The Pinkfong Company Inc. v. Alibaba.Com Singapore E-Commerce PTE. LTD.

Background

The Pinkfong Company, Inc. sued twenty-three online merchants and the Alibaba Defendants. Pinkfong alleged that the merchants sold products infringing its Baby Shark trademarks and copyright on platforms including Alibaba and AliExpress. Pinkfong also alleged that the Alibaba Defendants were liable because they allowed the merchants to continue selling the products and helped promote or facilitate the alleged infringement.

Pinkfong asserted six claims against the Alibaba Defendants: direct trademark infringement; false designation of origin, passing off, and unfair competition under the federal Lanham Act and New York law; contributory trademark infringement; contributory copyright infringement; and vicarious copyright infringement. Pinkfong had obtained a temporary restraining order and a preliminary injunction before the Alibaba Defendants moved to dismiss.

Legal standard

At the motion-to-dismiss stage, the court accepts well-supported factual allegations as true and asks whether they plausibly state a legal claim. The complaint must give each defendant enough information to understand what conduct is being challenged and the legal basis for the claim. The court does not decide the ultimate truth of the allegations at this stage.

Direct trademark infringement

The court rejected the argument that Pinkfong improperly grouped the defendants together. Although one claim was titled as applying to all defendants, Pinkfong separately alleged conduct by the Alibaba Defendants, including selling and purchasing keywords containing Baby Shark trademarks, sending promotional emails, and marketing allegedly counterfeit products. The court held that these allegations gave the Alibaba Defendants fair notice and declined to dismiss the claim on that basis.

The court also held that Pinkfong adequately alleged direct trademark infringement. Pinkfong alleged ownership of valid Baby Shark trademarks and alleged that the Alibaba Defendants promoted allegedly counterfeit products using those trademarks without permission. The complaint included screenshots of promotional emails and targeted advertisements. The court concluded that use of the exact trademark and the alleged visual similarity between some advertised products and Pinkfong’s product plausibly could confuse consumers about the products’ source or affiliation. The court did not decide Pinkfong’s separate allegations concerning the purchase and sale of trademarked keywords because the email and targeted-marketing allegations were sufficient at this stage.

False designation and unfair competition

Because the court found the direct trademark infringement allegations sufficient, it also declined to dismiss Pinkfong’s false-designation and Lanham Act unfair-competition claims. For New York common-law unfair competition, the court explained that Pinkfong additionally had to plausibly allege bad faith. Pinkfong alleged that the Alibaba Defendants knew about its Baby Shark trademarks, including through earlier lawsuits and takedown requests, but continued using the marks in promotional emails and other marketing. The court held that these allegations plausibly supported an inference that the defendants acted in bad faith and declined to dismiss the New York claim.

Contributory and vicarious infringement

The court held that Pinkfong plausibly stated claims for contributory trademark infringement, contributory copyright infringement, and vicarious copyright infringement. Pinkfong alleged that the Alibaba Defendants knew about specific alleged infringement by merchants, received notice through earlier lawsuits and takedown requests, continued providing and controlling the platforms, and failed to stop the alleged conduct.

Pinkfong also alleged that the Alibaba Defendants assisted and promoted the alleged infringement by giving merchants enhanced supplier statuses, purchasing and selling trademarked keywords, and promoting allegedly counterfeit products in emails. Finally, Pinkfong alleged that the Alibaba Defendants financially benefited by attracting and retaining customers, selling upgraded services, and earning transaction commissions. Taken together, the court found these allegations sufficient to support the three claims at the pleading stage.

Disposition

The court denied the Alibaba Defendants’ motion to dismiss. The Clerk was directed to terminate the motion docket entry, ECF No. 37. The opinion does not make a final determination of infringement, consumer confusion, or liability.