IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA FILE D

Newport News Division I
MAR - 6 2009

PHISH, INC., CLERK, US DISTRICT COURT

NORFOLK, VA

Plaintiff,

v. CIVIL ACTION NO. 4:09cv22

JOHN DOES 1-100 AND

ABC CORPORATIONS 1-5,

Defendants.

MEMORANDUM OPINION & ORDER

This matter is before the Court on Phish, Inc.'s ("Plaintiff") Motion for a Temporary

Restraining Order ("TRO"), Seizure Order, and Order to Show Cause for Preliminary Injunction

against various John Does and ABC Corporations ("Defendants") pursuant to Rule 65 of the

Federal Rules of Civil Procedure and the Lanham Act, 15 U.S.C. § 1501 etseq., based on an action

for trademark infringement, unfair competition, false designation of origin, trademark dilution, and

violation of the right to publicity. On March 5,2009, the Court conducted an exparte hearing on

Plaintiffs motion. On March 6,2009, Plaintiff filed a supplemental brief addressing two issues of

concern to the Court.

I. FACTUAL AND PROCEDURAL HISTORY

Plaintiff is the owner of various trademarks and trade names of the rock-and-roll band

known as Phish. Phish currently includes individual artists by the names of Trey Anastasio, Mike

Gordon, Jon Fishman, and Page McConnell. (Compl., If 13.) From 1992 through 2004, several of
Phish's albums made it to the Billboard 200 Charts, a popular music trade industry publication.

(Compl., ffl] 8, 10.) During this time, Phish engaged in constant touring and album releases.

(Compl., K 9.) Since the 1980s, Phish has sold close to eight million albums. (Compl., ^ 12.)

Plaintiff owns federal registrations for its trademarks in the name PHISH, including PHISH

FOOD (no. 2173816) on hats, T-shirts, shirts, and jackets, and ice cream, frozen yogurt, and sorbet,

PHISH (no. 2096010) for providing a data base of information and interactive discussion groups

on a global computer network in the field of music and entertainment, PHISH (no. 2029049) on

musical audio and video recordings, PHISH (no. 2029048) on posters, decals, calendars, sheet

music, newsletters and books in the fields of music and entertainment, PHISH (no. 1917861) on

bumper stickers and hats, T-shirts, shirts, and jackets, PHISH (no. 1782981) on entertainment in

the nature of a musical group, and PHISH (no. 1930480) on bumper stickers and hats, T-shirts,

shirts, and jackets, and cloth patches for clothing. Phish artist Anastasio also owns federal

registrations for the trademarks OYSTERHEAD (no. 2662635) for prerecorded musical

recordings, jackets, hats, shirts, and T-shirts, and entertainment in the nature of a musical group;

GAMEHENDGE (no. 2048310) for hats, T-shirts, shirts, jackets, pants, socks, shorts, and

ponchos; and GAMEHENDGE (no. 2053513) for bumper stickers, posters, decals, calendars, sheet

music, newsletters, and books in the fields of music and entertainment. Plaintiff is authorized to

sell some merchandise containing these marks. Plaintiff also owns a charitable fund-raising entity

known as Waterwheel Foundation, Inc., through which it owns a federal registration for the

trademark WATERWHEEL (no. 2247438) for charitable fund raising and distribution of funds to

charities. Finally, Phish artist McConnell owns an entity known as A. Dante, LLC, through which

he owns a federal registration for the trademark VIDA BLUE (no. 2842286) for entertainment in
the nature of live musical performances by a musical group. Plaintiff is also licensed to

manufacture and sell merchandise containing this mark. (Compl., ffll 14-18.)

Plaintiff has used these trademarks, as well as the service marks, trade names, logos, and

likenesses of the artists (collectively "Plaintiffs Marks"), substantially and continuously in

interstate commerce, and has regularly received lucrative offers to license the Plaintiffs Marks for

use on a variety of products. (Compl., fflf 19-20.) However, Plaintiff has limited such

merchandising activities only to selective products. (Compl., 120.) Pursuant to an agreement

between Plaintiff and the Phish artists, Plaintiff possesses the right to sell any and all recordings,

articles of clothing, or other merchandise bearing any of the Plaintiffs Marks. (Compl., K 19.)

Under various licensing arrangements, goods bearing Plaintiffs Marks have been distributed

widely. (Compl., f 21.)

