2023-cv-14675

COMPLAINT filed by Toho Co., Ltd.; Jury Demand. Filing fee $ 402, receipt number AILNDC-21201461.

Exhibit 1

(Exhibit 2)

CIVIL Cover Sheet

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by Michael A. Hierl

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by William Benjamin Kalbac

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by Robert Payton Mcmurray

MOTION by Plaintiff Toho Co., Ltd. to seal document Plaintiff's Motion for Leave to File Under Seal

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Sealed Schedule A

NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by Toho Co., Ltd.

CASE ASSIGNED to the Honorable Edmond E. Chang. Designated as Magistrate Judge the Honorable Jeffrey Cole. Case assignment: Random assignment. (Civil Category 2).

CLERK'S NOTICE: Pursuant to Local Rule 73.1(b), a United States Magistrate Judge of this court is available to conduct all proceedings in this civil action. If all parties consent to have the currently assigned United States Magistrate Judge conduct all proceedings in this case, including trial, the entry of final judgment, and all post-trial proceedings, all parties must sign their names on the attached Consent To form. This consent form is eligible for filing only if executed by all parties. The parties can also express their consent to jurisdiction by a magistrate judge in any joint filing, including the Joint Initial Status Report or proposed Case Management Order.

AMENDED complaint by Toho Co., Ltd. against The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Amended Schedule A Hereto

Exhibit 1

(Exhibit 2)

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Amended Schedule A

MOTION by Plaintiff Toho Co., Ltd. for leave to file excess pages Plaintiff's Motion to Exceed Page Limitation

MOTION by Plaintiff Toho Co., Ltd. for temporary restraining order Plaintiff's Ex Parte Motion for Entry of a Temporary Restraining Order, Including a Temporary Injunction, a Temporary Asset Restraint, Expedited Discovery, and Service of Process by Email and/or Electronic Publication

MEMORANDUM by Toho Co., Ltd. in support of motion for temporary restraining order, 12

Declaration Ueda Declaration

Exhibit 1

Exhibit 2

Declaration Hierl Declaration

Exhibit Hierl Exhibit 1

Exhibit Hierl Exhibit 2

(Exhibit Hierl Exhibit 3)

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Exhibit 3 to Ueda Declaration

Notice of Claims Involving Trademarks by Toho Co., Ltd.

ANNUAL REMINDER: Pursuant to Local Rule 3.2 (Notification of Affiliates), any nongovernmental party, other than an individual or sole proprietorship, must file a statement identifying all its affiliates known to the party after diligent review or, if the party has identified no affiliates, then a statement reflecting that fact must be filed. An affiliate is defined as follows: any entity or individual owning, directly or indirectly (through ownership of one or more other entities), 5% or more of a party. The statement is to be electronically filed as a PDF in conjunction with entering the affiliates in CM/ECF as prompted. As a reminder to counsel, parties must supplement their statements of affiliates within thirty (30) days of any change in the information previously reported. This minute order is being issued to all counsel of record to remind counsel of their obligation to provide updated information as to additional affiliates if such updating is necessary. If counsel has any questions regarding this process, this LINK will provide additional information. Signed by the Executive Committee on 12/28/2023: Mailed notice.

MINUTE entry before the Honorable Edmond E. Chang: On review of the Amended Complaint and Amended Schedule A, R. 9, 10, the Plaintiff shall file a supplemental brief in support of the TRO motion explaining how joinder of the Defendants is proper under Estee Lauder Cosmetics Ltd. v. Schedule A, Case No. 19-cv-7878, 2020 WL 433870 (N.D. Ill. Jan. 27, 2020). If the Court missed the explanation in the TRO brief, then the supplemental brief may point to the pages in the original brief. The supplement is due on 04/11/2024 and may be filed under seal if appropriate. To track the case only (no appearance is required, the case will not be called), a tracking status hearing is set for 04/19/2024 at 8:30 a.m., but to track the case only (no appearance is required, the case will not be called). Emailed notice

