DP Creations v. Reborn Baby Mart, et al

Filing 60

MEMORANDUM DECISION granting 48 Motion for Default Judgment. The court enters default judgment against defendants Reborn Baby Mart; Reborn Box; Reborn Baby Stores; Love Reborn Dolls; Reborn Dolls Shop; Nine9Light Company; and Ltd . Information Technology Co., Ltd and awards damages in the following amount: $750,000 in statutory damages against each website Defendant. The court will enter a separate judgment on the docket. The court grants Bountiful Baby's motion fo r permanent injunction. The court shall file the accompanying permanent injunction on the docket. The court grants Bountiful Baby's motion for attorneys' fees and costs in the amount of $71,750.95. Signed by Judge Jill N. Parrish on 8/3/2022. (alf)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
DP CREATIONS, LLC,

v.

MEMORANDUM DECISION AND
ORDER GRANTING PLAINTIFF’S
MOTION FOR DEFAULT JUDGMENT
AND PERMANENT INJUNCTION

REBORN BABY MART, et al.,

Case No. 2:21-cv-00574-JNP

Plaintiff,

Defendants.

District Judge Jill N. Parrish

This case comes before the court on Plaintiff DP Creations, LLC d/b/a Bountiful Baby’s
(“Bountiful Baby” or “Plaintiff”) motion for default judgment and permanent injunction. ECF
No. 53. Having considered the briefing, the court GRANTS the motion for the following reasons.
FACTUAL 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 motion addresses seven of the named defendants: (1) Reborn Baby Mart, (2) Reborn
Box, (3) Reborn Baby Stores, (4) Love Reborn Dolls, (5) Reborn Dolls Shop, (6) Nine9Light
Company, and (7) LTD Information Technology Co., Ltd. (collectively, “Defendants”). 1

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Although named in this lawsuit, the clerk of court has not entered a default certificate against
Jozzby Group, Inc. and AIMARK LTD. Accordingly, this motion does not pertain to those two
defendants.

Defendants (1) through (5) operate websites that sold counterfeit products. Defendant Nine9Light
Company processed payments for counterfeit products sold by Defendants (1) through (4).
Defendant LTD processed payments for Defendant (5). Although the exact relationship between
the entities is unknown, Bountiful Baby contends that Nine9Light and LTD serve as alter egos of
the website defendants.
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
(“TRO”) in this matter, which went into effect the same day at 9:00 a.m. and was set to expire
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. On the same day, the court converted the TRO into a preliminary injunction. ECF
No. 40.

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On January 24, 2022, the clerk of court entered a default certificate as to Defendants, as
requested by Bountiful Baby. ECF No. 44. On February 3, 2022, Bountiful Baby moved for entry
of default judgment against Defendants, a preliminary injunction against Defendants’
infringement, and attorney’s fees and costs.
LEGAL STANDARD
Federal Rule of Civil Procedure 55 sets forth a two-step process for obtaining a default
judgment against a party who “has failed to plead or otherwise defend” against claims for
affirmative relief. First, the clerk of court “must enter the party’s default” under Rule 55(a).
Second, the non-defaulting party must move the court (or, in certain circumstances, the clerk) for
entry of default judgment under Rule 55(b).
“[T]he entry of a default judgment is committed to the sound discretion of the district
court.” Tripodi v. Welch, 810 F.3d 761, 764 (10th Cir. 2016). Default judgments are generally
disfavored as “[t]he preferred disposition of any case is upon the merits.” Gomes v. Williams, 420
F.2d 1364, 1366 (10th Cir. 1970). But “a workable system of justice requires that litigants not be
free to appear at their pleasure.” Cessna Fin. Corp. v. Bielenberg Masonry Contracting, Inc., 715
F.2d 1442, 1444 (10th Cir. 1983). The court must hold parties “to a reasonably high standard of
diligence in observing the courts’ rules of procedure[,]” and “[t]he threat of judgment by default
serves as an incentive to meet this standard.” Id. at 1444-45.
ANALYSIS
The court first addresses the entry of default judgment, before turning to Bountiful Baby’s
request for a permanent injunction and attorneys’ fees and costs.

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I.

