Case 1:23-cv-08926-SHS Document 94 Filed 01/25/24 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`ATARI INTERACTIVE, INC.,
`
`Plaintiff,
`
`-against-
`PRINTIFY, INC., JANIS BERDIGANS, and
`JOHN DOES 1-10,
`
`Defendants.
`
`
`
`23-CV-8926 (SHS)
`
` Opinion & Order
`
`SIDNEY H. STEIN, U.S. District Judge.
`Atari Interactive, Inc., a video game company that licenses its widely known
`trademarks for use on a variety of merchandise, brings this trademark infringement
`action against Printify, Inc., a print-on-demand company, and its founder Janis
`Berdigans. Following the entry of an ex parte temporary restraining order (“TRO”),
`Atari now moves for the entry of a preliminary injunction prohibiting defendants from
`infringing Atari’s trademarks. Because Atari has not shown that it is likely to succeed
`on the merits or that it will suffer irreparable harm absent a preliminary injunction, the
`Court denies Atari’s motion.
`
`I. Background
`
`Print-on-demand providers, such as Printify, facilitate the design, purchase, and
`fulfillment of custom merchandise. That custom merchandise is, at times, designed with
`infringing marks. A central issue in this action is whether Printify’s participation in the
`process crosses the line from mere facilitation to “use” of the allegedly infringing marks
`by Printify. Accordingly, a detailed explanation of Printify’s operations is necessary.
`Printify’s customers (“merchants”) are typically businesses who want to design
`and sell merchandise, such as t-shirts or coffee mugs, to end-consumers on third-party
`websites. Think of the merchant as a corner coffee shop or someone who wants to start
`a business selling apparel with custom designs; the third-party website as either online
`marketplaces like eBay or Etsy, or as the coffee shop’s own website; and the end-
`consumer as whoever purchases the t-shirt or coffee mug. Without a print-on-demand
`solution, a merchant would often need to place an upfront, bulk order of the
`merchandise it wishes to sell and hold the merchandise as inventory. In contrast,
`Printify allows the merchant to print individual products if and when they are ordered,
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`and have those products shipped directly to the end-consumer through Printify’s
`network of third-party printers. Such a process is designed to reduce upfront costs to
`the merchant. (Decl. of Anastasija Oleinika, ECF No. 53-1 ¶ 7.)
`Printify’s process of print-on-demand works as follows: First, a merchant selects
`a particular product (e.g., “Unisex Crewneck Sweatshirt”) and uses Printify’s built-in
`software to add whatever design the merchant wants to add to the product. A merchant
`can upload its own images for the design or choose from a library of images supplied
`by Shutterstock, among other options. (Id. ¶¶ 7-8.) Printify’s operations are significant
`in size: roughly 120,000 images are uploaded to Printify every day, adding to the 121
`million images already in Printify’s database of images. (Id. ¶ 22.) A merchant cannot
`view or use images uploaded by other merchants and Printify claims that the images
`provided through Shutterstock are licensed. (Id. ¶¶ 8, 28.) Each product also contains a
`default, generic text description of the physical product (i.e., t-shirt), but the merchant
`can choose to revise the description in order to add details about its custom design. (Id.
`¶¶ 10, 17.) Printify does not review the product design at any time in the process. (Id. ¶
`9.)
`
`Once the product is designed, the merchant “publishes” the product, adding it to
`Printify’s database of available products for purchase. (Id. ¶ 11.) Aside from a “small
`percentage” of merchants who have a “Printify Pop-Up” store, which is a storefront
`hosted by Printify, merchants do not sell their products on Printify’s website. Instead,
`merchants usually link their Printify account to an external sales channel, such as Etsy,
`Shopify, or eBay, and customers purchase the product through those channels. (Id. ¶¶
`12-14.) The merchandise can also be sold on the merchant’s own website. (Id. ¶ 12.)
`Once a customer purchases a product, the order is routed through Printify to a third-
`party printer, which manufactures the product and ships it directly to the end customer.
`(Id. ¶¶ 18, 21.) This entire process is automated, and though Printify conducts periodic
`quality checks on the printers to ensure the printers meet Printify’s overall product
`standards, Printify does not review products before they are shipped to the customer.
