Opinion
CASE NO. 21-cv-21097-COOKE/O'SULLIVAN
05-14-2021
SAAHEEM M. VALDERY a/k/a SAHBABII, Plaintiff, v. THE INDIVIDUALS, PARTNERSHIPS AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE "A," Defendants.
REPORT AND RECOMMENDATION GRANTING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION
THIS MATTER comes before the Court on the Plaintiff's Motion for Entry of Preliminary Injunction ("Plaintiff's Motion"). This matter was referred to United States Magistrate Judge John J. O'Sullivan by the Honorable Marcia G. Cooke, United States District Court Judge for the Southern District of Florida pursuant to 28 U.S.C. § 636(b). The Plaintiff, Saaheem M. Valdery a/k/a Sahbabii ("Plaintiff") moves, for entry of a preliminary injunction against the Defendants, Individuals, Partnerships, and Unincorporated Associations Identified on Schedule "A" (collectively "Defendants"), and an order restraining the financial accounts used by Defendants pursuant to 15 U.S.C. § 1116, 17 U.S.C. § 502, Federal Rule of Civil Procedure 65, and The All Writs Act, 28 U.S.C. § 1651(a).
The undersigned convened a hearing on May 14, 2021, at which only counsel for Plaintiff was present and available to present evidence supporting the Motion. Because the Plaintiff has satisfied the requirement for the issuance of a preliminary injunction, the undersigned respectfully recommends that the Court GRANT the Plaintiff's Motion for Preliminary Injunction as to all Defendants in accordance with the following Report and Recommendation. I. FACTUAL BACKGROUND
The factual background is taken from the Plaintiff's Complaint, Motion, and supporting Declarations submitted by the Plaintiff. --------
Plaintiff is the owner of the following trademark, which is valid and registered on the Principal Register of the United States Patent and Trademark Office (the "Sahbabii Mark"):
| Trademark | RegistrationNumber | RegistrationDate | Class / Goods |
|---|---|---|---|
| SAHBABII | 5,449,462 | 04/17/2018 | IC 041: Entertainment services in thenature of presenting live musicalperformances; Entertainment, namely,live performances by a musical band;Entertainment, namely, liveperformances by musical bands; Audioand video recording services;Entertainment services by a musicalartist and producer, namely, musicalcomposition for others and production ofmusical sound recordings; Entertainmentservices by a musical artist and producer,namely, musical composition for othersand production of musical soundrecordings; Entertainment services,namely, providing information about arecording artist via an online network;Multimedia entertainment services in thenature of recording, production and post-production services in the fields ofmusic, video, and films; Production ofsound and music video recordings;Providing an Internet website portalfeaturing links to musical artist websitesand music performance ticketinformation; Providing an Internetwebsite portal featuring links to musicalartist websites and music performanceticket information. |
The Defendants, through the various Internet based e-commerce stores operating under the seller identities identified on Schedule "A" to this Report and Recommendation (the "Seller IDs"), have advertised, promoted, offered for sale, or sold goods bearing and/or using what the Plaintiff has determined to be counterfeits, infringements, reproductions, or colorable imitations of the Sahbabii Mark. See Valdery Decl. at ¶¶ 15-18; Declaration of Richard Guerra in Support of Plaintiff's Motion for TRO ("Guerra Decl.") at ¶¶ 4-5.
Although each of the Defendants may not copy and infringe the Sahbabii Mark for each category of goods protected, the Plaintiff has submitted sufficient evidence showing each of the Defendants has infringed the Sahbabii Mark. See Guerra Decl. at ¶ 4, Schedule C. The Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Sahbabii Mark. See Valdery Decl. at ¶ 15.
The Plaintiff investigated the promotion and sale of counterfeit and infringing versions of the Plaintiff's branded and protected products by the Defendants. See Valdery Decl. at ¶¶ 15-18. Plaintiff accessed each of the e-commerce stores operating under the Defendants' Seller IDs, initiated the ordering process for the purchase of a product from each of the Seller IDs, bearing counterfeits of the Sahbabii Mark at issue in this action, and requested each product to be shipped to an address in the Southern District of Florida. See id.; see also Guerra Decl. at ¶ 5. The Plaintiff conducted a review and visually inspected the Sahbabii branded items for which orders were initiated by Plaintiff's third-party investigator via the Seller IDs and determined the products were nongenuine, unauthorized versions of the Plaintiff's products. See Valdery Decl. at ¶¶ 17-18.
II. LEGAL STANDARD
To obtain a preliminary injunction, a party must demonstrate "(1) a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict on the nonmovant; and (4) that the entry of the relief would serve the public interest." Schiavo ex. Rel Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005); see also Levi Strauss & Co. v. Sunrise Int'l. Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995) (applying the test to a preliminary injunction in a Lanham Act case).
