The Pinkfong Company Inc. v. BeGiol TTC

Background

The Pinkfong Company, Inc. moved for emergency relief against BeGiol TTC and numerous other defendants. Pinkfong alleged that the defendants used online marketplace storefronts to sell products that counterfeit or infringe Pinkfong’s Baby Shark trademarks and copyrights. The requested relief included a temporary restraining order, restraints on storefronts and assets, expedited discovery, and alternative methods of service.

The court had previously granted the application for a temporary restraining order and later extended the hearing date. Pinkfong served seventeen defendants using the alternative methods authorized by the earlier order. At the November 30, 2023 hearing, Pinkfong appeared, but none of the defendants appeared. The opinion states that the remaining defendants were being served through the Hague Convention.

Personal Jurisdiction

The court held that it had personal jurisdiction over the served defendants. It concluded that the defendants were subject to New York’s long-arm statute because they operated interactive Amazon storefronts through which New York consumers could communicate with them and purchase goods, including the allegedly counterfeit products. The court found an adequate connection between those New York transactions and Pinkfong’s claims for trademark counterfeiting, trademark infringement, false designation of origin, copyright infringement, and unfair competition.

The court also concluded that exercising jurisdiction complied with constitutional due-process requirements. It found that the served defendants had minimum contacts with New York because they deliberately chose to sell products there and benefit from New York customers. The court further found that exercising jurisdiction was consistent with fair play and substantial justice.

Preliminary-Injunction Findings

For a preliminary injunction, the court considered whether Pinkfong showed a likelihood of success on the merits or sufficiently serious questions for litigation, likely irreparable harm without an injunction, a favorable balance of hardships, and consistency with the public interest.

The court found that Pinkfong had established a likelihood of success on its copyright claim. Pinkfong presented evidence of valid copyright registrations and evidence that the served defendants’ products looked substantially similar to Pinkfong’s products and were sold without Pinkfong’s consent. The court also found likely irreparable injury to Pinkfong’s business, value, goodwill, and reputation if sales continued. It found that the balance of hardships favored Pinkfong and that an injunction would serve the public interest by reducing confusion and protecting intellectual-property rights.

Order

The court ordered that the injunctive relief previously granted in the temporary restraining order remain in effect during the case, or until further order. Under the order, the served defendants were restrained from manufacturing, importing, exporting, advertising, marketing, distributing, displaying, offering for sale, selling, or otherwise dealing in the allegedly counterfeit products or products bearing Pinkfong’s Baby Shark marks or works. They were also barred from operating their user accounts or merchant storefronts in violation of the order, infringing Pinkfong’s marks or works, using confusingly similar marks or artwork, creating likely confusion about product origin or affiliation, concealing or transferring relevant products or records, circumventing the order, or directing others to do those acts.

The order also restrained the served defendants and, after actual notice, persons acting with them—including qualifying third-party service providers and financial institutions—from transferring, withdrawing, disposing of, or otherwise dealing with the served defendants’ assets in their financial accounts. Newly identified financial institutions receiving the order were required to locate and attach the relevant accounts and provide specified account information.

Expedited discovery also remained in effect. Pinkfong could serve interrogatories and document requests on served defendants, who were required to respond within fourteen days. Financial institutions and third-party service providers receiving the order were required to provide specified records concerning the defendants’ accounts, storefronts, identities, payment methods, sales, and alleged counterfeit-product activity.

The order authorized specified electronic service on the served defendants, third-party service providers, and financial institutions. Other defendants had to be served under the Hague Convention. The court warned that violations after actual notice could be treated and prosecuted as contempt. Pinkfong’s $20,000 bond remained with the court, and defendants subject to the order could move to dissolve or modify it on two days’ notice or shorter notice set by the court.