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CULPEPPER IP, LLLC

Kerry S. Culpepper, Bar No. 9837
75-170 Hualalai Road, Suite B204
Kailua-Kona, Hawai’i 96740
Telephone: (808) 464-4047
Facsimile: (202) 204-5181
E-Mail: [email protected]

Attorney for Plaintiff

42 Ventures, LLC

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF HAWAII

42 Ventures, LLC, ) Case No.: 1:20-cv-228-DKW-WRP

) (Trademark)
Plaintiff, )
vs. ) MEMORANDUM IN SUPPORT OF
) PLAINTIFF’S MOTION FOR
Patrick Rend, et al., ) DEFAULT JUDGMENT AGAINST
) DEFENDANTS VINIT MAV, HE
Defendants. ) SHAN, HOSAM AZZAM, AND
) FAHD ALI
)

PLAINTIFF’S MEMORANDUM IN SUPPORT OF MOTION FOR DEFAULT

JUDGMENT AGAINST DEFENDANTS VINIT MAV, HE SHAN, HOSAM
AZZAM, AND FAHD ALI

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Table of Contents:

Table of Authorities.................................................................................................. 5

I. Introduction ................................................................................................... 9

II. Subject Matter Jurisdiction and Venue........................................................ 11

III. Personal Jurisdiction ................................................................................... 12

A. The Court has Jurisdiction Pursuant to Fed. R. Civ. P. 4(k)(2), the so-

called Federal Long-Arm Statute………………………………………………… 12

1. Plaintiff’s Claims Against Defendant Arise under Federal

Law…………………...………………………………………………………….. 12

2. Defendants are not Subject to the Personal Jurisdiction of Any

State Court of General Jurisdiction……………………………………………… 12

3. Defendant has Sufficient Minimum Contacts with the US that the

Maintenance of the Suit Does Not Offend Due Process………………………….. 13

a. The Defendant Purposefully Directs His Activities toward

the US…………………………………………………………………………….. 15

i. Intentional Act…………………………………. 15

ii. Expressly Aimed at the Forum…………………. 16

iii. Defendant Knew He was Causing Harm that was

Likely to be Suffered in the US…………………………………………………… 18

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b. Plaintiff’s Claims Arise out of or Relates to the

Defendant’s Forum-Related Activities…………………..……………………….. 19

c. The Exercise of Jurisdiction Comports with Fair Play and

Substantial Justice………………..………………………………………………. 19

IV. Defendants’ Default Entered........................................................................ 20

V. Argument...................................................................................................... 20

A. Trademark Infringements Have Been Established ............................ 20

1. Plaintiff has Established Ownership of the Trademark……... 21

2. Defendants’ Use of Plaintiff’s Trademark Likely Causes

Consumer Confusion…………………………………………………………….. 21

i. Strength of the Mark…………………………...…….. 23

ii. Proximity of the Goods………………………………. 23

iii. Similarity of the Marks…………………...………….. 24

iv. Marketing Channels Used……………………………. 24

v. Defendants’ Intent in Selecting the Mark…………….. 25

B. Default Judgment is Appropriate ....................................................... 25

1. The Possibility of Prejudice to Plaintiff……………..……….. 26

2. & 3. The Merits of Plaintiff’s Substantive Claims and the

Sufficiency of the FAC………………….………………………………………... 27

4. The Sum of Money at Stake in the Action…………………… 27

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5. The Possibility of a Dispute Concerning the Material Facts… 27

6. Whether the Default was Due to Excusable Neglect…………. 28

7. The Policy Considerations…………………………………… 29

VI. Statutory Damages for Willful Trademark Infringement…......................... 29

VII. Plaintiffs are Entitled to Injunctive Relief ................................................... 33

VIII. Conclusion.................................................................................................... 35

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Table of Authorities:

Statutes and Rules

United States Lanham Act, 15 U.S.C. §§ 1051 et seq............................................... 9

15 U.S.C. § 1072……………………………………………………………… 25, 30

15 U.S.C. § 1115(a)………………………………………………………………. 21

15 U.S.C. § 1116(a)………………………………………………………………. 33

15 U.S.C. § 1116(d)(1)(B)(i)……………………………………………………... 30

15 U.S.C. § 1117(c)(1)…………………………………………………………… 29

15 U.S.C. § 1117(c)(2)………………………………………………………... 27, 29

15 U.S.C. § 1117(d)………………………………………………………………. 29

15 U.S.C. §1121………………………………………………………………….. 11

28 U.S.C. § 1331..................................................................................................... 11

28 U.S.C. § 1338 ..................................................................................................... 11

28 U.S.C. §§ 1391(b) and (c)................................................................................... 12

28 U.S.C. § 1400(a) ................................................................................................ 12

Fed R. Civ. P. 4(f)(3)……………………………………………………………... 11

Fed. R. Civ. P. 4(k)(2) ....................................................................................... 12, 14

Fed. R. Civ. P. 26 .................................................................................................... 31

Fed. R. Civ. P. 55(a) ................................................................................................ 28

Fed. R. Civ. P. 55(b)(2) ........................................................................................... 26

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Cases

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979)…………… 22

Axiom Foods, Inc. v. Acerchem Int’l, Inc., 874 F.3d 1064, 1068 (9th Cir. 2017)… 14

Bristol-Myers Squibb Co. v. Superior Ct. of Cal., San Francisco Cty., ___ U.S. ___,
137 S. Ct. 1773, 1779-80 (2017)………………………………………………….. 13

Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1055 (9th Cir.
1999)……………………………………………………………………………... 22

Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985)……………………... 13

Calder v. Jones, 465 U.S. 783 (1984)…………………………………………… 15

Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988)… 20

Cottonwood Envtl. Law Ctr. v. U.S. Forest Serv., 789 F.3d 1075, 1088 (9th Cir.
2015)……………………………………………………………………………... 33

