Opinion
Civil Action 22 CV 10192 (JGK)
12-13-2022
BURBERRY LIMITED; BALENCIAGA SA; BOTTEGA VENETA S.R.L.; GIANNI VERSACE, S.RL.; HERMES INTERNATIONAL; LOUIS VUITTON MALLETIER; LUXURY GOODS INTERNATIONAL (L.G.I.) S.A.; MICHAEL KORS, L.L.C.; MONCLER, S.P.A; TIMBERLAND, a division of VF OUTDOOR, LLC, and TBL LICENSING LLC; and YVES SAINT LAURENT SAS, Plaintiffs, v. VARIOUS JOHN DOES, JANE DOES, and XYZ COMPANIES, Defendants.
PRELIMINARY INJUNCTION
JOHN G. KOELTL UNITED STATES DISTRICT JUDGE
This action having been commenced by Burberry Limited; Balenciaga SA; Bottega Veneta S.r.l; Gianni Versace, S.r.I.; Hermes International; Louis Vuitton Malletier; Luxury Goods International (L.G.L) S.A.; Michael Kors L.L.C.; Moncler S.p.A.; Timberland, a division of VF Outdoor LLC; TBL Licensing LLC; and Yves Saint Laurent SAS (collectively “Plaintiffs”) on December 1, 2022 against Defendants Various John Does, Jane Does, and XYZ Companies: at least one John Doe, Jane Doe, or XYZ Company at 136 Madison Avenue (a/k/a 19 East 31st Street), Suite 553, New York, NY 10016; at least one John Doe, Jane Doe, or XYZ Company at 25 West 31st Street, New York, NY 10001; at least one John Doe, Jane Doe, or XYZ Company at 115 West 29th Street, 7th Floor, Room Across from Elevators to the Right, New York, NY 10001; dozens of John Does, Jane Does, and/or XYZ Companies on Sidewalks on White, Walker, Lispenard, Canal, & Howard Streets from Broadway to Church Street, New York, New York 10013; dozens of John Does, Jane Does, and/or XYZ Companies on Sidewalks on 46th Street to 53rd Street from Broadway to 7th Avenue, New York, New York 10019; dozens of John Does, Jane Does, and/or XYZ Companies on Sidewalks on 48th Street to 53rd Street along 6th Avenue, New York, New York 10019; and dozens of John Does, Jane Does, and/or XYZ Companies in vehicles parked on Lispenard Street off Broadway, including a Tan Honda Odyssey (Temporary [Paper] TX “Plate” No. NSK 4753), a Green Toyota Minivan (N.Y. License Plate No. JCU 6884), a White Ford Van (Graffiti Covered) (N.Y. License Plate No. KVN-19_[Partial]), and a Grey/Silver Toyota Sienna (N.Y. License Plate No. HSF 2126)., alleging trademark counterfeiting and infringement of Plaintiffs' Federally Registered Trademarks (defined below) and charging these defendants with, inter alia, trademark counterfeiting, infringement, dilution and false advertising, and copies of the Summons, Complaint, Seizure Order, and Declaration of Counsel having been served upon certain defendants during civil seizures at the following locations on December 6 and 8, 2022: 136 Madison Avenue (a/k/a 19 East 31st Street), Suite 553, New York, NY 10016; 25 West 31st Street, New York, NY 10001; 115 West 29th Street, 7th Floor, Room Across from Elevators to the Right, New York, NY 10001; on Sidewalks on White, Walker, Lispenard, Canal, & Howard Streets from Broadway to Church Street, New York, New York 10013; on Sidewalks on 46th Street to 53rd Street from Broadway to 7th Avenue, New York, New York 10019; and a Green Toyota Minivan (N.Y. License Plate No. JCU 6884) on Lispenard Street off Broadway (collectively, “Defendants”);
It appearing to the Court that it has jurisdiction over the subject matter of this action, over Plaintiffs and over Defendants;
The Court having considered the Complaint and the exhibit thereto, Plaintiffs' Order To Show Cause and accompanying papers and the Defendants failing to appear at the hearing on December 13, 2022 after receiving notice of the same on December 6 or 8, 2022; and
It further appears that Defendants are, inter alia, counterfeiting and infringing Plaintiffs' Federally Registered Trademarks, in violation of 15 U.S.C. § 1114 and will continue to counterfeit and infringe Plaintiffs' Federally Registered Trademarks unless restrained by Order of this Court.
