ABC v. DEF

Filing 53

ORDER MODIFYING PRELIMINARY INJUNCTION granting 46 Motion for Preliminary Injunction.Playboy's motion to modify the November P.I. Order (Dkt. No. 46) is GRANTED. IT IS HEREBY ORDERED, that Defendants, their officers, agents, servants, employ ees, and attorneys, and all others in active concert or participation with them, including Xiaotusky (Shenzhen) Biological Technology Co., Ltd., and the Xiaotusky Associates who receive actual notice of this Order by personal service or otherwise (&q uot;Restrained Parties"), are restrained and enjoined, pending final hearing and determination of this action, from anywhere in the world: As further set forth by this Order. IT IS FURTHER ORDERED that, pursuant to Federal Rule of Civil Procedu re 65, the bond posted on behalf of Playboy in connection with the November P.I. Order shall be converted to/used as security for this preliminary injunction order. SO ORDERED.. (Signed by Judge Victor Marrero on 5/6/2022) (tg) Transmission to Finance Unit (Cashiers) for processing.

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 1 of 25

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
:
PLAYBOY ENTERPRISES INTERNATIONAL,
INC.,
Plaintiff,
v.

:

No. 21-cv-06419-VM

:

ORDER MODIFYING
PRELIMINARY
INJUNCTION

:
:

PLAYBOY ENTERPRISES, INC.; PLBY
GROUP, INC.; JUNHAN HUANG, AKA JOHN
HUANG; MOUNTAIN CREST ACQUISITION
CORP.; PLAYBOY ENTERPRISES (ASIA)
LIMITED; WONG’S CAPITAL HOLDING
GROUP LIMITED; PLAYBOY (CHINA)
BRAND MANAGEMENT CENTER; PLAYBOY
TOBACCO GROUP LIMITED; HUAHUA
RABBIT (XIAMEN) HEALTH SCIENCE AND
TECHNOLOGY CO., LTD; HAIHAN FASHION
(SHANGHAI) ENTERPRISES DEVELOPMENT
CO., LTD.; BUNNIES OWNER GROUP;
BUNNYGIRL CERTIFICATION INSTITUTE;
BUNNY GIRL FOUNDATION, BUNNY GIRL
UNION; BUNNY HUNTER, LLC;
INTERNATIONAL MODEL CERTIFICATION
ASSOCIATION; PLAYBOY ENTERPRISES
INTERNATIONAL, INC.; PLEASURE
INTERNATIONAL, CORP.; WONG’S BANK
GROUP; WONG’S FOUNDATION; WONG’S
INTERNATIONAL BANK; WONG’S
SYNDICATE; WORLD FUTURE LEADER
UNIVERSITY; WORLD INDUSTRIAL
CAPITAL ORGANIZATION; FU MANHUA;
MING CAI; LINGLING ZHANG; JOHN FU; EMODE LIMITED; HUASE SPACE (FUJIAN)
BRAND MANAGEMENT CO., LTD.; KING
WONG; KAI MING LAI; FLOWER COLOR
SPACE (FUJIAN) BRAND MANAGEMENT
COMPANY LTD.; and FANCY SPACE
(FUJIAN) BRAND MANAGEMENT CO. LTD.
Defendants.

5/6/2022

:
:

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 2 of 25

Plaintiff Playboy Enterprises International, Inc. (“Playboy”)1 requests that the November
13, 2021 Preliminary Injunction Order [ECF 44] (“November P.I. Order”) be modified to (1)
clarify that it applies to individuals and entities acting in concert with the Defendants, namely
Xiaotusky (Shenzhen) Biological Technology Co., Ltd. (“Xiaotusky”), and the Xiaotusky
Associates2, (2) declare that the Defendants, and those acting in concert with them, including
Xiaotusky and the Xiaotusky Associates, be prohibited from using the Invalid Notarizations3 in
any way; and (3) declare that the Invalid Notarizations were notarized entirely remotely contrary
to California law and are invalid.
Upon Playboy’s filings to date, the Affidavit of Olivia Liu duly sworn to on April 20,
2022 and its accompanying exhibits (“Liu Affidavit”), the Declaration of Jennifer McCarthy
executed on April 25, 2022 (“McCarthy Decl.”), and Playboy’s Memorandum of Law,
Playboy's motion to modify the November P.I. Order (Dkt. No. 46) is GRANTED.
THE COURT HEREBY FINDS THAT:
1.

1

Playboy filed its original complaint on July 22, 2021 to stop the Original

All undefined terms herein have the same meaning as in Plaintiff’s Amended Complaint.

2

Defined as Shenzhen Zhuoran Intellectual Property Agency Co., Ltd.; Lin Da Rong; Xiaotusky
(Guangzhou) Enterprise Development Co., Ltd; Fu Limei; Rabbit Grandpa (Hainan ) Brand
Management Co., Ltd; Chen Jian; Xiaotusky (Shenzhen) Biotechnology Co., Ltd. (“Xiaotusky
Biotechnology”); Xiaotusky (Shenzhen) Trading Company Ltd. (“Xiaotusky Trading”);
Xiaotusky (Shenzhen) Brand Management Co., Ltd. (“Xiaotusky Brand”); and Huahua Rabbit
(Hangzhou) E-commerce Co., Ltd.
3

The Invalid Notarizations consist of (1) the Fake Authorization Letter to Xiaotusky; (2) the
Fake Authorization Letter to Flower Color Space; and (3) the Fake Certificate of Incumbency as
defined herein.
2

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 3 of 25

Defendants4 from stealing the contents of Playboy’s Website, counterfeiting the Playboy
trademarks and PLAYBOY© Copyrights, forging documents and registering fraudulent entities
all in furtherance of their unlawful acts under: (1) the Lanham Act (15 U.S.C. §§ 1114, 1125(a),
1116) (Counts I and III); (2) the Copyright Act (17 U.S.C. 101, et seq. 502) (Count II), and (3)
trademark and unfair competition under New York common law (Count IV).
2.