DEFAULT JUDGMENT
In order to grant default judgment, the court must first assure itself of both subject matter

jurisdiction and personal jurisdiction. Williams v. Life Sav. & Loan, 802 F.2d 1200, 1203 (10th Cir.
1986). It must then determine whether the plaintiff’s complaint contains sufficient factual matter,
accepted as true, to state a claim for relief. Bixler v. Foster, 596 F.3d 751, 762 (10th Cir. 2010)
(“There must be a sufficient basis in the pleadings for the judgment entered.” (citation omitted)).
The court may consider declarations and other exhibits when evaluating a plaintiff’s claims. See,
e.g., Major Bob Music v. S. Shore Sports Bar & Grill, Inc., No. 2:08-cv-689, 2010 WL 2653330,
at *1 (D. Utah June 30, 2010).
A.

Jurisdiction
i.

Subject Matter Jurisdiction

Four of the counts in Bountiful Baby’s complaint arise under federal law. ECF No. 1
¶¶ 59-94 (counts I-IV). Accordingly, the court has subject matter jurisdiction over those claims
under federal question jurisdiction. See 28 U.S.C. § 1331. Count V, Bountiful Baby’s common law
trademark infringement claim, is intimately related to the federal trademark infringement claims.
Therefore, the court may exercise supplemental jurisdiction over count V under 28 U.S.C.
§ 1367(a).
ii.

Personal Jurisdiction

To establish minimum contacts with the forum state, the plaintiff must demonstrate that the
defendant “purposefully directed its activities at residents of the forum state.” Old Republic Ins.
Co. v. Cont’l Motors, Inc., 877 F.3d 895, 904 (10th Cir. 2017) (citation omitted). The court must
additionally determine “whether a nexus exists between Defendant’s forum-related contacts and

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the Plaintiff’s cause of action.” OMI Holdings, Inc. v. Royal Ins. Co. of Can., 149 F.3d 1086, 1095
(10th Cir. 1998) (citing Asahi Metal Indus. Co., Ltd. v. Sup. Ct. of Cal., 480 U.S. 102, 109 (1987)).
To establish purposeful availment in the internet context, the plaintiff must show that the
defendant either “intentionally targeted Utah users or that Utah users actually interacted with [the]
website.” iAccess, Inc. v. WEBcards Techs., Inc., 182 F. Supp. 2d 1183, 1187 (D. Utah 2002). Here,
Bountiful Baby has submitted evidence that PayPal accounts associated with Defendants sold 286
products to Utah customers worth $22,580.42. 2 See Edizone, LLC v. Asia Focus Int’l Grp., Inc.,
196 F. Supp. 3d 1222, 1227 (D. Utah 2016) (finding purposeful availment where a defendant
“filled these orders and shipped the allegedly infringing product to the Utah customers’ addresses”
thus forming “ongoing relationships . . . with Utah forum residents regarding the allegedly
infringing products”); The Neck Hammock, Inc. v. Danezen.com, No. 2:20-cv-287, 2020 WL
6364598, at *6 (D. Utah Oct. 29, 2020) (finding personal jurisdiction where a defendant sold as
few as “3 allegedly infringing products to Utah residents”). Accordingly, consumers in Utah had
substantial interactions with Defendants online. Moreover, those interactions—the sale of
counterfeit products—are directly related to Bountiful Baby’s causes of action, which include

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“[P]ersonal jurisdiction requirements ‘must be met as to each defendant.’” Newsome v. Gallacher,
722 F.3d 1257, 1266 (10th Cir. 2013) (quoting Rush v. Savchuk, 444 U.S. 320, 332 (1980)). The
PayPal accounts that contain transaction information for sales to Utah residents pertain to all seven
defendants. The PayPal account ending in 8316, owned by Reborn Baby Mart, sold $227.07 worth
of products in three transactions with Utah consumers. See ECF No. 31 ¶ 3; ECF No. 54 ¶ 3. The
PayPal account ending in 6988, owned by Reborn Baby Mart, Reborn Box, Reborn Baby Stores,
Love Reborn Dolls, Nine9Light Company, Jozzby Group, Inc., and AIMARK Ltd., sold $935.63
worth of products in eleven transactions with Utah consumers. See ECF No. 31 ¶ 4; ECF No. 54
¶ 3. The PayPal account ending in 8136, owned by Ltd. Information Technology Co., Ltd., and
AIMARK Ltd., sold $21,417.72 worth of products in 272 transactions with Utah consumers. See
ECF No. 31 ¶ 5; ECF No. 54 ¶ 3. Although Reborn Dolls Shop does not appear as an owner of any
of the referenced PayPal accounts, Bountiful Baby submits that LTD Information Co., Ltd.
received payments in the account ending in 8136 on behalf of Reborn Dolls Shop.
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copyright and trademark infringement. Accordingly, the court has personal jurisdiction over each
defendant.
B.

