Lindsey Adelman Studio LLC et al v. Lucretia Lighting PTY, LTD et al

Filing 7

ORDER GRANTING PLAINTIFFS' EX PARTE MOTION FOR TEMPORARY RESTRAINING ORDER AND TO SHOW CAUSE WHY A PRELIMINARY INJUNCTION SHOULD NOT ISSUE granting #3 Motion for Preliminary Injunction. Based on the foregoing, it is ORDERED AND ADJUDGED that Plaintiffs' Ex Parte Motion for Temporary Restraining Order and Order to Show Cause is GRANTED as set out in this Order. Pursuant to Fed. R. Civ. P. 65(c), Plaintiffs shall post a bond in the amount of $10,000.00, as payment of damages to which Defendants may be entitled for a wrongful injunction or restraint. This Order shall be effective from issuance and continued subject to further Order of Court, conditioned upon Plaintiffs' posting such bond or equivalent security no later than Tuesday, November 23, 2021. A telephonic hearing is set before this Court on Friday, December 1, 2021 at 4:00PM Eastern Time, at which time Defendants and/or any other persons with standing may challenge the appropriateness of this Order and move to dissolve the same and at which time the Court will hear argument on Plaintiffs' requested preliminary injunction. All parties shall appear and should contact the Court at 1-888-363-4749 (access code: 3768660). Any response or opposition to Plaintiffs' Motion for Temporary Restraining Order and to Show Cause for a Preliminary Injunction must be filed and served on Plaintiffs' counsel by Friday, November 26, 2021, and filed with the Court, along with Proof of Service. Plaintiffs shall file any Reply Memorandum by Tuesday, November 30, 2021. (Signed by Judge Andrew L. Carter, Jr on 11/17/2021) (ate) Transmission to Finance Unit (Cashiers) for processing.

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
Case No: 1:21-cv-09423
LINDSEY ADELMAN STUDIO, LLC, a
New York limited liability company, LINDSEY
ADELMAN, individually,

11/17/2021

Plaintiffs,
vs.
LUCRETIA LIGHTING PTY. LTD., an Australian
entity which operates the website
www.lucretiashop.com.au, REPLICA LIGHTS, an
Australian entity which operates the website
www.replicalights.com.au, REPLICA-LIGHTS,
a Russian entity which operates the website
www.replica-lights.com, DELIGHTFUL, a Russian
entity which operates the website www.delightful.su,
LOFT & CONCEPT, a Russian entity which operates
the website www.loft-concept.ru, JAS INDUSTRIES,
LTD., an UK entity which operates the website
www.jasboutique.co.uk, THE PLUM PLUM,
a Kazakhstan entity which operates the website
www.theplumplum.com, GREAT LIGHT COMPANY,
a Russian entity which operates the website
www.great-light.ru, VAKKER LIGHTING, a
Chinese entity which operates the website
www.vakkerlighting.com, MOOIELIGHT, a Chinese
entity which operates the website www.mooielight.com,
SVETMARKET, a Russian entity which operates the
website www.svetmarket.ru, and John Does Nos. 1 - 55,
Defendants.
_________________________________________________/
Order Granting Plaintiffs’ Ex Parte Motion for Temporary Restraining Order and to
Show Cause Why a Preliminary Injunction Should Not Issue
Plaintiffs, Lindsey Adelman Studio, LLC and Lindsey Adelman, individually have moved
for a Temporary Restraining Order, Asset Restraining Order, and Order to Show Cause for a
Preliminary Injunction pursuant to Federal Rule of Civil Procedure 65 and the Lanham Act, 15

