MATTEL, INC. v. 1622758984

Background

Mattel alleged that 110 defendants used merchant accounts and storefronts on the Wish.com marketplace to advertise and sell products that copied Mattel’s UNO trademarks, game packaging, and copyrighted works. Mattel alleged that the defendants offered the products to consumers in the United States, including New York. The defendants were served but did not appear or respond to the complaint.

Mattel moved for default judgment. Under the court’s explanation of the default-judgment process, a defendant’s failure to defend admits well-pleaded factual allegations, but the court must still determine whether those allegations establish legal liability. The court also considered whether it had personal jurisdiction over the defendants and whether joining them in one case was proper. Relying on its reasoning in a prior related proceeding, the court answered both questions affirmatively.

Liability

The court granted default judgment on Mattel’s first three claims under the federal Lanham Act: trademark counterfeiting, trademark infringement, and false designation of origin, passing off, and unfair competition. Mattel alleged that it owned registered UNO trademarks and that the defendants’ products and packaging were virtually identical to Mattel’s products and used copies or close imitations of Mattel’s marks. The court concluded that these allegations established both trademark protection and a likelihood of consumer confusion.

The court also granted default judgment on Mattel’s copyright-infringement claim. Mattel alleged ownership of registered copyrights covering UNO game packaging. The court found that the alleged copies were so strikingly similar to Mattel’s works that the allegations established copying and substantial similarity.

The court did not grant default judgment on Mattel’s New York General Business Law claims involving deceptive practices and false advertising. It concluded that the allegations did not show the specific and substantial injury to the public interest required in addition to ordinary trademark infringement. The court also concluded that Mattel’s unjust-enrichment claim was unavailable because it duplicated conventional trademark and copyright claims. The court granted default judgment on Mattel’s common-law unfair-competition claim, finding that the counterfeit-mark allegations established bad faith, misappropriation, and likely confusion.

Remedies

The court issued a permanent injunction prohibiting further violations of Mattel’s trademark and copyright rights. It found irreparable harm, inadequate legal remedies, a favorable balance of hardships, and a public interest in preventing consumer deception.

The court approved statutory damages under the Lanham Act based on willful counterfeiting. It awarded $25,000 from each defaulting defendant in the first tier with fewer than 10 documented sales; $50,000 from each remaining defendant in the first tier; $75,000 from each defendant in the second and third tiers; $125,000 from each defendant in the fourth, fifth, and sixth tiers; and $250,000 from each defendant in the seventh and eighth tiers. Post-judgment interest was awarded under federal law.

The court granted Mattel relief under New York Civil Practice Law and Rules section 5222, barring the defaulting defendants from selling, assigning, transferring, or interfering with property in which they had an interest, subject to the statutory exceptions. Judge Nathan also dissolved the automatic 30-day stay on enforcement and allowed immediate enforcement of the judgment.

The court declined to enter an asset-transfer order. It denied, without prejudice, Mattel’s alternative request under New York Civil Practice Law and Rules section 5225 because Mattel had not shown proper notice of that request and had not identified specific property for turnover. The Clerk was directed to close the case, and the court stated that a revised judgment would be entered separately.

Classification

This is a mixed ruling because the court decided the merits of several trademark, copyright, and common-law unfair-competition claims while rejecting other claims as legally insufficient and separately ruling on post-judgment remedies.