Substantive Claims
i.

Count I

Count I asserts copyright infringement of Bountiful Baby’s infant photographs. “To state a
claim for copyright infringement, a plaintiff must show ‘(1) ownership of a valid copyright and (2)
copying of constituent elements of the work that are original.’” Stan Lee Media, Inc. v. Walt Disney
Co., 774 F.3d 1292, 1299 (10th Cir. 2014) (citation omitted). Bountiful Baby easily establishes the
first element. The company owns Registration No. VA0002231276, which includes the three
photographs highlighted in Bountiful Baby’s motion. ECF No. 1 ¶ 18 & Ex. NN.
The Tenth Circuit has outlined a complex “abstraction-filtration-comparison” test to
determine whether a defendant’s product is substantially similar to the protectable elements in a
plaintiff’s product. See Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir.
1996). But where Defendants’ product is identical to Bountiful Baby’s product, the court need not
engage in such analysis. Simply viewing the original and copied images makes clear that
Defendants have copied every single constituent element of Bountiful Baby’s copyrighted
photographs. Accordingly, default judgment is appropriate on count I.
ii.

Counts II and III

Counts II and III allege copyright infringement for the unlawful use of the Darren and Skya
copyrighted sculptures. Again, Bountiful Baby easily establishes ownership of a valid copyright
for both sculptures. Bountiful Baby owns Registration Nos. VA0002255282 (Darren) and
VA0002255449 (Skya). ECF No. 1 ¶¶ 34, 45. And Bountiful Baby has submitted numerous
screenshots demonstrating that Defendants reproduced dolls using the copyrighted Darren and

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Skya sculptures. ECF No. 1, Exs. T-CC. After viewing the screenshots, the court determines that
Defendants’ products are “so similar to [Bountiful Baby’s] work that an ordinary reasonable person
would conclude that [Defendants] unlawfully appropriated [Bountiful Baby’s] protectible
expression by taking material of substance and value.” See Country Kids, 77 F.3d at 1288 (citation
omitted). Accordingly, there is a sufficient basis for default judgment on counts II and III.
iii.

Counts IV and V

Count IV alleges that Defendants’ use of Bountiful Baby’s trademarks amounts to unfair
competition in violation of the Lanham Act. A trademark includes “any word [or] name . . . used
by a person . . . to identify and distinguish his or her goods, including a unique product, from those
manufactured or sold by others.” 15 U.S.C. § 1127. Here, Bountiful Baby asserts rights in the
trademarks “Darren” and “Skya,” which Bountiful Baby uses in connection with the sale of its
“Darren” and “Skya” branded dolls.
The Lanham Act provides trademark protection under two separate sections. First, under
§ 2 of the Act, a party can register its trademark with the United States Patent and Trademark
Office, which creates a presumption that its mark is valid. See 15 U.S.C. § 1052; Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). Here, Bountiful Baby submits no evidence
that it registered “Darren” or “Skya.” But a trademark that is unregistered may still be protectable
under § 43(a) of the Lanham Act. Id. To establish a claim for protection under § 43(a), Bountiful
Baby must prove: “(1) that the plaintiff has a protectable interest in the mark; (2) that the defendant
has used an identical or similar mark in commerce; and (3) that the defendant’s use is likely to
confuse customers.” Underwood v. Bank of Am. Corp., 996 F.3d 1038, 1052 (10th Cir. 2021)
(citation omitted).

