ABC v. DEF

Filing 134

FINAL PARTIAL DEFAULT JUDGMENT AND PERMANENT INJUNCTION ORDER: is hereby ORDERED, ADJUDGED AND DECREED as follows: Judgment is granted in favor of Plaintiff on all claims properly pled against Defaulting Defendants in the Complaint, partial judgment being appropriate given that Rule 54(b)'s three-part test is satisfied, see Grand River Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 164-65 (2d Cir. 2005), including that the Court finds there is no just reason for delay; IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that because it would serve both the compensatory and punitive purposes of the Lanham Act's prohibitions on willful infringement, and because Plaintiff has sufficiently set forth the basis for the statutory damages award requested in its Memorandum of Law in Support of its Motion for Default Judgment, the Court finds such an award to be reasonable and Plaintiff is awarded Fifty Thousand Dollars($50,000.000) in statutory damages against the following forty -nine (49) Defaulting Defendants: as set forth herein. ("Defaulting Defendants' Individual Damages Award) pursuant to 15 U.S.C. § 1117(c) of the Lanham Act for a total of Two Million Four Hundred Fifty Thousand Dollars ($2,450,000 .00), plus post-judgment interest. IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that Defaulting Defendants,their respective officers, agents, servants, employees and all persons acting in concert with or under the direction of Defaulting Defendants ( regardless of whether located in the United States or abroad), who receive actual notice of this Order are permanently enjoined and restrained from: as set forth herein. IT IS FURTHER ORDERED, as sufficient cause has been shown, the 30 day automatic stay on enforcing Plaintiff's judgment, pursuant to Fed. R. Civ. Pro. 62(a) is hereby dissolved. Any failure by Defaulting Defendants to comply with the terms of this Order shall be deemed contempt of Court, subjecting Defaulting Defendants to c ontempt remedies to be determined by the Court, including fines and seizure of property; and This Court shall retain jurisdiction over this matter and the parties in order to construe and enforce this Order. SO ORDERED., Blue Vivi, Bonuswen, Citiho my, DAFA International, Dazzparty, FAming, GeGeonly, HAITing$, HAPPY PARTY-001, Haocheng-Trade, Heartland GO, Huibi-US, Joysail, Jyoker-US1, Kangxinsheng1, LADYBEETLE, LICHE Cupcake Stand, Mary Good Shop, NA-AMZ001, Nagiwart, Nuoting, QT-US, Qin gshu, SALIMHIB-US, SAM CLAYTONddg, SMSCHHX, Sensiamz Backdrop, Sujiumaisusu, Telike, Theguard, Tongmumy, Une Petite Mouette, Veterans Club, WEN MIKE, WONDERFUL MEMORIES, WOW GIFT, Xuanningshangwu, Xuiyui7i, YAMMO202, Yicheny US, Yongchunchengqingmaoyiyouxiangongsi, YooFly, Zingon US, lvyun, Acuteye-US, and Beijingkangxintangshangmaoyouxiangongsi terminated. (Signed by Judge Gregory H. Woods on 11/16/2023) (ama)

Jason M. Drangel (JD 7204)
[e-mail]
Ashly E. Sands (AS 7715)
[e-mail]
Danielle S. Futterman (DY 4228)
[e-mail]
Gabriela N. Nastasi
[e-mail]
EPSTEIN DRANGEL LLP
60 East 42nd Street, Suite 1250
New York, NY 10165
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Plaintiff
Smart Study Co., Ltd.

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #:
DATE FILED: 11/16/2023

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
SMART STUDY CO., LTD.,
Plaintiff
v.

ACUTEYE-US,
APZNOE-US,
BEIJINGKANGXINTANGSHANGMAOYOUXIAN
GONGSI,
BLUE
VIVI,
BONUSWEN,
CHANGGESHANGMAOYOUXIANGONGSI,
CITIHOMY, CKYPEE, DAFA INTERNATIONAL,
DAZZPARTY, FAMING, GAIFEI TRADE CO LTD,
GEGEONLY, HAITING$, HAOCHENG-TRADE,
HAPPY PARTY-001, HEARTLAND GO, HUIBI-US,
JOYSAIL,
JYOKER-US1,
KANGXINSHENG1,
LADYBEETLE, LICHE CUPCAKE STAND,
LVYUN, MARY GOOD SHOP, NA-AMZ001,
NAGIWART, NUOTING, QINGSHU, QT-US,
SALIMHIB-US, SAM CLAYTONDDG, SENSIAMZ
BACKDROP,
SHENZHENSHIXINDAJIXIEYOUXIANGONGSI,
SMASSY US, SMSCHHX, SUJIUMAISUSU,
SUNNYLIFYAU,
TELIKE,
THEGUARD,
TONGMUMY, TOPIVOT, TUOYI TOYS, UNE
PETITE MOUETTE, VETERANS CLUB a/k/a 老兵俱

CIVIL CASE No.
21-cv-5860 (GHW)
[PROPOSED]
FINAL PARTIAL DEFAULT
JUDGMENT AND
PERMANENT INJUNCTION
ORDER

乐部, WCH- US, WEN MIKE, WONDERFUL
MEMORIES, WOW GIFT, XUANNINGSHANGWU,
XUEHUA INC, XUIYUI7I, YAMMO202, YICHENY
US,
YLILILY,
YONGCHUNCHENGQINGMAOYIYOUXIANGON
GSI, YOOFLY and ZINGON US,
Defendants

GLOSSARY
Term

Definition

Plaintiff or
Smart

Smart Study Co., Ltd.

Defendants

Acuteye-US,
APZNOE-US,
beijingkangxintangshangmaoyouxiangongsi, blue vivi,
Bonuswen,
changgeshangmaoyouxiangongsi,
Citihomy, Ckypee, DAFA International, Dazzparty,
FAming, GaiFei Trade Co Ltd, GeGeonly, HAITing$,
Haocheng-Trade, HAPPY PARTY-001, Heartland GO,
Huibi-US, Joysail, Jyoker-US1, Kangxinsheng1,
LADYBEETLE, LICHE Cupcake stand, lvyun, Mary
good shop, NA-AMZ001, Nagiwart, nuoting, Qingshu,
QT-US, SALIMHIB-US, SAM CLAYTONddg,
Sensiamz
Backdrop,
shenzhenshixindajixieyouxiangongsi, SMASSY US,
SMSCHHX, sujiumaisusu, sunnylifyau, telike,
Theguard, tongmumy, Topivot, Tuoyi Toys, Une petite
mouette, Veterans Club a/k/a 老兵俱乐部, wch- us,
WEN MIKE, WONDERFUL MEMORIES, WOW
GIFT, xuanningshangwu, XueHua INC, Xuiyui7i,
YAMMO202,
Yicheny
US,
YLILILY,
yongchunchengqingmaoyiyouxiangongsi, YooFly and
Zingon US
Acuteye-US,
APZNOE-US,
beijingkangxintangshangmaoyouxiangongsi, blue vivi,
Bonuswen, Citihomy, Ckypee, DAFA International,
Dazzparty, FAming, GeGeonly, HAITing$, HaochengTrade, HAPPY PARTY-001, Heartland GO, Huibi-US,
Joysail, Jyoker-US1, Kangxinsheng1, LADYBEETLE,
LICHE Cupcake stand, lvyun, Mary good shop, NAAMZ001, Nagiwart, nuoting, Qingshu, QT-US,
SALIMHIB-US, SAM CLAYTONddg, Sensiamz
Backdrop, SMSCHHX, sujiumaisusu, telike, Theguard,
tongmumy, Une petite mouette, Veterans Club a/k/a 老
兵俱乐部, wch- us, WEN MIKE, WONDERFUL
MEMORIES, WOW GIFT, xuanningshangwu,
Xuiyui7i,
YAMMO202,
Yicheny
US,
yongchunchengqingmaoyiyouxiangongsi, YooFly and
Zingon US
Amazon.com, a Seattle, Washington-based, online
marketplace and e-commerce platform owned by
Amazon.com, Inc., a Delaware corporation, that allows

Defaulting
Defendants

Amazon

Docket Entry
Number
N/A

i

N/A

N/A

N/A

Sealing Order
Complaint
Application

Yang Dec.
Futterman Dec.
TRO

PI Show Cause
Hearing
PI Order
User Account(s)

Merchant
Storefronts

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
Order to Seal File entered on July 6, 2021
Plaintiff’s Complaint filed on July 8, 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 July 8,
2021
Declaration of Su Jeong Yang in Support of Plaintiff’s
Application
Declaration of Danielle S. Futterman in Support of
Plaintiff’s Application
1) Temporary Restraining Order; 2) Order Restraining
Merchant Storefronts and Defendants’ Assets with the
Financial Institutions; 3) Order to Show Cause Why a
Preliminary Injunction Should Not Issue; 4) Order
Authorizing Bifurcated and Alternative Service; and 5)
Order Authorizing Expedited Discovery entered on July
9, 2021
July 30, 2021 hearing to show cause why a preliminary
injunction should not issue
July 30, 2021 Preliminary Injunction Order
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
ii

Dkt. 1
Dkt. 4
Dkts. 10-13

Dkt. 13
Dkt. 12
Dkt. 14

N/A
Dkt. 16
N/A

N/A

Baby Shark
Content
Baby Shark
Registrations

Defendants, their respective officers, employees,
agents, servants and all persons in active concert or
participation with any of them
One of Smart’s most successful creations, which is the
Pinkfong “Baby Shark” song and viral music video with
characters
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;

N/A
N/A

6,138,374 for
for a variety of goods in
Class 41; 6,337,210 for “PINKFONG BABY SHARK”
for a variety of goods in Class 21 and 6,021,523 for

Baby Shark
Applications

Baby Shark
Marks
Baby Shark
Works

Baby Shark
Products

for a variety of goods in
Class 28
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; 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
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); PA
2-142-905, covering Baby Shark (Motion Picture)
Smart has developed and initiated 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

iii

N/A

N/A
N/A

N/A

Counterfeit
Products

Defendants’
Assets
Defendants’
Financial
Accounts
Financial
Institutions

Third Party
Service
Providers

Defendants’
Frozen Assets

Amazon
Discovery

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 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
Any and all money, securities or other property or assets
of Defendants (whether said assets are located in the
U.S. or abroad)
Any and all financial accounts associated with or
utilized by any Defendants or any Defendants’ User
Accounts or Merchant Storefront(s) (whether said
account is located in the U.S. or abroad)
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
otherwise deal in Counterfeit Products which are
hereinafter identified as a result of any order entered in
this action, or otherwise
Defendants’ Assets from Defendants’ Financial
Accounts that were and/or are attached and frozen or
restrained pursuant to the TRO and/or PI Order, or
which are attached and frozen or restrained pursuant to
any future order entered by the Court in this Action
The supplemental report identifying Defendants’
Infringing ASIN Number, Merchant Customer ID, Net
Ordered Units, among other things, provided by counsel
for Amazon to Plaintiff’s counsel pursuant to the

iv

N/A

N/A
N/A

N/A

N/A

N/A

N/A

August 17, 2022
Order
Supplemental
OSC MOL
Supplemental
Sands Dec.
Plaintiff’s
Motion for
Default
Judgment
Nastasi Aff.

expedited discovery ordered in both the TRO and PI
Order
The Court’s August 17, 2022 Order directing Plaintiff to
show cause why this case should not be dismissed
Plaintiff’s memorandum of law filed in response to the
Court’s August 17, 2022 Order
Declaration by Ashly E. Sands in Support of Plaintiff’s
response to the Court’s August 17, 2022 Order
Plaintiff’s Application for an Order to Show Cause Why
Default Judgment and a Permanent Injunction should
not be entered Against Defaulting Defendants filed on
August 11, 2023
Affidavit by Gabriela N. Nastasi in Support of
Plaintiff’s Motion for Default Judgment

v

Dkt. 101
Dkt. 110
Dkt. 109
Dkts. 116-119

Dkt. 117

This matter comes before the Court by motion filed by Plaintiff for the entry of final
judgment and permanent injunction by default against Defaulting Defendants for Defaulting
Defendants’ trademark infringement, trademark counterfeiting, false designation of origin,
passing off and unfair competition and related state and common law claims arising out of
Defaulting Defendants’ unauthorized use of Plaintiff’s Baby Shark Marks and Baby Shark
Works, without limitation, in their manufacturing, importing, exporting, advertising, marketing,
promoting, distributing, displaying or offering for sale and/or selling and/or sale of Counterfeit
Products.
The Court, having considered the Memorandum of Law and Affidavit of Gabriela
N. Nastasi in support of Plaintiff’s Motion for Default Judgment and a Permanent Injunction
Against Defaulting Defendants, the Certificate of Service of the Summons and Complaint, the
Certificate of the Clerk of the Court stating that no answer has been filed in the instant action,
and upon all other pleadings and papers on file in this action, it is hereby ORDERED,
ADJUDGED AND DECREED as follows:
I.

Defaulting Defendants’ Liability

1) Judgment is granted in favor of Plaintiff on all claims properly pled against Defaulting
Defendants in the Complaint, partial judgment being appropriate given that Rule 54(b)'s three-part test is
satisfied, see Grand River Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 164-65 (2d Cir. 2005),
including that the Court finds there is no just reason for delay;
II.

