American Bridal & Prom Industry Ass'n v. The Partnerships & Unincorporated Associations Identified on Schedule A

192 F. Supp. 3d 924, 2016 WL 3539130, 2016 U.S. Dist. LEXIS 85197
CourtDistrict Court, N.D. Illinois
DecidedJune 29, 2016
DocketCase No. 16 C 0023
StatusPublished
Cited by6 cases

This text of 192 F. Supp. 3d 924 (American Bridal & Prom Industry Ass'n v. The Partnerships & Unincorporated Associations Identified on Schedule A) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
American Bridal & Prom Industry Ass'n v. The Partnerships & Unincorporated Associations Identified on Schedule A, 192 F. Supp. 3d 924, 2016 WL 3539130, 2016 U.S. Dist. LEXIS 85197 (N.D. Ill. 2016).

Opinion

MEMORANDUM OPINION AND ORDER

John Robert Blakey, United States District Judge

Trademark suits against foreign defendants based upon exclusively online sales of allegedly counterfeit products are becoming increasingly common in this district, Courts here (including this Court) regularly enter injunctions and freeze the assets of counterfeiters who reside and operate exclusively in China and never set foot in Illinois. This case serves as a reminder that not every foreign counterfeiter may be sued here and that the well-established limits to' our jurisdictional reach apply with equal force in this digital economy. j

Background and Procedural History

On January 4, 2016, Plaintiffs American Bridal & Prom Industry Association, Inc.; Allure Bridals, Inc.; Alyce Designs, Inc.; Jovani Fashion, Ltd.; La Femme Boutique, Inc.; Mon Cheri Bridals, LLC; Mori Lee, LLC; Next Century Productions, Inc. d.b.a. “Sydney’s Closet”; and Promgirl, LLC, filed suit in this district against a group of individuals and unincorporated business associations, as well as 100 John Does, who, upon information and belief, reside in foreign jurisdictions. Complaint [1], ¶¶1-10. According to the complaint, each defendant “targets the United States, including Illinois, and has offered to sell and, on information and belief, has sold and continues to sell counterfeit products that violate Plaintiffs’ intellectual property rights ... to consumers within the United States, including the State of Illinois and this Judicial District.” Id., ¶11. Plaintiffs attached to the complaint various trademark registrations .covering Plaintiffs’ business and brand names and a certificate of registration for the photos of Mon Cheri Bridals’ Fall 2014 Collection. Complaint, Exhibits 1 [1-1], 2 [1-2]. Plaintiffs alleged that the defendants, by using these photos and trademarks, violated the Lanham Act, the Copyright Act and the Illinois Uniform Deceptive Trade Practices Act. Complaint [1], ¶¶45-78.

The initial complaint did not list or otherwise name the defendants, but identified them as “The Partnerships and Unincorporated Associations Identified on Schedule ‘A’ and John Does 1-100.” Complaint [1], p. 1. Schedule A was purportedly filed under seal. When a document is filed under seal, the Court maintains access to it; it is simply kept from public view. Here, however, [927]*927Plaintiffs never filed a motion to seal and did not otherwise follow the proper sealing and docketing procedures. As a result, what appeared on the Court’s docket was simply a sheet saying “Schedule ‘A’ [Contents Filed Under Seal].” [1-3]. The Court had no way of knowing at that time how many entities and organizations Plaintiffs had sued.

Plaintiffs immediately filed an amended complaint [6], purportedly under >seal. Plaintiffs again failed to file a motion or otherwise follow the proper procedures, and, as a result,, what appeared on the docket was not an amended complaint, but simply a blank caption, with “[CONTENTS FILED UNDER SEAL]” on it. See [6]. The “sealed” content was not made available to the Court.

