IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 14-30489

Summary Calendar

WORLD WRESTLING ENTERTAINMENT, INCORPORATED,

Plaintiff - Appellant

v.

UNIDENTIFIED PARTIES,

Defendant - Appellee

Appeal from the United States District Court

for the Eastern District of Louisiana

USDC No. 2:14-CV-688 

Before HIGGINBOTHAM, JONES, and HIGGINSON, Circuit Judges.

PER CURIAM:

World Wrestling Entertainment, Inc. (“WWE”), seeks ex parte seizure 

and temporary restraining orders against unnamed Defendants under the ex 

parte seizure provision of the Trademark Counterfeiting Act (the “Act”).1 The 

district court denied relief and certified its order for interlocutory appeal 

pursuant to 28 U.S.C. § 1292(b). We allowed appeal and now VACATE the 

order of the district court and REMAND for further proceedings consistent 

with this opinion.

1 15 U.S.C. § 1116.

United States Court of Appeals

Fifth Circuit

FILED

November 4, 2014

Lyle W. Cayce

Clerk

 

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I.

WWE presented evidence establishing that it owns many valuable 

trademarks and earns significant revenues from the sale of merchandise 

bearing those marks at live WWE events across the country. The evidence 

further established that WWE can readily identify the unauthorized designs 

of counterfeit merchandise and that WWE makes its own merchandise sales 

directly—it does not license third parties to sell merchandise at live events. 

WWE alleges that Defendants work as “fly-by-night” counterfeiters, setting up 

shop near WWE events and cannibalizing WWE’s merchandise sales by 

purveying unauthorized products. As the district court acknowledged, WWE 

faces a real threat from such counterfeiters who, upon detection and notice of 

suit, disappear without a trace and hide or destroy evidence, only to reappear 

later at the next WWE event down the road. This is the very nature of the “flyby-night” bootlegging industry.

WWE brought suit in the district court seeking ex parte seizure and 

temporary restraining orders under the ex parte seizure provision of the Act.2

The district court denied relief, concluding that WWE had not proved “specific 

facts” about the identities of “person[s] against whom seizure would be 

ordered.”3 Without knowing the identities of persons against whom seizure 

2 Id. at § 1116(d).

3 Section 1116(d)(4) provides:

The court shall not grant [a seizure application] unless . . . the court finds that 

it clearly appears from specific facts that—

(i) an order other than an ex parte seizure order is not adequate to achieve the 

purposes of section 1114 of this title;

(ii) the applicant has not publicized the requested seizure;

(iii) the applicant is likely to succeed in showing that the person against whom 

seizure would be ordered used a counterfeit mark in connection with the sale, 

offering for sale, or distribution of goods or services;

(iv) an immediate and irreparable injury will occur if such seizure is not 

ordered;

(v) the matter to be seized will be located at the place identified in the 

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would be ordered, the district court thought it was unable to evaluate WWE’s 

likelihood of success in showing such persons had used a counterfeit mark, 

whether the harm to WWE outweighed the harm to such persons, or whether 

such persons would destroy or make inaccessible the infringing goods upon 

notice. The district court applied similar reasoning in denying WWE’s request 

for a temporary restraining order.

II.

The district court’s granular focus on the “identity” of unnamed 

Defendants misinterpreted the statutory requirement and its application here. 

The district court is correct that ex parte seizure orders should not be granted 

at will, and it commendably gave the requirements careful attention. It is the 

case that the Act constrains the issuance of such orders with certain procedural 

protections for the persons against whom they are issued. The district court

concluded that it could not, ex ante, identify the persons against whom orders 

would issue as required by section 1116(d), an appropriate concern but one not 

present on the specific facts here.

The district court’s concern overlooks a predicate established in this case: 

WWE does not license third parties to sell merchandise at live events. Rather, 

it makes its own merchandise sales directly. The resulting confined universe 

of authorized sellers of WWE merchandise necessarily “identifies” any nonWWE seller as a counterfeiter. WWE cannot know in advance the specific 

identities of counterfeiters who will present themselves at any given event, but 

application;

(vi) the harm to the applicant of denying the application outweighs the harm 

to the legitimate interests of the person against whom seizure would be ordered 

of granting the application; and

(vii) the person against whom seizure would be ordered, or persons acting in 

concert with such person, would destroy . . . or otherwise make such matter 

inaccessible to the court, if the applicant were to proceed on notice to such 

person.

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it does know that any non-affiliated seller at or near an event is almost 

certainly a counterfeiter.4 In this case, therefore, the “person[s] against whom 

seizure would be ordered” are readily identifiable as any non-affiliated person 

purporting to sell WWE merchandise at or near a live WWE event. Provided 

that observation of unauthorized sales themselves is sufficient to identify a 

counterfeiter, as in this case, we see no reason why the district court cannot 

evaluate the requirements for ex parte seizure and temporary restraining 

orders to issue. We conclude from the record that WWE has met its burden 

under section 1116(d), and that the orders sought here should issue.

III.

As a final matter, the district court understandably expressed concern 

about a provision of the proposed order purporting to deputize private 

citizens—namely, WWE’s “Enforcement Officials”—to undertake work more 

properly the province of law enforcement officers, but it did not reach the issue.

On its face, the Act does not appear to authorize private citizens to carry out 

ex parte seizure orders.5 Indeed, the Act’s sponsors appear to suggest that a 

court granting such an order might “permit a representative of the applicant, 

such as its counsel, to accompany the U.S. Marshal [or other law enforcement 

officer] to assist” in determining what materials should be seized.6 We do not 

4 One may ask about a person who legally purchased merchandise bearing a valid 

trademark and subsequently ventured into the area surrounding a WWE event to resell that 

merchandise. The ex parte seizure order sought here would not authorize seizure of such 

merchandise, presenting a risk that the party enforcing the order might mistakenly identify 

the reseller as a counterfeiter. But, as presented, WWE can readily identify the unauthorized 

designs of counterfeit merchandise, and the Act’s wrongful seizure provisions would entitle 

the harmed reseller to a cause of action for any damages. See 15 U.S.C. § 1116(d)(11). 

5 See id. at § 1116(d)(9) (“The court shall order that service of a copy of the order . . . 

shall be made by a Federal law enforcement officer . . . [or] a State or local law enforcement 

officer.”).

6 Joint Congressional Statement on Trademark Counterfeiting Legislation, 130 Cong. 

Rec. H12076, H12082 (1984), reprinted in 7 McCarthy on Trademarks, App’x A8 (4th ed. 

1994).

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address the validity of this provision of the proposed order, leaving it to the 

district court to address in the first instance. The district court is free to modify 

the proposed order or to draft its own order as it sees fit, consistent with the ex 

parte seizure provision of the Act and with this opinion.

Accordingly, the order of the district court is VACATED, and this case 

REMANDED for further proceedings consistent with this opinion.

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