World Wrestling Entertainment, Inc. v. Unidentified Parties
770 F.3d 1143 (2014)
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Rule of Law:
Under the Trademark Counterfeiting Act, a plaintiff may obtain an ex parte seizure order against unnamed "fly-by-night" defendants whose specific identities are unknown, provided they are readily identifiable by their conduct as a class of counterfeiters.
Facts:
- World Wrestling Entertainment, Inc. (WWE) owns valuable trademarks and generates significant revenue from merchandise sales at its live events.
- WWE sells its merchandise directly at these events and does not license any third parties to sell merchandise.
- Unnamed Defendants, described as 'fly-by-night' counterfeiters, set up operations near WWE events to sell unauthorized products.
- These counterfeiters typically disappear upon detection to avoid legal action, only to reappear at subsequent events.
- WWE can readily identify the unauthorized designs of the counterfeit merchandise being sold.
Procedural Posture:
- World Wrestling Entertainment, Inc. filed a lawsuit in the U.S. District Court against unnamed Defendants.
- WWE applied for an ex parte seizure order and a temporary restraining order under the Trademark Counterfeiting Act.
- The district court denied WWE's application for relief.
- The district court then certified its order for an interlocutory appeal, allowing for immediate review by a higher court.
- The U.S. Court of Appeals granted the appeal to review the district court's decision.
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Issue:
Does the Trademark Counterfeiting Act's requirement to provide 'specific facts' about the 'person against whom seizure would be ordered' prevent a court from issuing an ex parte seizure order against unnamed counterfeiters who are identifiable only by their unauthorized conduct at a specific event?
Opinions:
Majority - Per Curiam
No. The Trademark Counterfeiting Act's identification requirement is met when defendants, though unnamed, are readily identifiable by their conduct. The district court misinterpreted the statute by focusing on the need to know the specific personal identities of the counterfeiters beforehand. Because WWE is the exclusive seller of its merchandise at live events, any non-affiliated person selling such merchandise at or near an event is readily identifiable as a counterfeiter. This 'identifiability by conduct' is sufficient for the court to evaluate the statutory requirements for an ex parte seizure order, such as likelihood of success and balancing of harms. Therefore, WWE has met its burden under the statute, and the seizure order should issue.
Analysis:
This decision provides a crucial clarification for trademark holders, particularly those in the live entertainment and sports industries, who face transient, anonymous counterfeiters. It establishes that the ex parte seizure provision of the Trademark Counterfeiting Act can be effectively used against a class of 'John Doe' defendants who are identifiable by their actions rather than their names. This lowers the evidentiary bar for obtaining these powerful pre-notice remedies, making it easier for rights holders to protect their intellectual property and revenue streams from 'fly-by-night' infringers at specific events. The ruling reinforces the Act's purpose of providing an effective tool against counterfeiters who would otherwise evade the legal process.
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