This site uses cookies. By continuing to browse the site you are agreeing to our use of cookies.
Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
Nov. 5 — The WWE might not be able to identify in advance vendors hawking counterfeit goods who show up at live events, but it can easily identify such fly-by-night operations because it has shown that it does not license third parties to sell branded goods, such as T-shirts and caps, the U.S. Court of Appeals for the Fifth Circuit ruled Nov. 4.
Vacating a federal district court's denial of the WWE's request for an ex parte order for seizure of counterfeit goods, the court said that the WWE had met its burden under federal law to adequately identify parties alleged to be in possession of counterfeit goods.
World Wrestling Entertainment Inc. of Stamford, Conn., is the successor of a wrestling promotion company originally founded in 1952 and which was known as the World Wide Wrestling Federation or World Wrestling Federation from 1963 to 2002.
The current corporation, which was founded in 1983, holds numerous U.S. trademark registrations related to the terms “World Wrestling Entertainment,” “WWE” and “Wrestlemania,” and several logos and other brands.
At live events, the WWE sells branded goods, such as T-shirts and caps. WWE alleged, based on past experience, that several individuals and groups were preparing to sell counterfeit goods at live WWE events scheduled for 2014 and 2015 in New Orleans and other places.
The WWE thus initiated the instant proceeding against hundreds of unidentified individuals and corporations, alleging trademark infringement of registered and unregistered trademarks, false designation of origin, trademark dilution and trafficking in counterfeit goods under federal law, and trademark infringement and unfair competition under Louisiana state law.
The WWE filed an ex parte request for seizure of the goods as well as a temporary restraining order, pursuant to the Trademark Counterfeiting Act of 1984, 15 U.S.C. §1116.
Judge Helen G. Berrigan of the U.S. District Court for the Eastern District of Louisiana denied the requests, after determining that the WWE had failed to established “specific facts” regarding the identities of the individuals against whom such a seizure order could be imposed.
According to the district court, without such information, it could not determine the likelihood of success on the merits of the WWE's claims. The WWE appealed.
In a per curiam ruling, the appeals court said that the district court had misunderstood the degree of specificity required for a seizure order under Section 1116(d)
The important factor in the instant case, according to the appeals court, is that the WWE had established that it did not license third parties to produce branded goods.
Thus, the court said, “The resulting confined universe of authorized sellers of WWE merchandise necessarily ‘identifies' any non-WWE seller as a counterfeiter.”
Although it was not possible for the WWE to know in advance what fly-by-night vendors would show up outside any particular event, it would be evident that any vender not directly affiliated with the WWE would be “almost certainly a counterfeiter.” Thus, the alleged counterfeiters would be “readily identifiable.”
Thus, the court concluded that the WWE had met its burden under Section 1116(d). The court vacated the denial and remanded the matter for further consideration regarding who exactly would be authorized to patrol WWE live events and identify and seize counterfeit goods.
The appellate panel comprised Judges Patrick E. Higginbotham, Edith Hollan Jones and Stephen A. Higginson. The WWE was represented by K&L Gates LLP, Dallas.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com.
To contact the editor responsible for this story: Tom Taylor at ttaylor@bna.com.
Full text at http://www.bloomberglaw.com/public/document/WORLD_WRESTLING_ENTERTAINMENT_INCORPORATED_Plaintiff__Appellant_v.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to books@bna.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to research@bna.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)