World Wrestling Entertainment (“WWE”) has serious problems at many of its events. It seems that purveyors of WWE counterfeit merchandise set up shop at or near event locations. As such, the WWE loses a number of lucrative merchandise sales at events. The problem facing the WWE has been how to stop such nameless, faceless counterfeiters who typically evade detection or enforcement consequences. With scant resources, many local police departments are not willing or able to provide the type of “boots on the ground” enforcement required to stamp out sidewalk counterfeits.
So how does a brand owner succeed against shadowy, anonymous wrongdoers? The WWE took the novel approach of seeking an ex parte temporary restraining order and seizure order against future, unnamed counterfeiters. This is highly unusual in that most trademark enforcement actions are reactive and backward looking in that they seek to redress wrongs already committed. Certainly, in the online trademark infringement context, relief is routinely granted against anonymous “John Doe” defendants. In such cases, however, there is existing admissible evidence of the infringements. And typically such infringement is rectified easily via a seizure of the very domain names used to perpetrate the anonymous counterfeiting.
In the WWE’s case, success did not come initially. The District Court denied the requested seizure order. In so ruling, the District Court held that the Trademark Counterfeiting Act required the identities of the counterfeiters as a prerequisite to issuing a seizure order. Furthermore, the District Court expressed concerns over the WWE’s proposed order which would have effectively deputized the WWE’s agents to conduct seizures, rather than accompanying law enforcement in order to simply identify infringing goods.
The Fifth Circuit Court of Appeals recently overruled the District Court on a number of grounds. First, the Appellate Court highlighted the fact that the WWE asserted in its moving papers that, in fact, there were no third parties licensed to sell WWE merchandise. The Court found this to be a predicate in the Fifth Circuit, ruling that the District Court’s concern over lack of an identified adverse party was misplaced because, in fact, anybody selling WWE merchandise other than the WWE was a de facto infringer.
Secondly, the Appellate Court found the District Court’s concern over deputization to be a non-issue. The Court found that, given that there were no licensed third party sellers, the WWE was in the best position to detect infringement. Furthermore, nothing in the ex parte seizure provision of the Act precluded such deputization, and, in fact, it may be authorized pursuant to language blessing the assistance of law enforcement in executing seizure orders.
While this opinion is hardly controversial, trademark litigators will agree that it follows a general trend in in the case law with respect to seizure orders. Increasingly, judges are willing to provide aggressive relief in sweeping seizure orders at the onset of a case. In this case, the District Court actually proceeded in a cautious, procedurally thoughtful manner and ended up reversed. Most likely, this new found preference for aggressive seizure orders is a product of the internet age, where judges see case after case of fly by night anonymous defendants and repeated default judgments. As such, the 5th circuit appears to have embraced a more pro-active, practical and results driven approach to trademark enforcement litigation.