Burberry Limited v. Various John Does

CourtDistrict Court, E.D. New York
DecidedSeptember 13, 2024
Docket1:24-cv-06372
StatusUnknown

This text of Burberry Limited v. Various John Does (Burberry Limited v. Various John Does) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Burberry Limited v. Various John Does, (E.D.N.Y. 2024).

Opinion

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK ----------------------------------------------------------------X Burberry Limited, Balenciaga SAS, Gianni Versace, S.r.l., Hermès International, Louis Vuitton Malletier, Michael Kors, L.L.C., and Yves Saint Laurent SAS, ORDER 24-CV-06372 (DG) (TAM) Plaintiffs,

-against-

Various John Does, Jane Does, and XYZ Companies,

Defendants. ----------------------------------------------------------------X DIANE GUJARATI, United States District Judge: On September 11, 2024, Plaintiffs Burberry Limited, Balenciaga SAS, Gianni Versace, S.r.l., Hermès International, Louis Vuitton Malletier, Michael Kors, L.L.C., and Yves Saint Laurent SAS (collectively, “Plaintiffs”) commenced this action against various John Does, Jane Does, and XYZ Companies (collectively, “Defendants”), alleging trademark counterfeiting in violation of 15 U.S.C. § 1114; trademark infringement in violation of 15 U.S.C. § 1114; false designations of origin, false descriptions and representations in violation of 15 U.S.C. § 1125(a); federal trademark dilution in violation of 15 U.S.C. § 1125(c); injury to business reputation and dilution in violation of New York General Business Law § 360-1; common law trademark infringement; and misappropriation and unfair competition under New York common law. See generally Complaint, ECF No. 1. Also on September 11, 2024, Plaintiffs filed ex parte a Motion for Temporary Restraining Order, Seizure Order, Substitute Custodian Order, Expedited Discovery Order, and Order to Show Cause Bringing on Motion for Preliminary Injunction (the “Motion”), ECF No. 3, together with supporting documents, including Plaintiffs’ Memorandum of Law (“Pls.’ Br.”), ECF No. 3-1, an Affidavit of Raymond Dowd, ECF No. 20, and Declarations of Robertson D. Beckerlegge, ECF No. 4;1 Jennifer Halter, ECF No. 5; Laura Felstead, ECF Nos. 6, 21; Jean- Claude Masson, ECF No. 7; Eric Lacoma, ECF No. 8; Aude De Margerie, ECF No. 9; and Valerie Budd, ECF No. 19.2

Plaintiffs request that the Court issue an order directing, inter alia, that pending the hearing and determination of Plaintiffs’ motion for preliminary injunction, Defendants, their agents, servants, employees, officers, and all other persons in active concert or participation with them be, without prior written or oral notice, temporarily restrained and enjoined from in any manner, either directly or indirectly, committing any of the following acts: 1. Using Plaintiffs’ federally registered trademarks, including but not limited to those trademark registrations listed in the Appendix to this Order3 (“Plaintiffs’ Federally Registered Trademarks”); 2. Possessing, receiving, manufacturing, distributing, advertising, promoting, returning, offering for sale or otherwise disposing of in any manner, holding for

sale or selling any goods including, but not limited to, clothing, labels, tags, handbags, logos, decals, emblems, signs, and other forms of markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price

1 Together with the Declaration of Robertson D. Beckerlegge, Plaintiffs submitted various exhibits. See ECF No. 4-1.

2 Also on September 11, 2024, Plaintiffs filed, inter alia, a Notice of Plaintiffs’ Ex Parte Motion to File Action Under Seal, ECF No. 2; a Declaration of Robertson D. Beckerlegge in Support of Motion to File Action Under Seal, ECF No. 2-1; and a Proposed Order Sealing the File, ECF No. 2-2. Each of Plaintiffs’ submissions to date has been filed ex parte and under seal. By Order dated September 12, 2024, Magistrate Judge Taryn A. Merkl granted Plaintiffs’ motion at ECF No. 2.

