cause no. 2017-04658 nfl properties llc, …...2017/01/30 · envelope no. 14902156 16088001_4 -1-...
TRANSCRIPT
16088001_4 -1-
CAUSE NO. 2017-04658 NFL PROPERTIES LLC, ATLANTA FALCONS FOOTBALL CLUB, LLC, and NEW ENGLAND PATRIOTS LLC, Plaintiffs, v. DOES 1 THROUGH 100, INCLUSIVE,
Defendants.
§ § § § § § § § § § § §
IN THE DISTRICT COURT OF
HARRIS COUNTY, TEXAS 234TH JUDICIAL DISTRICT
PLAINTIFFS’ VERIFIED APPLICATION FOR EX PARTE TEMPORARY RESTRAINING ORDER, TEMPORARY INJUNCTION,
ORDER OF SEIZURE, WRIT OF SEQUESTRATION, AND EXPEDITED DISCOVERY
TO THE HONORABLE JUDGE OF SAID COURT:
Pursuant to the Texas Rules of Civil Procedure 680, et seq. and 696, et seq., the Texas
Civil Practice and Remedies Code §§ 62.001, et seq., the Texas Trademark Act (TEX. BUS. &
COM. CODE §§ 16.001, et seq.), Texas trademark common law, and the equitable powers of this
Court, NFL Properties LLC (“NFLP”), Atlanta Falcons Football Club, LLC (the “Atlanta
Falcons”), and New England Patriots LLC (the “New England Patriots”) (collectively,
“Plaintiffs”) hereby file this Verified Application for Ex Parte Temporary Restraining Order,
Temporary Injunction, Order of Seizure, Writ of Sequestration, and Expedited Discovery (the
“Application”).
Plaintiffs’ Verified Original Petition and the affidavits filed concurrently herewith
demonstrate that Plaintiffs have no adequate remedy at law and stand in danger of irreparable
injury in the form of, inter alia, injury to reputation caused by sales of unauthorized merchandise
(“Counterfeit Merchandise”) and unlicensed, unredeemable tickets (“Counterfeit Tickets”)
bearing Plaintiffs’ trademarks, infringement and misappropriation or conversion of their
1/24/2017 10:54:17 AMChris Daniel - District Clerk Harris County
Envelope No. 14902156By: bradley darnell
Filed: 1/24/2017 10:54:17 AM
APPLICATION -2-
trademarks, dilution by blurring and by tarnishment of the uniqueness and uniformity of their
trademarks, and reduced sales of licensed merchandise and tickets at the time of the Super Bowl
LI game in Harris County, Texas, unless this Court enjoins Defendants’ manufacturing and sale
of Counterfeit Merchandise and Counterfeit Tickets and authorizes the seizure of the Counterfeit
Merchandise and Counterfeit Tickets.
Plaintiffs’ Verified Original Petition, Memorandum in Support of Application for Ex
Parte Temporary Restraining Order, Temporary Injunction, Order of Seizure, Writ of
Sequestration, and Expedited Discovery, and the accompanying affidavits demonstrate that
Plaintiffs have a substantial likelihood of success on the merits of their claims.
The public interest also supports the issuance of a Temporary Restraining Order, an
Order of Seizure, and a Writ of Sequestration. Plaintiff NFLP is a wholly-owned subsidiary of
NFL Ventures, L.P., which is a limited partnership organized and existing under the law of the
State of Delaware. NFLP owns all of the NFL’s trademarks, names, logos, symbols, slogans,
designs, and other identifying marks and indicia (both registered and unregistered) and is
responsible for licensing and protecting the same. Additionally, Plaintiff NFLP is the authorized
representative of the NFL’s 32 member clubs (the “Member Clubs”) with respect to the licensing
and protection of their trademarks, names, logos, symbols, slogans, designs, and other
identifying marks and indicia.
The Atlanta Falcons and the New England Patriots own all of their trademarks, names,
logos, symbols, designs, and other identifying marks and indicia (both registered and
unregistered).
