Home It, Inc. v. Wen
| Decision Date | 21 January 2020 |
| Docket Number | 19-CV-7070 (MKB) (VMS) |
| Parties | HOME IT, INC., Plaintiff, v. WUPIN WEN, SHENZHEN TRYNOW INTELLECTUAL PROPERTY CO., LTD., and JOHN DOES 1-10, Defendants. |
| Court | U.S. District Court — Eastern District of New York |
Plaintiff seeks entry of a preliminary injunction pursuant to Federal Rule of Civil Procedure 65. For the reasons stated herein, the Court grants Plaintiff's motion for entry of a preliminary injunction against Defendant Wen.2
The Court assumes the parties' familiarity with the relevant facts and procedural history in this case and incorporates by reference its December 23, 2019 decision on Plaintiff's previous motion for a temporary restraining order. (See generally Dec. 23, 2019 Memorandum & Order,Dkt. 13); see also Home It, Inc. v. Wen, No. 19-CV-7070 (MKB) (VMS), 2019 WL 7168370 (E.D.N.Y. Dec. 23, 2019). Additionally, pursuant to Federal Rule of Civil Procedure 52(a)(2), the Court makes the following findings of fact in support of its entry of a preliminary injunction against Defendant Wen.
Plaintiff is a New York Corporation that sells home furniture and organizing products through e-commerce portals. (Teitelbaum Dec., Dkt. 5-2, ¶ 2.) Its business is particularly reliant on selling items on Amazon. (Second Declaration of Joel Teitelbaum ("Teitelbaum Supp. Dec."), Dkt. 18, ¶¶ 14-15.) Plaintiff began using Saganizer as a mark "to identify some of its products in late 2014 and began using the trademark Saganizer in 2015 on or in association with many of its products." (Teitelbaum Dec., Dkt. 5-2, ¶¶ 3-4.) Plaintiff's use of Saganizer was as a common law trademark; Plaintiff did not formally register this trademark with the United States Patent and Trademark Office ("PTO"). (Id. ¶ 6.)
In August 2016, Defendant Wen filed an application for the Saganizer trademark, with the help of Defendant Shenzhen Trynow Intellectual Property Co., Ltd. ("Trynow"). (Exhibit 2 to Declaration of Ariel Peikes, Esq. ("Peikes Dec."), Dkt. 5-4, at ECF3 4-10.) The application states that "the mark was first used by the applicant . . . at least as early as 02/01/2015, and first used in commerce at least as early as 02/01/2015, and is now in use in such commerce." (Id. at ECF 7.) The application also includes a picture of a Lazy Susan product with the trademark "saganizer" on it. (Id. at ECF 10.) This appears to be the same picture used by Plaintiff to advertise its common-law-trademarked Lazy Susan Turntable 360-degree product, except that, unlike the product depicted in Defendant's photograph, Plaintiff's Lazy Susan does not contain a "Saganizer" labelon it. (Teitelbaum Dec., Dkt. 5-2, at ECF 3-4; id. ¶ 12 ().) The PTO issued a trademark registration for the Saganizer trademark to Defendant Wen in March 2017. (Trademark Registration, Dkt. 5-4, at ECF 2.)
The contact emails provided in Defendant Wen's trademark registration application, trademark@cn-ip.cn and trynow@cn-ip.cn, have been used on several other trademark applications by other individuals and businesses. (Peikes Dec., Dkt. 5-3, ¶ 13 ().) However, as soon as these trademarks became the subject of litigation or challenge, the purported rights owners abandoned or otherwise failed to defend these trademarks.
On December 13, 2019, Amazon informed Plaintiff that three products listed for sale through one of Plaintiff's storefronts on Amazon were delisted because "one or more of your listings may be infringing the intellectual property rights of others." (Exhibit C to Teitelbaum Dec., Dkt. 5-2, at ECF 17-18; see also Teitelbaum Dec., Dkt. 5-2, ¶ 18.) Though the contact information listed in the notice from Amazon was for a "Ruby" (Exhibit C to Teitelbaum Dec., Dkt. 5-2, at ECF 18), Plaintiff has learned that the complaint was brought by Defendant Wen, relying on her Saganizer trademark (Teitelbaum Dec., Dkt. 5-2, ¶ 7). In its notice to Plaintiff, Amazon also informed Plaintiff that "[w]e only accept retractions if the rights owner clearly states that they made an error." (Exhibit C to Teitelbaum Dec., Dkt. 5-2, at ECF 18.) Plaintiff has attempted to contact Defendant Wen to address this issue, but has received no response. (Teitelbaum Supp. Dec., Dkt. 18, ¶¶ 6-7.)
