United States District Court, D. New Jersey
WILLIAM J. MARTINI. U.S.D.J.:
matter comes before the Court on Plaintiff InvenTel Products,
LLC's ("InvenTel") motion for a temporary
restraining order and preliminary injunction, ECF No. 5, and
Defendants Shopify Inc.'s and Shopify (USA) Inc.'s
("Shopify") opposition thereto, ECF No. 10. For the
reasons set forth below, InvenTel's motion-as to
Shopify-is DENIED and the Court's
Temporary Restraining Order is TERMINATED as
sells a variety of consumer products in the United States via
mail-order and online sales, including the HD MIRROR CAM®
("HD MIRROR CAM"). The HD MIRROR CAM is a personal
security camera designed for automobiles. InvenTel holds
patents, copyrights, and trademarks on HD MIRROR CAM
technology and marketing materials.
Jimmy Li, Lin Amy, and Wu JinZhao ("Li Defendants")
allegedly produce counterfeit HD MIRROR CAMs
("Counterfeit Products") in China and market them
to U.S. customers online. Some of the websites selling the
Counterfeit Products are the subject of a related action
("Prior Action") brought by InvenTel for
intellectual property rights violations against the Li
Defendants, Shopify, and others (collectively,
"Defendants"). See InvenTel Products, LLC v.
Li, No. 2:18-cv-16590. In connection with the Prior
Action, Shopify has helped prevent the Li Defendants from
selling Counterfeit Products using Shopify's services.
See Hartman Decl. ¶ 12-18, ECF No. 10-6.
InvenTel and Shopify were in talks to dismiss the Prior
Action, InvenTel learned of a new website created by the Li
Defendants to further market the Counterfeit Products:
www.hdmirrorcambuy.com ("Website"). Abdul Dec.
¶ 4, ECF No. 5-2. The Website states: "We use
Shopify to power our online store-you can read more about how
Shopify uses your Personal Information here:
¶ 62. InvenTel filed the present matter seeking to
enjoin Defendants from operating or supporting the new
Website. See Compl., ECF No. 1, Emergency Mot., ECF
April 16, 2019, the Court entered an order temporarily
restraining Defendants from infringing on InvenTel's
intellectual property rights and providing for an expedited
briefing schedule. See Order, ECF No. 6. On April
23, InvenTel notified the Court that it had yet to effectuate
service and requested an extension to the briefing schedule.
See InvenTel Ltr., ECF No. 9. Shopify objected to
the extended schedule and submitted opposition papers.
See Opp. Br., ECF No. 10; Shopify Ltr., ECF No. 11.
Accordingly, the Court granted the requested extension as to
all Defendants except Shopify. See ECF No. 12.
seeks preliminary relief enjoining Shopify from infringing on
its intellectual property rights. See Mot., ECF No.
5. "A plaintiff seeking a preliminary injunction must
establish that  he is likely to succeed on the
merits,  that he is likely to suffer irreparable
harm in the absence of preliminary relief,  that
the balance of equities tips in his favor, and 
that an injunction is in the public interest."
Winter v. NRDC, Inc., 555 U.S. 7, 20 (2008). To
succeed on the merits, InvenTel will have to prove that
Shopify is either directly or contributorily liable for
infringements of InvenTel's intellectual property rights.
See, e.g., Parker v. Google, Inc., 242 Fed.Appx.
833, 836-37 (3d Cir. 2007). Direct liability requires
"volitional conduct on the part of defendant" while
contributory liability requires "material contribution
to [a third party's] infringement." Id.; see
also Reply at 9.
the Court will deny the requested relief as to Shopify
because InvenTel has not demonstrated likely success on the
merits (element 1) or that it will suffer irreparable harm
without such relief (element 2). As to the first element,
InvenTel relies entirely on the Website's statement that
"[w]e use Shopify to power our online store-you can read
more about how Shopify uses your Personal Information here:
https://www.shopufy.com/legal/privacy." Abdul Dec.
¶ 62; Reply at 9 (arguing for direct and contributory
liability based on Shopify "powering" the Website).
But Shopify's Associate Privacy Counsel declares under
penalty of perjury that "Shopify has never operated,
hosted, supported, or powered the [W]ebsite ... and has no
internal records linked to [its] domain name." Hartman
Decl. ¶ 21, ECF No. 10-6 ("Declaration"). In
response, InvenTel points to "documentary evidence in
the form of an admission of a co-defendant (a printout from
the infringing website itself) that Shopify powers the
[Website]." Reply at 8, ECF No. 14. InvenTel does
concede that it "does not know, nor could it know what
precisely is involved in said 'powering.'"
Id. at 9. However, because the Website says
it is "powered" by Shopify, InvenTel argues the
Court should reject Shopify's argument. Id. at
Court credits the Declaration over the Website's text.
Given their irreconcilable nature, the Court must believe one
over the other, and finds little reason to favor the Website
over a sworn declaration. See generally Compl.
(alleging the Website's entire purpose is to trick users
into buying Counterfeit Products). As the Court finds the
Declaration credible, and thus InvenTel's argument for
likely liability unpersuasive, preliminary relief is
inappropriate. See Winter, 555 U.S. at 20 (requiring
likely success on the merits to warrant preliminary relief).
largely the same reason, InvenTel fails to demonstrate it
will suffer irreparable harm without preliminary relief
against Shopify (i.e., element 2). Given the balance of
evidence before the Court, any violations of InvenTel's
rights appear completely unrelated to Shopify. Accordingly,
declining to enjoin Shopify will not cause InvenTel
irreparable harm. See Id. (requiring irreparable
harm without requested relief to warrant preliminary relief).
InvenTel's request for preliminary relief is