`(Id. ¶¶ 18-19.) The merchant chooses what return address will be used on the mailing
`package, and neither the packaging nor the product itself identifies Printify in any way.
`(Id. ¶ 15; ECF No. 28-5.) Printify never takes possession of the product and does not
`hold any inventory of the product. For certain merchants, Printify will handle customer
`service functions, such as facilitating customer feedback and complaints. (See, e.g., ECF
`No. 66-9.) For each piece of merchandise, Printify charges the merchant a fixed fee and
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`the merchant independently decides what price the end-consumer will be charged for
`the merchandise. (Oleinika Decl. ¶ 20.)
`Due to the volume of images uploaded and the automated nature of Printify’s
`processes, Printify states that manually reviewing whether merchant designs violate
`any intellectual property rights “would be inefficient, costly, and practically
`impossible.” (Id. ¶ 18.) Still, Printify’s intellectual property policy clearly prohibits
`infringement, affirming that Printify will “either disable or terminate the accounts of
`Users who infringe or are repeatedly charged with infringing” intellectual property
`rights. (Id. ¶ 26.) But because proactive monitoring for infringement is “practically
`impossible” given the 120,000 images that are uploaded to its platform daily, Printify
`“relies on IP owners to help Printify identify and stop” infringement. (Id. ¶ 18.)
`Atari brings this lawsuit because it identified products, designed and offered by
`merchants, which allegedly infringe on Atari’s trademarks, including the well-known
`Atari logo. (See, e.g., Am. Compl., ECF No. 63 ¶ 43.) Specifically, Atari claims that
`Printify and its founder Janis Berdigans have facilitated merchandise orders that violate
`Atari’s registered trademarks and are liable for direct copyright infringement (15 U.S.C.
`§ 1114), contributory copyright infringement,1 trademark dilution (15 U.S.C. § 1125(c)),
`false designation of origin (15 U.S.C. § 1125(a)), and unfair competition under New
`York common law.
`Prior to initiating this lawsuit, Atari sent cease-and-desist letters to various
`merchants with potentially infringing products.2 Printify itself was not sent and did not
`receive any of these letters. (Decl. of Katie Kavanaugh, ECF No. 28 ¶ 2; Oleinika Decl.
`¶¶ 23, 29.) However, once Printify was put on notice of the infringement by this
`lawsuit, it took meaningful steps to remove identifiable infringing content from its own
`system. (Id. ¶¶ 31-42.) As described in more detail below, Printify removed potentially
`infringing products from Printify’s database, which effectively disables a merchant
`
`
`
`1 “Contributory trademark infringement is a judicially created doctrine that derives from the common
`law of torts.” Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 103 (2d Cir. 2010).
`2 Atari claims that its counsel “sent 70 cease and desist letters” (ECF No. 25 at 2) to “various e-commerce
`storefronts believed to be associated with Defendants.” (Kavanaugh Decl. ¶ 2.) At oral argument, Atari
`continued to elide the difference between merchant storefronts and Printify, emphasizing repeatedly to
`the Court that infringing products were still available without clarifying that the product listings were, in
`fact, on merchant websites. (ECF No. 84.) The only listings presented at oral argument from Printify’s own
`website were created by counsel for Atari for purposes of this litigation. (See ECF No. 79-1.)
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`from fulfilling a customer’s order of that product through Printify’s system. Printify has
`no control over merchants’ customer-facing websites, and therefore cannot remove
`infringing products from those sites. (Id. ¶ 17.) Indeed, as Atari points out, infringing
`products appear to still be available on the merchants’ websites. (See, e.g., ECF Nos. 64-
`12, 64-13.) Moreover, removing the specific instances identified by Atari from Printify’s
`own database does not stop a merchant from designing a new infringing product
`tomorrow. Potentially infringing Atari marks are also still available if listed in the
`Shutterstock library. (See, e.g., ECF No. 64-15.)