Plaintiff plans to begin its touring this year at the Hampton Coliseum in Hampton, Virginia,

with a three-day concert series beginning March 6, 2009 (the "Hampton Concert"). Plaintiff has

sold approximately 40,000 tickets for this event. (Compl., K 23.) Plaintiff plans to continue with a

nationwide concert tour in multiple cities throughout this year, and all of these concerts are sold

out. (Mem. Supp. TRO, 5.) Plaintiff intends to manufacture, distribute, and sell, and has or will

license vendors to do so, merchandise at the Hampton Concert and future concerts. (Compl., ^ 24.)

Plaintiff has filed the instant lawsuit because of its concern regarding illegal "bootleggers"

who sell unauthorized merchandise at or near concert venues. Plaintiff alleges that such

bootleggers misappropriate the names, likenesses, or trademarks of performing artists and musical

groups for use on merchandise to sell to the general public in order to benefit from the musical

group's commercial value and reputation, all in violation of the rights of those individuals and
companies. (Mem. Supp. TRO, 6.) Plaintiff also alleges that illegal bootlegging occurs at most

concerts of major popular performers, where a group of bootleggers generally follows a concert

tour and reappears from one venue to the next. (Mem. Supp. TRO, 6.) Plaintiff also alleges that

the bootlegged merchandise is often inferior. (Mem. Supp. TRO, 6.)

Since 1983, Phish has performed over 1,400 live concerts at large-capacity venues, and has

previously sought and obtained nationwide temporary restraining orders to address bootlegging.

(Mem. Supp. TRO, 6-7.) Such orders have resulted in the service of hundreds of bootleggers and

seizure of over thousands of bootlegged items. (Mem. Supp. TRO, 7.) Plaintiff has been unable to

determine the identity of bootleggers because they are generally nomadic individuals without a

business premises or other connection to the area. (Mem. Supp. TRO, 7.)

Plaintiff filed a Complaint and Motion for Temporary Restraining Order, Seizure Order,

and Order to Show Cause for Preliminary Injunction on February 25,2009. Plaintiff seeks to

restrain Defendants from manufacturing, distributing, advertising, or selling any merchandise

bearing the Plaintiffs Marks, or representing that any such merchandise was authorized or

sponsored by Plaintiff, within the vicinity of all venues at which Phish will be performing,

including the Hampton Concert. Plaintiff also requests that the Court order the seizure of any

infringing merchandise found between ten hours before to six hours after any performance by

Phish, within a twenty-mile radius of the concert venue. Plaintiff also requests that service of this

Memorandum Opinion and Order together with the Complaint and the Temporary Restraining

Order, Seizure Order, and Order to Show Cause for Preliminary Injunction, be made upon the

Defendants at the time of seizure, and that such Defendants be required to show cause why a

preliminary injunction should not be entered.

 II. LEGAL STANDARD

Federal Rule of Civil Procedure 65 allows district courts the discretion to grant preliminary

relief prior to the adjudication of the underlying dispute. Quince Orchard Valley Citizens Ass 'n,

Inc. v. Model, 872 F.2d 75,78 (4th Cir. 1989). In Blackwelder Furniture Co. v. Seilig Mfg. Co.,

550 F.2d 189, 193-95 (4th Cir. 1977), the United States Court of Appeals for the Fourth Circuit

("Fourth Circuit") established the standard for preliminary relief. The Blackwelder hardship

balancing test requires that the court consider: (1) the likelihood of irreparable harm to the movant

if the preliminary injunction is denied; (2) the likelihood of harm to the nonmovant if the requested

relief is granted; (3) the likelihood that the movant will succeed on the merits; and (4) the public

interest. See Scotts Co. v. United Indus. Corp., 315 F.3d 264,271 (4th Cir. 2002). Under the four-

part inquiry, "the first two factors regarding the likelihood of irreparable harm to the plaintiff if

[the preliminary injunction is] denied, and of the harm to the defendant if [the injunction is]

granted are the most important." Manning v. Hunt, 119 F.3d 254,263 (4th Cir. 1997).

The Court has authority to issue exparte seizure orders under the Lanham Act, where in

addition to the traditional requirements for injunctive relief: (1) an order other than an exparte

seizure order is inadequate, (2) the applicant has not publicized the requested seizure, (3) the

person against whom seizure would be ordered would destroy or otherwise make inaccessible to

the Court the infringing matters if such person had notice, and (4) the applicant has given notice to

the United States attorney for the judicial district in which the order is sought. 15 U.S.C. §

1116(d)(2) and (4)(B). Furthermore, any such order and related documents should be filed under

seal. Id. at§1116(d)(8).

