Mattel, Inc. v. 2012SHININGROOM2012

Background

Mattel sued individuals and entities operating eBay merchant storefronts, alleging trademark counterfeiting, trademark infringement, false designation of origin, passing off, unfair competition, copyright infringement, and related state-law claims. The opinion states that the defendants were located in China and operated through eBay accounts and storefronts. Ten defendants, collectively called the Wang Defendants, appeared. They were doing-business-as storefronts operated by four individuals: Ya Qin, Huang Dongwu, Xioling Gao, and Luo Bin.

The parties waived a jury trial and proceeded to a bench trial. No witnesses testified. Mattel relied on stipulated facts, an infringement chart, trademark and copyright registrations, copyright deposit materials, images of the storefront listings, and discovery responses. The Wang Defendants did not submit pretrial materials or defenses and did not provide records concerning their profits or costs.

Trademark Counterfeiting and Infringement

The court found that four storefronts—herpop, keepupop, ovepop2009, and ccs_online999—used Mattel’s registered Barbie Mark No. 2,639,971 on products sold through eBay. The products were not made or authorized by Mattel or its licensees. Because the products used the exact registered mark, the court found that they were counterfeit and inherently likely to confuse consumers.

The court attributed the four storefronts to Huang Dongwu, Xioling Gao, and Luo Bin. It found that the trademark infringement and counterfeiting were willful because the defendants sold products bearing the exact mark without authorization, and the Barbie brand was undisputedly famous.

Copyright Infringement

The court found that seven storefronts—lucky992016, popular888, ilante, herpop, keepupop, ovepop2009, and ccs_online999—infringed Mattel’s registered Barbie works. The products incorporated substantially similar or identical elements of those works without authorization. The storefronts were operated by Ya Qin, Huang Dongwu, Xioling Gao, and Luo Bin.

The court also found the copyright infringement willful, at least because the defendants recklessly disregarded Mattel’s rights in works associated with the world-famous Barbie brand.

False Designation of Origin, Passing Off, and Unfair Competition

Mattel did not include this claim in its proposed findings or post-trial briefing, but its counsel stated that Mattel sought only injunctive relief and was giving up damages on the claim. The court concluded that, because Mattel established trademark infringement by herpop, keepupop, ovepop2009, and ccs_online999, it also established that those defendants violated the federal law addressing false designation of origin.

Damages

Mattel elected statutory damages instead of actual damages. The court considered the defendants’ failure to provide profit or sales records, the value and fame of the Barbie mark and works, the willfulness of the conduct, and the need for deterrence. It found that $200,000 from each individual storefront owner was just. The court did not decide whether damages under the trademark and copyright laws would otherwise overlap because the trademark law alone supported the requested award.

The four individual owners—Ya Qin, Huang Dongwu, Xioling Gao, and Luo Bin—were each made liable for $200,000. Mattel was also awarded post-judgment interest under the applicable statute.

Attorneys’ Fees

The court found that the case was exceptional because of the Wang Defendants’ willful counterfeiting and infringement and their conduct in the litigation. It ruled that attorneys’ fees and costs were warranted. Mattel’s attorneys were directed to file an application with billing records within fourteen days of the findings and conclusions.

Permanent Injunction

The court granted Mattel a permanent injunction. It found that the defendants’ sales harmed Mattel’s reputation and goodwill, that money damages were insufficient because they could only approximate the harm, that the balance of hardships favored Mattel, and that the public interest supported preventing consumer deception and protecting copyrighted works. The injunction incorporated the relief previously imposed in the December 20, 2018 preliminary injunction.

Asset Restraint and Transfer

The court granted Mattel’s request to continue the existing restraint on the defendants’ assets and to transfer restrained assets toward payment of the judgment. The court found that security was justified because the defendants had not produced records and had represented that their purchases were made through in-person cash transactions. Mattel could submit a proposed transfer order seven days after the attorneys’ fee determination, limited to the damages and fees imposed on each owner.

Ruling

Judge Castel found that the Wang Defendants counterfeited one Barbie trademark and willfully infringed that trademark and several Barbie works. He permanently enjoined future infringement, imposed $200,000 in damages against each of the four individual storefront owners, awarded attorneys’ fees subject to a later application, continued the asset restraint, and authorized transfer of restrained assets toward the amounts owed.