MrBeastYouTube, LLC v. Bakencai, No. 4:2019cv00130 - Document 23 (E.D.N.C. 2020)
Court Description: ORDER granting 20 Motion for Default Judgment. Signed by Chief Judge Terrence W. Boyle on 7/1/2020. (Stouch, L.)
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MrBeastYouTube, LLC v. Bakencai Doc. 23 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF NORTH CAROLINA EASTERN DIVISION No . 4: 19-cv-13 0-BO MRBEASTYOUTUBE, LLC, Plaintiff, V. THOMAS BAKENCAI, Defendant. ) ) ) ) ) ) ) ORDER T hi s cause comes before the Court on plaintiff's motion for entry of default judgment. For the reasons that fo ll ow, the motion is GRANTED. BACKGROUND Plaintiff commenced thi s action against defend ant in September 201 9 for alleged copyright (Count I) and trademark infringement (Counts II and III) . Plaintiff is a North Carolina limited li ab ility company that operates a YouTube channel which has attracted more than 20 million fo ll owers. Due to the fame of the online persona associated with the YouTube channel, MrBeast, plaintiff has been ab le to generate substanti al revenues from paid advertisements and from the sale of branded merchandise that features various MrBeast trademarks, logos, and designs . The MrBeast logo is the subj ect of a registered copyright and registered trademark held by plaintiff. Plaintiff alleges that defendant is engaged in the sale and distribution of counterfeit MrBeast goods bearing the copyrighted and trademarked logo . Defendant alleged ly sell s the coun terfe it products as an online retailer named "Jorkey" through Amazon ' s online marketplace. Before filing thi s lawsuit, plaintiff's counsel submitted a complaint to Amazon about the copyright and trade mark violations. On September 1, 2019, plaintiff received an email fro m Amazo n containing a counter-notice filed by defendant. The counter-notice listed contact Dockets.Justia.com information for Jorkey, which included the name Thomas Bakencai, a Washington State address, an emai l address, and a phone number. The counter-notice also contained explicit consent to be sued in any ap propri ate U.S. di strict court and an ag reement to accept servi ce of process. On September 16, 2019, plaintiff fi led the complai nt in this action and retai ned a process server in Washington. When attempting to serve defendant, however, the process server determined that the address li sted in the counter-notice was not a valid address and did not exist as written. The process server then performed a skip trace using the name Thomas Bakencai and fo und that there was no indi vidual with that nam e in Washington. The process server broadened the scope of the skip trace to include the entire country and used the last name Bakencai. He foun d that no one in the United States used the last name Bakencai . Plaintiffs counsel attempted to co ntact defendant using the provided phone number, but no one answered, and the phone did not have a functioning voicemail service. Plaintiffs counsel notified Amazon that the info rmation provided by defendant in the counter-notice was fictitious. Amazon has refused to provide any additional information identifying defendant or confirm his location. On January 6, 2020, plaintiffs counsel received an email from an individual identifying him self as Thomas Bakencai. The emai l stated that the individual was sorry for selling items protected by copyright and asked that plaintiff withdraw the complaint with Amazon. Plaintiffs counsel received a second , identical email fro m the same email address two days later. On January 8, 2020, the clerk issued a notice to plaintiff to show cause as to why service had not been accomp li shed. On January 10, plaintiff moved to extend the service dead line and for the Court 's permission to serve defendant via email. Given that defendant could not be located within the United States, plaintiff requested the Court's permission under Federal Rule of Civil Procedure 4(f) , which allows service on an individ ual in a foreign county " by other means not 2 prohibited by international agreement, as the court orders." Fed. R. Civ. P. 4(f). The Court granted the motion and allowed service via the same email address that defendant had previously used to contact plaintiffs counsel. On February 13, plaintiff served defendant accordingly. Defendant has since failed to appear in this action. Clerk ' s default pursuant to Rule 55(a) was entered against defendant on April 6, 2020. Plaintiff now seeks entry of default judgment. DISCUSSION As a threshold matter, the Court notes that plaintiff has no ability to assure the Court that the individual identifying himself as Thomas Bakencai is neither a minor nor an incompetent person, against whom the Court may not enter default judgment. Fed. R. Civ. P. 55(b)(2). Defendant in this case has refused to engage with plaintiffs counsel and has repeatedly provided fictitious information about his identity and location. But this elusiveness cannot erect a permanent barrier to plaintiffs ability to obtain a remedy. Given the circumstances of this case, the Court finds that it is appropriate to adjudicate plaintiffs default judgment motion without assurance that