Entm't One Uk Ltd. v. 2012shiliang

384 F.Supp.3d 941

ENTERTAINMENT ONE UK LTD., Plaintiff,

v.2012SHILIANG, et al., Defendants.

Case No. 18 C 4461

United States District Court, N.D. Illinois, Eastern Division.

Signed May 2, 2019

Amy Crout Ziegler, Allyson M. Martin, Mary Fetsco, Jessica Lea Bloodgood, Justin R. Gaudio, Greer, Burns & Crain, Ltd., Chicago, IL, for Plaintiff.

Depeng Bi, The Law Offices of Konrad Sherinian, LLC, Naperville, IL, for Defendants.

6guys9, pro se.

luckyjerryxiang, pro se.

MEMORANDUM OPINION AND ORDER

Harry D. Leinenweber, Judge

This case arises from the unauthorized sale of counterfeit merchandise through various online seller accounts. For the reasons stated herein, Defendants' Motions to Terminate Preliminary Injunction (Dkt. Nos. 78, 79) are denied, and Plaintiff's Motion for Summary Judgment (Dkt. No. 86) is granted.

I. BACKGROUND

Plaintiff Entertainment One UK Ltd. is a company organized under the laws of the United Kingdom. (Pl.'s Statement of Facts ("SOF") ¶ 1, Dkt. No. 88.) Plaintiff develops, produces, and distributes entertainment content, including the "Peppa Pig" brand. (SOF ¶ 2.) Peppa Pig is a popular animated television series aimed at preschoolers. (SOF ¶¶ 3, 11.) Plaintiff owns several U.S. federal trademark registrations for its Peppa Pig property; two are relevant in this case. The first is U.S. Registration No. 4,872,348 ("the '348 mark") for the word mark "PEPPA PIG." (SOF ¶ 14.) The second is U.S. Registration No. 4,783,931 ("the '931 mark"), a design mark of Peppa Pig herself—a stylized pig wearing a dress. (SOF ¶ 15.) The Court will refer to the trademarks collectively as the "Peppa Pig trademarks."

Plaintiff initiated this case in 2018 by suing over 400 online retail stores. (See Schedule A Defendants, Ex. 2 to Pl.'s Am. Compl., Dkt. No. 10-2.) Plaintiff alleged that those 400 Defendants were willfully manufacturing, distributing, and selling counterfeit versions of Peppa Pig trademarked and/or copyrighted designs. The Court entered a temporary restraining order, prohibiting all Defendants from using, reproducing, selling, and shipping Plaintiff's trademark and copyright material. The Court later converted the temporary restraining order to a preliminary injunction, which is still in place.

The Court has since entered default judgment against most Defendants, and others have been voluntarily dismissed. The case remains pending against only two Defendants: an eBay store named "luckyjerryxiang," and an eBay store named "6guys9" (collectively herein after, "Defendants"). Defendants both sold a product that they named "Peppa Pig Head Cookie Cutter," which is, as the name implies, a cookie cutter shaped in the outline of Peppa Pig's head. (SOF ¶¶ 22-24, 27-28.) Both Defendants accepted payment for the Peppa Pig cookie cutter via PayPal and shipped the product to Illinois. (SOF ¶¶ 25-26, 30-31.) Defendants are not authorized retailers of Peppa Pig products. (SOF ¶ 36.) Defendants have filed nearly identical pleadings to date, but it appears that each store is operated by a separate person. 6guys9 is operated by HaiJie Lin, and luckyjerryxiang is operated by Jian Feng; both individuals are located in the People's Republic of China. (SOF ¶¶ 4-5.)

Plaintiff now moves for summary judgment against Defendants for: (1) willful federal trademark infringement and counterfeiting under Section 32 of the Lanham Act, 15 U.S.C. § 1114 ; (2) false designation of origin under Section 43 of the Lanham Act, 15 U.S.C. § 1125 ; and (3) violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2(a). Plaintiff further requests a statutory damages award of at least $ 100,000 from each Defendant; attorneys' fees and costs; and a permanent injunction enjoining Defendants from violating Plaintiff's rights in the Peppa Pig trademarks. Defendants move to terminate the preliminary injunction.

II. LEGAL STANDARD

A district court "shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). A genuine dispute of material fact only exists if a reasonable jury could return a verdict for the non-moving party. Anderson v. Liberty Lobby , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. See Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A court must construe all facts and draw all reasonable inferences in the light most favorable to the nonmoving party. Majors v. Gen. Elec. Co. , 714 F.3d 527, 532-33 (7th Cir. 2013) (citation omitted).

