In Re Lorillard Tobacco Company

decision falls short of the prison’s relationship reasonable test. sum, response the administrators’ temporary

was not unreasonable. was a fix that I believe was within the discretion prison impose given officials to the na- precipitated ture of the incidents that situations, emergency and the need to operations maintain critical facility. The critical work list was terminated once searched, facility had been an investi- conducted,

gation ap- had been and order peared to been Beyond have restored.

this, “to guess we are not second the de- prison management.” Bradley

tails of Hall, (9th Cir.1995). I

Accordingly, conclude that the critical lists, race-based, although workers’ were reasonably government’s related to the le-

gitimate in prison safety. interest I would therefore affirm on equal protec- Walker’s tion claim.

In re LORILLARD TOBACCO

COMPANY, Plaintiff-

Appellant. No. 03-16553. R. Bailey, Merrill, John David J. Appeals, United States Court of Dickey, Joshua M. Law Offices of John R. Ninth Circuit. Bailey, NV, Vegas, Las plaintiff- for the appellant. Argued and Submitted Jan.

Filed June WALLACE, McKEOWN,

Before: CALLAHAN, Judges. Circuit court de- The district possession. Doe’s

McKEOWN, Judge: Circuit the motion. nied the district This case arises Tobacco Com of Lorillard denial court’s II. APPELLATE JURISDICTION order parte an ex application pany’s ciga counterfeit purportedly seize argu- Lorillard’s Before we entertain timely appeal, Upon rettes. merits, juris- we must have on the ments a novel confronted with find ourselves rule, general appeal. over the As diction date, To jurisdiction. appellate issue “final jurisdiction is limited to question faced the court has one district courts of Unit- decisions of the order authorized a seizure § Recogniz- ed States.” 28 U.S.C. 1116(d), law, § trademark a case where the dis- ing that this is not an interloc injunction, and whether is an on litigation “ends the ruling trict court’s ap is thus denying seizure utory order nothing for the court merits and leaves 1292(a)(1). under 28 U.S.C. pealable v. judgment,” Catlin to do but execute White, v. See Vuitton 229, 233, States, S.Ct. United Cir.1991) (3d jurisdic (holding appellate (1945), argues Lorillard 89 L.Ed. 911 analysis of the lan proper). Careful 1292(a)(1) allows us to that 28 U.S.C. history of the stat legislative guage and court’s from the district decide us to the authorizes seizure leads ute that disagree. order. We the district Because opposite conclusion. 1292(a)(1) vests the courts Section parte an ex of a motion for court’s denial jurisdiction “appeals over appeals with automatically neither an seizure order is [ijnterlocutory of the dis from ... orders of an literal refusal appealable ... grant courts of the United States trict injunc of ultimate practical denial nor modifying, refusing or dis continuing, ing, relief, American tive see Carson refusing to dissolve solving injunctions, or 79, 83-84, Brands, Inc., injunctions.” The touchstone modify (1981), we lack If the injunction order. is an to consider Lorillard’s “in order is an ex denial of Lor- the district court’s junction,” I. BACKGROUND under the umbrella illard’s motion falls as of statute, thus is manufac- this Company Tobacco Lorillard Corp., Atika v. Sealaska right. See Shee registered trade- and holds several tures (9th Cir.1994) (holding cigarettes. Newport associated with marks for an denying Doe,1 that an order operator of a John Lorillard sued and de on injunction is reviewable store, federal trademark retail Nevada ap- any further test for clining impose §§ 1114 and 15 U.S.C. violations under “therefore look must pealability). We that Doe sold alleging [whether] us ask the statute before Newport trademarks. bearing counterfeit intended” the pursu- Congress sought Lorillard 1116(d)(1) injunction. Almendarez- to be an to seize and ant to 15 U.S.C. 224, 228, States, 523 U.S. Torres v. United and other evi- impound cigarette packages (1998). 1219, 140 L.Ed.2d 350 to be counterfeiting believed dence of case, the defen- prejudice Lorillard’s could proceedings so far have been 1. All publication designated as "John Doe” "Doe.” under seal. Because dant is and filed stage arguably identity at this defendant’s 1116(d)(1)(A). EX PARTE A. THE SEIZURE STAT- Under provision, a district court issue an ex UTE parte seizure order in alleging civil actions begin our with the text We infringement that involves the 1116(d)(1)(A),2 § of 15 the statute U.S.C. use of a counterfeit mark. U.S.C. grant federal courts to authorizes § 1114(“Any person who shall ... use parte seizure orders:3 any commerce ... ... counterfeit of a registered mark shall liable in a In action arising the case of a civil registrant civil action for the reme- 1114(l)(a) § (creating right U.S.C. [15 dies provided.”). hereinafter infringe- to civil remedies for trademark statutory The reference “granting] to ment) respect ... with to a ] violation (a) an order under subsection of this sec- using that consists of a counterfeit mark 1116(a). § tion” refers to 15 U.S.C. Sec- ..., may, upon parte appli- the court 1116(a) tion vests federal district courts cation, grant an order under subsection “power grant injunctions” with the to and (a) pursuant of this section to this sub- power enforce”[a]ny injunction such providing section the seizure of granted upon hearing, notice to the after goods and counterfeit marks involved in 1116(a) (empha- defendant.” involving [a violation use of counterfeit added). “injunction” sis The language in and the means of making

