DP Creations v. Reborn Baby Mart, et al
Filing
40
MEMORANDUM DECISION granting 35 Motion to convert the temporary restraining order to a preliminary injunction. The court shall file the accompanying preliminary injunction on the docket. Signed by Judge Jill N. Parrish on 12/15/21. (alf)
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FILED
2021 DEC 15 AM 10:07
CLERK
U.S. DISTRICT COURT
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
DP CREATIONS, LLC,
MEMORANDUM DECISION AND
ORDER GRANTING PLAINTIFF’S
MOTION FOR A PRELIMINARY
INJUNCTION
Plaintiff,
v.
REBORN BABY MART, et al.,
Defendants.
Case No. 2:21-cv-00574-JNP
District Judge Jill N. Parrish
On December 15, 2021, the court held a hearing to determine whether to enter a
preliminary injunction in this matter. Prior to the hearing, Plaintiff DP Creations, LLC d/b/a
Bountiful Baby (“Bountiful Baby” or “Plaintiff”) moved to convert the existing temporary
restraining orders into a preliminary injunction under Federal Rule of Civil Procedure 65(a). ECF
No. 35. Having considered the briefing and the arguments raised at the hearing, the court
GRANTS the motion for the following reasons.
BACKGROUND
Bountiful Baby is a Utah limited liability company with its principal place of business at
2140 South 3600 West, West Valley City, Utah. Bountiful Baby does business in the District of
Utah, has numerous employees and customers in the District of Utah, and has allegedly suffered
injury in the District of Utah.
This lawsuit names as defendants five unknown Chinese entities (Reborn Baby Mart,
Reborn Box, Reborn Baby Stores, Love Reborn Dolls, and Reborn Dolls Shop) and four entities
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with various connections to the unknown Chinese entities (Nine9Light Company, LTD
Information Technology Co., Ltd., Jozzby Group, Inc., and AIMARK Ltd.) (collectively,
“Defendants”). The Defendants operate websites, accept PayPal payments, and correspond with
customers through email. 1
Bountiful Baby specializes in selling kits and supplies for making “reborn dolls.” Reborn
dolls are intended to be indistinguishable from a real baby, and Bountiful Baby’s dolls are
particularly known for their uncanny realism. Bountiful Baby alleges that Defendants sell
counterfeit Bountiful Baby products on their websites and mislead consumers by using Bountiful
Baby’s copyrighted images and trademarks. Bountiful Baby alleges copyright infringement,
unfair competition, and common law trademark infringement.
On November 22, 2021, the court entered a Temporary Restraining Order and Asset
Freeze in this matter, which went into effect the same day at 9:00 a.m. and was set to expire
1
Defendant Reborn Baby Mart operates www.RebornBabyMart.com, accepts PayPal payment
through englandearthwards32@gmail.com, and corresponds with customers through
cs@rebornbabymart.com. Defendant Reborn Box operates www.RebornBox.com and
corresponds with customers through service@rebornbox.com. Defendant Reborn Baby Stores
operates www.RebornBabyStores.com and corresponds with customers through
service@rebornbabystores.com. Defendant Love Reborn Dolls operates www.LoveReborn
Dolls.com and corresponds with customers through services@lovereborndolls.com. All four
aforementioned entities accept PayPal payments at sdh15168294305@gmail.com. Defendant
Reborn Dolls Shop operates www.RebornDollsShop.com, accepts PayPal payment at
jonesjere1000@gmail.com,
and
corresponds
with
customers
through
service@reborndollsshop.com.
Plaintiff also lists four business organizations associated with the aforementioned entities.