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The Tenth Circuit has identified five categories of terms to assist district courts in assessing
the protectability of a mark: generic, descriptive, suggestive, arbitrary, and fanciful. The five
categories have been described as follows:
A mark is generic if it is a common description of products and refers to the genus
of which the particular product is a species. A mark is descriptive if it describes the
product’s features, qualities, or ingredients in ordinary language or describes the
use to which the product is put. A mark is suggestive if it merely suggests the
features of the product, requiring the purchaser to use imagination, thought, and
perception to reach a conclusion as to the nature of the goods. An arbitrary mark
applies a common word in an unfamiliar way. A fanciful mark is not a real word at
all, but is invented for its use as a mark.
Donchez v. Coors Brewing Co., 392 F.3d 1211, 1216 (10th Cir. 2004) (citation and alterations
omitted). The court holds that “Darren” and “Skya” are at least arbitrary—if not fanciful—as they
apply to the sculptures in question. Neither name describes the sculptures’ “features, qualities, or
ingredients” nor do the names suggest the nature of the goods. Rather, there is no intrinsic
connection between the marks “Darren” and “Skya” and the sculptures. See Brookfield Commc’ns,
Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1058 n.19 (9th Cir. 1999) (“Arbitrary and fanciful
marks have no intrinsic connection to the product with which the mark is used.”); see also McKee
Baking Co. v. Interstate Brands Corp., 738 F. Supp. 1272, 1274 (E.D. Mo. 1990) (“The Court
finds that LITTLE DEBBIE is an arbitrary or fanciful trademark because the name is completely
unrelated to the product it represents.”). And suggestive, arbitrary, or fanciful marks “are
inherently distinctive, and thus receive the greatest protection against infringement.” Donchez, 392
F.3d at 1216 (citation omitted). Accordingly, Bountiful Baby has established a protectable interest
in the marks.
Bountiful Baby readily establishes that Defendants used the marks in commerce. The
company provides numerous screenshots where Defendants refer to “Darren” or “Skya” in
marketing a line of dolls on the internet. See, e.g., ECF No. 1 ¶¶ 36, 38, 40, 42, 44, 47, 49, 51, 53,
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55. And “the Internet is generally an instrumentality of interstate commerce.” Utah Lighthouse
Ministry v. Found. for Apologetic Info. & Rsch., 527 F.3d 1045, 1054 (10th Cir. 2008).
Finally, Bountiful Baby must establish a likelihood of confusion between the subject
marks. The Tenth Circuit utilizes the following six-factor test for determining whether a likelihood
of confusion exists: “(1) the degree of similarity between the marks; (2) the intent of the alleged
infringer in adopting its mark; (3) evidence of actual confusion; (4) similarity of products and
manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the
strength or weakness of the marks.” Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 972
(10th Cir. 2002). “No one factor is dispositive.” Utah Lighthouse, 527 F.3d at 1055.
Defendants and Bountiful Baby use identical word marks. See Hornady Mfg. Co., Inc. v.
Doubletap, Inc., 746 F.3d 995, 1001 (10th Cir. 2014) (noting that the similarity of the marks is the
“first and most important factor” (citation omitted)). And both parties use the identical marks to
sell essentially identical products using an identical manner of marketing. Moreover, Defendants
appear to have adopted the marks “Darren” and “Skya” to intentionally divert customers seeking
Bountiful Baby dolls to their own websites. See Sally Beauty, 304 F.3d at 973 (evaluating intent
by considering “whether defendant had the intent to derive benefit from the reputation or goodwill
of plaintiff”). Therefore, factors (1), (2), and (4) weigh strongly in favor of Bountiful Baby.
The strength of the mark weighs somewhat in favor of Bountiful Baby. To assess the
relative strength of a mark, the court must consider two aspects of strength: (1) “conceptual
strength, which refers to the placement of the mark along distinctiveness spectrum,” discussed
above; and (2) “commercial strength, which refers to the marketplace recognition value of the
mark.” Utah Lighthouse, 527 F.3d at 1056. As discussed above, Bountiful Baby has demonstrated
the conceptual strength of the marks by showing its arbitrariness. But Bountiful Baby provides

