Case: 1:23-cv-14575 Document #: 11 Filed: 10/06/23 Page 1 of 37 PageID #:53

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

EMOJI COMPANY GmbH, )

) Case No. 23-cv-14575
Plaintiff, )
) Judge Charles P. Kocoras
v. )
)
THE INDIVIDUALS, CORPORATIONS, LIMITED )
LIABILITY COMPANIES, PARTNERSHIPS AND )
PARTNERSHIPS AND UNINCORPORATED )
ASSOCIATIONS IDENTIFIED )
ON SCHEDULE A HERETO, )
)
Defendants. )

MEMORANDUM IN SUPPORT OF 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 E-MAIL AND ELECTRONIC PUBLICATION

Plaintiff, EMOJI COMPANY GmbH, submits this Memorandum in support of its Ex Parte

Motion for Entry of a Temporary Restraining Order, including a temporary injunction, expedited

discovery, and service of process by email and electronic publication (the “Ex Parte Motion”).
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TABLE OF CONTENTS

I. INTRODUCTION AND SUMMARY OF ARGUMENT ........................................................1

II. STATEMENT OF FACTS ..........................................................................................................5
A. PLAINTIFF'S TRADEMARKS AND PRODUCTS .............................................................................5
B. DEFENDANTS’ UNLAWFUL ACTIVITIES ....................................................................................5
i. Defendants Operate Legitimate-Looking Internet Stores .................................................6
ii. Defendants Illegitimately Optimize the Defendants' Internet Stores for Search Engines 7
iii. Defendants Use Fictitious Aliases and Common Tactics to Evade Shut Down ..............7
III. ARGUMENT ..............................................................................................................................10
A. THIS COURT MAY EXERCISE PERSONAL JURISDICTION OVER DEFENDANTS ..........................11
B. STANDARD FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION ............12
C. PLAINTIFF WILL LIKELY SUCCEED ON THE MERITS ...............................................................13
i. Plaintiff Will Likely Succeed on Its Trademark Infringement and Counterfeiting Claim13
ii. Plaintiff Is Likely to Succeed on Its False Designation of Origin Claim........................17
iii. Plaintiff Is Likely to Succeed on Its Illinois Uniform Deceptive Trade Practices Act

Claim 18

D. THERE IS NO ADEQUATE REMEDY AT LAW AND PLAINTIFF WILL SUFFER IRREPARABLE

HARM IN THE ABSENCE OF PRELIMINARY RELIEF ..................................................................18
E. THE BALANCING OF HARMS TIPS IN PLAINTIFF'S FAVOR .......................................................19
F. ISSUANCE OF THE INJUNCTION IS IN THE PUBLIC INTEREST....................................................20
IV. THE EQUITABLE RELIEF SOUGHT IS APPROPRIATE................................................21
A. A TEMPORARY RESTRAINING ORDER IMMEDIATELY ENJOINING DEFENDANTS’
UNAUTHORIZED AND UNLAWFUL USE OF PLAINTIFF'S MARKS IS APPROPRIATE ...................22
B. PREVENTING THE FRAUDULENT TRANSFER OF ASSETS IS APPROPRIATE ...............................23
C. PLAINTIFF IS ENTITLED TO EXPEDITED DISCOVERY ..............................................................25
V. A BOND SHOULD SECURE THE INJUNCTIVE RELIEF ................................................26
VI. CONCLUSION ..........................................................................................................................27

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TABLE OF AUTHORITIES

Cases

Abbott Labs. v. Mead Johnson & Co.,

971 F.2d 6, 11 (7th Cir. 1992) ........................................................................................................ 13

Abercrombie & Fitch Trading Co. v. 4cheapbags.com,

No. 1:12-cv-21088 (S. D. Fla. April 4, 2012) (unpublished).................................................3, 23, 27

All Star Championship Racing, Inc. v. O’Reilly Auto. Stores, Inc.,

2013 WL 1701871, *10 (C.D. Ill. Apr. 18, 2013) .......................................................................... 17

Am. Broad. Co. v. Maljack Prods., Inc.,

34 F. Supp. 2d 665, 681 (N.D. Ill. 1998) ........................................................................................ 18

Animale Grp. Inc. v. Sunny’s Perfume Inc.,

256 F. App’x 707, 709 (5th Cir. 2007) ........................................................................................... 24

Beats Electronics, LLC v. The Partnerships, et al.,

No. 13-cv-6724 (N.D. Ill. Sept. 25, 2014) (unpublished) ........................................................... 3, 22

Burger King Corp. v. Majeed,

805 F. Supp. 994, 1006 (S.D. Fla. 1992) ........................................................................................ 20

CAE, Inc. v. Clean Air Eng’g Inc.,

267 F.3d 660, 681 (7th Cir. 2001) .................................................................................................. 15

Calvin Klein Trademark Trust, et al. v. The Partnerships, et al.,

No. 13-cv-8186 (N.D. Ill. Nov. 19, 2013) (unpublished) ........................................................... 3, 22

Charter Nat’l Bank & Trust v. Charter One Fin., Inc.,

No. 1:01-cv-00905, 2001 WL 527404, *1 (N.D. Ill. May 15, 2001).............................................. 12

Chrome Hearts LLC v. The Partnerships, et al.,

No. 13-cv-4784 (N.D. Ill. July 10, 2013) (unpublished) ....................................................... 3, 22-23

Coach, Inc., et al. v. Does 1-100,

No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) .................................................. 3, 23, 27

Columbia Pictures Indus., Inc. v. Jasso,

927 F. Supp. 1075, 1077 (N.D. Ill. 1996) ....................................................................................... 10

CSC Holdings v. Redisi

309 F.3d, 988 (7th Cir. 2002) ………………………………………………………………………. 25

ii
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Deckers Outdoor Corp. v. Does 1-1,281,

No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)................................................... 3, 23, 27

Deckert v. Independence Shares Corp., 311 U.S. 282 (1940) ………………………………………….. 24

Dorr-Oliver, Inc. v. Fluid-Quip, Inc.,

94 F.3d 376, 381 (7th Cir. 1996) .................................................................................................... 15

Eli Lilly & Co. v. Natural Answers, Inc.,

233 F.3d 456, 461, 462, 469 (7th Cir. 2000) ...................................................................... 13, 15, 18

Ford Motor Co. v. Lapertosa, 126 F.Supp. 2d 463 (E.D. Mich. , 2001)………………………………. 23
G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc.,
873 F.2d 985, 999 (7th Cir. 1989) .................................................................................................. 15

Gateway Eastern Railway Co. v. Terminal Railroad Assoc. of St. Louis,

35 F.3d 1134, 1140 (7th Cir. 1994) ............................................................................................... 19

Gillespie v. Civiletti,
629 F.2d 637, 642 (9th Cir. 1980) .................................................................................................. 25

Grupo Mexicano de Desarollo, S.A. v. Alliance Bond Fund,

527 U.S. at 308 (1999) .................................................................................................................... 24

Helene Curtis Industries, Inc. v. Church & Dwight Co., Inc.,

560 F.2d 1325, 1332 (7th Cir. 1977) .............................................................................................. 18

Hoechst Diafoil Co. v. Nan Ya Plastics Corp.,

174 F.3d 411, 421 (4th Cir. 1999); Fed. R. Civ. P. 65(c) ............................................................... 26

Ideal Indus., Inc. v. Gardner Bender, Inc.,

612 F.2d 1018, 1026 (7th Cir. 1979)………………………………………………………...19

In re Vuitton et Fils, S.A.,

606 F.2d 1 (2d Cir. 1979)............................................................................................................... 3-4

Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc.,

846 F.2d 1079, 1092 (7th Cir. 1988) .............................................................................................. 18

James Burrough Ltd. v. Sign of the Beefeater, Inc.,

540 F.2d 266, 274 (7th Cir. 1976) .................................................................................................. 20

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co.,

188 F. 3d 427, 436 (7th Cir. 1999) ................................................................................................. 17

Kraft Food Holdings, Inc. v. Helm,

205 F. Supp. 2d 942, 956 (N.D. Ill. 2002) ...................................................................................... 23
Krause Int’l Inc. v. Reed Elsevier, Inc.,
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866 F. Supp. 585, 587-88 (D.D.C. 1994)........................................................................................ 20

Levi Strauss & Co. v. Sunrise Int’l Trading Inc.,

51 F.3d 982, 987 (11th Cir. 1995) ............................................................................................ 24-25

