Green v. Does et al

Filing 10

ORDER: The Plaintiff's 3 Motion for Temporary Restraining Order is GRANTED as more fully described in this Order. Signed by District Judge Kenneth D. Bell on 11/14/2023. (mek)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
CIVIL ACTION NO. 3:23-CV-00753-KDB-DCK
RODARIUS GREEN,
Plaintiff,
v.

ORDER

ABC COMPANIES AND
JOHN & JANE DOES,
Defendants.

THIS MATTER is before the Court on Plaintiff Rodarius Green’s (A.K.A. “Rod
Wave”) Motion for an ex parte Order of Seizure and Temporary Restraining Order (“Motion”)
(Doc. No. 3). In his Motion, Mr. Green requests a nationwide order permitting the seizure and
impoundment of all merchandise infringing on his trademarks sold in and around his concerts
and further seeks an emergency injunction barring the bootleggers from selling unauthorized
merchandise. The Court has carefully considered this Motion, Plaintiff’s brief, exhibits, and oral
argument from Plaintiff’s counsel on November 14, 2023. For the reasons discussed below, the
Court will GRANT the motion in the manner described below.
I.

DISCUSSION

Mr. Green is a musical performer currently performing on a nationwide tour. He sells
shirts and other merchandise bearing his trademark, likeness and/or logo at his concert venues
and plans to sell those goods during a concert in Charlotte, North Carolina on November 15,
2023. But, according to Plaintiff, he and his authorized distributors will not be the only ones
selling “Rod Wave” merchandise. Plaintiff alleges based on prior concerts that bootleggers will

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locate themselves in close proximity to his shows to sell unauthorized “Rod Wave” merchandise
that infringes on his trademarks. However, Plaintiff does not know the names of those
bootleggers, doubts any will identify themselves at the concerts, and has not seen a bootlegger
show up in court if identified and sued. So, Plaintiff filed the present lawsuit asking this Court
for an emergency product seizure order and temporary injunction barring the bootleggers—
known only as John Does—from selling unauthorized merchandise during Rod Wave’s concerts
in Charlotte and future stops on his tour.
A.

Seizure Order

Congress addressed the unknown-infringer predicament in 1984 when it amended the
Lanham Act to authorize ex parte injunctive lawsuits similar to those that courts had permitted
under their inherent equitable authority and Federal Rule of Civil Procedure 65. See, e.g., Rakoff
& Wolff, Commercial Counterfeiting and the Proposed Trademark Counterfeiting Act, 20 Am.
Crim. L. Rev. 145, 209–224 (1982). Specifically, under 15 U.S.C. § 1116(d), a court may issue
an ex parte order to seize goods, records, counterfeit marks, and the means of making such
marks. The marks must be connected to a sale, offer to sell, or distribution of goods or services
that, under § 1114(1)(a), infringe because they bear a “reproduction, counterfeit, copy, or
colorable imitation of a registered mark,” are “likely to cause confusion, or to cause mistake, or
to deceive,” and lack “the consent of the registrant.” 15 U.S.C. § 1114(1)(a). Section
1116(d)(B)(i) authorizes the Court to order seizure to protect “a mark that is registered on the
principal register in the United States Patent and Trademark Office…”
Here, however, counsel stated that Mr. Green’s trademark is not registered and further
that Plaintiff had not given notice to the U.S. Attorney for the Western District of North Carolina
as required by the statute. See § 1116(d)(2). Accordingly, seizure under Section 1116 is not

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directly authorized under the plain terms of the statute. See General Elec. Co v. Speicher, 877
F.2d 531 (7th Cir. 1989 (“It is also true that the seizure statute does not apply to unregistered
marks as such…”). However, at oral argument, Plaintiff’s counsel asked the Court to
nevertheless enter the requested seizure order under both the broader provisions of the Lanham
Act and the inherent equitable power of the Court. As discussed below, the Court will enter a
limited seizure order with appropriate procedural safeguards to protect Mr. Green’s demonstrated
intellectual property interests which are at immediate risk.
Under 15 U.S.C. § 1125(c)(5), “the owner of a famous mark shall be entitled to
injunctive relief as set forth in [S]ection 1116 of this title.” Section 1125(c)(2) defines a famous
mark as one that “is widely recognized by the general consuming public of the United States as a
designation of source of the goods or services of the mark’s owner.” Whether the mark is
registered is a factor the Court may consider, but it is not dispositive. See § 1125(c)(2)(A)(i)-(iv).
Mr. Green’s counsel has testified that he is “world-famous” and that his national tour is
expected to draw hundreds of thousands of fans across the country. (Doc. No. 4, at 2). Indeed,
three of his albums have reached Number 1 on the Billboard Album Chart. (Doc. No. 4-2, at 2).
In 2021, Mr. Green won the Billboard Music Award for Top New Artist. Id. Furthermore, he has
sold more than 10 million copies of record music, and, relevant to this case, he has sold more
than $2 million worth of licensed merchandise bearing his trade name. Id. Moreover, the fact that
bootleggers sell merchandise using Mr. Green’s trade name is evidence that “Rod Wave” is a
“famous mark” for purposes of § 1125(c)(5). In short, the Court finds that it is likely that the
name “Rod Wave” is a famous mark subject to protection under § 1125(c) and therefore § 1116.
However, even if Section 1125 of the Lanham Act did not authorize a seizure of goods
that infringe Mr. Green’s unregistered trademark, the Court has authority under the All Writs