3 The Appendix to this Order is a copy of Exhibit A to the Complaint. See ECF No. 1-3. lists, promotional materials and the like bearing a copy or colorable imitation of Plaintiffs’ Federally Registered Trademarks; 3. Using any logo, trade name, or trademark which may be calculated to falsely represent or which has the effect of falsely representing that the services or

products of Defendants are sponsored by, authorized by, or in any way associated with Plaintiffs; 4. Infringing Plaintiffs’ Federally Registered Trademarks; 5. Otherwise unfairly competing with Plaintiffs; 6. Falsely representing themselves as being connected with Plaintiffs or sponsored by or associated with Plaintiffs; 7. Using any reproduction, counterfeit, copy, or colorable imitation of Plaintiffs’ Federally Registered Trademarks in connection with the publicity, promotion, sale, or advertising of goods sold by Defendants including, but not limited to, clothing, labels, tags, handbags, logos, decals, emblems, signs, and other forms of

markings, any packaging, wrappers, pouches, containers and receptacles, and any catalogs, price lists, promotional materials and the like bearing a copy or colorable imitation of Plaintiffs’ Federally Registered Trademarks; 8. Affixing, applying, annexing, or using in connection with the sale of any goods, a false description or representation, including words or other symbols tending to falsely describe or represent such goods as being those of Plaintiffs and from offering such goods in commerce; 9. Using any trademark or trade name in connection with the sale of any goods which may be calculated to falsely represent such goods as being connected with, approved by or sponsored by Plaintiffs; and 10. Destroying, altering, disposing of, concealing, tampering with or in any manner secreting any and all business records, invoices, correspondence, books of account, receipts or other documentation relating or referring in any manner to the

manufacture, advertising, receiving, acquisition, importation, purchase, sale or offer for sale, or distribution of any merchandise bearing Plaintiffs’ Federally Registered Trademarks. See ECF No. 3 at 1-3. The Motion also seeks a variety of other forms of relief, including orders relating to seizure, substitution of custodian, and expedited discovery. See generally ECF No. 3. For the reasons set forth below, the Motion, ECF No. 3, is GRANTED. Temporary Restraining Order “A party seeking a preliminary injunction must demonstrate: (1) ‘a likelihood of success on the merits or . . . sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the plaintiff’s favor’; (2) a

likelihood of ‘irreparable injury in the absence of an injunction’; (3) that ‘the balance of hardships tips in the plaintiff’s favor’; and (4) that the ‘public interest would not be disserved’ by the issuance of an injunction.” Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887, 895 (2d Cir. 2015) (alteration in original) (quoting Salinger v. Colting, 607 F.3d 68, 79-80 (2d Cir. 2010)). The party seeking injunctive relief “need only show a likelihood of success on the merits of at least one of [its] claims.” Home It, Inc. v. Wen, No. 19-CV-07070, 2020 WL 353098, at *5 (E.D.N.Y. Jan. 21, 2020) (quotation omitted). In this Circuit, “the standard for an entry of a [temporary restraining order] is the same as for a preliminary injunction.” See Andino v. Fischer, 555 F. Supp. 2d 418, 419 (S.D.N.Y. 2008) (citations omitted).

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Salinger v. Colting
607 F.3d 68 (Second Circuit, 2010)
United States Polo Ass'n v. PRL USA Holdings, Inc.
511 F. App'x 81 (Second Circuit, 2013)
Andino v. Fischer
555 F. Supp. 2d 418 (S.D. New York, 2008)
United States Polo Ass'n v. PRL USA Holdings, Inc.
800 F. Supp. 2d 515 (S.D. New York, 2011)
Benihana, Inc. v. Benihana of Tokyo, LLC
784 F.3d 887 (Second Circuit, 2015)
Juicy Couture, Inc. v. Bella International Ltd.
930 F. Supp. 2d 489 (S.D. New York, 2013)

Cite This Page — Counsel Stack

Bluebook (online)
Burberry Limited v. Various John Does, Counsel Stack Legal Research, https://law.counselstack.com/opinion/burberry-limited-v-various-john-does-nyed-2024.