`Atari initially moved for an ex parte TRO, which the Court granted on October 24,
`2023. (ECF No. 21.) In that TRO, the Court granted Atari’s request to freeze Printify’s
`assets based on Atari’s ex parte representation that Printify “likely will hide or move
`their ill-gotten funds to offshore bank accounts” and is “likely to take whatever action
`they can to hide, move, conceal, or potentially squander assets to avoid enforcement as
`soon as they find out about this suit.” (ECF No. 25 at 29-30.) After being notified by
`financial institutions that its accounts were frozen, Printify agreed to a joint stipulation
`modifying the TRO to remove the asset freeze provisions. (ECF No. 11.) There is no
`evidence in this record that Printify ever intended to hide or move its assets to offshore
`bank accounts.
`Atari now moves for a preliminary injunction against Printify; oral argument
`was held on December 12, 2023.
`
`II. Discussion
`
`A. Legal Standard
`A preliminary injunction “is an extraordinary and drastic remedy, one that
`should not be granted unless the movant, by a clear showing, carries the burden of
`persuasion.” Sussman v. Crawford, 488 F.3d 136, 139 (2d Cir. 2007) (per curiam)
`(emphasis in original) (quoting Mazurek v. Armstrong, 520 U.S. 968, 972 (1997)). See also
`Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008) (“A preliminary injunction is an
`extraordinary remedy never awarded as of right.”). A party seeking a preliminary
`injunction must show “(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.” Colony Grill Dev., LLC v. Colony Grill, Inc., Nos. 23-507-cv, 23-691-cv, 2023
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`U.S. App. LEXIS 27798, at *6 (2d Cir. Oct. 19, 2023) (quoting Benihana, Inc. v. Benihana of
`Tokyo, LLC, 784 F.3d 887, 895 (2d Cir. 2015)).
`B. Atari Has Not Shown a Likelihood of Success on the Merits
`Atari urges that a preliminary injunction is warranted based on its likelihood of
`succeeding on claims of (1) direct trademark infringement, (2) contributory trademark
`infringement, (3) trademark related and state law claims, and (4) claims against Janis
`Berdigans.3 Each will be addressed in turn.
`1. Direct Trademark Infringement
`A defendant is liable for infringement under the Lanham Act if it, “without the
`consent of the registrant, use[s] in commerce any reproduction, counterfeit, copy, or
`colorable imitation of a registered mark in connection with the sale, offering for sale,
`distribution, or advertising 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 counterfeit mark is defined as “a spurious mark which is identical with, or
`substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. Courts
`analyze Lanham Act claims using a two-prong test: (1) whether the plaintiff’s mark is
`entitled to protection; and (2) whether defendant’s use of the mark is likely to cause
`confusion. See Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016).
`Printify does not dispute that the mark is entitled to protection, that confusion is
`likely, or that the alleged infringements meet the definition of counterfeit. Instead,
`Printify contends that it does not “use” the marks as a seller within the meaning of the
`Lanham Act because, as a “broker between artists (Merchants), their customers, and the
`printers,” Printify “merely facilitates or assists others’ use” of the marks. (ECF No. 53 at
`10.) The statutory definition for “use in commerce” is broad and encompasses “the bona
`fide use of a mark in the ordinary course of trade” when “placed in any manner on the
`goods . . . and the goods are sold or transported in commerce.” 15 U.S.C. § 1127. Even
`so, cases do find that the statute does not necessarily apply to brokers, facilitators, or
`transactional intermediaries. As the U.S. Court of Appeals for the Sixth Circuit
`explained, passive marketplaces like eBay or Amazon “that facilitate sales for
`
`
`
`3 Atari does not seek a preliminary injunction on the alternative basis that there are “sufficiently serious
`questions going to the merits to make them a fair ground for litigation and a balance of hardships tip[s]
`decidedly in the plaintiff's favor.” Colony Grill, 2023 U.S. App. LEXIS 27798, at *6. Accordingly, the Court
`will not analyze this alternative.
