Moonbug Entertainment Limited v. Autumn Sell

CourtDistrict Court, S.D. New York
DecidedFebruary 16, 2023
Docket1:21-cv-10328
StatusUnknown

This text of Moonbug Entertainment Limited v. Autumn Sell (Moonbug Entertainment Limited v. Autumn Sell) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Moonbug Entertainment Limited v. Autumn Sell, (S.D.N.Y. 2023).

Opinion

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

------------------------------X

MOONBUG ENTERTAINMENT LIMITED

AND TREASURE STUDIO INC,

MEMORANDUM AND ORDER Plaintiffs, 21 Civ. 10328 (NRB) - against –

AUTUMN SELL, AYLIN,BG BOD, COOLEMA, CORODER, DAWEI PARTY, EXCELLETOYZ, E-YONG, FIRST SIGHT 1986, GAVIN DIRECT US, GREATPARTYGIF, GUANGDONGCHENGQIANGJIANSHEGONGC HE NGYOUXIANGONGSI, GUILIN MINGXUAN, GUOYUJIA, HAORANKE GIFT SHOP, HUGEONE, JH112, JIEOU, JUSUWK, KALENO DIRECT, KRUIDENIERSWINKELS, LIGEN-TECH, LINZHIDIANZI, MANGO LADY, MARWIO, MEISIYU, MOUISITON MALL, PINK ROM, QIDUN TRADE CO LTD, RUNHOME, RUNNIANSHANGWU168, SHUERJIA, SZMIYU, TELIKE, THUCI, TINTING3, TONGPAOTIYU, VISIT THE PP TOY STORE, W_MALL, WELLCHOY, WUDIXIANSOAIESYFBAIHUODIAN, XINGXIU, YIMENGFUSHIYOUXIANGONGSI, YIONEYI, YURDOOP, AND 西咸新区沣东新城代环涛百货店 ,

Defendants.

------------------------------X NAOMI REICE BUCHWALD UNITED STATES DISTRICT JUDGE

Plaintiffs Moonbug Entertainment Limited and Treasure Studio Inc. (collectively, “Moonbug” or “plaintiffs”) brought this suit under the Lanham Act and the Copyright Act on December 3, 2021 after learning of the sale of counterfeit products featuring their marks related to CoComelon, a popular Youtube program, by several Chinese third-party merchants on Amazon.1 As little information is available publicly about these merchants, plaintiffs were forced to rely on the information available on Amazon’s website in constructing their complaint and issuing summons.

To this day, most of the defendants have not appeared. However, on March 3, 2022, two defendants, Dawei and Wellchoy (collectively, “moving defendants”),2 appeared in order to file the present motion, which argues that the case against them should be dismissed with prejudice because service by email was improper, the defendants were misnamed, and there is no personal jurisdiction over moving defendants. See Defendants’ Motion to Dismiss Plaintiff’s Complaint (“Def. Br.”), ECF No. 18. The predicate of

1 The complaint alleges six causes of action. This includes claims for trademark counterfeiting, infringement of registered and unregistered trademarks, passing off and unfair competition under the Lanham Act, as well as a federal copyright infringement claim and an unfair competition claim under New York law. See ECF No. 4. 2 The Court refers to the defendants as “Dawei” and “Wellchoy,” as that is how moving defendants’ motion lists the names. Def. Br. at 1. According to plaintiffs, the names on moving defendants’ Amazon merchant storefronts at the time of the summons were “Dawei Party” and “Wellchoy.” Affidavit of Danielle Futterman in Opposition to Defendants Dawei Party and Wellchoy’s Motion to Dismiss (“Futterman Decl.”) ¶ 18, ECF No. 21. Plaintiffs allege that at the time the motion was filed, the name on Dawei’s Merchant Storefront had been changed to “DaWei Cat and Dog.” Id.

-2- the motion is that plaintiffs have not properly identified the moving defendants by name or address. But, it is clear that the moving defendants obscured their identities and location information. Defendants effectively pushed the plaintiffs in front of the baseline, and now ask the Court to call a foot fault. The Court declines to do so. For the reasons discussed below, the moving defendants’ motion is denied in its entirety.