III. CONCLUSIONS OF LAW
The declarations the Plaintiff submitted in support of its Motion for Preliminary Injunction support the following conclusions of law:
A. The Plaintiff has a strong probability of proving at trial that (1) consumers are likely to be confused by the Defendants' advertisement, promotion, sale, offer for sale, or distribution of goods bearing and/or using counterfeits, reproductions, or colorable imitations of the Sahbabii Mark, and that (2) the products Defendants are selling and promoting for sale are copies of the Plaintiff's products which bear copies of the Sahbabii Mark.
B. Because of the infringement of the Sahbabii Mark, the Plaintiff is likely to suffer immediate and irreparable injury if a preliminary injunction is not granted. The following specific facts, as set forth in the Plaintiff's Complaint, Motion, and accompanying declarations, demonstrate that immediate and irreparable loss, damage, and injury will result to the Plaintiff and to consumers in view of the following considerations:
1. The Defendants own or control Internet based e-commerce stores and websites which advertise, promote, offer for sale, and sell products bearing counterfeit and infringing trademarks in violation of the Plaintiff's rights; and
2. There is good cause to believe that more counterfeit and infringing products bearing the Plaintiff's trademarks will appear in the marketplace; that consumers are likely to be misled, confused, and disappointed by the quality of these products; and that the Plaintiff may suffer loss of sales for its genuine products and an unnatural erosion of the legitimate marketplace in which it operates.
C. The balance of potential harm to the 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 the Plaintiff, its reputation, and its goodwill as manufacturers and distributors of quality products if such relief is not issued.
D. The public interest favors issuance of a preliminary injunction to protect the Plaintiff's trademark interests, to encourage respect for the law, to facilitate the invention and development of innovative products, and to protect the public from being defrauded by the illegal sale of counterfeit goods.
E. Under 15 U.S.C. § 1117(a), the Plaintiff may be entitled to recover, as an equitable remedy, the illegal profits gained through the Defendants' distribution and sales of goods bearing counterfeits and infringements of the Sahbabii Mark. See Reebok Int'l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992) (quoting Fuller Brush Prods. Co. v. Fuller Brush Co., 299 F.2d 772, 777 (7th Cir. 1962) ("An accounting of profits under § 1117(a) is not synonymous with an award of monetary damages: '[a]n accounting for profits . . . is an equitable remedy subject to the principles of equity.'")).
F. Requesting equitable relief "invokes the district court's inherent equitable powers to order preliminary relief, including an asset freeze, in order to assure the availability of permanent relief." Levi Strauss & Co., 51 F.3d at 987 (citing Federal Trade Commission v. United States Oil & Gas Corp., 748 F.2d 1431, 1433-34 (11th Cir. 1984)).
G. In light of the inherently deceptive nature of the counterfeiting business, and the likelihood that the Defendants have violated federal trademark laws, the Plaintiff has good reason to believe the Defendants will hide or transfer their ill-gotten assets beyond the jurisdiction of this Court unless those assets are restrained.
RECOMMENDATION
Upon review of the Plaintiff's Complaint, Motion, and supporting evidentiary submissions it is,
RESPECTFULLY RECOMMENDED that the Plaintiff's Motion for Preliminary Injunction) be GRANTED, under the terms set forth below:
(1) Each of the Defendants, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any of the Defendants having notice of this Order are restrained and enjoined until further order from this Court as follows:
a. From manufacturing, importing, advertising, promoting, offering to sell, selling, distributing, or transferring any products bearing the Sahbabii Mark, or any confusingly similar trademarks, other than those actually manufactured or distributed by the Plaintiff;
b. From secreting, concealing, destroying, selling off, transferring, or otherwise disposing of: (i) any products, not manufactured or distributed by the Plaintiff, bearing and/or using the Sahbabii Mark, or any confusingly similar trademarks; (ii) any evidence relating to the manufacture, importation, sale, offer for sale, distribution, or transfer of any products bearing and/or using the Sahbabii 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 of the Defendants, including, but not limited to, any assets held by or on behalf of any of the Defendants; and
(2) Each of the Defendants, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any of the Defendants having notice of this Order shall immediately discontinue the use of the Sahbabii Mark, or confusingly similar trademarks, 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.
(3) Each of the Defendants shall not transfer ownership of the Seller IDs during the pendency of this action, or until further Order of the Court.