U.S.C. 1051 et seq., and 15 U.S.C. 1116 against Defendants, LUCRETIA LIGHTING PTY. LTD.,
an Australian entity which operates the website www.lucretiashop.com.au (“Lucretia”), REPLICA
LIGHTS, an Australian entity which operates the website www.replicalights.com.au (“Replica
Lights”), REPLICA-LIGHTS, a Russian entity which operates the website www.replicalights.com (“Replica-Lights”), DELIGHTFUL, a Russian entity which operates the website
www.delightful.su (“Delightful”), LOFT & CONCEPT, a Russian entity which operates the
website www.loft-concept.ru (“Loft Concept”), JAS INDUSTRIES, LTD., an UK entity which
operates the website www.jasboutique.co.uk (“Jas Boutique”), THE PLUM PLUM, a Kazakhstan
entity which operates the website www.theplumplum.com (“Plum Plum”), GREAT LIGHT
COMPANY, a Russian entity which operates the website www.great-light.ru (“Great Light”),
VAKKER LIGHTING, a Chinese entity which operates the website www.vakkerlighting.com
(“Vakker Lighting”), MOOIELIGHT, a Chinese entity which operates the website
www.mooielight.com (“Mooie Light”), SVETMARKET, a Russian entity which operates the
website www.svetmarket.ru (“Svetmarket”) and John Does Nos. 1 - 55 (collectively the
“Defendants”)
The Court, having reviewed Plaintiffs’ Complaint, Ex Parte Motion for Temporary
Restraining Order and Order to Show Cause Why a Preliminary Injunction Should Not Issue, the
supporting Declarations and exhibits submitted therewith, grants Plaintiffs’ Motion, and makes the
following findings and conclusions:
Plaintiff Lindsey Adelman is an acclaimed designer of high quality lighting products.
Adelman’s lighting design products are made, marketed, and sold through Lindsey Adelman
Studio. Plaintiffs own federally registered trademarks for “LINDSEY ADELMAN STUDIO” and
“BRANCHING BUBBLE”, which is a well-known chandelier and collection of lighting designs

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sold by Plaintiffs. Plaintiffs also sell and market their lighting products under unregistered
trademarks that indicate origin from Plaintiffs which include the LINDSEY ADELMAN name,
and other lighting design collections Agnes, Cherry Bomb, Branching Branching Disc, Burst,
Catch, Kingdom, Drop System, and Clamp Light. These, together with Plaintiffs’ registered marks
are collectively referred to as the “Lindsey Adelman marks”.
Plaintiffs’ Complaint, memorandum of law in support of temporary relief, supporting
Declarations and exhibits thereto allege and present compelling evidence that Defendants are
manufacturing, distributing, marketing, offering for sale, and or selling through the internet and
various social media websites counterfeit reproductions and copies of Plaintiffs’ lighting design
products bearing counterfeit and infringing copies of Plaintiffs’ federally protected registered and
unregistered Lindsey Adelman marks in violation of the Lanham Act, 15 U.S.C. sections 1114 and
1125(a).1
Defendants also use authentic pictures of Plaintiffs’ products that were commissioned and
developed by Plaintiffs for use by Plaintiffs in their lighting design business. In further violation
of Plaintiffs’ rights, Defendants have obtained copies of Plaintiffs’ authentic product photographs,
and utilize those images in Defendants’ sale and marketing of inauthentic copies. Defendants
present Plaintiffs’ products images as their own in the precise way that Plaintiffs present their
authentic products; both in conjunction with the Lindsey Adelman marks.

Plaintiffs’ seek a temporary restraining order and preliminary injunction under Counts I, II, III, IV and X
of their Complaint asserting claims for: Infringement of Registered Trademark “LINDSEY ADELMAN
STUDIO” (count I); Infringement of Registered Trademark “BRANCHING BUBBLE” (count II); False
designation of Origin/Infringement of Unregistered Trademark “LINDSEY ADELMAN” (count III); False
designation of Origin/Infringement of various Unregistered “LINDSEY ADELMAN marks” (count IV);
and federal common law Unfair Competition/Passing Off (count X).

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Standard for Temporary Relief and Plaintiffs’ Entitlement to Same
Rule 65(b) of the Federal Rules of Civil Procedure provides in part that a temporary
restraining order may be granted without written or oral notice to the opposing party or that party's
counsel where “it clearly appears from the specific facts shown by affidavit . . . that immediate
and irreparable injury, loss, or damage will result to the applicant before the adverse party or that
party’s attorney can be heard in opposition.” Moreover, temporary restraining orders are available
on an ex parte basis if the movant shows through an affidavit that there is a threat of intervening
immediate, irreparable harm before the adverse party may be heard in opposition and the movant’s
attorney certifies in writing why notice should not be required. Fed. R. Civ. P. 65(b).
“Within the Second Circuit, the standards for the entry of a TRO are the same as those that
govern the entry of a preliminary injunction, and require the plaintiff to demonstrate: ‘(a)
irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious
questions going to the merits ... and a balance of hardships tipping towards the party requesting
preliminary relief.’” Moose Toys Pty Ltd. v. Thriftway Hylan Blvd. Drug Corp., 15-CV-4483 DLI
MDG, 2015 WL 4772173, at *2 (E.D.N.Y. 2015)(citing Fequiere v. Tribeca Lending, 2015 WL
1412580, *2 (E.D.N.Y. 2015) (quoting Christian Louboutin S.A. v. Yves Saint Laurent America
Holding, Inc., 696 F.3d 206, 215 (2d Cir.2012)); see also Salinger v. Colting, 607 F.3d 68, 74–75
(2d Cir. 2010).
The Court finds that Plaintiffs are substantially likely to succeed on the merits of their
claims for infringement and counterfeiting of registered and unregistered trademarks, pursuant to
the Lanham Act, 15 U.S.C. §§1114 and 1125(a).
Due to Defendants’ use of counterfeit and infringing Lindsey Adelman marks in
connection with unauthorized copies of Plaintiffs’ products, Plaintiffs are likely to suffer

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immediate and irreparable harm in the absence of a temporary restraining order. Plaintiffs’
Complaint, Motion for temporary relief, supporting Declarations and exhibits thereto underscore
the threat of immediate and irreparable damage to Plaintiffs and consumers with respect to the
goodwill residing in the Lindsey Adelman marks, and through a likelihood of consumer confusion
in the absence of ex parte temporary relief.
Defendants

own

www.lucretiashop.com.au,
www.delightful.su,

or

control

an

internet

website

www.replicalights.com.au,

business

located

at

www.replica-lights.com,

www.left-concept.ru, www.jasboutique.co.uk, www.theplumplum.com,

www.great-light.ru, www.vakkerlighting.com, www.mooielight.com, and www.svetmarket.ru,
through which Defendants advertise, promote, offer for sale, and sell copies of Plaintiffs’ lighting
design products bearing counterfeit and infringing trademarks in violation of Plaintiffs’ rights.
Defendants use Plaintiffs’ pictures of authentic products with the Lindsey Adelman marks on
Defendants’ website, depicting Plaintiffs’ products and marks as Defendants’ own. Defendants
further direct traffic to their website, and conduct further infringement through the use of thirdparty providers, such as search engines like google, and also promote their counterfeiting and
infringement through social media accounts, including on Instragram, Facebook, and Pinterest.
There is good cause to believe that more counterfeit and infringing products bearing
Plaintiffs’ marks will appear in the marketplace; that consumers are likely to be misled, confused,
or disappointed by the quality of these products; and that Plaintiffs may suffer loss of sales for
their genuine products, a loss of goodwill associated with their marks, and an erosion of the
legitimate marketplace in which Plaintiffs do business.
Defendants have taken steps to shield their true identities and location. Defendants’
website in some instances falsely list a business address where they do not have an office, nor any

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other sign of existence. Defendants’ efforts to hide their identity and create the false impression
that they conduct business from within the United States further underscores that if Plaintiffs
proceed on notice to Defendants with their Motion for Temporary Restraining Order, Defendants
may easily and quickly transfer the registrations for their internet domain name, or modify
registration data and content, change hosts, and redirect traffic to other websites, thereby thwarting
Plaintiffs’ ability to obtain meaningful relief.
The balance of potential harm to Defendants in restraining their trade in counterfeit and
infringing goods if a temporary restraining order is issued is far outweighed by the potential harm
to Plaintiffs, their reputation, and goodwill as a designer, manufacturer and distributor of quality
products if such relief is not issued. Moreover, the public interest favors issuance of the temporary
restraining order in order to protect Plaintiffs’ trademark interests and protect the public from being
defrauded by the palming off of counterfeit goods as Plaintiffs’ genuine products.
Temporary Restraining Order and Order to Show Cause
Based on the foregoing, it is ORDERED AND ADJUDGED that Plaintiffs’ Ex Parte
Motion for Temporary Restraining Order and Order to Show Cause is GRANTED as follows:
1.

Defendants Defendants, LUCRETIA LIGHTING PTY. LTD., an Australian entity

which operates the website www.lucretiashop.com.au (“Lucretia”), REPLICA LIGHTS, an
Australian entity which operates the website www.replicalights.com.au (“Replica Lights”),
REPLICA-LIGHTS, a Russian entity which operates the website www.replica-lights.com
(“Replica-Lights”),

DELIGHTFUL,

a

Russian

entity

which

operates

the

website

www.delightful.su (“Delightful”), LOFT & CONCEPT, a Russian entity which operates the
website www.loft-concept.ru (“Loft Concept”), JAS INDUSTRIES, LTD., an UK entity which
operates the website www.jasboutique.co.uk (“Jas Boutique”), THE PLUM PLUM, a Kazakhstan

