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Grappling with the Civil Tro During the COVID-19 Pandemic

April 8, 2020 | Sebaly Shillito + Dyer

Well over 200 years ago, the Supreme Court of the United States, in a landmark case studied by every first-year law student, ruled that the right of a citizen to seek redress from the government through its courts is “the very essence of civil liberty.” Marbury v. Madison, 5 U.S. (1 Cranch) 137, 163 (1803). Accordingly, a client-facing imminent threatened harm, perhaps irreparable harm, should have every reason to think its civil liberties will be protected, even if such hearings are conducted telephonically or via video conference.

As a trial lawyer, I have been protecting clients’ trademarks for three decades. Some such litigation may seem trivial to some (e.g., Cartoon characters, movie logos, cigar brands, etc.); but, to the clients who have invested significant capital to have such trademarks identify them as the sponsor of the particular good or service, it is essential and potentially irreparable. A trademark owner must vigilantly protect its mark from confusion, dilution, and infringement, or risk losing rights. Recall the famous campaign, “there are two R’s in Xerox®” to protect the copier company’s famous mark from genericide.

So, what happens when a client identifies significant trademark infringement in the midst of the current COVID-19 pandemic? Should the lawyer tell them to “suck it up, there are more important things in the world now beyond your silly cartoon?” Well, no; unless she wants to risk ethical violations and potential malpractice claims.

That very situation faced lawyers in the Northern District of Illinois. Client Art Ask Agency had allegedly identified several internet counterfeiters selling products identified as “ANNE STOKES” characters and the like; but, Art Ask Agency owns the sole and exclusive rights to sell fantasy characters, such as elves and unicorns, created by British artist Anne Stokes. On March 9, 2020, when the federal government was telling America that “we are close to a vaccine” and “who really knows” how bad COVID-19 may be, Ask Art Agency became a Plaintiff as lawyers filed a Verified Complaint and sought an emergency temporary restraining order and preliminary injunction. Just days later, the World Health Organization declared the virus a “pandemic,” and President Trump declared a National State of Emergency.

At the time of the filing, to warrant such immediate, urgent relief, counsel for the plaintiff contended its client’s relief was “irreparable” and “may not be fully compensable in money damages. See Art Ask Agency v. The Individuals, Corporations, et al., Case No. 20-cv-1666 (N.D. Ill. March 10, 2020) Dckt. 12, p. 8. Counsel cited binding authority from the United States Court of Appeals for the Seventh Circuit:

“‘The most corrosive and irreparable harm attributable to trademark infringement is the inability of the victim to control the nature and quality of the defendants’ goods.’ Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1092 (7th Cir. 1988). As such, monetary damages are likely to be inadequate compensation for such harm. Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1026 (7th Cir. 1979).”


In the interim, on March 16, 2020, Chief Judge Rebecca R. Pallmeyer, issued an Amended General Order, providing that deadlines in all civil cases were extended by three weeks (which is likely to be further amended). Acting under the guidance of the General Order, U.S. Dist. Ct. Judge Steven C. Seeger, to whom the case was assigned, issued a minute entry ORDER essentially staying the case through April 17. Id. at Dckt. 29 (March 18, 2020). The Court added: “[n]eedless to say, that date may change as the public health situation continues to evolve. Parties should continue to make progress in their cases when possible, but in a manner that is consistent with public health and safety.” Id. The Court also thanked the “parties and their counsel for their patience and understanding during this difficult time.” Id.

Plaintiff, however, was not as patient and understanding as the Court expected; and, counsel continued to press for an ex parte hearing on its Motion for Temporary Restraining Order. Counsel even sent a proposed entry requesting Judge Seeger, or any emergency judge of the district, to enter it on their client’s behalf. Judge Seeger had apparently had enough. The Court issued an Order denying the temporary restraining order scolding counsel for submitting a proposed order that “seems insensitive to others in the current environment.” Id. at Dckt. 31. The Court added:

“Simply put, trademark infringement is an important consideration, but so is the strain that the rest of country is facing, too. It is important to keep in perspective the costs and benefits of forcing everyone to drop what they’re doing to stop the sale of knock-off unicorn products, in the midst of a pandemic. Without a showing of immediate, real-world harm, this Court cannot impose significant demands on third parties in the current environment.”

