EAST ST. LOUIS - British musician Jason Kay secured a permanent injunction against counterfeit websites and will collect $1 million if he can find the owners or their assets.
U.S. District Judge Stephen McGlynn granted the injunction as default judgment on March 8 and awarded $20,000 damages against each of 50 defendants.
Last year, McGlynn ordered parties holding their assets to restrain those assets.
At a hearing on an injunction last year, Magistrate Judge Reona Daly learned that most defendants resided or operated in China or distributed Chinese products.
Kay leads Jamiroquai, a band he formed in 1992.
According to Wikipedia, the band has sold more than 26 million albums worldwide.
Kay’s counsel Javier Sobrado of Miami sued “individuals, partnerships and unincorporated associations” in December 2022.
He identified websites by seller names and internet codes.
“Plaintiff suffers ongoing daily and sustained violations of his trademark rights at the hands of counterfeiters and infringers,” he wrote.
Sobrado claimed they eroded the goodwill associated with Kay’s trademarks.
He claimed counterfeiting through online marketplace platforms requires companies to spend time and money to protect consumers and themselves.
Daly recommended a temporary restraining order and a trust fund last April.
She found that without a restraining order she could reasonably expect more counterfeit products bearing Kay’s trademarks would appear in the marketplace.
She found Kay retained a third party who initiated orders and designated them for shipment to an address in the Southern District of Illinois.
“Defendants profit from counterfeit products while retaining the ability to quickly vanish and leave no trace of their true identities or information sufficient for Plaintiff to seek damages from them through traditional legal remedies,” she wrote.
Daly found defendants processed payments through PayPal or used escrow accounts in the names of institutions including Ali Express, Joom, Wish, Amazon, Ebay, Etsy, and Taobao.
She recommended that those parties divert assets of the defendants to a trust account.
Daly lacked authority to issue an injunction, and McGlynn adopted her recommendation.
Kay moved for default judgment and a permanent injunction last year, and Daly recommended both actions this Feb. 22.
“Plaintiff’s attorney explained that the defendants did not provide any type of a physical address to the third party platforms in which they operate,” she wrote.
“As for the defendants that do provide a physical address, it is not a reliable means for identifying and locating defendants,” she added.
“The individuals who have infringed upon plaintiff’s trademarks do so anonymously, making it impossible for plaintiff or any other trademark holder to prove their actual damages,” she continued.
Daly found an award of $20,000 per defendant was reasonable to deter future infringement.
McGlynn adopted her recommendations and permanently restrained and enjoined defendants from making, importing, advertising, distributing or selling counterfeit goods.
He enjoined false advertising that Kay sponsored or authorized their use of his logo.
He enjoined false representation connection to Kay through sponsorship or association.
He also enjoined assignment, transfer or formation of entities to circumvent the injunction.
McGlynn ordered payment processors, banks, escrow services, money transmitters and marketplace platforms to transfer funds in their trust accounts to Kay in five days.