Mattel, Inc. v. AnimeFun Store

Background

Mattel sued individuals and businesses operating user accounts or merchant storefronts on Alibaba, AliExpress, and DHgate. The opinion states that these defendants were located in China and conducted business in the United States and other countries. Mattel alleged that they offered or sold counterfeit UNO products using Mattel’s UNO trademarks and copyrighted artwork. The defendants did not answer, otherwise respond to the complaint, or appear.

The clerk entered defaults against the defendants. Mattel then moved for default judgment and injunctive relief. In a default judgment proceeding, well-pleaded factual allegations are generally accepted as true, but the court must still determine whether those allegations establish legal liability and must separately determine damages.

Claims

The court granted in part and denied in part Mattel’s motion for default judgment. It granted judgment on these claims:

- Trademark counterfeiting and infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a)–(b). The court found that Mattel had valid registered marks, that the defendants used the UNO marks without permission in connection with sales or advertising, and that the counterfeit products were likely to cause confusion. - False designation of origin, passing off, and unfair competition under 15 U.S.C. § 1125(a). Because Mattel established trademark counterfeiting and infringement, the court found judgment warranted on these related claims. - Copyright infringement under 17 U.S.C. § 501(a). The court found that Mattel owned valid copyrights in the UNO packaging artwork and that the defendants’ products involved copying and substantial similarity. - Common-law unfair competition under New York law. The court relied on the finding of counterfeit sales and the resulting presumption of bad faith.

The court denied judgment on Mattel’s claims under New York General Business Law §§ 349 and 350 because Mattel had not shown a specific public injury beyond ordinary trademark infringement. It also denied judgment on unjust enrichment because that claim duplicated Mattel’s conventional trademark and copyright claims and did not present the unusual circumstances required for that equitable remedy.

Remedies

The court ordered the defendants to stop the infringing conduct described in the earlier preliminary-injunction order. In the remedies discussion, the court characterized this relief as a permanent injunction and found that Mattel faced irreparable harm, that legal damages alone were inadequate, that the balance of hardships favored Mattel, and that the injunction served the public interest.

The court awarded Mattel $50,000 in statutory damages against each of the 40 defaulting defendants, for a total of $2,000,000, plus post-judgment interest. It also granted Mattel’s request for a post-judgment asset restraint and dissolved the automatic 30-day stay so the judgment could be enforced immediately.

The court denied Mattel’s request for an asset-transfer order. Mattel had not shown that it provided the required notice, had not identified particular property, and had not shown that the defendants possessed or controlled specific property in which they had an interest.

Disposition

The conclusion states that Mattel’s motion for default judgment was “GRANTED in part and DENIED in part.” It granted the motion on the federal trademark, false-designation, copyright, and state common-law unfair-competition claims, and denied it on the New York §§ 349 and 350 claims and unjust enrichment. It granted the request for statutory damages and for a preliminary injunction, declined to enter an asset-transfer order, and directed Mattel to submit a revised proposed judgment for approval.