Plaintiff NFLP is the owner of, has adopted, and has used in commerce federal trademark
registrations and state trademarks registered with the Texas Secretary of State’s Office and/or
APPLICATION -3-
registered with the United States Patent and Trademark Office (“USPTO”) related to the NFL’s
activities for a wide variety of products, including “NATIONAL FOOTBALL LEAGUE,”
“NFL,” “SUPER BOWL,” the LI design, the HTX design, “SUPER SUNDAY,” “AMERICAN
FOOTBALL CONFERENCE,” “AFC,” “NATIONAL FOOTBALL CONFERENCE,” “NFC,”
“VINCE LOMBARDI TROPHY,” “NFL EXPERIENCE,” “BACK TO FOOTBALL,”
“TOGETHER WE MAKE FOOTBALL,” “NFL NETWORK,” “NFL ON LOCATION,” “NFL
SHOP,” “NFL TICKET EXCHANGE,” “ON FIELD,” “PRO BOWL,” “SUNDAY NIGHT
FOOTBALL,” “MONDAY NIGHT FOOTBALL,” “THURSDAY NIGHT FOOTBALL,”
“TASTE OF THE NFL,” the Super Bowl LI design, the NFL Shield design (including current
and prior versions), the AFC design (including current and prior versions), the NFC design
(including current and prior versions), the AFC Champion Trophy Design, the NFC Champion
Trophy Design, the Back to Football design, the NFL NETWORK Design, and the Vince
Lombardi Memorial Trophy design, among others. True and correct copies of the Certificates of
Registration for the marks registered with the Texas Secretary of State’s Office and/or USPTO
are attached hereto as Exhibit 1 and incorporated herein for all purposes.
The Atlanta Falcons and the New England Patriots have adopted and used in commerce
certain of their marks and have registered those marks with the Texas Secretary of State’s Office
and/or USPTO, including “ATLANTA FALCONS,” “FALCONS,” “FALCONS LANDING,”
“RISE UP,” “THE GULCH,” the Stylized ATL design, the Stylized Falcon design, the Atlanta
Falcons home and away uniform designs, the Atlanta Falcons helmet logo, “NEW ENGLAND
PATRIOTS,” “PATRIOTS,” “PATS,” “DO YOUR JOB,” “DO YOUR JOB!,” “WE ARE ALL
PATRIOTS,” “THE PATRIOT WAY,” “NEXT GAME UP,” “BOSTON PATRIOTS,”
“BELESTRATOR,” the Patriots Player design known as “the Player,” the Stylized NE design,
APPLICATION -4-
the Stylized Patriot Head, the helmet logos of the New England Patriots, and the home and away
uniform designs of the New England Patriots. True and correct copies of the Certificates of
Registration for the marks registered by the Atlanta Falcons and the New England Patriots with
the Texas Secretary of State’s Office and/or USPTO are attached hereto as Exhibit 2 and
incorporated herein for all purposes.
All of the common law trademark rights and the statutory trademark registrations of the
NFL, the Atlanta Falcons, and the New England Patriots as set forth herein are referred to
collectively as the “NFL Trademarks.”
To meet the public demand for merchandise relating to each year’s Super Bowl game,
Plaintiff NFLP annually develops and licenses specific, unique Super Bowl graphic design logos
for use in connection with the production and sale of licensed merchandise relating to the Super
Bowl game. See Table 1.
Table 1. Representative images of the Super Bowl LI design logos.
NFLP has licensed approximately 95 companies to produce high-quality merchandise
specifically relating to the Super Bowl LI game, including apparel such as t-shirts, garments, and
hats and souvenir items such as pennants, novelty items, and games, among many other products.
Photographs of representative samples of licensed Super Bowl LI game products are attached
hereto as Exhibit 3 and incorporated herein for all purposes. NFLP works closely with licensees
APPLICATION -5-
and many retail outlets to assure that sufficient quantities of Super Bowl game-related licensed
merchandise are available to the public. This merchandise is currently available for purchase on
many eCommerce sites, at numerous retail outlets in Harris County, and at and in the vicinity of
NRG Stadium and numerous Super Bowl LI-related events in this district during the time leading
up to and following the Super Bowl events on and around February 5, 2017, the day of the Super
Bowl LI game.
Recent investigations by law enforcement authorities and investigative representatives of
NFLP have revealed intentional, knowing, wanton and reckless production, distribution, offering
for sale, and sale of significant quantities of Counterfeit Merchandise and Counterfeit Tickets by
Defendants by and through vendors at the playoff and conference championship games, who
have indicated that they intend to continue to sell Counterfeit Merchandise and Counterfeit
Tickets. Photographs of representative samples of Counterfeit Merchandise purchased during
this year’s playoff season and at last years’ Super Bowl game in Santa Clara, California, are
attached hereto as Exhibit 4 and incorporated herein for all purposes.