Libman Co. v. Vining Indus., Inc.,

69 F.3d 1360, 1363 (7th Cir.1995) ................................................................................................. 16

Lorillard Tobacco Co. v. Montrose Wholesale Candies,

2005 WL 3115892, at *13 (N.D. Ill. Nov. 8, 2005)........................................................................ 24

Lululemon Athletica Canada Inc. v. The Partnerships, et al.,

No. 13-cv-6297 (N.D. Ill. Sept. 10, 2013) (unpublished) ........................................................... 3, 22

Luxottica USA LLC v. The Partnerships, et al.,

No. 13-cv-4429 (N.D. Ill. June 20, 2013) (unpublished)............................................................ 3, 23

Malarkey-Taylor Assocs., Inc. v. Cellular Telecomms. Indus. Ass’n,

929 F. Supp. 473, 478 (D.D.C. 1996). ............................................................................................ 20

Manolo Blahnik Int’l Ltd. v. The Partnerships, et al.,

No. 13-cv-7810 (N.D. Ill. Nov. 12, 2013) (unpublished) ........................................................... 3, 22

Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc.,

128 F.3d 1111, 1114 (7th Cir. 1997) .............................................................................................. 18

Michael Kors, L.L.C. v. The Partnerships and Unincorporated Associations Identified on Schedule
“A”,
No. 13-cv-8612 (N.D. Ill. Dec. 5, 2013) (unpublished).............................................................. 3, 22

NBA Properties, Inc., et al. v. The Partnerships, et al.,

No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013) (unpublished) .............................................................. 3, 22

Neopost Industrie B.V. v. PFE Int’l Inc.,

403 F. Supp. 2d 669, 684 (N.D. Ill. 2005) ................................................................................ 14, 17

Oakley, Inc. v. Does 1-100,

No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012) (unpublished)...................................................... 3, 23, 27

Oppenheimer Fund, Inc. v. Sanders,

437 U.S. 340, 351, 98 S.Ct. 2380 (1978) ........................................................................................ 25

Polaroid Corp. v. Polarad Electronics Corp.,

287 F.2d 492, 495 (2d Cir. 1961).................................................................................................... 14

Polo Fashions, Inc. v. Craftex, Inc.,

816 F.2d 145, 148 (4th Cir.1987) ................................................................................................... 14
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Promatek Industries, Ltd. Equitrac Corp., 300 F.3d 808, 813(7th Cir. 2002)………………………… 19

Purdue Research Found. v. Sanofi-Sythelabo, S.A.,

338 F.3d 773, 782 (7th Cir. 2003) ............................................................................................. 11-12

Rathmann Grp. v. Tanenbaum,

889 F.2d 787, 789 (8th Cir. 1989) .................................................................................................. 26

Re/Max N. Cent., Inc. v. Cook,

272 F.3d 424, 432 (7th Cir. 2001) .................................................................................................. 18

Reebok Int'l Ltd. v. Marnatech Enters., Inc.,

970 F.2d 552, 559 (9th Cir. 1992) ........................................................................................... 24, 25

Sands, Taylor & Wood Co. v. Quaker Oats Co.,

978 F.2d 947, 960 (7th Cir. 1992) .................................................................................................. 16

Shashi, Inc. v. Ramada Worldwide, Inc.,

No. 7:05-cv-00016-JGW-mfu, 2005 WL 552593, *4 (W.D. Va. Mar. 1, 2005) ............................ 21

Spex, Inc. v. Joy of Spex, Inc.,

847 F. Supp. 567, 579 (N.D. Ill. 1994) ........................................................................................... 18

Stahly, Inc. v. M.H. Jacobs Co.,

183 F.2d 914, 917 (7th Cir. 1950) .................................................................................................. 20

Topps Co., Inc. v. Gerrit J. Verburg Co.,

41 U.S.P.Q.2d 1412, 1417 (S.D.N.Y.1996) .................................................................................... 14

Tory Burch LLC v. Zhong Feng, et al.,

No. 1:12-cv-09066 (N.D. Ill. Nov. 15, 2012) (unpublished) ................................................ 3, 23, 27

Tory Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd.,

No. 1:10-cv-09336-DAB (S.D.N.Y. Jan. 4, 2011) (unpublished) .............................................. 3, 23

Trans Union LLC v. Credit Research, Inc.,

142 F. Supp. 2d 1029, 1043 (N.D. Ill. 2001) .................................................................................. 16

True Religion Apparel, Inc. v. Does 1-100,

No. 12-cv-9894 (N.D. Ill. Dec. 20, 2012) (unpublished)..................................................... 3, 23, 27

Ty, Inc. v. The Jones Group, Inc.,

237 F.3d 891, 895 (7th Cir. 2001) ............................................................................................ 13, 19

uBID, Inc. v. GoDaddy Group, Inc.

623 F.3d 421, 423 (7th Cir. 2010) .................................................................................................. 11

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Vance v. Rumsfeld,
No. 1:06-cv-06964, 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) ........................................... 25

Wesley–Jessen Division of Schering Corp. v. Bausch & Lomb Inc.,

698 F.2d 862, 867 (7th Cir.1983) ................................................................................................... 18

Statutes

15 U.S.C. § 1051 et seq....................................................................................................................... 11

15 U.S.C. § 1057(b) ........................................................................................................................ 5, 14

15 U.S.C. § 1114(1) ............................................................................................................................ 13

15 U.S.C. § 1116(a) ........................................................................................................................ 4, 21

15 U.S.C. § 1117(a) .............................................................................................................................. 4

15 U.S.C. § 1117(a)(1) ........................................................................................................................ 24

15 U.S.C. § 1125(a) ............................................................................................................................ 17

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

28 U.S.C. § 1367(a) ............................................................................................................................ 11

28 U.S.C. § 1391 ................................................................................................................................. 11

28 U.S.C. §§ 1338(a)-(b) .................................................................................................................... 11

15 U.S.C. § 1125(c)(1) ……………………………………………………………………………… 5

735 ILCS 5/2-209(a)(2)……………………………………………………………………………...12

Fed. R. Civ. P. 26(b)(2)....................................................................................................................... 25

Fed. R. Civ. P. 65 ................................................................................................................................ 22

Fed. R. Civ. P. 65(b) ..................................................................................................................... 10, 21

Fed. R. Civ. P.65(b)(1)........................................................................................................................ 19

Fed. R. Civ. P. 65(c)…………………………………………………………………………………26

Fed. R. Civ. P. 65(d)(2)(C) ....................................................................................................... 4, 21, 26

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Other Authorities

4 Callmann on Unfair Competition, Trademark and Monopolies

§ 88.3(b) at 205 (3d ed. 1970).................................................................................................... 18-19

J. Thomas McCarthy, McCarthy on Trademark and Unfair Competition

§ 30:40 (4th ed. 2013) ......................................................................................................................25

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MEMORANDUM OF LAW

I. INTRODUCTION AND SUMMARY OF ARGUMENT

Plaintiff brings this action against the defendants identified in Amended Schedule A to

the Amended Complaint (collectively, the “Defendants”) for federal trademark infringement and

counterfeiting (Count I), false designation of origin (Count II), and violation of the Illinois

Uniform Deceptive Trade Practices Act (Count III). As alleged in the Amended Complaint,

Defendants are promoting, advertising, marketing, distributing, offering for sale, and selling

counterfeit products in connection with Plaintiff’s federally registered trademarks, Reg. Nos.

4,868,832; 5,202,078 and 5,415,510 (collectively, the “Counterfeit EMOJI Products”), through

various fully interactive commercial Internet websites operating under at least the Defendant

Domain Names and Online Marketplace Accounts listed in Amended Schedule A to the

Amended Complaint (collectively, the “Defendant Internet Stores”). In short, Defendants run a

counterfeiting operation with disregard for anything except generating profits.

The Defendants create numerous Defendant Internet Stores with an intent to have them

appear to be selling genuine products, while actually selling unauthorized and unlicensed

Counterfeit EMOJI Products to unknowing consumers. The Defendant Internet Stores share

unique identifiers, such as design elements and similarities of the counterfeit products offered for

sale, establishing a logical relationship between them and suggesting that Defendants’

counterfeiting operation arises out of the same transaction, occurrence, or series of transactions

or occurrences. Defendants attempt to avoid liability by concealing both their identities and the

full scope and interworking of their counterfeiting operation. Plaintiff has filed this action to

combat Defendants’ infringement and counterfeiting of Plaintiff’s registered trademarks as well

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as to protect unknowing consumers from purchasing Counterfeit EMOJI Products over the

Internet.

