Taylor Swift v. Malcolm Matthews, et al

Filing 9

*DISREGARD ENTRY, SEE 12 FOR CORRECTED ORDER* TEMPORARY RESTRAINING ORDER AND ORDER OF SEIZURE OF COUNTERFEIT GOODS signed by Chief Judge Todd J. Campbell on 05/19/09. (ab) Modified text on 5/20/2009 (ab).

Taylor Swift v. Malcolm Matthews, et al

Doc. 9

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

TAYLOR SWIFT, Plaintiff v. MALCOLM MATTHEWS, RENEE SUSAN MITCHELL, LOUIS MOORE, MARTIN D. QUATTLEBAUM, MARSHA DYONNE TYLER, VARIOUS JOHN DOES, VARIOUS JANE DOES, and VARIOUS XYZ CORPORATIONS, Defendants Civil Action No. 3:09-0442 JURY DEMAND FILED UNDER SEAL

TEMPORARY RESTRAINING ORDER AND ORDER OF SEIZURE OF COUNTERFEIT GOODS

This matter comes before the Court upon Plaintiff Taylor Swift's Verified Complaint, Ex Parte Motion for Temporary Restraining Order, Motion for Preliminary Injunction and Application for Order of Seizure of Counterfeit Goods, Declaration of Francisco Javier Dominguez in support of the Motion, Declaration of Crom Tidwell in support of the Motion, and Attorney Certification in Support of Ex Parte Motion for Temporary Restraining Order, Motion for Preliminary Injunction and Application for Order of Seizure of Counterfeit Goods. A hearing was held before this Court on May 19, 2009. After due consideration thereof, the Court makes the following findings of fact and conclusions of law and grants Plaintiff's Motion for Temporary Restraining Order and Application for Order of Seizure of Counterfeit Goods:

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1.

Plaintiff owns and controls the trademark TAYLOR SWIFT, in word and in

stylized forms, and its registration with the United States Patent and Trademark Office and applications for such registration. Plaintiff's trademark TAYLOR SWIFT is distinctive and highly recognized by the public. 2. Plaintiff also owns and controls the trademark FEARLESS and the applications

for its registration with the United States Patent and Trademark Office. Plaintiff's trademarks TAYLOR SWIFT and FEARLESS are collectively referred to in this Order as "Plaintiff's Trademarks." A summary of Plaintiff's Trademarks, and their registrations and applications for registration with the United States Patent and Trademark Office, is set forth in Exhibit A hereto. 3. Trademarks. 4. It appears to this Court that Defendants have been, are and will be present on the Defendants are not licensed or otherwise authorized by Plaintiff to use Plaintiff's

premises or within a five-mile radius of the venues where Plaintiff will perform during her concert tour in 2009 ("Plaintiff's 2009 Tour"), including each of the venues identified in Exhibit B hereto ("Venues"), for the purpose of manufacturing, distributing, offering for sale, and selling merchandise and products that bear marks, words and/or names identical or confusingly similar to, or are counterfeits of, Plaintiff's Trademarks, without authorization from Plaintiff ("Counterfeit Goods"). 5. Counterfeit Goods include goods bearing "counterfeit marks" within the meaning

of the Trademark Counterfeiting Act of 1984, 15 U.S.C. § 1116(d). 6. Defendants' distribution, offering for sale, and sale of Counterfeit Goods would

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

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infringement under 15 U.S.C. § 1114(1) and false designation of origin under 15 U.S.C. § 1125(a). 7. Under 15 U.S.C. § 1116(d), this Court has the power to grant an ex parte seizure

order for goods bearing counterfeits of federally registered trademarks. 8. Under 15 U.S.C. § 1116(a), this Court has the power to enjoin violations of

15 U.S.C. §§ 1114(1) and 1125(a). 9. This Court has the power under Rule 65 of the Federal Rules of Civil Procedure,

and under the All Writs Act, 28 U.S.C. § 1651, to grant an ex parte seizure order for goods that are infringing but not counterfeits within the meaning of 15 U.S.C. § 1116(d). 10. No order other than an ex parte seizure order would adequately achieve the

objectives of the Trademark (Lanham) Act, 15 U.S.C. §§ 1114, 1116 and 1125(a). 11. Plaintiff is likely to succeed in showing that Defendants have used and, unless

enjoined, will continue to use counterfeit or infringing marks in connection with the sale, offering for sale and/or distribution of Counterfeit Goods. 12. Notice of this Motion need not be given to Defendants prior to ex parte hearing

because: (a) the identities and whereabouts of certain Defendants are currently unknown; (b) many Defendants have no business identity or stable place of business before or after Plaintiff's concert performances and cannot be identified; and (c) Defendants who can be located and identified, if notified, likely will cause the immediate concealment or destruction of Counterfeit Goods or removal of Counterfeit Goods outside the access of this Court. 13. Plaintiff will suffer immediate and irreparable injury and will have no adequate

remedy at law if this Court declines to grant an ex parte restraining and seizure order.