marks] such (a) only subsection is the possible source of marks, and records documenting the support argument the statute for the manufacture, sale, receipt of things (d) the subsection seizure order is an Vuitton, involved in such violation. injunction.4 See 945 F.2d at 572 structure, matter, "language, subject 2. The appeal grant of the of a seizure order was not context, history” are all "factors that proper under 28 U.S.C. because typically help ... illuminate[a statute's] text.” appellant failed to meet its burden of Almendarez-Torres, 523 U.S. at 118 S.Ct. satisfying the Second Circuit's additional test undertaking statutory analysis, our appealability). we of first turn to course the text of the See, States, e.g., statute. v. Castillo United 4.It is true that the Third Circuit has addition 120, 124, ally suggested that because section 1116 is (2000) (looking first to "the statute’s literal "Injunctive-relief,” entitled the seizure order Here, language”). particularly important it is (d) described in subsection must be a form of Supreme guidance to heed the Court's Vuitton, "injunctive relief.” 945 F.2d at 572. we should look not to the text of the We find this indiscriminate adherence to the statute but to the overall structure as well. unpersuasive. Following section title ("The Id. statute's structure clarifies am logic, Vuitton subjects court's the other ad biguity language.”). inherent in its literal procedural dressed in such as the Atika, Following compelled Shee we are (b) requirements described subsection take on the of whether the ("Transfer copies pa of certified of court directly meaning "fall[s] within the of” 28 pers”) (c) ("Notice and subsection to Di 1292(a)(1). 39 F.3d at 249. The rector”), injunctive would also be relief. law of this circuit does not allow us to avoid generally Courts have eschewed reliance on deciding seizure order is an "in legislative labels to the exclusion of the statu junction” by denying jurisdiction on other See, tory language. e.g., Bhd. R.R. Train Atika, id., grounds. Compare Shee with Gen R.R., 519, 528, men v. Balt. & Ohio Corp. eral Motors Corp., Gibson Chem. & Oil (1947) ("Th[e] 91 L.Ed. 1646 (2d Cir.1986) (declining heading statutory a[of is but a short section] equivalences” "resolve this contest of be general subject hand reference to the matter parties tween the over whether the seizure involved ... [and is] not meant to take the order is more like an ment, or an attach text.”). place provisions of the detailed holding over the 1116(d) B. HISTORY states LEGISLATIVE (reasoning that because an sei- may “grant [ex a court if the cross-reference to Even we viewed (a),” under subsection pow- zure] (a) introducing an element of subsection (a) from subsection so must arise er to do statute, ambiguity into the which added)). (emphasis doubt, history legislative of 15 U.S.C. clarifies that did (d) view, itself creates In our subsection injunction.5 intend to create of the court power Counter- Report House on the Trademark “under subsec- The words seizure order. explicit: “A feiting Act of 1984 is (a)” simply specify were included injunction, gen- not the same as an to civil apply intended to power is that this acting erally the defendant from restrains trademark viola- equity proceedings 98-997, way.” H.R.Rep. in a certain No. was not meant tions—and (1984).6 at 15 grant parte an ex the court to to enable accord, explain- is in Report The Senate circumstances. under other seizure order hearing after the ing that “at the held of the relation- careful consideration After seizure, may custody ... the court retain (a) (d), we and ship subsections between if goods, plaintiff even [seized] single statuto- that this persuaded are not requirement other fails to meet some ” transform an ex can ry cross-reference injunction .... issuance anof S.Rep. injunction. appealable into an parte 98-526, (1984), Cong. at U.S. Code No. (emphasis & Admin.News at superficial there be some Although added). pointedly distin- report to the Vuitton court’s interpreta- and the the seizure order guishes between results. tion, yields awkward approach the sei- injunction, contemplates (a) enforcement authorizes Subsection court decides zure order issues before the following notice and a injunctions issued injunction proper. If the definition, excludes hearing which, injunction, the itself an — order were Thus, in order seizure orders. little would make sense. language italicized is a sub- that the seizure order conclude history legislative Finally, although the (a) to at- injunction, we would have section procedures for ex reveals that also illogical intent to Congress tribute largely derived from orders “are in- unenforceable empower courts rule 65 of the requirements of existing to take Because we decline junctions. Procedure,” Joint of Civil Federal Rules legislative endeav- a dim view such Counterfeiting Trademark on Statement or, plain language that the we conclude H12,- Cong. H12,076, Rec. Legislation, 130 argu- best, is, support (1984), § 1116 does not characteristic congressional order is an intent. divining ment that neutral injune- both governs Rule injunction. statute, authority 'mandato- courts have the "Only ambiguity in the if an exists results, require does injunctions, construction the defendant ry' or when an absurd legislative statute’s his this court refer to the way, be- the Committee act in a certain City tory.” Coll. v. San Jose Christian proper- of the defendant's lieves that seizures (9th Hill, Cir. Morgan 360 F.3d opportu- ty, giving the defendant without 2004). heard, present appreciably different nity to be 98-997, H.R.Rep. at 15-16. No. issues.” report goes to elaborate the differ- on 6. The two remedies: “While ences between the orders, temporary restraining omitted); tions and tion marks see also Gon v. First Co., (9th generally latter are not State Ins. Cir. 1989).7 65(b); right. Religious Fed.R.Civ.P. Scott, 1306, 1308 Tech. Ctr. The ex seizure order misses the Cir.1989). Adaptation proce of Rule 65’s injunction. mark on all three criteria of an dures does somehow transform the ex Instead, It is not party.” “directed to a appealable injunction. into an parte order the order action commands from a federal or local law enforcement officer. the House together, Taken and Senate 1116(d)(9). It is not enforceable Reports indicate that intended to 1116(a) by contempt. See 15 U.S.C. something generis create sui not an —and (permitting contempt proceedings to en- it enacted 15 U.S.C. —when only injunctions force “granted upon hear- 1116(d). defendant”).8 ing, after notice to the And C. THE NATURE OF AN “INJUNC- finally, it protect does not “the substantive