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Act, which authorizes courts to “issue all writs necessary or appropriate in aid of their respective
jurisdictions and agreeable to the usages and principals of law,” and Federal Rule of Procedure
65 (“Rule 65”), which authorizes a court to issue a preliminary injunction or temporary
restraining order. 28 U.S.C. § 1651(a); Fed. R. Civ. Pro. 65. Moreover, it has long been a
fundamental principle of our law that “[i]t is a settled and invariable principle, that every right,
when withheld, must have a remedy, and every injury its proper redress.” Marbury v. Madison, 5
U.S. 137, 147, 2 L. Ed. 60 (1803). Congress has granted unregistered trademark holders a legal
right by expressly extending trademark protections to the owners of unregistered trademarks. See
generally 15 U.S.C. § 1125. Therefore, whether or not § 1116(d) authorizes relief for holders of
unregistered trademarks, the Court is authorized to issue a seizure order in this case under the All
Writs Act.
Importantly, the Court’s order of seizure, which mirrors § 1116, will also provide
significant procedural safeguards for potential defendants. For example, it offers the opportunity
for a prompt hearing in which defendants can contest the seizure of their goods and mandates
that Mr. Green provide a security in the event defendants are damaged by a wrongful seizure. §§
1116(d)(4)(A), (d)(10)(A). Therefore, the Court is persuaded in light of the immediacy of the
circumstances, alleged harm, and the procedural safeguards for potential defendants who may be
subject to a wrongful seizure that it should grant Mr. Green’s request for a seizure order for
merchandise bearing the full name “Rod Wave,” which counsel stated was the trademark which
would distinguish infringing goods.
B.

Temporary Restraining Order

Mr. Green also has asked the Court for an ex parte temporary restraining order, to lay the
foundation for a preliminary injunction, that reaches beyond Charlotte and the Western District

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of North Carolina to cover his future tour stops. Temporary Restraining Orders (“TRO”) and
Preliminary Injunctions are governed by Rule 65 of the Federal Rules of Civil Procedure, which
provides that a TRO may be issued only if “specific facts in an affidavit or a verified complaint
clearly show that immediate and irreparable injury, loss, or damage will result to the movant
before the adverse party can be heard in opposition.” Fed. R. Civ. P. 65(b)(1)(A). The movant’s
attorney must also “certif[y] in writing any efforts made to give notice and the reasons why it
should not be required.” Fed. R. Civ. P. 65(b)(1)(B).
Familiar equitable principles govern the Court’s decision whether to grant a TRO. 1
Though an “extraordinary remedy,” a preliminary injunction, or TRO, is warranted where the
plaintiff has established “[1] that he is likely to succeed on the merits, [2] that he is likely to
suffer irreparable harm in the absence of preliminary relief, [3]that the balance of equities tips in
his favor, and [4] that an injunction is in the public interest.” Winter v. Nat. Res. Def. Council,
Inc., 555 U.S. 7, 20, 24 (2008); see also Dmarcian Inc. v. Dmarcian Europe BV, 60 F.4th 119,
138 (4th Cir. 2023). It is an exacting test because, as explained by the Supreme Court,
“a preliminary injunction is an extraordinary remedy never awarded as of right.” Winter, 555
U.S. at 24.
“It is well established ... that a federal district court has wide discretion to fashion
appropriate injunctive relief in a particular case.” Richmond Tenants Org., Inc. v. Kemp, 956
F.2d 1300, 1308 (4th Cir. 1992). Indeed, a court should “mold its decree to meet the exigencies
of the particular case.” Trump v. Int'l Refugee Assistance Project, 137 S. Ct. 2080, 2087 (2017)