Id. This is not to suggest at all that Judge Seeger’s order was absent sound reasoning. He denied the motion without prejudice to re-filing, ostensibly when the health crisis is abated somehow. He reasoned:

“Injunctive relief is an “extraordinary remedy,” and it is “not granted routinely.” 11A Charles Alan Wright & Arthur Miller, Federal Practice and Procedure § 2942 (3d ed. 2019). “Perhaps the most significant single component in the judicial decision whether to exercise equity jurisdiction and grant permanent injunctive relief is the court’s discretion.” Id. It is a fact-specific inquiry, and “depends on the circumstances of each case.” Id. Here, Plaintiff makes next to no showing that it will suffer irreparable harm unless this Court issues emergency relief. The gist of the motion is that Plaintiff will suffer harm from the sale (and the offer for sale) of counterfeit unicorn products on the internet. But Plaintiff gives this Court no information about the anticipated loss of sales. Not even an estimate. Plaintiff doesn’t even tell this Court anything about its own sales, let alone anything about the volume of sales that it will lose without immediate Court action. Maybe the loss of sales is de minimus, or maybe not. But the point is that Plaintiff has made no such showing.”

Id. Nonetheless, the so-called “Unicorn Order” was picked up by news outlets and the internet, not for the legal reasoning, but as example of how lawyers need to stand down on silly disputes, and shed their “insensitive nature,” when the world is facing a health crisis not seen in 100 years. Perhaps this was not Judge Seeger’s intention, to embarrass members of the Bar publicly, but it was certainly a result.

Consider also the immediate, emergency action by S.D. Ohio (Cincinnati) Judge Michael Barrett. Ohio’s medical director had instructed all medical facilities to cease performing abortions for women seeking them as such was an “elective surgery” that was unnecessary when the State needs to preserve supplies of personal protective equipment (PPE) for healthcare workers fighting COVID-19. Planned Parenthood and the Ohio ACLU had previously obtained a temporary restraining order to enjoin Ohio’s new “heartbeat law,” which is currently under appellate review. Given the actions of the State Medical Director, Defendants sought to stay the implementation of an order denying a stay of his previous TRO since abortions of any kind should not be performed as elective surgery.

Judge Barrett, and his staff, carefully considered the various filings and arguments of counsel, conducted multiple telephonic hearings with counsel, and issued an order denying the stay. Preterm Cleveland v. Attorney General of Ohio, 1:19-cv-00360 Dckt. 52 (April 2, 2020).” If a healthcare provider determines, on a case-by-case basis, that the surgical procedure is medically indicated and cannot be delayed, based on the timing of pre-viability or other medical conditions said procedure is determined legally essential to preserve a woman’s right to constitutionally protected access to abortions.” Id. at p. 2, PAGEID #1022. Judge Barrett rejected the notion that a critical shortage of PPE’s could subject healthcare workers to potentially fatal risk. He added, “under a rational reading of the Temporary Restraining Order, nothing in it permits a blanket ‘on-demand provision of elective abortions,’ … and Plaintiffs may not perform surgical abortions if they can induce the same abortion medicinally or perform abortions that can be delayed without jeopardizing the mother’s health, life, or ability to exercise her Fourteenth Amendment right to a pre-viability abortion.” Id. at p. 3, PAGEID #1023.

Of course, Judge Barrett’s Order angered religious groups who directed their attention to the evil lawyers allegedly prioritizing abortions over healthcare workers. A predictable, but not necessarily avoidable consequence.

The important take away is that judges – just like lawyers – need to recognize the importance of access to the Court and show respect for both the Constitution and those who serve to uphold it. Judge Barrett could have side-stepped an important Fourteenth Amendment case by blaming it on the COVID-19 outbreak. As a champion of justice, he did not. Judge Seeger, on the other hand, ostensibly side-stepped the Unicorn Plaintiff’s perceived importance of its rights while, perhaps unnecessarily, chastising counsel and fomenting public outrage against lawyers. There is a happy balance achievable if we all do our part.

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