N.D. Ga.

Elvis Counterfeiters ‘All Shook Up’ After Preliminary Injunction Stops Online Sales

ABG EPE IP, LLC v. 7 Color Sunflower et al, Civil Action No. 1:23-cv-01356-SEG (N.D. Ga., May 2, 2023)

Elvis Presley’s estate was granted a preliminary injunction against sellers of counterfeit goods alleged to violate various trademarks associated with the King of Rock N Roll (see U.S. Registration No. 2,158,251).  Plaintiff ABG EPE IP, LLC, (“Elvis”) owns all intellectual property, including trademark rights, of Elvis Presley’s estate. Elvis’s global trademark portfolio includes registrations and common law rights in “Elvis,” “All Shook Up,” “Viva Las Vegas,” and a long list of other name combinations and source identifiers. The alleged counterfeiters are all non-U.S. entities accused of selling goods through virtual storefronts, including Alibaba, Amazon, Walmart, and Wish. The complete list of all named Defendants spans nearly five pages of the order. See Dkt. 20, at 16–20.  None of the Defendants appeared in the case to oppose the motion for preliminary injunction or to plead their case at the May 1, 2023, hearing.

In granting the motion, the Court analyzed the standard four-factor test for issuance of preliminary injunctive relief.  See Schiavo ex. rel Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005) (per curiam) and Cathedral Art Metal Co. v. Divinity Boutique, LLC, 2018 WL 566510 at *4 (N.D. Ga. 2018) (repeating and applying the four factors: (1) likelihood of success on the merits, (2) the movant’s irreparable injury, (3) the balance of injury between the parties, and (4) the public interest). The Court found all factors weighed in favor of Elvis’s requested relief.

For the likelihood of success on the merits of the trademark claim, the Court found the Defendants’ use of Elvis’s registered marks and colorable imitations of the marks likely to cause consumer confusion as to the source of the goods. The Court found the Defendants’ “spurious marks” identical to or substantially indistinguishable from the Elvis’s marks. Dkt. 20, at 6. Their continued use in commerce would likely confuse or mislead consumers to the origin, sponsorship, or approval of the goods in question.

The Court then found Elvis entitled to a rebuttable presumption of irreparable harm.  The Court further found Elvis could demonstrate the second factor even without the presumption. According to the Order, the “proliferation of counterfeit and/or infringing copies of Plaintiff’s goods erodes the distinctiveness of Plaintiff’s Marks and diminishes their value and associated goodwill.” Dkt. 20, at 8. At its core, the Plaintiff’s inability to control the quality of goods associated with its source identifier will have a materially adverse effect Elvis’s reputation and goodwill.

The third factor weighs in Elvis’s favor. Balancing the harm to Elvis from the infringement against the Defendants’ possible harm from suspending their sales, the Court easily found for Elvis. The Court noted that “[a]ny harm Defendants may suffer is purely monetary and is therefore compensable, unlike the harm that Plaintiff will continue to suffer.” Id. at 9.

The Court’s approach to the fourth factor generally reflects the general purpose of trademark law, which is to prevent consumer confusion. “[A] preliminary injunction is . . . in the public’s interest.” Dkt. 20, at 10. Judge Geraghty added that one public interest of enforcing trademark rights is to prevent consumer harm from products made of “unknown and likely inferior quality and composition.” Id. at 10.

The preliminary injunction orders each Defendant to cease and refrain from manufacturing and selling the products bearing Elvis’s protected marks. Further, the Order reaches certain financial institutions and online marketplaces. All financial institutions served with the earlier temporary restraining order (“TRO”) are to continue to freeze all funds in associated accounts, including a block on transferring or diverting funds. Temporary Restraining Order, Civil Action No. 1:23-cv-01356-SEG, Dkt. 10 (N.D. Ga. Apr. 5, 2023). Likewise, all marketplaces previously served with the TRO must continue disabling the listings. The Court required no bond or other security, though any Defendant may immediately challenge this portion of the decision if they can adequately demonstrate potential lost sales coming from the preliminary injunction.

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