Mattel v. Store
Mattel, Inc. v. Auuisa Store, Inc. d/b/a www.dreambarbiedoll.com d/b/a www.dreambarbiedolls.com d/b/a www.jinxxmas.com d/b/a www.mattelblackfriday.com
- P. Castel
- 1:22-cv-00561
- U.S. District Court · Southern District of New York
- 6
In Mattel v. Auuisa Store, Judge Castel struck the defendants’ answer, entered default judgment, awarded Mattel $1 million, and ordered a permanent injunction and domain-name transfers.
Mattel obtained default judgment on liability, $1 million in statutory damages, entitlement to a permanent injunction, and transfer of the infringing domain names. The corporate defendants’ answer was struck after they failed to appear through counsel.
What happened
In Mattel, Inc. v. Auuisa Store, Inc., Mattel accused the corporate defendants of counterfeiting and infringing its Barbie-related trademarks and copyrights through online sales and domain names.
The defendants initially appeared through an attorney and filed an answer, but their attorney later withdrew. Although the court warned that the defendants had to retain counsel, no attorney appeared for them at the scheduled hearing, and they did not respond to Mattel’s later motion.
Judge Castel struck the defendants’ answer and granted Mattel’s motion for default judgment. The court awarded $1 million in statutory damages, found Mattel entitled to a permanent injunction, and ordered the transfer of infringing domain names through the accompanying judgment.
The detailed version
- Mattel v. Store · No. 1:22-cv-00561
- P. Castel
- May 24, 2023
Background
Mattel brought claims under the Lanham Act, the federal trademark law, and the Copyright Act. The five-count complaint alleged counterfeiting, trademark infringement, false designation of origin, cybersquatting, and copyright infringement involving Mattel’s Barbie-related products, trademarks, and copyrights.
The defendants initially appeared through an attorney and filed an answer. After the attorney withdrew, the court warned the corporate defendants that they could appear only through an attorney admitted to practice in the court. The court also warned that failing to do so would result in the answer being stricken and default judgment being entered. No attorney appeared for the defendants at the scheduled hearing, and the defendants did not respond to Mattel’s motion.
Default and Liability
Mattel moved to strike the answer and enter default judgment. A default judgment is a judgment entered when a party fails to plead or otherwise defend the case. The court concluded that the defendants had notice of the requirement to appear through counsel and of the consequences of failing to do so. It therefore held that the defendants were in default and struck their answer.
The court explained that a default admits the complaint’s well-pleaded allegations. It found that the complaint plausibly alleged that the defendants willfully counterfeited and infringed Mattel’s marks and copyrights, sold products online as if they were authentic Mattel products, and caused consumer confusion. It also found that the allegations plausibly supported the cybersquatting claim involving www.mattelblackfriday.com, www.dreambarbiedoll.com, and www.dreambarbiedolls.com. The motion was granted as to liability.
Damages
Mattel sought statutory damages under the Lanham Act. The complaint and supporting materials identified eight infringing or counterfeit marks, each connected to a different product or service. Mattel requested $250,000 for each mark, for a total of $2 million.
The court considered the defendants’ alleged willfulness, their failure to provide discovery, the value and recognition of Mattel’s Barbie-related and other marks, the need for deterrence, and the absence of evidence showing the scale of the defendants’ activities or the value of the marks. The court concluded that significant damages were appropriate but that Mattel had not shown enough to support its requested amount. It awarded $125,000 per mark, totaling $1 million, without holding a separate damages hearing.
Injunctive Relief and Disposition
The court held that Mattel was entitled to a permanent injunction under the Lanham Act to prevent further violations of its marks. It also held that Mattel was entitled to transfer of the infringing domain names under the Anticybersquatting Consumer Protection Act. The specific injunctive relief was set out separately in the accompanying judgment.
Judge Castel granted Mattel’s motion for entry of default judgment and directed the Clerk to terminate the motion.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.