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entity which operates the website www.theplumplum.com (“Plum Plum”), GREAT LIGHT
COMPANY, a Russian entity which operates the website www.great-light.ru (“Great Light”),
VAKKER LIGHTING, a Chinese entity which operates the website www.vakkerlighting.com
(“Vakker Lighting”), MOOIELIGHT, a Chinese entity which operates the website
www.mooielight.com (“Mooie Light”), SVETMARKET, a Russian entity which operates the
website www.svetmarket.ru (“Svetmarket”) and John Does Nos. 1 - 55, their agents, employees,
representatives, privies, proxies, successors, and assigns, and all persons acting in concert,
participation or combination with the Defendants having notice of this Order are hereby enjoined
and prohibited from:
(a)

Using the Lindsey Adelman Marks in any manner, and from making, using

or promoting any mark that is similar thereto particularly in connection with interior and lighting
design sales, concepts or products, including on the internet through e-commerce websites,
including on www.lucretiashop.com.au, www.replicalights.com.au, www.replica-lights.com,
www.delightful.su,

www.left-concept.ru, www.jasboutique.co.uk, www.theplumplum.com,

www.great-light.ru, www.vakkerlighting.com, www.mooielight.com, and www.svetmarket.ru, in
meta-data, marketing or promotional activities such as Google ad-words, or other key word
advertising;
(b)

Making, using, offering for sale or selling any lighting fixture through the

use of any name, mark or indicator of origin that is confusingly similar to the Lindsey Adelman
marks;
(c)

Using marks or other indicators of origin that are likely to cause confusion,

mistake, or deception in the minds of the consuming public as to Plaintiffs’ affiliation, association,

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connection, licensing, sponsorship, or approval of any of the products or services offered by
Defendants;
(d)

Passing off, inducing, or enabling others to offer or pass off any product or

service which does not originate from Plaintiffs as a product or design that does in fact originate
from Plaintiffs;
(e)

Committing any other act calculated to cause any person or entity to believe

that Defendants’ products originate from Plaintiffs, unless such product or designs do in fact
originate from Plaintiffs; and
(f)

Utilizing any of the Lindsey Adelman marks or any derivative or variation

of those terms or marks, or any visually or phonetically similar term in connection with any goods
or lighting designs offered for sale, including on the internet through e-commerce websites, metadata, marketing or promotional activities such as google ad-words, or other key word advertising.
Prohibited terms shall include: Lindsey Adelman, Lindsey Adelman Studio, Branching Bubble,
Agnes, Branching Disc, Burst, Cherry Bomb, Kingdom Clamp, Knotty Bubbles, Lindsey, and
future Lindsey Adelman Studio collections.
2.

Defendants shall not transfer ownership of the subject domain name(s) during the

pendency of this Action, or until further Order of the Court.
3.

The

domain

name

registry

for

www.lucretiashop.com.au,

www.replicalights.com.au, www.replica-lights.com, www.delightful.su,

www.left-concept.ru,

www.jasboutique.co.uk, www.theplumplum.com, www.great-light.ru, www.vakkerlighting.com,
www.mooielight.com, and www.svetmarket.ru,, and any other domains through which Defendants
are conducting the above described infringing conduct , and/or the registrars holding or listing the
www.lucretiashop.com.au,

www.replicalights.com.au,

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www.replica-lights.com,

www.delightful.su,

www.left-concept.ru, www.jasboutique.co.uk, www.theplumplum.com,

www.great-light.ru, www.vakkerlighting.com, www.mooielight.com, and www.svetmarket.ru,
domains name shall, within three (3) days of receipt of this Order, temporarily disable the domains,
or any subset of the domains names specified by Plaintiffs, through a registry hold or otherwise,
and make it inactive and non-transferable pending further order from this Court, unless Plaintiffs
consent in writing to the release of the domain names from such restraints.
4.

All

third

www.lucretiashop.com.au,
www.delightful.su,

parties

providing

services

www.replicalights.com.au,

used

in

connection

with

www.replica-lights.com,

www.left-concept.ru, www.jasboutique.co.uk, www.theplumplum.com,

www.great-light.ru, www.vakkerlighting.com, www.mooielight.com, and www.svetmarket.ru,
including without limitation, web hosting providers, back-end service providers, digital
advertising service providers, search-based online advertising services (such as through paid
inclusion, paid search results, sponsored search results, sponsored links, and internet keyword
advertising), domain name registration privacy protection services, providers of social media
services (e.g., Facebook, Instagram, and Pinterest) and user generated and online content services
(e.g. , YouTube, Flickr and Tumblr), that receive actual notice of this Order, shall within three (3)
days of receipt of this Order, cease providing or disable provision of such services to Defendants
in relation to the Lindsey Adelman marks.
5.