(4) Upon receipt of notice of this Order, the Defendants and any third-party financial institutions, payment processors, banks, escrow services, money transmitters, or marketplace platforms who are providing services for any of the Defendants, including but not limited to, AliExpress, Alipay, Dhgate, Dhpay, Joom, Wish, Wishpay, Amazon, Amazon Pay, Ebay, Etsy, and/or Taobao, and their related companies and affiliates (collectively, the "Third Party Providers"), shall after receipt of notice of this Order, restrain the transfer of all funds, including funds relating to ongoing account activity, held or received for the Defendants' benefit or to be transferred into the Defendants' respective financial accounts, restrain any other financial accounts tied thereto, and immediately divert those restrained funds to a holding account for the trust of the Court. Such restraining of the funds and the disclosure of the related financial institution account information (as provided below) shall be made without notice to the account owners or the financial institutions until after those accounts are restrained. No funds restrained by this Order shall be transferred or surrendered by any Third-Party Provider 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.
(5) Any Defendant or Third-Party Provider subject to this Order may petition the Court to modify the asset restraint set out in this Order.
(6) This Order shall apply to the Seller IDs, associated e-commerce stores and websites, and any other seller identification names, e-commerce stores, domain names, websites, or financial accounts which are being used by Defendants for the purpose of counterfeiting and infringing the Sahbabii Mark at issue in this action and/or unfairly competing with Plaintiff.
(7) This Order shall remain in effect during the pendency of this action, or until such further dates as set by the Court or stipulated to by the parties.
(8) Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Federal Rule of Civil Procedure 65(c), the Plaintiff shall maintain its previously posted bond in the amount of Ten Thousand Dollars and Zero Cents ($10,000.00), as payment of damages to which the Defendants may be entitled for a wrongful injunction or restraint, during the pendency of this action, or until further Order of the Court.
The parties shall have fourteen (14) days from the date of receipt of this Report and Recommendation within which to serve and file written objections, if any, with the Honorable Marcia G. Cooke, United States District Judge. Failure to file objections timely shall bar the parties from a de novo determination by the District Judge of an issue covered in the Report and Recommendation and shall bar the parties from attacking on appeal unobjected-to factual and legal conclusions contained in the Report and Recommendation except upon grounds of plain error if necessary in the interest of justice. See 28 U.S.C § 636(b)(1); Harrigan v. Metro Dade Police Dep't Station #4, 977 F.3d 1185, 1191-1192 (11th Cir. 2020); Thomas v. Arn, 474 U.S. 140, 149 (1985); Henley v. Johnson, 885 F.2d 790, 794 (11th Cir. 1989); 11th Cir. R. 3-1 (2016).
RESPECTFULLY SUBMITTED in Miami, Florida this 14th day of May, 2021.
/s/ _________
JOHN J. O'SULLIVAN
CHIEF UNITED STATES MAGISTRATE JUDGE cc: counsel of record
Revised Schedule A
| Company Name | Store URL | |
|---|---|---|
| 1 | Wishroom Store | https://www.aliexpress.com/store/5870919 |
| 2 | Shop910413010 Store | https://www.aliexpress.com/store/910413010 |
| 3 | Export discounts Store | https://www.aliexpress.com/store/5138016 |
| 4 | Reliable Customized Dropshipping Store | https://www.aliexpress.com/store/911018034 |
| 5 | bring good luck Store | https://www.aliexpress.com/store/910986090 |
