Case 2:24-cv-01516-WSS Document 82
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`HUISHAN CHEN,
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`Plaintiff,
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`Civil Action No. 2:24-cv-1516
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`Hon. William S. Stickman IV
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`v.
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`ADEDIY,et al,
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`Defendants.
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`MEMORANDUM OPINION
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`WILLIAM S. STICKMANIV,United States District Judge
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`Plaintiff Huishan Chen (“Chen”) seeks a preliminary injunction to enjoin Defendant No.
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`6 — Blackfast and Defendant No. 22 - PAMBO Direct (“Defendants”) from their unauthorized
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`use of her copyrighted works.
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`(ECF Nos. 2, 66-1, 66-2). She asserts that by promoting, selling,
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`offering for sale and distributing knockoffs, Defendants are infringing on her copyrighted images
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`of a boy’s face and a girl’s face on tooth boxes.
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`(ECF No. 2). For the reasons explained below,
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`the Court holds that Chen is entitled to preliminary injunctive relief and her motion will be
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`granted.
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`I.
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`STANDARD OF REVIEW
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`The grant or denial of a preliminary injunction is within the sound discretion of a district
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`court. See Reilly v. City of Harrisburg, 858 F.3d 173, 178-79 (3d Cir. 2017) (“District courts
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`have the freedom to fashion preliminary equitable relief so long as they do so by ‘exercising their
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`sound discretion.’” (citation omitted)). The primary purpose of preliminary injunctive relief is
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`“maintenance of the status quo until a decision on the merits of a case is rendered.” Aciernov.
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`New Castle Cnty., 40 F.3d 645, 647 (3d Cir. 1994). The “status quo” refers to “the last,
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`peaceable, noncontested status of the parties.” Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700,
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`708 (3d Cir. 2004).
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`“A preliminary injunction is an extraordinary remedy never awardedasofright.” Winter
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`v. NRDC, Inc., 555 U.S. 7, 24 (2008). Rather, such relief “should be granted only in limited
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`circumstances.” Kos Pharms., 369 F.3d at 708 (citation omitted). A moving party “must
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`establish entitlement to relief by clear evidence.” Doe v. Boyertown Area Sch. Dist., 897 F.3d
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`518, 526 (3d Cir. 2018). Specifically, the movant must demonstrate:
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`(1) a likelihood of success on the merits; (2) that it will suffer irreparable harm if
`the injunction is denied; (3) that granting preliminary relief will not result in even
`greater harm to the nonmoving party; and (4) that the public interest favors such
`relief.
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`Kos Pharms., 369 F.3d at 708; see also Winter, 555 U.S. at 20. The first two factors are “the
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`mostcritical,” and the moving party bears the burden of making the requisite showings. Reilly,
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`858 F.3d at 176, 179 (citations omitted). Once those “gateway factors” are met, a court should
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`“consider[] the remaining two factors” and then “determine[] in its sound discretion if all four
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`factors, taken together, balance in favor of granting the requested preliminary relief.” /d. at 179.
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`In reaching its decision on a request for injunctive relief, a district court sits as both the
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`trier of fact and the arbiter of legal disputes. A court must, therefore, make “findings of fact and
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`conclusions of law upon the granting or refusing of a preliminary injunction.” Bradley vy.
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`Pittsburgh Bd. of Educ., 910 F.2d 1172, 1178 (3d Cir. 1990) (citing Fed. R. Civ. P. 52(a)(2)).
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`This “mandatory” requirement of Federal Rule of Civil Procedure Rule 52(a)(2) must be met
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`“even when there has been no evidentiary hearing on the motion.” Jd Nevertheless, at the
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`preliminary injunction stage, “procedures [] are less formal and evidence [] is less complete than
`in a trial on the merits.” Kos Pharms., 369 F.3d at 718; see also AT&T Co. v. Winback &
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`Conserve Program, Inc., 42 F.3d 1421, 1427 (3d Cir. 1994) (“[T]he grant or denial of a
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`preliminary injunction is almost always based on an abbreviated set of facts, requiring a delicate
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`balancing [that] is the responsibility of the district judge.” (citations omitted)). Accordingly, a
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`court “may rely on affidavits and hearsay materials which would not be admissible evidence.”
