The Smiley Company SPRL v. The Individuals, Partnerships and Unincorporated Associations Identified on Schedule A

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

CASE NO.: 1:23-cv-22376-KMW-LMR

THE SMILEY COMPANY SPRL,

Plaintiff,

v.

THE INDIVIDUALS, PARTNERSHIPS AND

UNINCORPORATED ASSOCIATIONS

IDENTIFIED ON SCHEDULE “A,”

Defendants.

/

REPORT AND RECOMMENDATION ON 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 the Undersigned United States

Magistrate Judge for a Report and Recommendation pursuant to 28 U.S.C. § 636(b)(1). The Plaintiff,

The Smiley Company SPRL (“Plaintiff”), moves for entry of a preliminary injunction against the

Defendants, Individuals, Partnerships, and Unincorporated Associations Identified on Schedule “A”

[ECF No. 20-1] to Plaintiff’s Complaint [ECF No. 1] (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 Court convened a hearing on August 21, 2023, at which counsel for Plaintiff was present

and available to present evidence supporting the Motion. Several recently dismissed Defendants

appeared and inquired as to their status in this case. The following Defendants made an appearance:

Defendant numbers 60, 83, 99, 314, 397, 411, 425, 688, 694, 535, and 541. All of these Defendants,

with the exception of Defendants 60 and 99, had been voluntarily dismissed from the case. Plaintiff

acknowledged that it was negotiating with some of the remaining Defendants listed on the attached

Schedule A. [ECF. No. 53].

The Court has carefully considered the Motion for Preliminary Injunction, the record, and the

governing law. For the reasons stated below, it is RECOMMENDED that Plaintiff’s Motion for

Preliminary Injunction be GRANTED with respect to the Defendants listed on Schedule A. [ECF.

No. 53].

I. FACTUAL BACKGROUND1

Plaintiff is the owner of the following trademarks, which are valid and registered on the

Principal Register of the United States Patent and Trademark Office. Plaintiff is the owner of the

following trademarks, which are valid and registered on the Principal Register of the United States

Patent and Trademark Office (collectively the “Smiley Marks”):

1 The factual background is taken from the Plaintiff’s Complaint, Motion, and supporting

Declarations submitted by the Plaintiff.

Registration Registration

Trademark Classes / Goods

Number Date

IC 003. US 001 004 006 050 051

052. G & S: non-medicated cosmetic

preparations for slimming purposes,

namely, skin creams, skin lotions,

[skin pomades, rust removing

preparations,] sun-tanning

preparations for cosmetic purposes,

[fabric softeners for laundry use,

shaving soap, cotton sticks for

cosmetic purposes, skin whitening

creams, laundry bleach, scented

wood, floor polish, hair color, hair

dyes, hair waxing lotions, artificial

eyelashes, shoe care products,

namely, shoe wax, shoe polish, and

shoe cream, depilatory wax, parquet

floor wax, polishing wax for use on

furniture and automobiles, leather

SMILEY 2,747,618 08/05/2003

preservatives, namely, polishing

creams and waxes, cosmetic kits

comprised of eyelash pencils, eyelid

pencils, namely], shampoos, [drain

openers, general purpose scouring

powders, decolorants for cosmetic

purposes, namely, hair decolorants,

degreasing preparations not used in

the manufacturing process for use on

floors, make-up removing

preparations, depilatory creams,

stains removers, paint removers, rust

and mineral removing cleaning

preparations, laundry detergents,]

toilet water, [anti-static dryers sheets,

emery paper, emery cloth, emery

boards, polish for furniture and

flooring, incense, windscreen

cleaning preparations,] essentials oils

for personal use[, hair lacquer, hair

bleaching preparations, sachets for

perfuming linen, hair lotions, false

nails, cotton balls for cosmetic

purposes, abrasive paper for use on

the nails, wallpaper cleaning

preparations, paint stripper, pumice

stones for personal use, adhesives for

cosmetic use, namely, adhesives for

use in connection with artificial hair,

shaving preparations, varnish-

removing preparations]. FIRST USE:

20010226. FIRST USE IN

COMMERCE: 20010226

IC 028. US 022 023 038 050. G & S:

Toys, namely plush stuffed toys and

plastic balls, latex balls and

SMILEY 2,566,529 05/07/2002 squeezable balls [ ; sporting goods,

namely knee pad ]. FIRST USE:

19880516. FIRST USE IN

COMMERCE: 19880516s

IC 003. US 001 004 006 050 051

052. G & S: Bubble bath, Deodorants

for personal use, lotions, false nails.

