwork that are confusingly or substantially similar to the Baby Shark
Marks and/or Baby Shark Works on or in connection with Defendants’
manufacturing, importing, exporting, advertising, marketing, promoting,
distributing, displaying, offering for sale, selling and/or otherwise dealing in
Counterfeit Products;
v. using any false designation of origin or false description, or engaging in any
action which is likely to cause confusion, cause mistake and/or to deceive
members of the trade and/or the public as to the affiliation, connection or
association of any product manufactured, imported, exported, advertised,

2

marketed, promoted, distributed, displayed, offered for sale or sold by
Defendants with Plaintiff, and/or as to the origin, sponsorship or approval of
any product manufactured, imported, exported, advertised, marketed,
promoted, distributed, displayed, offered for sale or sold by Defendants and
Defendants’ commercial activities and Plaintiff;
vi. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with: (i) Counterfeit Products and/or (ii) any
computer files, data, business records, documents or any other records or
evidence relating to their User Accounts, Merchant Storefronts or Defendants’
Assets and the manufacture, importation, exportation, advertising, marketing,
promotion, distribution, display, offering for sale and/or sale of Counterfeit
Products;
vii. effecting assignments or transfers, forming new entities or associations, or
creating and/or utilizing any other platform, User Account, Merchant Storefront
or any other means of importation, exportation, advertising, marketing,
promotion, distribution, display, offering for sale and/or sale of Counterfeit
Products for the purposes of circumventing or otherwise avoiding the
prohibitions set forth in this Order; and
viii. knowingly instructing, aiding or abetting any other person or business entity in
engaging in any of the activities referred to in subparagraphs 1(a)(i) through
1(a)(vii) above and 1(b)(i) through 1(b)(ii).
b) Accordingly, the Third Party Service Providers and Financial Institutions are hereby
restrained and enjoined from engaging in any of the following acts or omissions

3

pending the final hearing and determination of this action or until further order of the
Court:
i. secreting, concealing, transferring, disposing of, withdrawing, encumbering or
paying Defendants’ Assets from or to Defendants’ Financial Accounts until
further ordered by this Court;
ii. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with any computer files, data, business records,
documents or any other records or evidence relating to the Defendants’ User
Accounts, Merchant Storefronts, Defendants’ Assets and the manufacture,
importation, exportation, advertising, marketing, promotion, distribution,
display, offering for sale and/or sale of Counterfeit Products; and
iii. knowingly instructing, aiding, or abetting any other person or business entity in
engaging in any of the activities referred to in subparagraphs 1(a)(i) through
1(a)(vii) and 1(b)(i) through 1(b)(ii) above.
2. As sufficient cause has been shown, the expedited discovery previously granted in the TRO
shall remain in place through the pendency of this litigation, including that:
a) Plaintiff may serve interrogatories pursuant to Rules 26 and 33 of the Federal Rules of
Civil Procedure as well as Local Civil Rule 33.3 of the Local Rules for the Southern
and Eastern Districts of New York and Defendants who are served with this Order shall
provide written responses under oath to such interrogatories within fourteen (14) days
of service to Plaintiff’s counsel.
b) Plaintiff may serve requests for the production of documents pursuant to Rules 26 and
34 of the Federal Rules of Civil Procedure and Defendants who are served with this

4

Order, their respective officers, employees, agents, servants and attorneys and all
persons in active concert or participation with any of them who receive actual notice of
this Order shall produce all documents responsive to such requests within fourteen (14)
days of service to Plaintiff’s counsel.
c) Within fourteen (14) days after receiving notice of this Order, all Financial Institutions
who receive service of this Order shall provide Plaintiff’s counsel with all documents
and records in their possession, custody or control, relating to any and all of
Defendants’ Financial Accounts, User Accounts and Merchant Storefronts, including,
but not limited to, documents and records relating to:
i.

account numbers;

ii.

current account balances;

iii.

any and all identifying information for Defendants and Defendants' User Accounts,
including names, addresses and contact information;

iv.

any and all account opening documents and records, including, but not limited to,
account applications, signature cards, identification documents, and if a business
entity, any and all business documents provided for the opening of each and every
of Defendants’ Financial Accounts;

v.

any and all deposits and withdrawal during the previous year from each and every
of Defendants’ Financial Accounts and any and all supporting documentation,
including, but not limited to, deposit slips, withdrawal slips, cancelled checks and
account statements;

vi.

any and all wire transfers into each and every of Defendants’ Financial Accounts
during the previous year, including, but not limited to, documents sufficient to show

5

the identity of the destination of the transferred funds, the identity of the
beneficiary’s bank and the beneficiary’s account number;
vii.

the nature of Defendants’ businesses and operations, methods of payment, methods
for accepting payment and any and all financial information, including, but not
limited to, information associated with Defendants’ User Accounts, a full
accounting of Defendants’ sales history and listing history under such accounts,
and Defendants’ Financial Accounts associated with Defendants’ User Accounts;
and

viii.

