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TV Tokyo Wins U.S. Lawsuits Against Sellers of Counterfeit Naruto Merchandise
posted on by Adriana Hazra
The alleged trademark infringement is in reference to counterfeit merchandise based on the Naruto franchise. The filing alleged Trademark Infringement and Counterfeiting, False Designation of Origin, and Violation of Illinois Uniform Deceptive Trade Practices Act.
TV Tokyo Corporation had filed the September 29 lawsuit against defendants in the People's Republic of China and "other foreign jurisdictions," but the claim stated that the defendants conduct business throughout the United States and that their commercial websites and online marketplaces "target" the United States.
The judgement was announced against 301 listed defendants, and the judgement order stated none of the defendants "answered or appeared in any way" during the case. The default judgement order also named the following domain name registries and registrars: VeriSign, Inc., Neustar, Inc., Afilias Limited, CentralNic, Nominet, the Public Interest Registry, GoDaddy Operating Company LLC, Name.com, PDR LTD. d/b/a/ PublicDomainRegistry.com, and Namecheap Inc., asking them to disable the defendants' domain names and make them inactive.
The judgement order, in addition to ordering the defendants to stop using Naruto trademarks and passing off products as genuine, also asked each defendant to pay TV Tokyo US$50,000. Additionally, third-party platforms such as Amazon and Walmart must also stop using or linking to the accounts being used to sell counterfeit merchandise.
The original filing in September also stated that according to an intellectual property rights seizures statistics report issued by the United States' Homeland Security, the value of the goods seized by the U.S. government in 2021 was over US$3.3 billion, up from $1.3 billion in 2020.
According to Hughes Hubbard & Reed LLP, a "Schedule A" filing:
...refers to a plaintiff filing intellectual property claims against a group of online merchants in a single complaint, listing the defendants on a Schedule A. Proceeding in this manner eliminates the need for the plaintiff to bring (and pay a filing fee for) a separate complaint against each merchant.
Hughes Hubbard & Reed LLP stated that the Northern District of Illinois is a popular venue for Schedule A filings because its judgements are "generally favorable" toward plaintiffs.
In addition to this case, ANN has found that TV Tokyo has filed 16 additional cases so far in the Northern District of Illinois between May 2023 and January 3 of this year, all for counterfeit Naruto merchandise. Seven of the cases are ongoing, but in the 10 closed cases, TV Tokyo has won all of them.
The Naruto franchise includes multiple television anime, anime films, and original video anime. The original Naruto television anime aired from 2002 to 2007. The Naruto Shippūden anime sequel series premiered in 2007 and ended in 2017. The Boruto sequel manga inspired the television anime series Boruto: Naruto Next Generations, which premiered in April 2017 and ended "Part I" in March. Production on "Part II" of the anime has been green-lit.
Four "brand-new" episodes of the original Naruto anime were slated to air in September to celebrate the franchise's 20th anniversary, but are delayed.
