Mattel, Inc. v. AnimeFun Store

Background

Mattel sued AnimeFun Store, Bingo 1993, Bingoes Hot Toy Factory, Miliy Store, Q374428329, and other online merchants. The Wang Defendants operated storefronts on AliExpress or DHgate and sold products presented as UNO products. Mattel owned federal trademark registrations for UNO and had not authorized the Wang Defendants to use the marks or sell UNO products.

Mattel’s investigation found that the defendants’ products used virtually identical UNO marks and had signs of counterfeiting, including improper or missing packaging, incorrect labeling, and wrong coloring. The defendants’ operators said they could not distinguish the products they bought from Chinese suppliers from legitimate UNO products. Mattel also presented evidence that the suppliers listed on the defendants’ invoices were not authorized by Mattel.

Mattel moved for summary judgment on liability for federal trademark counterfeiting and infringement, false designation of origin, passing off, unfair competition under the federal Lanham Act, and several New York statutory and common-law claims. Mattel did not seek summary judgment on damages or liability for its copyright claim.

Summary-Judgment Record and Discovery Request

The court treated some facts in Mattel’s statement of undisputed facts as admitted because the defendants’ responses lacked citations to admissible evidence. The defendants also argued that they needed additional discovery from their suppliers. The court rejected that request because the defendants did not submit the required affidavit or declaration explaining what facts they sought, why those facts mattered, what efforts they had made, or why those efforts had failed. The court also found that raising the discovery issue for the first time in opposition to summary judgment was improper and that the defendants’ assertions were speculative.

Federal Trademark Claims

The court granted summary judgment to Mattel on its claims under 15 U.S.C. § 1114(1)(a)-(b). Mattel’s trademark registrations provided initial evidence that the UNO marks were valid. The parties did not dispute that the defendants used the marks in connection with offering products for sale and that Mattel had not authorized that use.

The court also found no genuine dispute that the products were counterfeit. The products used marks virtually identical to Mattel’s marks, but inspections showed differences in packaging, labeling, and coloring, and Mattel confirmed that it had not manufactured or sold them. Because counterfeit marks are inherently likely to cause confusion, the court concluded that Mattel had established the elements of its federal trademark claims as a matter of law.

False Designation, Passing Off, and Federal Unfair Competition

The court also granted summary judgment on Mattel’s claims for false designation of origin, passing off, and unfair competition under 15 U.S.C. § 1125(a). It reasoned that the same showing supporting Mattel’s trademark-counterfeiting and infringement claims supported these related federal claims.

New York Statutory Claims

The court denied summary judgment on claims under New York General Business Law §§ 349 and 350. Those statutes address deceptive business practices and false advertising, but trademark-infringement claims under them require evidence of a specific and substantial injury to the public beyond ordinary trademark infringement. The court found that Mattel had not identified record evidence supporting such additional public injury.

New York Common-Law Claims

The court granted summary judgment on Mattel’s New York common-law unfair-competition claim. Under New York law, proving a Lanham Act claim together with bad faith or intent establishes unfair competition, and use of a counterfeit mark creates a presumption of bad faith.

The court denied summary judgment on unjust enrichment. It explained that unjust enrichment is generally available only in unusual circumstances and cannot simply duplicate a conventional tort or contract claim. The court found that Mattel had not shown circumstances warranting that equitable remedy.

Disposition

The court granted in part and denied in part Mattel’s motion for summary judgment. It granted the motion as to the Wang Defendants’ liability for federal trademark counterfeiting and infringement, false designation of origin, passing off and federal unfair competition, and state-law unfair competition. It denied the motion as to New York General Business Law §§ 349 and 350 and common-law unjust enrichment. The Clerk was directed to close the motion, and the parties were directed to report on the remaining claims and how they proposed to proceed.