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`Kos Pharms., 369 F.3d at 718 (quoting in parenthetical Levi Strauss & Co. v. Sunrise Int'l
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`Trading, Inc., 51 F.3d 982, 985 (11th Cir. 1995)). The weight given to such materials will “vary
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`greatly depending on the facts and circumstances of a given case.” Jd. at 719. A court is also
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`tasked with assessing the credibility of witness testimony and may base the decision to grant or
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`deny a preliminary injunction on credibility determinations.
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`See e.g, Hudson Glob. Res.
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`Holdings, Inc. v. Hill, No. 02:07CV0132, 2007 WL 1545678, at *8 (W.D. Pa. May 25, 2007).
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`I.
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`PROCEDURAL AND FACTUAL BACKGROUND
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`On November 27, 2024, Chen filed a complaint and a motion for (1) a temporary
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`restraining order (“TRO”); (2) an order restraining assets and merchant storefronts; (3) an order
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`to show cause why a preliminary injunction should not issue; and (4) an order authorizing
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`expedited discovery.
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`(ECF Nos. 2 and 6). On December 5, 2024,
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`the Court held a
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`videoconference motion hearing pertaining to the TRO.
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`(ECF No. 17). The Court granted the
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`TRO,permitted alternative service on Defendants, and scheduled a videoconference injunction
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`hearing for December 18, 2024.
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`(ECF Nos. 18-22). The Court presided over the preliminary
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`injunction hearing.
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`(ECF No. 25). For the reasons set forth on the record, Chen’s request for a
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`preliminary injunction was granted as to all defendants except
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`for those at
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`issue here.
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`Defendants appeared without counsel, and the Court afforded them thirty days to retain counsel
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`and file supplemental briefing.
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`(ECF Nos. 25 and 26). As to Defendants, a videoconference
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`injunction hearing was set for January 21; 2025.
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`(ECF No. 27). Onthat date,-the parties chose
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`not to expand the evidentiary record by presenting evidence or witnesses.
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`Instead, Defendants
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`requested supplemental briefing, and a briefing schedule was set. Uponthefiling of Defendants’
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`supplement, the parties were directed to meet and confer to determine whether an evidentiary
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`hearing was necessary.
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`(ECF No. 47). Supplemental briefing has been submitted (ECF Nos. 61
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`and 67), and neither party has requested the expansion of the record through an evidentiary
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`hearing.
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`Chen created and designed images of a boy’s and a girl’s smiling faces to be printed on a
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`container for collecting loose teeth.
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`(ECF No. 2, p. 2; ECF No. 2-3). On April 18, 2022, she
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`filed two copyright
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`registrations — Nos. VA002299841]
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`and VA000229839 (“Chen’s
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`Copyrights’) — in the United States. The date of first publication was on January 10, 2015, and
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`the registration decision date was May 16, 2022.
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`(ECF No. 66-2). Defendants are individuals
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`and/or business entities engaged in e-commerce sales of allegedly infringing tooth boxes that
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`target
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`their business activities toward consumers throughout
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`the United States,
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`including
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`Pennsylvania,
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`through online marketplaces
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`such as Amazon.com, Walmart.com,
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`and
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`Alibaba.com. (ECF No. 2; ECF No. 2-4, pp. 2 and 9).
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`Wf.
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`ANALYSIS
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`Defendants raise one argument in opposition to the issuance of a preliminary injunction.
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`They contend that Chen’s Copyrights “are invalid and unoriginal in light of Chinese Copyright
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`00724827, which allegedly pre-dates the Asserted Copyrights.” (ECF No. 67, p. 1). The Court
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`does notfind this argument persuasive, and it will impose the preliminary injunction.
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`A.
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`Chen hassufficiently demonstrated that sheis likely to succeed on the
`merits of its underlying claim for copyright infringement.