Upon Plaintiffs’ request, the privacy protection service for the subject domain

name(s) for which the Defendants use such privacy protection service to conceal their identity and
contact information are ordered to disclose to Plaintiffs the true identities and contact information
of the registrant(s).

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6.

Upon entry of this Order, Plaintiffs shall provide a copy of this Order by email to

the registrar of record for the subject domain name, so that the registrar may notify the
Defendants/registrants of the Order and provide notice of the locking of the domain name.
7.

Plaintiffs shall also provide notice and a copy of this Order to the

Defendants/registrants of the subject domain name via email to the email address provided as part
of the domain registration data for the domain name, and Plaintiffs shall provide notice and a copy
of this Order to the operators of the website via an email address and/or online submission forms
provided on the website operating at the www.lucretiashop.com.au, www.replicalights.com.au,
www.replica-lights.com, www.delightful.su,

www.left-concept.ru, www.jasboutique.co.uk,

www.theplumplum.com, www.great-light.ru, www.vakkerlighting.com, www.mooielight.com,
and www.svetmarket.ru, domains.
8.

In accordance with 15 U.S.C. §1116(a) and this Court's inherent equitable power

to issue provisional remedies ancillary to its authority to provide final equitable relief, Defendants
and their officers, servants, employees, agents and any persons in active concert or participation
with them, and banks, savings and loan associations, payment processors or other financial
institutions, payment providers, third-party processors and advertising service providers who
receive actual notice of this Preliminary Injunction Order, shall immediately locate and restrain
any accounts connected to Defendants’ operations or the www.lucretiashop.com.au,
www.replicalights.com.au, www.replica-lights.com, www.delightful.su,

www.left-concept.ru,

www.jasboutique.co.uk, www.theplumplum.com, www.great-light.ru, www.vakkerlighting.com,
www.mooielight.com, and www.svetmarket.ru, websites; and shall not allow such funds to be
transferred or withdrawn or allow any diminutions to be made by Defendants from such accounts,
pending further order of this Court or notification otherwise by Plaintiffs.

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9.

This Temporary Restraining Order shall remain in effect until the date for the

hearing on the Motion for Preliminary Injunction set forth below, or until such further dates as set
by the Court or stipulated to by the parties.
10.

Pursuant to Fed. R. Civ. P. 65(c), Plaintiffs shall post a bond in the amount of

$_____________________, as payment of damages to which Defendants may be entitled for a
10,000
wrongful injunction or restraint. This Order shall be effective from issuance and continued subject
to further Order of Court, conditioned upon Plaintiffs’ posting such bond or equivalent security no
later than Tuesday, November 23, 2021.
11.

A telephonic hearing is set before this Court on Friday, December 1, 2021

at 4:00PM Eastern Time, at which time Defendants and/or any other persons with
standing may challenge the appropriateness of this Order and move to dissolve the same and at
which time the Court will hear argument on Plaintiffs’ requested preliminary injunction. All
parties shall appear and should contact the Court at 1-888-363-4749 (access code: 3768660).
12.

Plaintiffs shall serve copies of their Complaint, Motion for Temporary Restraining

Order and to Show Cause, this Order and all other pleadings and documents on file in this action
on Defendants by email as described above and such notice so given shall be deemed good and
sufficient service thereof pending or until further Order of Court. Plaintiffs are directed to serve
Defendants by Friday, November 19, 2021.
13.

Any response or opposition to Plaintiffs’ Motion for Temporary Restraining Order

and to Show Cause for a Preliminary Injunction must be filed and served on Plaintiffs’ counsel by
Friday, November 26, 2021, and filed with the Court, along with Proof of Service. Plaintiffs shall
file any Reply Memorandum by Tuesday, November 30, 2021. The above dates may be revised
upon stipulation by all parties and/or approval of this Court. Defendants are hereby on notice
that failure to appear at the hearing may result in the imposition of a preliminary injunction
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against them pursuant to 15 U.S.C. section 1116(d), Federal Rule of Civil Procedure 65, and
this Court’s inherent authority.
IT IS SO ORDERED.
Dated: November 17, 2021
____________________________________
ANDREW L. CARTER, JR.
United States District Judge

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