Safety Nailer LLC v. The Individuals Partnerships and Unincorporated Associations identified on Schedule A

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Case No. 21-cv-22703-BLOOM/Otazo-Reyes SAFETY NAILER LLC, Plaintiff, v. THE INDIVIDUALS, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE “A,” Defendants. _______________________________________/ ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION THIS CAUSE is before the Court on Plaintiff’s Motion for Preliminary Injunction, ECF No. [19], filed under 15 U.S.C. § 1116, Federal Rule of Civil Procedure 65, and The All Writs Act, 28 U.S.C. § 1651(a), by Plaintiff, SAFETY NAILER, LLC (“SNLLC”). The Court has considered the Motion, the record in the case, arguments raised at the hearing, and is otherwise fully advised.

On August 23, 2021 the Court entered a Temporary Restraining Order and an Order Restraining the Financial Accounts used by Defendants (the “TRO”), ECF No. [22]. The TRO set a hearing on the Plaintiff’s Motion for Preliminary Injunction for September 1, 2021. Plaintiff moved twice, see ECF Nos. [23], [28], to extend the TRO which the Court granted. ECF Nos. [24], [30]. The hearing on the Motion for Preliminary Injunction was ultimately set for September 17, 2021.

Prior to the hearing on the Motion for Preliminary Injunction, Plaintiff filed Proofs of Service, ECF Nos. [35], [37] on the Defendants pursuant to the Court’s Order Authorizing Alternate Service of Process. ECF No. [16]. The Plaintiff’s proofs of service affirmed that the Plaintiff served process on the Defendants identified on Schedule A by emailing those Defendants the text of the summons issued in this action and the link, http://www.sriplaw.com/notice, where the full text of the Complaint, exhibits thereto, Temporary Restraining Order, and the full text of all other documents filed in this action are available to view and download in compliance with this Court’s Order on Alternate Service, with the exception of Defendants numbered 193, 194, 195, 196, 197, and 198.

At the hearing, the Court inquired whether service had been made on all Defendants, and the Plaintiff confirmed that service was made on all Defendants except the Defendants on Schedule A to the Complaint numbered (Doc. 1). Plaintiff requested that the TRO be extended as to those Defendants on which service had not yet been made. The Court found that good cause was not shown for the extension of the TRO on those Defendants and denied Plaintiff’s ore tenus motion.

The Court heard argument from Plaintiff and reviewed the evidence presented to the Court on the Motion. Having considered the evidence and the arguments, the Court grants Plaintiff’s Motion for Entry of a Preliminary Injunction in its entirety against the Defendants identified in Schedule A hereto, which does not include the Defendants numbered 193, 194, 195, 196, 197, and on whom service has not been made, and the TRO is dissolved as to Defendants numbered 193, 194, 195, 196, 197, and 198.

The Court determines that it has personal jurisdiction over the Defendants identified on Schedule A hereto since the evidence presented on the motion shows that the Defendants (except those indicated above on whom service was not made) have been served with process pursuant to this Court’s order authorizing alternative service. The Court also determines that the evidence supports a finding that these Defendants directly target their business activities toward consumers in the United States, including Florida, and specifically that the Defendants are reaching out to do business with Florida residents by operating one or more commercial, interactive internet stores on internet marketplaces where Florida residents can purchase products bearing infringing and/or counterfeit trademarks belonging to the Plaintiff. The Court also determines that the Defendants are selling or offering to sell products to consumers in the U.S. using copyright protected product photographs belonging to Plaintiff and are offering to sell and selling products that infringe one or more U.S. patents belonging to Plaintiff.

This Court further determines that the temporary restraints previously granted in the TRO should remain in place through the pendency of this litigation and that issuing this Preliminary Injunction is warranted under Federal Rule of Civil Procedure 65. Evidence submitted in support of this Motion and in support of Plaintiff’s previously granted Motion for a Temporary Restraining Order establishes that Plaintiff has a likelihood of success on the merits; that no remedy at law exists; and that plaintiff will suffer irreparable harm if the injunction is not granted.

