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holding plaintiff "failed to demonstrate the requisite good cause to justify expedited discovery" where plaintiff did not show need for information requested
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Case No. C 12–5543 SBA.
2012-11-6
ROVIO ENTERTAINMENT LTD. fka Rovio Mobile Oy, Plaintiff, v. ROYAL PLUSH TOYS, INC., Western Sales and Services Inc., Royal Trade Int'l Inc., Jong K Park, and Does 1–10, Inclusive, Defendants.
Granny Goose Foods, Inc. v. Teamsters, 415 U.S. 423, 438–439, 94 S.Ct. 1113, 39 L.Ed.2d 435 (1974) (internal citation omitted).
J. Andrew Coombs, Nicole Lynn Drey, J. Andrew Coombs A Professional Corporation, Glendale, CA, Jason M. Drangel, Epstein Drangel Bazerman and James LLP, New York, NY, for Plaintiff.
ORDER
, District Judge.
On October 29, 2012, Rovio Entertainment Ltd fka Rovio Mobile Oy (“Plaintiff”) brought the instant copyright and trademark infringement action against Defendants Royal Plush Toys, Inc. (“RPI”), Western Sales and Services Inc. (“WS & S”), Royal Trade Int'l Inc. (“RTI”), and Jong K. Park (“Park”) (collectively, “Defendants”). Before the Court is Plaintiff's ex parte motion for a temporary restraining order (“TRO”), an order to show cause (“OSC”) why a preliminary injunction should not issue, a seizure order, a substitute custodian order, and an expedited discovery order.
Plaintiff is a Finland-based company that developed the puzzle video game Angry Birds. Plaintiff alleges that Defendants are allegedly intentionally and willfully selling infringing and unauthorized knockoff plush toys that are nearly identical to Plaintiff's Angry Birds plush toys in violation of Plaintiffs copyright registrations and ANGRY BIRDS trademarks. Plaintiff has sued Defendants for copyright infringement under 17 U.S.C. § 501(a), trademark counterfeiting under 15 U.S.C. §§ 1114(1)(b), 1116(d), and 1117(b)-(c), trademark infringement under 15 U.S.C. § 1114, false designation of origin, passing off, and unfair competition under 15 U.S.C. § 1125(a), unfair competition under California common law, and unjust enrichment. Plaintiff seeks five remedies from this Court.
First, under Rule 65 of the Federal Rules of Civil Procedure, Plaintiff requests an ex parte TRO enjoining Defendants from manufacturing, distributing, supplying, or selling merchandise infringing upon Plaintiff's copyrights and trademarks. Second, Plaintiff requests an OSC hearing regarding the issuance of a preliminary injunction. Third, Plaintiff requests an ex parte seizure order, directing the United States Marshal or other law enforcement to seize and impound any and all infringing and unauthorized merchandise that infringe Plaintiff's copyrights and trademarks, the means of making the infringing merchandise, and the business records relating thereto. Fourth, Plaintiff requests this Court order that items seized be turned over to the custody of Plaintiffs counsel, J. Andrew Coombs, A Professional Law Corporation, for preservation throughout the trial of this matter. Finally, Plaintiff requests leave to take immediate discovery to identify other entities involved in the counterfeiting scheme and to learn the scope of Defendants' distribution of the counterfeit products.
Having read and considered the papers filed in connection with this matter and being fully informed, the Court hereby DENIES the request for an ex parte TRO, DENIES the request for an ex parte seizureorder, DENIES the request for a substitute custodian order, DENIES the request for leave to take immediate discovery, and GRANTS the request for an OSC hearing regarding issuing a preliminary injunction.
I. BACKGROUND
Angry Birds is a puzzle video game developed by Plaintiff. Compl. ¶ 18. The game was first released for Apple Inc's iOS in December 2009, Id. In the game, players use a slingshot to launch birds at pigs stationed on or within various structures, with the intent of destroying all the pigs on the playfield. Id. ¶ 19. As players advance through the game, new birds appear, some with special abilities that can be activated by the player. Id.
The Angry Birds game has been downloaded over one billion times across all platforms, including both regular and special editions. Compl. ¶ 20. Players log more than 1 million hours of game time each day on the iOS version of the game, 3.33 million hours per day across all platforms, and there are more than 40 million active users monthly. Id. ¶ 21. The game has been called “one of the most mainstream games out right now,” “one of the great runaway hits of 2010,” and “the largest mobile app success the world has seen so far.” Id. ¶ 20. The Angry Birds game has received several awards, including the “Best Game App” and “App of the Year” at the 2011 “UK Appy Awards, and” Best Game for Handheld Devices” at the 15th edition of the “Webby Awards.” Id. ¶ 22.
Angry Birds' popularity led to versions of Angry Birds being created for personal computers and gaming consoles, a market for merchandise featuring its characters, and even long-term plans for a feature film or television series. Compl. ¶ 23. Plaintiff has an extensive world-wide licensing program for merchandise featuring its characters. Id. ¶ 24. The most popular items have been t-shirts, plush toys and cell phone accessories (“Products”). Id. Of these items, Plaintiffs most popular product is its collection of round plush Angry Birds toys (collectively, “the Angry Birds Plush Line”). Greenfield Decl. ¶ 6, Exh. A. These round plush Angry Birds are sold in various sizes and styles and some include sound. Id.
Plaintiff alleges that it has gained significant common law trademark and other rights in its trademarks and Products through its use, advertising and promotion. Compl. ¶ 25. Plaintiff has also obtained federal trademark and copyright registrations. Id. Plaintiff is the owner of the United States Trademark Registration No. 3,976,576 for ANGRY BIRDS for a wide variety of goods in Classes 9, 16, 28 and 41 and United States Trademark No. 3,988,064 for
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for a wide variety of goods in Classes 9, 16, 28 and 41 (the “Marks”). Id. 126, Exh. A.