FIRST USE: 20150401. FIRST USE

IN COMMERCE: 20180125

IC 004. US 001 006 015. G & S:

candles. FIRST USE: 19720717.

FIRST USE IN COMMERCE:

20180125

IC 005. US 006 018 044 046 051

SMILEY 5,453,732 052. G & S: Food for babies,

adhesive bandages, air deodorant,

feminine hygiene pads, additive for

nutritional purposes, sanitary

napkins, car deodorants, vitamin

supplements; babies' disposable

diapers. FIRST USE: 19720717.

FIRST USE IN COMMERCE:

20180125

IC 006. US 002 012 013 014 023 025

050. G & S: metal keys for locks.

FIRST USE: 19720717. FIRST USE

IN COMMERCE: 20180125

IC 008. US 023 028 044. G & S:

Spoons, hand tools, beard clippers,

scissors, nail clippers, hair removing

tweezers, ice picks, nail files,

manicure sets, hammers, pedicure

sets, pliers, electric and non-electric

razors, screwdrivers and drills;

electric and non-electric flat irons.

FIRST USE: 19720717. FIRST USE

IN COMMERCE: 20180125

IC 009. US 021 023 026 036 038. G

& S: Weighing apparatus, scales,

calculating machines, sound

amplifiers, anti-glare glasses,

computer terminals, electric, neon or

luminous signs, photographic

cameras, magnetic encoded cards,

cartridges for video games, life

jackets, computer keyboards,

electrical connectors, contact lenses,

electrical sockets, eyeglass cases,

blank magnetic data carriers, fire

extinguishers, loudspeakers,

telephone apparatus, sunglasses,

computer memories, computer

peripheral mouse pads, computer

mouse, television sets, video

cameras, and video game cartridges.

FIRST USE: 20121201. FIRST USE

IN COMMERCE: 20180125

IC 014. US 002 027 028 050. G & S:

Precious metals and their alloys sold

in bulk, clocks, works of art of

precious metal, jewelry, jewelry

boxes, earrings, watches, bracelets,

cuff links, brooches, necklaces.

FIRST USE: 20150601. FIRST USE

IN COMMERCE: 20180125

IC 016. US 002 005 022 023 029 037

038 050. G & S: Adhesive tapes for

stationery or household purposes,

posters, photo albums, scrapbooks,

lithographic prints, stickers, loose-

leaf binders, boxes of cardboard or

paper, rubber stamps, calendars,

printing sewing patterns, note books,

business cards, postcards, tags for

index cards, iron-on transfers and

plastic transfers, decalcomanias,

graphic art reproductions, stationery

folders, writing materials, namely,

note books, post cards, ball-point

pens, anniversary books, appointment

books, autograph books, baby books,

sketch books, sketch pads,

bookmarks, daily planners, date

books, address books, diaries,

engagement books, envelopes,

electric and non- electric erasers,

fountain pens, pen or pencil holders,

pen or pencil trays, pencils, artists'

pencils, drawing pencils, pencil

boxes, pencil cases, pen cases,

stationery, and envelopes, rubber

erasers, wrapping paper, pencils,

stationery envelopes, blank or

partially printed paper labels,

announcement cards, writing paper,

school supplies, namely, notebooks,

pencil cases, toilet paper, pictures,

printed matter, namely, magazines in

the field of art, lithographs, table

linen of paper, handkerchiefs of

paper, stationery, paper stationery,

paper banners, paper bags,

unmounted photographs, art prints,

pen and pencil trays, printed

publications, namely, magazines,

newspapers, graphic art

reproductions, plastic or paper

envelopes, bags and pouches for

merchandise packaging, writing pads,

fountain pens, and paper or plastic

transparencies, paper towels,

embroidery design patterns, table

mats of paper, pencil sharpeners.

FIRST USE: 20130901. FIRST USE

IN COMMERCE: 20180125

IC 021. US 002 013 023 029 030 033

040 050. G & S: Combs, toilet

brushes, water troughs, thermal

insulated containers for food, terra-

cotta or glass, figurines, table plates

not of precious metal, brooms,

cocktail picks, drinking flasks for

travelers, drinking vessels, beer

mugs, soap boxes, dispensing paper

towels for household use, non-

electric kettles, bottles sold empty,

bottle openers, pitchers not of

precious metal, non-electric

toothbrushes, perfume burners,

coffee services, not of precious

metal, egg cups not of precious

metal, beverage glassware, jugs,

cookery molds, cooking utensils,

toothpicks, cutting boards for the

kitchen, trivets, toilet paper holders,

soap dispensers, sponges for

household purposes, scouring

sponges for toilets, earthenware

basins in the nature of bowls,

household utensils, flower pots;

gloves for household purposes,

gloves for gardening, ice buckets,

non-electric portable coolers for food

and beverages, goblets, not of

precious metal, mugs, not of precious

metal, bottle- gourds, not of precious

metal, crumb trays, dishes, soap

holders, sponge holders, ironing

boards, pepper shakers, garbage cans,

trash cans, napkin rings, thermal

insulated bags for food or beverages,

statutes, statuettes, table plates,

napkin holders, non-metal piggy

banks, earthenware mugs, drinking

glasses, tableware services not of

precious metal. FIRST USE:

20130901. FIRST USE IN

COMMERCE: 20180125

IC 025. US 022 039. G & S:

Clothing, namely, suits, dresses, t-

shirts, sweatshirts, raincoats, shorts,

stockings, cloth bibs, berets, hosiery,

boots, suspenders, pants, baseball

caps, golf caps, athletic shoes,

masquerade costumes, hats, babies

pants, neckties, sashes for wear,

scarves, gloves, layettes, slippers, ear

muffs, aprons, sportswear, namely,

jogging suits, and training suits.

FIRST USE: 20121201. FIRST USE

IN COMMERCE: 20180125

IC 026. US 037 039 040 042 050. G

& S: Hair accessories, electric hair

curlers. FIRST USE: 19720717.

FIRST USE IN COMMERCE:

20180125

IC 027. US 019 020 037 042 050. G

& S: carpets. FIRST USE: 20141201.

FIRST USE IN COMMERCE:

20180125

IC 028. US 022 023 038 050. G & S:

Games, playthings, namely, toys in

the nature of flying disks, sporting

articles, golf balls, handballs,

playground balls, soccer balls,

baseballs, basketballs, bowling balls,

footballs, tennis balls, rubber balls,

sports balls, table tennis balls, volley

balls, beach balls balloons, toys,

namely, jigsaw puzzles; Christmas

tree ornaments, party favors in the

nature of small toys; namely,

confetti. FIRST USE: 20121201.

FIRST USE IN COMMERCE:

20180125

IC 029. US 046. G & S: Meat. FIRST

USE: 19720717. FIRST USE IN

COMMERCE: 20180125

IC 030. US 046. G & S: Sugar, pasta,

corn flakes, chewing gum. FIRST

USE: 20170301. FIRST USE IN

COMMERCE: 20180125

IC 032. US 045 046 048. G & S:

Mineral and aerated waters, fruit

juices. FIRST USE: 19720717.

FIRST USE IN COMMERCE:

20180125

IC 034. US 002 008 009 017. G & S:

Cigarette cases, cigarette lighters,

ashtrays not of precious metal,

cigarette holders, not of precious

metal, ashtrays of precious metal for

smokers. FIRST USE: 20141201.

FIRST USE IN COMMERCE:

20180125

IC 035. US 100 101 102. G & S:

Advertising and marketing. FIRST

USE: 20150601. FIRST USE IN

COMMERCE: 20180125

IC 036. US 100 101 102. G & S:

Credit card services, monetary

exchange. FIRST USE: 19720717.

FIRST USE IN COMMERCE:

20180125

IC 038. US 100 101 104. G & S:

Telecommunication services, namely,

personal communication. FIRST

USE: 20170701. FIRST USE IN

COMMERCE: 20180125

IC 003. US 001 004 006 050 051

052. G & S: Soaps, bath gels,

makeup, perfumes, body lotions, nail

care preparations, cosmetic

SMILEY 2,970,055 07/19/2005 preparations for skin renewal, hair

shampoos, hair gel. FIRST USE:

20010226. FIRST USE IN

COMMERCE: 20010226

IC 009. US 021 023 026 036 038. □

& S: Downloadable computer

software program for use in

SMILEY 3,016,430 11/15/2005 attaching, icons or other symbols, in

e-mail correspondence and instant

messaging. FIRST USE: 20001200.