The Court concludes that Plaintiff has a strong probability of proving at trial that consumers are likely to be confused by defendants’ advertisement, promotion, sale, offer for sale, or distribution of goods bearing counterfeits, reproductions, or colorable imitations of the products using the SAFETY NAILER Mark, U.S. Reg. No. 5,544,356 for “Hand tools, namely, clamps” in International Class 8 registered August 21, 2018; the Plaintiff’s copyrighted photographs registered with the Register of Copyrights on May 25, 2021 and assigned the registration numbers VA 2-252-882 and VA 2-252-876; U.S. Patent No. US 8,806,983 (the ‘983 Patent).

The Court concludes that the products Defendants are selling and promoting for sale are copies of Plaintiff’s products that bear copies of the SAFETY NAILER Mark, the Plaintiff’s copyrighted photographs, and the ‘983 Patent, and that the infringement of the SAFETY NAILER Mark, the Plaintiff’s copyrighted photographs, and the ‘983 Patent, will likely cause Plaintiff to suffer immediate and irreparable injury if a preliminary injunction is not granted.

The potential harm to defendants in restraining their trade in counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to Plaintiff, its reputation, and its goodwill as a manufacturer and distributor of quality products, if such relief is not issued. The public interest favors issuance of the temporary restraining order to protect Plaintiff’s trademark interests and protect the public from being defrauded by palming off counterfeit goods as plaintiff’s genuine goods.

Under 15 U.S.C. § 1117(a), Plaintiff may be entitled to recover, as an equitable remedy, the illegal profits gained through Defendants’ distribution and sales of goods bearing counterfeits and infringements of plaintiff’s trademarks. See Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d 982, 987 (11th Cir. 1995); Reebok Int’l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992). The Copyright Act also permits the recovery of Defendants’ profits. See 17 U.S.C. § 504. Furthermore, both the Copyright Act and the Patent Act permits the entry of an injunction to restrain violations of those acts, 17 U.S.C. § 502, 35 U.S.C. § 283, and the Copyright Act authorizes an order impounding infringing goods and articles. 17 U.S.C. §503.

Plaintiff has demonstrated that it is entitled to recover, as an equitable remedy, an injunction as a result of the infringement of Plaintiff’s patent by Defendants, inasmuch as Plaintiff has demonstrated that Plaintiff has and will continue to suffer price erosion as a result of Defendants’ infringement because defendants sell their products that infringe Plaintiff’s intellectual property rights for much less than Plaintiff, Plaintiff has been forced to lower its prices as a result of the infringement, the Defendants continued infringement prevent and frustrate plaintiff’s ability to sell its authentic products, and Plaintiff has been unable to restore the higher price point before it was able to sell at prior to the infringements and counterfeiting by Defendants.

In light of the inherently deceptive nature of the counterfeiting business, and the likelihood that defendants have violated federal trademark laws, Plaintiff has good reason to believe Defendants will hide or transfer their ill-gotten assets beyond the jurisdiction of this Court unless the restraint of those assets ordered in the TRO is continued.

Accordingly, the Court, it is ORDERED AND ADJUDGED that the Motion, ECF No. [19], is GRANTED and a preliminary injunction is entered as follows: PRELIMINARY INJUNCTION Each Defendant listed on Schedule A attached hereto, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any defendant having notice of this Order are hereby restrained and enjoined during the pendency of this case: a. From manufacturing, importing, advertising, promoting, offering to sell, selling, distributing, or transferring any products bearing the SAFETY NAILER Mark, or any confusingly similar trademarks, other than those actually manufactured or distributed by plaintiff; and b. From secreting, concealing, destroying, selling off, transferring, or otherwise disposing of: (i) any products, not manufactured or distributed by plaintiff, bearing and/or using the SAFETY NAILER Mark, or any confusingly similar trademarks; or (ii) any evidence relating to the manufacture, importation, sale, offer for sale, distribution, or transfer of any products bearing and/or using the SAFETY NAILER Mark, or any confusingly similar trademarks; or (iii) any assets or other financial accounts subject to this Order, including inventory assets, in the actual or constructive possession of, or owned, controlled, or held by, or subject to access by, any Defendant, including, but not limited to, any assets held by or on behalf of any Defendant; c. From copying, displaying, distributing or creating derivative works of Plaintiff’s copyrighted photographs; and d. From making, using, selling, importing and/or offering to sell products that practice the ‘983 Patent.

Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any Defendant having notice of this Preliminary Injunction shall immediately discontinue, until further Order of this Court, the use of the SAFETY NAILER Mark, or any confusingly similar trademarks, or the Plaintiff’s copyrighted photographs, and the ‘983 Patent, on or in connection with all Internet based e- commerce stores owned and operated, or controlled by them, including the Internet based e- commerce stores operating under the Seller IDs. This order is limited to the Defendants’ listings using the SAFETY NAILER Mark, or any confusingly similar trademarks, or the Plaintiff’s copyrighted photographs, and the ‘983 Patent, on or in connection with all Internet based e- commerce stores owned and operated, or controlled by them, including the Internet based e- commerce stores operating under the Seller IDs, and does not apply to the Defendants’ entire e- commerce stores.

Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any Defendant having notice of this Preliminary Injunction shall immediately discontinue, until further Order of this Court, the use of the SAFETY NAILER Mark, or any confusingly similar trademarks, within domain name extensions, metatags or other markers within website source code, from use on any webpage (including as the title of any web page), from any advertising links to other websites, from search engines’ databases or cache memory, and any other form of use of such terms that are visible to a computer user or serves to direct computer searches to Internet based e-commerce stores registered, owned, or operated by any Defendant, including the Internet based e-commerce stores operating under the Seller IDs.

Each Defendant shall not transfer ownership of the Seller IDs during the pendency of this action, or until further order of the Court.

Each Defendant shall continue to preserve copies of all computer files relating to the use of any of the Seller IDs and shall take all steps necessary to retrieve computer files relating to the use of the Seller IDs that may have been deleted before the entry of this Order.

Defendants and all financial institutions, payment processors, banks, escrow services, money transmitters, or marketplace platforms, including but not limited to, Alibaba.com Hong Kong Limited, which operates the AliExpress.com platform (“AliExpress”), Zhejiang Ant Small and Micro Financial Services Group Co., Ltd. (“Ant Financial Services”), AliPay (China) Internet Technology Co. Ltd., Alipay.com Co., Ltd., and Alipay Singapore E-Commerce Private Limited (collectively, “Alipay”), Amazon Payments, Inc. (“Amazon”), Dunhuang Group which operates the DHgate.com and DHPay.com platforms, Camel FinTech Inc, ContextLogic, Inc., which operates the Wish.com website (“ContextLogic”), PayPal, Inc. (“PayPal”), eBay, Inc. (“eBay”), Payoneer, Inc. (“Payoneer”), NewEgg Commerce, Inc. (“NewEgg”), WorldFirst UK Limited (“WorldFirst”), or PingPong Global Solutions Inc. (“PingPong”), Joom, SIA (Latvia) (“Joom”), Stripe, Inc. and/or Stripe Payments Company (“Stripe”) and their related companies and affiliates shall continue the restraints imposed under the TRO until further Order of this Court and, to the extent not already done, (i) restrain the transfer of all funds, as opposed to ongoing account activity, held or received for their benefit or to be transferred into their respective financial accounts, and any other financial accounts tied thereto; (ii) divert those restrained funds to a holding account for the trust of the Court.; (iii) identify all financial accounts and/or sub-accounts, associated with the Internet based e-commerce stores operating under the Seller IDs, store numbers, infringing product numbers, and/or the e-mail addresses identified on Schedule “A” hereto, as well as any other accounts of the same customer(s); (iv) identify all other accounts which transfer funds into the same financial institution account(s) or any of the other financial accounts subject to this Order; Upon receipt of notice of this Preliminary Injunction, Defendants and all financial institutions, payment processors, banks, escrow services, money transmitters, or marketplace platforms receiving notice of this Order, including but not limited to, AliExpress, Ant Financial Services, Alipay, Amazon, Dunhuang Group which operates the DHgate.com and DHpay.com platforms, Camel FinTech Inc, ContextLogic, PayPal, eBay, Payoneer, NewEgg WorldFirst, PingPong, Joom, Stripe, and their related companies and affiliates, shall to the extent not already done, provide plaintiff’s counsel with all data that details: (i) an accounting of the total funds restrained and identify the financial account(s) and sub-account(s) which the restrained funds are related to; (ii) the account transactions related to all funds transmitted into the financial account(s) and sub-account(s) which have been restrained; (iii) the historical sales for the defendants’ listings that are alleged to infringe plaintiff’s trademarks, copyrights and patent; and (iv) the true identities along with complete contact information including email addresses of all Defendants.