Also on January 4, 2016, Plaintiffs filed; (1) an ex parte motion for entry of a temporary restraining order (“TRO”), which sought an order to temporarily transfer the infringing websites, a temporary asset restraint, expedited discovery and permission to effect service of process by email and electronic publication [7]; (2) a 58-page memorandum in support of the ex parte TRO motion [10]; (3) a motion for leave to file the oversized memorandum [8]; (4) a motion for leave to temporarily seal documents [9]; (5) a declaration from Plaintiffs’ counsel justifying the ex parte nature of the action [11]; (6) a declaration from Stephen Lang, the President of American Bridal & Prom Industry Association, Inc. and CEO of Mon Cheri Bridals, describing Plaintiffs’ ' trademarks and brands and detailing the alleged counterfeiting [12]; and (7) a declaration from Suren Ter Saakov, the CEO and founder of Counterfeit,Technology, a company that uses customized web crawler software programs to assist in detecting online counterfeiting [13],

On January 5, 2016, the Court granted Plaintiffs’ motion to seal, granted the motion for leave to file the oversized brief and set the TRO motion for hearing on January 13, 2016. Prior to the hearing, Plaintiffs filed another amended complaint on January 8, 2016 [18]. This amended complaint, unlike the prior complaints,- actually listed the defendants; and it did so in both the caption—which ran almost 32 pages— and the body of the eomplaint, with the introductory paragraph taking up another 24 pages. Amended Complaint [18], pp. 1-56. The allegations were otherwise substantively identical to the allegations in the original complaint.

According to both versions of the complaint (the unsealed amended complaint [18] is the operative complaint), Plaintiffs American Bridal & Prom Industry Association, Inc., Allure Bridals, Inc., Alyce Designs, Inc., Jovani Fashion, Ltd., La Fem-me Boutique, Inc., Mon Cheri Bridals, LLC, Mori Lee, LLC, Next Century Productions, Inc., d/b/a “Sydney’s Closet,” and Promgirl, LLC (collectively, “Plaintiffs”), are respectively a not-for-profit trade association and businesses that manufacture and distribute high quality bridal gowns and formalwear. Amended Complaint [18], ¶¶1, 19. Plaintiffs are , the owners of all right, title and interest in and to 35 federally-registered trademarks and service marks. Id., ¶¶19-20. They distribute their products through a worldwide network, of distributors and retailers, as well as Internet web stores owned and operated by Plaintiffs. Id., ¶24.

With regard to jurisdiction, the amended complaint alleged that: Plaintiff American Bridal & Prom Industry is a New Jersey not-for-profit corporation with its principal place of business in New Jersey; Plaintiff Allure Bridals, Inc. is a Tennessee corporation with its principal place of business in Tennessee; Plaintiff Alyce Designs, Inc. is an Illinois corporation with its principal place of business in Illinois; Plaintiff Jova-[928]*928ni Fashion, Ltd. is a New York corporation with its principal place of business in' New York; Plaintiff La Femme Boutique, Inc. is a California corporation with its principal place of business in California; Plaintiff Mon Cheri Bridals, LLC is a New Jersey limited liability company with its principal place of business in .New Jersey; Plaintiff Mori Lee, LLC is a limited liability company with its principal place of business in Florida; Plaintiff Next Century Productions, Inc. d/b/a “Sydney’s Closet” is a Missouri corporation with its principal place of business in Missouri; and Plaintiff Promgirl, LLC is a Delaware limited liability company with its principal place of business in Delaware. Amended Complaint [18], ¶¶1-9. Defendants are “all individuals and unincorporated business associations who, upon information and belief, reside in foreign jurisdictions.” Id., ¶10.

Plaintiffs alleged subject matter jurisdiction based on both federal question and diversity of citizenship. Amended Complaint [18], ¶15. They alleged that the Court “has personal jurisdiction over Defendants because they transact business in the State of Illinois and within this Judicial District.” Id., ¶17.

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Bluebook (online)
192 F. Supp. 3d 924, 2016 WL 3539130, 2016 U.S. Dist. LEXIS 85197, Counsel Stack Legal Research, https://law.counselstack.com/opinion/american-bridal-prom-industry-assn-v-the-partnerships-unincorporated-ilnd-2016.