Lawsuits filed in the United States targeting pirate sites usually focus on breaches of copyright law, typically direct and secondary infringement, or violations of the DMCA, depending on individual circumstances.
Allegations of copyright infringement also featured in a complaint filed at an Arizona court in 2023, which hoped to quickly shut down a popular pirate site. Somewhat unusually, however, federal trademark infringement and cybersquatting allegations also played a key role, alongside other claims including unfair competition.
Complaint Targets Kokoa TV
Plaintiff Wavve Americas Inc. (wA) describes itself as a joint partnership between SK Telecom and the top three Korean Broadcast Networks –KBS, MBC, and SBS. According to the company’s website, wA’s mission is to use its open video streaming platform Kocowa (Korean Content Wave) to generate value for its content partners while providing an exceptional user experience.
The company’s complaint filed last year targeted the unknown domain registrant of kokoatv.net, kokoa.tv, and vidground.com. All three domains were registered at Namecheap which requires registrants to consent to personal jurisdiction in Arizona when in dispute with a third party.
The complaint alleged that Kokoa TV provided access to Korean-based TV shows and movies, including those exclusively licensed to wA for distribution in the United States. The site targeted both Korean and English-speaking audiences, the complaint added, with video content sourced from platforms including vidground.com.
Trading Off Kocowa’s Goodwill (and its content)
Kokoa TV’s choice of branding was called out for its similarity to the plaintiffs’ service Kocowa, for which they hold a trademark. The aim, the complaint added, was to trade off the goodwill of Kocowa while cybersquatting a deliberately similar domain, to confuse users into believing that the defendant’s platform had links to the official service.
Once presented with official content without having to pay for any of it, users of the unlicensed service Kokoa would be deterred from using the official platform offered by the plaintiffs, the complaint added.
Kocowa holds an exclusive license to distribute around 1,100 shows in the United States, content created by the three major Korean networks. The sites operated by the defendant offered that content for free, leading to allegations of copyright infringement and contributory copyright infringement.
All three domains had their ownership hidden by a WHOIS protection service so when Namecheap refused to disable the domains or hand over the identity of the domains’ operator, Wavve Americas Inc. filed its complaint.
The company demanded a permanent injunction, an award sufficient to cover the costs of corrective advertising, an award of Kokoa’s profits, the transfer of its domain names, damages for both trademark and copyright infringement, plus attorneys’ fees and costs.
Plaintiff Prevails
Discovery directed at Namecheap revealed the same name behind all three domains – Tumi Max of Bangkok, Thailand – who was named in the plaintiff’s first amended complaint. The defendant was served September 22, 2023, but after failing to appear, the court’s entry of default was followed by a motion for default judgment.
Judge Michael T. Liburdi handed down his order on February 6, 2024. Since the defendant had accepted Namecheap’s terms and conditions, the Judge found that personal jurisdiction had been established. Since the websites were accessible in the district and likely to cause confusion there, venue was considered proper.
Since Tubi Max decided not to appear, he failed to produce rebuttal evidence related to the distribution of the plaintiff’s content. While the Judge found Kocowa a “conceptually strong mark” he noted that the complaint failed to demonstrate it was a “commercially strong” mark. However, after weighing several factors including the defendants’ absence, the broadcasters prevailed on their trademark, cybersquatting, and copyright infringement claims.
A permanent injunction followed soon after, comprehensively restraining Tubi Max from unlawful use of the plaintiff’s trademarks (image below) and any unlicensed use of its copyrighted works. It appears that the focus of the complaint was to shut the site down since the injunction notes that “wA does not seek monetary damages.”
As the above shows, Namecheap was instructed to hand over the domains to prevent any further infringement of the plaintiff’s rights. Visitors to those domains today will find themselves redirected to the plaintiff’s streaming platform where they will be able to compensate the rightful owners when consuming their copyrighted content.
In theory, at least.
The complaint and other filings cited above are available here