Daimler AG v. Bauman, 571 U.S. 117, 127 (2014)……………………………… 13

Disney Enters., Inc. v. VidAngel, Inc., 869 F.3d 848, 867 (9th Cir. 2017)………. 35

Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998)…… 22

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)…………………. 33

Eitel v. McCool, 782 F.2d 1470, 1471–72 (9th Cir.1986)……………………….. 26

Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir.2002)……….. 23

Freestream Aircraft (Bermuda) Ltd. v. Aero Law Grp., 905 F.3d 597, 605 (9th Cir.
2018)……………………………………………………………………………... 15

Fustok v. ContiCommondity Servs., Inc., 873. F.2d 38, 40 (2d Cir. 1989)……….. 26

Goldberg v. Cameron, 482 F. Supp. 2d 1136, 1144 (N.D. Cal. 2007)…………... 15

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Holland America Line v. Wärtsilä North Amer, 485 F.3d 450, 462 (9th Cir.,
2007)…………………………………………………………………………. 14, 17

Int'l Shoe Co. v. State of Wash., Office of Unemployment Comp. & Placement, 326
U.S. 310, 316 (1945)…………………………………………………………….. 13

K & N Eng'g, Inc. v. Bulat, 259 F. App'x 994, 995 (9th Cir. 2007)…………….. 30

Koninklijke Philips Elecs., N.V. v. KXD Tech., Inc., 347 F. App'x 275, 276 (9th Cir.
2009)……………………………………………………………………………... 31

Mavrix Photo, Inc. v. Brand Technologies, Inc., 647 F.3d 1218, 1228 (9th Cir.
2011)……………………………………………………………………………... 20

Morrill v. Scott Financial Corporation, 873 F.3d 1136, 1142 (9th Cir.
2017)…………………………………………………………………………. 15, 16

OTR Wheel Eng'g, Inc. v. W. Worldwide Servs., Inc., 897 F.3d 1008, 1022 (9th Cir.
2018)……………………………………………………………………………... 20

Parr v. Club Peggy, Inc., 2012 U.S. Dist. LEXIS 24758 (D. Haw. Jan. 19,
2012)……………………………………………………………………………... 26

Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1159 (9th Cir. 2006)……………… 12

Pena v. Seguros La Comercial, S.A., 770 F.2d 811, 814 (9th Cir. 1985)………… 29

PepsiCo, Inc. v. California Sec. Cans, 238 F. Supp. 2d 1172, 1177 (C.D. Cal.
2002)……………………………………………………………………………... 26

Philip Morris USA, Inc. v. Castworld Prod., Inc., 219 F.R.D. 494, 500 (C.D. Cal.
2003)……………………………………………………………………………... 31

Shanghai Automation Instrument Co., Ltd. v. Kuei, 194 F.Supp.2d 995, 1005 (N.D.
Cal. 2001)………………………………………………………………………… 28

Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005)… 22-25

TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d915, 917–18 (9th Cir. 1987)…… 25, 27

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Walden v. Fiore, 571 U.S. 277, 284 (2014)………………………………. 13, 14, 16

Washington Shoe Co. v. A-Z Sporting Goods, Inc., 704 F.3d 668, 673-74 (9th Cir.
2012)……………………………………………………………………………... 15

Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072, 1084 (C.D. Cal.
2012)……………………………………………………………………………... 34

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I. INTRODUCTION

Plaintiff 42 Ventures, LLC (“Plaintiff”) is a limited liability company

organized under the laws of Hawaii. See First Amended Complaint (“FAC”) [Doc.

#8] at ¶22. Plaintiff owns trademark registration, “YTS,” Reg. No. 6,025,651, which

issued on Mar. 31, 2020 on the principal register of the United States Patent and

Trademark Office. See Exhibit “1” [Doc. #8-1] to the FAC. The trademark

registration is for the standard character mark “YTS” and covers CLASS 9:

Downloadable computer software for downloading and streaming multimedia

content images, videos and audio. Id. The registration is valid and subsisting and

has never been cancelled. See FAC at ¶32. Plaintiff has used the YTS trademark

continuously in US commerce since at least January 27, 2020 in connection with

distribution of licensed content via, for example, a website. See Id. at ¶¶23, 51.

Plaintiff filed the FAC against Defendants Patrick Rend, Patrick Petrov, Vinit

Mav, He Shan, Hosam Azzam, and Fahd Ali on May 29, 2020 alleging trademark

infringement and unfair competition, in violation of the US Lanham Act, 15 U.S.C.

1051 §§ et., for adopting and using identical and/or substantially indistinguishable

marks from Plaintiff’s registered YTS mark for use in interstate commerce in

connection with the distribution and/or streaming of unlicensed copyright protected

content after Plaintiff first adopted the trademark. See FAC at ¶¶36, 61. On June 10,

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2020, a stipulated consent judgment between Plaintiff and Defendants Rend and

Petrov was entered by this Court. See [Doc. #14].

Defendant Vinit Mav (“Vinit”) operated the website YTS.MS that included

the YTS mark as a spurious designation that is identical with, or substantially

indistinguishable from Plaintiff’s registered trademark. See FAC at ¶¶38, 45.

Despite Plaintiff’s counsel reaching out to Defendant Vinit multiple times before

filing the FAC, Defendant Vinit only reluctantly agreed to shut down his website on

May 23, 2020 after Plaintiff’s counsel informed him of the original Complaint. See

Decl. of Counsel at ¶¶3-5.

Defendant He Shan (“Shan”) operates the websites YST.LT, YTS.TL,

ytsag.me, yts.ae, ytsmovies.cc and yts-ag.com. See FAC at ¶39. Each of the websites

include the YTS mark as a spurious designation that is identical with, or substantially

indistinguishable from Plaintiff’s registered YTS trademark. See Id. at ¶¶39, 46-47.

Plaintiff’s counsel has sent numerous communications to Defendant Shan requesting

him to cease using the YTS mark. See Decl. of Counsel at ¶6. Nonetheless,

Defendant Shan continues to operate at least the website YST.LT where he displays

the mark in flagrant violation of Plaintiff’s rights. See Id. at ¶7.

