Enforcing Trademark Rights Against Anonymous Infringers

You know people are infringing your trademarks—but they’re the illegitimate, faceless leaches who disappear as soon as they’re notified of trouble.  Can you do anything to stop them? What if you don’t even know their names? The answer is yes, and we’ll tell you how. (See also: World Wrestling Entertainment, Inc. v. Unidentified Parties).

The Trademark Counterfeiting Act allows owners to seek TROs and seizure orders—with the right proof.

 The federal Trademark Counterfeiting Act (the Act) generally lets trademark owners seek temporary restraining orders (also called a “TRO”)—court orders that last a few days and command the person to stop/cease-and-desist—against counterfeiters.  See 15 USC 1116.  The Act also permits trademark owners to seek seizure orders—court orders essentially commanding the person to turn over items in their possession.

In order for the court to to grant such an order, the Act also requires the trademark owner prove (among other things) that:

·      the trademark owner will likely succeed in showing that the defendant had used a counterfeit mark,

·      the harm to the trademark owner outweighs the harm to the defendant, and

·      the defendants would destroy or make inaccessible the infringing goods after they’d received notice of a lawsuit.

But what about anonymous trademark infringers?

But how could a court order someone to cease-and-desist through a TRO (or turn over merchandise through a seizure order), when the court—and even the trademarks’ owner—cannot tell who that someone is?

That was the problem faced by World Wrestling Entertainment (WWE). It owned valuable trademarks, distributed all of its own trademarked merchandise (rather than licensing through third-parties), and was dogged by various fly-by-night operators who would set up shop outside WWE events and sell unauthorized, infringing products—cannibalizing WWE’s sales.  And of course, these bootleggers would disappear at the first sign of a lawsuit (or conceal or destroy the relevant evidence).

To fight this problem, WWE sued these unidentified parties under the Act and asked the court to grant it an ex parte seizure of the counterfeit merchandise and an ex parte TRO.  (An “ex parte” order is one that the court enters without notice to one of the parties; hence, WWE sought relief from the district court without first notifying the alleged infringers.)

Unfortunately for WWE, the Act gave no clear guidance about whether a trademark owner could sue these anonymous infringers.

The courts decide: Anonymity is not full-proof protection.

Without this guidance, the district court denied WWE’s requests, concluding that without the names of the persons against whom seizure would be ordered, it could not evaluate whether WWE met all the other requirements of the Act.  In other words, the district court believed that—without the names of the alleged infringers—WWE could not provide the court with the right proof.

WWE appealed, and the Fifth Circuit reversed. It concluded that because WWE acted as its own distributor, WWE would know right away if the person selling “WWE” merchandise were a counterfeiter.  That is, while “WWE cannot know in advance the specific identities of counterfeiters who will present themselves at any given event, [] it does know that any non-affiliated seller at or near an event is almost certainly a counterfeiter.”

Thus, WWE was entitled to both the TRO and the seizure order under the Act.