IP Law Daily, TRADEMARK- S.D.N.Y.: Atari denied preliminary injunction against print-on-demand company, (Jan 29, 2024)

By Saurabh Kashyap, B.A., LL.B.

The court cites no of likelihood for success on the merits and insufficient evidence of irreparable harm.

The federal district court in New York City has denied Atari Interactive, Inc.'s (Atari) motion for a preliminary injunction against Printify, Inc. (Printify) and its founder, Janis Berdigans, in a trademark infringement case. Emphasizing the extraordinary nature of a preliminary injunction, the court found Atari failed to demonstrate a likelihood of success on the merits of its claims and insufficient evidence of irreparable harm (Atari Interactive, Inc. v. Printify, Inc., January 25, 2024, Stein, S.).

Background. Atari, a video game company that licenses its widely known trademarks for use on a variety of merchandise, sued Printify, a print-on-demand company, and its founder Janis Berdigans, alleging trademark infringement. Following the entry of an ex parte temporary restraining order (“TRO”), Atari moved for the entry of a preliminary injunction prohibiting defendants from infringing Atari’s trademarks.

Trademark infringement. The court examined whether Printify “used” Atari's marks in the context of the Lanham Act. It drew comparisons with similar cases involving print-on-demand companies like Redbubble, Inc. The court found that, unlike Redbubble, Printify's involvement was more aligned with being a facilitator rather than a direct seller, thus weakening Atari's claim of direct infringement.

Contributory infringement. In discussing contributory infringement, the court looked to Tiffany (NJ) Inc. v. eBay Inc. to clarify that specific knowledge of infringing items is essential for establishing contributory infringement. The court also noted that Printify took steps to remove potentially infringing content upon notice, aligning with standards set in Omega SA v. 375 Canal, LLC. This proactive approach, contrasting with Atari's arguments, did not support a finding of contributory infringement.

Other claims. Atari’s other claims, including trademark dilution, false designation of origin, and unfair competition under New York law, were also found lacking in merit. The court held that these claims closely mirrored the standards applicable to direct trademark infringement, which Atari failed to establish.

Personal liability. The liability of Printify's founder, Janis Berdigans, was examined in light of Cartier v. Aaron Faber, Inc., emphasizing that personal liability requires active and conscious participation in infringement, which was not sufficiently demonstrated in this case. Thus, the court did not find sufficient evidence to hold Janis Berdigans personally liable for the alleged infringements, citing a lack of specific actions showing active involvement.

Irreparable harm. The court, citing Faiveley Transp. Malmo AB v. Wabtec Corp. and Grand River Enter. Six Nations, Ltd. v. Pryor, stressed the need for concrete evidence of actual and imminent harm beyond monetary loss, which Atari failed to provide .It highlighted that Atari’s claims of harm, including loss of goodwill and brand confidence, were unsupported by substantial evidence, making it insufficient to justify a preliminary injunction.

Ultimately, the court concluded that Atari had not met the requirements for the grant of a preliminary injunction.

The Case is No. 1:23-cv-08926-SHS.

Attorneys: Christopher Tom (Boies Schiller Flexner LLP) for Atari Interactive Inc. Dustin Taylor (Husch Blackwell LLP) and Christopher Sean Ford (Debevoise & Plimpton LLP) for Printify Inc. and Janis Berdigans.

Companies: Atari Interactive Inc.; Printify Inc.

Cases: Trademark NewYorkNews