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`In order to obtain the requested preliminary injunctive relief, Chen must demonstrate that
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`she “can win on the merits.” Reilly, 858 F.3d at 179. She must “showalikelihood of success on
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`the merits (that is, a reasonable chance, or probability, of winning).” Singer Mgmt. Consultants
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`yv, Milgram, 650 F.3d 223, 229 (3d Cir. 2011) (en banc) (emphasisin original). This “requires a
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`showingsignificantly better than negligible but not necessarily more likely than not.” Reilly, 858
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`F.3d at 179. To establish copyright infringement, Chen must demonstrate (1) ownership of a
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`valid copyright and (2) that Defendants copied protected material. Ford Motor Co. v. Summit
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`Motor Prods., Inc., 930 F.2d 277, 290 (3d Cir. 1991) (citations omitted).
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`1. Ownership of a Valid Copyright
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`A plaintiff's possession of a valid copyright registration certificate “creates a rebuttal
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`presumption that the work is copyrightable and that [the plaintiff] has a valid interest.” F°A.
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`Davis Co. v. Wolters Kluwer Health, Inc., 413 F. Supp. 2d 507, 510 (E.D. Pa. 2005) (citations
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`omitted). On a motion for preliminary injunction, a court must “determine whether a copyright
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`registration has been successfully rebutted.” Midway Mfg. Co. v. Bandai-Am., Inc., 546 F. Supp.
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`125, 139-40 (D.N.J. 1982) (citation omitted). Chen’s certificates state that the first publication
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`was on January 10, 2015. On May 16, 2022, the Copyright Office granted her registration with
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`an effective date of April 18, 2022. (ECF No. 66-2).
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`Defendants contend that
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`their alleged Chinese Copyright No. 00724827 (“Chinese
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`Copyright”) predates Chen’s Copyrights. Because copyright law has international implications,
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`the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention),
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`which took effect in 1886, is the principal accord governing international copyright relations.
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`Golan v. Holder, 565 U.S. 302, 306 (2012); see also 17 U.S.C. § 104(b)(2); Fourth Est. Pub.
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`Benefit Corp.
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`v. Wall-Street.com, L.L.C., 586 U.S. 296, 306-07 (2019)
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`(recognizing that
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`Congress removed foreign works from the Copyright Act’s registration requirement in 1988).
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`- This simply means that foreign copyright holders are afforded the same protection as domestic
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`copyright holders — they are subject to the same U.S. copyright law analysis.
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`The Court finds that Defendants’ proffered evidence (ECF No. 51-1) is insufficient to
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`establish the existence of a Chinese Copyright. The proffered Chinese Copyright has only been
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`partially translated, it has not been certified by a lawful custodian of the Chinese Copyright
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`Office, nor has it been authenticated by a certification of a United States consular office based in
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`China under the seal of that office. No indication exists that Defendants registered their work
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`with the U.S. Copyright Office. Hence, it is premature at this stage of the case to treat the
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`Chinese Copyright registration as presumptively authentic.
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`Furthermore, Defendants have come forth with no verifiable evidence supporting the
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`“Work Completion Date: June 1°, 2010,” or the “Registration Date: February 18", 2019.” (ECF
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`No. 51, p. 14). Defendants have failed to offer evidence (e.g., date-stamped product webpages,
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`articles, or sales data)
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`to corroborate the purported 2010 publication date and show that
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`Defendants used the disputed images before Chen put her tooth boxes on the market. Chen
`submitted unrebutted evidence that she created and designed images of a boy’s andagirl’s
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`smiling faces to be printed on a container for collecting children’s loose teeth which were
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`registered as United States Copyright Nos. VA002299841 and VA0002299839 in 2022.
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`(ECF
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`No. 66-2). She also came forth with evidence that she created, marketed, and sold her products
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`as early as 2016 in the United States. Chen has met her evidentiary burden to show the existence
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`of a valid copyright.
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`Defendants next attempt to rebut the presumed validity of Plaintiffs Copyrights by
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`arguing that her work lacks originality. They seemingly believe that “the use of elementary
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`shapes and features in both designs suggests a standard industry practice rather than a unique or
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`novel creation.”. (ECF No. 51;p.- 15).
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`“Original, as the term is used in copyright, means only that the work was independently
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`created by the author ... and that it possesses at least some minimal degree of creativity.” Feist
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`Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345 (1991) (citation omitted). “[T]he
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`requisite level of creativity is extremely low,” where “even a slight amount will suffice.” Jd.
