Taylor Swift v. Malcolm Matthews, et al

Filing 25

MEMORANDUM in Support of 3 MOTION for Temporary Restraining Order filed by Taylor Swift Supplemental Memorandum in Support of Motion for Preliminary Injunction and Application for Order of Seizure of Counterfeit Goods. (Attachments: # 1 Exhibit Declaration of Francisco Javier Dominguez, # 2 Proposed Order Proposed Preliminary Injuction and Order of Seizure)(Rose, Natalya)

Taylor Swift v. Malcolm Matthews, et al

Doc. 25

IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF TENNESSEE IN NASHVILLE

TAYLOR SWIFT, Plaintiff v. MALCOLM MATTHEWS, et al., Defendants

Civil Action No. 3:09-0442 Judge Wiseman Magistrate Judge Griffin FILED UNDER SEAL

SUPPLEMENTAL MEMORANDUM IN SUPPORT OF MOTION FOR PRELIMINARY INJUNCTION AND APPLICATION FOR ORDER OF SEIZURE OF COUNTERFEIT GOODS

The plaintiff, Taylor Swift ("Plaintiff"), by and through her undersigned counsel, respectfully submits this supplemental memorandum in support of her pending Motion for Preliminary Injunction and Application for Order of Seizure of Counterfeit Goods, and requests that the Court's restraining order and Order of Seizure of Counterfeit Goods (Document Nos. 12, 17) remain in effect until such time as the Court conducts a final hearing in the present case. This relief is warranted and authorized under the Trademark (Lanham) Act, 15 U.S.C. § 1051 et seq. and §§ 1116(a) and (d), Tennessee Personal Rights Protection Act of 1984, Tenn. Code Ann. § 47-25-1101 et seq., and Rule 65 of the Federal Rules of Civil Procedure. For the following reasons, Plaintiff respectfully requests that the Court grant this relief. The present action came before this Court on May 18, 2009, when Plaintiff filed a Verified Complaint, seeking relief for trademark infringement and trademark dilution, in violation of the Trademark (Lanham) Act, 15 U.S.C. § 1051 et seq., use of counterfeit marks, in

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violation of the Trademark Counterfeiting Act of 1984, 15 U.S.C. § 1116(d), common law unfair competition, violation of Tennessee Consumer Protection Act, Tenn. Code Ann. § 47-18-101 et seq., and violation of the Tennessee Personal Rights Protection Act of 1984, Tenn. Code Ann. § 47-25-1101 et seq. Plaintiff also applied to the Court for a Temporary Restraining Order and Order of Seizure of Counterfeit Goods, restraining Defendants' infringement of Plaintiff's trademarks TAYLOR SWIFT, TAYLOR SWIFT (Stylized) and FEARLESS ("Plaintiff's Trademarks"), Defendants' use of counterfeits of Plaintiff's Trademarks, Defendants' use of Plaintiff's name and likeness, and Defendants' violation of Plaintiff's personal rights, and for an order of seizure of goods bearing counterfeits of Plaintiff's Trademarks. On May 19, 2009, the Court entered a Temporary Restraining Order and Order of Seizure of Counterfeit Goods (Document 12) ("Order"), enjoining and restraining Defendants from: (a) manufacturing, distributing, offering to distribute, offering for sale, or selling any merchandise and products that bear marks, words and/or names identical or confusingly similar to, or are counterfeits of, Plaintiff's Trademarks ("Counterfeit Goods"); (b) representing by any method that Counterfeit Goods are sponsored, manufactured or licensed by Plaintiff; and (c) otherwise taking any action likely to cause confusion, mistake or deception as to the origin of Counterfeit Goods. The Order also provided that "a hearing on Plaintiff's Motion for Preliminary Injunction shall be set by the District Judge to whom this case is assigned." The Order required that Plaintiff post a bond, in the amount of $10,000.00, "for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully restrained, pending the hearing and determination of the continuation of this Order." Plaintiff posted the required bond with the Court on May 19, 2009. On May 28, 2009, upon Plaintiff's Motion, the

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Court extended the Order and set the hearing on Plaintiff's Motion for Preliminary Injunction and Application for Order of Seizure of Counterfeit Goods, to be held on June 17, 2009. In support of this Motion, Plaintiff hereby incorporates by reference Plaintiff's Memorandum in Support of Ex Parte Motion for Temporary Restraining Order, Motion for Preliminary Injunction and Application for Order of Seizure of Counterfeit Goods (Document 4) and First Declaration of Frank Travato, filed with the Court in support of Plaintiff's Motion to Extend Temporary Restraining Order and Order of Seizure of Counterfeit Goods (Document 16). In further support of this Motion, and in accordance with Rule 43(c) of the Federal Rules of Civil Procedure, and as required by 15 U.S.C. § 1116(d)(10)(A), Plaintiff submits Declaration of Francisco Javier Dominguez, as Exhibit A to this Memorandum. Section 1116(d)(10)(A) of Title 15 of the United States Code requires Plaintiff to establish that "the facts supporting findings of fact and conclusions of law necessary to support [an] order [of seizure] are still in effect." Mr. Dominguez testifies that such facts are still in effect: Plaintiff continues to suffer irreparable damage from Defendants' counterfeiting activities at and near Plaintiff's 2009 Tour concert locations, and, absent this Court's continued restraining order and order of seizure of Counterfeit Goods, Plaintiff is unable to effectively combat such activities and enforce her trademark and personal rights, and will not receive adequate cooperation from the local law enforcement officers for her anti-counterfeiting enforcement efforts. WHEREFORE, Plaintiff respectfully moves this Court to issue a Preliminary Injunction and to continue the Order of Seizure of Counterfeit Goods until the time of a final hearing in this case. Plaintiff respectfully submits a proposed Preliminary Injunction and Order of Seizure of Counterfeit Goods, as Exhibit B to this Memorandum.

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Respectfully submitted, /s/ Natalya L. Rose W. Michael Milom (No. 002803) David S. Crow (No. 020699) Natalya L. Rose (No. 021701) MILOM JOYCE HORSNELL CROW PLC 3310 West End Avenue, Suite 610 Nashville, Tennessee 37203 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] [e-mail] Attorneys for Plaintiff Taylor Swift

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CERTIFICATE OF SERVICE I hereby certify that service of the foregoing Plaintiff's Supplemental Memorandum In Support of Motion for Preliminary Injunction and Application for Seizure of Counterfeit Goods is being accomplished through delivery by U.S. Certified Mail, Return Receipt Requested, this 10th day of June, 2009, upon the following: Malcolm Matthews 3234 Hunter Drive Orangeburg, South Carolina 29115 Renee Susan Mitchell 2775 NE Expressway, Apartment 53 Atlanta, Georgia Louis Moore 705 Mermaid Avenue Norfolk, Virginia Martin D. Quattlebaum 8556 Kendrick Road Jonesboro, Georgia 30126 Marsha Dyonne Tyler 103 Booker Street Baytown, Texas

/s/ Natalya L. Rose Natalya L. Rose

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