FIRST USE IN COMMERCE:

20001200

IC 025. US 022 039.G & S:

Clothing, namely, pullovers,

SMILEY 2,801,529 12/30/2003 | [trousers] and shirts. FIRST USE:

19700000. FIRST USE IN

COMMERCE: 19700000

IC 016. US 002 005 022 023 029 037

038 050. G & S: Printed matter,

namely, children's books, stationery,

greeting cards, note cards, post cards,

posters, newspapers, printed

calendars, printed forms, printed

invitations, photo albums,

scrapbooks, photographs;

bookbinding materials, namely,

bookbinding papers or cloth,

bookbinding adhesive tape or glue;

adhesive tapes for stationery or

household purposes; artists’ materials,

¢ ¢ namely, artists' paintbrushes, typeset

printing blocks, printing type, art

pads, art paper, paper, cardboard,

5,348,135 12/05/2017 | dressmaking patterns, drawings,

watercolors, paintings both framed

and unframed; lithographic or

engraved art objects; writing

implements, namely, pens, pencils,

fountain pens, artists’ pencils;

drawing instruments, namely,

charcoal pencils, drawing pencils,

pencil cases; typewriters and office

requisites except furniture, namely,

magnetic boards, file folders, desktop

stationery cabinets; Printed

instructional, educational, and

teaching materials in the field of

primary education; cardboard or

paper boxes; paper products, namely,

paper handkerchiefs, paper towels,

11

paper table linen, toilet paper, babies'

disposable napkins of paper and

cellulose; bags, namely, paper or

plastic for use as gift bags, paper

bags or pouches, paper and plastic

bags for merchandise packaging

purposes, paper and plastic garbage

bags; pamphlets in the field of

fashion, home, decorating and

licensing; prospectuses in the field of

fashion, home, decorating and

licensing

IC 018. US 001 002 003 022 041. G

& S: Leather and imitation leather,

animal skins and hides; trunks and

suitcases; umbrellas, parasols and

walking sticks; whips, harness and

saddlery; wallets, purses not of

precious metal; handbags, backpacks,

wheeled bags; sports bags for

climbers; sports bags for campers;

traveling bags, beach bags, school

bags, unfitted vanity cases; collars

and clothing for animals, namely, pet

clothing and collars; mesh shopping

bags, mesh shopping nets for use in

an automobile; leather bags or

pouches

IC 027. US 019 020 037 042 050. G

& S: Bath mats; Rugs; Floor mats for

SMILEY 6,428,755 05/14/2019 vehicles. FIRST USE: 20110228.

FIRST USE IN COMMERCE:

20190331

See Declaration of Nicolas Loufrani in Support of Plaintiff’s Motion for TRO (“Loufrani Decl.”)

[ECF No. 7-2 at ¶ 9 and Schedule B [ECF No. 7-3]; see also Complaint (ECF No. 1), at ¶ 25. The

Smiley Marks are used in connection with the design, marketing, and distribution of high-quality

goods in the category identified above. See id.

Plaintiff is also the owner of the following copyrights registered in the United States of

America:

Registration Registration Title of Work

Number Date

VAu000446942 1999 Andazia International--Millennium 2000 T-shirts : no.

280-283, 287-289.

VAu000446948 1999 Berkshire--Smiley babies outerwear, socks, Smiley

rainwear, umbrellas, Smilette : no. BERK001-BER019.

VAu000446941 1999 Commonwealth toy--Smiley Babies packaging labels : no.

CTN01-CTN05.

VAu000304029 1998 Freeze/Millennium 2000 T-shirts : no. FR001-

FR118.

VAu000446947 1999 Freeze--Millennium 2000 T-shirts : no. FR119-FR168.

VAu000446946 1999 Home Group, Inc.--Smiley headwear : no. HG001-HG004.

VAu000456386 1999 Jacques Moret Intimates/SHB intimates ... : no. JM045-

JM068.

VAu000446943 1999 Maru artwork--Smiley characters, millennium 2000 : no.

MARU01-MARU06.