Notice to Defendants of the request for the Temporary Restraining Order and Writ of
Sequestration requested herein should not be required because, as a practical matter, it cannot be
given. As the accompanying affidavits demonstrate, most of the vendors and manufacturers of
Counterfeit Merchandise and Counterfeit Tickets are itinerant and have no business identity
before or after the Super Bowl week and cannot be identified, located, or notified of the request
for the Temporary Restraining Order and Writ of Sequestration. It is anticipated that the
Defendants, if given notice of these proceedings, will immediately dispose of the Counterfeit
Merchandise and Counterfeit Tickets, destroy records, avoid process, change the names under
which they do business, or move their unauthorized activities elsewhere.
APPLICATION -6-
Execution of the Order of Seizure, the Writ of Sequestration, and the Temporary
Restraining Order is necessary to immediately remove the Counterfeit Merchandise and Tickets
from the marketplace. Otherwise, Defendants—who are itinerant vendors and manufacturers—
may escape service and prevent Plaintiffs from removing the infringing merchandise and tickets,
thereby frustrating and destroying Plaintiffs’ right to relief.
There is immediate danger that Defendants will conceal, dispose of, ill-treat, waste, or
destroy the property currently in their possession. Upon information and belief, Plaintiffs
believe that Defendants will attempt to conceal the property and may remove it from Harris
County, Texas, during the pendency of this suit because of the nature of Defendants’ practices.
This Application is based upon the attached exhibits, the accompanying Memorandum in
Support of Application for Ex Parte Temporary Restraining Order, Temporary Injunction, Order
of Seizure, Writ of Sequestration, and Expedited Discovery and attached exhibits; the Verified
Original Petition; the Affidavits of Special Agent Richard Halverson, Assistant Chief Deputy
Carl Shaw, Wayne Grooms, Guy Connelly, and Anastasia Danias; any hearing in this matter; and
any such other matters as this Court may deem appropriate.
Plaintiffs request in this Application that this Court issue an Order enjoining Defendants
from selling, marketing, distributing, or displaying for sale any infringing merchandise and
tickets and issue an Order of Seizure and a Writ of Sequestration to authorize Sheriffs,
Constables, and/or any other duly authorized law enforcement officers to seize and sequester all
infringing merchandise and tickets on display—and all documents or records related to such
infringing items.
WHEREFORE, Plaintiffs respectfully request the following relief:
1. That all Defendants served herein as Does 1 through 100, inclusive, and their
APPLICATION -7-
respective officers, directors, agents, partners, employees, attorneys, representatives, successors,
and assigns, and all other persons in active concert or participation with them, or any of them, be
temporarily enjoined, and, upon final trial, permanently enjoined:
(a) from producing, manufacturing, advertising, promoting, displaying for sale,
offering for sale, selling, or distributing any articles of merchandise or tickets
bearing the marks “NATIONAL FOOTBALL LEAGUE”; “NFL”; the NFL
Shield designs (including current and prior versions), as depicted on Exhibit 1
hereto; “SUPER BOWL”; the HTX design, as depicted on Exhibit 1 hereto; the LI
design, as depicted on Exhibit 1 hereto; the SUPER BOWL LI design, as depicted
on Exhibit 1 hereto; “SUPER SUNDAY”; “VINCE LOMBARDI TROPHY”; the
VINCE LOMBARDI TROPHY design, as depicted on Exhibit 1 hereto;
“AMERICAN FOOTBALL CONFERENCE”; “AFC”; the AFC design
(including current and prior versions), as depicted on Exhibit 1 hereto; the AFC
Champion Trophy design, as depicted on Exhibit 1 hereto; “NATIONAL
FOOTBALL CONFERENCE”; “NFC”; the NFC design (including current and
prior versions), as depicted on Exhibit 1 hereto; the NFC Champion Trophy
design, as depicted on Exhibit 1 hereto; “NFL EXPERIENCE”; “BACK TO
FOOTBALL”; the BACK TO FOOTBALL design; “TOGETHER WE MAKE
FOOTBALL”; “NFL NETWORK”; the NFL NETWORK design; “NFL ON
LOCATION”; “NFL SHOP”; “NFL TICKET EXCHANGE”; “ON FIELD”;
“PRO BOWL”; “SUNDAY NIGHT FOOTBALL”; “MONDAY NIGHT
FOOTBALL”; “THURSDAY NIGHT FOOTBALL”; “TASTE OF THE NFL”;
“ATLANTA FALCONS”; “FALCONS”; Atlanta Falcons word marks, including
APPLICATION -8-
but not limited to “FALCONS LANDING,” “RISE UP,” and “THE GULCH”; the
Stylized ATL and Stylized Falcon designs, as depicted on Exhibit 2 hereto; the
Atlanta Falcons home and away uniform designs, as depicted on Exhibit 2 hereto;