| 6 | High reputation Store | https://www.aliexpress.com/store/2201046 |
| 7 | Zhang Xiansen sweater shop Store | https://www.aliexpress.com/store/5876935 |
| 8 | Shop900235162 Store | https://www.aliexpress.com/store/900235162 |
| 9 | sedno Store | https://www.aliexpress.com/store/5496182 |
| 10 | Win99 Poster & Print PaintingStore | https://www.aliexpress.com/store/5429175 |
| 11 | Chinese factory direct sales Store | https://www.aliexpress.com/store/5885596 |
| 12 | Mr. yin Store | https://www.aliexpress.com/store/5101108 |
| 13 | aikooki K-pop Clothes Store | https://www.aliexpress.com/store/3654028 |
| 14 | Shop910543440 Store | https://www.aliexpress.com/store/910543440 |
| 15 | Shop2161024 Store | https://www.aliexpress.com/store/2161024 |
| 16 | Daily use Store | https://www.aliexpress.com/store/910554172 |
| 17 | Shop5721121 Store | https://www.aliexpress.com/store/5721121 |
| 18 | Shop5738194 Store | https://www.aliexpress.com/store/5738194 |
| 19 | Shop910353126 Store | https://www.aliexpress.com/store/910353126 |
| 20 | Babes & Gents // | https://www.amazon.com/sp?seller=A3T6KXR3EBSOW6 |
| 21 | Zanlamens | https://www.amazon.com/sp?seller=A383NEJYWN1KV1 |
| 22 | RainieS | https://www.amazon.com/sp?seller=A2PJYZPZVJR404 |
| 23 | wangjiguan | https://www.amazon.com/sp?seller=A1BTJSKW3RRX38 |
| 24 | Qess | https://www.amazon.com/sp?seller=APLZ8R4MJG4AH |
| 25 | MUNTHENLE | https://www.amazon.com/s?me=A1QKXG2U8IKLJ0&marketplaceID=ATVPDKIKX0DER |
| 26 | SUBLIA | https://www.amazon.com/sp?seller=A1YKFQX586E5CC |
| 27 | junwakk | https://www.amazon.com/sp?seller=A1V6L162JY2EY2 |
| 28 | Marcela Soto | https://www.amazon.com/s?me=A1MQP03HG8Z4UT&marketplaceID=ATVPDKIKX0DER |
| 29 | dripemporium's booth | https://www.bonanza.com/booths/dripemporium |
| 30 | sahrini | https://www.ebay.com/usr/sahrini |
| Company Name | Store URL | |
|---|---|---|
| 31 | gontulinte0 | https://www.ebay.com/usr/gontulinte0 |
| 32 | delisharminawat_0 | https://www.ebay.com/usr/delisharminawat_0 |
| 33 | enjodanan-0 | https://www.ebay.com/usr/enjodanan-0 |
| 34 | etienneppalcz_0 | https://www.ebay.com/usr/etienneppalcz_0 |
| 35 | artazarg0 | https://www.ebay.com/usr/artazarg0 |
| 36 | misand-41 | https://www.ebay.com/usr/misand-41 |
| 37 | alienprints | https://www.ebay.com/usr/alienprints |
| 38 | Quanqiuyyy | https://www.etsy.com/shop/Quanqiuyyy |
| 39 | DIYKitByEmma | https://www.etsy.com/shop/DIYKitByEmma |
| 40 | Hexiaowei2288 | https://www.wish.com/merchant/5f423dbb59bab0ce5857b8f0 |
| 41 | Lisa Perez | https://www.wish.com/merchant/5f54723b5118ed457160abc8 |
| 42 | houzhiyuan0034 | https://www.wish.com/merchant/5f86ba33c47f23a2101aa8ef |
| 43 | mawenwen Store | https://www.wish.com/merchant/5f421be2dd315e3faab31a3c |
| 44 | CHENSHAN51043 | https://www.wish.com/merchant/5b4af00ed5dbc25cebe2125a |
| 45 | VALERIE\tALVARADO | https://www.wish.com/merchant/5ed276afca29c46d408d9fb7 |
| 46 | jiakuan0202 | https://www.wish.com/merchant/5a6871816ecee06a6ef4332b |
| 47 | Careyou | https://www.wish.com/merchant/59487ca1abea913b2fca790f |
| 48 | sanshu | https://www.wish.com/merchant/5d3c44e00ff7f93d028c4e6e |
| 49 | Xhxgcgccvxgfhfcgcfc | https://www.wish.com/merchant/5eb010f2917f40ccb170cecd |
| 50 | adilanaimaidi Store | https://www.wish.com/merchant/5f479c63bc7d09e348a87107 |
| 51 | TINH | https://www.wish.com/merchant/5906a9287a32eb1cfab8cd20 |
| 52 | Qfdgchfhfhvhghfhvhghgfhgf | https://www.wish.com/merchant/5eb00345e3e3acf576f28e39 |
| 53 | Qixing trading Co.,LTD | https://www.wish.com/merchant/5837eb68ddce9b1b6db8eeab |
| 54 | All friends business | https://www.wish.com/merchant/5e9a60d4ef1dcef9adeb4051 |
| 55 | Li Peng commerce | https://www.wish.com/merchant/5e9abd6f7000cb8872b5e316 |
