Opinion
Civil Action 21 CV 04246
06-29-2021
LOUIS VUITTON MALLETIER SOCIETE PAR ACTIONS SIMPLIFIEE (SAS), Plaintiff, v. VARIOUS JOHN DOES, JANE DOES, and XYZ COMPANIES, Defendants.
PRELIMINARY INJUNCTION ORDER
This action having been commenced by the filing of a Complaint by Louis Vuitton Malletier societe par actions simplifiee (SAS) ("Louis Vuitton") on May 12, 2021 against Various John Does, Jane Does and XYZ Companies located at Meyers Parking Garage, 141 W. 43rd Street, New York, NY 10036 and 146 W. 44th Street, New York, NY 10036 and by an Amended Complaint on June 17, 2021, against additional Various John Does, Jane Does and XYZ Companies located at City Parking Garage, 260 W. 54th Street, New York, NY 10019 (hereinafter collectively referred to as "Defendants"), alleging acts of trademark infringement and trademark counterfeiting of the Louis Vuitton Trademarks (as defined hereafter below), including, inter alia;, claims for false designation of origin, trademark dilution, unfair competition, injury to business reputation, and false and deceptive business practices, and copies of the Summonses, Complaint, Amended Complaint, Seizure Orders, Declarations of Counsel having been served upon Defendants during the civil seizures that occurred at each of the above locations on May 18, 2021 and June 22, 2021, respectively.
The Court has considered the Complaint, Amended Complaint, both of Louis Vuitton's Order to Show Cause applications, the accompanying Declarations and Confirmation of Execution of Seizure Orders and Defendants' failure to retain counsel or personally appear at the hearings on May 25, 2021 and June 29, 2021, despite being provided further notice of the June 29th hearing date.
It further appears that Defendants' counterfeiting and infringement of the Louis Vuitton Trademarks in violation of 15 U.S.C. § 1114 will continue unless further restrained by Order of this Court.
Accordingly, the Court concludes as a matter of law:
1. The Court has jurisdiction over the subject matter of all claims in this action and over Plaintiff Louis Vuitton and Defendants;
2. Louis Vuitton has established a prima facie case of ownership of the Louis Trademarks;
3. Louis Vuitton is likely to prevail on the merits of this action in showing that Defendants are counterfeiting and infringing the Louis Vuitton Trademarks in violation of 15 U.S.C. §1114;
4. Defendants' actions have caused and will continue to cause immediate and irreparable harm, loss, and damage before a full trial on the merits can be held, in that monetary compensation will not afford adequate relief to Louis Vuitton for Defendants' continuing acts of trademark counterfeiting and infringement;
5. The harm to Louis Vuitton from the denial of this request for a Preliminary Injunction would outweigh the harm to the legitimate interests of Defendants against whom the Order would be issued and to any third parties;
6. The public interest would best be served by granting this Preliminary Injunction prior to a full trial on the merits or a default judgment against Defendants.
NOW THEREFORE, it is hereby ORDERED as follows that:
1. Defendants and their respective principals, officers, agents, servants, employees, and attorneys, and all person acting in active concert and participation with them are hereby restrained, enjoined, pending the termination of this action from:
(a) From using Louis Vuitton's federal registered trademarks, including, but not limited to those detailed below (hereinafter collectively referred to as the "Louis Vuitton Trademarks"):
| Mark | Reg. No. | Reg. Date | Class & Goods/Services |
| The LOUIS VUITTON Word Mark | |||
| LOUIS VUITTON | 1, 045, 932 | 08/10/1976 | IC 018: Luggage and ladies' handbags. |
| LOUIS VUITTON | 1, 990, 760 | 08/06/1996 | IC 014: Watches and straps for wrist watches. IC 016: Catalogues featuring luggage and travel accessories, bags, small leather goods and garments; notebooks, anthologies and pamphlets referring to travel; calendars; telephone indexes; fountain pens, ballpoint pens, nibs, covers for pocket and desk diaries, and checkbook holders. IC 18: Trunks; traveling trunks; suitcases; traveling bags; luggage; garment bags for travel; hat boxes for travel; shoe bags for travel; umbrellas; animal carriers; rucksacks; haversacks; leather or textile shopping bags; beach bags; handbags; vanity cases sold empty; attache cases; tote bags, travel satchels; clutch bags; briefcases;wallets; pocket wallets; credit card cases; business card cases; bill and card holders; checkbook holders; key cases; change purses; briefcase-type portfolios. IC 024: Travel blankets. IC 025: Shirts; sweatshirts; polo shirts; T-shirts; headwear; jackets; ties; belts; shawls; scarves. |
| LOUIS VUITTON | 2, 904, 197 | 11/23/2004 | IC 014: Jewelry, namely, rings, earrings, cuff links, bracelets, charms, necklaces, horological and chronometric instruments, namely, watches, wrist-watches, straps for wrist-watches and watch cases. |