Plaintiff also owns copyrights in and related to the Products. Compl. ¶ 27. Plaintiff's copyrights protect the various proprietary characters originated in the Angry Birds game and extended through its line of Products. Id. The line is updated from time to time to add new designs and products. Id. Plaintiff owns several United States Copyright Registrations relating to its products, including, among others, the following certificates of registrations: VA1778702, VA1778705, VA1778703, VA1776995, VA1776992, VA1777195, as well as numerous common law copyrights (collectively, “Copyright Works”). Id. ¶ 28, Exh. B.
In summer 2010, Plaintiff granted Commonwealth Toy & Novelty Co., Inc. (“Commonwealth”), a United States license(and elsewhere), to market, manufacture, distribute and sell Angry Birds plush, key chains, balls, PVC figures, bean bags, Christmas stockings, seasonal Summer goods, banners and flags, lanyards, magnets, plush hats, snow globes, and drinkware, Compl. ¶ 30. Currently, Commonwealth's most popular product is the Angry Birds Plush Line. Id. ¶ 32, Exh. C. Commonwealth sells the Angry Birds Plush Line to retailers such as Toys R Us, Kmart, Walmart, Shopko, Hallmark, Build A Bear, Pamida, Walgreens, CVS, Justice, Claires, Hot Topic, Transworld, and Spencer Gifts, among others. Id. ¶ 33. Commonwealth also sells to over one thousand (1,000) other independent retailers in the United States. Id. The Angry Bird Plush Line is also sold (given away as prizes) in amusement parks such as Universal Studios, Knotts Berry Farm, Cedar Point, Dorney Park, Hershey Park, Six Flags, Sea World, and Lego Land. Id.
The Angry Birds Plush Line is a very substantial part of both Plaintiff's and Commonwealth's respective businesses. Greenfield Decl. ¶ 17. Since late 2010, Commonwealth has sold over thirty million units of the Angry Birds Plush Line have been sold in the United States alone. Id. ¶ 9.
According to Plaintiff, its games and Products have become targets for unscrupulous individuals and entities that deal in infringing products and services. Compl. ¶¶ 35–36. The actions of these individuals and entities include manufacturing, copying, exporting, importing, advertising, promoting, selling, and distributing infringing and otherwise unauthorized products. Id. ¶ 36. Because Plaintiff's Copyrights and Marks are vital to its business, Plaintiff actively polices and enforces its intellectual property rights. Hed Decl. ¶ 11.
Plaintiff and Commonwealth have both discovered that large quantities of pirated copies of the Angry Birds Plush Line are being sold throughout the United States. Greenfield Decl. ¶ 10. Specifically, Plaintiff and Commonwealth have recently discovered that the Defendants are selling infringing copies of the Angry Birds Plush Line from their business location at 4771 Arroyo Vista Blvd., Suites A & B, Livermore, CA 94551. See Id.; Drangel Decl. ¶¶ 4–16, Exhs. A–G; Buckner Decl. ¶¶ 2–5, 7–29. Plaintiff believes that Defendants also sell their infringing products to flea market vendors, kiosk owners, crane operators, and discount chains at a substantial discount. Greenfield Decl. ¶ 11.
According to the investigative firm retained by Plaintiff's counsel, 4771 Arroyo Vista Blvd., Suite B, Livermore, CA 94551 is a tan building that houses suites with multiple businesses. Buckner Decl. ¶¶ 8–9. The entrance to the location has black tinted glass windows and a black tinted glass door. Id. ¶ 9. There is no visible sign outside the location that identifies it as RPI, Id.
Defendants' infringing products have been seized by United States Customs on at least two occasions in June and July 2012. Drangel Decl. ¶¶ 5–6, Exhs. A–B.
Following the discovery of Defendants' activities, Plaintiff directed a licensed investigative firm, Investigative Consultants, Inc. (“IC”), to make purchases of Defendants' goods. See Buckner Decl. ¶¶ 2–29; Drangel Decl. ¶¶ 12–15, Exh. G. The goods purchased were examined by Plaintiff's counsel who confirmed that they violate both Plaintiff's copyright and trademark rights. Drangel Decl. ¶¶ 15–16, Exh. G; Compl. ¶ 39. According to Plaintiff, a side-by-side comparison of the parties' respective goods shows that the Defendants' knockoff products are nearly identical to Plaintiff's authentic Angry Bird plush products with only minor variations that no ordinary consumer could recognize. Greenfield Decl. ¶ 12, Exh. B; see also Drangel Decl. ¶ 15, Exh. G; Compl. ¶ 38. Many of the products bear labels and hang tags bearing Plaintiff's ANGRY BIRDS and/or Marks.
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Compl. ¶ 38; see also Drangel ¶ 15, Exh. G.
Plaintiff alleges that by these sales and their other dealings in infringing products, including importing, advertising, displaying, distributing, selling and/or offering to sell infringing products, Defendants have violated Plaintiff's exclusive rights in its Copyright Works and Marks. Compl. ¶ 40. Plaintiff also alleges that Defendants used IMAGE
trademarks as set forth in Exhibit A to the complaint or products that are substantially similar to Plaintiff's Angry Birds plush toy products as set forth in Exhibits C & D of the complaint The Court further ORDERS Defendants to take reasonable steps to preserve products that now or hereafter come into their possession, custody, or control, whether apparently legitimate or counterfeit: that bear Plaintiff's ANGRY BIRDS and/or
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trademarks as set forth in Exhibit A to the complaint or products that are substantially similar to Plaintiff's Angry Birds plush toy products as set forth in Exhibits C & D of the complaint
8. The Clerk shall unseal the file.
IT IS SO ORDERED.