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`Originality does not require novelty; an original work may be one that “closely resembles other
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`worksso long as the similarity is fortuitous, not the result of copying.” Jd. at 345-46. The Court
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`finds that Defendants have failed to come forth with persuasive evidence to call into doubt that
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`Chen independently created her tooth boxes and that
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`they possess the requisite minimal
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`creativity. The Court, like the Copyright Office, finds that the tooth boxes are original and are
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`entitled to the presumptive validity of their issued copyrights.
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`Defendants’ arguments as to why Chen does not have a valid copyright fail. Chen has
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`demonstrated the first prong of the copyright infringement analysis—ownership of a valid
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`copyright—-and the Court must next consider whether Defendants engaged in unauthorized
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`copying of her protected work.
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`2. Unauthorized Copying of Protected Material
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`Since direct evidence of copying is rarely available, it may be inferentially proven by
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`demonstrating that someone who had access to a copyrighted work used material substantially
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`similar to the work in a mannerthat interferes with a copyright owner’s rights afforded under 17
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`U.S.C. § 106. Ford Motor Co., 930 F.2d at 291 (citations omitted). “Substantially similar” is
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`broken down to an extrinsic test and an intrinsic test.
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`Jd. The extrinsic test considers “whether
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`there is sufficient similarity between the two works in question to conclude that the alleged
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`infringer-used-the copyrighted-work in making his own.”
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`Jd. (quoting Whelan Assocs.;- Inc. v-~-
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`Jaslow Dental Lab’y, Inc., 797 F.2d 1222, 1232 (3d Cir. 1986)). The intrinsic test, on the other
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`hand, looks at whether “the copying was an unlawful appropriation of the copyrighted work”
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`viewed from the perspective of a lay person. Jd. (citations omitted).
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`Since 2016, Chen has offered for sale her woodgrain tooth boxes on several online
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`platforms, including the “Alibaba” and Amazon e-commerce platforms.
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`(ECF No. 66, p. 3; ECF
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`No. 66-3). This demonstrates that there were available avenues for Defendants to access the
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`copyrighted work.
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`In addition to access, Defendants’ design is also “substantially similar” to Chen’s tooth
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`boxes. Looking at Chen’s boxes and Defendants’ boxes side by side, they are nearly identical
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`down to the girl’s three-dotted bowtie and eyelashes.
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`(ECF No. 2-4, pp. 2 and 9). There is no
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`question that the worksare, at the very least, “substantially similar.”
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`Finally, through Defendants’ “promoting, selling, offering for sale and distributing” of
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`their boxes, they have interfered with Chen’s exclusive rights afforded to her under 17 U.S.C. §
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`106 to reproduce anddistribute her tooth boxes. Therefore, at this stage, Chen has inferentially
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`proven that Defendants copied her protected material
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`in order to design and subsequently
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`promote andsell their tooth boxes.
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`By demonstrating that she has a valid copyright and that Defendants engaged in actual,
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`unauthorized copying of her copyrighted material, the Court finds that Chenis likely to succeed
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`on the merits of her underlying copyright infringement claim. She has met her burden pertaining
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`to the first prong of the preliminary injunction analysis.
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`B.
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`Chen has shown that she will suffer irreparable harm absent the
`Court granting her requested preliminary injunction.
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`Chen must next show that she “is more likely than not to suffer irreparable harm in the
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`absence of preliminary relief.” Reilly, 858 F.3d at 179. She must “demonstrate potential harm
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`which cannot be redressed by a legal or an equitable remedy followinga trial.” Acierno, 40 F.3d
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`at 653. This potential harm must be “immediate”—it is insufficient to warrant preliminary
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`injunctive relief “if the harm will occur only in the indefinite future.” Campbell Soup Co.v.
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`ConAgra, Inc., 977 F.2d 86, 91 (3d Cir. 1992) (citation omitted). To obtain injunctive relief in
`copyright infringement suits, “a moving party must show that it will suffer irreparable harm that
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`is causally attributable to the challenged infringement.” TD Bank N.A. v. Hill, 928 F.3d 259, 280
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`(3d Cir. 2019) (citations omitted).
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`Chen has met her burden by showingthat she will not receive an adequate remedy at law..
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`As the Court discussed previously, Chen’s tooth boxes and Defendants’ tooth boxes are, at the
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`very least, substantially similar. Such similarity causes market confusion, leading customers to
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`potentially associate their interaction with a product to the wrong manufacturer of that product.