 III. DISCUSSION

1. Likelihood of Irreparable Harm to Plaintiff Without the Temporary Restraining Order

In general, courts may find irreparable injury when "monetary damages are difficult to

ascertain or are inadequate," Multi-Channel TV Cable Co. v. Charlottesville Quality Cable

Operating Co., 22 F.3d 546, 551 (4th Cir. 1994), or when "a likelihood of confusion or possible

risk to reputation appears." Lone Star Steakhouse & Saloon, Inc. v. Alpha ofVa., Inc., 43 F.3d

922,933 (4th Cir. 1995). Injunctive relief may be particularly appropriate in cases involving

counterfeit or bootlegged goods because "plaintiff has lost control of its business reputation to this

extent, there is a substantial likelihood of confusion of the purchasing public, there may be no

monetary recovery available, and there is an inherent injury to the good will and reputation of the

plaintiff." Id. at 939. See also Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir.

1987).

In this case, Plaintiff alleges that without injunctive relief, Plaintiff will be irreparably

damaged by the Defendants' conduct. Plaintiff alleges that Defendants engage or will engage in

the unauthorized use of Plaintiff s Marks by manufacturing, selling, or offering to sell bootleg

merchandise at the Hampton Concert, at future Phish concerts, and on the Internet. (Mem. Supp.

TRO, 10.) Plaintiff further alleges that potential customers will believe such merchandise is made

and sold with Plaintiffs authorization, and such loss of control over Plaintiffs reputation,

goodwill, or the quality of its products is irreparable. (Mem. Supp. TRO, 10.)

This first Blackwelder factor turns on the consequences for Plaintiff if the Defendants are

not restrained from selling bootlegged merchandise. The Court finds that if Defendants wrongfully

use Plaintiffs Marks to sell merchandise at or near Plaintiffs performances, Plaintiff will suffer
harm because it will lose control over the quality and appearance of its merchandise, which will

diminish Plaintiffs reputation and dilute the value of the trademarks. Plaintiff has therefore

alleged sufficient irreparable injury to support the first Blackwelder factor.

2. Likelihood of Harm to the Defendants With the Temporary Restraining Order

Plaintiff alleges that the likelihood of harm to the Defendants is only monetary loss. (Mem.

Supp. TRO, 17.) Furthermore, Plaintiff argues that since Defendants have no legitimate interest in

selling bootlegged merchandise, this is a loss they should bear. (Mem. Supp. TRO, 17.)

After weighing the irreparable harm to Plaintiff with the harm to Defendants, the balance

favors Plaintiff. Therefore, since the balance weighs in Plaintiffs favor, Plaintiff is only required

to raise '"questions to the merits so serious, substantial, difficult and doubtful, as to make them fair

ground for litigation and thus for more deliberative investigation.'" Blackwelder, 550 F.2d at 195

(quoting Hamilton Watch Co. v. Benrus Watch Co., 206 F.2d 738,740 (2d Cir. 1953)).

3. Plaintiffs Likelihood of Success on the Merits

This dispute centers around whether Defendants are infringing or will infringe one or more

of Plaintiff s trademarks by manufacturing, selling, or offering to sell merchandise bearing

Plaintiffs Marks at or near Phish performances. Plaintiff has brought several claims under the

Lanham Act, specifically, federal trademark infringement (15 U.S.C. § 1114), unfair competition

and false designation of origin (15 U.S.C. § 1125(a)), and federal trademark dilution (15 U.S.C. §

1125(c)). Plaintiff has also brought a common law claim for unfair competition and a state law

claim of misappropriation of the right to publicity under Virginia Code Section 8.01-40.

Under 15 U.S.C. § 1114 and § 1125(a), the test for trademark infringement is whether there

is a valid trademark and defendant's use of a colorable imitation in commerce is likely to cause
confusion of the counterfeit with the genuine goods. See People for Ethical Treatment ofAnimals

v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001); Lone Star Steakhouse, 43 F.3d at 930; Pizzeria

Uno. Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). Virginia common law unfair

competition also follows the "likelihood of confusion" test. See Lone Star Steakhouse, 43 F.3d at

930 n.10. Factors to consider to determine whether there is a likelihood of confusion include "(1)

strength and distinctiveness of the plaintiffs mark; (2) degree of similarity between the two marks;

(3) similarity of the products that the marks identify; (4) similarity of the facilities the two parties

use in their businesses; (5) similarity of the advertising used by the two parties; (6) defendant's

intent; and (7) actual confusion." Pizzeria Uno., 747 F.2d at 1527. None of these factors is

dispositive, and all may not be relevant in a particular case. See id.