Defendant Jozzby is associated with Reborn Baby Mart and Reborn Dolls Shop, accepts PayPal
payments through sdh15168294305@gmail.com, and corresponds with customers through
cs@rebornbabymart.com. Defendant AIMARK is associated with Reborn Baby Stores and Love
Reborn Dolls, accepts PayPal payments through sdh15168294305@gmail.com and
jonesjere1000@gmail.com,
and
corresponds
with
customers
through
service@reborndollsshop.com and service@reborndollsshop.com. Defendant Nine9Light
Company accepts PayPal payments at sdh15168294305@gmail.com for products sold by Reborn
Box, Reborn Baby Mary, and Reborn Stores. Defendant LTD Information Technology Company
accepts PayPal payments at jonesjere1000@gmail.com for products sold by Reborn Dolls Shop.
2
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fourteen days later, on December 6, 2021. ECF No. 7. On December 2, 2021, the court issued a
supplemental TRO, freezing assets in bank accounts associated with Defendants’ PayPal
accounts. ECF No. 24. On December 6, 2021, the court held a hearing on the two TROs. All
parties received notice of the hearing. Only counsel for Bountiful Baby appeared. The court
elected to extend the TROs for ten days, through December 16, 2021. ECF No. 25. On December
15, 2021, the court held a hearing to determine whether it should enter a preliminary injunction
upon expiration of the extended TRO. Again, all parties received notice, but only counsel for
Bountiful Baby was in attendance. In sum, Defendants did not respond to Bountiful Baby’s
motion, appear at any of the noticed hearings, or otherwise contact the court.
PERSONAL JURISDICTION
Before a district court may issue a preliminary injunction, it must determine whether
“there is a reasonabl[e] probability that it has personal jurisdiction over” the defendant. Sebo
Am., LLC v. Azar, No. 20-cv-03015, 2021 U.S. Dist. LEXIS 34245, at *6 (D. Colo. Feb. 24,
2021) (citing Nat’l Union Fire Ins. Co. of Pittsburgh, PA v. Kozeny, 19 F. App’x 815, 822 (10th
Cir. 2001)). The court finds that there is a reasonable probability that it has personal jurisdiction
over Defendants.
At the pleadings stage, a plaintiff need only establish a prima facie showing of personal
jurisdiction. Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th Cir.
2008). Bountiful Baby alleges that the court has personal jurisdiction over each defendant
because they committed copyright infringement in Utah, targeted Bountiful Baby in Utah, and
placed infringing products into the stream of commerce with the knowledge the products would
reach Utah. To support their argument, Bountiful Baby contends that the checkout pages on
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Defendants’ websites include dropdown menus listing Utah as a location to which product orders
may be shipped or sold.
The inclusion of Utah in the dropdown lists of states “is sufficient to establish specific
personal jurisdiction under the ‘stream of commerce’ theory and that the Defendants’ site[s are]
‘something more’ than a non-targeted transaction site.” Neck Hammock, Inc. v. Danezen.com,
No. 2:20-cv-287, 2020 WL 9601834, at *1 (D. Utah May 5, 2020) (quoting Zing Brothers, LLC
v. Bevstar, LLC, No. 2:11-cv-337, 2011 WL 4901321, at *2-3 (D. Utah Oct. 14, 2011)).
Additionally, given the Defendants’ minimum contacts, the court finds that the exercise of
personal jurisdiction over the Defendants satisfies due process and does not offend the traditional
notions of substantial justice and fair play. Accordingly, Bountiful Baby makes a sufficient
showing of personal jurisdiction for this stage of the proceedings.
LEGAL STANDARD
Federal Rule of Civil Procedure 65(a) “authorizes district courts to issue preliminary
injunctions.” Coalition of Concerned Citizens v. Fed. Transit Admin. of U.S. Dep’t of Transp.,
843 F.3d 886, 901 (10th Cir. 2016) (quoting Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20
(2008)). “A preliminary injunction is ‘an extraordinary remedy that may only be awarded upon a
clear showing that the [movant] is entitled to such relief.’” Northglenn Gunther Toody’s, LLC v.