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`independent vendors . . . generally escape Lanham Act liability,” while “parties who
`design and print trademark-infringing goods typically violate the Lanham Act.” Ohio
`State Univ. v. Redbubble, Inc., 989 F.3d 435, 446 (6th Cir. 2021); see also GMA Accessories,
`Inc. v. BOP, LLC, 765 F. Supp. 2d 457, 464 (S.D.N.Y. 2011) (denying plaintiff’s summary
`judgment on direct infringement because the evidence was insufficient to support
`finding the defendant was a seller, as opposed to a broker). The critical question is
`where the alleged infringer—here, Printify—falls on the following spectrum: does it
`“avoid[] liability by acting as a passive facilitator,” or exercise sufficient control “over
`the creation, manufacture, or sale of offending goods to be considered akin to a ‘seller’
`or ‘manufacturer’ to whom Lanham Act liability applies?” Ohio State Univ., 989 F.3d at
`447.
`
`This is not the first trademark infringement lawsuit to be brought against a print-
`on-demand company. For example, the parties cite to multiple cases against the print-
`on-demand company Redbubble, Inc., which analyze whether it is liable for “using” a
`mark under the Lanham Act. Though these out-of-circuit decisions are not binding on
`this Court, their reasoning is applicable to this case.
`One of the cases against Redbubble was also brought by Atari. In Atari
`Interactive, Inc. v. Redbubble, Inc., 515 F. Supp. 3d 1089 (N.D. Cal. 2021), the U.S. District
`Court for the Northern District of California analyzed similar infringement claims
`against Redbubble, an online marketplace where customers could purchase
`merchandise with artist-designed content, including content that infringed on Atari’s
`trademarks. The court denied both parties’ summary judgment motions on direct
`infringement, finding that “while there is something much more than ‘no evidence’ that
`Redbubble acts as a seller, Atari has not established that Redbubble is a seller as a
`matter of law.” Id. at 1105. This evidence included Redbubble’s involvement in selecting
`the physical products, taking responsibility for damaged goods and arranging
`replacements, and handling excess inventory from returns. Id. at 1102-1103. The case
`proceeded to trial and a jury found that Redbubble was not liable for direct
`infringement. See Jury Verdict, Atari Interactive, Inc. v. Redbubble, Inc., No. 18-cv-03451
`(N.D. Cal. Nov. 4, 2021), ECF No. 253.
`In Ohio State Univ., the Sixth Circuit also analyzed infringement claims against
`Redbubble and denied summary judgment on those claims, finding that the record
`below lacked sufficient factual development to decide whether Redbubble was selling
`goods or acting as an intermediary. Ohio State Univ., 989 F.3d at 448. The district court
`had granted summary judgment for Redbubble on the grounds that it did not “use”
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`Ohio State’s trademarks in operating its business because it acted only as a
`“transactional intermediary” between buyers, sellers, manufacturers, and shippers. Id.
`at 441. The circuit court set out certain factors to consider in determining whether
`Redbubble was using the marks, including “the degree of control and involvement
`exercised by Redbubble over the manufacturing, quality control, and delivery of goods
`to consumers.” Id. at 448. Based on its analysis of the record below, the Sixth Circuit
`reversed the district court decision, providing the following explanation for why the
`district court’s grant of summary judgment for Redbubble had been improper:
`“[O]ne key distinction between a direct seller who ‘uses’ a trademark under the
`Act and a mere facilitator of sales who does not is the degree to which the party
`represents itself, rather than a third-party vendor, as the seller, or somehow
`identifies the goods as its own. A retailer who sells products directly to a
`customer at a brick-and-mortar store is indisputably a seller to whom the
`Lanham Act applies. An online marketplace like eBay that clearly indicates to
`consumers that they are purchasing goods from third-party sellers is not. Here,
`although the record is sparse, it appears that products ordered on Redbubble's
`website do not yet exist, come into being only when ordered through Redbubble,
`and are delivered in Redbubble packaging with Redbubble tags. Under those
`facts, the district court erred in affirmatively placing Redbubble on the passive
`end of the liability spectrum.”
`Id. (internal citations omitted).