Defendant Hosam Azzam (“Azzam”) distributed and promoted the infringing

software applications (“app”) “Y Movies - YTS Movies Library” and “YTS movies”

from at least the Google play store. See FAC at ¶¶40, 48. Plaintiff’s counsel

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contacted Defendant Azzam on May 23, 2020 to request that he cease using

Plaintiff’s mark in connection with his apps. See Decl. of Counsel at ¶8. Defendant

Azzam ignored this request and continued to promote the apps using Plaintiff’s mark

until Plaintiff’s counsel sent him a copy of the FAC and a waiver of service request

via email on June 2, 2020. See Id. at ¶¶8-10.

Defendant Fahd Ali (“Ali”) promoted and distributed the app “Movie

Downloader 2020 | YTS Movies” from at least the Google play store. See FAC at

¶¶41, 48. Plaintiff’s counsel contacted Defendant Ali on May 29, 2020 to request

that he cease using Plaintiff’s mark in connection with his app. See Decl. of Counsel

at ¶13. Defendant Ali changed the infringing title of his app but has continued to

use the YTS mark in the description of his app in the Google Play store. See Id. at

¶18-19.

Defendants were served on June 18 and 19, 2020. See [Doc. #20] at ¶¶3-6.

Service was performed pursuant to Fed R. Civ. P. 4(f)(3) and this Court’s Order

[Doc. #13] of June 18, 2020. The Clerk of the Court entered default judgment on all

claims plead in the FAC against Defendants on July 14, 2020 [Doc. #23].

II. SUBJECT MATTER JURISDICTION AND VENUE

This Court has subject matter jurisdiction over this action pursuant to 15

U.S.C. § 1121, 28 U.S.C. § 1331, and 28 U.S.C. § 1338, since this matter involves

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substantial claims arising under the Federal Lanham Act. Venue is proper in this

District pursuant to 28 U.S.C. § 1391(b) and (c) and 28 U.S.C. § 1400(a).

III. PERSONAL JURISDICTION

A. The Court has Jurisdiction Pursuant to Fed. R. Civ. P. 4(k)(2), the So-Called

Federal Long-Arm Statute

1. Plaintiff’s Claims Against Defendants Arise under Federal Law.

Rule 4(k)(2) permits a federal court to exercise personal jurisdiction over a

defendant if “the defendant is not subject to jurisdiction in any state’s courts of

general jurisdiction,” and “exercising jurisdiction is consistent with the United States

Constitution and laws.” Rule 4(k)(2) imposes three requirements:

First, the claim against the defendant must arise under federal law.
Second, the defendant must not be subject to the personal jurisdiction of
any state court of general jurisdiction. Third, the federal court's exercise
of personal jurisdiction must comport with due process.

Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1159 (9th Cir. 2006) (citations omitted).

Plaintiff’s claims for Trademark Infringement and Unfair Competition under the

Lanham Act arise out of Federal law.

2. Defendants are not Subject to the Personal Jurisdiction of Any State Court

of General Jurisdiction.

Defendant Vinit and Defendant Ali are residents of India, Defendant Shan is

a resident of China, and Defendant Azzam is a resident of Egypt. See FAC at ¶¶26-

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29. Thus, Defendants are not subject to the personal jurisdiction of any state court

of general jurisdiction.

3. Defendants have Sufficient Minimum Contacts with the US that the

Maintenance of the Suit Does Not Offend Due Process.

Due process requires that a defendant have “minimum contacts with [the

forum state] such that the maintenance of the suit does not offend traditional

notions of fair play and substantial justice.” Int'l Shoe Co. v. State of Wash., Office

of Unemployment Comp. & Placement, 326 U.S. 310, 316 (1945) (citations

omitted) (internal quotations omitted). A court has specific jurisdiction over a

nonresident defendant when it “purposefully avails itself of the privilege of

conducting activities within the forum State,” Burger King Corp. v. Rudzewicz,

471 U.S. 462, 475 (1985), and the suit “aris[es] out of or relate[s] to the

defendant’s contacts with the forum.” Daimler AG v. Bauman, 571 U.S. 117, 127

(2014) (citation omitted); Bristol-Myers Squibb Co. v. Superior Ct. of Cal., San

Francisco Cty., ___ U.S. ___, 137 S. Ct. 1773, 1779-80 (2017) (alteration in

original).

There are two types of personal jurisdiction: general jurisdiction and specific

jurisdiction. Id. Plaintiff does not assert general jurisdiction. The specific

jurisdiction inquiry focuses on the relationship between the nonresident defendant,

the forum, and the litigation. Walden v. Fiore, 571 U.S. 277, 284 (2014). “For a

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State to exercise jurisdiction consistent with due process, the defendant's suit-

related conduct must create a substantial connection with the forum State.” Id. This

requires the relationship to “arise out of contacts that the ‘defendant himself creates

with the forum state” and “looks to the defendant's contacts with the forum State

itself, not the defendant’s contacts with persons who reside there.” Id. at 284-85.

To analyze specific jurisdiction, the 9th Circuit has articulated a three-part

test to evaluate the sufficiency of a defendant's minimum contacts with the forum:

(1) the defendant must either purposefully direct his activities toward the
forum or purposefully avail himself of the privileges of conducting
activities in the forum; (2) the claim must be one which arises out of or
relates to the defendant's forum-related activities; and (3) the exercise of
jurisdiction must comport with fair play and substantial justice, i.e., it
must be reasonable.

Axiom Foods, Inc. v. Acerchem Int’l, Inc., 874 F.3d 1064, 1068 (9th Cir. 2017)

(internal citations and quotations omitted).

In Holland America Line v. Wärtsilä North Amer., the 9th Circuit concluded

that the “due process analysis under Rule 4(k)(2) is nearly identical to traditional

personal jurisdiction analysis with one significant difference: rather than considering

contacts between the [defendant] … and the forum state, we consider contacts with

the nation as a whole.” Holland America Line v. Wärtsilä North Amer, 485 F.3d 450,

462 (9th Cir., 2007). Accordingly, Plaintiff will address the three-part test of Axiom

Foods, Inc. with respect to the US as the forum.