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by John Wilson

MEMORANDUM by Toho Co., Ltd. Plaintiff's Memorandum in Support of Joinder

MINUTE entry before the Honorable Edmond E. Chang: On review of the joinder memorandum, R. 19, the joinder inquiry is satisfied in light of the uncommon string of 14 words that is repeated in each online store, along with the identical product with identical imagery. The Plaintiff's motion 12 for temporary restraining order and other relief is granted. An order will be entered under seal separately. Although the Court again expresses its concern about restraining assets before judgment, Grupo Mexicano de Desarrollo v. Alliance Bond Fund, 527 U.S. 308, 331 (1999), the Plaintiff does invoke a statutory remedy, namely, an accounting of profits (that is, disgorgement of profits) under 15 U.S.C. § 1117(a), which is not a mere common-law equitable claim and thus could allow for pre-judgment restraint. Indeed, trademark owners need only "prove defendant's sales only; defendant must prove all elements of costs or deduction claimed." 15 U.S.C. § 1117(a). To the extent that the restraint might be too broad, the Defendants may appear and file challenges to the scope of the TRO. The balance of factors tips in favor of Plaintiff being able to freeze the assets without advance warning to the Defendants, who likely would seek to transfer the money elsewhere. The Plaintiff's motion 6 for leave to file under seal is granted in light of the asset-restraint goal. By 04/19/2024, the Plaintiff shall email a redacted version of the TRO that can be entered publicly (redacting the names of Defendants and omitting Amended Schedule A). The Plaintiff's motion 11 for extra pages is granted. To track the case only (no appearance is required, the case will not be called), a status hearing is set for 04/26/2024 at 8:30 a.m. The Plaintiff shall file the TRO extension motion (or a preliminary injunction motion), if appropriate, no later than 04/19/2024. Emailed notice

SEALED TEMPORARY RESTRAINING ORDER Signed by the Honorable Edmond E. Chang on 04/12/2024. Emailed notice

SURETY BOND in the amount of $ 10,000 posted by Toho Co., Ltd. (Document not Imaged)

MOTION by Plaintiff Toho Co., Ltd. for extension of time Plaintiff's Ex Parte Motion to Extend the Temporary Restraining Order

MINUTE entry before the Honorable Edmond E. Chang: In light of the continued applicability of the circumstances that justified entry of the initial TRO, the Plaintiff's extension motion on the TRO 23 is granted through 05/10/2024. The tracking status hearing of 04/26/2024 is reset to 05/10/2024 at 8:30 a.m., but to track the case only (no appearance is required, the case will not be called). Instead, the Plaintiff shall file a status report by 05/03/2024 and, only if appropriate, a motion for preliminary injunction. Emailed notice

MOTION by Plaintiff Toho Co., Ltd. for preliminary injunction Plaintiff's Motion for Entry of a Preliminary Injunction

MEMORANDUM by Toho Co., Ltd. in support of motion for preliminary injunction[25]

DECLARATION of Michael A. Hierl regarding motion for preliminary injunction[25]

STATUS Report by Toho Co., Ltd.

SUMMONS Returned Executed by Toho Co., Ltd. as to The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Amended Schedule A Hereto on 5/7/2024, answer due 5/28/2024.

MINUTE entry before the Honorable Edmond E. Chang: In light of the continued applicability of the circumstances that justified entry of the TRO, the motion for preliminary injunction 25 is granted. Given the answer deadline of 05/28/2024, R. 29, the tracking status hearing of 05/10/2024 is reset to 06/14/2024 at 8:30 a.m., but to track the case only (no appearance is required, the case will not be called). Instead, the parties shall file the joint initial status report by 06/07/2024. If the Defendants do not respond to the complaint on time, then they are deemed in default, and the Plaintiff shall file a motion for default judgment in a sum certain on 06/07/2024 instead. Emailed notice

PRELIMINARY INJUNCTION ORDER Signed by the Honorable Edmond E. Chang on 05/08/2024. Emailed notice

CERTIFICATE of Service by Robert Payton Mcmurray on behalf of Toho Co., Ltd.

MOTION by Plaintiff Toho Co., Ltd. for default judgment as to Plaintiff's Motion for Entry of Default and Default Judgment Against the Defendants Identified in Amended Schedule A

(Exhibit A)

MEMORANDUM by Toho Co., Ltd. in support of motion for default judgment 33

Exhibit 1

(Exhibit 2)

DECLARATION of Michael A. Hierl regarding motion for default judgment 33

(Exhibit Hierl Exhibit 1)

STATUS Report by Toho Co., Ltd.

MINUTE entry before the Honorable Edmond E. Chang: In light of the absence of a timely response to the amended complaint, the motion for default judgment 33 is granted. Judgment shall be entered in favor of the Plaintiff against the Defendants in the amount of twenty-five thousand dollars ($25,000) each. Given the willfulness established by the default, a permanent injunction is entered. A separate AO-450 judgment shall be entered. *****The Court provides one comment on the proposed default order emailed by the Plaintiff. In the proposed order, Paragraph 2 cited only the trademark-damages statute, 15 U.S.C. 1117(c)(2), but the paragraph stated that the damages were for both trademark and copyright infringement. So the proposed order should also have cited the copyright-damages statute, 17 U.S.C. 504(c)(2). Future proposed orders should take this into account.***** The tracking status hearing of 06/14/2024 is vacated. Civil case terminated. Emailed notice

FINAL JUDGMENT ORDER Signed by the Honorable Edmond E. Chang on 06/12/2024. Emailed notice

ENTERED JUDGMENT Signed by the courtroom deputy on 06/12/2024. Emailed notice

MAILED Closing Trademark report to Patent Trademark Office, Alexandria VA.

(Closing Minute Entry dated 6/12/2024)