This Court has personal jurisdiction over Defendants because each Defendant targets

Illinois residents and has offered to sell, and on information and belief, has sold and continues to

sell Counterfeit EMOJI Products to consumers within the United States, including the State of

Illinois. Specifically, Defendants are reaching out to do business with Illinois residents by

operating one or more commercial, interactive Internet Stores through which Illinois residents

can purchase products being sold in connection with Plaintiff’s EMOJI Trademarks. Defendants

directly target unlawful business activities toward consumers in Illinois, cause harm to Plaintiff’s

business within this Judicial District, and have caused and will continue to cause irreparable

injury to Plaintiff. Defendants deceive the public by trading upon Plaintiff’s reputation and

goodwill by using their commercial, interactive Internet Stores to sell and/or offer for sale

unlicensed Counterfeit EMOJI Products in connection with Plaintiff’s Trademarks.

Defendants’ ongoing unlawful activities should be restrained, and Plaintiff respectfully

requests that this Court issue an ex parte a Temporary Restraining Order. Specifically, Plaintiff

seeks an order: (1) temporarily restraining Defendants’ continued manufacture, importation,

distribution, offering for sale, and sale of Counterfeit EMOJI Products; and (2) temporarily

restraining Defendants’ assets to preserve Plaintiff’s right to an equitable accounting. Ancillary

to and as part of the TRO, Plaintiff respectfully requests that this Court authorize expedited

discovery allowing Plaintiff to inspect and copy Defendants’ records relating to the manufacture,

distribution, offering for sale, and sale of Counterfeit EMOJI Products and Defendants’ financial

accounts; and authorize service by electronic mail and electronic publication at the Defendant

Domain Names.

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In light of the covert nature of offshore counterfeiting activities and the vital need to

establish an economic disincentive for trademark infringement, courts regularly issue such

orders. See, e.g., Michael Kors, L.L.C. v. The Partnerships, et al., No. 13-cv-8612 (N.D. Ill. Dec.

5, 2013) (unpublished) (Granting ex parte Temporary Restraining Order); Calvin Klein

Trademark Trust, et al. v. The Partnerships, et al., No. 13-cv-8186 (N.D. Ill. Nov. 19, 2013)

(unpublished) (same); Manolo Blahnik Int’l Ltd. v. The Partnerships, et al., No. 13-cv-7810

(N.D. Ill. Nov. 12, 2013) (unpublished) (same); NBA Properties, Inc., et al. v. The Partnerships,

et al., No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013) (unpublished) (same); Beats Electronics, LLC v.

The Partnerships, et al., No. 13-cv-6724 (N.D. Ill. Sept. 25, 2014) (unpublished) (same);

Lululemon Athletica Canada Inc. v. The Partnerships, et al., No. 13-cv-6297 (N.D. Ill. Sept. 10,

2013) (unpublished) (same); Chrome Hearts LLC v. The Partnerships, et al., No. 13-cv-4784

(N.D. Ill. July 10, 2013) (unpublished) (same); Luxottica USA LLC v. The Partnerships, et al.,

No. 13-cv-4429 (N.D. Ill. June 20, 2013) (unpublished) (same); Oakley, Inc. v. Does 1-100, No.

12-cv-9864 (N.D. Ill. Dec. 14, 2012) (unpublished) (same); True Religion Apparel, Inc. v. Does

1-100, No. 12-cv-9894 (N.D. Ill. Dec. 20, 2012) (unpublished) (same); Tory Burch LLC v. Zhong

Feng, et al., No. 1:12-cv09066 (N.D. Ill. Nov. 15, 2012) (unpublished) (same); Coach, Inc., et al.

v. Does 1-100, No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) (same); Deckers

Outdoor Corp. v. Does 1-1,281, No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)

(same); Abercrombie & Fitch Trading Co. v. 4cheapbags.com, No. 1:12-cv-21088 (S. D. Fla.

June 6, 2012) (unpublished) (same); Tory Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., No.

1:10-cv-09336-DAB (S.D.N.Y. Jan. 4, 2011) (unpublished) (same); see also, In re Vuitton et

Fils, S.A., 606 F.2d 1 (2d Cir. 1979) (holding that ex parte temporary restraining orders are

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indispensable to the commencement of an action when they are the sole method of preserving a

state of affairs in which the court can provide effective final relief).

Plaintiff’s well-pleaded factual allegations, which must be accepted as true, and evidence

submitted through declarations, establishes that issuing a temporary restraining order against

Defendants is necessary and proper. Plaintiff can demonstrate a strong likelihood of success on

the merits. Plaintiff is the owner of trademark registration Nos. 4,868,832; 5,202,078 and

5,415,510. Defendants’ use of Plaintiff’s Trademarks to sell Counterfeit EMOJI Products is

causing consumer confusion.

In addition, Defendants have and continue to irreparably harm Plaintiff through

diminished goodwill and damage to Plaintiff’s reputation. Monetary damages are inadequate to

Plaintiff for these damages. This makes injunctive relief particularly appropriate in this matter.

Issuance of an injunction is also in the public interest because it will prevent confusion

among the public and prevent unknowing consumers from being deceived into purchasing

Counterfeit EMOJI Products.

In addition, under Federal Rule of Civil Procedure 65(d)(2)(C), this Court has the power

to bind any third parties, such as domain name registries and financial institutions, who are in

active concert with the Defendants or who aid and abet Defendants and are given actual notice of

the order. Similarly, a prejudgment asset freeze is also proper since Plaintiff seeks an equitable

remedy in the accounting of Defendants’ profits pursuant to 15 U.S.C. § 1117(a). Finally, an

order authorizing service of process by email and electronic publication is proper since as a

result of Defendants’ intentional efforts to conceal their identities and operate their business

online. Serving Defendants electronically is the best method for notifying them of this action and

providing them the opportunity to defend and present their objections.

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II. STATEMENT OF FACTS

A. Plaintiff’s Trademarks and Products

Plaintiff is in the business of developing, marketing, selling and distributing the EMOJI

brand of products. See Declaration of José Santiago (the “Santiago Declaration”) at ¶ 4. Plaintiff

has expended substantial time, money and other resources promoting the EMOJI brand products. Id.

at ¶ 8.

Plaintiff is the owner of the EMOJI Trademarks. Id. at ⁋ 5. The U.S. registrations for the

EMOJI Trademarks are valid, subsisting, and in full force and effect. Id. at ¶ 5. True and correct

copies of the federal trademark registration certificates for the EMOJI Trademarks are attached to

the Santiago Declaration as Exhibit 1.

The EMOJI Trademarks are distinctive and identify the merchandise as goods from

Plaintiff. Id. at ¶ 6. The registrations for the EMOJI Trademarks constitute prima facie evidence of

their validity and of Plaintiff’s exclusive right to use the EMOJI Trademarks pursuant to 15 U.S.C.

§ 1057(b). The EMOJI Trademarks qualify as famous marks, as that term is used in 15 U.S.C. §

1125(c)(1), and have been continuously used and never abandoned. Id. at ¶ 7. Plaintiff has

expended substantial time, money, and other resources in developing, advertising, and otherwise

promoting the EMOJI Trademarks. Id. at ¶ 8. As a result, products bearing the EMOJI Trademarks

are widely recognized and exclusively associated by consumers, the public, and the trade as being

products sourced from Plaintiff. Id.