Playboy’s claims relate to the Original Defendants’ infringing conduct in

registering multiple fraudulent entities with names using Playboy’s registered trademarks in five
U.S. states.
3.

Defendants have used Playboy’s registered trademarks and copyrighted material

on counterfeit websites to falsely state that Defendants were authorized or affiliated with
Playboy when they are not.
4.

Playboy simultaneously moved for emergency ex parte relief in the form of a

temporary restraining order, account and asset freeze order, expedited discovery order, order
granting alternative service, and order to show cause why a preliminary injunction should not be
granted (Playboy’s “Application”).

4

Defined as Playboy Enterprises, Inc.; PLBY Group, Inc.; Junhan Huang, aka John Huang;
Mountain Crest Acquisition Corp., Playboy Enterprises (Asia) Limited; Wong’s Capital Holding
Group Limited; Playboy (China) Brand Management Center; Playboy Tobacco Group Limited;
Huahua Rabbit (Xiamen) Health Science and Technology Co., Ltd.; Haihan Fashion (Shanghai)
Enterprises Development Co., Ltd., Bunny Owner Group; Bunnygirl Certification Institute;
Bunny Girl Foundation; Bunny Girl Union; Bunny Hunter LLC; International Model
Certification Association; Playboy Enterprises International, Inc.; Pleasure International Corp.;
Wong’s Bank Group; Wong’s Foundation; Wong’s International Bank; Wong’s Syndicate;
World Future Leader University; World Industrial Capital Organization, Fu Manhua, Ming Cai,
Lingling Zhang, and John Fu.
3

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 4 of 25

5.

On July 29, 2021, the Court granted Playboy’s Application, entering a temporary

restraining order among other relief. See ECF 18.
6.

On August 12, 2021, the Court granted Playboy’s request for a preliminary

injunction against the Original Defendants. See ECF 24.
7.

On October 30, 2021 Playboy filed an Amended Complaint adding five New

Defendants to this action5 after Playboy discovered that the New Defendants filed a fraudulent
Statement of Information (“Fraudulent SOI”) with the State of California.
8.

The Fraudulent SOI was filed purportedly on Playboy’s behalf and changed the

Chief Executive Officer from the real CEO to Defendant Kai Ming LAI and changed the Chief
Financial Officer from the real CFO to Defendant King Wong without Playboy’s authorization.
See ECF 25.
9.

Playboy filed an application for a temporary restraining order, and preliminary

injunction against the New Defendants and the Original Defendants (together “Defendants”) and
the November P.I. Order was granted on November 13, 2021. See ECF 44.
10.

The November P.I. Order explicitly contemplated seeking modification based on

newly discovered infringing activities stating in relevant part:
In the event Playboy identifies additional counterfeit websites, domains,
defendants or fraudulent entities in connection with Defendants’ counterfeiting
scheme, Playboy may move the Court for an order modifying this injunction as
appropriate and may amend its complaint to include the additional parties.
November P.I. Order, at 13.

5

Defined as Huase Space (Fujian) Brand Management Co., Ltd.; King Wong; Kai Ming LAI;
Flower Color Space (Fujian) Brand Management Company Ltd., and Fancy Space (Fujian)
Brand Management Co. Ltd.
4

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 5 of 25

11.

Playboy served the November P.I. Order on all the Defendants via email in the

matter permitted by the Court’s order. See ECF 45 (affidavit of service).
12.

Playboy has discovered new evidence that the Defendants through Defendant

Huase Space (Fujian) Brand Management Co., Ltd. (“Huase Space”) attempted to record a
trademark license with the China National Intellectual Property Administration (“CNIPA”)
purporting to be authorized on behalf of Playboy, when in fact it was not. See McCarthy Decl.,
¶ 12.
13.

In response to inquiries from the CNIPA as to their affiliation with Playboy,

Defendant Huase Space, and its affiliated entity Defendant Flower Color Space (Fujian) Brand
Management Company Ltd. (“Flower Color Space”) submitted a response to the CNIPA
attaching various falsely notarized and apostilled documents purporting to be executed on behalf
of Playboy, signed by Defendant King Wong. McCarthy Decl., ¶ 13.
14.

The documents submitted by the Defendants to the CNIPA purporting to be on

behalf of Playboy were notarized by California notary Olivia Liu, and bore her notary stamp and
commission number, and were apostilled in California. Id. ¶ 14.
15.

Playboy served a Rule 45 third party subpoena on Olivia Liu, the notary whose

stamp, signature, and commission number appears on the documents submitted by the
Defendants to the CNIPA. Id. at 16; see also Liu Affidavit, ¶¶ 4-5, Ex. 1.
16.

Ms. Liu responded to the subpoena by producing various documents and video

clips. See Liu Affidavit, ¶¶ 4-10, Exs. 1-4; McCarthy Decl. ¶ 17.
17.

