Yuga Labs, Inc. v. Lehman
Case Summary
On January 20, 2023, Yuga Labs, Inc. (“Yuga Labs” or “Plaintiff”), represented by Ethan M. Thomas of Fenwick & West LLP, filed an intellectual property lawsuit against Thomas Lehman (“Lehman” or “Defendant”), seeking declaratory relief, restitution, and damages for alleged trademark infringement. This case was filed in the U.S. District Court for the Northern District of New York, with Judges Mae A. D’Agostino and Therese Wiley Dancks presiding.
In the complaint, the plaintiff alleged that “Thomas Lehman is a central part of a business venture designed to explicitly mislead consumers into thinking that his and his accomplices’ knockoff non-fungible tokens (‘NFTs’) are affiliated, sponsored, or associated with Yuga Labs. To further this scam, Lehman created and commercialized websites and a smart contract to sell the intentionally misleading RR/BAYC NFTs to the average consumer.”
Plaintiff further alleged, “Lehman and his accomplices used these tools to sell NFTs bearing the same images underlying Yuga Labs’ BAYC NFTs and using Yuga Labs’ same marks on the same marketplaces Yuga Labs’ NFTs are sold, as well as marketplaces where Yuga Labs’ NFTs had not yet been sold. This is textbook trademark infringement and explicitly misleading use of Yuga Labs’ marks.”
Plaintiff also alleged, “Plaintiff Yuga Labs is the creator behind one of the world’s most well-known and successful NFT collections, known as the Bored Ape Yacht Club (a.k.a. ‘BAYC’). There are only 10,000 BAYC NFTs in existence. The BAYC NFTs have earned significant attention from the media for their popularity, including being featured on the cover of Rolling Stone magazine. In response to the Bored Ape Yacht Club’s popularity, Ryder Ripps, a non-party to this action, started a business venture to sell ‘RR/BAYC’ NFTs, which infringe Yuga Labs’ trademarks and use the same art that Yuga Labs uses for its BAYC NFTs.”
Plaintiff then alleged, “Lehman developed and coded an ‘RRBAYC RSVP Contract,’ which would allow consumers to ‘reserve’ an RR/BAYC NFT. Lehman also developed the ‘rrbayc.com’ website, which implemented the RRBAYC RSVP Contract’s reservation system. And Lehman developed the Ape Market website on which the RR/BAYC Team planned to sell RR/BAYC NFTs alongside authentic BAYC NFTs.”
Additionally, the plaintiff alleged, “Lehman, motivated by the financial windfall of appropriating Yuga Labs’ trademarks and the resulting confusion, also actively marketed and promoted the RR/BAYC NFTs. His actions were calculated, intentional, and wilful with the stated purpose of causing actual and monetary harm to Yuga Labs, all of which causes real harm to Yuga Labs’ goodwill. Meanwhile, he reaped ill-gotten profit from these sales.”
The plaintiff further alleged, “Lehman’s conduct has caused and, unless enjoined, will continue to cause damages and irreparable injury to Yuga Labs with an incalculable loss of goodwill. Accordingly, Yuga Labs seeks injunctive relief and a disgorgement of Lehman’s profits derived from his unlawful conduct.”
Plaintiff presented two claims for relief, including for alleged trademark infringement under the Lanham Act and cybersquatting.
In the prayer for relief, the plaintiff requested a judgment granting restitution and declaratory relief. The plaintiff also requested an award for disgorgement of ill-gotten gains and damages along with costs of litigation.
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Case Details
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Case Number:
1:23-CV-00085
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Filing Date:
01/20/2023
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Case Status:
Disposed - Other Disposed
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Case Type:
Intellectual Property - Trademark
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Court:
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Courthouse:
Judge Details
Presiding Judge
Mae A. D'Agostino
Referral Judge
Therese Wiley Dancks
Party Details
Plaintiff
Yuga Labs, Inc.