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a. The Defendants Purposefully Directs Their Activities Toward the US.

A purposeful direction analysis is appropriate because a claim for trademark

infringement sounds in tort. See Goldberg v. Cameron, 482 F. Supp. 2d 1136, 1144

(N.D. Cal. 2007) (“A claim for copyright infringement sounds in tort, and therefore

a purposeful direction analysis is appropriate.”). The purposeful direction analysis

has been equated with the “effects test” described in Calder v. Jones, 465 U.S. 783

(1984). Freestream Aircraft (Bermuda) Ltd. v. Aero Law Grp., 905 F.3d 597, 605

(9th Cir. 2018). “Under the Calder effects test, purposeful direction exists when a

defendant allegedly: (1) committed an intentional act, (2) expressly aimed at the

forum state, (3) causing harm that the defendant knows is likely to be suffered in the

forum state.” Id. at 604 n.3 (citation and internal quotation marks omitted).

i. Intentional Act

“An intentional act is one ‘denot[ing] an external manifestation of the actor’s

will . . . not includ[ing] any of its results, even the most direct, immediate, and

intended.’” Morrill v. Scott Financial Corporation, 873 F.3d 1136, 1142 (9th Cir.

2017) (some alterations in Morrill) (quoting Washington Shoe Co. v. A-Z Sporting

Goods, Inc., 704 F.3d 668, 673-74 (9th Cir. 2012)).

Defendants intentionally utilize numerous US companies such as using US

(California) email provider Google’s Gmail service, operating their websites and

apps via the US (California) nameserver company Cloudflare, Inc. and US

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(California) Google Play store, and advertising through US social media platforms

Facebook and Twitter (both in California). See FAC at ¶¶7-8, 10. Specifically,

Defendant Vinit uses the US (Washington) web host provider Amazon Web

Services, US (California) nameserver Cloudflare and US (California) payment

provider Visa to pay for hosting and nameserver services. Id. at ¶17. Defendant Shan

uses the US (California) nameserver Cloudflare, US (California) domain registrar

Dynadot, LLC and the US payment provider Visa. Id. at ¶18. Defendants Azzam

and Ali both promote and distribute their infringing software applications from the

Google Play store run by the US (California) company Google. Id. at ¶19.

Defendant Azzam uses the US (Arizona) domain registrar Namecheap for his

personal website. Id. at ¶20. Thus, because Defendants intentionally placed the

infringing marks on websites or app stores hosted by US companies, Defendants

intentionally utilized the infringing marks in the US via Google, Cloudflare,

Namecheap, and Amazon Web Services.

ii. Expressly Aimed at the Forum

The two factors that Courts have considered when determining whether an

action is expressly aimed at the forum are: (1) whether the relationship arises out of

contacts that the defendant himself creates with the forum State; (2) whether

defendant contacts with the forum State rather than with persons who reside there.

See Morrill, 873 F.3d at 1143 (quoting Walden, 134 S. Ct. 1115, 1122 (2014)).

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Defendants agreed to the terms of services and jurisdiction of laws of the US

in connection with their infringing activities. See FAC at ¶¶8, 17-20. When

Defendants Vinit and Shan registered for service with Cloudflare, they agreed to

jurisdiction and laws of California. See Decl. of Counsel at ¶21. When Defendants

Azzam agreed to register his domain with Namecheap, he agreed to be bound by the

jurisdiction and laws of Arizona. See Id. at ¶22. When Defendant Vinit agreed to the

terms of service of Amazon Web Services for hosting his website YTS.MS, he

agreed to the jurisdiction and laws of the state of Washington. See Id. at ¶23. When

Defendant Shan agreed to the terms of service for Dynadot, he agreed to the

jurisdiction and laws of California. See Id. at ¶24. Finally, when Defendants Azzam

and Ali agreed to the terms of service for the Google Play store, they agreed to be

bound by the jurisdiction and laws of California. See Id. at ¶25.

Furthermore, Defendants Vinit and Shan took advantage of provisions of US

law on their websites – namely the safe harbor protections of the Digital Millennium

Copyright Act (“DMCA”). See FAC at ¶9.

Under general contract principles, a forum selection clause may give rise to

waiver of objections to personal jurisdiction, provided that the defendant agrees to

be so bound. See Holland Am. Line Inc., 485 F.3d 450, 458 (9th Cir. 2007) (internal

citations omitted). Although these agreements provided for Courts in Arizona,

Washington and California, the focus of the Federal Long Arm statute test is the US

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as the forum. Moreover, these contacts are not the type of continuous contacts such

as a place of incorporation and principal place of business that would constitute

general jurisdiction with one of these states, thereby ruling out the applicability of

the Federal Long Arm statute.

As alleged in the FAC, Defendants Vinit and Shan purposely direct their

electronic activity into the US to target and attract a substantial number of users in

the US based upon personal information, such as web browsing history. See FAC at

¶12. Defendants Vinit and Shan collect log files, including Internet Protocol (“IP”)

address, Internet Service Provider (“ISP”), and browser type of each user who visits

their websites, and utilize cookies and web beacons to store information of users. Id.

at ¶13. Defendants Vinit and Shan then use these cookies, log files, and/or web

beacons to tailor advertisements expressly aimed at US users and gain financial

benefits from such advertisements. See Id. at ¶¶14-15. Particularly, users in Hawaii

receive advertisements based on their location and websites previously visited. Id.

Defendants Azzam and Ali purposefully direct their electronic activity into

the US through the Google Play store, financially benefiting from advertisements

aimed at US users and the US consumer base. See FAC ¶14; Decl. of Counsel ¶16.

iii. Defendants Knew they were Causing Harm Likely to be Suffered

in the US.

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Defendants knew they were causing harm in the US when operating their

infringing websites and/or apps. As stated above, Defendants registered and hosted

websites and apps in the US by US companies. Defendants Vinit’s and Shan’s

websites promote movies produced by US companies, with a download link for users

to reproduce each movie in violation of US copyright law, all under the infringed

YTS mark. See FAC at ¶¶9, 11.