| The LV Logo Design | |||
| (Image Omitted) | 1, 519, 828 | 01/10/1989 | IC 018: Trunks, valises, traveling bags, satchels, hat boxes and shoe boxes used for luggage, handbags, pocketbooks. |
| (Image Omitted) | 1, 794, 905 | 09/28/1993 | IC 016: Stationery, pads of stationery, calendars, indexes for articles made for travellers, notebooks, envelopes; writing paper, office requisites in the nature of writing pads, pencil holders, pen cases, pencil cases, nibs, nibs of gold, inkwells, inkstands. IC 025: Clothing for men and women; namely belts, shawls, sashes, scarves; footwear headgear, |
| (Image Omitted) | 1, 938, 808 | 11/28/1995 | IC 014: Jewelry, watches and straps for wrist watches. IC 024: Travel blankets made of textile. |
| (Image Omitted) | 2, 361, 695 | 06/27/2000 | IC 025: Clothing, namely, sweaters, shirts, sweatshirts, polo shirts, t-shirts, suits, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, bathing suits, shoes, boots and sandals, hats. |
| The Tolle Monogram Design | |||
| (Image Omitted) | 297, 594 | 09/20/1932 | IC 018: Trunks, valises, traveling bags, satchels, hat boxes and shoe boxes used for luggage, handbags, and pocketbooks. |
| (Image Omitted) | 1, 770, 131 | 05/11/1993 | IC 025: Clothing for men and women, namely, shawls, sashes, scarves; headgear. |
| (Image Omitted) | 2, 399, 161 | 10/31/2000 | IC 025: Clothing and underwear, namely, shirts, polo shirts, t-shirts, waistcoats, raincoats, skirts, coats, trousers, dresses, jackets, shawls, stoles, scarves, neckties, gloves, ties, belts, bathing suits, shoes, boots and sandals, hats. |
| (Image Omitted) | 4, 192, 541 | 08/21/2012 | IC 03: Perfumery. IC 09: Sunglasses; spectacles; optical lenses; spectacle cases; accessories for telephones, mobile telephones, smart phones, PC tablets, personal digital assistants, and MP3 players, namely, hands-free kits for telephones, covers, housings, facades, hand straps, and neck straps. IC 014: Jewelry; key rings of precious metal; tie pins; medallions; jewelry boxes; watches; watch bands; alarm clocks; cases for timepieces. IC 016: Printed matter, namely, pamphlets, catalogs, and books in the field of travel, luggage, luxury goods, fashion, clothing, sports, the arts; publications, namely, brochures and booklets in the field of travel, luggage, luxury goods, fashion, clothing, sports, the arts; stationery; stationery articles, namely, note pads, writing books, drawing books, agendas, notebooks, envelopes, letter paper, covers for diaries, indexes, and pads; office requisites, namely, letter trays, pencil holders, pen holders, writing pads, pens, balls, and nibs for pens; postcards; printed documents, namely, printed certificates. IC 018: Boxes of leather or imitation leather for packaging and carrying goods; traveling bags; leather traveling sets of luggage; trunks; suitcases; garment bags for travel; vanity cases sold empty; toiletry bags sold empty; backpacks; handbags; attache' cases; leather document cases; wallets; purses; leather key cases. IC 024: Textiles and textile goods, namely, bath linen, bed linen, towels, bed covers. IC 025: Clothing, namely, underwear, shirts, tee-shirts, pullovers, skirts, dresses, trousers, coats, jackets, belts for clothing, scarves, sashes for wear, gloves, neckties, socks, bathing suits; footwear; headwear. IC 034: Cigar and cigarette cases of leather and imitation leather. |
| The Stylized flower Designs | |||
| (Image Omitted) | 2, 177, 828 | 08/04/1998 | IC 014: Goods made of precious metals, namely, shoe ornaments, ornamental pins; jewelry, namely, rings, earrings, cuff links, bracelets, charms, necklaces; horological instruments, straps for watches, watches and wrist-watches, cases for watches, IC 018: Goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather; trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attache cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, and credit card cases, umbrellas. IC 025: Clothing and underwear, namely, shawls, stoles, belts, shoes, boots and sandals. |
| (Image Omitted) | 2, 181, 753 | 08/18/1998 | IC 014: Jewelry, namely, rings, earrings, bracelets, charms, necklaces, horological instruments, straps for watches, watches and wrist-watches, cases for watches. IC 018: Goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather; trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attache cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, credit card cases, and umbrellas. IC 025: Clothing and underwear, namely, shirts, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, belts, shoes, boots and sandals. |