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minimal evidence of the marketplace recognition of the marks. While Bountiful Baby repeatedly
discusses how the market places high value on its reborn dolls generally, the company fails to
demonstrate that consumers recognize the names “Darren” and “Skya” as referring to Bountiful
Baby dolls in particular. See Water Pik, Inc. v. Med-Sys., Inc., 848 F. Supp. 2d 1262, 1278 (D. Colo.
2012) (“[A] court looks at the marketplace to determine if a ‘substantial number of present or
prospective customers understand the [mark,] when used in connection with a business, to refer to
a particular person or business enterprise.’” (citation omitted)). Accordingly, this factor weighs
weakly in favor of Bountiful Baby.
Bountiful Baby has provided evidence that consumers were confused by other counterfeit
dolls that carry different names. See, e.g., ECF No. 3-1 ¶ 9 (complaining of confusion regarding
“Saskia” on reborndollshop.com). But Bountiful Baby has provided no evidence specifically
demonstrating that Defendants’ use of the particular marks in question caused consumer confusion.
Nevertheless, evidence of actual confusion is “not necessary to prevail on a trademark
infringement claim.” Sally Beauty, 304 F.3d at 974. Similarly, the degree of care likely to be
exercised by purchasers is neutral—the counterfeit dolls, at about $100 each, are neither
particularly expensive nor particularly cheap products. See id. at 975 (“[I]tems purchased on
impulse are more likely to be confused than expensive items, which are typically chosen
carefully.”).
Considering three strong factors in favor of Bountiful Baby, along with one weak factor
and two neutral factors, the court finds that default judgment on Bountiful Baby’s Lanham Act
claim is appropriate.
And the same conclusion applies to Bountiful Baby’s common law trademark claim (count
V). Indeed, the very “same elements [as federal trademark infringement] must be shown to

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establish a claim for common law trademark infringement.” Equitable Nat’l Life Ins. Co., Inc. v.
AXA Equitable Life Ins. Co., 434 F. Supp. 3d 1227, 1239 n.60 (D. Utah 2020) (citation omitted).
Accordingly, Bountiful Baby has established the elements of common law trademark infringement
as well.
C.

Damages

Bountiful Baby seeks an award of statutory damages for Defendants’ copyright
infringement. 3 Under 17 U.S.C. § 504(c)(1), a “copyright owner may elect . . . to recover, instead
of actual damages and profits, an award of statutory damages for all infringements involved in the
action, with respect to any one work . . . in a sum of not less than $750 or more than $30,000 as
the court considers just.” Indeed, “[s]tatutory damages are particularly appropriate in a case, such
as this one, in which [the] defendant has failed to mount any defense or to participate in discovery,
thereby increasing the difficulty of ascertaining plaintiff’s actual damages.” Jackson v. Sturkie,
255 F. Supp. 2d 1096, 1101 (N.D. Cal. 2003).
i.

Number of “Works”

The Copyright Act allows only one award of statutory damages against each defendant for
each “work” infringed. 17 U.S.C. § 504(c)(1). Accordingly, statutory damages for copyright
infringement are calculated according to the number of works infringed, not the number of times
a defendant infringed on a particular work. See Walt Disney Co. v. Powell, 897 F.2d 565, 569 (D.C.
Cir. 1990) (“A single infringer of a single work is liable for a single amount . . . no matter how
many acts of infringement are involved in the action and regardless of whether the acts were
separate, isolated or occurred in a related series.” (citation omitted)). Therefore, the court must

3

Bountiful Baby does not seek an award of damages for Defendants’ trademark infringement
(counts IV-V).
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determine the number of “works” at issue. Bountiful Baby easily establishes two “works.” First,
count II establishes that each Defendant infringed one copyrighted work, “Darren.” And, second,
count III establishes that each Defendant infringed an additional copyrighted work, “Skya.” But
count I presents a trickier scenario—three separate photographs, all covered by a single copyright.
Accordingly, the question for the court is whether these three photographs qualify as three separate
“works” for purposes of calculating statutory damages.
The Copyright Act states that “all the parts of a compilation . . . constitute one work.” Id.
It defines a “compilation” as “a work formed by the collection and assembling of preexisting
materials or of data that are selected, coordinated, or arranged in such a way that the resulting work
as a whole constitutes an original work of authorship.” 17 U.S.C. § 101. Appellate courts are split
on how to define “one work” and a “compilation.” Some circuits hold that distinct works exist
where each work is able to “live [its] own copyright life.” Walt Disney, 897 F.2d at 569 (citation
omitted). In other words, those courts find independent “works” where “each expression . . . has
an independent economic value and is, in itself, viable.” Gamma Audio & Video, Inc. v. Ean-Chea,
11 F.3d 1106, 1116-17 (1st Cir. 1993). On the other hand, some circuits hew closely to the text of
§ 501(c)(1) to find that “all parts of a compilation must be treated as one work for the purpose of
calculating statutory damages” and there is “no exception for a part of a compilation that has
independent economic value.” Bryant v. Media Right Prods., Inc., 603 F.3d 135, 142 (2d Cir.
2010).
But the court need not wade into this debate. Under either test, the photographs in count I
constitute three separate works. Under the independent economic value test, each photograph has
independent economic value because it represents an independent artistic effort that captures a
unique marketing image. Under the more restrictive test, the three photographs cannot be

