Counterfeiters Beware: Courts Have Unidentified Bootleggers in the Crosshairs

As summer nears, the 2023 concert touring season is fast approaching. With it comes the ability for musical and other touring acts to cash in on lucrative merchandise sales—unless counterfeiters beat them to it. Anticipating this issue, some entertainment professionals are turning to the courts now to secure what is theirs.

Last week, a United States District Judge for the District of Washington issued a preliminary injunction and seizure order concerning the anticipated sale of unauthorized Phish merchandise in connection with the band’s upcoming 2023 tour. Phish Inc., the holder of the group’s intellectual property rights, asserts the order is necessary because “[s]ince the inception of Phish’s popularity in the 1990s, Phish’s concert tours have been plagued by individuals who sell unauthorized merchandise near, at and sometimes inside a concert venue.” The order Phish, Inc. obtained from the court sought to remedy this issue.

The Order

The order permits the United States Marshal, as well as other law enforcement agents, to seize and impound counterfeit Phish merchandise found within a 20-mile vicinity of upcoming Phish shows, and it extends to a period of 10 hours before each concert and six hours after. In addition, the order provides that “any bag, carton, container, vehicle, or other means of carriage” holding such bogus merchandise can be seized and impounded, providing a powerful tool against bootleggers, who often travel from one city to another, following Phish’s tour.

What is particularly noteworthy about the order is it was issued against “John Doe” defendants, meaning defendants whose identities are unknown to the plaintiff at the time of filing.

Other Examples in the Entertainment Industry

Phish is not the first in the entertainment industry to successfully seek an injunction and seizure order against would-be bootleggers. The WWE successfully appealed the denial of such an order, bringing the issue to the Court of Appeals for the Fifth Circuit. The exclusive licensee of Shawn Mendes’ branded tour merchandise also obtained similar relief.

The Takeaway for Touring Artists

While federal courts generally disfavor granting injunctions against John Doe defendants, judges are more inclined to proceed when counterfeiters can be easily identified at an event. This can be achieved in instances like Phish where one entity holds all of the intellectual property rights. Similarly, WWE makes its own merchandise sales directly and does not license third parties to sell WWE merchandise at live events. These circumstances take the guess work out of identifying authorized versus unauthorized sellers of merchandise.

Another factor courts seemingly favor is the ability (shown through previous instances of attempted enforcement) for counterfeiters to quickly dissipate, allowing them to escape all consequences and sell the same unauthorized merchandise on the next leg of a tour.

Given the willingness of courts to proactively issue orders like the one in favor of Phish, rights holders should consider their options in advance to curtail the potential for damage caused by would-be counterfeiters. Toward that end, the Intellectual Property Practice Group at Michelman & Robinson, LLP is always available for guidance.

This blog post is not offered, and should not be relied on, as legal advice. You should consult an attorney for advice in specific situations.