Thus, Defendants knew they were causing harm not only to the US companies

that produced these movies, but also Plaintiff’s trademark. Furthermore, Plaintiff’s

Counsel communicated directly with Defendants and informed them of the harm

they were causing in the US. See Decl. of Counsel [Doc. #13-2] at ¶¶2-13.

b. Plaintiff’s Claims Arise out of or Relates to the Defendants’ Forum-Related

Activities.

Plaintiff’s claims arise from Defendants’ websites or apps registered with US

companies (Namecheap, Cloudflare, Dynadot), promoted via US social media

platforms (Twitter and Facebook), hosted via the US companies (Cloudflare and

Amazon Web Services), promoted on US app store Google Play, and paid from a

US company (Visa) account. See FAC at ¶¶7-10, 16-20; Decl. of Counsel at ¶¶3, 9,

11, 14.

c. The Exercise of Jurisdiction Comports with Fair Play and Substantial

Justice.

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It is not Plaintiff’s burden to address this prong. See Mavrix Photo, Inc. v.

Brand Technologies, Inc., 647 F.3d 1218, 1228 (9th Cir. 2011). However, Plaintiff

respectfully submits that since Defendants have already consented to be haled into

US courts in California, Washington, and Arizona, there is no further burden for

Defendants to be haled into a Court in Hawaii.

IV. DEFENDANTS’ DEFAULT ENTERED

Defendants were served via authorized alternate means per this Court’s order

[Doc. #15]. When Defendants failed to appear, plead, or otherwise defend, Plaintiff

filed request for the entry of default on July 12, 2020 [Doc. # 22] which was granted

by the Court [Doc. #23].

V. ARGUMENT

A. Trademark Infringements Have Been Established

A plaintiff asserting a trademark infringement claim must demonstrate: 1) it

has a valid, protectable mark, and 2) the defendant’s use of the mark is likely to

cause consumer confusion. See OTR Wheel Eng'g, Inc. v. W. Worldwide Servs., Inc.,

897 F.3d 1008, 1022 (9th Cir. 2018). The “ultimate test” for unfair competition is

exactly the same as for trademark infringement: “whether the public is likely to be

deceived or confused by the similarity of the marks.” Century 21 Real Estate Corp.

v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988) (citations omitted).

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1. Plaintiff has Established Ownership of the Trademark.

In the FAC, Plaintiff alleged that it owns the trademark for the mark “YTS”

and included the Trademark Reg. No. 6,025,651, which issued on Mar. 31, 2020 by

the United States Patent and Trademark Office. See Exhibit “1” [Doc. #8-1] of the

FAC. Registration is “prima facie evidence of the validity of the registered mark and

of the registration of the mark, of the registrant's ownership of the mark….” 15

U.S.C. § 1115(a).

2. Defendants’ Use of Plaintiff’s Trademark Likely Causes Consumer

Confusion.

As alleged in the FAC, Defendants adopted and used identical and/or

confusingly similar YTS marks on their own websites and/or apps to distribute

and/or stream unlicensed copyright protected content after Plaintiff first adopted the

trademark. See FAC at ¶36. Indeed, Defendant Vinit operated the website YTS.MS,

with the YTS mark prominently displayed on the webpage. See Id. at ¶¶38, 45.

Defendant Shan operates many websites with the YTS mark, including YST.LT,

YTS.TL, ytsag.me, yts.ae, ytsmovies.cc and yts-ag.com, with the YTS mark

prominently displayed. See Id. at ¶¶39, 46. Defendant Azzam promoted and

distributed the apps “Y Movies – YTS Movies Library” and “YTS movies” from at

least the Google Play store, both utilizing the YTS mark in the graphical user

interface. See Id. at ¶¶40, 48. Similarly, Defendant Ali promoted and distributed the

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app “Movie Downloader 2020 | YTS Movies” from at least the Google Play store,

also with the YTS mark. See Id. at ¶¶41, 48. Thus, Defendants intentionally utilize

Plaintiff’s mark to mislead the public about the origins of their goods and services,

damaging both the Plaintiff and public itself. Moreover, Defendants widely advertise

their goods and services with Plaintiff’s YTS mark in order to trade on Plaintiff’s

reputation and goodwill.

In determining whether confusion between related goods is likely, the

following eight factors in AMF Inc. v. Sleekcraft Boats are controlling:

(1) strength of the mark; (2) proximity of the goods; (3) similarity of the
marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type
of goods and the degree of care likely to be exercised by the purchaser; (7)
defendant's intent in selecting the mark; and (8) likelihood of expansion of the
product lines.

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979). The Sleekcraft

test is a “fluid one and the plaintiff need not satisfy every factor, provided that strong

showings are made with respect to some of them.” Surfvivor Media, Inc. v. Survivor

Prods., 406 F.3d 625, 631 (9th Cir. 2005); See Dreamwerks Prod. Grp., Inc. v. SKG

Studio, 142 F.3d 1127 (9th Cir. 1998) (allowing case to proceed past summary

judgment where the plaintiff overwhelmingly satisfied three Sleekcraft factors),

Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1055 (9th Cir.

1999) (finding three Sleekcraft factors to be the most important). Thus, Plaintiff

focuses on five of the eight factors that are overwhelmingly in favor of Plaintiffs.

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i. Strength of the Mark

The strength of the Plaintiff’s mark determines the “scope of trademark

protection to which the mark is entitled. Entrepreneur Media, Inc. v. Smith, 279 F.3d

1135, 1141 (9th Cir.2002). Indeed, the more unique and distinctive the mark, the

greater the degree of protection. Id. Trademarks are divided into five categories, with

“arbitrary” and “fanciful” marks being the two strongest. Id. “Fanciful” marks

consist of “coined phrases” without commonly known connection with the product

at hand. Id. Examples of fanciful marks include “Kodak” cameras or “Aveda” skin

care products. Surfvivor Media, 406 F.3d 625, 632 (9th Cir. 2005).