III. DISCUSSION

A. Summary Judgment

1. Statement of Facts

As an initial matter, the Court will address Plaintiff's Statement of Facts and Defendants' response, or lack thereof. The Local Rules of the Northern District of Illinois require the party moving for summary judgment to submit a statement of undisputed material facts. See N.D. Ill. L. R. 56.1. When the opposing party fails to controvert the moving party's statement in the manner dictated by Local Rule 56.1, those facts are deemed admitted for the purpose of the summary judgment motion. Smith v. Lamz , 321 F.3d 680, 683 (7th Cir. 2003). Plaintiff submitted a proposed list of 54 undisputed material facts, each supported by citation to the record, in accordance with Rule 56.1. In response, Defendants filed documents titled "Defendant Statement of Material Facts" that each contained two brief factual assertions. (See Dkt. Nos. 94, 98.) Defendants did not, as the Local Rules require, respond to each numbered paragraph in Plaintiff's Statement of Material Facts.

Defendants are representing themselves pro se, and the Court therefore construes their pleadings liberally. Hudson v. McHugh , 148 F.3d 859, 864 (7th Cir. 1998). However, the Seventh Circuit has "consistently held that a failure to respond by the nonmovant as mandated by the local rules results in an admission." Smith, 321 F.3d at 683. The Court cannot excuse the fact that Defendant failed to respond to Plaintiff's Statement of Material Facts. See Greer v. Bd. of Educ. of City of Chicago , 267 F.3d 723, 727 (7th Cir. 2001). Merely setting forth their own factual assertions does not constitute a rebuttal of Plaintiff's facts. See id. Thus, the Court will treat Plaintiff's Statement of Material Facts as admitted.

2. Trademark Infringement

The Court turns to the merits of Plaintiff's summary judgment motion. Plaintiff argues that Defendants violated Sections 32 and 43 of the Lanham Act, as well as the Illinois Uniform Deceptive Trade Practices Act ("UDTPA"). Defendants are liable for trademark infringement and counterfeiting under Section 32 of the Lanham Act if they, "without the consent of the registrant, use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale ... of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1). A defendant is liable for false designation of origin under Section 43 if it, "on or in connection with any goods or services ... uses in commerce any ... false designation of origin, false or misleading description of fact, or false or misleading misrepresentation of fact, which is likely to cause confusion or to cause mistake, or to deceive as to the ... origin, sponsorship, or approval of his or her goods ... by another person." 15 U.S.C. § 1125(a)(1). The UDTPA prohibits the following activities, among others, as deceptive trade practices: (1) passing off goods as those of another; (2) causing likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of goods; and (3) causing likelihood of confusion or of misunderstanding as to affiliation, connection, or association with another. 815 ILCS 510/2(a).

Plaintiff must establish the same two elements for all of its Lanham Act and UDTPA claims: (1) that it has a protectable trademark; and (2) that Defendants' use of the trademark is likely to cause confusion among consumers. Packman v. Chicago Tribune Co. , 267 F.3d 628, 638 n.8 (7th Cir. 2001) ; Monster Energy Co. v. Zheng Peng , No. 17-CV-414, 2017 WL 4772769, at *3 (N.D. Ill. Oct. 23, 2017) (citation omitted).

First, Plaintiff owns protectable trademarks. Both the '348 and '931 marks are registered with the U.S. Patent and Trademark Office on the Principal Register. (SOF ¶¶ 14-16.) Such registry constitutes prima facie evidence of the validity of Plaintiff's registered trademarks and of Plaintiff's exclusive right to use the trademarks. 15 U.S.C. § 1057(b). Defendants do not contest the registration of Plaintiff's trademarks, nor the validity of such marks. Accordingly, the Court finds that there is no genuine issue regarding the fact that Plaintiff's Peppa Pig trademarks are protectable. See Monster Energy Co. , 2017 WL 4772769, at *4.

Next, Plaintiff must establish that Defendants' use of the Peppa Pig trademarks is likely to cause confusion among consumers. The Seventh Circuit has set forth seven factors to determine whether a likelihood of confusion exists. See AutoZone, Inc. v. Strick , 543 F.3d 923, 929 (7th Cir. 2008). However, the Seventh Circuit also held, in a non-precedential opinion, that courts can presume likelihood of confusion where a defendant "produces counterfeit goods in an apparent attempt to capitalize upon the popularity of, and demand for, another's product." Microsoft Corp. v. Rechanik , 249 Fed. App'x. 476, 479 (7th Cir. 2007) (quoting Polo Fashions, Inc. v. Craftex, Inc. , 816 F.2d 145, 148 (4th Cir. 1987) ). Given that the Seventh Circuit established the presumption in a non-precedential opinion, the Court will first analyze the facts under the presumption, and then under the full seven factor test. See Coach, Inc. v. Treasure Box, Inc. , No. 3:11 CV...