Background
emoji company GmbH (“Emojico”) holds trademark registrations covering the word and design mark “emoji” across a remarkably broad range of product categories — from household goods to electronics. The German company has pursued an aggressive litigation campaign in U.S. courts using the SAD Scheme (Schedule A Defendants), a litigation tactic in which a trademark plaintiff sues a large number of unnamed e-commerce sellers as a group, citing a list of alleged infringers attached as a schedule to the complaint. Plaintiffs using this strategy typically seek an emergency temporary restraining order (TRO) freezing the defendants’ store accounts and any attached funds before the defendants are even notified of the lawsuit.
This case was filed in the Southern District of New York just days before Emojico’s TRO motion was heard. Emojico’s standard argument — that all Schedule A defendants are counterfeiters, which necessarily means they are infringers — was presented to Judge Lewis Liman. The defendants’ exhibit (identifying the accused products) remained under seal at the court’s direction.
The Court’s Holding
Judge Liman denied the TRO. The court found that Emojico had failed to show that the marks used by the defendants were sufficiently similar to Emojico’s marks to meet the high bar required for emergency injunctive relief. In the court’s words, “many of the marks are so dissimilar that the Court lacks the confidence required for the extraordinary remedy of a temporary restraining order.”
The sealed exhibit revealed a motley collection of products with little apparent connection to Emojico’s highly stylized cartoon smiley-face marks. The court enumerated examples: a shower curtain depicting “a lifelike image of a man screaming”; a bathmat featuring “illustrated jack-o-lanterns and smiling ghosts”; an “abstract ‘glitch art poster’ with no discernable faces whatsoever”; a pair of purple earbuds; a digital alarm clock; a karaoke machine with cat ears; and a cinema light box. The court found it “difficult to imagine how any consumer would be confused that the source of this product is Plaintiff, whose products use highly stylized, cartoon-like images of disembodied smiley faces.”
The court also questioned joinder — whether all of the defendants share enough common issues of fact to be sued together — and declined to sever the likely non-infringing defendants. Emojico’s attempt to add state trademark claims fared no better; it provided no independent legal analysis supporting those claims. The court separately chided Emojico for exceeding the page limit on its TRO memorandum by 33 pages, warning that future motions submitted in such a manner are unlikely to be granted. The court did, however, grant Emojico’s sealing request for the exhibit.
Key Takeaways
- The SAD Scheme’s standard syllogism — “all Schedule A defendants are counterfeiters, therefore they all infringe” — is not self-proving and does not substitute for a real likelihood-of-confusion analysis tailored to the specific marks and products at issue.
- Where the accused products bear no visual resemblance to the plaintiff’s mark (a screaming man shower curtain vs. a cartoon smiley face), a federal court will not grant the emergency relief the SAD Scheme depends on.
- Joinder of numerous unrelated e-commerce sellers requires a showing of common issues of fact — merely appearing on the same search results page for a keyword does not suffice.
- Courts are increasingly scrutinizing SAD Scheme lawsuits for substantive merit before granting TROs, rather than treating them as ministerial.
Why It Matters
The SAD Scheme has been controversial since it emerged as a mass-enforcement tool. Critics argue that the combination of ex parte TROs and marketplace account freezes can devastate small sellers — including innocent ones — before they have any notice that a lawsuit exists. Emojico’s trademark portfolio spans an extraordinary range of product categories, making it a particularly aggressive user of this strategy.
Judge Liman’s ruling contributes to a growing line of cases in which courts have declined to rubber-stamp SAD Scheme TROs and instead required plaintiffs to demonstrate genuine mark similarity for each defendant or category of products. For practitioners advising e-commerce clients on trademark enforcement strategies, the case reinforces that overbroad Schedule A defendant lists and superficial likelihood-of-confusion showings will not survive judicial scrutiny — even at the ex parte TRO stage.
Surfaced via Eric Goldman’s Technology & Marketing Law Blog.