The pre-recorded video clips displayed an individual representing himself to be

King Wong, and the individual appeared to hold up and sign various documents purporting to be
on behalf of Playboy. Liu Affidavit, Ex. 4.
5

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 6 of 25

18.

A summary of the details of the “Invalid Notarizations” produced by Ms. Liu in

response to Playboy’s Rule 45 subpoena is below (see McCarthy Decl. ¶ 18; Liu Affidavit ¶ 9,
Ex. 3):
Apostille
Number of
Invalid
Notarization
1. Fake
20198
Authorization
Letter to
Xiaotusky

2. Fake
42412
Authorization
Letter to
Flower Color
Space

3. Fake
Certificate of
Incumbency

87529

Document Description

Document purporting to give trademark license
authorization to “Xiaotusky (Shenzhen) Biological
Technology Co., Ltd.” on behalf of Playboy Enterprises
International, Inc., signed by Defendant King Wong, and
notarized by Olivia Liu (“Fake Authorization Letter to
Xiaotusky”). The Fake Authorization Letter to Xiaotusky
was used by Xiatousky on Tmall.com, a Chinese-language
website for business to consumer online retailer, to sell
counterfeit Playboy and Rabbit Head merchandise.
Document purporting to give trademark license
authorization to “Flower Color Space (Fujian) Brand
Management Co., Ltd..” (“Flower Color Space”) on behalf
of Playboy Enterprises International, Inc., signed by
Defendant King Wong, and notarized by Olivia Liu (“Fake
Authorization Letter to Flower Color Space”). The Fake
Authorization Letter to Flower Color Space was used to
attempt to record licenses with the China National
Intellectual Property Administration (“CNIPA”)
Document entitled “Statement” purporting to give “King
Wong” the “right to carry out the brand (trademark)
licensing and industrial investment and financing business
in the People’s Republic of China, and to sign relevant
cooperation agreements [on behalf of Playboy Enterprises
International, Inc.” (“Fake Certificate of Incumbency”). The
Fake Certificate of Incumbency was used by Defendant
King Wong to sign and execute the Fake Authorization
Letters to Xiatousky and Flower Color Space.

6

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 7 of 25

19.

The individual purporting to be King Wong within the video clips never

personally appeared before Ms. Liu in connection with the notarization of the Invalid
Notarizations she performed, which is required under California law. See Liu Affidavit, ¶¶ 7-9,
Ex. 4; McCarthy Decl. ¶ 20.
20.

Ms. Liu failed to record Defendant King Wong’s identifying information in

connection with the Invalid Notarizations, such as his license number, passport number, or
identification card number in her notary journal. See Liu Affidavit, ¶¶ 11-13; McCarthy Decl. ¶
20.
21.

Ms. Liu did not record Defendant King Wong’s signature or fingerprint in her

notary journal. Liu Affidavit, ¶¶ 11-13.
22.

California notaries, like Ms. Liu, are required to maintain a notary journal

recording details of all notarizations they perform, such as the date, signature, and a description
of the document witnessed.6 McCarthy Decl. ¶ 21.
23.

Ms. Liu provided additional supplemental materials to Playboy including (1) text

messages with an individual residing in China known as “Lulu” who helped facilitate the
notarization of the Invalid Notarizations for the Defendants; and (2) a bank statement screenshot
indicating a wire transfer was made to Ms. Liu’s company, MPUSA, Inc. in connection with the
notarization. See Liu Affidavit, ¶ 15, Ex. 2; McCarthy Decl. ¶ 19.

See California Secretary of State’s Office, COVID-19 Frequently Asked Questions,
https://www.sos.ca.gov/business-programs/bizfile/covid-19-frequently-askedquestions#:~:text=California%20Law%20does%20not%20provide,a%20mobile%20California%
20notary%20public (last accessed Apr. 4, 2022) (stating “California Law does not provide the
authority for California notaries public to perform a remote online notarization. The personal
appearance of the document signer is required before the notary public.”).
6

7

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 8 of 25

24.

The Defendants have continued to use the Invalid Notarizations in furtherance of

their counterfeiting scheme to convince consumers and authorities that they are authorized to act
on behalf of Playboy when they are not. McCarthy Decl. ¶ 22.
25.

Defendants have used the Invalid Notarizations to attempt to record a fraudulent

license in the name of Defendant HuaSe Space with the CNIPA. Defendants have used the
Invalid Notarizations to record at least five fraudulent licenses with CNIPA in the name of
Xiaotusky, a party unauthorized and not licensed to use Playboy’s intellectual property. Id. ¶¶
23-24.
26.

Defendants and Xiaotusky are working with the Xiaotusky Associates, multiple

other individuals and entities in support of their counterfeiting scheme as detailed below
(McCarthy Decl. ¶ 25):
Individual/Entity Associated with
Xiaotusky
1.

Shenzhen Zhuoran Intellectual Property
Agency Co., Ltd.

2.

Lin Da Rong

3.

Xiaotusky (Guangzhou) Enterprise
Development Co., Ltd

4.

Fu Limei

5.