Plaintiff’s YTS mark is a fanciful mark, as it contains no commonly known

connection with Plaintiff’s products of distributing licensed content to the public.

See FAC ¶23. Thus, Plaintiff’s unique and distinctive mark affords the highest

degree of trademark protection.

ii. Proximity of the Goods

To determine whether the parties’ goods or services are proximate, the Court

looks to whether “customers are ‘likely to associate’ the two product lines…[and]

whether the buying public could reasonably conclude that the products came from

the same source.” Surfvivor Media at 633 (citations omitted).

In this case, Defendants’ goods and services are intentionally and willfully

extremely similar and/or identical to those of Plaintiff’s. Indeed, Defendants seek to

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take advantage of Plaintiff’s goodwill and reputation by promoting similar media

content, but whereas Plaintiff properly distributes licensed goods, Defendants

illegally promote rampant piracy of copyright protected films. See FAC ¶¶ 23, 36,

42.

iii. Similarity of the Marks

In determining the similarity of parties’ marks, the Court considers each mark

within the “context of other identifying features,” such as “sight, sound, and

meaning.” Surfvivor Media at 633 (citations omitted).

Here, any further analysis is unnecessary as Defendants utilize Plaintiff’s

marks exactly, in both website domains and on the Google Play store, as well as

images of the mark on Defendants’ websites or apps. See FAC ¶¶38-41, 45-48.

iv. Marketing Channels Used

To determine the overlap of marketing channels used, the Courts look to

“whether the parties distribute their goods in the same marketing channels.”

Surfvivor Media at 633 (citations omitted).

In the instant case, Defendants intentionally and willfully utilize the same

marketing channels that Plaintiff utilizes to promote Defendants’ unlicensed content,

despite the fact that Plaintiff has distributed licensed content in the US under its YTS

mark since Jan. 27, 2020. See FAC ¶¶42, 51.

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v. Defendants’ Intent in Selecting the Mark

While malicious intent is not necessary to prove trademark infringement,

when the alleged infringer “adopted his mark with knowledge, actual or

constructive, that it was another's trademark, resolution of this factor favors

[plaintiffs].” Surfvivor Media at 634 (citations omitted).

In this case, resolution of this factor overwhelmingly favors the Plaintiff.

Defendants engaged in infringing activity despite having constructive notice of

Plaintiff’s trademark registration rights under 15 U.S.C. § 1072, and actual

knowledge of Plaintiff’s use of its YTS mark. FAC at ¶53. Indeed, even after

Defendants were contacted concerning their infringing activities, Defendants failed

to comply to demands, and continued to utilize and infringe Plaintiff’s rightful

marks. Id. at ¶54. Accordingly, Defendants’ infringing actions prove a strong

likelihood of consumer confusion regarding the parties’ goods and services, and

result in a resolution of the Sleekcraft factors for Plaintiff. As such, Plaintiff

respectfully asks the Court to find Defendants committed trademark infringement.

B. Default Judgment is Appropriate

Because Defendants have chosen to default instead of defending, they have

admitted the truth of the allegations asserted in the complaint. TeleVideo Sys., Inc.

v. Heidenthal, 826 F.2d915, 917–18 (9th Cir. 1987) (“The general rule of law is that

upon default the factual allegations of the complaint, except those relating to the

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amount of damages, will be taken as true.”). While the court may conduct a hearing

to determine damages, See Fed. R. Civ. P. 55(b)(2), the court can rely on evidence

submitted by Plaintiff. See Fustok v. ContiCommondity Servs., Inc., 873. F.2d 38,

40 (2d Cir. 1989).

Plaintiff now respectfully requests that this Court enter a default judgment

against Defendants. When evaluating whether to grant a judgment by default, courts

consider a number of factors, including:

(1) the possibility of prejudice to the plaintiff, (2) the merits of plaintiff's
substantive claim, (3) the sufficiency of the complaint, (4) the sum of money
at stake in the action, (5) the possibility of a dispute concerning material facts,
(6) whether the default was due to excusable neglect, and (7) the strong policy
underlying the Federal Rules of Civil Procedure favoring decisions on the
merits.

Eitel v. McCool, 782 F.2d 1470, 1471–72 (9th Cir.1986); see also Parr v. Club

Peggy, Inc., 2012 U.S. Dist. LEXIS 24758 (D. Haw. Jan. 19, 2012). All of these

factors support the conclusion that Plaintiffs are entitled to a default judgment.

1. The Possibility of Prejudice to Plaintiff

Plaintiff would certainly be prejudiced if the Court declines to enter default

judgment, for it would leave Plaintiff without any remedy against Defendants, who

have failed to even show up and contest this dispute. “If Plaintiff[’s] motion for

default judgment is not granted, Plaintiff[] will likely be without other recourse for

recovery.” PepsiCo, Inc. v. California Sec. Cans, 238 F. Supp. 2d 1172, 1177 (C.D.

Cal. 2002). Despite the fact that Defendants don’t deny that Plaintiff is entitled to
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an award of statutory damages, attorneys’ fees, costs, and a permanent injunction, if

this Court refuses to enter a default judgment against them, Plaintiff would be left

unable to seek damages or even to prevent Defendants from brazenly continuing to

infringe Plaintiff’s trademark by promoting and distributing unlicensed content on

their websites and on the Google Play website. Indeed, a refusal would entirely

frustrate both the Lanham Act and the civil justice system.

2. & 3. The Merits of Plaintiff’s Substantive Claims and the Sufficiency of the

FAC

As discussed above, Plaintiff has adequately pled its claims for trademark

infringement and unfair competition under the Lanham Act. See FAC at ¶¶50-64.

4. The Sum of Money at Stake in the Action

Plaintiff is seeking an award of statutory damages of $250,000 against each

of Defendants for willful infringements of Plaintiff’s YTS mark, pursuant to 15

U.S.C. § 1117(c)(2). The amount of money at stake relative to the cost of continued

litigation makes the matter appropriate for default judgment.