The funds restrained by this Preliminary Injunction shall not be transferred or surrendered by any Defendant, financial institution, payment processor, bank, escrow service, money transmitter, or marketplace website, including but not limited to, AliExpress, Ant Financial Services, Alipay, Amazon, Dunhuang Group which operates the DHgate.com and DHpay.com platforms, Camel FinTech Inc, ContextLogic, PayPal, eBay, Payoneer, NewEgg WorldFirst, PingPong, Joom, Stripe, and their related companies and affiliates for any purpose (other than pursuant to a chargeback made pursuant to their security interest in the funds) without the express authorization of this Court.

No Defendant whose funds are restrained by this Preliminary Injunction may transfer said funds in possession of any financial institution, payment processor, bank, escrow service, money transmitter, or marketplace website, including but not limited to, AliExpress, Ant Financial Services, Alipay, Amazon, Dunhuang Group which operates the DHgate.com and DHpay.com platforms, Camel FinTech Inc, ContextLogic, PayPal, eBay, Payoneer, NewEgg WorldFirst, PingPong, Joom, Stripe, and their related companies and affiliates restrained by this Order to any other financial institution, payment processor, bank, escrow service, money transmitter or marketplace website without the express authorization of this Court.

Any Defendant or financial institution account holder subject to this Preliminary Injunction may petition the Court to modify the asset restraint set out in this Order.

This Order shall apply only to the Seller IDs listed on Schedule A hereto, associated e-commerce stores and websites, and any other seller identification names, e-commerce stores, websites, or financial accounts which are being used by Defendants for the purpose of counterfeiting the SAFETY NAILER Mark and/or unfairly competing with Plaintiff and/or copying the Plaintiff’s copyrighted photographs and/or infringing the Plaintiff’s ‘983 Patent.

This Preliminary Injunction shall remain in effect during the pendency of this case and until further Order of the Court. Any Defendants that are subject to this Order may appear and Case No. 21-cv-22703-BLOOM/Otazo-Reyes move to dissolve or modify the Preliminary Injunction upon notice to Plaintiff pursuant to the Federal Rules of Civil Procedure and Local Rules of the Southern District of Florida.

BOND 13. The Court determines that the bond in the amount of Ten Thousand Dollars and Zero Cents ($10,000.00) posted by Plaintiff as evidenced by the Notice of Filing Bond, ECF No. [33-], is sufficient and shall remain with the Court until a final disposition or until this Preliminary Injunction is dissolved or terminated.

DONE AND ORDERED in Chambers at Miami, Florida, on September 21, 2021.