the Atlanta Falcons helmet logo, as depicted on Exhibit 2 hereto; “NEW
ENGLAND PATRIOTS”; “PATRIOTS”; New England Patriots word marks,
including but not limited to “PATS,” “DO YOUR JOB,” “DO YOUR JOB!,”
“WE ARE ALL PATRIOTS,” “THE PATRIOT WAY,” “NEXT GAME UP,”
“BOSTON PATRIOTS,” and “BELESTRATOR”; the Patriots Player design
known as “the Player,” the Stylized NE, and the Stylized Patriot Head designs, as
depicted on Exhibit 2 hereto; the New England Patriots home and away uniform
designs, as depicted on Exhibit 2 hereto; the New England Patriots helmet logos,
as depicted on Exhibit 2 hereto; the full team names, logos, and related marks of
any Member Club of the National Football League (including, but not limited to,
the Atlanta Falcons and the New England Patriots); and any other NFL
Trademarks, any colorable imitations of any of the above, or anything confusingly
similar thereto, unless such merchandise or tickets have been licensed by NFLP;
(b) from making any statement or representation whatsoever or performing any
act, which can or is likely to lead the trade or public, or individual members
thereof, to believe that any product manufactured, distributed, or sold by
Defendants is in any manner associated or connected with Plaintiffs, or is sold,
manufactured, licensed, sponsored, approved, or authorized by Plaintiffs;
APPLICATION -9-
(c) from engaging in any activity constituting infringement of Plaintiffs’ marks or
any of Plaintiffs’ rights in said marks or constituting any dilution by blurring and
by tarnishment of the goodwill, name, or reputation of the Plaintiffs;
(d) from otherwise competing unfairly with NFLP, the Atlanta Falcons, and the
New England Patriots;
(e) from engaging in any activity constituting misappropriation and/or conversion
of Plaintiffs’ property and property rights;
(f) from erasing, deleting, altering, or destroying Defendants’ Counterfeit
Merchandise and Counterfeit Tickets that are in Defendants’ possession or control
during the pendency of this action;
(g) from destroying any documents, electronic files, or business records that
pertain to the copying, reproduction, manufacture, duplication, dissemination, or
distribution and/or sale by Defendants or under Defendants’ authority, including
any correspondence (including, but no limited to, electronic mails), sales and
supplier or customer journals, ledgers, invoices, purchase orders, inventory
control documents, bank records, catalogues, recordings of any type whatsoever,
and all other business records and documents believed to concern the
manufacture, purchase, advertising, sale, or offering for sale of such infringing
copies during the pendency of this action; and
(h) from effecting assignments or transfers, forming new entities or associations,
or utilizing any other device for the purpose of circumventing or otherwise
avoiding the prohibitions set forth in paragraphs (a)–(g) above.
2. That Sheriffs, Constables, and/or any other duly authorized law enforcement
APPLICATION -10-
officers be empowered and directed pursuant to the Texas Trademark Act and the general
equitable powers of the Court, and subject to appropriate restrictions and on the conditions as set
forth in an order of this Court, to seize and sequester in a secure place, pending further hearing,
any and all Counterfeit Merchandise and Counterfeit Tickets bearing the NFL Trademarks set
forth in the preceding Paragraph 1 of this Prayer for Relief—together with all documents or
records related to such Counterfeit Merchandise and Counterfeit Tickets; any cartons, vessels,
boxes, or other containers in which said Counterfeit Merchandise and Counterfeit Tickets are
stored, carried, displayed, or transported; any devices used to produce or reproduce such
Counterfeit Merchandise and Counterfeit Tickets, including, without limitation, silk screens,
molds, matrices, heat transfers, or printers; and any signs, banners, posters, displays, labels,
packages, wrappings, receptacles, or advertisements intended to be used in selling, in
distributing, or in connection with the sale or distribution of Counterfeit Merchandise and
Counterfeit Tickets—in the possession, custody, or control of any Defendants served as Does 1
through 100, inclusive, during a period commencing as of noon on Thursday, February 2, 2017
and ending on Monday, February 6, 2017, at 5:00 p.m.;
3. That all Defendants, and each of them, be ordered, pursuant to the Texas
Trademark Act and the general equitable powers of the Court, to deliver up to Plaintiffs any
Counterfeit Merchandise and Counterfeit Tickets in their possession, custody, or control and not