5. The Possibility of a Dispute Concerning the Material Facts

There is no possibility of a dispute arising as to any material fact in this case.

Because of Defendants’ default, this Court must take the factual allegations asserted

in the FAC as true. See TeleVideo Sys., 826 F.2d at 917–18. Moreover, Defendants

have not made any attempt to contest those allegations (or for that matter, even

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bothered to appear). Finally, Defendants have admitted to being the operator of the

respective websites and/or apps. See Decl. of Counsel at ¶¶4, 11, 13.

6. Whether the Default was Due to Excusable Neglect

Defendants’ default is not the result of excusable neglect. As discussed above,

Defendants were served a copy of the FAC via Court authorized alternate means

between June 18, 2020 and June 19, 2020. See Decl. of Counsel [Doc. #20] at ¶¶3-

6. Plaintiff’s counsel sent a copy of the Rule 55(a) Request for Clerk to Enter Default

[Doc. #22] to all Defendants. See Certificate of Service [Doc. #22-3]. Plaintiff’s

counsel also sent a copy of the Entry of Default [Doc. #23] to the Defendants. See

Decl. of Counsel at ¶¶5, 6, 12, 14. Furthermore, through email communications with

Plaintiff’s Counsel, Defendants Vinit and Ali have admitted to being the operator of

the respective website and app, as well as participating in discussions regarding

settlement options. See Decl. of Counsel [Doc. #13-2] at ¶¶8, 13, 15. Thus,

Defendants have been provided with notice of this proceeding and the risks for

failing to appear. Accordingly, Defendants’ decision to neither appear nor defend

“cannot be attributed to excusable neglect.” Shanghai Automation Instrument Co.,

Ltd. v. Kuei, 194 F.Supp.2d 995, 1005 (N.D. Cal.2001) (reasoning that excusable

neglect is not present when Defendant “were properly served with the Complaint,

the notice of entry of default, as well as the papers in support of the instant motion”).

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7. The Policy Considerations

While it is true that “cases should be decided upon their merits whenever

reasonably possible,” Defendants’ failure to respond to this lawsuit makes achieving

a ruling on the merits entirely unfeasible. See Pena v. Seguros La Comercial, S.A.,

770 F.2d 811, 814 (9th Cir. 1985). Accordingly, the only way for this case to reach

a resolution of any kind is to award Plaintiff default judgment. Absent a judgment

by default, Plaintiff will not be made whole and has no mechanism to prevent further

infringements of its trademark by these Defendants. In summary, as demonstrated

above, all of the factors weigh in favor of granting Plaintiff a default judgment

against Defendants.

VI. STATUTORY DAMAGES FOR WILLFUL TRADEMARK

INFRINGEMENT

Plaintiff voluntarily withdraws its claim against Defendants Vinit and Shan

for statutory damages of $100,000 pursuant to 15 U.S.C. § 1117(d) for registering

their domain names with bad faith intent to profit from Plaintiff’s registered

trademark. See FAC at ¶(F).

15 U.S.C. § 1117(c)(1) allows statutory damages of “not less than $1,000 or

more than $200,000 per counterfeit mark per type of goods or services sold, offered

for sale, or distributed, as the court considers just”. 15 U.S.C. § 1117(c)(2) allows

for statutory damages of not more than $2,000,000 for willful use of a counterfeit

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mark. A counterfeit mark is defined as a “counterfeit of a mark that is registered on

the principal register in the United States Patent and Trademark Office for such

goods or services sold, offered for sale, or distributed and that is in use, whether or

not the person against whom relief is sought knew such mark was so registered.” 15

U.S.C. § 1116(d)(1)(B)(i).

Plaintiff elects to receive statutory damages of $250,000 against each of

Defendants. Undoubtedly, Defendants’ conduct is willful. Despite having

constructive notice of Plaintiff’s Federal registration of its mark under 15 U.S.C. §

1072, as well as actual knowledge of Plaintiff’s use of its YTS mark, Defendants

continued to advertise and distribute their goods and services using Plaintiff’s YTS

mark. See FAC at ¶¶53-56. Furthermore, Defendants purposefully utilize Plaintiff’s

YTS mark in their domain registrations and app names in order to mislead

consumers about the origins of its goods and services as connected to Plaintiff,

resulting in a substantial loss of income, profits, and goodwill. See Id. at ¶¶38-39,

61-63. Additionally, Defendants used Plaintiff’s mark in connection with

distribution of unlicensed copyright protected films, leading to rampant copyright

infringement, further causing undue damage to Plaintiff’s mark and brand. See FAC

at ¶¶ 23, 36, 42.

District Courts have broad discretion in determining statutory damages. K &

N Eng'g, Inc. v. Bulat, 259 F. App'x 994, 995 (9th Cir. 2007). Still, some of the

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factors courts have considered include the infringer’s “willingness in offering for

sale the counterfeit goods…[and] ongoing failure to comply with discovery requests,

which made proof of actual damages difficult or impossible.” Koninklijke Philips

Elecs., N.V. v. KXD Tech., Inc., 347 F. App'x 275, 276 (9th Cir. 2009) (affirming

district court’s default judgment of $1,000,000 against infringing party).

In Philip Morris USA, Inc. v. Castworld Prod., Inc., the Central District of

California awarded a default judgment of $2,000,000 in statutory damages against

defendant given defendant’s willful infringing of counterfeit goods, the “likelihood

that its conduct would cause confusion or mistake or otherwise deceive customers,”

and defendant’s “failure to comply with the judicial process or to participate in any

way in the present litigation.” Philip Morris USA, Inc. v. Castworld Prod., Inc., 219

F.R.D. 494, 500 (C.D. Cal. 2003). Plaintiff requests a similar award in this case

because Defendants have willfully infringed on Plaintiff’s mark and failed to

participate in the judicial process in any way. Particularly, because Plaintiff could

not have the Rule 26 conference due to Defendants’ default, Plaintiff was unable to

conduct discovery to determine the profits Defendants obtained from their infringing

apps and websites despite the millions of visitors to their websites. See Decl. of

Counsel at ¶¶27-28.