B. Defendants’ Unlawful Activities

The success of the EMOJI brand has resulted in those products being counterfeited. Id. at

¶ 9. Plaintiff has identified numerous domain names linked to fully interactive websites and

marketplace listings on platforms such as iOffer, Etsy, Redbubble, Teepublic and Printerval,

including the Defendants’ Internet Stores, which were offering for sale, selling, and importing

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Counterfeit EMOJI Products to consumers in this Judicial District and throughout the United

States. See Declaration of Anna K. Reiter (the “Reiter Declaration”) at ¶ 3. Internet websites like

the Defendants Internet Stores are estimated to receive tens of millions of visits per year and to

generate over $135 billion in annual online sales. Declaration of Michael A. Hierl (the “Hierl”

Declaration) at ¶ 2. According to an intellectual property rights seizures statistics reports issued

by Homeland Security, the manufacturer’s suggested retail price (MSRP) of goods seized by the

U.S. government during 2017 exceeded $1.2 billion. Id. at ¶ 3. Internet websites like the

Defendants’ Internet Stores are also estimated to contribute to tens of thousands of lost jobs for

legitimate businesses and broader economic damages such as lost tax revenue every year. Id. at ¶

4.

i. Defendants Operate Legitimate-Looking Internet Stores

Upon information and belief, Defendants facilitate sales by designing the Defendants’

Internet Stores so that they appear to unknowing consumers to be authorized online retailers,

outlet stores, or wholesalers selling genuine EMOJI Products. Reiter Declaration at ¶ 5. Many of

the Defendants’ Internet Stores look sophisticated and accept payment in U.S. dollars via credit

cards and Etsy, Redbubble, Teepublic and Printerval. Id. Defendants’ Internet Stores often

include images and design elements that make it very difficult for consumers to distinguish such

counterfeit sites from an authorized website. Id. Defendants further perpetuate the illusion of

legitimacy by offering “live 24/7” customer service and using indicia of authenticity and security

that consumers have come to associate with authorized retailers, including the McAfee®

Security, VeriSign®, Visa®, MasterCard®, and Etsy, Redbubble, Teepublic and Printerval

logos. Id. Plaintiff has not licensed or authorized Defendants to use its EMOJI Trademarks, and

none of the Defendants are authorized retailers of genuine EMOJI Products. Id.

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ii. Defendants Illegitimately Optimize the Defendants’ Internet Stores

for Search Engines

Upon information and belief, Defendants also deceive unknowing consumers by using

the EMOJI Trademarks without authorization within the content, text, and/or meta tags of their

websites in order to attract various search engines crawling the Internet looking for websites

relevant to consumer searches for EMOJI Products. Id. at ¶ 6. Additionally, upon information

and belief, Defendants use other unauthorized search engine optimization (SEO) tactics and

social media spamming so that the Defendants’ Internet Stores listings show up at or near the top

of relevant search results and misdirect consumers searching for genuine EMOJI Products. Id.

Further, Defendants utilize similar illegitimate SEO tactics to propel new domain names to the

top of search results after others are shut down. Id. As such, Plaintiff also seeks to disable

Defendants’ Domain Names owned by Defendants that are the means by which the Defendants

could continue to sell Counterfeit EMOJI Products.

iii. Defendants Use Fictitious Aliases and Common Tactics to Evade Shut Down

Defendants go to great lengths to conceal their identities and often use multiple fictitious

names and addresses to register and operate their network of Defendants Internet Stores. Id. at ¶

7. For example, many of Defendants’ names and physical addresses used to register the

Defendants’ Domain Names are incomplete, contain randomly typed letters, or fail to include

cities or states. Other Defendants’ Domain Names use privacy services that conceal the owners’

identity and contact information. Id. Upon information and belief, Defendants regularly create

new websites and online marketplace accounts on various platforms using the identities listed in

Amended Schedule A to the Amended Complaint, as well as other unknown fictitious names and

addresses. Id. Such Defendants’ Internet Store registration patterns are one of many common

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tactics used by the Defendants to conceal their identities, the full scope and interworking of their

counterfeiting operation, and to avoid being shut down. Id.

Even though Defendants operate under multiple fictitious names, there are numerous

similarities among the Defendants’ Internet Stores. Id. at ¶ 8. For example, many of the

Defendants’ websites have virtually identical layouts, even though different aliases were used to

register the respective domain names. In addition, Counterfeit EMOJI Products for sale in the

Defendants’ Internet Stores bear similar indicia of being counterfeit to one another, suggesting

that the Counterfeit EMOJI Products were manufactured by and come from a common source

and that, upon information and belief, Defendants are interrelated. Id. The Defendants’ Internet

Stores also include other notable common features, including use of the same domain name

registration patterns, unique shopping cart platforms, accepted payment methods, check-out

methods, meta data, illegitimate SEO tactics, HTML user-defined variables, domain redirection,

lack of contact information, identically or similarly priced items and volume sales discounts, the

same incorrect grammar and misspellings, similar hosting services, similar name servers, and the

use of the same text and images. Id.

In addition to operating under multiple fictitious names, Defendants in this case and

defendants in other similar cases against online counterfeiters use a variety of other common

tactics to evade enforcement efforts. Id. at ¶ 9. For example, counterfeiters like Defendants will

often register new domain names or online marketplace accounts under new aliases once they

receive notice of a lawsuit. Id. Counterfeiters also often move website hosting to rogue servers

located outside the United States once notice of a lawsuit is received. Rogue servers are

notorious for ignoring take down demands sent by brand owners. Id. Counterfeiters also

typically ship products in small quantities via international mail to minimize detection by U.S.

Customs and Border Protection. Id. A 2017 Homeland Security report on seizure statistics

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indicated that the Internet has fueled a “sharp increase” in the number of small packages of

counterfeit goods shipped through the mail and express carriers. Hierl Declaration at ¶ 3.

Further, counterfeiters such as Defendants typically operate multiple credit cards,

merchant accounts and Etsy, Redbubble, Teepublic and Printerval accounts behind layers of

payment gateways so that they can continue operation. Reiter Declaration at ¶ 10. Upon

information and belief, Defendants maintain off-shore bank accounts and regularly move funds

from their accounts to off-shore bank accounts outside the jurisdiction of this Court. Id. See also,

Hierl Declaration at ¶ 7. Indeed, analysis of transaction logs from similar cases brought by other

trademark owners indicates that off-shore counterfeiters regularly move funds from their U.S.

accounts to bank accounts outside the jurisdiction of this Court. Hierl Declaration at ¶ 9.

Plaintiff’s well-pleaded allegations regarding registration patterns, similarities among the

Defendants’ Internet Stores and the Counterfeit EMOJI Products for sale thereon, and common

tactics employed to evade enforcement establish a logical relationship among the Defendants

suggesting that Defendants are an interrelated group of counterfeiters. Upon information and

belief, Defendants are working in active concert to knowingly and willfully manufacture, import,

distribute, offer for sale, and sell products in connection with counterfeit versions of the EMOJI

Trademarks in the same transaction, occurrence, or series of transactions or occurrences. As

indicated above, the tactics used by Defendants to conceal their identities and the full scope of

their counterfeiting operation make it virtually impossible for Plaintiff to discover the true

identities of the Defendants, the exact interworking of the Defendants’ counterfeit network, and

the relationship among Defendants. In the event that Defendants provide additional credible

information regarding their identities, Plaintiff will take appropriate steps to further amend the

Complaint.

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III. ARGUMENT

Defendants’ purposeful, intentional, and unlawful conduct is causing and will continue to

cause irreparable harm to Plaintiff’s reputation and the goodwill symbolized by the EMOJI

Trademarks. To stop Defendants’ sale of Counterfeit EMOJI Products, Plaintiff respectfully

requests that this Court issue a temporary restraining order ordering, among other things, the

freezing of Defendants’ assets. Without the relief requested by Plaintiff’s instant Motion,

Defendants’ unlawful activity will continue unabated, and Plaintiff and consumers will suffer

irreparable harm.

Rule 65(b) of the Federal Rules of Civil Procedure provides that the Court may issue an

ex parte temporary restraining order where immediate and irreparable injury, loss, or damage

will result to the applicant before the adverse party or that party's attorney can be heard in

opposition. Fed. R. Civ. P. 65(b). The Defendants here fraudulently promote, advertise, offer to

sell, and sell goods in connection with counterfeits of the EMOJI Trademarks via the Defendants

Internet Stores. Defendants are creating a false association in the minds of consumers between

the Defendants and Plaintiff by deceiving consumers into believing that the Counterfeit EMOJI

Products for sale on Defendants’ websites are sponsored or endorsed by Plaintiff. The entry of a

temporary restraining order is appropriate because it would immediately stop the Defendants

from benefiting from their wrongful use of the EMOJI Trademarks and preserve the status quo

until such time as a hearing can be held.