HQ8-10410-10450 Melody Lane LLC, 702 F. App’x 702, 706 (10th Cir. 2017) (quoting Winter,
555 U.S. at 22). “A party seeking a preliminary injunction must prove that all four of the equitable
factors weigh in its favor: specifically, prove that ‘(1) it is substantially likely to succeed on the
merits; (2) it will suffer irreparable injury if the injunction is denied; (3) its threatened injury
outweighs the injury the opposing party will suffer under the injunction; and (4) the injunction
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would not be adverse to the public interest.’” Sierra Club, Inc. v. Bostick, 539 F. App’x 885, 888
(10th Cir. 2013) (unpublished) (citation omitted).
“In addition, the following types of preliminary injunctions are disfavored and they
require that the movant satisfy an even heavier burden” of demonstrating that the four factors
above weigh in the movant’s favor: “(1) a preliminary injunction that disturbs the status quo; (2)
a preliminary injunction that is mandatory as opposed to prohibitory; and (3) a preliminary
injunction that affords the movant substantially all the relief he may recover at the conclusion of a
full trial on the merits.” SCFC ILC, Inc. v. VISA USA, Inc., 936 F.2d 1096, 1098-99 (10th Cir.
1991), overruled on other grounds by O Centro Espirita Beneficiente Uniao Do Vegetal v.
Ashcroft, 389 F.3d 973, 975 (10th Cir. 2004). “[A]ny preliminary injunction fitting within one of
the disfavored categories must be more closely scrutinized to assure that the exigencies of the
case support the granting of a remedy that is extraordinary even in the normal course.” O Centro,
389 F.3d at 975. Bountiful Baby is subject to this “heavier burden” because a preliminary
injunction would disturb the status quo and afford Bountiful Baby substantially all of the relief
that it may recover after a full trial on the merits. But even with this “heavier burden,” the court
finds that Bountiful Baby has met the requirements for a preliminary injunction.
ANALYSIS
I.
LIKELIHOOD OF SUCCESS ON THE MERITS OF THE COPYRIGHT
INFRINGMENT CLAIM
“‘[T]he very purpose of an injunction under Rule 65(a) is to give temporary relief based
on a preliminary estimate of the strength of the plaintiff’s suit, prior to the resolution at trial of the
factual disputes and difficulties presented by the case.’ Therefore, ‘a plaintiff must present a prima
facie case but need not show a certainty of winning.’” Kodiak Cakes LLC v. Cont’l Mills, Inc.,
358 F. Supp. 3d 1219, 1226 (D. Utah 2019) (citations omitted); see also Planned Parenthood
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Ass’n of Utah v. Herbert, 828 F.3d 1245, 1252 (10th Cir. 2016) (citations omitted). To succeed on
a copyright infringement claim, a plaintiff must prove: “(1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361 (1991); see also Stan Lee Media, Inc. v. Walt Disney Co., 774 F.3d
1292, 1299 (10th Cir. 2014).
Bountiful Baby rests its argument for this prong on its copyright infringement claims. To
succeed on a copyright infringement claim, a plaintiff must prove: “(1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Stan Lee Media, Inc. v. Walt
Disney Co., 774 F.3d 1292, 1299 (10th Cir. 2014). Bountiful Baby provided proof of ownership
of U.S. Copyright Registration Nos. VA0002231276, VA0002255282, and VA0002255449. ECF
Nos. 1-40, 1-41, 1-42. And Bountiful Baby submits photos in its complaint that allegedly show
that Defendants copied original constituent elements of its copyrighted materials by using
copyrighted images and selling copyrighted doll sculptures. ECF No. 1 at 11-34. Based on these
allegations, the court finds that Bountiful Baby is likely to succeed on the merits of its copyright
infringement claims.
In addition to copyright infringement, Bountiful Baby also sues Defendants for unfair
competition and trademark infringement. Bountiful Baby only argues that it is likely to succeed
on the merits of the copyright infringement claim. But “[w]here a plaintiff seeks a preliminary
injunction and asserts multiple claims upon which the relief may be granted, the plaintiff need
only establish a likelihood of success on the merits of one of the claims.” Roda Drilling Co. v.
