World Wrestling Entertainment, Inc v. Rodriguez

Filing 24

PRELIMINARY INJUNCTION AND ORDER OF SEIZURE. Signed by Judge Vince Chhabria on 4/20/2015. (knm, COURT STAFF) (Filed on 4/20/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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WORLD WRESTLING
ENTERTAINMENT, INC,
Plaintiff,

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PRELIMINARY INJUNCTION AND
ORDER OF SEIZURE

v.

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DOMINIC ANGEL RODRIGUEZ, et al.,

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United States District Court
Northern District of California

Case No. 15-cv-01263-VC

Defendants.

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THIS MATTER is before the Court on Plaintiff’s March 18, 2015 Verified Complaint

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and Ex Parte Motion For Temporary Restraining Order, Order for Seizure of Counterfeit Marked

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Goods and Order to Show Cause Why a Preliminary Injunction Should Not Issue (the “Motion”).

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This Court held a hearing on Plaintiff’s Motion on March 23, 2015, issued a Temporary

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Restraining Order and Order of Seizure enjoining and restraining Defendants from manufacturing,

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assembling, selling, offering for sale, distributing, offering to distribute or holding for sale any
merchandise which has not been authorized by Plaintiff, World Wrestling Entertainment, Inc.

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(“WWE”) and which bears any mark, word or name identical or confusingly similar to any

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trademarks or service marks owned by WWE, and ordering the seizure of such goods bearing

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counterfeit marks sold in the vicinity of any venue where WWE’s Wrestlemania® 31 Weekend

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Events in San Jose and Santa Clara, California from twenty-four (24) hours before those events

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began on March 26, 2015 until twenty-four (24) hours following the completion of said events on
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March 30, 2015.
Plaintiff has now requested entry of a preliminary injunction and order of seizure against

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Defendants, Dominic Angel Rodriguez, Vu Truong Tran, Benhamine Adham Pechetti, Ibraham

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Nimer Shiheiber, John and Jane Does, and XYZ Corporations (collectively, “Defendants”) for

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alleged violations of the Lanham Act, 15 U.S.C. §§ 1114, 1116 and 1125(a). The Court convened

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a hearing on Plaintiff’s request on April 7, 2015 at 10:00 a.m. at the United States District Court

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for the Northern District of California, 450 Golden Gate Avenue, San Francisco, California 94102

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in Courtroom 4, at which only counsel for Plaintiff appeared to present evidence supporting
Plaintiff’s request. Defendants have not responded to the Verified Complaint, have not made any

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filing in this case, nor have they appeared in this matter either individually or through counsel.
The Court has carefully reviewed Plaintiff’s Verified Complaint, the accompanying supporting

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United States District Court
Northern District of California

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Declarations of Matthew Ball, Esq. and Lauren Dienes-Middlen, each with exhibits thereto, the

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memorandum of law, the Amended Complaint, Supplemental Declaration of Lauren Dienes-

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Middlen and the evidence presented at the hearings.
NOW, on presentation and consideration of all pleadings and proceedings presented to the

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Court, the Court finds as follows.
1.

WWE exclusively owns or controls the numerous trademarks and service marks

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associated with its wrestling entertainment business, including, but not limited to, the marks set

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forth in Exhibits 1 and 2 hereto, (collectively, the “WWE Marks”). WWE has the exclusive right

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to use and license others to use the WWE Marks on goods and to use the WWE Marks in

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connection with rendering services. WWE also exclusively owns or controls all right, title and

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interest in the names, likenesses and rights of publicity for its current wrestlers. The WWE Marks
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are distinctive and are widely recognized by the public. Goods that bear any mark, word, or name

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identical or confusingly similar to any of the WWE Marks or the names or likenesses of any of

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WWE’s current wrestlers shall be known herein as the “Enjoined Goods.” All of the WWE Marks

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listed in Exhibit 1 are either currently pending or registered with the United States Patent and

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Trademark Office.
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Defendants, who are not licensed or authorized by WWE to use the WWE Marks,

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and those acting in concert or participation with them, were and will be present on the premises or

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within a five-mile radius of the venues where WWE’s live events shall be occurring beginning on

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March 26, 2015 and ending March 28, 2016, including, but not limited to, the San Jose

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Convention Center, San Jose University, Camera 12 Theater, Levi’s Stadium and the SAP Center,

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which were the locations in Santa Clara and San Jose, California where WWE’s Wrestlemania® 31

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Weekend Events occurred from March 26 through March 30, 2015, for the purpose of
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manufacturing, distributing, offering for sale, and selling Enjoined Goods. It appears to this Court
that Defendants, and those acting in concert or participation with them, will continue to infringe

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United States District Court
Northern District of California

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the WWE Marks and to commit unfair competition against WWE by manufacturing, distributing,

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offering for sale and selling Enjoined Goods, on the premises or within a five-mile radius of halls,

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arenas, stadiums, or other venues where WWE live events shall occur, including those events
listed on the schedule set forth in Exhibit 3 hereto.