Rabbit Grandpa (Hainan ) Brand
Management Co., Ltd

8

Description of Relationship with
Xiaotusky and Defendants’
Counterfeiting Scheme
Submitted Invalid Notarizations to the
CNIPA on behalf of Xiaotusky to record
fraudulent licenses
legal representative and senior executive
of Defendant Huase Space and entity
Xiaotusky (Guangzhou) Enterprise
Development Co., Ltd
Related entity to Defendant Huase
Space that shares the same legal
representative, Lin Da Rong
Individual who invested in Defendant
Huase Space, and served in the roles of
executive director, general manager and
legal representative of Rabbit Grandpa
(Hainan ) Brand Management Co., Ltd
Entity that is a shareholder of Huahua
Rabbit (Hangzhou) E-commerce Co.,
Ltd, whose executive director, general
manager and legal representative is a
natural person called Chen Jian

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 9 of 25

Individual/Entity Associated with
Xiaotusky
6.

Chen Jian

7.

Xiaotusky (Shenzhen) Biotechnology
Co., Ltd. (“Xiaotusky Biotechnology”)
Xiaotusky (Shenzhen) Trading
Company Ltd. (“Xiaotusky Trading”)
Xiaotusky (Shenzhen) Brand
Management Co., Ltd. (“Xiaotusky
Brand”)
Huahua Rabbit (Hangzhou) Ecommerce Co., Ltd,

8.
9.

10.

27.

Description of Relationship with
Xiaotusky and Defendants’
Counterfeiting Scheme
An individual who is the executive
director of Xiaotusky (Shenzhen)
Biotechnology Co., Ltd. (“Xiaotusky
Biotechnology”), a related entity to
Xiaotusky, and the legal representative
of Xiaotusky (Shenzhen) Trading
Company Ltd. (“Xiaotusky Trading”)
and Xiaotusky (Shenzhen) Brand
Management Co., Ltd. (“Xiaotusky
Brand”)
a related entity to Xiaotusky
a related entity to Xiaotusky
a related entity to Xiaotusky

a related entity to Xiaotusky

Defendants acting in concert with Xiaotusky and the Xiaotusky Associates have

attempted to use the Invalid Notarizations to sell counterfeit Playboy merchandise on online
retail stores like Tmall.com, which is operated by the Alibaba Group. Id. ¶ 27.
28.

Defendants have resisted the November P.I. Order by alleging that the Invalid

Notarizations are legitimate documents authorized by Playboy when King Wong has no authority
or affiliation with Playboy, and when the notarizations were performed remotely and do not
comply with the requirements of California law.
Jurisdiction and Venue
29.

The Court adopts the entirety of its findings pertaining to “jurisdiction and venue”

over the claims and the Defendants in this case as articulated in the November P.I. Order and full

9

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incorporates them herein. See November P.I. Order, at 3-4. (citing Amended Complaint ¶¶ 1522, 23; Brief Simultaneously Filed I.S.O. Ex Parte Application (“Brief”), pp 7-8.
30.

The Court has subject matter jurisdiction over Playboy’s claims under 28 U.S.C.

§§ 1331 & 1338, and 15 U.S.C. § 1121.
31.

The Court has personal jurisdiction over the Defendants in this action for the

same reasons articulated in the November P.I. Order. See id.
32.

Venue is also proper in this judicial district because a substantial part of the

conduct and property is located in this jurisdiction, and Defendants’ have registered Fraudulent
Entities with addresses located in this judicial district in furtherance of their counterfeiting
scheme. See id., at 4 (also finding no other district appears more appropriately suited to resolve
this dispute).
Preliminary Injunction Factors
33.

The Court finds that the same findings of fact continue to exist warranting the

preliminary injunction in this case as previously set forth in the November P.I. Order, and fully
incorporates them herein. See November P.I. Order, pg. 4-8 (paragraphs ¶5-17). Namely,
Playboy has established each of the factors required for a preliminary injunction:
(1) likelihood of success on the merits;
(2) irreparable harm;
(3) the balance of hardships tips in Playboy’s favor; and
(4) a preliminary injunction serves the public interest.
See Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008); Seijas v. Republic of Argentina,
352 Fed. App’x 519, 521 (2d Cir. 2009).

10

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 11 of 25

34.

Playboy is likely to succeed on the merits of its claims as it owns the registered

Playboy Marks7 and associated common-law rights, and owns the registered PLAYBOY©
Copyrights8, and the Defendants’ fraudulent scheme involves counterfeiting the Playboy Marks
and directly copying Playboy’s copyrighted content in the PLAYBOY© Copyrights. See
November P.I. Order, pg. 5 (paragraphs ¶ 5(a)-(d)) (citing declarations, exhibits and amended
complaint).
35.

Defendants have continued to infringe the Playboy Marks since the filing of

Playboy’s Amended Complaint and the November P.I. Order by utilizing the Invalid
Notarizations to trick Chinese authorities and potential trademark licensees into believing they
are authorized to act on behalf of Playboy or are affiliated with Playboy when they are not. See
McCarthy Decl. ¶¶ 22-27.
36.

For the same reasons Playboy also has established a likelihood of success on the

merits of its New York common law trademark infringement and unfair competition claims. See
November P.I. Order, pg. 6 (citing Avon Prods. V. S.C. Johnson & Son, 984 F. Supp. 768, 800
(S.D.N.Y. 1997); Twentieth Century Fox Film Corp. v. Marvel Enters., 220 F. Supp. 2d 289
(S.D.N.Y. 2002); Franklin v. X Gear 101, LLC, 17 Civ. 6452 (GBD) (GWG) 2018 U.S. Dist.
LEXIS 122658 (S.D.N.Y. July 23, 2018)).
37.