Defendant
Thomas Lehman
Attorney/Law Firm Details
Plaintiff Attorney
Ethan M. Thomas
Court Documents
Complaint
(#13) Report on the Filing and Determination of an Action - Report sent to US Patent and Trademark Office in light of Consent Judgment being filed on 2/6/23. (Attachments: #1 Complaint) (ban) (Entered: 02/07/2023)
Proposed Order/Judgment
(#10) STIPULATION for Entry of Consent Judgment and Order for Permanent Injunction against Thomas Lehman by Yuga Labs, Inc. submitted to Judge Mae A. D'Agostino. (Attachments: #1 Proposed Order/Judgment)(Thomas, Ethan) (Entered: 02/06/2023)
[Proposed] Order
Certificate of Good Standing
Petition for Admission
New Attorney E-Filing Registration Form
Declaration of Sponsor
(#8) MOTION for Limited Admission Pro Hac Vice of Eric Ball Filing fee $100, receipt number ANYNDC-6187076. (Attachments: #1 Declaration of Sponsor, #2 New Attorney E-Filing Registration Form, #3 Petition for Admission, #4 Certificate of Good Standing, #5 [Proposed] Order) Motions referred to Therese Wiley Dancks. (Thomas, Ethan) (Entered: 02/03/2023)
(#12) CONSENT JUDGMENT AND ORDER for Permanent Injunction Against Thomas Lehman. Signed by U.S. District Judge Mae A. D'Agostino on 2/6/23. (ban) (Entered: 02/06/2023)
(#11) NOTICE by Yuga Labs, Inc. re #5 Notice of Admission Requirement, (Thomas, Ethan) (Entered: 02/06/2023)
(#9) NOTICE of Appearance by Ethan Jacobs on behalf of Thomas Lehman (Jacobs, Ethan) (Entered: 02/04/2023)
(#7) FRCP 7.1 CORPORATE DISCLOSURE STATEMENT by Yuga Labs, Inc.. (Thomas, Ethan) (Entered: 01/24/2023)
(#5) NOTICE OF ADMISSION REQUIREMENT as to Party Plaintiff; Attorney Molly R. Melcher, Anthony M. Fares, Eric Ball, Kimberly Culp, Email address is mmelcher@fenwick.com; afares@fenwick.com; kculp@fenwick.com; eball@fenwick.com. Phone number is 415-875-2300 and 650-988-8500. Admissions due by 2/6/2023. (khr)(Emailed notice to all attorneys on 1/23/023) (Entered: 01/24/2023)
(#4) Report on the Filing and Determination of an Action regarding patent and/or trademark number(s) Trademarks pending. (khr) (Entered: 01/24/2023)
(#3) G.O. 25 FILING ORDER ISSUED: Initial Conference set for 4/24/2023 10:30 AM before Magistrate Judge Therese Wiley Dancks. Civil Case Management Plan must be filed and Mandatory Disclosures are to be exchanged by the parties on or before 4/17/2023. (Pursuant to Local Rule 26.2, mandatory disclosures are to be exchanged among the parties but are NOT to be filed with the Court.) (khr)(Emailed to attorneys that are not admitted to practice in our court on 1/23/2023) (Entered: 01/24/2023)
(#2) Summons Issued as to Thomas Lehman. (khr) (Entered: 01/24/2023)
Docket Entries
Docket(#14) TEXT ORDER granting #8 Motion for Limited Admission Pro Hac Vice of Eric Ball. Counsel is hereby advised that as of January 16, 2018, the NYND has converted to NextGen. Due to this conversion, you must now register for Pro Hac Vice access through your PACER account. This is the only notice you will receive concerning this requirement. You will not have access to electronically file in this case until your Pro Hac Vice request has been processed through the PACER system. Step-by-step instructions on how to complete this process are available at http://www.nynd.uscourts.gov/attorney-admissions-nextgen. SO ORDERED by Magistrate Judge Therese Wiley Dancks on 2/7/2023. (sg ) (Entered: 02/07/2023)