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considered a “compilation.” In Bryant, the Second Circuit directed the inquiry to the copyright
holder’s conduct in issuing the works. Id.; see also EMI Christian Music Grp., Inc. v. MP3tunes,
LLC, 844 F.3d 79, 101 (2d Cir. 2016) (“In other words, our focus is on whether the plaintiff—the
copyright holder—issued its works separately, or together as a unit.” (alteration and citation
omitted)). In other words, because the copyright holders in Bryant issued their works as an
album—i.e., a compilation—the court found that the songs contained in the album constituted one
single “work.” In contrast, in a different case the Second Circuit awarded separate statutory
damages awards for songs that the plaintiffs issued as singles, even though those songs were
available on an album. EMI Christian Music, 844 F.3d at 101. Here, there is no evidence that
Bountiful Baby issued a compilation, or “album,” of photographs. In other words, the photographs
have not been arranged “in such a way that the resulting work as a whole constitutes an original
work of authorship.” 17 U.S.C. § 101; see also Energy Intel. Grp., Inc. v. CHS McPherson
Refinery, Inc., 300 F. Supp. 3d 1356, 1370-71 (D. Kan. 2018) (“Authorship of work involves
creation, not mere accumulation.” (citation omitted)). Rather, while all of the photographs pertain
to the same baby, each photograph represents a separate issuance from the photographer, more
closely resembling the singles in EMI Christian than the album in Bryant.
And the fact that Bountiful Baby registered the relevant photos in a group registration does
not alter the court’s conclusion. See ECF No. 1, at Ex. NN. Group registration is not equivalent to
compilation formation. Costar Grp. Inc. v. Loopnet, Inc., 164 F. Supp. 2d 688, 710 (D. Md. 2001)
(“[M]ultiple copyrights may be registered on the same form and, so, the registration is not
dispositive.”). And the U.S. Copyright Office has acknowledged that “[c]opyright owners who use
a group registration option may be entitled to claim a separate award of statutory damages for each
work . . . that is covered by the registration.” Energy Intel., 300 F. Supp. 3d at 1370-71 (quoting

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U.S. Copyright Office, Compendium of U.S. Copyright Office Practices, § 1104.5 (3d ed. rev.
2017)). Accordingly, under either definition, the three photographs constitute three separate
“works” for purposes of statutory damages.
In sum, Bountiful Baby has established five separate “works” for purposes of statutory
damages.
ii.

Amount of Statutory Damages

The second issue for the court is the amount of statutory damages. Ordinarily, statutory
damages may be awarded “in a sum of not less than $750 or more than $30,000.” 17 U.S.C.
§ 504(c)(1). But if a copyright owner proves that the infringement “was committed willfully,” the
court may award statutory damages in an amount not to exceed $150,000. See 17 U.S.C.
§ 504(c)(2). “In order to show that infringement was willful, the plaintiff must prove that the
defendant either knew that his or her conduct constituted copyright infringement or recklessly
disregarded the possibility that his or her conduct constituted copyright infringement.” Nunes v.
Rushton, No. 2:14-cv-627, 2018 WL 2214593, at *1 (D. Utah May 14, 2018) (collecting circuit
cases and a treatise).
Defendants’ behavior indicates that they willfully infringed Bountiful Baby’s rights. First,
Defendants used exact copies of the photographs and sculptures at issues—Defendants did not
mistakenly copy Bountiful Baby’s intellectual property. Rather, the evidence demonstrates that
they misappropriated the images and sculpture design directly from Bountiful Baby’s website with
the intent to deceive customers into purchasing their products. Moreover, Defendants acted
brazenly. When one counterfeit website was disabled, they opened a new counterfeit website to
continue their infringing conduct. Accordingly, the court may award statutory damages up to
$150,000 per work.