Siegal, No. 07-cv-400-GFK-FHM, 2008 WL 4056229, at *5 (N.D. Okla. Aug. 11, 2008) (citation
omitted); see also Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc, 683 F. Supp. 50, 52
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(S.D.N.Y.), aff’d, 859 F.2d 148 (2d Cir. 1988). Because the court finds that Bountiful Baby is
likely to succeed on the merits of its copyright infringement claim, Plaintiff need not also argue
that it would succeed on the merits of its unfair competition and trademark infringement claims.
II.
IMMEDIATE AND IRREPARABLE INJURY
“The purpose of a preliminary injunction is not to remedy past harm but to protect plaintiffs
from irreparable injury that will surely result without their issuance. The movant must demonstrate
a significant risk that he or she will experience harm that cannot be compensated after the fact by
money damages.” Kodiak Cakes, 358 F. Supp. 3d at 1236 (citations omitted). A plaintiff suffers
irreparable injury when the court would be unable to grant an effective monetary remedy after a
full trial because such damages would be inadequate or difficult to ascertain.” Dominion Video
Satellite, Inc. v. EchoStar Satellite Corp., 269 F.3d 1149, 1156 (10th Cir. 2001) (citation
omitted). The “loss of reputation, good will, marketing potential,” and customers constitutes
irreparable injury. See id. at 1156-57; Dominion Video Satellite, Inc. v. Echostar Satellite Corp.,
356 F.3d 1256, 1264 (10th Cir. 2004) (“[T]he irreparable harm findings are based on such factors
as the difficulty in calculating damages, the loss of a unique product, and existence of intangible
harms such as loss of goodwill or competitive market position.”); Limitless Worldwide, LLC v.
AdvoCare Int’l, LP, 926 F. Supp. 2d 1248, 1254 (D. Utah 2013) (“Loss of customers, loss of
goodwill, and threats to a business’ viability have been found to constitute irreparable harm.”).
Bountiful Baby alleges that Defendants use copyrighted images identical to copyrighted
images owned and used by Bountiful Baby on their websites. Bountiful Baby further contends
that Defendants use their websites to sell copyrighted baby sculptures identical to the
copyrighted sculptures owned and sold by Bountiful Baby. Bountiful Baby claims that
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Defendants’ use of its copyrighted images and sale of its copyrighted dolls are already causing
immediate and irreparable injury to Bountiful Baby. The court agrees.
First, Bountiful Baby provides evidence of the negative reviews of Defendants’ products
online. ECF No. 3-1, at 5. Bountiful Baby asserts that customers who purchase products through
the allegedly counterfeit websites and who do not realize the difference between authentic,
copyrighted Bountiful Baby products and the counterfeit products may fault Bountiful Baby
when they receive poor-quality products. Second, Bountiful Baby alleges that Defendants’
continued advertising and sale of its allegedly counterfeit products will continue to cause
irreparable harm to Bountiful Baby as Defendants continue to confuse and deceive consumers as
to the origin and quality of the product, thus causing consumers to associate Defendants’ poorquality products with Bountiful Baby.
Therefore, the court finds that Bountiful Baby is suffering and will suffer irreparable
harm in the form of a tarnished reputation, a decrease in market share and goodwill, and a loss of
customers who are upset about the poor-quality product they received.
III.
BALANCE OF HARMS
Moreover, the balance of harms tips in favor of Bountiful Baby. “[W]hen the case for
infringement is clear, a defendant cannot avoid a preliminary injunction by claiming harm to a
business built upon that infringement.” Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d
1222, 1229 (10th Cir. 2007). Here, because Defendants’ businesses allegedly sell counterfeit
products using Bountiful Baby copyrighted images and product designs, the court finds that
Defendants cannot avoid a TRO based on harm to its business. Thus, there is no cognizable
likelihood of harm to Defendants. See Klein-Becker USA, LLC v. Tahini, No. 2:07-cv-521, 2008
WL 11340043, at *3 (D. Utah Aug. 15, 2008) (“Producing and selling counterfeit goods is
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illegal. There can be no cognizable harm to the Defendants by the issuance of an order requiring
them not to break the law.”).