| (Image Omitted) | 2, 773, 107 | 10/14/2003 | IC 014: Jewelry including cuff links, bracelets, necklaces, horological and chronometric instruments and apparatus, namely, watches. IC 018: Travel bags, travel bags made of leather; luggage trunks and valises, garment bags for travel, vanity-cases sold empty; rucksacks, shoulder bags, handbags; attache-cases, briefcases, drawstring pouches, pocket wallets, purses, umbrellas, business card cases made of leather or of imitation leather, credit card cases made of leather or of imitation leather; key holders made of leather or of imitation leather. IC 025: Clothing, namely, shuts, T-shirts, belts, scarves, neck ties, shawls, raincoats, overcoats, high-heeled shoes, low-heeled shoes, boots, tennis shoes. |
| The Damier Design | |||
| (Image Omitted) | 2, 378, 388 | 08/22/2000 | IC 018: Goods made of leather or imitations of leather not included in other classes, namely, boxes of leather principally used for travel purposes, trunks, valises, traveling bags, traveling sets for containing cosmetics and jewelry, handbags, beach bags, shopping bags, shoulder bags, briefcases, pouches, fine leather goods namely, pocket wallets, purses, key cases, business card cases, credit card cases |
| (Image Omitted) | 3, 576, 404 | 02/17/2009 | IC 018: Boxes of leather or imitation leather for packaging and carrying goods, trunks, suitcases, traveling sets comprised of matching luggage, traveling bags, luggage, garment bags for travel, toiletry cases sold empty, rucksacks, satchels, handbags, beach bags, leather shopping bags, sling bags, suit carriers, shoulder bags, waist bags, purses, travel cases, briefcases, briefcase-type portfolios, leather pouches, wallets, change purses, key cases, business card cases, calling card cases |
(b) From using Louis Vuitton's trademarks registered with the United States Patent and Trademark Office including, but not limited to, those detailed in the Complaint and Amended Complaint;
(c) From possessing, importing, exporting, manufacturing, procuring, shipping, distributing, promoting, offering for sale, selling, advertising, returning, transferring, altering or otherwise disposing of or destroying, or in any manner rendering unavailable for seizure any goods, labels, patches, stickers, decals, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, receptacles, hangtags, documentation, packaging of any type or nature and any catalogs, price lists and promotional materials, in their possession, control or custody, bearing any unauthorized reproduction, counterfeit, copy or colorable imitation of the Louis Vuitton Trademarks;
(d) From using any logo, trademark, or tradename in connection with the importation, exportation, manufacture, promotion, advertisement, display, offer for sale, sale, production, or distribution of any product in such manner as to relate or connect, or tend to relate or connect, such product in any way with Louis Vuitton or to any goods sold, sponsored, approved by, or connected with Louis Vuitton;
(e) From using any unauthorized colorable imitation of the Louis Vuitton Trademarks in connection with the importation, exportation, manufacture, promotion, advertisement, display, offer for sale, sale, production, or distribution of any product which dilutes or is likely to dilute Louis Vuitton's image, trade names, or reputation or the distinctive quality of the Louis Vuitton Trademarks;
(f) From committing any acts calculated to pass off goods or services which falsely relate or tend to falsely relate or connect, such goods or services in any way with Louis Vuitton or to any goods sold, sponsored, approved by, or connected with Louis Vuitton;
(g) From engaging in acts constituting unfair competition with Louis Vuitton or constituting an infringement of the Louis Vuitton Trademarks or of Louis Vuitton's rights in, or its right to use or exploit such trademarks, or constituting dilution of the Louis Vuitton Trademarks, and the reputation and the goodwill associated therewith;
(h) From making any statement or representation whatsoever, that falsely designates the origin of the goods as those of Louis Vuitton, or that is false or misleading with respect to Louis Vuitton;
(i) From using any reproduction, counterfeit, copy, or colorable imitation of the Louis Vuitton Trademarks in connection with the promotion, advertisement, or sale of goods sold by Defendants including, but not limited to, clothing, handbags, wallets, luggage, belts, scarves, sunglasses, labels, patches, stickers, decals, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, receptacles, hangtags, documentation, packaging of any type or nature and any catalogs, price lists, and promotional materials bearing copies or colorable imitations of the Louis Vuitton Trademarks;
(j) From affixing, applying or using on or in connection with the sale of any goods, a false description or representation, including words, marks or other logos tending to falsely describe or represent such goods as being those of Louis Vuitton and from offering such goods in commerce;
