IP Law Daily, TRADEMARK—S.D.N.Y.: Consumers could believe ‘counterfeit’ products are associated with Baby Shark brand owner, (Mar 31, 2025)

By Karen Servidea, J.D.

Defending online platforms’ promotional emails used the brand owner’s exact mark to sell visually similar products, plausibly creating consumer confusion as to source and association.

South Korean educational entertainment company Pinkfong adequately alleged direct and contributory trademark infringement, and false designation of origin, passing off, and unfair competition by online platforms Alibaba and AliExpress, held the federal district court in New York City. The online platforms were accused of promoting and allowing merchants to use their platforms to sell counterfeit versions of Pinkfong’s “Baby Shark”-branded products. Pinkfong’s claims of contributory and vicarious copyright infringement against Alibaba and AliExpress also survived the platforms’ motion to dismiss (Pinkfong Co., Inc. v. Alibaba.Com Singapore E-Commerce Pte. Ltd., No. 1:23-cv-10967-DEH (S.D.N.Y. Mar. 27, 2025)).

The Pinkfong Company, Inc., owns trademarks related to its Baby Shark-branded products, as well as related copyrights. It filed suit to prevent 23 e-commerce merchants from selling products that allegedly infringe on their Baby Shark marks and copyright. Also named as defendants in the suit were certain online platforms, including Alibaba and AliExpress, on which the merchant defendants sold their allegedly infringing products. The complaint includes six claims against the online platforms: direct copyright infringement; false designation of origin, passing off, and unfair competition under the Lanham Act and New York law; contributory trademark infringement; contributory copyright infringement; and vicarious copyright infringement. Alibaba and AliExpress (the “Alibaba Defendants”) moved to dismiss all six claims. The court denied the motion.

No impermissible group pleading. The court rejected the Alibaba Defendants’ argument that the direct trademark infringement claim must be dismissed because the entertainment company engaged in impermissible group pleading. To survive scrutiny under Rule 8 of the Federal Rules of Civil Procedure, the court explained, a complaint must disclose sufficient information to permit each defendant to have a fair understanding of what the plaintiff is complaining about and to know whether there is a legal basis for recovery. The court then noted that, although one count of the complaint was titled “Infringement of Registered Trademarks Against All Defendants,” another section, titled “The Alibaba Defendants’ Wrongful and Infringing Conduct,” identified specific factual allegations that applied specifically to the Alibaba Defendants. That section alleged, for example, that the Alibaba Defendants sold and purchased keywords comprised of Baby Shark trademarks, sent promotional emails promoting counterfeit Baby Shark products, and marketed counterfeit products involving Baby Shark trademarks.

Direct trademark infringement. The court also disagreed with the Alibaba Defendants’ contention that the entertainment company did not adequately allege direct trademark infringement.

The complaint alleged that the Alibaba Defendants promoted counterfeit products using Baby Shark trademarks without consent in promotional emails sent to subscribers and includes screenshots from emails promoting products that allegedly were neither authentic nor being sold by authorized retailers that used the Baby Shark trademark. The entertainment company also alleged that the Alibaba Defendants engaged in affiliate marketing to promote counterfeit products on the Alibaba platforms involving the Baby Shark trademarks, the court noted. The court pointed to the complaint’s allegations of sponsored advertisements for counterfeit products on Alibaba that directed a user to listings from two of the merchant defendants that advertise a product (plush toys) alleged to be virtually identical to the entertainment company’s products.

The court determined that the names of the allegedly counterfeit products included in the Alibaba Defendants’ promotional emails used the entertainment company’s exact trademark, thus plausibly creating consumer confusion as to the source of the product. In addition, “given the visual similarity between the allegedly counterfeit products promoted in Alibaba Defendants’ targeted advertisements and [the entertainment company’s] own Baby Shark product, it is plausible that consumers might believe those products are associated with [the entertainment company].”

False designation of origin, unfair competition. Turning to the claim for unfair competition under New York law, the court explained that the legal standards for such a claim are virtually identical to the standards for direct trademark infringement and unfair competition under the Lanham act, except that New York common law requires an additional showing of bad faith. In that regard, the court determined that the entertainment company pleaded facts that indicate that the Alibaba Defendants were aware of the existence of the entertainment company’s Baby Shark trademark and nevertheless proceeded to use it, “plausibly causing confusion as to the source of the product and, consequently supporting an inference of bad faith.” Thus, the court declined to dismiss the New York common law claim.

Contributory trademark infringement; copyright infringement. Lastly, the court held that the entertainment company plausibly stated claims for contributory trademark infringement, contributory copyright infringement, and vicarious copyright infringement based on the allegations that the Alibaba Defendants had knowledge of the merchant defendants’ alleged infringements, had the ability to control the alleged infringements, assisted in the alleged infringements, and financially benefitted from the alleged infringements.

The Case is No. 1:23-cv-10967-DEH.

Judge: Ho, D.

Attorneys: Ashly Erin Sands (Epstein Drangel LLP) for Pinkfong Co. Inc. Jared R. Friedmann (Weil, Gotshal & Manges LLP) for Alibaba.Com Singapore E-Commerce Pte. Ltd.

Companies: Pinkfong Co. Inc.; Alibaba.Com Singapore E-Commerce Pte. Ltd.

Cases: Copyright TechnologyInternet Trademark NewYorkNews