In the absence of a temporary restraining order without notice, the Defendants can and

likely will modify registration data and content, change hosts, redirect traffic to other websites in

their control, and move any assets from U.S.-based bank accounts, including Etsy, Redbubble,

Teepublic and Printerval accounts. Courts have recognized that civil actions against

counterfeiters present special challenges that justify proceeding on an ex parte basis. See

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Columbia Pictures Indus., Inc. v. Jasso, 927 F. Supp. 1075, 1077 (N.D. Ill. 1996) (observing that

“proceedings against those who deliberately traffic in infringing merchandise are often useless if

notice is given to the infringers”). As such, Plaintiff respectfully requests that this Court issue the

requested ex parte temporary restraining order. This Court has original subject matter jurisdiction

over the claims in this action pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051 et

seq., 28 U.S.C. §§ 1338(a)-(b), and 28 U.S.C. § 1331. This Court has jurisdiction over the

claims in this action that arise under the laws of the State of Illinois pursuant to 28 U.S.C. §

1367(a), because the state law claims are so related to the federal claims that they form part of

the same case or controversy and derive from a common nucleus of operative facts. Venue is

proper in this Court pursuant to 28 U.S.C. § 1391.

A. This Court May Exercise Personal Jurisdiction over Defendants

This Court may properly exercise personal jurisdiction over Defendants since Defendants

directly target business activities toward consumers in the United States, including Illinois, by

directly offering for sale products into this Judicial District as well as through at least the fully

interactive, commercial Defendant Internet Stores. Specifically, Defendants are reaching out to

do business with Illinois residents by operating one or more commercial, interactive Defendants’

Internet Stores through which Illinois residents can purchase products bearing counterfeit

versions of the EMOJI Trademarks. Each Defendant has targeted sales from Illinois residents by

operating online stores that offer shipping to the United States, including Illinois, and has offered

to sell, and on information and belief, has sold and continues to sell Counterfeit EMOJI Products

to consumers within the United States, including the State of Illinois. See Complaint at ¶¶ 2, 20

and 21. Without the benefit of an evidentiary hearing, plaintiff bears only the burden of making a

prima facie case for personal jurisdiction; all of Plaintiff’s asserted facts should be accepted as

true and any factual determinations should be resolved in its favor. See uBID, Inc. v. GoDaddy

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Group, Inc. 623 F.3d 421, 423 (7th Cir. 2010); see also, Purdue Research Found. v. Sanofi-

Sythelabo, S.A., 338 F.3d 773, 782 (7th Cir. 2003) (“When determining whether a plaintiff has

met his burden, jurisdictional allegations pleaded in the complaint are accepted as true unless

proved otherwise by defendants' affidavits or exhibits.”).

Illinois courts regularly exercise personal jurisdiction over websites using registered

trademarks without authorization in connection with the offering for sale and selling of

infringing and counterfeit merchandise to Illinois residents over the Internet. 735 ILCS 5/2-

209(a)(2). See, e.g., Christian Dior Couture, S.A. v. Liu, 2015 U.S. Dist. LEXIS 158225 (N.D.

Ill. Nov. 17, 2015); Monster Energy Co. v. Chen Wensheng, 2015 U.S. Dist. LEXIS 132283

(N.D. Ill. Sept. 29, 2015); Chrome Hearts LLC v. P'ships & Unincorporated Assns. Identified on

Schedule "A", 2015 U.S. Dist. LEXIS 120232 (N.D. Ill. Sept. 9, 2015).

Through at least the fully interactive commercial Internet websites operating under the

Defendant Domain Names and the marketplace listings operated using the Online Marketplace

Accounts, each of the Defendants have targeted sales from Illinois residents by offering shipping

to the United States, including Illinois, and, on information and belief, has sold or offered to sell

Counterfeit EMOJI Products to residents of the United States, including Illinois. Each of the

Defendants is committing tortious acts in Illinois, engaging in interstate commerce, and has

wrongfully caused Plaintiff substantial injury in the State of Illinois.

B. Standard for Temporary Restraining Order and Preliminary Injunction

District Courts within this Circuit hold that the standard for granting a temporary

restraining order and the standard for granting a preliminary injunction are identical. See, e.g.

Charter Nat’l Bank & Trust v. Charter One Fin., Inc., No. 1:01-cv-00905, 2001 WL 527404, *1

(N.D. Ill. May 15, 2001) (citation omitted). A party seeking to obtain a preliminary injunction

must demonstrate: (1) that its case has some likelihood of success on the merits; (2) that no

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adequate remedy at law exists; and (3) that it will suffer irreparable harm if the injunction is not

granted. See Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891, 895 (7th Cir. 2001).

If the Court is satisfied that these three conditions have been met, then it must consider

the harm that the nonmoving party will suffer if preliminary relief is granted, balancing such

harm against the irreparable harm the moving party will suffer if relief is denied. Id. Finally, the

Court must consider the potential effect on the public interest (non-parties) in denying or

granting the injunction. Id. The Court then weighs all of these factors, “sitting as would a

chancellor in equity,” when it decides whether to grant the injunction. Id. (quoting Abbott Labs.

v. Mead Johnson & Co., 971 F.2d 6, 11 (7th Cir. 1992)). This process involves engaging in what

the Court has deemed “the sliding scale approach” – the more likely the plaintiff will succeed on

the merits, the less the balance of harms need favor the plaintiff's position. Id. The sliding scale

approach is not mathematical in nature, rather “it is more properly characterized as subjective

and intuitive, one which permits district courts to weigh the competing considerations and mold

appropriate relief.” Id. at 895-896. The greater the movant's likelihood of succeeding on the

merits, the less the balancing of harms need be in his favor. See Eli Lilly & Co. v. Natural

Answers, Inc., 233 F.3d 456, 461 (7th Cir. 2000).

C. Plaintiff Will Likely Succeed on the Merits

i. Plaintiff Will Likely Succeed on Its Trademark Infringement and

Counterfeiting Claim

A defendant is liable for trademark infringement and counterfeiting under the Lanham

Act if it, “without the consent of the registrant, uses in commerce any reproduction, copy, or

colorable imitation of a registered mark in connection with the sale, offering for sale,

distribution, or advertising of any goods … which such use[s] is likely to cause confusion, or to

cause mistake, or to deceive.” 15 U.S.C. § 1114(1). To prove a prima facie case of infringement,

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a plaintiff must show (1) its mark is distinctive enough to be worthy of protection; (2)

Defendants are not authorized to use the trademark; and (3) Defendants’ use of the trademark

causes a likelihood of confusion as to the origin or sponsorship of Defendants’ products. See

Neopost Industrie B.V. v. PFE Int’l Inc., 403 F. Supp. 2d 669, 684 (N.D. Ill. 2005) (citation

omitted). Plaintiff satisfies all three requirements of the Lanham Act to successfully bring a

trademark infringement and counterfeiting claim.

Regarding the first two elements, Plaintiff’s EMOJI Trademarks are inherently distinctive

and are registered with the United States Patent and Trademark Office on the Principal Register.

The EMOJI Trademarks has been continuously used. Santiago Declaration at ¶¶ 6-7. The

registrations for the EMOJI Trademarks are valid, subsisting, and in full force and effect. Id. at ⁋

5. The registrations for the EMOJI Trademarks constitute prima facie evidence of their validity

and of Plaintiff’s exclusive right to use the EMOJI Trademarks pursuant to 15 U.S.C. § 1057(b).

Furthermore, Plaintiff has not licensed or authorized Defendants to use either of the EMOJI

Trademarks, and none of the Defendants is an authorized retailer of genuine EMOJI Products.

Reiter Declaration at ¶ 5.

Plaintiff satisfies the third factor, as well. Some courts do not undertake a factor-by-factor

analysis under Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)

because counterfeits, by their very nature, cause confusion. See Topps Co., Inc. v. Gerrit J.

Verburg Co., 41 U.S.P.Q.2d 1412, 1417 (S.D.N.Y.1996) ("Where the marks are identical, and

the goods are also identical and directly competitive, the decision can be made directly without a

more formal and complete discussion of all of the Polaroid factors."); Polo Fashions, Inc. v.

Craftex, Inc., 816 F.2d 145, 148 (4th Cir.1987) ("Where, as here, one produces counterfeit goods

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in an apparent attempt to capitalize upon the popularity of, and demand for, another's product,

there is a presumption of a likelihood of confusion.").

The Seventh Circuit, however, has enumerated seven factors to determine whether there

is a likelihood of confusion: (1) similarity between the marks in appearance and suggestion; (2)

similarity of the products; (3) area and manner of concurrent use; (4) degree of care likely to be

exercised by consumers; (5) strength of complainant's mark; (6) actual confusion; and (7) intent

of the defendants to palm off their products as that of another. Eli Lilly, 233 F.3d at 461-462

(citation omitted). These factors are not a mechanical checklist, and “[t]he proper weight given to

each of [the] factors will vary from case to case.” Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d

376, 381 (7th Cir. 1996). At the same time, although no one factor is decisive, the similarity of

the marks, the intent of the defendant, and evidence of actual confusion are the most important

considerations. G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 999 (7th

Cir. 1989).

In this case, Plaintiff plainly satisfies the likelihood of confusion test. The Defendants are

selling Counterfeit EMOJI Products using counterfeit marks identical to the EMOJI Trademarks.

As such, the first and second likelihood of confusion factors weigh heavily in favor of Plaintiff.

Plaintiff also satisfies the third factor, namely, the area and manner of concurrent use.

When considering the third factor, a court looks at “whether there is a relationship in use,

promotion, distribution or sales between the goods or services of the parties.” CAE, Inc. v. Clean

Air Eng’g Inc., 267 F.3d 660, 681 (7th Cir. 2001). A court also looks to whether the parties used

the same channels of commerce, targeted the same general audience, and/or used similar

marketing procedures. Id. Here, both Plaintiff and Defendants show the same products using the

EMOJI Trademarks to the same consumers. See Exhibit 1 to the Santiago Declaration. Thus,

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because Defendants target the same consumers as Plaintiff, this factor also weighs in favor of

Plaintiff.

Regarding the fourth factor, degree of consumer care, potential consumers purchasing

EMOJI Products are not restricted to a certain specialized, sophisticated group of people. Rather,

the consumer base is a diverse group of people. “[W]hen a buyer class is mixed, the standard of

care to be exercised by the reasonably prudent purchaser will be equal to that of the least

sophisticated consumer in the class.” Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d

1029, 1043 (N.D. Ill. 2001) (citation omitted). As such, EMOJI brand consumers are very likely

to be confused, so this factor favors Plaintiff.

Due to their long-standing use and wide acceptance by the public, the EMOJI

Trademarks have become famous and associated with high quality EMOJI Products. The EMOJI

Trademarks are distinctive when applied to the EMOJI Products. The marks signify to

consumers that the products come from Plaintiff and are manufactured to the highest quality

standards. Thus, the fifth factor, the strength of the marks, also weighs heavily in favor of

Plaintiff.

As for the sixth factor, Plaintiff does not need to prove likelihood of confusion with

evidence of actual confusion; instead, it merely needs to show some evidence of potential

confusion. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360, 1363 (7th Cir.1995); see also

Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 960 (7th Cir. 1992) (the Seventh

Circuit has consistently found that “plaintiff need not show actual confusion in order to establish

likelihood of confusion.”). In this case, actual confusion can be inferred because Defendants are

selling counterfeit EMOJI Products in connection with the EMOJI Trademarks. Because the

goods are similar and have identical and similar uses, consumers will be confused and think that

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Defendants’ products are genuine EMOJI Products or are sponsored or endorsed by Plaintiff.

This factor weighs in favor of Plaintiff.

Regarding the seventh and final factor, Defendants are intentionally using the EMOJI

Trademarks to confuse and deceive the consuming public into thinking that Defendants’

Counterfeit EMOJI Products are manufactured by or emanate from Plaintiff. Defendants are

purposefully attempting to benefit and trade off Plaintiff’s goodwill and reputation. Therefore,

the final factor regarding Defendants’ intent also weighs heavily in Plaintiff’s favor.

In sum, each of the seven likelihood of confusion factors weighs heavily in favor of

Plaintiff, and, therefore, Plaintiff has proved that it has a reasonable likelihood of success on the

merits for its trademark infringement and counterfeiting claim.

ii. Plaintiff Is Likely to Succeed on Its False Designation of Origin Claim

Plaintiff is bringing a false designation of origin claim under 15 U.S.C. § 1125(a) must

show that: (1) the plaintiff has a protectable trademark; and (2) a likelihood of confusion will

exist as to the origin of plaintiff’s products. All Star Championship Racing, Inc. v. O’Reilly Auto.

Stores, Inc., 2013 WL 1701871, *10 (C.D. Ill. Apr. 18, 2013) (citing Johnny Blastoff, Inc. v. Los

Angeles Rams Football Co., 188 F. 3d 427, 436 (7th Cir. 1999)). This is the same test that is used

for determining whether trademark infringement has occurred under the Lanham Act. See

Neopost, 403 F. Supp. 2d at 684. Because the EMOJI Trademarks are registered marks, and

Plaintiff has established a likelihood of success on the merits of its trademark infringement and

counterfeiting claim against Defendants (supra), a likelihood of success on the merits for

Plaintiff’s false designation of origin claim is also established.

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iii. Plaintiff Is Likely to Succeed on Its Illinois Uniform Deceptive Trade

Practices Act Claim

In Illinois, courts resolve unfair competition and deceptive trade practice claims

“according to the principles set forth under the Lanham Act.” Spex, Inc. v. Joy of Spex, Inc., 847

F. Supp. 567, 579 (N.D. Ill. 1994). Illinois courts look to federal case law and apply the same

analysis to state infringement claims. Id. at 579 (citation omitted). The determination as to

whether there is a likelihood of confusion is similar under both the Lanham Act and the Illinois

Uniform Deceptive Trade Practices Act. Am. Broad. Co. v. Maljack Prods., Inc., 34 F. Supp. 2d

665, 681 (N.D. Ill. 1998). Because Plaintiff has established a likelihood of success on the merits

of its trademark infringement and counterfeiting claims against Defendants (supra), and the

standard is the same under Illinois law, Plaintiff has established a likelihood of success on the

merits for its Illinois Uniform Deceptive Trade Practices Act claim.

D. There Is No Adequate Remedy at Law and Plaintiff Will Suffer Irreparable

Harm in the Absence of Preliminary Relief

The Seventh Circuit has “clearly and repeatedly held that damage to a trademark holder's

goodwill can constitute irreparable injury for which the trademark owner has no adequate legal

remedy.” Re/Max N. Cent., Inc. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001) (citing Eli Lilly & Co.

v. Natural Answers, Inc., 233 F.3d 456, 469 (7th Cir. 2000)); Meridian Mut. Ins. Co. v. Meridian

Ins. Group, Inc., 128 F.3d 1111, 1114 (7th Cir. 1997); Wesley–Jessen Division of Schering Corp.

v. Bausch & Lomb Inc., 698 F.2d 862, 867 (7th Cir.1983). Irreparable injury “almost inevitably

follows” when there is a high probability of confusion because such injury “may not be fully

compensable in damages.” Helene Curtis Industries, Inc. v. Church & Dwight Co., Inc., 560 F.2d

1325, 1332 (7th Cir. 1977) (citation omitted). “The most corrosive and irreparable harm

attributable to trademark infringement is the inability of the victim to control the nature and

quality of the defendants’ goods.” Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846

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F.2d 1079, 1092 (7th Cir. 1988); see also 4 Callmann on Unfair Competition, Trademark and

Monopolies § 88.3(b) at 205 (3d ed. 1970). As such, monetary damages are likely to be

inadequate compensation for such harm. Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d

1018, 1026 (7th Cir. 1979).

Defendants’ unauthorized use of the EMOJI Trademarks has and continues to irreparably

harm Plaintiff through diminished goodwill and brand confidence, damage to Plaintiff’s

reputation, loss of exclusivity, and loss of future sales. Santiago Declaration at ¶¶ 11-13.

The extent of the harm to Plaintiff’s reputation and goodwill and the possible diversion of

customers due to loss in brand confidence are both irreparable and incalculable, thus warranting

an immediate halt to Defendants’ infringing activities through injunctive relief. See Promatek

Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002) (Finding that damage to

plaintiff’s goodwill was irreparable harm for which plaintiff had no adequate remedy at law);

Gateway Eastern Railway Co. v. Terminal Railroad Assoc. of St. Louis, 35 F.3d 1134, 1140 (7th

Cir. 1994) (“[S]howing injury to goodwill can constitute irreparable harm that is not

compensable by an award of money damages.”). Plaintiff will suffer immediate and irreparable

injury, loss, or damage if an ex parte Temporary Restraining Order is not issued in accordance

with Federal Rule of Civil Procedure 65(b)(1). Santiago Declaration at ¶¶ 13-14. As such,

Plaintiff should be granted preliminary relief.

E. The Balancing of Harms Tips in Plaintiff’s Favor

As noted above, if the Court is satisfied that Plaintiff has demonstrated (1) a likelihood of

success on the merits, (2) no adequate remedy at law, and (3) the threat of irreparable harm if

preliminary relief is not granted, then it must next consider the harm that Defendants will suffer

if preliminary relief is granted, balancing such harm against the irreparable harm Plaintiff will

suffer if relief is denied. Ty, Inc., 237 F.3d at 895.

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As willful infringers, Defendants are entitled to little equitable consideration. “When

considering the balance of hardships between the parties in infringement cases, courts generally

favor the trademark owner.” Krause Int’l Inc. v. Reed Elsevier, Inc., 866 F. Supp. 585, 587-88

(D.D.C. 1994). This is because “[o]ne who adopts the marks of another for similar goods acts at

his own peril since he has no claim to the profits or advantages thereby derived.” Burger King

Corp. v. Majeed, 805 F. Supp. 994, 1006 (S.D. Fla. 1992) (internal quotation marks omitted).

Therefore, the balance of harms “cannot favor a defendant whose injury results from the

knowing infringement of the plaintiff's trademark.” Malarkey-Taylor Assocs., Inc. v. Cellular

Telecomms. Indus. Ass’n, 929 F. Supp. 473, 478 (D.D.C. 1996).

As Plaintiff has demonstrated, Defendants have been profiting from the sale of

Counterfeit EMOJI Products. Thus, the balance of equities tips decisively in Plaintiff’s favor. As

such, equity requires that Defendants be ordered to cease their unlawful conduct.

F. Issuance of the Injunction Is in the Public Interest

An injunction in these circumstances is in the public interest because it will prevent

consumer confusion and stop Defendants from violating federal trademark law. The public is

currently under the false impression that Defendants are operating their Defendants’ Internet

Stores with Plaintiff’s approval and endorsement. An injunction serves the public interest in this

case “because enforcement of the trademark laws prevents consumer confusion.” Eli Lilly, 233

F.3d at 469.

Federal courts have long held that “the trademark laws ... are concerned not alone with

the protection of a property right existing in an individual, but also with the protection of the

public from fraud and deceit.” Stahly, Inc. v. M.H. Jacobs Co., 183 F.2d 914, 917 (7th Cir. 1950)

(citations omitted). The public interest is further served by protecting “the synonymous right of a

trademark owner to control his product's reputation.” James Burrough Ltd. v. Sign of the

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Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976); see also Shashi, Inc. v. Ramada Worldwide,

Inc., No. 7:05-cv-00016-JGW-mfu, 2005 WL 552593, *4 (W.D. Va. Mar. 1, 2005) (“It is in the

best interest of the public for the court to defend the integrity of the intellectual property system

and to prevent consumer confusion”).

In this case, the injury to the public is significant, and the injunctive relief that Plaintiff

seeks is specifically intended to remedy that injury by dispelling the public confusion created by

Defendants’ actions. The public has the right not to be confused and defrauded as to the source

of the goods and services offered by Defendants, or as to the identity of the owner of trademarks

used in connection with those goods and services. Unless Defendants’ unauthorized use of the

EMOJI Trademarks are enjoined, the public will continue to be confused and misled by

Defendants’ conduct.

For these reasons, it is respectfully submitted that granting Plaintiff’s Motion for Entry of

a Temporary Restraining Order is in the public interest.

IV. THE EQUITABLE RELIEF SOUGHT IS APPROPRIATE

In addition to this Court’s inherent authority to issue injunctive relief, the Lanham Act

authorizes courts to issue injunctive relief “according to the principles of equity and upon such

terms as the court may deem reasonable, to prevent the violation of any right of the registrant of

a mark ….” 15 U.S.C. § 1116(a). Furthermore, Rule 65(b) of the Federal Rules of Civil

Procedure provides that a court may issue a temporary restraining order without notice where

facts show that the movant will suffer immediate and irreparable injury, loss, or damage before

the adverse party can be heard in opposition. Moreover, under Federal Rule of Civil Procedure

65(d)(2)(C), this Court has the power to bind any third parties, such as financial institutions,

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which are in active concert with the Defendants or which aid and abet Defendants and are given

actual notice of the order. Fed. R. Civ. P. 65. The facts in this case warrant such relief.

A. A Temporary Restraining Order Immediately Enjoining Defendants’

Unauthorized and Unlawful Use of Plaintiff’s Marks Is Appropriate

Plaintiff requests a temporary injunction requiring the Defendants to immediately cease

all use of the EMOJI Trademarks or substantially similar marks on or in connection with all

Defendants’ Internet Stores. Such relief is necessary to stop the ongoing harm to the EMOJI

Trademarks and associated goodwill, as well as harm to consumers, and to prevent the

Defendants from continuing to benefit from their unauthorized use of the EMOJI Trademarks.

The need for ex parte relief is magnified in today’s global economy where counterfeiters

can operate over the Internet in an anonymous fashion. Plaintiff is currently unaware of both the

true identities and locations of the Defendants, as well as other Defendant Internet Stores used to

distribute Counterfeit EMOJI Products.

Many courts have authorized immediate injunctive relief in similar cases involving the

unauthorized use of trademark and counterfeiting. See, e.g. Michael Kors, L.L.C. v. The

Partnerships and Unincorporated Associations Identified on Schedule “A”, No. 13-cv-8612

(N.D. Ill. Dec. 5, 2013) (unpublished) (Order granting Ex Parte Motion for Temporary

Restraining Order); Calvin Klein Trademark Trust, et al. v. The Partnerships, et al., No. 13-cv-

8186 (N.D. Ill. Nov. 19, 2013) (unpublished) (same); Manolo Blahnik International Limited v.

The Partnerships, et al., No. 13-cv-7810 (N.D. Ill. Nov. 12, 2013) (unpublished) (same); NBA

Properties, Inc., et al. v. The Partnerships, et al., No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013)

(unpublished) (same); Beats Electronics, LLC v. The Partnerships, et al., No. 13-cv-6724 (N.D.

Ill. Sept. 25, 2014) (unpublished) (same); Lululemon Athletica Canada Inc. v. The Partnerships,

et al., No. 13-cv-6297 (N.D. Ill. Sept. 10, 2013) (unpublished) (same); Chrome Hearts LLC v.

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The Partnerships, et al., No. 13-cv-4784 (N.D. Ill. July 10, 2013) (unpublished) (same);

Luxottica USA LLC v. The Partnerships, et al., No. 13-cv-4429 (N.D. Ill. June 20, 2013)

(unpublished) (same); Oakley, Inc. v. Does 1-100, No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012)

(unpublished) (same); True Religion Apparel, Inc. v. Does 1-100, No. 12-cv-9894 (N.D. Ill. Dec.

20, 2012) (unpublished) (same); Tory Burch LLC v. Zhong Feng, et al., No. 1:12-cv-09066 (N.D.

Ill. Nov. 15, 2012) (unpublished) (same); Coach, Inc., et al. v. Does 1-100, No. 1:12-cv-8963

(N.D. Ill. Nov. 15, 2012) (unpublished) (same); Deckers Outdoor Corp. v. Does 1-1,281, No.

1:12-cv-01973 (N.D. Ill. June 6, 2012) (unpublished) (same); Abercrombie & Fitch Trading Co.

v. 4cheapbags.com, No. 1:12-cv-21088 (S. D. Fla. June 6, 2012) (unpublished) (same); Tory

Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., No. 1:10-cv-09336-DAB (S.D.N.Y. Jan. 4,

2011) (unpublished) (same); (hereinafter, collectively referred to as the “Counterfeit Website

Cases”); see also, Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 (E.D. Mich. 2001)

(enjoining Defendant from “using in any way the Internet domain name ‘fordrecalls.com’”);

Kraft Food Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 956 (N.D. Ill. 2002) (granting

preliminary injunction requiring defendant to “immediately” remove all references to versions of

plaintiff’s mark, including removing all references “from metatags, metanames or any other

keywords on his websites”).

B. Preventing the Fraudulent Transfer of Assets Is Appropriate

Plaintiff requests an ex parte restraint of Defendants’ assets so that Plaintiff’s right to an

equitable accounting of Defendants’ profits from sales of Counterfeit EMOJI Products is not

impaired. Issuing an ex parte restraint will ensure Defendants’ compliance. If such a restraint is

not granted in this case, Defendants may disregard their responsibilities and fraudulently transfer

financial assets to overseas accounts before a restraint is ordered. Specifically, upon information

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and belief, the Defendants in this case hold most of their assets overseas, making it easy to hide

or dispose of assets, which will render an accounting by Plaintiff meaningless.