VAu000446940 1999 Millennium 2000 socks : no. 6209-6248, 6250-6256.

VAu000456387 1999 NTD Apparel, Inc. : no. NTD181-NTD280.

VAu000446944 1999 Pro Specialties Group--Millennium 2000 : no. PS005-

PS006.

VAu000446945 1999 Ralph Marlin--Millennium 2000 boxers : no. RM001-

RM005.

VAu000440872 1998 "Smiley for kids" December 98.

PAu002457240 1999 Smiley forever.

PAu002457241 1999 Smiley trend book--fall/winter 2000-01.

See Loufrani Decl. at ¶ 10; Complaint, at ¶ 32. The copyrighted works identified in

Schedules C [ECF No. 7-4] to the Loufrani Declaration hereto are collectively referred to herein

as the “Copyrighted Works.”

The Defendants, through the various Internet based e-commerce stores operating under the

seller identities identified on Schedule “A” to the Complaint (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 Smiley Marks and

Copyrighted Works. See Loufrani Decl. at ¶¶ 15-18; Declaration of Richard Guerra (“Guerra

Decl.”) in Support of Plaintiff’s Motion for TRO [ECF No. 7-5] at ¶ 5.

Although each of the Defendants may not copy and infringe each of the Smiley Marks

for each category of goods protected and/or Copyrighted Works, the Plaintiff has submitted

sufficient evidence showing each of the Defendants has infringed at least one or more of the

Smiley Marks and/or Copyrighted Works. See Guerra Decl. at ¶ 4, Schedule D [ECF No. 7-6];

see also Amended Schedule D, [ECF Nos. 14-1, 14-2, 14-3, and 14-4]. 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 Smiley Marks or Copyrighted Works. See Loufrani

Decl. at ¶ 15.

The Plaintiff investigated the promotion and sale of counterfeit and infringing versions

of the Plaintiff’s branded and copyright protected products by the Defendants. See Loufrani

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, at least, one of the Smiley Marks and Copyrighted Works

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 Loufrani Decl. at ¶ 17. The Plaintiff conducted a review and

visually inspected the Smiley 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 id.

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 Smiley

Marks, that (2) the products Defendants are selling and promoting for sale are copies of the

Plaintiff’s products which bear copies of the Smiley Marks, and/or that (3) Defendants are

infringing the Copyrighted Works.

B. Because of the infringement of the Smiley Marks and/or the Copyrighted Works,

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 and/or copyrights 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 and copyright 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 Smiley Marks. 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 and copyright 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.

Upon review of the Plaintiff’s Complaint, Motion, and supporting evidentiary submissions,

it is 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 Smiley Marks, 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 Smiley Marks, 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 Smiley Marks, 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

c. From using any reproduction, counterfeit, copy, or colorable imitation of

the Smiley Copyrighted Works in connection with the publicity, promotion, sale, or advertising of

any goods sold by Defendants.

(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 unauthorized use of the Smiley Marks,

confusingly similar trademarks, or unauthorized copies of the Copyrighted Works 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 is 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, and restrain any other financial

accounts tied thereto. 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 ecommerce 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

Smiley Marks and Copyrighted Works 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) (ECF No. 25), 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 bond set forth herein was deposited with the Clerk of the Court on August

10, 2023.

IV. OBJECTIONS

Pursuant to 28 U.S.C. § 636(b)(1) and Local Magistrate Rule 4(a), Plaintiff has THREE

(3) days from the date of this Report and Recommendation to serve and file written objections, if

any, with the District Judge. See generally Jeffrey S. by Ernest S. v. State Bd. of Educ. of State of

Ga., 896 F.2d 507 (11th Cir. 1990). Failure to timely file objections will bar a de novo

determination by the district judge of anything in this Report and shall constitute a waiver of a

party’s “right to challenge on appeal the District Court’s order based on unobjected-to factual and

legal conclusions.” 11th Cir. R. 3-1; see also Harrigan v. Metro-Dade Police Dep’t Station #4,

977 F.3d 1185, 1191-92 (11th Cir. 2020); 28 U.S.C. § 636(b)(1)(C).

SIGNED in Miami, Florida this 21st day of August, 2023.

HONORABLE LISETTE M. REID

UNITED STATES MAGISTRATE JUDGE

ce: counsel of record

20