UNITED STATES DISTRICT JUDGE Copies to: Counsel of Record

SCHEDULE A TO ORDER GRANTING PRELIMINARY INJUNCTION Defendant # Marketplace DEFENDANTS 1 Alibaba Guangzhou Bolingyu Trading Co., Ltd. 2 Alibaba Dailymag Magnetic Technology (Ningbo) Limited 3 Alibaba Ningbo Fuchuang Imp. & Exp. Co., Ltd. 4 Alibaba Yiwu Nice Daily Necessities Co., Limited 5 Alibaba Yiwu Sino E-Business Firm 6 Alibaba Yueqing Shicheng Power Technology Co., Ltd. 7 Alibaba Ningbo Z.K.L.S. Imp. & Exp. Co., Ltd. 8 Aliexpress Sunny Always Online Store 9 Aliexpress Buy it now shop 2013 10 Aliexpress Fairy supermarket 11 Aliexpress Arrowhunt Store 12 Aliexpress QST EXPress-02 13 Aliexpress Fashion Store A8 14 Aliexpress WL_XY Store 15 Aliexpress Spotless Store 16 Aliexpress We All Like Shopping 17 Aliexpress B-shine Store 18 Aliexpress XINGWEIQIANG-09 Store 19 Aliexpress TOOKIE Tool Store 20 Aliexpress Bulk Purchase Store Store 21 Aliexpress Silvercell Store 22 Aliexpress Sixth house Store 23 Aliexpress Howl's Moving Tools Store 24 Aliexpress decoration and furnishing Store 25 Aliexpress S-life Store 26 Aliexpress Tools-decorating Store 27 Aliexpress Litake Store 28 Aliexpress WarmHome Store 29 Aliexpress Niu Besting Store 30 Aliexpress Practical house tools Store 31 Aliexpress Welcome-to My Store 32 Aliexpress 1847 Blues Store 33 Aliexpress Instrument Tech Store 34 Aliexpress Brightness Store 35 Aliexpress Fressia Tool Store Store 36 Aliexpress Fighting!!!Fressia Tool Store Store 37 Aliexpress Ali-house tools Store Defendant # Marketplace DEFENDANTS 38 Aliexpress HOmePetBall Store 39 Aliexpress Drop Shipping To Worldwide Store 40 Aliexpress ANCRV Store 41 Aliexpress Dry Houseware Store 42 Aliexpress LLD Tool Store 43 Aliexpress Sunday House Store 44 Aliexpress Come On Store 45 Aliexpress Our Home 01 Store 46 Aliexpress umogn Store 47 Aliexpress YSTD Global Store 48 Aliexpress Worldwide Chinese Arts Store emm Store 49 Aliexpress Outbreaker77 Store 50 Aliexpress Improvements Lights Store 51 Aliexpress Pets World + A Store 52 Aliexpress Hand Tool Box emm Store 53 Aliexpress Tools Direct Store 54 Aliexpress LLD Drop Shipping Store 55 Aliexpress Pro Tools Direct Store 56 Aliexpress Five Stars Metal Products Factory Store 57 Aliexpress Guoao Measurement Store 58 Aliexpress Michelle's Garden Decoration Store 59 Aliexpress SunnyD Outdoor Store 60 Aliexpress Shop4993329 Store 61 Aliexpress DASF Global Store 62 Aliexpress KK-Yellow Store 63 Aliexpress LIROIODO Store 64 Aliexpress HousehoId Suppies Store 65 Aliexpress I use Instrument tools Store 66 Aliexpress Have Funny Store 67 Aliexpress Industry Tool Accessories Store 68 Aliexpress Maple INstrument&Tool Store 69 Aliexpress Dropship House Accessories Store 70 Aliexpress Department homes Store 71 Aliexpress Kinging third Store 72 Aliexpress Didida Store 73 Aliexpress Tool & life Store 74 Aliexpress OPDBN Painting Store 75 Aliexpress 100% tool Store Defendant # Marketplace DEFENDANTS 76 Aliexpress Hefei Home-Supply Store 77 Aliexpress H-ome garden Store 78 Aliexpress House Necessities Store 79 Aliexpress Shop900236151 Store 80 Aliexpress Ohhdeer Store 81 Aliexpress Supermarket99 Store 