Roku Inc. v. Individuals
Roku Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A hereto
- Lewis Liman
- 1:22-cv-00850
- U.S. District Court · Southern District of New York
- 13
In Roku v. Schedule A defendants, Judge Liman denied Roku’s preliminary injunction motion because it had not shown likely trademark infringement.
Roku Inc.’s request for temporary injunctive relief was denied. The denial applied to YOSUN and the 105 other defendants considered by the court; as to the 105 defendants, Roku could renew the request with additional evidence and argument. The sealing motion was denied as moot, and the identified documents were ordered filed publicly.
What happened
Roku Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A hereto involved Roku’s claims that 125 online merchants sold counterfeit products using Roku trademarks. Roku asked the court to temporarily stop the alleged infringement while the case continued.
The court examined the listing for the one defendant that opposed the motion, YOSUN. It found that the listing used “Roku” to identify compatible products and used a “Roku Channel” button alongside buttons for other streaming services, but Roku had not shown that these uses were likely to confuse consumers about who made or sponsored the remote. For the other 105 remaining defendants, Roku provided screenshots but did not give the defendant-specific evidence and arguments needed to show likely success.
The court denied the preliminary injunction, while allowing Roku to renew its request against the 105 remaining defendants with additional evidence and argument. It also denied as moot Roku’s motion to seal certain filings and ordered those documents placed on the public docket. Judge Lewis J. Liman issued the order.
The detailed version
- Roku Inc. v. Individuals · No. 1:22-cv-00850
- Lewis Liman
- May 20, 2022
Background
Roku Inc. asserted claims for trademark infringement and counterfeiting under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. § 1125(a), and New York common-law unfair competition. Roku alleged that defendants sold counterfeit Roku-related products on Amazon and Wish and infringed some or all of fourteen Roku trademarks.
Roku filed the complaint and sought emergency relief, including a preliminary injunction. The court entered a temporary restraining order on February 1, 2022. After some defendants opposed the requested injunction, several groups settled with Roku or were voluntarily dismissed. The court considered the preliminary-injunction application as to YOSUN, the only remaining defendant that appeared and opposed the application, and as to 105 other defendants that had not appeared.
Legal standard
A preliminary injunction is an extraordinary temporary remedy. The moving party must show either a likelihood of success on the merits or sufficiently serious legal questions for litigation, a likelihood of irreparable harm without the injunction, a balance of hardships favoring the plaintiff, and that the public interest would not be harmed. The court stated that these requirements apply even when defendants do not appear or do not oppose the motion.
YOSUN
YOSUN’s Amazon listing concerned a remote labeled “YOSUN RC280 Universal Remote for TCL-Roku-TV-Remote.” The listing identified YOSUN as the brand and used the word “Roku” several times to describe compatibility with Roku products. The remote also had a button labeled “ROKU Channel,” using Roku’s stylized lettering, alongside buttons for Netflix, Hulu, and Disney+.
The court found that the record did not show likely consumer confusion as to Roku’s standard-word marks. The references to “Roku” described the genuine Roku products with which the remote was or was not compatible, while the listing identified the remote as a YOSUN product.
The court also found no likely confusion from the stylized Roku mark on the “ROKU Channel” shortcut button. Because the button appeared alongside comparable shortcut buttons for other streaming services, the court understood it as identifying an application that the remote could access, not as indicating that Roku made or sponsored the remote. The court therefore found that Roku had not carried its burden of showing a likelihood of success on its infringement claims against YOSUN. It did not reach YOSUN’s fair-use or nominative-fair-use arguments because Roku had not first shown likely confusion.
The other 105 defendants
The evidence concerning the other defendants consisted only of screenshots of their remote-control listings. The court found that the listings varied significantly. Some appeared to present potential infringement concerns, while others did not appear to use Roku’s protected designs or stylized lettering and used “Roku” mainly to describe compatibility.
The court emphasized that likely consumer confusion required a particularized, fact-specific analysis of each listing. Roku did not explain which trademark features each defendant allegedly used, or why each defendant’s specific use was likely to infringe. As a result, Roku did not carry its burden of showing likely success against any of those 105 defendants on the record presented.
Disposition
The court denied the motion for a preliminary injunction. As to the 105 remaining defendants, the denial was without prejudice to renewal with additional evidence and argument. The court also denied as moot Roku’s motion to seal Schedule A to the complaint and Exhibit 2 to the declaration of Karina Levitian, directed Roku to file those documents publicly by May 27, 2022, and directed the Clerk of Court to close Docket No. 9. The court’s order was signed by Judge Lewis J. Liman.
Read the full 13-page opinion on CourtListener, the free public archive maintained by the Free Law Project.