Defendants’ manufacturing, importing, exporting, advertising, marketing,
promoting, distributing, displaying, offering for sale and/or selling of Counterfeit
Products, or any other products bearing the Baby Shark Marks and/or Baby Shark
Works and/or marks or artwork that are confusingly or substantially similar to,
identical to and constitute a counterfeiting and/or infringement of the Baby Shark
Marks or Baby Shark Works.

d) Within fourteen (14) days of receipt of service of this Order, the Third Party Service Providers
shall provide to Plaintiff’s counsel all documents and records in its possession, custody or
control relating to Defendants’ User Accounts and Defendants’ Merchant Storefronts,
including, but not limited to, documents and records relating to:
i.

any and all User Accounts and Defendants’ Merchant Storefronts and account
details, including, without limitation, identifying information and account numbers
for any and all User Accounts and Defendants’ Merchant Storefronts that
Defendants have ever had and/or currently maintain with the Third Party Service
Providers;

6

ii.

the identities, location and contact information, including any and all e-mail
addresses of Defendants;

iii.

the nature of Defendants’ businesses and operations, methods of payment, methods
for accepting payment and any and all financial information, including, but not
limited to, information associated with Defendants’ User Accounts and
Defendants’ Merchant Storefronts, a full accounting of Defendants’ sales history
and listing history under such accounts and Defendants’ Financial Accounts with
any and all Financial Institutions associated with Defendants’ User Accounts and
Defendants’ Merchant Storefronts; and

iv.

Defendants’ manufacturing, importing, exporting, advertising, marketing,
promoting, distributing, displaying, offering for sale and/or selling of Counterfeit
Products, or any other products bearing the Baby Shark Marks and/or Baby Shark
Works and/or marks or artwork that are confusingly or substantially similar to,
identical to and constitute an infringement of the Baby Shark Marks and/or Baby
Shark Works.

3. As sufficient cause has been shown, and pursuant to FRCP 4(f)(3), service may be made
on, and shall be deemed effective as to Defendants if it is completed by one of the following
means:
a)

delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website (including
NutStore, a large mail link created through Rmail.com or via website publication
through

a

specific

page

dedicated

to

this

Lawsuit

accessible

through

ipcounselorslawsuit.com) where each Defendant will be able to download a PDF copy

7

of this Order, to Defendants’ e-mail addresses as identified by Amazon pursuant to
Paragraph V(C) of the TRO.
4. As sufficient cause has been shown, that such alternative service by electronic means
ordered in the TRO and herein shall be deemed effective as to Defendants, Third Party
Service Providers and Financial Institutions through the pendency of this action.
5. As sufficient cause has been shown, service of this Order shall be made on and deemed
effective as to the Third Party Service Providers and Financial Institutions if it is completed
by the following means:
a) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where
PayPal will be able to download a PDF copy of this Order via electronic mail to
PayPal Legal Specialist at [e-mail];
b) delivery of: (i) a true and correct copy of this Order via Federal Express to
Amazon.com, Inc. at Corporation Service Company 300 Deschutes Way SW, Suite
304, Tumwater, WA 98501, (ii) a PDF copy of this Order or (iii) a link to a secure
website where Amazon.com, Inc. and Amazon Pay will be able to download a PDF
copy of this Order via electronic mail to Deana Ahn counsel for Amazon Pay, at
[e-mail];
c) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where
Payoneer Inc. will be able to download a PDF copy of this Order via electronic mail
to

Payoneer

Inc.’s

Customer

Service

Management

at

[e-mail] and Edward Tulin, counsel for Payoneer
Inc., at [e-mail]; and
d) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where

8

PingPong Global Solutions Inc. will be able to download a PDF copy of this Order
via electronic mail to [e-mail].
6. The $10,000.00 bond posted by Plaintiff shall remain with the Court until a final
disposition of this case or until this Order is terminated.
7. This Order shall remain in effect during the pendency of this action, or until further order
of the Court.
8. Any Defendants that are subject to this Order may appear and move to dissolve or modify
the Order on two (2) days’ notice to Plaintiff or on shorter notice as set by the Court.
SO ORDERED.
SIGNED this _____ day of ____________, 2021, at _______ __.m.
12:30 p
30th
March
New York, New York
_________________________________
HON. NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE

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