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3.

The Enjoined Goods were located on the premises or within a five-mile radius of

the venues where WWE’s Wrestlemania® 31 Weekend Events that occurred in Santa Clara and

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San Jose from March 26 through March 30, 2015, including, but not limited to, the San Jose

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Convention Center, San Jose University, Camera 12 Theater, Levi’s Stadium and the SAP Center,

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and will be located on the premises or within a five-mile radius of halls, arenas, stadiums, or other

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venues where other WWE events shall be occurring during the nationwide series of live events,

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including but not limited to those indicated in Exhibit 3 hereto.
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4.

The Enjoined Goods are goods bearing “counterfeit marks” within the meaning of

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15 U.S.C. § 1116(d). The distribution, sale or offering the sale of the Enjoined Goods would

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cause confusion or mistake or be likely to deceive and would constitute trademark infringement

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under 15 U.S.C. § 1114 and would constitute false designation of origin under 15 U.S.C. §

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1125(a).
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Copies of the Court’s March 24, 2015 Order to Show Cause, and the Summons and

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Verified Complaint have been served upon Defendants, and Enjoined Goods have been obtained

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from the Defendants.

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WWE is likely to succeed in showing that the Defendants have used counterfeit or

infringing marks in connection with the sale, offering for sale or distribution of goods or services.
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WWE will suffer immediate and irreparable injury and will have no adequate

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remedy at law if this Court denies to grant a preliminary injunction and order of seizure.
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The harm to WWE should this Court not grant the requested preliminary injunction

and order of seizure clearly outweighs any harm which the Defendants might incur if the

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United States District Court
Northern District of California

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preliminary injunction is granted.

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NOW, THEREFORE, IT IS HEREBY ORDERED:
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Defendants, including the John and Jane Does, and XYZ Corporations not yet

identified, along with their partners, associates, agents, servants, employees, representatives, and

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assigns, and all others under their control or in active concert or participation with them, and all
other persons and entities having actual knowledge hereof be, and the same hereby are,
ENJOINED and RESTRAINED from:

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(a)

manufacturing, assembling, selling, offering for sale, holding for sale,
distributing, or offering to distribute any Enjoined Goods which have not
been authorized by Plaintiff and which bear any of the trademarks and
service marks of Plaintiff, including but not limited to those set forth in
Exhibits 1 and 2 hereto, or any marks confusingly similar thereto, including,
but not limited to, WORLD WRESTLING ENTERTAINMENT®, WWE®,
WRESTLEMANIA®, and the WWE® logos.

(b)

representing by any method whatsoever that the Enjoined Goods were
sponsored, manufactured, sold or licensed by WWE and otherwise taking
any action likely to cause confusion, mistake or deception on the part of the
public as to the origin of the Enjoined Goods.

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2.

Any on-duty federal, state, or local law enforcement officers are hereby authorized

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to seize and maintain in their custody and control any and all Enjoined Goods and counterfeit
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marks, and the means of making them, and records documenting the manufacture, sale or receipt

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of things relating thereto, in the possession, dominion or control of Defendants, their agents or

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persons acting in concert or participation with them, including all such Enjoined Goods and

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counterfeit marks located in or on any containers, vessels, or motor vehicles. All seized items

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shall be delivered up to the care and custody of Plaintiff or Plaintiff’s attorneys pending further

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instructions from the Court. The seized goods shall be kept in identifiable containers. The law

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firm of K&L Gates LLP is authorized to serve as custodian of the seized goods under 15 U.S.C. §
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1116(d)(7).
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The law enforcement officers acting hereunder are authorized to carry out the

United States District Court
Northern District of California

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foregoing on the premises or within a five-mile radius of the venues where a WWE live event

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occurs during the duration of this Order, including but not limited to, from twenty-four (24) hours

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before any such event begins to twenty-four (24) hours following the completion of said event.
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Defendants shall cooperate with the law enforcement officers executing such

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seizure hereunder, shall provide the items sought to be seized wherever such items are maintained
and shall provide their correct names, residential and business addresses and telephone numbers.
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Simultaneously with any seizure made pursuant to this Order, or as soon thereafter

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as is practical under the circumstances, each Defendant shall be served with a copy of this Order,

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the Amended Complaint in this action, and a copy of the attached Notice of Right to Object to

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Seizure by the law enforcement officer, or by any person over the age of 18 years who is not a

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party to this action. The Notice of Right to Object to Seizure must be served as a separate
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document.
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Any Defendant who is served with a copy of this Order and whose Enjoined Goods

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are seized may, without having to appear in person in this Court, object to the provisions hereof

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and/or the seizure by submitting to the Court in writing his or her objections within two weeks.