`
`As in the Redbubble cases, the evidence before this Court is mixed. Atari urges
`that Printify is more akin to a seller than a facilitator, with a high degree of control over
`the infringing products. For example, Printify provides the software that merchants use
`to design the potentially infringing products, provides access to potentially infringing
`images through the Shutterstock library, monitors the quality of the printers, and
`engages in various customer support activities. Printify, on the other hand, emphasizes
`the facts suggesting it is a passive facilitator of orders by merchants. In particular,
`Printify does not design the products, does not manufacture or print the products, and
`does not ship the products. The products are quality-checked by the third-party printer
`and Printify claims that it engages in routine monitoring only to ensure that the printer
`is generally up to Printify’s standards. Aside from the “small percentage” of merchants
`who use Printify Pop-Up Shops, the products are not sold on Printify-operated
`websites.
`
`Based on the facts presented at this early stage of litigation, Atari’s case for direct
`infringement against Printify is weaker than was its case against Redbubble in the
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`Northern District of California. Customers purchase goods directly on Redbubble’s
`website and the order arrives with Redbubble tags in Redbubble packaging. This differs
`significantly from Printify. The vast majority of Printify customers purchase directly
`from the merchant, the orders do not arrive in Printify packaging, and Printify does not
`otherwise “identif[y] the goods as its own.” (ECF Nos. 28-4, 28-5, 28-6.) Customers go
`through the entire purchase process—from browsing to ordering to receiving
`delivery—without any knowledge that the order is being facilitated by Printify.4
`Notably, even though the evidence of Redbubble having “used” Atari’s trademark was
`stronger in Atari Interactive, Inc. v. Redbubble, Inc., No. 18-cv-03451 (N.D. Cal.) than it is
`here, the jury in that case found against Atari when the action went to trial.
`Accordingly, the Court is not persuaded that Atari is likely to succeed in this facially
`weaker case.
`The additional cases cited by the parties do not suggest otherwise. Atari cites a
`case in which the U.S. District Court for the District of Wisconsin determined that
`SunFrog, another print-on-demand company, “used” the infringed marks of Harley-
`Davidson (“H-D”). H-D U.S.A., LLC v. SunFrog, LLC, 311 F. Supp. 3d 1000 (E.D. Wis.
`2018). However, this case is distinguishable on the facts and H-D’s claims against
`SunFrog appear significantly stronger than Atari’s current claims against Printify. As
`the court described, SunFrog “advertises infringing designs and trains and encourages
`others to do so, owns and runs its automated printers that print the infringing designs
`onto physical goods, handles products after they come off of the printers, bags and
`ships those products, and processes payment.” Id. at 1029-30. SunFrog also runs “an
`online retail marketplace” for consumers to purchase the goods and “affixes its own
`trademarks and logos” to the product. Id. at 1013-14. Accordingly, SunFrog “exerts
`control over nearly every aspect of the advertising, sale, and manufacture of the
`infringing goods, save designing the mockups.” Id. at 1030. By contrast, there is no
`evidence in this record that Printify engages in any advertising or trains or encourages
`anyone to use infringing designs. In addition, the evidence does reflect that Printify does
`not own or operate any printers, does not handle the products after printing, and does
`not ship or affix its logo to any products.
` Finally, the lone case from our Circuit cited by the parties on this issue generally
`supports Printify’s position. In GMA Accessories, Inc. v. BOP, LLC, 765 F. Supp. 2d 457
`
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`4 Again, with the exception of the “small percentage” of merchants who have a Printify Pop-Up store.
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`(S.D.N.Y. 2011), a trademark holder sued a wholesale clothing showroom company that
`displayed counterfeit products on its showroom floor. As here, the defendant claimed
`that it was a broker of the products and should not be liable as a seller. In that case,
`Judge P. Kevin Castel denied plaintiff’s summary judgment motion, finding “no
`evidence that [defendant] took title to the merchandise, maintained an inventory of
`merchandise, bore the risk of loss or other traditional indicia of status as seller.” Id. at
`464. The court also credited evidence that the defendant only collected commissions on
`the sales, which is consistent with being a broker. Id. Here, though Printify is more
`actively involved than a passive showroom broker, it does not take title to merchandise
`or maintain inventory. Printify’s fee-based payment structure is also consistent with
`being an intermediary. Accordingly, these indicia also support finding for Printify.