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The standard for granting either a TRO or a preliminary injunction is the same. See e.g., U.S.
Dep't of Lab. v. Wolf Run Mining Co., 452 F.3d 275, 281 n. 1 (4th Cir. 2006); McNeill v. Bond,
No. 1:18CV786, 2022 WL 17526565, at *2 (M.D.N.C. Dec. 8, 2022), report and
recommendation adopted, No. 1:18CV786, 2023 WL 112542 (M.D.N.C. Jan. 5, 2023).
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(quoting 11A C. Wright, A. Miller, & M. Kane, Federal Practice and Procedure § 2947 (3d ed.
2013)). In doing so, a court must ensure any injunctive relief is “no more burdensome to the
defendant than necessary to provide complete relief to the plaintiffs,” Madsen v. Women's Health
Ctr, Inc., 512 U.S. 753, 765 (1994) (quoting Califano v. Yamasaki, 442 U.S. 682, 702 (1979)),
and be mindful that “[t]he purpose of such interim equitable relief is not to conclusively
determine the rights of the parties, but to balance the equities as the litigation moves
forward.” Int'l Refugee Assistance Project, 137 S. Ct. at 2087 (internal citation omitted).
Plaintiff has satisfied the prerequisites for a TRO, but only for a narrower version of the
nationwide injunction he seeks. First, Mr. Green has demonstrated a strong likelihood of success
on the merits. Unidentified bootleggers have used, and will likely continue to produce and sell,
counterfeit merchandise. Based on the T-shirt picture submitted, these designs strongly resemble
the mark, so that consumers would likely confuse the unlicensed merchandise with authorized
items. There is nothing to suggest these unidentified bootleggers have any right to sell Mr.
Green’s merchandise or use his mark. Therefore, Plaintiff has demonstrated a strong likelihood
of success on a trademark-infringement claim.
Second, as to Plaintiff’s claim of irreparable harm, the Lanham Act provides that “upon a
finding of a likelihood of success on the merits,” a plaintiff “shall be entitled to a rebuttable
presumption of irreparable harm.” 15 U.S.C. § 1116(a). No adversary has appeared in this case to
rebut the presumption that plaintiffs enjoy under the Lanham Act, which would seem to be borne
out here by the likelihood that consumers would be misled by the unauthorized merchandise,
despite its allegedly lower quality. This may result in both lost sales (which damages likely
couldn’t remedy in this circumstance, as alleged by Plaintiff) and reputational harms to Mr.

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Green. Accordingly, the Court finds that Plaintiff is likely to suffer irreparable harm
absent injunctive relief.
Third, the balance of the equities tips in Mr. Green’s favor because an injunction is
unlikely to result in substantial, unfair harm to others. Plaintiff or his licensees hold the exclusive
right to use his trademark and sell merchandise that uses his trademark. Given that any defendant
subject to the seizure and TRO would be an unauthorized infringer, the TRO is unlikely to result
in substantial, unfair harm.
Fourth, the injunction would be in the public interest. Enforcement of the Lanham Act’s
trademark protections serves the public interest in inducing and rewarding the creation of these
designs. It further serves the public interest to avoid consumer confusion “about the identity of
the enterprise from which goods and services are purchased.” Ledo Pizza Sys., Inc. v. Singh, 983
F. Supp. 2d 632, 640 (D. Md. 2013) (internal citation omitted).
Although Rule 65 generally requires notice be given to the adverse party, Mr. Green need
not do so here. See Fed. R. Civ. P. 65(b)(1). Based on the materials presented, the Court finds
that Plaintiff has satisfied the traditional requirements for a temporary restraining order and that
he may obtain this order ex parte. It is impossible to identify potential defendants until they have
already begun to infringe upon Mr. Green’s trademarks, at which point he will have suffered
irreparable injuries. The lost profits at even one venue may be significant. Counsel has stated that
it is impossible to identify Defendants in advance and difficult even to ascertain their identities
when confronted at the venue. Plaintiff stands to suffer immediate and irreparable injuries if
notice is required, and counsel has certified in writing that notice cannot reasonably be given
under these circumstances.

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NOW THEREFORE IT IS ORDERED THAT:
1. Defendants and any person or entity acting in concert with them within the
Western District of North Carolina are temporarily restrained from manufacturing,
distributing, or selling merchandise that infringes upon Plaintiff’s trademarks
2. The United States Marshals Service and state and local law enforcement officers
may seize and impound any infringing merchandise The United States Marshals
Service and state and local law enforcement officers may seize and impound any
infringing merchandise (i.e. unauthorized goods bearing the full name Rod Wave)
that is found for sale
a. between 3:00 PM on Wednesday, November 15, 2023 and 3:00 AM on
Thursday, November 16, 2023; and
b. is within 5 miles of the Spectrum Center in Charlotte, North Carolina.
3. Plaintiff or his representatives shall hold any seized materials for the Court.
4. The order is conditioned upon Plaintiff’s filing with the Clerk of this Court a bond,
certified check, or cash in the amount of $5,000 no later than November 15, 2023
at 12:00 PM, to secure any costs and damages as may be suffered by a wrongfully
restrained party.
5. Plaintiff will advance to law enforcement officers such sum as is required to cover
the fees for their services, in the event that Plaintiff seeks their services in this
district.
6. Any Defendant found shall be immediately served and given a receipt if
merchandise is seized. Plaintiff shall immediately reveal any identified Defendants
to the Court.
7. Defendants may submit their objections to this Court or apply to modify or
dissolve this Order on 2 days notice. See Fed. R. Civ. P. 65(b)(4).
8. This temporary restraining order shall remain in effect for 14 days unless a further
order of the Court dissolves or extends it. See Fed. R. Civ. P. 65(b)(2). The Court
orders Plaintiff and any Defendants to appear at an in-person hearing in the
Charlotte courthouse on November 28, 2023 at 2:00 p.m. Eastern regarding any
potential modifications to this order. Plaintiff or his counsel shall attend this
hearing and bring representative samples of any seized merchandise, as well as
other evidence obtained that would support the full length and scope of the
injunction Plaintiff has requested.
SO ORDERED ADJUDGED AND DECREED.
Signed: November 14, 2023

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