Amazon constantly monitors and scores each seller's account performance through an Account Health dashboard that "shows how well [its] account is performing against the performance metrics and policies required to sell on Amazon." (Exhibit C to Teitelbaum Dec., Dkt. 5-2, at ECF 18; see also Teitelbaum Supp. Dec., Dkt. 18, ¶¶ 9-11.) Plaintiff's account indicates that, including Defendant Wen's complaint, there are intellectual property complaints against five of Plaintiff's products. (Teitelbaum Supp. Dec., Dkt. 18, ¶ 11.) Amazon can suspend sellers from Amazon without any warning. (Id. ¶ 13.) Given the number of intellectual property complaints against Plaintiff, it is at imminent risk of being suspended from selling on Amazon altogether. (Id. ¶ 12.) A total suspension from Amazon would destroy Plaintiff's business. (Id. ¶¶ 14-15.)
On December 23, 2019, the Court denied Plaintiff's motion for a Temporary Restraining Order ("TRO") as to Defendant Wen,4 finding that Plaintiff had failed to establish irreparable harm. (See Dec. 23, 2019 Minute Entry); see also Home It Inc., 2019 WL 7168370, at *2. The Court held a hearing on Plaintiff's motion for a preliminary injunction on January 13, 2020. (See Jan. 13, 2020 Minute Entry.) Plaintiff did not submit any additional evidence in support of its motion before the hearing. However, at the hearing, Plaintiff articulated new theories for why itis entitled to a preliminary injunction, and per the Court's instructions, submitted additional evidence in support of these arguments on January 15, 2020. (See generally Dkts. 17-19.) Plaintiff seeks a preliminary injunction order requiring Defendant Wen to contact Amazon to withdraw her allegations of infringement against Plaintiff and refrain from filing or otherwise communicating any allegations of infringement against Plaintiff to any third parties for the duration of the instant litigation. (See Proposed Preliminary Injunction Order, Dkt. 17-1.)
"[A] preliminary injunction is 'an extraordinary remedy never awarded as of right.'" Benisek v. Lamone, 138 S. Ct. 1942, 1943, (2018) (quoting Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7, 24 (2008)).
A party seeking a preliminary injunction must demonstrate: (1) a likelihood of success on the merits or [ ] sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the plaintiff's favor; (2) a likelihood of irreparable injury in the absence of an injunction; (3) that the balance of hardships tips in the plaintiff's favor; and (4) that the public interest would not be disserved by the issuance of an injunction.
Khan v. Addy's BBQ LLC, No. 19-CV-2235 (SJF) (AYS), 2019 WL 5781941, at *6 (E.D.N.Y. Nov. 6, 2019) (quoting Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887, 895 (2d Cir. 2015)); see also Winter, 555 U.S. at 21; Salinger v. Colting, 607 F.3d 68, 75 (2d Cir. 2010). "The purpose of such interim equitable relief is not to conclusively determine the rights of the parties, . . . but to balance the equities as the litigation moves forward." Trump v. Int'l Refugee Assistance Project, 137 S. Ct. 2080, 2087 (2017) (citations omitted); see also American Civil Liberties Union v. Clapper, 804 F.3d 617, 622 (2d Cir. 2015) ().
"The showing of irreparable harm is [p]erhaps the single most important prerequisite for the issuance of a preliminary injunction, and the moving party must show that injury is likely before the other requirements for an injunction will be considered." Allstate Ins. Co. v. Elzanaty, 929 F. Supp. 2d 199, 221 (E.D.N.Y. 2013) (quoting Kamerling v. Massanari, 295 F.3d 206, 214 (2d Cir. 2002)). To show irreparable harm the moving party must establish that "'there is a continuing harm which cannot be adequately redressed by final relief on the merits' and for which 'money damages cannot provide adequate compensation.'" Id. (quoting Kamerling, 295 F. 3d at 214); see also Allstate Ins. Co. v. Harvey Family Chiropractic, 677 F. App'x 716, 718 (2d Cir. 2017) (summary order) ("Irreparable harm exists 'where, but for the grant of equitable relief, there is a substantial chance that upon final resolution of the action the parties cannot be returned to the positions they previously occupied.'") (quoting Brenntag Int'l Chem., Inc. v. Bank of India, 175 F.3d 245, 249 (2d Cir. 1999)). Additionally, "irreparable harm must be shown to be actual and imminent, not remote or speculative." Elzanaty, 929 F. Supp. 2d at 221 (internal quotation marks and citation omitted); see also WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 285 (2d Cir. 2012) ().
Plaintiff argues that it will suffer irreparable harm absent a preliminary injunction because "Amazon is likely at this point to suspend the HomeIt account without prior notice." (Plaintiff'sSupplemental Memorandum of Law ("Pl.'s Supp. Br."), Dkt. 17, at 5.)5 "[T]he loss of an ongoing business representing many years...
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