`In sum, Atari has not shown it is likely to be successful in demonstrating that
`Printify is “using” its marks, as opposed to acting as a passive facilitator.
`2. Contributory Trademark Infringement
`A defendant is liable for contributory trademark infringement if (1) it
`intentionally induces another to infringe a trademark or (2) it continues to supply its
`service to one whom it knows or has reason to know is engaging in trademark
`infringement. See Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 106 (2d Cir. 2010) (citing
`Inwood Labs. v. Ives Labs., 456 U.S. 844, 854 (1982)). For the second prong, general
`knowledge of infringement is insufficient. Instead, “[s]ome contemporary knowledge of
`which particular listings are infringing or will infringe in the future is necessary” for a
`determination that the defendant engaged in contributory trademark infringement.
`Tiffany, 600 F.3d at 107 (emphasis added). Where a defendant on notice of specific
`infringement “undertakes bona fide efforts to root out infringement, . . . that will
`support a verdict finding no liability, even if the defendant was not fully successful in
`stopping infringement. But if the defendant decides to take no or little action, it will
`support a verdict finding liability.” Omega SA v. 375 Canal, LLC, 984 F.3d 244, 255 (2d
`Cir. 2021).
`
`The first prong of the test—intentionally inducing another to infringe a
`trademark—is not at issue. Regarding the second prong, Printify was put on notice as to
`certain potential infringing uses as of the filing of this lawsuit. At issue, then, is whether
`Printify has undertaken bona fide efforts to remove those particular listings. The answer
`is yes.
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`Specifically, Printify has undertaken two strategies to remove potentially
`infringing marks after being put on notice. First, Printify searched its own database for
`the 70 URLs identified by Atari in ECF No. 28-1 as linking to merchant websites with
`potentially infringing products. Printify manually reviewed a sample of nearly 60,000 of
`those merchants’ product sales and removed from its database the 37 products that it
`identified as potentially infringing. In addition, Printify proactively searched its
`database for keywords such as “Atari,” manually reviewed the results, and removed
`any additional potentially infringing uses from the database. (Oleinika Decl. ¶¶ 31-42.)
`Atari has introduced no evidence to the contrary. Once a product has been removed
`from the database, the merchant is unable to place orders with Printify for those
`products. (Oleinika Decl. ¶ 42.) A similar approach was deemed sufficient to deny
`Atari’s summary judgment motion against Redbubble. Atari Interactive, Inc. v. Redbubble,
`Inc., 515 F. Supp. 3d at 1109 (finding Redbubble’s keyword searches and an “attempt[]
`to screen based on its own judgment” was not “unreasonable”).
`Atari raises three arguments in response. First, Atari contends that Printify’s
`“limited, manual keyword searches” and plan to remove infringements only when
`notified are insufficient—especially where another print-on-demand company’s similar
`approach using “anticounterfeiting technology” was deemed insufficient in SunFrog,
`311 F. Supp. 3d 1000. (ECF No. 66 at 6.) But, as discussed above, the facts in SunFrog are
`distinguishable. While the court did find that SunFrog “cannot build a business around
`promoting and manufacturing infringing designs and then be freed from liability
`merely because it offers a notice-and-takedown procedure,” SunFrog, 311 F. Supp. 3d at
`1039, Printify does not promote or manufacture the infringing designs.5 The relatively
`low number of potential infringements compared to the total number of images in
`
`
`
`5 Atari relies on SunFrog to suggest that Printify is willfully blind to infringement and therefore does not
`need to be put on notice of specific infringing products under the eBay standard. See Omega SA v. 375
`Canal, LLC, 984 F.3d 244, 248 (2d Cir. 2021) (“In Tiffany, we held that a defendant may be liable for
`contributory trademark infringement if it was willfully blind as to the identity of potential infringers—
`that is, under circumstances in which the defendant did not know the identity of specific infringers.”).
`However, SunFrog is distinguishable on the facts and this case alone is certainly not sufficient to support
`finding that Atari is likely to succeed in showing that Printify is willfully blind.
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`Printify’s database also suggests that Printify has not “buil[t] a business around”
`infringement.
