Fifth Circuit gives WWE the green light to 'smackdown' counterfeiters

United States of America

World Wrestling Entertainment (WWE) produces nationwide live wrestling events, at which it sells merchandise bearing its registered trademarks. Although WWE does not license any third parties to sell its merchandise, third parties often show up at these events purporting to sell WWE merchandise. Moreover, these bootleggers disappear without a trace as soon as they are notified of potential lawsuits, resurfacing at the next WWE event ready to continue their infringing enterprises. The vicious cycle continues, and WWE is left without recourse for the bootleggers’ infringing activities.

Having had enough, WWE brought suit in the Eastern District of Louisiana, seeking ex parte seizure and temporary restraining orders against the unidentified bootleggers under the Trademark Counterfeiting Act. The district court denied relief because WWE had not proved the identities of specific persons against whom the seizure and temporary restraining orders would be issued. The failure to prove the bootleggers’ identities, the district court found, would hinder the court in properly analysing the elements that WWE must establish to obtain the orders.

In World Wrestling Entertainment Inc v Unidentified Parties (Case No 14-30489, 2014 WL 5635359 (5th Cir), November 4 2014), the US Court of Appeals for the Fifth Circuit reversed, finding that the specific identities of the unnamed defendants were not as crucial to the evaluation of the elements as the district court thought. Because WWE sells its merchandise to consumers directly, the Fifth Circuit asserted, the identities of the unnamed defendants would be readily established once third parties are found selling WWE merchandise at or near WWE events. Thus, the district court could evaluate the requirements for issuing ex parte seizure and temporary restraining orders.

The Fifth Circuit concluded that WWE was entitled to the orders based on the record, vacated the district court’s order and remanded the case.

Rho Debrow Cornett, Kilpatrick Townsend & Stockton LLP, Atlanta

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