Damages Awards

1) IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that because it would serve
both the compensatory and punitive purposes of the Lanham Act’s prohibitions on willful
infringement, and because Plaintiff has sufficiently set forth the basis for the statutory damages
award requested in its Memorandum of Law in Support of its Motion for Default Judgment, the
Court finds such an award to be reasonable and Plaintiff is awarded Fifty Thousand Dollars
($50,000.000) in statutory damages against the following forty-nine (49) Defaulting
Defendants: Acuteye-US, APZNOE-US, beijingkangxintangshangmaoyouxiangongsi, blue
1

vivi, Bonuswen, Citihomy, Ckypee, DAFA International, Dazzparty, FAming, GeGeonly,
HAITing$, Haocheng-Trade, HAPPY PARTY-001, Heartland GO, Huibi-US, Joysail, JyokerUS1, Kangxinsheng1, LADYBEETLE, LICHE Cupcake stand, lvyun, Mary good shop, NAAMZ001, Nagiwart, nuoting, Qingshu, QT-US, SALIMHIB-US, SAM CLAYTONddg,
Sensiamz Backdrop, SMSCHHX, sujiumaisusu, telike, Theguard, tongmumy, Une petite
mouette, Veterans Club a/k/a 老兵俱乐, wch- us, WEN MIKE, WONDERFUL MEMORIES,
WOW

GIFT,

xuanningshangwu,

Xuiyui7i,

YAMMO202,

Yicheny

US,

yongchunchengqingmaoyiyouxiangongsi, YooFly and Zingon US (“Defaulting Defendants’
Individual Damages Award”) pursuant to 15 U.S.C. § 1117(c) of the Lanham Act for a total of
Two Million Four Hundred Fifty Thousand Dollars ($2,450,000.00), plus post-judgment
interest.
III.

Permanent Injunction

1) IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that Defaulting Defendants,
their respective officers, agents, servants, employees and all persons acting in concert with or
under the direction of Defaulting Defendants (regardless of whether located in the United
States or abroad), who receive actual notice of this Order are permanently enjoined and
restrained from:
A. 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 and/or artwork 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;
2

B. directly or indirectly infringing in any manner Plaintiff’s Baby Shark Marks and/or
Baby Shark Works;
C. 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;
D. using Plaintiff’s Baby Shark Marks and/or Baby Shark Works and/or any other marks
and/or artwork that are confusingly or substantially similar to the Baby Shark Marks
and/or Baby Shark Works on or in connection with the manufacturing, importing,
exporting, advertising, marketing, promoting, distributing, displaying, offering for sale,
selling and/or otherwise dealing in the Counterfeit Products;
E. 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, marketed, promoted, distributed,
displayed, offered for sale or sold by Defaulting 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
Defaulting Defendants and Defaulting Defendants’ commercial activities by Plaintiff;
F. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with: (i) Counterfeit Products; (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,

3

importation, exportation, advertising, marketing, promotion, distribution, display,
offering for sale and/or sale of Counterfeit Products; and
G. 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,
displaying, offering for sale and/or sale of Counterfeit Products for the purposes of
circumventing or otherwise avoiding the prohibitions set forth in this Order.
2)

IT IS FURTHER ORDERED, ADJUDGED AND DECREED that Defaulting Defendants
must deliver up for destruction to Plaintiff any and all Counterfeit Products and any and all
packaging, labels, tags, advertising and promotional materials and any other materials in the
possession, custody or control of Defaulting Defendants that infringe Plaintiff’s Baby Shark
Marks and/or Baby Shark Works or bear any marks and/or artwork that are confusingly or
substantially similar to the Baby Shark Marks and/or Baby Shark Works pursuant to 15 U.S.C.
§ 1118.

3)

IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the Third Party Service
Providers and Financial Institutions are permanently enjoined and restrained from:
A. 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 Defaulting Defendants’ Frozen Assets and
Defaulting Defendants’ Financial Accounts;
B. knowingly instructing, aiding or abetting any other person or business entity in
engaging in any of the activities referred to in subparagraphs III(1)(A) through
III(3)(A) above.

4

IV.

Dissolution of Rule 62(a) Stay and Asset Turnover Pursuant to N.Y. C.P.L.R. § 5225

1) IT IS FURTHER ORDERED, as sufficient cause has been shown, the 30 day automatic stay
on enforcing Plaintiff’s judgment, pursuant to Fed. R. Civ. Pro. 62(a) is hereby dissolved.
V.
1)

Miscellaneous Relief

Any failure by Defaulting Defendants to comply with the terms of this Order shall be deemed
contempt of Court, subjecting Defaulting Defendants to contempt remedies to be determined
by the Court, including fines and seizure of property; and

2) This Court shall retain jurisdiction over this matter and the parties in order to construe and
enforce this Order.
SO ORDERED.
SIGNED this _16th_ day of _November_, 2023.
_________________________________
HON. GREGORY H. WOODS
UNITED STATES DISTRICT JUDGE

5