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The Tenth Circuit has not enumerated which factors the court should consider in crafting a
statutory damages amount. However, many other courts have addressed the topic. And “the most
common list of factors recited” include “the relationship between the statutory damages sought
and any actual damages or profits, whether the infringement was willful or innocent, the need for
deterrence, defendant’s past infringement record, defendant’s cooperation after the matter was
brought to its attention, and the scope of the infringement.” 6 PATRY ON COPYRIGHT § 22:174.
The first factor—the relationship between the statutory damages sought and any actual
profit or damages—is inconclusive. Bountiful Baby recognizes that the Defendants’ total profits
from their counterfeit product listing are unknown. ECF No. 53 at 31. Bountiful Baby
conservatively estimates that it loses up to $10,000 per day to counterfeiters. ECF No. 49 ¶ 7. And
Bountiful Baby further points out that Defendants have wrongfully profited from the millions of
dollars and significant time that Bountiful Baby has invested in perfecting its photography and
three-dimensional infant modeling. But Bountiful Baby does not cite specific dollar amounts—
either of Defendants’ profits or Plaintiff’s losses—for the court to compare to the statutory
damages sought. However, that is neither surprising nor dispositive since much of the data is solely
within the absent Defendants’ control.
Moreover, the remaining factors weigh heavily in favor of a substantial award of statutory
damages. As discussed above, the infringement was willful. Defendants have a record of moving
to new websites to market their counterfeit products whenever their websites are disabled. And a
strong deterrent is necessary. The defendants in a recent case involving Chinese defendants selling
counterfeit reborn dolls—indeed, perhaps the same entities behind the websites at issue in this

15

case 4—paid $140,000 to resolve the litigation, but that amount had no deterrent effect on the
present Defendants. While it is uncertain whether the defendants in the first reborn doll matter are
related to the present Defendants, the present Defendants plainly used an identical playbook and
the settlement amount in the previous case served as no deterrent here. Moreover, Defendants have
displayed absolutely no interest in cooperation in the matter. Indeed, they have not even made an
appearance before this court. Finally, the scope of the infringement is substantial. Bountiful Baby
has submitted evidence of hundreds of counterfeit product listings across five different websites.
ECF No. 1 ¶¶ 33-45, Exs. T-CC.
Bountiful Baby invested years and millions of dollars in building its unique business.
Defendants deliberately used Bountiful Baby’s hard-earned intellectual property to make a quick
profit on the internet. And Defendants did so repeatedly and without reservation. Accordingly, the
court finds that an award of $150,000 in statutory damages per work is warranted in this case to
deter future infringing conduct. Because each website Defendant infringed five of Bountiful
Baby’s works, Bountiful Baby is entitled to $750,000 in statutory damages from each website
Defendant. 5

4

There is some evidence to suggest that the present Defendants are connected to the defendants in
prior litigation regarding reborn dolls in front of this court. Specifically, Bountiful Baby claims
that Reborn Box, Reborn Baby Mart, Reborn Baby Stores, and Love Reborn Dolls all infringe on
Bountiful Baby’s work in the exact same manner—using similar product names and product
details—as the defendants in the prior litigation. ECF No. 1 ¶ 26.
5

Because Nine9Light Co. received payments on behalf of RebornBox.com,
RebornBabyMart.com, RebornBabyStores.com, and LoveRebornDolls.com, Nine9Light Co. is
jointly and severally liable for the $750,000 owed by each of those Defendants. Similarly, because
LTD Information Co., Ltd. received payments on behalf of RebornDollsShop.com, LTD
Information Co., Ltd. is jointly and severally liable for the $750,000 owed by
RebornDollsShop.com.
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II.

PERMANENT INJUNCTION
Bountiful Baby also seeks a permanent injunction preventing Defendants from any future