IV.
PUBLIC INTEREST
Finally, Bountiful Baby “must also demonstrate that issuance of the preliminary
injunction is not adverse to the public interest.” See Tri-State Generation & Transmission Ass’n,
Inc. v. Shoshone River Power, Inc., 805 F.2d 351, 357 (10th Cir. 1986). “In copyright cases . . .
this factor normally weighs in favor of the issuance of an injunction because the public interest is
the interest in upholding copyright protections.” Autoskill Inc. v. Nat’l Educ. Support Sys., Inc.,
994 F.2d 1476, 1499 (10th Cir. 1993), overruled on other grounds by TW Telecom Holdings Inc.
v. Carolina Internet Ltd., 661 F.3d 495 (10th Cir. 2011).
Here, Bountiful Baby offered evidence of copyright infringement. Because copyright
infringement inherently harms the public interest, an injunction necessarily serves the public
interest.
V.
ASSET FREEZE
As part of its motion for a preliminary injunction, Bountiful Baby seeks a continued freeze
of Defendants’ assets to preserve its right to an accounting. “[A] court has the power to issue a
preliminary injunction in order to prevent a defendant from dissipating assets in order to preserve
the possibility of equitable remedies. Reebok Int’l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552,
559 (9th Cir. 1992) (citation omitted). “A request for equitable relief invokes the district court’s
inherent equitable powers to order preliminary relief, including an asset freeze, in order to assure
the availability of permanent relief.” Klein-Becker USA, LLC v. Tahini, No. 2:07-cv-00521-DB,
2008 WL 11340043, at *3 (D. Utah Aug. 15, 2008) (quoting Levi Strauss & Co. v. Sunrise Int’l
Trading Inc., 51 F.3d 982, 987 (11th Cir. 1995)). “A party seeking an asset freeze must show a
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likelihood of dissipation of the claimed assets, or other inability to recover monetary damages, if
relief is not granted.” Johnson v. Couturier, 572 F.3d 1067, 1085 (9th Cir. 2009).
Bountiful Baby produced evidence that Defendants use PayPal accounts to process
payments for consumer purchases of the products at issue. Bountiful Baby alleges that PayPal
processes credit card or electronic transfer payments from consumers, which are directed to
Defendants’ PayPal accounts. PayPal, Plaintiff alleges, then forwards the payments to
Defendants’ accounts in China via accounts at American banks. Without an asset freeze,
Bountiful Baby argues, Defendants will continue to engage in and profit from their allegedly
counterfeit scheme. See Klein, 2008 WL 11340043, at *4 (“[T]he court is justified in freezing
Defendants’ assets not only to protect them for possible future attachment, but also to deprive
Defendants of capital to continue their counterfeiting operations.”).
The court finds that Bountiful Baby’s allegation that Defendants will move their assets
beyond this court’s jurisdiction justifies the requested asset freeze. The court further finds that
Federal Rules of Civil Procedures 65(d)(2)(C) grants the court authority to bind any participants
in processing the allegedly counterfeit sales, such as PayPal, Community Federal Savings Bank
and Deutsche Bank. See FED. R. CIV. P. 65(d)(2)(C) (noting that injunctions may bind “other
persons who are in active concert or participation with [the party subject to the injunction]”).
Thus, to preserve Bountiful Baby’s right to an accounting and ensure the availability of
permanent relief, the extends the freeze on Defendants’ assets.
*
*
*
In conclusion, the court GRANTS Bountiful Baby’s motion to convert the temporary
restraining order to a preliminary injunction. The court shall file the accompanying preliminary
injunction on the docket.
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DATED December 15, 2021.
BY THE COURT
______________________________
Jill N. Parrish
United States District Court Judge
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