Plaintiff alleges that its marks are registered and their validity is incontestable. Plaintiff

also alleges that its marks have strong secondary meaning, as evidenced by the fact that they

provide identification and source and are known to millions of members of the public. Plaintiff

alleges that Defendants use or will use Plaintiffs federally registered marks on unauthorized

merchandise at the very places where Phish will be performing, that Defendants will sell

merchandise that is nearly identical in appearance and manufactured exclusively to sell at Phish

concerts, and that this will cause confusion. Plaintiff also alleges that Defendants have intent to

deceive because they sell or will sell products very similar to Plaintiffs products in order to benefit

from Plaintiffs reputation. (Mem. Supp. TRO, 10-14.)

Under 15 U.S.C. § 1125(c), the dilution of famous marks is prohibited, regardless of

whether the mark is registered or whether there is competition between the senior user's and junior

user's marks. A mark is "famous" when it is "widely recognized by the general consuming public

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of the United States as a designation of source of the goods or services of the mark's owner." Id. at

1125(c)(2)(A). The Fourth Circuit has defined dilution as "the lessening of the capacity of a

famous mark to identify and distinguish goods or services." CareFirst ofMaryland, Inc. v. First

Care, P.C., 434 F.3d 263,274 (4th Cir. 2006).

Plaintiff alleges that it is the owner and prior user of Plaintiff s Marks, which are famous

marks in the music industry and associated with related merchandise of style and quality. Plaintiff

further alleges that Defendants' illegal use of the Plaintiffs Marks on goods of inferior quality will

tarnish Plaintiffs fine reputation and goodwill that Plaintiff has built in nearly thirty years of using

such marks, such that the Plaintiffs Marks would be diluted if Defendants were allowed to

continue.

Under section 8.01-40 of the Virginia Code, a person whose likeness is used for

"advertising purposes or for purposes of the trade," without first obtaining the person's consent

may sue for an injunction preventing use of his likeness and for damages.

Plaintiff alleges that Defendants copy the Phish artists' images, names, or likenesses on

their bootleg merchandise in order to sell them. (Mem. Supp. TRO, 16.) Plaintiff further alleges

that someone familiar with Phish or the artists would be able to recognize their images or

likenesses in a picture on the bootlegged merchandise. (Mem. Supp. TRO, 17.)

The Court finds that Plaintiff has alleged facts which provide at least a '"question[] to the

merits so serious, substantial, difficult and doubtful, as to make them fair ground for litigation and

thus for more deliberative investigation.'" Blackwelder, 550 F.2d at 195 (quoting Hamilton Watch

Co., 206 F.2d at 740). Plaintiff has therefore made a sufficient showing of a likelihood of success

on the merits on at least one of its claims.

4. The Public Interest

Injunctive relief for trademark violations "serve[s] the public interest by preventing future

consumers from being misled." Lone Star, 43 F.3d at 939. Plaintiff argues that unless Defendants

are enjoined, consumers are likely to purchase bootlegged merchandise under the mistaken belief

that it is associated with Plaintiff. Plaintiff further argues that bootleg merchandise is inferior and

rarely lasts very long, which has a great economic cost for the public. (Mem. Supp. TRO, 6, 18.)

The Court finds that it is in the public interest that injunctive relief be granted in favor of Plaintiff.

5. Authority to Issue Nationwide Ex Parte Temporary Restraining and Seizure Order

Plaintiff alleges that an ex parte order is necessary because the identity of Defendants is not

known and cannot be known until the infringement occurs, Defendants will be present in this

jurisdiction only long enough to sell the unauthorized merchandise, and Defendants will ignore

court process and transfer or dispose of bootlegged merchandise if given advance notice.

Therefore, Plaintiff argues there is no other means of preventing Defendants from destroying

Plaintiffs business without an ex parte seizure order. Plaintiff also alleges that such relief should

be granted nationwide, in order to avoid multiple litigations in jurisdictions throughout the United

States. (Mem. Supp. TRO, 18-25.)