Playboy has also established that it will suffer irreparable harm absent preliminary

injunctive relief as the Defendants have filed the Fraudulent SOI with the California Secretary of

7

Defined as the PLAYBOY® Trademarks, RABBIT HEAD DESIGN® Trademarks, BUNNY
STORE® Trademark, PLBY® Trademark, and PLEASURE FOR ALL® Trademarks
collectively, along with their common low rights, as defined in Playboy’s Complaint.
8

Defined as U.S. Copyright Registration Nos. VA 2-144-651, and VA 2-174-035.
11

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 12 of 25

State purporting to be on behalf of Playboy when it is not, the Defendants have used the
Fraudulent SOI to further their scheme involving Counterfeit Websites9 and Counterfeit
Domains10, and that the Defendants have created multiple fraudulent entities using the Playboy
Marks without authorization. See November P.I. Order, pg. 6-7 (paragraphs ¶¶ 6-12).
38.

Given the facts articulated in the Liu Affidavit and McCarthy Declaration, and

Playboy’s Motion, absent modification of the November P.I. Order, Playboy will continue to
suffer irreparable harm because Defendants will continue to utilize the Invalid Notarizations in
furtherance of their scheme. See McCarthy Decl. ¶¶ 22-27.
39.

Playboy has shown that the balance of hardships tips in its favor given there is no

evidence showing that the Defendants have any protectable interest in counterfeiting the Playboy
Marks or PLAYBOY© Copyrights, or in using the Invalid Notarizations that were fraudulently
created and do not comply with California law. See November P.I. Order, pg. 7-8 (paragraphs ¶¶
13-15) (citing AW Licensing, LLC v. Bao, No. 15-cv-1373, 2015 U.S. Dist. LEXIS 177101
(S.D.N.Y. April 2, 2015)); see Liu Affidavit, ¶¶ 7-11, Ex. 3-4.
40.

Playboy has demonstrated it is likely to succeed on the merits of its claims, it will

be irreparably harmed absent a preliminary injunction, and that the balance of hardships favors
Playboy, Playboy has also shown that the public interest favors injunctive relief and modification
of the preliminary injunction order. See November P.I. Order, pg. 8 (¶ 8).
Good Cause for Alternative Service
41.

9

For the reasons articulated previously in the November P.I. Order, the Court finds

Defined as www.playboy.com.hk, www.playboyint.com, and www.playboylicense.com.

10

Defined as http://www.papaintl.com/.
12

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 13 of 25

good cause continues to exist to grant alternative service of the filings in this matter on the
Defendants via email and/or overnight courier because Playboy has established that traditional
service methods would be futile. See November P.I. Order, pg. 8 (¶ 17) (citing declaration
materials). Email service is most likely to give Defendants’ notice of the filings in this action.
Good Cause for Modification of November P.I. Order
42.

The Court finds it has the power to clarify its injunction orders where warranted

and to modify said orders under the Federal Rules of Civil Procedure. Good cause exists to
modify and clarify its November P.I. Order as doing so would (1) clarify the scope of the
injunction to prevent unwitting contempt, (2) the November P.I. Order explicitly contemplated
modification to address the evolving nature of Defendants’ unlawful conduct, and (3) new
evidence presented by Playboy in the form of affidavits and exhibits warrants modification as
Playboy could not have reasonably possessed said evidence at the time of the November P.I.
Order.
43.

“It is ‘undoubtedly’ within the district court's power to ‘issue an order clarifying

the scope of an injunction in order to facilitate compliance with the order and to prevent
unwitting contempt.’” See Jones v. U.S. Postal Serv., No. 20-cv-6516, 2020 WL 6554904, at *5
(S.D.N.Y. Sept. 29, 2020) (quoting IGT v. High 5 Games, LLC, No. 17 Civ. 9792, 2018 WL
2939032, at *3 (S.D.N.Y. Apr. 17, 2018) (quoting One11 Imports Inc. v. NuOp LLC, No. 16 Civ.
7197, 2016 WL 7338422, at *1 (S.D.N.Y. Dec. 19, 2016)) (internal quotation marks omitted)
(issuing clarification order to resolve “differing interpretations” of the court's preliminary
injunction); see also Regal Knitwear Co. v. NLRB, 324 U.S. 9, 15 (1945) (explaining defendants
“may petition the court granting [an injunction] for a modification or construction of the order”
and “such relief would be in the sound discretion of the court”)).
13

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“Clarifications of previously issued orders ‘add certainty to an implicated party's

44.

efforts to comply with the order and provide fair warning as to what future conduct may be
found contemptuous,’ and ‘may be obtained on motion or made sua sponte by the court.’” Jones,
2020 WL 6554904, at *5 (quoting N.A. Sales Co. v. Chapman Indus. Corp., 736 F.2d 854, 858
(2d Cir. 1984)).
45.

Likewise, the Court can modify an order under Rule 60(b) when, among other

reasons, newly discovered evidence is presented that could not have been discovered with
reasonable diligence, or reasons are presented that justify said relief. See Fed. R. Civ. P. 60(b)(2),
and (6).11
46.

The November P.I. Order explicitly contemplated that Playboy may seek an order

from the Court modifying the injunction where new evidence was discovered. See November P.I.
Order, at 13.
47.

