JOEL v. VARIOUS JOHN DOES, (E.D.Wis. 1980)

Citation Codes

Equivalent Citations

citation codes

Docket Number

Civ. A. No. 80-C-608.

Motions

Motion for temporary injunction : Granted

Attorney(S)

Steven E. Keane and David A. Baker, Foley Lardner, Milwaukee, Wis., Jules D. Zalon, New York City, for plaintiffs.

Judges

John W. Reynolds

Acts

Commerce And Trade — Trademarks — The Principal Register — Application For Registration; Verification
Commerce And Trade — Trademarks — General Provisions — False Designations Of Origin, False Descriptions, And Dilution Forbidden

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Smart Summary

Factual and Procedural Background

Plaintiffs Billy Joel, a commercially successful musician, and Root Beer Rags, Ltd., the exclusive licensee of Billy Joel merchandise, brought suit against unknown defendants ("John Does") who were selling unauthorized merchandise bearing Joel's name and likeness outside the Milwaukee Arena during Joel's concert on July 14, 1980. The unauthorized sales harmed Root Beer Rags, Ltd.'s sales and Joel's financial interests. Plaintiffs sought an ex parte temporary restraining order to prohibit these sales and to authorize seizure of counterfeit goods, invoking the federal Lanham Act and pendent state law claims. The court was tasked with addressing the propriety of granting injunctive relief against unidentified defendants.

Legal Issues Presented

Whether the court may issue an ex parte temporary restraining order enjoining the sale of unauthorized merchandise bearing Billy Joel's name or likeness by defendants whose identities are currently unknown.
Whether the conduct of the defendants constitutes a violation of § 43(a) of the Lanham Act and applicable Wisconsin law.
The appropriateness of the remedy sought, particularly in light of the general principle that courts lack jurisdiction to enjoin persons not properly before the court and the use of "John Doe" defendants.

Arguments of the Parties

The opinion does not contain a detailed account of the parties' legal arguments.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Hirsch v. S.C. Johnson Sons, Inc., 90 Wis.2d 379, 280 N.W.2d 129 (1979)	Wisconsin state law prohibiting unauthorized use of a person's name or likeness.	Supported the finding that defendants' conduct violated Wisconsin law in addition to federal law.
Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 111-112 (1969)	A court lacks power to issue injunctive relief against persons over whom it has no in personam jurisdiction.	Highlighted the general limitation on enjoining unidentified defendants, framing the court's concern about jurisdiction over unknown parties.
Chase National Bank v. City of Norwalk, 291 U.S. 431, 436-437 (1934)	A court cannot enjoin the conduct of the world at large.	Reinforced the principle that injunctions must be limited to parties properly before the court.
Fifty Associates v. Prudential Insurance Company, 446 F.2d 1187 (9th Cir. 1970)	Federal courts generally disfavor naming "John Doe" defendants.	Supported the court's cautious approach to enjoining unidentified defendants.
United States ex rel. Lee v. Illinois, 343 F.2d 120 (7th Cir. 1965)	Federal courts' general reluctance to proceed against unnamed defendants.	Further supported the principle limiting injunctions to known parties.

Court's Reasoning and Analysis

The court found that the defendants' unauthorized sale of merchandise bearing Billy Joel's name and likeness violated § 43(a) of the Lanham Act and Wisconsin law. However, the court acknowledged the inherent jurisdictional problem of issuing an injunction against unknown defendants, noting that courts lack authority to enjoin persons not properly before them and generally disfavor "John Doe" defendants. Despite these concerns, the court determined that the traditional prerequisites for injunctive relief were met: plaintiffs faced irreparable harm and had a strong likelihood of success on the merits. The court addressed the identity issue by ordering that copies of the summons, complaint, and restraining order be served on any persons from whom merchandise was seized, requiring them to disclose their identities to be added as parties and allowing them to contest the seizures. Plaintiffs also posted a bond to cover potential damages. The court emphasized that denying the injunction would leave plaintiffs without legal recourse against clear infringement and that courts of equity may craft novel remedies to protect parties' rights.

Holding and Implications

The court granted the plaintiffs' motion for a temporary injunctive relief.