82 Aliexpress Evie Pets Store 83 Aliexpress Beautifully decorated Store 84 Aliexpress You And House Store 85 Aliexpress COMI LIFE Store 86 Aliexpress Shop910449007 Store 87 Aliexpress Householdware Dropshipping Store 88 Aliexpress Homehold quality life Store 89 Aliexpress Better-Home-Life Store 90 Aliexpress Sean's House Store 91 Aliexpress Fun-Family Store 92 Aliexpress Love-Life-Home Store 93 Aliexpress Shop911224130 Store 94 Aliexpress Warming-house Store 95 Aliexpress LuxuryGaP Store 96 Aliexpress Be_FlowHome Store 97 Aliexpress Lovable Life Store 98 Aliexpress Nine Life's Store 99 Aliexpress LISM Life's Store 100 Aliexpress Graceland Homey Store 101 Aliexpress Leisurely Day Home-living Store 102 Aliexpress Smarter Shopping Store 103 Aliexpress Felici Lifestyle Store 104 Aliexpress Joday Store 105 Aliexpress W-Live Store 106 Aliexpress Sahar House Store 107 Aliexpress H-Life Dropshipping Store 108 Amazon XiangYang Sunstor 109 Amazon Faysida 110 Amazon GESN 111 Amazon DOYOUDO 112 Amazon DianPaiShangMao 113 Amazon BEISUOSI-TADIE Defendant # Marketplace DEFENDANTS 114 DHgate Yaritsi 115 DHgate Baixiangguo 116 eBay 5073283 117 eBay 1st.ing 118 eBay 1st.vzu 119 eBay ababhuxin 120 eBay abala.coco 121 eBay add2urcart 122 eBay bamboola 123 eBay bhee2se8cake 124 eBay blackyelailin 125 eBay celinlkeoder 126 eBay clicli64 127 eBay colorb-56 128 eBay darialingling 129 eBay dr3ag8on 130 eBay elrtronn 131 eBay fanghuang1996 132 eBay finger-klh 133 eBay futuresok 134 eBay gelivable.2u 135 eBay goodexpectation 136 eBay gracefulvara 137 eBay haisea007 138 eBay handymen26 139 eBay hea1985 140 eBay huxinwhao 141 eBay huzenyo 142 eBay jewelryzhang888 143 eBay joltio895 144 eBay kangkanghao 145 eBay kexinxinren 146 eBay kiwi4fruit0 147 eBay lakesaw 148 eBay laptopallfor87 149 eBay leihuyoumechenger 150 eBay lemontress 151 eBay lerenet Defendant # Marketplace DEFENDANTS 152 eBay liansmile 153 eBay lilybeibei 154 eBay linyuanwenh 155 eBay lucky.shop_7 156 eBay lzhlds2010_6 157 eBay magzyyd98 158 eBay makimingyu 159 eBay mu2ff7in 160 eBay nau34ghty 161 eBay newmcx2016-8 162 eBay newstarupup 163 eBay newzqz88_6 164 eBay oneshot77-7 165 eBay pandaserveyou 166 eBay qujidu 167 eBay relaxtree 168 eBay ruzhenan 169 eBay sadleft 170 eBay sgostore 171 eBay shanghai.box 172 eBay shanghai.vzu 173 eBay shenyang86y 174 eBay smarrashop 175 eBay sunstarfford 176 eBay supermarket8882016 177 eBay tainanme 178 eBay taoyoumehgfd 179 eBay tdcq888 180 eBay thatkey 181 eBay thsix1666 182 eBay tictac88 183 eBay time.ing 184 eBay topkoo 185 eBay uxpftiv320 186 eBay wxfeng20168 187 eBay xinqinggengyun 188 eBay yumuzhang 189 Joom ouyeda Defendant # Marketplace DEFENDANTS 190 Joom Tasteful 191 Joom Childfourteen 192 Joom Top tool 199 Wish AOA Vivian 200 Wish A_tree 201 Wish Anemone 202 Wish A Lot of Love 203 Wish Mr Giraffe 204 Wish Candy fantasy 205 Wish Mutual affinity Classical instruments 206 Wish glasses of water 207 Wish get together 208 Wish Sown stitch 209 Wish wudongshanlaile 210 Wish nianqingnianweio 211 Wish all tool home 212 Wish fener2580 213 Wish zhengrenshuo666 214 Wish MR.OWEN 215 Wish ning peng ze 216 Wish JunChang Store