The Court, however, finds that there are two bases on which the Court must deny Plaintiffs

Motion for Seizure. The Court finds that Plaintiff has not taken adequate measures to prevent

publicity about the requested seizure. Plaintiff did not file any of its pleadings in this case under

seal. As a result, the local news media has picked up this story and notified the public about the

nature of Plaintiff s Motion, the relief requested, and the time and place of the Court's hearing on

the Motion. See, e.g., Tim McGlone, Phish In Court This Afternoon To Block Bootleg

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Merchandise, Virginian-Pilot, Mar. 5,2009. The local news media also attended the Court's

hearing. This publicity, which would have likely been prevented if Plaintiff had filed its pleadings

under seal, undercuts Plaintiffs argument that an exparte seizure order is necessary because

giving Defendants notice would cause Defendants to destroy or otherwise make inaccessible to the

Court the infringing matters. Defendants now have notice of the matter. In addition, while

Defendants are not currently identified, such publicity may damage their reputations once they are

identified at the time of seizure.

Furthermore, Plaintiffs failure to move to file under seal, and the actual publicity that has

resulted, prevents the Court from complying with the Lanham Act's requirement to seal "the order

... together with the supporting documents ... until the person against whom such order is issued

shall have access to such order and supporting documents after the seizure has been carried out,"

because the supporting documents are already in the public domain. Plaintiff argues that the

Lanham Act requires sealing of the Court's Order which is not yet issued, such that there is no

defect at this time. (Supplemental Mem., 6.) However, section 1116(d)(8) also requires sealing

the supporting documents, not merely the Court's Order. Moreover, those supporting documents

contain much of the same information (including the time and place of seizure) which are

contained in the Court's Order, such that even if the Court's Order were sealed, the information

contained in that Order is already part of the public record.

Plaintiff has also failed to provide adequate notice of its application for a seizure order to

the United States Attorney, as required by 15 U.S.C. § 1116(d)(2). At the hearing on March 5,

2009, the Court determined that Plaintiff had not notified the United States Attorney about these

proceedings. On either the evening of March 5th or the early morning of March 6th, Plaintiff

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apparently notified an Assistant United States Attorney about this application. (Supplemental

Mem., 5.) However, the purpose of this requirement is to allow the United States to "participate in

the proceedings arising under such application." 15 U.S.C. § 1116(d)(2). In this case, the United

States was not notified prior to the hearing and therefore could not, if it was necessary, participate

at same. In addition, since the notification occurred less than 24 hours before the Court's ruling in

this matter, there was not a reasonable opportunity for the United States to even respond if it were

so inclined.

Finally, Plaintiff argues that the Lanham Act should be liberally construed because

Congress intended to expand the right to ex parte seizure remedies. (Supplemental Mem., 3.)

However, the Court finds that because of the severe nature of ex parte relief under the Lanham Act,

and because of the clear procedures detailed in that Act, strict compliance is required. See 35 Am.

Jur. Proof of Facts 3d 255 (2008); 5 J. Thomas McCarthy, McCarthy on Trademarks and

Unfair Competition § 30:38 (4th ed. 2008). Accordingly, the Court does not find it appropriate

to issue an ex parte seizure order under 15 U.S.C. § 1116(d).

However, the Court does find that Plaintiff has shown the elements required for injunctive

relief under Rule 65, namely a temporary restraining order and order to show cause for preliminary

injunction. Furthermore, this temporary restraining order may be served on the Defendants

anywhere in the United States where they may be found, and is enforceable by this Court or any

other United States District Court in whose jurisdiction the Defendants may be found.

Accordingly, the Motion for a Temporary Restraining Order and Order to Show Cause for

Preliminary Injunction is GRANTED, and the Motion for Seizure is DENIED.

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 IV. CONCLUSION

For the reasons set forth above, Plaintiffs Motion for a Temporary Restraining Order and

Order to Show Cause for Preliminary Injunction is GRANTED, and the Motion for a Seizure

Order is DENIED. An Order for Injunctive Relief shall issue. Plaintiff shall post a bond in the

amount of $10,000.00.

The Court DIRECTS the Clerk to send a copy of this Memorandum Opinion and Order to

counsel of record.

IT IS SO ORDERED.

tit
Raymond A. Jackson
United States District JtldgO

Newport News, Virginia

March £ , 2009

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