Defendant Vinit steadfastly continued his infringing conduct despite multiple

prior notices from Plaintiff’s counsel and his host provider AWS. See Id. at ¶¶1-5.

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Defendant Vinit only finally took down his infringing website after Plaintiff’s

counsel sent him a copy of the entry of default, but then sold the domain YTS.MS

rather than voluntarily transferring it to Plaintiff. See Id. at ¶26. Accordingly,

Plaintiff may be forced to begin further legal process against the purchaser of the

YTS.MS domain.

Defendant Azzam ignored Plaintiff’s counsel’s notice about the infringing

nature of his app and only took it down after Plaintiff’s counsel sent him a copy of

the FAC. See Decl. of Counsel at ¶¶8-11. Per Defendant Azzam’s CV [Doc. #13-

7], he is a software developer with nearly four years of experience including with

the major Middle Eastern software company INTDV. See

https://www.softbankrobotics.com/emea/en/partner/intdv. With such experience,

Defendant Azzam should know better about the consequences of his actions.

Although Defendant Ali changed the title of his infringing app in the Google

Play store after Plaintiff’s counsel sent him a cease and desist message, he has

continued to use Plaintiff’s mark in the description of his app. See Decl. of Counsel

at ¶¶13, 18-19. He has been untruthful with his communications with Plaintiff’s

counsel. Particularly, he stated that he had removed the app and had no other apps

on other platforms; however, Plaintiff’s counsel determined that he had merely

changed the name of his app and was continuing to distribute it from the Google

Play store. See Id.

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VII. PLAINTIFFS ARE ENTITLED TO INJUNCTIVE RELIEF

Plaintiff requests that the Court grant its request for injunctive relief,

permanently barring Defendants from infringing Plaintiff’s YTS trademark and

ordering any service provider provided with notice of the injunction in privity with

Defendants such as Cloudflare, Google, Dynadot cease providing service for and

facilitating access to Defendants’ websites and software apps through which

Defendants engage in infringements of Plaintiff’s registered trademark. The Court

is authorized to grant permanent injunctive relief to prevent or restrain trademark

infringement. See 15 U.S.C. § 1116(a) (“The several courts vested with jurisdiction

of civil actions arising under this chapter shall have power to grant injunctions…to

prevent the violation of any right of the registrant of a mark registered in the Patent

and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of

section 1125 of this title.”).

A Plaintiff is required to satisfy the following four-factor test to obtain a

permanent injunction: (1) that it has suffered an irreparable injury; (2) that remedies

available at law, such as monetary damages, are inadequate to compensate for that

injury; (3) that, considering the balance of hardships between the plaintiff and

defendant, a remedy in equity is warranted; and (4) that the public interest would not

be disserved by a permanent injunction. See eBay Inc. v. MercExchange, L.L.C.,

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547 U.S. 388, 391 (2006); Cottonwood Envtl. Law Ctr. v. U.S. Forest Serv., 789 F.3d

1075, 1088 (9th Cir. 2015). In Wecosign, Inc. v. IFG Holdings, Inc., the Central

District of California granted an injunction against trademark infringing defendants

since plaintiff had:

“demonstrated actual success on the merits of its trademark infringement and

cyberpiracy claims. If an injunction were not granted, Plaintiff would suffer
irreparable injury from the ongoing damages to its goodwill and diversion of
customers to counterfeit services. Furthermore, the balance of hardships
favors Plaintiff because without an injunction, Plaintiff will lose profits and
goodwill, while an injunction will only proscribe De1fendants’
infringing activities. Finally, an injunction is in the public interest because the
public has an interest in avoiding confusion between two companies'
products.”

Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072, 1084 (C.D. Cal. 2012).

Despite Defendants defaulting, Plaintiff has demonstrated actual success on

the merits of its YTS mark being infringed by Defendants. Further, Plaintiff has

shown it would suffer irreparable injury from the ongoing damages to its goodwill

and reputation, while Defendants would not face any hardships.

Moreover, Defendants are likely to continue infringing Plaintiff’s mark,

underscoring the need for permanent injunctive relief. Defendant Shan continues to

infringe the mark on his multiple websites. See Decl. of Counsel at ¶7. Defendant

Ali merely removed the “YTS” mark from the title of his app, but continues to

include the mark in the description portion of the same app. See Id. at ¶¶18-19.

Defendant Vinit only took down the website after notification of the lawsuit despite

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multiple pre-litigation demands. See Id. at ¶¶4-5. Defendant Azzam only took down

his app after notification of the lawsuit despite multiple a pre-litigation demand. See

Id. at ¶¶8-11.

Finally, Plaintiff believes an injunction is in the public interest since Plaintiff

has previously demonstrated the likelihood of confusion between Plaintiff and

Defendant goods and services. Unless this Court grants an injunction, Defendants

will likely continue to infringe on Plaintiff’s mark, further damaging Plaintiff’s

goodwill and reputation. Granting an injunction is the only way to prevent further

infringement.

Defendant Shan’s website and Defendant Ali’s app promotes rampant

copyright infringement of motion pictures. See FAC ¶¶ 23, 36, 42. Although the

owners of these motion pictures are not Plaintiff’s in the present action, “the public

has a compelling interest in protecting copyright owners’ marketable rights to their

work and the economic incentive to continue creating television programming and

motion pictures.” Disney Enters., Inc. v. VidAngel, Inc., 869 F.3d 848, 867 (9th Cir.

2017) (quotations and citations omitted).

Enjoining the Defendants’ illegal conduct plainly furthers the public interest.

VIII. CONCLUSION

Plaintiff respectfully requests that the Court enter default judgment against

Defendants for an award of the requested statutory damages of $250,000 against

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each of Defendants and permanently enjoin the Defendants from infringing

Plaintiff’s registered mark as requested.

DATED: Kailua-Kona, Hawaii, August 12, 2020.

CULPEPPER IP, LLLC

/s/ Kerry S. Culpepper

Kerry S. Culpepper

Attorney for Plaintiff

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