The injunction prohibits the sale of unauthorized Billy Joel merchandise outside the concert venue and authorizes seizure of counterfeit goods, despite the defendants’ unknown identities at the time of issuance. This decision directly protects plaintiffs' property rights and allows for due process by requiring unidentified defendants to reveal themselves and contest the action. The ruling does not establish new precedent beyond the specific remedial approach adopted in this case.

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Billy JOEL and Root Beer Rags, Ltd., Plaintiffs, v. VARIOUS JOHN DOES, Jane Does and ABC Company, Defendants. Identities of defendants unknown (see decision).

DECISION AND ORDER

REYNOLDS, Chief Judge.

Plaintiffs Billy Joel and Root Beer Rags, Ltd., have moved the court for the issuance of an ex parte temporary restraining order prohibiting certain unnamed persons from selling merchandise bearing Joel's name or likeness outside the Milwaukee Arena where Joel is scheduled to appear today, July 14, 1980.

Joel is a musician who, according to the affidavits filed with the court, has enjoyed considerable commercial success over the last few years, selling millions of records and selling out concert halls throughout the country. Joel's success has spawned a curious underground industry which capitalizes upon his popularity. According to the plaintiffs, there are a number of persons who show up at Billy Joel's concerts with merchandise, usually T-shirts which bear Joel's picture and name. The merchandise is sold outside the concert halls in which Joel is performing.

Billy Joel, needless to say, has not given these entrepreneurs permission to use his name or his likeness. In fact, he has granted plaintiff Root Beer Rags, Ltd., the exclusive right to market such merchandise. Root Beer Rags, Ltd., sells Billy Joel merchandise inside the concert halls in which Joel is performing. Obviously, the presence of the unauthorized vendors outside the concert halls hurts the sales of Root Beer Rags, Ltd.'s merchandise and damages Billy Joel who receives a percentage of such sales.

Plaintiffs have asked the court to enjoin the sale of unauthorized Billy Joel merchandise and to order the seizure of the counterfeit goods. Plaintiffs invoke the federal Lanham Act, 15 U.S.C. § 1051 et seq. and various pendent state law causes of action in support of their claim.

Having reviewed the pertinent authorities, I am convinced that the defendants' conduct is proscribed by § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and by the law of Wisconsin. Section 895.50(2)(b), Wis. Stats.; Hirsch v. S.C. Johnson Sons, Inc., 90 Wis.2d 379, 280 N.W.2d 129 (1979). More troubling, however, is the propriety of the remedy sought by the plaintiffs insofar as it requires the court to enjoin the activities of persons whose identities are unknown at this time. A court does not have the power to order injunctive relief against a person over whom the court has not required in personam jurisdiction. Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 111-112, 89 S.Ct. 1562, 1570, 23 L.Ed.2d 129 (1969). A court does not have the power to enjoin the behavior of the world at large. Chase National Bank v. City of Norwalk, 291 U.S. 431, 436-437, 54 S.Ct. 475, 477, 78 L.Ed. 894 (1934). Furthermore, as a general rule, the federal courts do not favor the naming of "John Doe" defendants. Fifty Associates v. Prudential Insurance Company, 446 F.2d 1187 (9th Cir. 1970); United States ex rel. Lee v. Illinois, 343 F.2d 120 (7th Cir. 1965).

Notwithstanding the above, I am convinced that the requested injunction should issue in the present case. Plaintiffs have demonstrated that the traditional prerequisites to injunctive relief are present in that they are faced with irreparable injury if the injunction does not issue in addition to having a strong likelihood of success on the merits. The problem of the defendants' identities is met, I believe, by the fact that copies of the summons, complaint, and restraining order itself will be served on all persons from whom Billy Joel merchandise is seized on the night of the concert. These parties will be asked to reveal their names so that they can be added as parties to the lawsuit. All parties will be informed that whether or not they reveal their names they may appear in court on July 16, 1980, to contest the seizures. Plaintiffs, meanwhile, have posted a bond to cover any damages that may be incurred.

Were the injunction to be denied, plaintiffs would be without any legal means to prevent what is clearly a blatant infringement of their valid property rights. While the proposed remedy is novel, that in itself should not weigh against its adoption by this court. A court of equity is free to fashion whatever remedies will adequately protect the rights of the parties before it.

IT IS THEREFORE ORDERED that plaintiffs' motion for temporary injunctive relief is hereby granted in conformance with the attached restraining order.