infringement. Section 502 of the Copyright Act provides that the court may “grant temporary and
final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a
copyright.” 17 U.S.C. § 502(a). To obtain a permanent injunction, the plaintiff must demonstrate:
(1) actual success on the merits; (2) irreparable harm unless the injunction is issued;
(3) the threatened injury outweighs the harm that the injunction may cause the
opposing party; and (4) the injunction, if issued, will not adversely affect the public
interest.
Sw. Stainless, LP v. Sappington, 582 F.3d 1176, 1191 (10th Cir. 2009) (citation omitted). “A
copyright holder that establishes past infringement and a substantial likelihood of infringement in
the future is normally entitled to a permanent injunction against the infringer pursuant to § 502(a).”
Harolds Stores, Inc. v. Dillard Dep’t Stores, Inc., 82 F.3d 1533, 1555 (10th Cir. 1996).
Here, Bountiful Baby has demonstrated Defendants’ liability, thus establishing actual
success on the merits. As to the second prong, “irreparable harm findings are based on such factors
as the difficulty in calculating the damages, the loss of a unique product, and existence of intangible
harms such as loss of goodwill or competitive market position.” Dominion Video Satellite, Inc. v.
Echostar Satellite Corp., 356 F.3d 1256, 1264 (10th Cir. 2004). Because Defendants control the
information about the exact quantity of sales of counterfeited products, it is difficult to calculate
the exact number of sales Bountiful Baby has lost. Sw. Stainless, 582 F.3d at 1191 (“A district court
may find irreparable harm based upon evidence suggesting that it is impossible to precisely
calculate the amount of damage plaintiff will suffer.” (citation omitted)). In addition, it is
impossible to calculate the value of the loss of customers and goodwill. See id. at 1192 (affirming
a finding of irreparable harm “[b]ecause it is so difficult to prove the value of goodwill”).
Moreover, Defendants have demonstrated a pattern of creating new websites to facilitate
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infringement, thus raising a likelihood of continued infringement that monetary damages cannot
remedy. Therefore, Bountiful Baby has established irreparable harm absent an injunction.
As to the third prong, there is no hardship to Defendants because a permanent injunction
will merely prevent Defendants from engaging in further unlawful activity. 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 illegal. There can be no cognizable harm to the Defendants by the
issuance of an order requiring them not to break the law.”). Similarly, entering a permanent
injunction will not disserve the public interest. To the contrary, it will protect copyrighted material
and encourage compliance with the Copyright Act. See Autoskill Inc. v. Nat’l Educ. Support Sys.,
Inc., 994 F.2d 1476, 1499 (10th Cir. 1993) (“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.”), overruled on other grounds by TW Telecom Holdings Inc. v. Carolina
Internet Ltd., 661 F.3d 495 (10th Cir. 2011).
Accordingly, the court GRANTS a permanent injunction. The court shall enter an
accompanying permanent injunction on the docket.
III.

ATTORNEYS’ FEES AND COSTS
Bountiful Baby seeks to recover $69,965.50 in attorneys’ fees and $1,785.45 in costs

associated with the present litigation. In support of this request, Bountiful Baby’s counsel
submitted a declaration with a spreadsheet of fees and costs attached. The spreadsheet outlines the
billing rates for individuals who worked on this case, as well as brief descriptions of the work
performed.
The Copyright Act expressly permits the court to award the prevailing party its “full costs,”
including “reasonable attorney’s fees.” 17 U.S.C. § 505. “Under the Copyright Act, an award of

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fees is appropriate to promote the goal of deterrence where the evidence supports a finding of
willfulness.” Tu v. TAD Sys. Tech. Inc., No. 08-cv-3822, 2009 WL 2905780, at *8 (E.D.N.Y. Sept.
10, 2009). As established above, the court finds that Defendants acted willfully in infringing
Bountiful Baby’s copyright. Accordingly, to further the goal of deterrence, the court holds that
Bountiful Baby is entitled to $71,750.95 in reasonable attorneys’ fees and costs under the
Copyright Act. 6
CONCLUSION AND ORDER
The court orders as follows:
(1) The court enters default judgment against defendants Reborn Baby Mart;
Reborn Box; Reborn Baby Stores; Love Reborn Dolls; Reborn Dolls Shop;
Nine9Light Company; and Ltd. Information Technology Co., Ltd and awards
damages in the following amount: $750,000 in statutory damages against each
website Defendant. The court will enter a separate judgment on the docket.
(2) The court grants Bountiful Baby’s motion for a permanent injunction. The court
shall file the accompanying permanent injunction on the docket.
(3) The court grants Bountiful Baby’s motion for attorneys’ fees and costs in the
amount of $71,750.95.

6

Because the court finds the fees and costs reasonable under the Copyright Act, it need not address
an award of fees and costs under the Lanham Act.
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DATED August 3, 2022.

BY THE COURT

______________________________
Jill N. Parrish
United States District Court Judge

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