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The objection may, but need not be, submitted on the objection form attached to the Notice of
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Right to Object to Seizure of Goods. The objection must be submitted in accordance with the

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procedures detailed in the attached Notice of Right to Object to Seizure of Goods. No such

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objection, however, shall serve to suspend this Order or stay the terms hereof unless otherwise

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ordered by this Court.

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The Injunction Bond posted by WWE in the amount of $10,000 shall remain in full

force and effect throughout the duration of this Order.

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This Order shall expire twenty-four (24) hours after the March 28, 2016 WWE

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Live Event listed on Exhibit 3 hereto.

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United States District Court
Northern District of California

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IT IS FURTHER ORDERED that within one month of the expiration of this Order,
WWE shall file any necessary motions and/or request for a Final Hearing in this Action .

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IT IS SO ORDERED.
Dated: April 20, 2015
______________________________________
VINCE CHHABRIA
United States District Judge

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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WORLD WRESTLING ENTERTAINMENT,
INC,

Case No. 15-cv-01263-VC
NOTICE OF RIGHT TO OBJECT TO
SEIZURE OF GOODS

Plaintiff,

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v.

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DOMINIC ANGEL RODRIGUEZ, et al.,

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Defendants.

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United States District Court
Northern District of California

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TO THE PERSON WHOSE GOODS WERE SEIZED:
You have the right to object to the seizure of your goods, and the right to object to the
enforcement of the Preliminary Objection and Seizure Order against you.
You may object by completing the attached objection form, and mailing it to the following
address:
Hon. Judge Vince Chhabria
United States District Court Judge
United States District Court for the Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

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You must mail the objection to the Court no later than 14 days after the seizure. This 14-

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day period will begin on the date shown on the proof of service, and end on the day on which your

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objection is postmarked. If the 14th day is a Saturday or Sunday, or Court holiday, the 14-day

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deadline will be extended to the following Monday. The Court recommends that you mail the

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objection as soon as possible after the seizure, because objections sent after the 14-day deadline

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has expired will not be considered.

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You are not required to use the attached objection form. However, if you do not use the

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attached objection form, please include the following information in your objection: (1) an

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explanation of why your goods should not have been seized; (2) an estimate of the amount of

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money you lost as a result of the seizure, and how you calculated that number; and (3) your name
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and address, and a telephone number where you can be reached.
With regards to the explanation of why your goods should not have been seized, the

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objection must specifically describe what goods were seized, and identify the World Wrestling

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Entertainment representative who authorized you to sell the seized goods.

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The objection must further contain the following language:

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I declare under penalty of perjury that the foregoing is true and correct.

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United States District Court
Northern District of California

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The objection must also be signed, and dated. Unsigned objections and objections that do
not contain the “penalty of perjury” language will not be considered by the Court.
The Court may contact you via telephone with questions concerning your objection.

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Please do not telephone the Court, because the Court will not be able to answer any questions

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concerning the seizure or the objection process.

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If the Court agrees with your objection, the Court may order the seized goods returned to

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you, and may order that you be paid for any damages that you suffered as a result of the seizure.

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If the Court does not agree with your objection, the seized goods will not be returned to you, and

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you will not be paid any damages.

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Dated: April 20, 2015
_______________________________
VINCE CHHABRIA
United States District Judge

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OBJECTION TO SEIZURE OF GOODS

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To:
Hon. Judge Vince Chhabria
United States District Court Judge
United States District Court for the Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

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Re: World Wrestling Entertainment, Inc. v. Rodriguez, Case No. 15-cv-1263

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I, _______________________________(name), hereby object to the seizure of my goods that took place
on ____________________(date), for the following reason:

United States District Court
Northern District of California

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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(you may attach additional pages as necessary)

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The goods that were seized are as follows:
______________________________________________________________________________________

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______________________________________________________________________________________

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______________________________________________________________________________________

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(you may attach additional pages as necessary)

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The World Wrestling Entertainment representative who authorized me to sell the seized goods
is______________________. (if you have written authorization, please provide a copy).

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As a result of the seizure, I suffered the following money damages:

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______________________________________________________________________________________

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______________________________________________________________________________________
______________________________________________________________________________________
(describe damages and explain why you believe the number to be correct)

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I live at the following address:_________________________________________ (address), and my

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United States District Court
Northern District of California

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telephone number is ______________________________ (telephone number).

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I declare under penalty of perjury that the foregoing is true and correct.

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Date:____________________________ (write the date on which you signed this form)

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___________________________________

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Signature

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