defendant is neither a minor nor an incompetent person. After the entry of default, the well-pleaded factual allegations in plaintiffs complaint are deemed admitted. Ryan v. Homecomings Fin. Network, 253 F.3d 778, 780 (4th Cir. 2001). The Court must "determine whether the well-pleaded allegations in [plaintiffs] complaint support the relief sought in this action ." Id. The complaint and supporting exhibits allege the fo llowing facts. Plaintiff is the owner of the Mr Beast logo, which depicts the head of a large cat with a lightning bolt extending from one eye. The logo is protected by U .S. Copyright Registration No. VA 2-134-088 and U .S. Trademark 5,850,491. Plaintiff sell s various merchandise bearing the logo. Defendant is an online retailer named Jorkey through the Amazon online marketplace. Defendant sold and distributed counterfeit 3 shirts and hats bearing the MrBeast logo through Jorkey ' s Amazon page using Amazon Standard Identification Numbers (ASIN) B07RZJP8WW, B07S4N78B 1, B07S3SCQND, B07S 1MK532 , and B07RZJX36F. Defendant wi llfully copied the MrBeast logo , placed it on the counterfeit merchandise, and sold it to members of the public without plaintiffs permission or consent. The counterfeit merchandise was sold to North Carolina residents . These allegations are deemed admitted. The admitted facts support the relief sought in this action- specifically, statutory damages for copyright infringement and a permanent injunction against further copyright and trademark infringement. Copyright (Count I) Defendant's conduct constitutes a willful violation of plaintiffs exclusive rights in the ' 088 Registration, and consequently , plaintiff is entitled to default judgment on Count I. Defendant's conduct violates 17 U .S.C. § 106 and plaintiff has a cause of action under 17 U.S .C. § 501. "The Copyright Act provides that a copyright owner may elect to recover, in lieu of actual damages and profits , an award of statutory damages in a sum of not less than $750 or more than $30,000 , as the court considers just." EMI Apr. Music Inc. v. Rodriguez, 691 F . Supp. 2d 632 , 635- 36 (M.D.N.C. 20 10) ; 17 U .S.C . § 504(c)(l) . Here, plaintiff has elected statutory damages and suggests an award of $10 ,000- an amount the Court considers just. In addition, plaintiff seeks a permanent injunction to prevent further copyright infringement . 17 U .S.C . § 502(a) . The factors supporting the entry of a permanent injunction are irreparable injury , inadequate remedy at law, the balance of hardships favor plaintiff, and the public interest would not be disserved by a permanent injunction. eBay Inc. v. MercExchange, L.L.C , 547 U .S. 388 , 391 (2006). " A permanent injunction is appropriate where infringement has 4 been proven and a threat of continuing infringement exists." EM! Apr. Music , 691 F. Supp. 2d at 635. Here, plaintiff has made a credible showing that defendant wi ll continue to infringe its copyright. Defendant ' s fictitious information and refusal to appear in this litigation demonstrates bad faith and an intent to avoid legal obligations and accountability. Accordingly , after considering relevant factors , the Court finds that an injunction preventing future copyright infringement is appropriate. Trademark (Counts II and III) The admitted all egations also support a finding of trademark infringement. Trademark infringement requires the holder to show that: (1) it owns a valid mark, (2) defendant used the mark in commerce without authorization , (3) defendant used the mark in connection with sale of goods or services, and (4) use of the mark is likely to confuse consumers. Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citing 15 U.S.C. § l l 14(a)). These elements are met. Plaintiff owns a valid trademark for which it has a federal trademark registration. Defendant so ld counterfeit merchandise bearing the mark. Finally, defendant ' s use of the mark is likely to confuse consumers as the mark is inherently distinctive. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 , 464 (4th Cir. 1996). The mark depicts a large, blue cat with a li ghtning bolt extending from its right eye. Plaintiff has shown that defendant used a counterfeit mark in violation of 15 U.S.C. § 1116(d), and consequently, plaintiff is entitled to defaultjudgment on Counts II and III. Plaintiff requests a permanent injunction to prohibit further trademark infringement by defendant. 15 U .S.C. § 11 25(c)(l). Applying the eBay factors, and considering the continued threat of trademark infringement, a permanent injunction is appropriate. 5 Plaintiff's motion [DE 20] for entry of default judgment against defendant is GRANTED. The Court awards plaintiff $10,000 in statutory damages pursuant to 17 U.S.C . § 504. Defendant Thomas Bakencai- or his true identity or successor- as well as those acting in concert with him, are permanently enjoined from using plaintiff's Mr Beast logo. Post-judgment interest shall accrue pursuant to 28 U.S .C. § 1961(a). The clerk is DIRECTED to close this case. SO ORDERED, this _ / _ day of July , 2020 . ~v.A¥ TERRENCE W. BOYLE CHIEF UNITED STATES DISTRICT JUDGE 6
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