Courts have the inherent authority to issue a prejudgment asset restraint when plaintiff’s

complaint seeks relief in equity. Animale Grp. Inc. v. Sunny’s Perfume Inc., 256 F. App’x 707,

709 (5th Cir. 2007); Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d 982, 987 (11th Cir.

1995); Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992). In

addition, Plaintiff has shown a strong likelihood of succeeding on the merits of its trademark

infringement and counterfeiting claims, so according to the Lanham Act 15 U.S.C. § 1117(a)(1),

Plaintiff is entitled, “subject to the principles of equity, to recover ... defendant’s profits.”

Plaintiff’s Complaint seeks, among other relief, that Defendants account for and pay to Plaintiff

all profits realized by Defendants by reason of Defendants’ unlawful acts. Therefore, this Court

has the inherent equitable authority to grant Plaintiff’s request for a prejudgment asset freeze to

preserve the relief sought by Plaintiff.

The Northern District of Illinois in Lorillard Tobacco Co. v. Montrose Wholesale

Candies entered an asset restraining order in a trademark infringement case brought by a tobacco

company against owners of a store selling counterfeit cigarettes. Lorillard, 2005 WL 3115892, at

*13 (N.D. Ill. Nov. 8, 2005). The Court, citing Grupo Mexicano de Desarollo, S.A. v. Aliance

Bond Fund, 527 U.S. 308 (1999), recognized that it was explicitly allowed to issue a restraint on

assets for lawsuits seeking equitable relief. Id. (citing Grupo Mexicano, 527 U.S. at 325 (citing

Deckert v. Independence Shares Corp., 311 U.S. 282 (1940)). Because the tobacco company

sought a disgorgement of the storeowner’s profits, an equitable remedy, the Court found that it

had the authority to freeze the storeowner’s assets. Id.; see also Animale Grp. Inc. v. Sunny’s

Perfume Inc., 256 F. App’x 707, 709 (5th Cir. 2007); Levi Strauss & Co. v. Sunrise Int’l Trading

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Inc., 51 F.3d 982, 987 (11th Cir. 1995); Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d

552, 559 (9th Cir. 1992); CSC Holdings, Inc. v. Redisi, 309 F.3d 988 (7th Cir. 2002) (“since the

assets in question ... were the profits of the [defendants] made by unlawfully stealing [the

plaintiff’s] services, the freeze was appropriate and may remain in place pending final

disposition of this case.”); accord 5 J. Thomas McCarthy, McCarthy on Trademark and Unfair

Competition § 30:40 (4th ed. 2013). In addition, courts in this district and across the country

regularly issue asset-restraining orders for entire financial accounts in cases involving the sale of

counterfeit products. See, e.g., the Counterfeit Website Cases, supra at p. 28.

Plaintiff has shown a likelihood of success on the merits, an immediate and irreparable

harm suffered as a result of Defendants’ activities, and that, unless Defendants’ assets are frozen,

Defendants will likely hide or move their ill-gotten funds to offshore bank accounts.

Accordingly, the granting of an injunction preventing the transfer of Defendants’ assets is

proper.

C. Plaintiff Is Entitled to Expedited Discovery

The Supreme Court has held that “federal courts have the power to order, at their

discretion, the discovery of facts necessary to ascertain their competency to entertain the merits.”

Vance v. Rumsfeld, No. 1:06-cv-06964, 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) (quoting

Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351, 98 S. Ct. 2380 (1978)). A district court

has wide latitude in determining whether to grant a party's request for discovery. Id. (citation

omitted). Furthermore, courts have broad power over discovery and may permit discovery in

order to aid in the identification of unknown defendants. See Fed. R. Civ. P. 26(b)(2); Gillespie

v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980).

As described above, Defendants are using third-party payment processors such as Visa

and Etsy, Redbubble, Teepublic and Printerval, which helps to increase their anonymity by

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interposing a third party between the consumer and Defendants. Without being able to discover

Defendants’ bank and payment system accounts, any asset restraint would be of limited value

because Plaintiff would not know the entities upon whom to serve the order.

Plaintiff respectfully requests expedited discovery to discover bank and payment system

accounts Defendants use for their counterfeit sales operations. The discovery requested on an

expedited basis in Plaintiff’s Proposed Temporary Restraining Order has been limited to include

only what is essential to prevent further irreparable harm. Discovery of these financial accounts

so that they can be frozen is necessary to ensure that these activities will be contained.

Under Federal Rule of Civil Procedure 65(d)(2)(C), this Court has the power to bind any

third party who is in active concert with the Defendants that is given notice of the order to

provide expedited discovery in this action. Fed. R. Civ. P. 65(d)(2)(C). Plaintiff’s counsel is

aware that the same third parties, in previous lawsuits, have worked with trademark owners and

is not aware of any reason that Defendants or third parties cannot comply with these expedited

discovery requests without undue burden. Further, all relevant third parties have in fact complied

with identical requests in previous similar cases. More importantly, as Defendants have engaged

in many deceptive practices in hiding their identities and accounts, Plaintiff’s seizure and asset

restraint in the Temporary Restraining Order may have little meaningful effect without the

requested relief. Accordingly, Plaintiff respectfully requests that expedited discovery be granted.

V. A BOND SHOULD SECURE THE INJUNCTIVE RELIEF

The posting of security upon issuance of a temporary restraining order or preliminary

injunction is vested in the Court’s sound discretion. Rathmann Grp. v. Tanenbaum, 889 F.2d

787, 789 (8th Cir. 1989); Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411, 421 (4th

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Cir. 1999); Fed. R. Civ. P. 65(c). Because of the strong and unequivocal nature of Plaintiff’s

evidence of counterfeiting, infringement, and unfair competition, Plaintiff respectfully requests

that this Court require Plaintiff to post a bond of no more than Ten Thousand U.S. Dollars

($10,000.00). See, e.g., Oakley, Inc. v. Does 1-100, No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012)

(unpublished) ($10,000 bond); True Religion Apparel, Inc. v. Does 1-100, No. 12-cv-9894 (N.D.

Ill. Dec. 20, 2012) (unpublished) ($10,000 bond); Tory Burch LLC v. Zhong Feng, et al., No.

1:12-cv-09066 (N.D. Ill. Nov. 15, 2012) (unpublished) ($10,000 bond); Coach, Inc., et al. v.

Does 1-100, No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) ($10,000 bond); Deckers

Outdoor Corp. v. Does 1-1,281, No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)

($10,000 bond); Abercrombie & Fitch Trading Co. v. 4cheapbags.com, No. 1:12-cv-21088 (S.

D. Fla. June 6, 2012) (unpublished) ($10,000 bond).

VI. CONCLUSION

Plaintiff’s business, its EMOJI brand, and consumers are being irreparably harmed.

Without entry of the requested relief, the sale of Counterfeit EMOJI Products will continue to

lead prospective purchasers and others to believe that Defendants’ products have been

manufactured by or emanate from Plaintiff. Therefore, entry of an ex parte order is necessary to

protect Plaintiff’s trademark rights, to prevent further harm to Plaintiff and the consuming

public, and to preserve the status quo. In view of the foregoing and consistent with previous

similar cases, Plaintiff respectfully requests that this Court enter a Temporary Restraining Order

in the form submitted herewith and set a status hearing before the expiration of the Temporary

Restraining Order at which hearing Plaintiff intends to present a motion for preliminary

injunction.

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Respectfully submitted,
Dated: October 6, 2023
By: s/Michael A. Hierl _
Michael A. Hierl (Bar No. 3128021)
William B. Kalbac (Bar No. 6301771)
Robert P. McMurray (Bar No. 6324332)
Hughes Socol Piers Resnick & Dym, Ltd.
Three First National Plaza
70 W. Madison Street, Suite 4000
Chicago, Illinois 60602
(312) 580-0100 Telephone
[email protected]

Attorneys for Plaintiff

EMOJI COMPANY GmbH

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CERTIFICATE OF SERVICE

The undersigned attorney hereby certifies that a true and correct copy of the foregoing

Memorandum was filed electronically with the Clerk of the Court and served on all counsel of

record and interested parties via the CM/ECF system on October 6, 2023.

s/Michael A. Hierl

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