seized pursuant to the order prayed for in Paragraph 2 above and the sale or other disposition of
which would violate the permanent injunction prayed for in Paragraph 1 above (together with all
such merchandise in the process of manufacture and any cartons, vessels, boxes, or other
containers in which said Counterfeit Merchandise and Counterfeit Tickets are stored, carried,
displayed, or transported; any devices used to produce or reproduce such Counterfeit
APPLICATION -11-
Merchandise and Counterfeit Tickets, including, without limitation, patches, silk screens, molds,
matrices, heat transfers, or printers; and any signs, banners, posters, displays, labels, packages,
wrappings, receptacles, or advertisements intended to be used in selling, in distributing, or in
connection with the sale or distribution of Counterfeit Merchandise and Counterfeit Tickets),
which shall be disposed of by Plaintiffs upon further Order of this Court by destroying it,
donating it to charity, or making such other disposition as appears appropriate;
4. That all Defendants, and each of them, be ordered to file with the Court, and to
serve on counsel for Plaintiffs, within 30 days of the date of entry of final judgment herein, a
written statement, under oath, setting forth in detail the form and manner in which each
Defendant has complied with the orders herein;
5. That after due proceedings, Plaintiffs may, subject to further order of the Court,
dispose of the seized Counterfeit Tickets by destroying them and dispose of the seized
Counterfeit Merchandise by destroying it, donating it to charity, or making such other disposition
as appears appropriate;
6. That Defendants, and each of them, be ordered to show cause why they should not
pay to Plaintiffs all profits arising from the sale of Counterfeit Merchandise and Counterfeit
Tickets bearing the NFL Trademarks;
7. That the Court enter an Order allowing Plaintiffs to take expedited discovery in
the form of depositions and attendant requests to produce documents upon three-days notice for
the depositions and requests to produce;
8. That after due proceedings, Defendants, and each of them, be ordered to pay to
Plaintiffs all damages sustained by Plaintiffs from the sale of Counterfeit Merchandise and
Counterfeit Tickets bearing the NFL Trademarks;
APPLICATION -12-
9. That after due proceedings, Defendants, and each of them, be ordered to pay to
Plaintiffs all of Plaintiffs’ costs, expenses, disbursements, and reasonable and necessary
attorneys’ fees; and
10. That Plaintiffs be granted such other and further relief as this Court deems just
and proper.
Respectfully submitted, /s/ Lynne Liberato Lynne Liberato State Bar No. 00000075 Poorav K. Rohatgi State Bar No. 24093063 HAYNES AND BOONE, LLP 1221 McKinney, Suite 2100 Houston, Texas 77010-2007 Telephone: (713) 547-2000 Telecopier: (713) 547-2600 Jeffrey M. Becker State Bar No. 02015730 HAYNES AND BOONE, LLP 2323 Victory Avenue, Suite 700 Dallas, Texas 75219 Telephone: (214) 651-5000 Telecopier: (214) 651-5940 COUNSEL FOR PLAINTIFFS NFL PROPERTIES LLC, ATLANTA FALCONS FOOTBALL CLUB, LLC, AND NEW ENGLAND PATRIOTS LLC
STATE OF ___ _
COUNTY OF ___ _
§ § §
VERIFICATION
BEFORE ME, the undersigned notary, on this day personally appeared Anastasia Danias, the affiant, a person whose identity is known to me. After I administered an oath to affiant, affiant testified:
"I, Anastasia Danias, am of sound mind and capable of making this verification. I am Senior Vice President and Chief Litigation Officer for the National Football League and an officer of NFL Properties LLC. I have read the foregoing Plaintiffs' Verified Application for Ex Parte Temporary Restraining Order, Temporary Injunction, Order of Seizure, Writ of Sequestration, and Expedited Discovery, and the factual allegations contained therein are within my knowledge and are true and correct except for the matters
~~~!" stated to be alleged on informatii:ef, and thoDs I believe to bo
. b.tQ !,,~ .
Anastasia Danias ~
l ~ SUBSCRIBED AND SWORN TO BEFORE ME, the undersigned authority, on this the ___ day of January, 2017.
(SEAL)
NAI\ CY ~Er.MAN Noi : r:· P 1Jt i1c, ft.1t, Of New York
,, c. 01U t' 'J48;3f'l C11 :, .~ d In l\J • : w County
Co· -"· , on Exp.ru; l'v~O _
u /c,/JP
APPLICATION
tru\JJJl (.._ Notary Public in and for the Stute of hlt,u L-(0{ I<.._
My commission expires on: \ \ \ C\ \ \((/
-13-
NEW YORK
NEW YORK
APPLICATION -14-
CERTIFICATE PURSUANT TO LOCAL RULE 3.3.6
I certify that to the best of my knowledge the parties against whom ex parte relief is
sought are not represented by counsel in this matter.
/s/ Lynne LiberatoLynne Liberato