Playboy has put forth additional evidence in the form of affidavits and exhibits

that were not in its possession and could not have been discovered with reasonable diligence at
the time it sought the relief that was granted in the November P.I. Order as Playboy had to:
a. seek said evidence regarding the Invalid Notarizations through a third-party
subpoena;
b. follow-up with Ms. Liu concerning additional materials in response to the
subpoena;

“If a motion to modify or set aside the judgment ... is served more than 10 days after entry of
the judgment, it is properly considered a motion under FED. R. CIV. P. 60(b), not one under
Rule 59(e).” Branum v. Clark, 927 F.2d 698, 704 (2d Cir.1991).
11

14

Case 1:21-cv-06419-VM Document 53 Filed 05/06/22 Page 15 of 25

c. engage a certified translator to translate evidence obtained from Ms. Liu involving
the third-party subpoena once received;
d. engage with counsel for Ms. Liu concerning her affidavit herein; and
e. work with local counsel in China to investigate Defendants’ efforts to use the
Invalid Notarizations to further their counterfeiting scheme.
See McCarthy Decl. ¶¶ 22-25.
48.

The Liu Affidavit demonstrates that in contravention of California law, Ms. Liu

remotely acknowledged and remotely notarized the following Invalid Notarizations for
Defendant King Wong, who was not present before her:
f. Fake Authorization Letter to Xiaotusky: a purported license naming Xiaotusky
(Shenzhen) Biological Technology Co., Ltd. to act as licensee of Playboy
Enterprises International, Inc.;
g. Fake Authorization Letter to Flower Color Space: a purported license naming
Flower Color Space (Fujian) Brand Management Co., Ltd. to act as licensee
of Playboy Enterprises International, Inc.; and
h. Fake Certificate of Incumbency: a purported “Statement” that named Mr. King
Wong to act on behalf of Playboy Enterprises International, Inc.
See Liu Affidavit ¶ 8, Ex. 2, McCarthy Decl. ¶ 18.
49.

The Liu Affidavit also demonstrates that instead of meeting Defendant King

Wong in person, Ms. Liu received pre-recorded videos of an individual representing himself to
be King Wong. See Liu Affidavit at ¶ 10-11, Ex. 4.
50.

Under California law, where Ms. Liu is a notary public, notaries public must

perform notarization in person and the personal appearance of the document signer is required.
15

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Liu Affidavit at ¶¶ 7-8; See California Secretary of State’s Office, COVID-19 Frequently Asked
Questions, https://www.sos.ca.gov/business-programs/bizfile/covid-19-frequently-askedquestions#:~:text=California%20Law%20does%20not%20provide,a%20mobile%20California%
20notary%20public (last accessed Apr. 4, 2022) (stating “California Law does not provide the
authority for California notaries public to perform a remote online notarization. The personal
appearance of the document signer is required before the notary public.”).
51.

In California, there was no exception to perform remote online notarization during

the COVID-19 pandemic, and document signers still had to be physically present during the
pandemic before a notary public for a notarization to be valid.12 See Liu Affidavit ¶ 8.
52.

The Liu Affidavit also makes clear that Ms. Liu did not record Defendant King

Wong’s identifying information, such as his license number, passport number, or identification
card number in her notary journal as required by California law, and that Defendant King Wong
did not record his signature in her notary journal as required by California law in connection with
powers of attorney. See Liu Affidavit at ¶¶ 10-14.
53.

Under California law, notaries must keep a notary journal, and record a

signatory’s identifying information, such as a license number, passport number, or identification
card number, and signature in said journal, as well as the signature of each signatory. See Cal.
Gov. Code § 8206.

California Secretary of State’s Office, COVID-19 Frequently Asked Questions,
https://www.sos.ca.gov/business-programs/bizfile/covid-19-frequently-askedquestions#:~:text=California%20Law%20does%20not%20provide,a%20mobile%20California%
20notary%20public (last accessed Apr. 4, 2022) (stating “California Law does not provide the
authority for California notaries public to perform a remote online notarization. The personal
appearance of the document signer is required before the notary public.”).
12

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54.

In cases of deeds, or powers of attorney, California notaries must also record the

signatories thumb print in their notary journal in connection with the notarization of said
documents. See Cal. Gov. Code § 8206(a)(2)(B).
55.

Under California law, the maximum fee for a notary public acknowledgement

including the seal and the writing of the certificate is $15.00 per each signature. See Liu
Affidavit at ¶ 14; See Cal. Gov. Code § 8211.
56.

The McCarthy Declaration provides evidence in the form of sworn testimony and

demonstrating that the Defendants, Xiaotusky, and the Xiaotusky Associates, have used the
Invalid Notarizations to continue to license Playboy’s trademarks without authorization,
purporting to be working on behalf of Plaintiff Playboy when they are not. See McCarthy Decl. ¶
22-25 (detailing Defendants’ efforts to register fraudulent Playboy trademark licenses with the
China National Intellectual Property Administration).
57.

Accordingly, the Court finds good cause to clarify and/or modify the scope of the

November P.I. Order to address the newly discovered evidence presented by Playboy and to (1)
clarify that it applies to individuals and entities acting in concert with the Defendants, namely
Xiaotusky and the Xiaotusky Associates, (2) declare that the Defendants, those acting in concert
with them, and Xiaotusky and the Xiaotusky Associates are prohibited from using the Invalid
Notarizations; and (3) declare that the Invalid Notarizations were notarized entirely remotely
contrary to California law and are invalid.
58.

