United States District Court, E.D. California
BRAVADO INTERNATIONAL GROUP MERCHANDISING SERVICES, INC., Plaintiff,
JOHN DOES 1-100, et al., Defendants.
Ex Parte Application for Temporary Restraining Order (TRO),
Seizure Order, and Order to Show Cause Why a Preliminary
Injunction and Seizure Order should not Issue are before the
court. ECF No. 3. The court has issued a TRO restraining
bootleggers from selling merchandise bearing marks that
infringe registered trademarks owned by the performing artist
Shawn Mendes, which marks Mendes has licensed exclusively to
plaintiff; in issuing the TRO, the court has GRANTED
plaintiff's request in part. See ECF No. 9. In
so doing, the court finds that plaintiff initially has raised
serious questions going to the merits of its claims and a
strong likelihood of irreparable injury to plaintiff, such
that the balance of hardships tips sharply in plaintiff's
favor. See Winter v. Natural Res. Def. Council,
Inc., 555 U.S. 7, 20 (2008) (articulating analysis for
preliminary injunctions); Stuhlbarg Int'l. Sales Co.
v. John D. Brush & Co., 240 F.3d 832, 839
n.7 (9th Cir. 2001) (stating that the analysis for temporary
restraining orders and preliminary injunctions is
motion raises two substantive issues that merit brief
discussion at this juncture, laying the foundation for more
complete consideration at hearing on the requested
preliminary injunction. The motion raises other issues as
well but given the extremely short time between
plaintiff's filing of its application and the date by
which it requested the TRO,  the court does not review those
other issues here.
as expressed during the telephonic status the court held with
plaintiff's counsel, the court has concerns based on
plaintiff's naming only Doe defendants, primarily because
the practice raises questions regarding whether the threshold
requirement that a case and controversy exist is met for the
case to proceed. See Live Nation Merch., Inc. v.
Does, 2015 WL 12672733, at *1-2. The practice of
identifying defendants as Does is generally disfavored in
federal court. See Gillespie v. Civiletti, 629 F.2d
637, 642 (9th Cir. 1980) (“As a general rule, the use
of ‘John Doe' to identify a defendant is not
favored.” (citation omitted)). Here, where the Does are
intended to identify a broad group of those who are not
licensed to make commercial use of Mendes's marks, with
only a few actual past bootleggers identified by photographs
alone, the concerns raised by the naming of Doe defendants
are heightened, in this court's view. See Plant v.
Doe, 19 F.Supp.2d 1316, 1320 (S.D. Fla. 1998)
(“The use of a fictitious name is not generally
permitted as a tool by which a private plaintiff may obtain a
broad-based order preventing any and all members of society
from engaging in future behavior that might or might not
later be found to have violated the plaintiff's
rights.” (citations omitted)).
given the transitory nature of the bootlegging here, which
takes the form of sales in parking lots and on sidewalks near
a concert venue, the court recognizes the difficulty of
identifying the bootleggers by name before a concert
commences. The court finds plaintiff has made a sufficiently
diligent, albeit unsuccessful, effort to identify the
bootleggers for the purposes of a temporary restraining
order. See Decl. of Emily Holt, ECF No. 5,
¶¶ 10, 12. In contrast to the plaintiff in
Plant v. Doe, plaintiff here at least
“attempted to ascertain the identity of [the
defendants]” and made a “preliminary factual
investigation before bringing suit in this federal Court,
” 19 F.Supp.2d at 1320 (citations omitted).
See Decl. of Emily Holt ¶¶ 10, 12;
id., Ex. C (photographs of allegedly counterfeit
merchandise purchased from Doe defendants); Ex. D
(photographs of alleged bootleggers selling merchandise).
the court currently is persuaded by the Fifth Circuit's
reasoning in World Wrestling Entm't, Inc. v.
Unidentified Parties, 770 F.3d 1143, 1145 (5th Cir.
2014). There, the court held the fact plaintiff had named
only Doe defendants did not preclude issuance of the
requested injunction, because plaintiff established it had an
exclusive license to sell the merchandise in question.
Id. Therefore, “the person[s] against whom
seizure would be ordered are readily identifiable as any
non-affiliated person purporting to sell [plaintiff's]
merchandise at or near” plaintiff's event.
Id. Such is the case here, where plaintiff has
shown, through the sworn declaration of Emily Holt, that
plaintiff has “obtained the exclusive right to
distribute authorized Tour Merchandise.” See
Decl. of Emily Holt ¶ 2. Accordingly, the fact that
defendants cannot be named until they are identified and
served does not prevent the court from granting the requested
temporary injunctive relief.
plaintiff's proposed order authorizes seizure of
counterfeit merchandise by both on duty law enforcement
officers and “off duty officers . . . and any person
acting under their supervision.” Proposed Order, ECF
No. 3-1, at 4. The power to issue injunctions and seizure
orders to enforce federal trademark law derives from 15
U.S.C. § 1116, which provides in pertinent part that
service and enforcement of a seizure order “shall be
made by a Federal law enforcement officer (such as a United
States marshal or an officer or agent of the United States
Customs Service, Secret Service, Federal Bureau of
Investigation, or Post Office) or may be made by a State or
local law enforcement officer.” 15 U.S.C. §
1116(d)(9). In World Wrestling Entm't, Inc. v.
Does, No. 15-CV-01263-VC, 2015 WL 9690312 (N.D. Cal.
Mar. 24, 2015), a fellow district judge reasoned that this
statutory provision should be read narrowly, and not to
include anyone other than on duty law enforcement officials.
Id. at *1-2; see also World Wrestling Entm t,
Inc. v. Unidentified Parties, 770 F.3d at 1145. The
judge rejected the same language proposed here, reasoning
that, “if a person is not acting in his capacity as an
actual police officer, it seems unlikely he could be deemed a
‘local law enforcement officer' within the meaning
of section 1116(d)(9).” World Wrestling Entm
t, 2015 WL 9690312, at *2. The court is persuaded by
this reasoning, after considering the other district court
decision pointed to by plaintiffs counsel. See
Order, Bravado Int'l Grp. Merch. Servs., Inc. v.
Does, No. 16-cv-00524-JSW (N.D. Cal. Feb. 3, 2016)
(accepting plaintiffs argument after supplemental briefing,
without engaging in statutory analysis). This court thus has
adopted the same modified language incorporated into the
injunction issued by the judge in the Northern District
World Wrestling Entm't case. 2015 WL 9690312, at
*2 (“Any on-duty federal, state or local law
enforcement officer is hereby authorized to seize and
maintain in their custody and control any and all Enjoined
Goods and counterfeit marks. . . .”).
shall be prepared to address in more depth the above issues,
as well as all other issues raised by the request for a
preliminary injunction at the hearing set for July 25, 2019.
 In a situation like this one, where
plaintiff's client's tour has been scheduled for some
time, it appears the more prudent practice would be to file a
request for a temporary restraining order in the district
hosting a later stop on the tour, as here, further in
advance. Then, plaintiff could serve the bootleggers/Doe
defendants who appear at the first and second concert venues
with notice of the temporary restraining order request. This
might at least ameliorate some of this court's and other
district courts' concerns regarding jurisdiction, notice
and the practice of naming Doe defendants. See Live
Nation Merch., Inc. v. Does, No. CV 15-3762-GHK (EX),
2015 WL 12672733, at *1-2 (C.D. Cal. May 21, 2015);