| 56 | duweijun1900 | https://www.wish.com/merchant/5ee07dfea7b72c5ee60194e6 |
| 57 | meijiee | https://www.wish.com/merchant/5ea137dac315de55f04e51ff |
| 58 | liyuting1 | https://www.wish.com/merchant/5ec09d66bf13a55a882b33fe |
| 59 | Maizai Underclothes | https://www.wish.com/merchant/5e881bdc29e7865b4020b909 |
| 60 | hruix | https://www.wish.com/merchant/5ee0556f977c482032541fcc |
| 61 | Aoalygiver Toys | https://www.wish.com/merchant/5ea7b619e251b2a0a0cb6b90 |
| 62 | Terbeily pants | https://www.wish.com/merchant/5e9bf7e3f5b57c32411455a4 |
| 63 | maypx | https://www.wish.com/merchant/5eaa69fd180840b2bb7a1e2b |
| 64 | Snow red business | https://www.wish.com/merchant/5e9bb2bdda2ff20e18431fef |
| Company Name | Store URL | |
|---|---|---|
| 65 | qiaohefei | https://www.wish.com/merchant/5edf55d0b925df8d01573b7f |
| 66 | Bienjiesiys coats | https://www.wish.com/merchant/5ea2a3527c1b816d9f95a8ae |
| 67 | Taiskyenry Baby's | https://www.wish.com/merchant/5f0fe726e14fa08ad7152ce9 |
| 68 | jijinp | https://www.wish.com/merchant/5ebb80abff621e5e60e94315 |
| 69 | zipengdaoyue | https://www.wish.com/merchant/5e9bc3feda2ff21f1542bb00 |
| 70 | Dingjinhua66059 | https://www.wish.com/merchant/5f027d1e773e9d35d64463fc |
| 71 | LLEIX | https://www.wish.com/merchant/5eb10db21e5f49ae010871e7 |
| 72 | Lihaoery Bedfits | https://www.wish.com/merchant/5ea7a9cd45690723830f4ab5 |
| 73 | jielong0634 | https://www.wish.com/merchant/5e9a90dff5b57c3241126162 |
| 74 | chenxieyang | https://www.wish.com/merchant/5efed82b30709c93d1a68e2f |
| 75 | whpongbo | https://www.wish.com/merchant/5ece0442564ca856a1f532d4 |
| 76 | Jiang you112700 | https://www.wish.com/merchant/5f1652e57f59424c45e741b1 |
| 77 | zhaoxue1224 | https://www.wish.com/merchant/5f02d156dedeab2ac3a1600d |
| 78 | gnhhjgyhguyda | https://www.wish.com/merchant/5e8dd65354e2aa78ff8a3662 |
| 79 | chhui | https://www.wish.com/merchant/5eddf4546c327829c3201694 |
| 80 | xolbi | https://www.wish.com/merchant/5f04268062efb90ac3e4478d |
| 81 | Haersenfuny shaver | https://www.wish.com/merchant/5ea680d9a5ae3c5f7a6c0a7a |
| 82 | liweijieg | https://www.wish.com/merchant/5f0184de248a7a8ff759c5f2 |
| 83 | liguangqiang | https://www.wish.com/merchant/5efec2c592285a6baa7c49a7 |
| 84 | mjun | https://www.wish.com/merchant/5eb7b35e6de015448856fb72 |
| 85 | gtgyrt | https://www.wish.com/merchant/5f0fd41d32e1d277ca5fa12c |
| 86 | xueqiaoe;; | https://www.wish.com/merchant/5f0eb9e255baf7b266d1090b |
| 87 | yinyongqiang45765 | https://www.wish.com/merchant/5ffbc9b915549854a38e8c18 |
| 88 | lomhsjiemng | https://www.wish.com/merchant/5e97ed5d96126c4b1f70b32a |
| 89 | liufenfeng | https://www.wish.com/merchant/5efd870f054ce6a86bfea99e |
| 90 | dmocmeufi | https://www.wish.com/merchant/5e97c9b2654fc10b02e500b8 |
| 91 | Yieryzaihan Bedfits | https://www.wish.com/merchant/5ea27b0d994bf04a857499dd |
| 92 | YH7 | https://www.joom.com/en/stores/5d26b59b36b54d0301696f37 |
| 93 | QH5 St | https://www.joom.com/en/stores/5d26b5621436d4030122ca10 |
| 94 | AstroAA | https://www.redbubble.com/people/AstroAA/shop |
| 95 | AlexQ | https://www.redbubble.com/people/AlexQ/shop |
| 96 | StanedShop | https://www.redbubble.com/people/StanedShop/shop |
| 98 | julianzgongora | https://www.redbubble.com/people/julianzgongora/shop |
| 99 | RaspberryArtist | https://www.redbubble.com/people/RaspberryArtist/shop |
| Company Name | Store URL | |
|---|---|---|
| 100 | Bradleyharmon | https://www.redbubble.com/people/Bradleyharmon/shop |
| 101 | Jamie D Casey | https://www.redbubble.com/people/jonell2515/shop |
| 103 | TrapHouseMoney | https://www.redbubble.com/people/TrapHouseMoney/shop |
| 104 | yungkiki2000 | https://www.redbubble.com/people/yungkiki2000/shop |
| 105 | AlexQ | https://www.teepublic.com/t-shirt/3190112-sahbabii |