Monthly Archives: August 2011

2011 – Superbowl XLV

Ten days before the Green Bay Packers and the Pittsburg Steelers went head-to-head in the most-watched epic sports event of the year – Super Bowl XLV – the two teams joined forces as co-plaintiffs  in a lawsuit filed in the 352nd District Court of Tarrant County, Texas.  What could have caused these rivals who were on the verge of battle for nothing less than the World Championship title to unite together less than two weeks before the contest began?

The Green Bay and Pittsburg teams, as well as the NFL, which was also a named plaintiff, filed suit to protect their trademarks from illegal counterfeitors who would be arriving in town within a few days to capitalize on the big event.   The defendants, unnamed “Does 1 through 100,” were described as large-scale professional producers of counterfeit merchandise and the mobile middlemen and street vendors who sell their counterfeit products.  According to the plaintiffs’ pleadings, each year dealers in counterfeit merchandise “descend on the city hosting the Super Bowl game” a few days before game-day, sell their counterfeit products on a cash-only basis and then “disappear without detection.”  These counterfeiters often use fictitious names, addresses and sham business in order to perpetuate their fraud.

Superbowl XLV was hosted by the City of Arlington in Cowboy Stadium on February 6, 2011.  To combat the anticipated illegal activity, on January 26, 2011 (as had been done each year for the preceding 23 years), the teams sought and obtained seizure orders from Judge Bonnie Suderth, who empowered NFL security representatives to search for, seize and impound any counterfeit merchandise that they found or discovered on the streets during the week prior to the Super Bowl game.  Judge Sudderth’s order provided that any seized merchandise would be secured to be used as evidence at trial and thereafter disposed of by destroying the merchandise or donating it to a charity.  Only with these powers conferred upon their representatives could the NFL and the teams prevent the merchandise from being sold, Judge Sudderth ruled.

In conjuction with the seizure order, the NFL and teams also sought and received a temporary restraining order enjoining the counterfeit merchandisers from using or selling any products with their trademarks or logos, or any imitations which were confusingly similar to their protected marks or logos.  By terms of the order, violations would be punishable by contempt, which could include fines, imprisonment, or both.

While the primary thrust of the lawsuit was to obtain the power necessary to combat the counterfeit activity in advance of its occurrance, the NFL and teams also sought damages against the unnamed defendants for statutory trademark infringement, common law trademark infringement, statutory trademark dilution, unfair competition, misappropriation and conversion of merchandise, and unjust enrichment.

In the days leading up to the event, several vendors were served with the lawsuit and their merchandize seized at the point of sale which accomplished the primary purpose of the lawsuit.  The lawsuit was not so much about recovering damages after the fact, but to prevent the damage from occurring in the first place.  Consequently, several months after the dust settled, after the Packers had emerged victorious and received the attendant spoils of trophies, rings and tickertape parades, the parties settled their differences and the case was dismissed.

Now that the regular season’s about to begin, and if the odds-makers are to be believed, sometime in January, 2012, if you look closely, you just might catch a glimpse of the Packers and the Patriots quietly walking hand-in-hand up the steps into a courthouse somewhere in Indianapolis…  As for me, I’ll root for the home team.  Go Cowboys!  — Bonnie Sudderth, Judge of the 352nd District Court of Tarrant County, Texas.

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2009 – Taking the Big Fight to Court

On May 28, 2005, the Championship boxing match between Julio Cesar Chavez and Ivan Robinson was aired as a closed-circuit “pay per view” event, available only to those who had purchased authorization to access and broadcast it.  Special licensing requirements were imposed on commercial establishments who planned to publicize and broadcast the event in their theaters, arenas, bars, clubs and restaurants.  Steps were also taken to prevent unauthorized use by those who didn’t purchase a license or obtain permission to access the event.  The transmission of the event was electronically coded, or “scrambled”, requiring decoding with electronic decoding equipment in order for the signal to be clearly received and telecasted.

On the evening of the match, a Tarrant County business known as “Playmates” broadcast the boxing match to its patrons without obtaining a license to do so, violating federal cable piracy laws. Although J&J Sports Productions, the broadcast licensee of the Chavez/Robinson match, discovered this violation fairly quickly thereafter, they waited three and a half years to file a lawsuit. 

On December 30, 2008, the lawsuit was filed in the 352nd District Court of Tarrant County.  In the lawsuit, J&J sought damages of approximately $200,000, plus attorney’s fees.  They also sought a permanent injunction to prevent any further exhibition of unauthorized or unlicensed broadcasts by Playmates.

Approximately a year after the suit was filed, Playmates filed a motion for summary judgment, arguing that J&J had waited too long to bring their action and that the lawsuit was barred by the statute of limitations.  The crux of the summary judgment dispute that presented itself to Judge Bonnie Sudderth was whether the federal 4-year statute of limitations would apply to the case, or whether the 2-year Texas statute of limitations would apply. 

Judge Sudderth ruled that Texas’ 2-year statute of limitations applied to the dispute.  In her ruling, Judge Sudderth explained that by choosing to file the lawsuit in state court, rather than federal court, J&J removed the binding effect of U.S. Fifth Circuit precedent, and, therefore, state law should apply. Therefore, even though Playmates had violated federal cable piracy laws, J&J waited too long to complain about it, and the lawsuit was dismissed.

Judge Sudderth’s decision was affirmed on appeal on September 23, 2010.

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