[-] Read LessDocket(#13) Report on the Filing and Determination of an Action - Report sent to US Patent and Trademark Office in light of Consent Judgment being filed on 2/6/23. (Attachments: #1 Complaint) (ban) (Entered: 02/07/2023)
[-] Read LessDocket(#12) CONSENT JUDGMENT AND ORDER for Permanent Injunction Against Thomas Lehman. Signed by U.S. District Judge Mae A. D'Agostino on 2/6/23. (ban) (Entered: 02/06/2023)
[-] Read LessDocket(#11) NOTICE by Yuga Labs, Inc. re #5 Notice of Admission Requirement, (Thomas, Ethan) (Entered: 02/06/2023)
[-] Read LessDocket(#10) STIPULATION for Entry of Consent Judgment and Order for Permanent Injunction against Thomas Lehman by Yuga Labs, Inc. submitted to Judge Mae A. D'Agostino. (Attachments: #1 Proposed Order/Judgment)(Thomas, Ethan) (Entered: 02/06/2023)
[-] Read LessDocket(#9) NOTICE of Appearance by Ethan Jacobs on behalf of Thomas Lehman (Jacobs, Ethan) (Entered: 02/04/2023)
[-] Read LessDocket(#8) MOTION for Limited Admission Pro Hac Vice of Eric Ball Filing fee $100, receipt number ANYNDC-6187076. (Attachments: #1 Declaration of Sponsor, #2 New Attorney E-Filing Registration Form, #3 Petition for Admission, #4 Certificate of Good Standing, #5 [Proposed] Order) Motions referred to Therese Wiley Dancks. (Thomas, Ethan) (Entered: 02/03/2023)
[-] Read LessDocket(#7) FRCP 7.1 CORPORATE DISCLOSURE STATEMENT by Yuga Labs, Inc.. (Thomas, Ethan) (Entered: 01/24/2023)
[-] Read LessDocket(#6) TEXT-ONLY NOTICE REGARDING JUDGE D'AGOSTINO CASE DISPOSITION PILOT - Please refer to the Individual Rules and Practices of the Hon. Mae A. D'Agostino, U.S. District Judge, for guidance regarding the Case Disposition Pilot. https://www.nynd.uscourts.gov/sites/nynd/files/MAD_Rules_of_Practice_04_14_2020.pdf. (khr) (Entered: 01/24/2023)
[-] Read LessDocket(#5) NOTICE OF ADMISSION REQUIREMENT as to Party Plaintiff; Attorney Molly R. Melcher, Anthony M. Fares, Eric Ball, Kimberly Culp, Email address is mmelcher@fenwick.com; afares@fenwick.com; kculp@fenwick.com; eball@fenwick.com. Phone number is 415-875-2300 and 650-988-8500. Admissions due by 2/6/2023. (khr)(Emailed notice to all attorneys on 1/23/023) (Entered: 01/24/2023)
[-] Read LessDocket(#4) Report on the Filing and Determination of an Action regarding patent and/or trademark number(s) Trademarks pending. (khr) (Entered: 01/24/2023)
[-] Read LessDocket(#3) G.O. 25 FILING ORDER ISSUED: Initial Conference set for 4/24/2023 10:30 AM before Magistrate Judge Therese Wiley Dancks. Civil Case Management Plan must be filed and Mandatory Disclosures are to be exchanged by the parties on or before 4/17/2023. (Pursuant to Local Rule 26.2, mandatory disclosures are to be exchanged among the parties but are NOT to be filed with the Court.) (khr)(Emailed to attorneys that are not admitted to practice in our court on 1/23/2023) (Entered: 01/24/2023)
[-] Read LessDocket(#2) Summons Issued as to Thomas Lehman. (khr) (Entered: 01/24/2023)
[-] Read LessDocket(#1) COMPLAINT WITH JURY DEMAND against Thomas Lehman (Filing fee $402 receipt number ANYNDC-6168868) filed by Yuga Labs, Inc. (Attachments: #1 Exhibit A, #2 Civil Cover Sheet)(khr) (Entered: 01/24/2023)
[-] Read Less
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