`Second, Atari claims that “all but one of the previously identified listings are still
`accessible,” citing to screenshots of the merchant storefronts where the infringing
`products are still available. (ECF No. 66 at 6.) However, the merchant storefronts are not
`under Printify’s control. Printify did what it was able to do: it deleted the offending
`product listings in its system, but it has no ability to prohibit an independent storefront
`from continuing to list a product on its own website or from fulfilling an order through
`another print-on-demand provider.
`Third, Atari claims that infringing images are still available through the
`Shutterstock library in Printify’s design software. Putting aside the issue of whether
`these images qualify under eBay as “particular listings,” Printify has no control over the
`Shutterstock images and states that Shutterstock holds licenses to the images it makes
`available. (Oleinika Decl. ¶ 28.)
`In sum, there is no evidence that Printify intentionally induced anyone to
`infringe Atari’s trademarks. In regard to whether or not Printify services merchants
`who it has reason to believe are engaging in trademark infringement, the evidence is
`that Printify has taken concrete steps to search and remove even potentially infringing
`product listings. Accordingly, Atari has not shown a likelihood of success on its
`contributory infringement claim.
`3. Other Trademark and State Law Claims
`Atari claims that a preliminary injunction is also warranted because it is likely to
`succeed on the merits of its trademark dilution, false designation of origin, and New
`York unfair competition claims. The Court disagrees.
`i. Trademark Dilution
`
`Pursuant to 15 U.S.C. § 1125(c), “the owner of a famous, distinctive mark” is
`entitled to an injunction against a party whose commercial use of that mark “is likely to
`cause dilution by blurring or dilution by tarnishment.” A defendant is liable for
`trademark dilution based on the following test: (1) the senior mark must be famous; (2)
`it must be distinctive; (3) the junior use must be a commercial use in commerce; (4) it
`must begin after the senior mark has become famous; and (5) it must cause dilution of
`the distinctive quality of the senior mark. See Savin Corp. v. Savin Group, 391 F.3d 439,
`448–49 (2d Cir. 2004) (citing 15 U.S.C. § 1125(c)). Section 1125(c) recognizes two types of
`dilution: (1) “blurring, which is the diminished ability of the mark to serve as a unique
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`identifier of the plaintiffs’ goods and services,” and (2) “tarnishment, which is the
`disparagement of the mark’s reputation.” Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452,
`466 (S.D.N.Y. 2007). “Federal law identifies a non-exhaustive list of six factors that
`courts ‘may consider’ when determining whether a mark is likely to cause dilution by
`blurring.” Tiffany, 600 F.3d at 111.
`Atari summarily claims that the first four elements are “beyond dispute” and
`that the fifth element is satisfied under both the blurring and tarnishment standards.
`According to Atari, Printify’s conduct constitutes blurring because it “runs the risk that
`Atari Trademarks will lose their ability to serve as a unique identifier” and “disparages
`the Atari Mark’s reputation.” (ECF No. 25 at 21.) Similarly, Atari claims that the conduct
`constitutes tarnishment because Printify is using the marks on goods of lesser quality.
`However, these general and conclusory claims are insufficient to warrant a preliminary
`injunction. Atari does not analyze the six-factor test for blurring. Regarding
`tarnishment, there is not a scintilla of evidence that the goods are, in fact, of lesser
`quality. Moreover, the U.S. Court of Appeals for the Second Circuit has indicated that
`trademark dilution claims require a defendant to be acting as a “seller.” See Tiffany, 600
`F.3d at 112 (“[I]nsofar as eBay did not itself sell the goods at issue, it did not itself
`engage in dilution.”). See also Nike, Inc. v. B&H Customs Servs., 565 F. Supp. 3d 498, 514
`(S.D.N.Y. 2021) (transportation of counterfeit goods, as opposed to selling them, was
`not sufficient for dilution). As set forth above, Atari has not demonstrated that it is
`likely to succeed in showing that Printify is a seller. Accordingly, Atari has not
`demonstrated a likelihood of success on the merits of its trademark dilution claim.
`False Designation of Origin and Unfair Competition
`ii.
`
`The