BACKGROUND On December 3, 2021, plaintiffs filed an ex parte application for a temporary restraining order (“TRO”) after discovery of the counterfeit products, and on December 4, 2021, plaintiffs filed their complaint. See ECF Nos. 4, 9. In addition to enjoining the sale of the counterfeit goods, the TRO requested that the Court permit alternative service by email. See TRO, Dec. 6, 2021. On December 6, 2021, we signed the TRO and allowed the plaintiffs to serve defendants by: delivery of: (1) PDF copies of this Order together with the Summons and Complaint, and (ii) a link to a secure website (including NutStore, a large mail link created through Rmail.com and via website publication through a specific page dedicated to this Lawsuit accessible through ipcounselorlawsuit.com) where each Defendant will be able to download PDF copies of this Order together with the Summons and Complaint, and all papers filed in support of Plaintiff’s Application seeking this Order to Defendant’s email addresses to be determined by Amazon pursuant to paragraph V(C) or may otherwise be determined.

-3- TRO at 10. Given the lack of information available publicly to plaintiffs, the TRO also sought third-party discovery from Amazon and expedited discovery from the defendants. Futterman Decl. ¶¶ 7, 15. Specifically, plaintiffs sought the “true name and physical address” of the defendants, as well as “identifying information for Defendants and Defendants’ User Accounts and Defendants’

Merchant Storefronts, [and] contact information for Defendants (including, but not limited to, mailing addresses and e-mail addresses).”3 TRO at 12-13. Upon receiving the production from Amazon which identified the email addresses and physical addresses associated with the allegedly infringing merchant storefronts, plaintiffs served all defendants by email, following the procedure outlined by the TRO. Futterman Decl. ¶ 11. RMail receipts indicate the emails were delivered. Id. ¶ 12. The Court presumes that the moving defendants received these emails, because on February 6, 2022 and March 23, 2022 moving defendants provided the expedited discovery as requested by the

TRO. Id. ¶ 15. The production included the email addresses,

3 It is the Court’s understanding that merchant storefronts are how merchants can sell goods on Amazon. Those sellers need to create user accounts with Amazon to operate these storefronts. Futterman Decl. ¶ 8.

-4- physical addresses, and sales figures for the moving defendants. Id. ¶¶ 16-17. While the email addresses in this production matched the ones provided by Amazon on December 16, 2021, the physical addresses differed from both the ones identified in the Amazon production and the separate addresses listed on the Amazon merchant storefronts. Id. ¶¶ 9 n.3, 17. In addition, prior to the second production from moving

defendants, on March 3, 2022, they filed the present motion to dismiss. See Def. Br. Defendants argued that the service by email was improper, as the Hague Convention and Chinese law do not permit this type of service. Id. at 1-4. Next, the motion argues that the defendants were not properly identified in the summons, as plaintiff used the names on the Amazon merchant storefronts, but those are not proper legal entities. Id. at 7-8. Finally, the motion argues that there is no personal jurisdiction over the moving defendants as they are Chinese and have no offices in the United States. Id. at 4-7. Even after the motion was filed, plaintiffs claim to have

found additional counterfeit products on defendant Dawei’s merchant storefront. In fact, on March 31, 2022, plaintiffs’ law firm purchased an alleged counterfeit product from defendant Dawei’s merchant storefront for delivery to its New York office.

-5- Futterman Decl. ¶ 19.4 In addition, plaintiffs’ counsel had its Beijing office investigate the addresses associated with the moving defendants’ Amazon storefronts and confirmed that no company names associated with those storefronts were associated with the addresses. Id. ¶ 24. DISCUSSION The Court addresses each alleged defect separately and finds

all to be meritless. I. Service First, the moving defendants argue that, despite appearing in the case, they were not properly served, because service was by email, which is not permitted by Chinese law or the Hague Convention. Def. Br. at 3. They argue that this failure should result in dismissal, which the Court interprets as a motion under Rule 12(b)(5).5 Id.

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Moonbug Entertainment Limited v. Autumn Sell, Counsel Stack Legal Research, https://law.counselstack.com/opinion/moonbug-entertainment-limited-v-autumn-sell-nysd-2023.