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`Thus, the harm that Chen would be subjected to absent the entering of a preliminary injunction
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`goes beyond just lost profits. The risk of irreparable harm to Chen’s reputation, value, and
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`goodwill cannot be adequately remediedat law.
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`C.
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`The balance of equities weighs in favor of granting Chen’s requested
`injunctiverelief.
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`The third factor requires consideration of whether, and to what extent, Defendants will
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`suffer irreparable harm from the grant of a preliminary injunction. See Kos Pharms., 369 F.3d at
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`727. The Court must then “balance the hardships”likely to be suffered by Chen (if an injunction
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`is denied) and by Defendants (if an injunction is granted), id. (citation omitted), and determine
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`whether the “equities tip[] in [Chen’s] favor,” Winter, 555 U.S. at 20. “[T]he more likely the
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`plaintiff is to win, the less heavily need the balance of harms weighin[its] favor.” Kos Pharms.,
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`369 F.3d at 729 (citation omitted).
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`Defendants assert that the injunctive relief sought threatens monetary damageand loss in
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`sales. Without an injunction, Chen will suffer continued monetary loss to her business, as well
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`as the value, goodwill and reputation built up in and associated with her tooth boxes. The Court
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`finds that the balance of hardships weighs in favor of Chen. As the holder of valid United States
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`copyrights, Chen is afforded certain rights and protections upon registration. These protections
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`grant the copyright ownerthe exclusive rights to reproduce and distribute their work for sale. 17
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`U.S.C. § 106 (emphasis added). A company establishes itself in the marketplace—throughits
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`reputation, value, and goodwill—on the assumption that it is in sole control of its intellectual
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`property. Thus, a copyright owner loses this control when an alleged infringer enters the
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`marketplace and seeks to reap the benefits of the owner’s work for its own gain. Conversely, the
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`charm that Defendants face will be losing the revenue stream created by selling their tooth boxes.
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`Defendants simply fail to demonstrate that they will be irreparably harmed by being enjoined
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`from selling their products.
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`D.
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`The public has an interest
`infringing activities.
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`in enjoining Defendants’ allegedly
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`The fourth factor asks whether “an injunction is in the public interest.” Winter, 555 U.S.
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`at 20. “In exercising their sound discretion, courts of equity should pay particular regard [to] the
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`public consequences in employing the extraordinary remedy of injunction.” Jd. at 24 (quoting
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`Weinberger v. Romero-Barcelo, 456 U.S. 305, 312 (1982)). Nevertheless, “[w]eighing the
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`public interest in preliminary relief is often fairly routine.” Kos Pharms., 369 F.3d at 730. “Asa
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`practical matter, if a plaintiff demonstrates both a likelihood of success on the merits and
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`irreparable injury,
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`it almost always will be the case that the public interest will favor the
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`plaintiff.” AT&T, 42 F.3d at 1427 n.8.
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`The public has an interest in the protection of intellectual property, as first recognized by
`the framers of the Constitution. See US. Const. Art. L§ 8, cl 8 (The Congress shall have
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`Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to
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`Authors and Inventors the exclusive Right to their respective Writings and Discoveries.) As
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`discussed above, copyright law was enacted with the intent to give owners exclusive rights in
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`their works. To not allow Chen to enforce the protections she was granted upon herregistration
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`of valid copyrights would go against the public’s interest and run afoul of the central purpose of
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`copyright law. Therefore, the final factor also weighs in favor of granting Chen’s requested
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`injunctive relief.
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`IV.
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`CONCLUSION
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`“A preliminary injunction is an extraordinary remedy never awarded as of right.” Winter,
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`555 U.S. at 24. After balancing all four factors, the Court finds that Chen has met her burden of
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`demonstrating that she is entitled to the extraordinary relief of a preliminary injunction. Her
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`motion as
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`to Defendant No. 6 — Blackfast and Defendant No. 22 — PAMBO Direct
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`(“Defendants’’) will be granted by Order of Court to follow.
`BY THE COURT:
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`WILLIAM S. STICKMANIV
`UNITED STATES DISTRICT JUDGE
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`1]
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