As the Court finds that Defendants have no right to use infringe upon Playboy’s

intellectual property, including its Playboy Marks, and its PLAYBOY© Copyrights, the Court
finds that no undue hardship will be imposed on the Defendants in granting Playboy’s motion to

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clarify and/or modify the scope of the November P.I. Order to address the newly discovered
evidence.
I.

MODIFICATION OF PRELIMINARY INJUNCTION
IT IS HEREBY ORDERED, that Defendants, their officers, agents, servants,

employees, and attorneys, and all others in active concert or participation with them, including
Xiaotusky (Shenzhen) Biological Technology Co., Ltd., and the Xiaotusky Associates who
receive actual notice of this Order by personal service or otherwise (“Restrained Parties”), are
restrained and enjoined, pending final hearing and determination of this action, from anywhere in
the world:
1. Using or counterfeiting the Playboy Marks, the PLAYBOY© Copyrights, and/or
associated common law rights, or any confusingly similar marks, reproduction,
counterfeit copies, or spurious imitations thereof, on or in connection with the offering of
any goods and/or services, licensing services, websites, or social media, including but not
limited to, owning or operating the Counterfeit Websites, Additional Domain and/or
Counterfeit Domains;
2. Using or counterfeiting the Playboy Marks and/or PLAYBOY© Copyrights, or any
confusingly similar marks, on or in connection with the Fraudulent Entities or the legal
name or dba of any entity;
3. Operating any other website, licensing business or other business, entity, or store that
purports to originate from Playboy, or to be sponsored or licensed by, or affiliated with
Playboy or Playboy’s authentic Website, or contains any portion of the Playboy Marks
within its name or d.b.a., when it is not;
4. Forging, creating, circulating, or otherwise using any documents or materials purporting
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to be executed by Playboy, or any of its affiliated entities, including but not limited to
forging signatures, seals, or other documents, including but not limited to the Invalid
Notarizations, and any other documents purporting to be notarized by Ms. Olivia Liu on
behalf of Defendant King Wong and/or Playboy Enterprises International, Inc.;
5. Filing any document with any organization, including but not limited to U.S. domestic
government agencies, and/or foreign governments or governmental agencies, purporting
to be on behalf of Playboy, including but not limited to filing any documents with the
China National Intellectual Property Administration purporting to be on behalf of
Playboy Enterprises International, Inc. or any purported licensee;
6. Forging, creating, circulating, or otherwise using any documents or materials purporting
to be issued by any U.S. domestic government agencies, and/or foreign governments or
governmental agencies in connection with Playboy and its business, including but not
limited to trademark registration certificates, or copyright registration certificates;
7. Registering, owning, or using any domain name that consists of any of the Playboy
Marks, or includes “Playboy” in the domain portion of the domain name and is using in
connection with the Playboy Marks, PLAYBOY© Copyrights, and/or any other Playboy
source identifier, or that is confusingly similar thereto, or that is calculated to confuse
consumers into thinking that the website(s) accessible via the domain name(s) originate
with/from Playboy, or is sponsored or licensed by, or affiliated with, Playboy or
Playboy’s authentic Website, when it is/they are not;
8. Registering, owning, or using any entity whose name or dba consists of the Playboy
Marks, or includes “Playboy”, or that is confusingly similar to any of the Playboy Marks,
or that is calculated to confuse consumers into believing that Defendants are Playboy,
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affiliated with Playboy, or sponsored by Playboy, when they are not;
9. Using in connection with Defendants’ activities, goods, or services (or purported goods
or services) any false or deceptive designations, representations, or descriptions of
Defendants or their activities, goods, or services (or purported goods or services),
whether by symbols, words, designs, statements, photographs, or other devices, which
would damage or injure Playboy or its customers, or which would give Defendants an
unfair competitive advantage or result in consumer deception;
10. Committing other acts calculated to cause consumers to believe that Defendants’ domain
names, websites, web content, goods/or services are offered under the authorization,
sponsorship, supervision, or control of Playboy, or otherwise are connected with Playboy,
or Playboy’s authentic Website, when they are not;
11. Further infringing the Playboy Marks; PLAYBOY© Copyrights, and/or any other
Playboy source identifier, or damaging any associated goodwill;
12. Stealing Playboy’s customer’s or potential customer’s, licensees, or potential licensees;
13. Misappropriating that which rightfully belongs to Playboy, its customers or potential
customers, or in which Playboy or its customers or potential customers have a proprietary
interest;
14. Using, linking to, transferring, selling, exercising control over, or otherwise owning or
accessing the Counterfeit Websites, Counterfeit Domains, and Additional Domain.
15. Using, linking to, transferring, selling, exercising control over, or otherwise owning or
using the Fraudulent Entities;
16. Using, transferring, exercising control over, or otherwise accessing any accounts used in
the transfer of money or electronic currency, or in the processing of card-based
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transactions associated with the Counterfeit Websites, Counterfeit Domains, Additional
Domain or Fraudulent Entities, as a means to further their fraudulent counterfeiting
scheme.
Upon service as provided for in this Order, the Defendants, and other Restrained Parties,
