In Re Lorillard Tobacco Company

370 F.3d 982 In re LORILLARD TOBACCO COMPANY, Plaintiff-Appellant. No. 03-16553. United States Court of Appeals, Ninth Circuit. Argued and Submitted January 15, 2004. Filed June 7, 2004. John R. Bailey, David J. Merrill, and Joshua M. Dickey, Law Offices of John R. Bailey, Las Vegas, NV, for the plaintiff-appellant. Appeal from the United States District Court for the District of Nevada; Larry R. Hicks, District Judge, Presiding. D.C. No. CV-03-00775-LRH/PAL. Before: WALLACE, McKEOWN, and CALLAHAN, Circuit Judges. McKEOWN, Circuit Judge: 1 This case arises from the district court's denial of Lorillard Tobacco Company's application for an ex parte order to seize purportedly counterfeit cigarettes. Upon Lorillard's timely appeal, we find ourselves confronted with a novel issue of appellate jurisdiction. To date, only one court has faced the question whether a seizure order authorized under the trademark law, 15 U.S.C. § 1116 (d), is an injunction, and whether an interlocutory order denying seizure is thus appealable under 28 U.S.C. § 1292 (a)(1). See Vuitton v. White, 945 F.2d 569, 572 (3d Cir.1991) (holding appellate jurisdiction proper). Careful analysis of the language…

dissenting:

Convinced that this court has jurisdiction to hear Lorillard’s appeal, I respectfully dissent. With that said, the district court did not abuse its discretion or clearly err in denying Lorillard’s motion for an ex parte seizure order. Therefore, I would affirm.

I. BACKGROUND AND PROCEDURAL HISTORY

Before 1984, peddlers of counterfeit merchandise were nearly immune to the then-conventional civil remedies available to victims of trademark infringement; indeed,”[t]he pirate ... who [was] served with a civil summons to appear at a hearing on a preliminary injunction [would] either disappear or quickly dispose of existing inventory.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:10, at 25-19 (4th ed. 2003) (“McCarthy”). Recognizing this problem, Congress passed special legislation in 1984, now codified at 15 U.S.C. § 1116 (d), enabling judges to grant ex parte seizure orders to confíscate counterfeit goods without first providing notice to the purported bootlegger. 5 McCarthy, §§ 30:34 — 30:36, at 30-70 to 30-77.

Lorillard moved for just such an order to seize packages of cigarettes from Doe that allegedly bear a phony Newport trademark. In…

This case arises from the district court’s denial of Lorillard Tobacco Company’s application for an ex parte order to seize purportedly counterfeit cigarettes. Upon Lorillard’s timely appeal, we find ourselves confronted with a novel issue of appellate jurisdiction. To date, only one court has faced the question whether a seizure order authorized under the trademark law, 15 U.S.C. § 1116 (d), is an injunction, and whether an interlocutory order denying seizure is thus appealable under 28 U.S.C. § 1292 (a)(1). See Vuitton v. White, 945 F.2d 569, 572 (3d Cir.1991) (holding appellate jurisdiction proper). Careful analysis of the language and legislative history of the statute that authorizes seizure leads us to the opposite conclusion. Because the district court’s denial of a motion for an ex parte seizure order is neither an automatically appealable literal refusal of an injunction nor a practical denial of ultimate injunctive relief, see Carson v. American Brands, Inc., 450 U.S. 79, 83-84 , 101 S.Ct. 993 , 67 L.Ed.2d 59 (1981), we lack jurisdiction to consider Lorillard’s appeal.

I. BACKGROUND

Lorillard Tobacco Company manufactures and holds several registered trademarks…