(k) From destroying, altering, concealing, or in any manner rendering unavailable for discovery or seizure, any and all business records, including purchase orders, packing lists, purchase invoices, bills of lading, checks, wire transfers, wire instructions, arrival notices, manifests, entry documents, commercial invoices, waybills, powers of attorney, shipping instructions, shipping records, delivery authorization documents, credit or debit notices, importation records, exportation records, customs documents, agency agreements, sanitized invoices, receipts, indemnification agreements, brochures, current and prior catalogs, archived webpages, internet offerings, advertisements, and emails or any other correspondence with your supplier(s) and/or customers, customs brokers, and freight forwarders referring or relating to the importation, exportation, manufacture, acquisition, purchase, advertisement, sale, offer for sale, or distribution of any goods bearing the Louis Vuitton Trademarks or colorable imitations thereof;
(l) From destroying, altering, concealing, or in any manner rendering unavailable for discovery or seizure, any other items in their possession, custody or control, including incomplete goods, raw materials, equipment or other means of manufacture or distribution which refer or relate to the manufacture, acquisition, purchase, advertisement, sale, offer for sale, or distribution of any goods bearing the Louis Vuitton Trademarks or colorable imitations thereof;
2. Defendants, their principals, officers, agents, servants, employees and attorneys and all person acting in active concert or participation with them are hereby enjoined from transferring, discarding, destroying or otherwise disposing of the following currently in the possession, custody or control of Defendants:
(a) All goods bearing any unauthorized reproductions, counterfeits, copies, and/or colorable imitations of the Louis Vuitton Trademarks, or any words, marks or designs substantially indistinguishable therefrom;
(b) All labels, patches, stickers, decals, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, receptacles, hangtags, documentation, packaging of any type or nature, and all advertisements, catalogs, price lists, and promotional materials, bearing any unauthorized reproductions, counterfeits, copies and/or colorable imitations of the Louis Vuitton Trademarks or any markings substantially indistinguishable therefrom, and all plates, tools, dies, molds, and machinery and other means of making the same along with all raw materials and any works-in-progress; and
(c) All business records, including but not limited to, all invoices, customs and shipping documents, ledgers, invoices, receipts, pm-chase orders, customer and supplier lists, artwork, designs, sketches, storage and leasing records, correspondence, computerized data records, computer hard drives, back-up tapes, and other storage media, the originals of which shall likewise be seized and sequestered, detailing:
i. Defendants' importation, design, manufacture, order, receipt, distribution, or sale of goods bearing the Louis Vuitton Trademarks or unauthorized reproductions, copies, counterfeits, and colorable imitations thereof; and
ii. Defendants' importation, design, manufacture, order, receipt, distribution, or sale of any labels, patches, stickers, decals, wrappers, badges, emblems, medallions, charms, boxes, hangtags, packaging of any type or nature, and all advertisements, catalogs, price lists, guarantees, and promotional materials, bearing the Louis Vuitton Trademarks or unauthorized reproductions, copies, counterfeits, and colorable imitations thereof and all plates, tools, dies, molds, and machinery and other means of making the same along with all raw materials and/or works-in-progress.
3. The parties may take immediate and expedited discovery, limited to document requests and intenogatories, without regard to the limitations set forth in Rules 30, 33, 34 of the Federal Rules of Civil Procedure.
4. The Seizure Orders executed on May 18, 2021 and June 22, 2021 are hereby confirmed, and the counterfeit goods seized pursuant to the Court's Seizure Orders may be destroyed after providing ten (10) days' notice to the United States Attorney for the Southern District of New York, pursuant to 15 U.S.C. §1118.
5. Service of this Order by first class mail to the Defendants at their last known home or place of business addresses shall constitute sufficient service of this Order. Service shall be deemed complete on the mailing of this Order as permitted above.
6. Louis Vuitton has been granted an extension until ___ 2021, to submit a letter updating the Court on the status of its investigation of the identities of all Defendants and/or discussions therewith and its plan with respect to the further amendment of the complaint and like.
The Court will hold a conference on August 12, 2021 at 11:00 a.m. to discuss the status or this case.