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14.

Counterfeit Goods and other materials subject to this Order likely will be located

on the premises or within a five-mile radius of the venues for the concerts during Plaintiff's 2009 Tour. 15. Should this Court not grant the requested relief, the harm to Plaintiff clearly

outweighs any harm that Defendants may suffer if the relief is granted. 16. 17. Plaintiff has not publicized the requested seizure. Plaintiff has given reasonable notice of this Motion and Plaintiff's Complaint to

the United States Attorney for this District. 18. 19. The file of this case has been sealed as required by 15 U.S.C. § 1116(d)(8). Plaintiff has complied with all statutory requirements for the issuance of an ex

parte seizure order. It is accordingly ORDERED and ADJUDGED that: 1. Defendants, along with their partners, associates, agents, servants, employees,

representatives, and 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, temporarily ENJOINED and RESTRAINED from: a. manufacturing, distributing, offering to distribute, offering for sale, or selling any Counterfeit Goods (merchandise and products that bear marks, words and/or names identical or confusingly similar to, or are counterfeits of, Plaintiff's Trademarks set forth on Exhibit A to this Order); b. representing by any method that Counterfeit Goods are sponsored, manufactured, sold or licensed by Plaintiff; and

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c. otherwise taking any action likely to cause confusion, mistake or deception as to the origin of Counterfeit Goods. 2. Any federal, state, or local law enforcement officer ("Enforcement Official") may

seize and maintain in their custody and control any and all Counterfeit Goods and counterfeit marks, and the means of making them, and records documenting the manufacture, sale or receipt of things relating thereto, in the possession, dominion or control of Defendants, their agents or persons acting in concert or participation with them, including all such Counterfeit Goods and counterfeit marks located in or on any containers, vessels, storage areas or motor vehicles. Enforcement officials in accomplishing any seizure pursuant to this Order shall comply with all applicable laws. 3. Enforcement Officials are authorized to carry out the foregoing on the premises or

within a five-mile radius of any venue where Plaintiff will perform live concert events that will be occurring at any time during the duration of this Order, from twenty-four hours before each concert begins and until twenty-four hours following the completion of each concert. 4. All Counterfeit Goods, all means of making such Counterfeit Goods, all records,

and any other materials seized hereunder shall be delivered up to the custody of the Court in accordance with 15 USC Section 1116(d)(7). The seized goods shall be kept in identifiable containers and stored at Plaintiff's expense. 5. Simultaneously with seizure hereunder, or as soon thereafter as is practical under

the circumstances, each named Defendant shall be served with a copy of (i) this Order and (ii) a Summons and the Verified Complaint in this action.

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6.

This Order is being issued without notice to protect Plaintiff from irreparable

injury to her trademarks, name and goodwill that may arise if Defendants should dissipate or transfer to any third party any of the goods that are the subject of this Order. 7. Defendants shall cooperate with Enforcement Officials executing seizure

hereunder and shall provide items sought to be seized wherever such items are located. 8. Persons who have had goods seized pursuant to this Order are hereby required to

provide the persons executing this Order with correct names, residential and business addresses, telephone numbers, and other identifying information. 9. Plaintiff shall post security, in the form of a cash bond or corporate surety bond or

other form approved by the Court, 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. 10. Unless extended by the Court, the temporary restraining order shall become valid

upon the posting of bond and shall expire ten (10) business days after the issuance of this Order. 11. IT IS FURTHER ORDERED that a hearing on Plaintiff's Motion for Preliminary

Injunction shall be set by the District Judge to whom this case is assigned.

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12.

This Order or copies hereof may be served by any person over the age of 18 years

who is not a party to this action. 13. All persons who become aware of this action and Order are ORDERED not to

reveal the existence of this action or Order to any other person, except that persons authorized to enforce this Order may reveal its existence and contents to the extent necessary to carry out their official duties and Defendants may confer with their attorneys concerning this action.

Entered this 19th day of May, 2009, at 4:00 p.m. ___________________________________ UNITED STATES DISTRICT JUDGE

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