Accordingly, the Court concludes as a matter of law:
1. This Court has jurisdiction over the subject matter of all counts of this action and over all the parties hereto;
2. Plaintiffs have established a prima facie case of ownership of Plaintiffs' Federally Registered Trademarks;
3. Plaintiffs are likely to prevail on the merits of this action in showing that Defendants are counterfeiting and infringing Plaintiffs' Federally Registered 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 Plaintiffs for Defendants' continuing acts of counterfeiting and trademark infringement;
5. The harm to Plaintiffs 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; and
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. The Defendants and their respective principals, officers, agents, servants, employees, and attorneys, and all persons in concert and participation with them are hereby restrained and enjoined, pending termination of this action:
(a) From using Plaintiffs' Federally Registered Trademarks, including but not limited to:
(Image Omitted)
(Image Omitted) (hereinafter collectively referred to as “Plaintiffs' Federally Registered Trademarks”);
(b) From receiving, manufacturing, distributing, advertising, promoting, returning, offering for sale or otherwise disposing of in any manner, holding for sale or selling any goods, labels, tags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, promotional materials and the like bearing a copy or colorable imitation of Plaintiffs' Federally Registered Trademarks;
(c) From using any logo, trade name or trademark which may be calculated to falsely represent or which has the effect of falsely representing that the services or products of Defendants are sponsored by, authorized by, or in any way associated with Plaintiffs;
(d) From infringing Plaintiffs' Federally Registered Trademarks;
(e) From falsely representing themselves as being connected with Plaintiffs or sponsored by or associated with Plaintiffs;
(f) From using any reproduction, counterfeit, copy, or colorable imitation of Plaintiffs' Federally Registered Trademarks in connection with the publicity, promotion, sale, or advertising of goods sold by Defendants including, without limitation, apparel, belts, cosmetics, eyewear, footwear, handbags, jackets, jewelry, perfumes, wallets, watches, and other products bearing a copy or colorable imitation of Plaintiffs' Federally Registered Trademarks;
(g) From affixing, applying, annexing, or using in connection with the sale of any goods, a false description or representation, including words or other symbols tending to falsely describe or represent such goods as being those of Plaintiffs and from offering such goods in commerce;
(h) From using any trademark or trade name in connection with the sale of any goods which may be calculated to falsely represent such goods as being connected with, approved by or sponsored by Plaintiffs; and
(i) From destroying, altering, disposing of, concealing, tampering with or in any manner secreting any and all business records, invoices, correspondence, books of account, receipts or other documentation relating or referring in any manner to the manufacture, advertising, receiving, acquisition, importation, purchase, sale or offer for sale, or distribution of any merchandise bearing Plaintiffs' Federally Registered Trademarks.
2. Defendants, their principals, officers, agents, servants, employees and attorneys and all persons 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 merchandise bearing any copy or counterfeit of Plaintiffs' Federally Registered Trademarks or any markings substantially indistinguishable therefrom;
(b) All labels, tags, logos, emblems, watch faces, signs, and other forms of markings, all packaging, wrappers, pouches, containers, receptacles, and all advertisements, catalogs, price lists, guarantees, promotional materials and the like bearing any copy or counterfeit of Plaintiffs' Federally Registered Trademarks or any
markings substantially indistinguishable therefrom, and all plates molds, dies, tooling, machinery, assembly equipment and other means of making the same; and
(c) All books and records showing:
(i) Defendants manufacture, receipt and sale of merchandise bearing Plaintiffs' Federally Registered Trademarks; and
(ii) Defendants' manufacture, receipt and sale of any labels, tags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, guarantees, promotional materials and the like bearing Plaintiffs' Federally Registered Trademarks, either by reference to such trademarks or by style or code number or otherwise.
3. The parties may take immediate and expedited discovery, limited to document requests and interrogatories, without regard to the time limitations set forth in Rules 30, 33, 34 and 36 of the Federal Rules of Civil Procedure.
4. The seizures outlined in the opening paragraph are hereby confirmed, and the counterfeit goods seized pursuant to the Court's December 1, 2022 Seizure Order may be destroyed after the appropriate 10 days' notice is given to the United States Attorney for the Southern District of New York, as provided for in 15 U.S.C. § 1118.
5. Service of this Order by hand delivery or first-class mail to the Defendants at their business addresses shall constitute sufficient service of this Order. Service shall be deemed complete on either hand delivery or mailing of this Order as permitted above.
SO ORDERED: