Lindsey Adelman Studio LLC v. Zora Lighting Co., Ltd.

Background

Lindsey Adelman Studio LLC and Lindsey Adelman sued ZORA Lighting Co., Ltd., Liang Tang, and John Does Nos. 1–5. The complaint asserted claims involving trademark infringement, false designation of origin under section 43(a) of the Lanham Act, trade dress infringement and dilution, common-law unfair competition, and New York Civil Rights Law sections 50 and 51.

The plaintiffs alleged that the defendants manufactured, marketed, offered for sale, and sold counterfeit or substantially similar lighting products bearing copies of the plaintiffs’ registered and unregistered marks. The products were promoted through www.zoralighting.com, www.topsonlighting.com, search engines, and social-media websites. The court found that the defendants were not authorized to sell the plaintiffs’ authentic products and had used the plaintiffs’ marks and product images without consent.

The court also found that the defendants had listed Pennsylvania and California addresses on their websites while the evidence supported the conclusion that they were located in China. It found common ownership, control, or purpose between the two websites based on changes made to www.topsonlighting.com after service of the temporary restraining order and proceedings in the case.

Service, Default, and Earlier Injunctions

The court initially issued a temporary restraining order protecting the plaintiffs’ marks and requiring a $10,000 bond. The order authorized alternative electronic service. The plaintiffs served the defendants electronically with the court papers, summonses, complaint, and related motions, and filed notices confirming compliance.

The defendants did not respond to the temporary restraining order, did not appear at the scheduled hearing, and later failed to plead or otherwise defend the action. The court entered default certificates against ZORA Lighting Co., Ltd. and Liang Tang. The plaintiffs then moved for final default judgment and a permanent injunction.

Court’s Findings and Legal Conclusions

The court found that the plaintiffs owned federally registered marks for “LINDSEY ADELMAN STUDIO” and “BRANCHING BUBBLE,” as well as unregistered marks including “LINDSEY ADELMAN” and names associated with other lighting collections. It found that these marks were valid, protectable, and entitled to protection.

Because the defendants had defaulted, the court accepted the well-pleaded factual allegations as true, except allegations concerning the amount of damages. Based on those allegations and the plaintiffs’ submissions, the court concluded that the plaintiffs were entitled to relief. It found that the defendants’ use of counterfeit and infringing marks caused or threatened irreparable harm, created a likelihood of consumer confusion, and threatened damage to the goodwill associated with the plaintiffs’ marks.

The court’s final liability determination stated that the defendants were liable for federal trademark counterfeiting and infringement under 15 U.S.C. §§ 1114 and 1117, unfair competition, and false designation of origin under 15 U.S.C. § 1125(a). The order also noted that the plaintiffs had asserted additional claims for trade dress infringement, trademark and trade dress dilution, common-law unfair competition, and violations of New York Civil Rights Law sections 50 and 51, but the quoted liability determination did not separately state an outcome for each of those claims.

Judgment and Injunction

The court granted the plaintiffs’ motion and entered final default judgment and a permanent injunction. The order states that the plaintiffs’ motion for a preliminary injunction was granted as well.

The injunction prohibits ZORA Lighting, Liang Tang, and specified persons acting with them who have notice of the order from:

- using the Lindsey Adelman marks or similar marks, including in connection with lighting products, websites, metadata, advertising, and social media; - making, offering for sale, or selling lighting fixtures using names or marks confusingly similar to the Lindsey Adelman marks; - using marks likely to confuse consumers about affiliation, sponsorship, licensing, or approval; - passing off products that do not originate with the plaintiffs as products or designs that do; and - using listed names or similar variations, including “Lindsey Adelman,” “Lindsey Adelman Studio,” “Branching Bubble,” “Agnes,” “Branching Disc,” “Burst,” “Cherry Bomb,” “Kingdom Clamp,” “Knotty Bubbles,” and “Lindsey.”

The order permits the plaintiffs to request supplemental relief concerning newly identified websites or domain names used by a defendant to market or sell infringing or counterfeit goods. It directs applicable domain-name registries to transfer the identified infringing domain names, including www.zoralighting.com and www.topsonlighting.com, to the plaintiffs’ ownership and control unless the plaintiffs request that the domains instead be held or released.

Third-party vendors with notice of the order are permanently barred from providing services to the defendants in connection with the prohibited activities. The order identifies possible vendors including domain registries and registrars, online selling platforms, email and social-media providers, search engines, advertising providers, shippers, banks, payment processors, and credit-card associations.

The court released the $10,000 preliminary-injunction bond to the plaintiffs, retained jurisdiction to interpret and enforce the permanent injunction, directed the Clerk to close the case, and terminated all pending motions.