shall be deemed to have actual notice of the issuance and terms of the Modified Preliminary
Injunction Order, and any act by any of the Restrained Parties in violation of any of the terms of
the Modified Preliminary Injunction Order may be considered and prosecuted as contempt of
Court.
In connection with this Order, the Court further finds and declares that:
1. the Defendants, including New Defendants HuaSe Space (Fujian) Brand Management
Co., Ltd., King Wong, Kai Ming LAI, Flower Color Space (Fujian) Brand
Management Company Ltd., and Fancy Space (Fujian) Brand Management Co. Ltd.
have never acquired any authorization from Plaintiff Playboy Enterprises
International, Inc. to act on its behalf;
2. The trademark authorization letters issued by the Defendants, including New
Defendants HuaSe Space (Fujian) Brand Management Co., Ltd., King Wong, Kai
Ming LAI, Flower Color Space (Fujian) Brand Management Company Ltd., and
Fancy Space (Fujian) Brand Management Co. Ltd. were not issued by Plaintiff
Playboy Enterprises International, Inc.;
3. Defendant King Wong has never been the Chief Financial Officer of Plaintiff Playboy
Enterprises International, Inc.
4. Defendant King Wong has no right to sign any documents on behalf of Plaintiff
Playboy Enterprises International, Inc.;
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5. Defendant Kai Ming LAI has never been the Chief Executive Officer of Plaintiff
Playboy Enterprises International, Inc.
6. Defendant Kai Ming LAI has no right to sign any documents on behalf of Plaintiff
Playboy Enterprises International, Inc.;
7. Xiaotusky (Shenzhen) Biological Technology Co., Ltd. is not authorized to act on
behalf of Plaintiff Playboy Enterprises International, Inc.;
8. Xiaotusky (Shenzhen) Biological Technology Co., Ltd. is not an authorized licensee
of Plaintiff Playboy Enterprises International, Inc.;
9. The Xiaotusky Associates are not authorized to act on behalf of Plaintiff Playboy
Enterprises International, Inc.;
10. The Xiaotusky Associates and not authorized licensees of Plaintiff Playboy
Enterprises International, Inc.;
11. Representatives for Defendants HuaSe Space (Fujian) Brand Management Co., Ltd.,
Flower Color Space (Fujian) Brand Management Company Ltd., and Fancy Space
(Fujian) Brand Management Co. Ltd. have no right to sign any documents on behalf
of Plaintiff Playboy Enterprises International, Inc.
12. The Defendants, including Defendants King Wong, Kai Ming LAI, HuaSe Space
(Fujian) Brand Management Co., Ltd., Flower Color Space (Fujian) Brand
Management Company Ltd., and Fancy Space (Fujian) Brand Management Co. Ltd.
are prohibited from acting on behalf of Plaintiff Playboy Enterprises International,
Inc.;
13. The Defendants, including Defendants King Wong, Kai Ming LAI, HuaSe Space
(Fujian) Brand Management Co., Ltd., Flower Color Space (Fujian) Brand
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Management Company Ltd., and Fancy Space (Fujian) Brand Management Co. Ltd.
are not in possession of, or in control of, any authentic trademark registration
certificates belonging to Plaintiff Playboy Enterprises International, Inc.;
14. The Defendants, including Defendants King Wong, Kai Ming LAI, HuaSe Space
(Fujian) Brand Management Co., Ltd., Flower Color Space (Fujian) Brand
Management Company Ltd., and Fancy Space (Fujian) Brand Management Co. Ltd.
wrongfully procured the Invalid Notarizations containing trademark licensees and
authorizations;
15. The Invalid Notarizations do not comply with the requirements of California law as
Defendant King Wong did not personally appear in front of notary Olivia Liu as
required under California Law;
16. The Invalid Notarizations do not comply with the requirements of California law as
Ms. Liu failed to comply with her notary journal requirements in connection with the
Invalid Notarizations as she did not record Defendant King Wong’s identifying
information, such as his license number, passport number, or identification card
number in her notary journal; and
17. The Invalid Notarizations do not comply with the requirements of California law and
are thus invalid.
In the event Playboy identifies additional counterfeit websites, domains, defendants or
fraudulent entities in connection with Defendants’ counterfeiting scheme, Playboy may move the
Court for an order modifying this injunction as appropriate and may amend its complaint to
include the additional parties. To the extent the Defendants attempt to use confusingly similar
variations of the Counterfeit Websites, Counterfeit Domains, or Additional Domain with URLs
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that incorporate the Playboy Marks, Playboy may serve this Order on the website registrars
and/or other third parties responsible for services involved with keeping the websites online, in
order to freeze and/or make the websites and any confusingly similar variations of the
Counterfeit Websites, Counterfeit Domains, and/or Additional Domain frozen and inaccessible
to the Defendants.
Security for Preliminary Injunction
IT IS FURTHER ORDERED that, pursuant to Federal Rule of Civil Procedure 65, the
bond posted on behalf of Playboy in connection with the November P.I. Order shall be converted
to/used as security for this preliminary injunction order.
II.

ORDER CONTINUING TO PERMIT ALTERNATIVE SERVICE
IT IS FURTHER ORDERED THAT, as good cause for alternative service continues to

exist in this case, Playboy may serve the filings in this case upon all Defendants by email and/or
other electronic means, and/or by overnight courier, using the identifying information emails set
forth in Exhibit A, and/or Defendants’ purported physical addresses to the degree necessary to
ensure and effectuate service.

SO ORDERED.
Date: May 6, 2022
New York, New York

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EXHIBIT A
1. [e-mail]
2. [e-mail]
3. [e-mail]
4. [e-mail]
5. [e-mail]
6. [e-mail]
7. [e-mail]
8. [e-mail]
9. [e-mail]
10. [e-mail]
11. [e-mail]
12. [e-mail]
13. [e-mail]
14. [e-mail]