TION” sought by plaintiff] in [the more than [temporary] fashion.” Orange County, 52 Although language of 15 U.S.C. F.3d at 825. § legislative history plainly 1116 and its Congress show that intended to distin Numerous explained courts have See, guish prong greater the ex seizure order from last an detail. e.g., Giuliani, injunction, Henrietta D. 176, 182 it is useful to consider 246 (2d Cir.2001) (“To qualify ‘injunction’ seizure order nevertheless bears the as an 1292(a)(1), under injunction. indicia of a target an The of our district court order grant ultimate, must inquiry part least of the is well-defined this circuit’s coercive sought by relief the moving par case law. “The three fundamental charac Prods., ty.”); Santana Compres Inc. v. teristics of an are that it is (l)‘directed Inc., (3d (2) Polymers, 152, sion 8 F.3d party,’ to a ‘enforceable Cir.1993) (“[T]o injunctive contempt,’ purposes (3)’designed and to accord or 1292, of section the order protect must some or all of the substantive re deny party a the ultimate sought by relief sought by complaint lief a in more than it.”). The of Judge Friendly words [temporary] are Orange County, fashion.” Cal. particularly illuminating: Airport Hongkong Hotel Assocs. v. & 821, Shanghai Banking Corp., 52 F.3d think We it ... better to continue to (9th Cir.1995) (quoting 16 Charles Alan read relating injunc- as to ah, Wright et Federal Practice and Proce tions which give or aid in giving some or (1977)) (bracketed dure at 29 word all of the sought by substantive relief changed “preliminary” to “tempo ... complaint and not as including re- rary” to reflect the edition of Federal straints or directions orders concern- Procedure; Practice and internal quota- ing the conduct of the parties or their express 7. We no view toas whether these satisfied before an immediate ... [can necessary characteristics are sufficient to de taken”). be] appealable injunction. fine an See Calderon v. Court, United States Dist. 137 F.3d is, course, only logical contempt (commenting n. Cir. that for an against party against unavailable whom a explicitly injunction, order "not labeled an it seizure order is issued without notice because arguable requirements that the of Carson v. party order does not direct the to either Brands, Inc., American take or refrain from action. (1981), [must be] best, procedural At attributes is- counsel, substantive unrelated a tempo- trial more akin to those of action, awaiting while order in the sues injunction. not an provides rary restraining a construction .... [S]uch But, analog of that language imperfection of the stat- even the fit with the better consider- policy the difference between ... and with the underscores ute injunctive to create this order and relief. which led seizure ations judgment final operate to the federal within strict exception example, For both showing temporal require rule. limits and- injury.” Com- irreparable and “immediate Koons, Corp. v. Prods. Int’l (iv) 1116(d)(4)(B)(i), pare (2d Cir.1963). 406-07 65(b). 1116(d)(10) with Fed.R.Civ.P. is to purpose however, re- temporary Importantly, necessary bring the evidence preserve 'an in- not straining order is classified justice. counterfeiters nor, long-standing prece- junction; (“The H12,080 Rec. Cong. dent, generally subject is it faith thwart bad th[e] is intended Ctr., at 1308. Religious Tech. transfer[ring] “destroying] tactic” of Thus, the seizure characterizing even or- day in when a merchandise counterfeit temporary a variation on a restrain- der as horizon.”). more It is thus is on the court it bring within ing order would “concerning the conduct an order like 1292(a)(1).9 §of provisions appealability awaiting trial” than ... while parties any “of the substantive giving one that the ex Accordingly, we hold complaint.” Int’l Prods. by a sought by 15 U.S.C. order authorized Indeed, common at 406. Corp., 325 F.2d injunction, is not order does reveals that the seizure sense not auto- of the order is therefore denial any substantive relief party afford not under 28 U.S.C. matically appealable law. The may it be entitled 1292(a)(1). in” interest proprietary “has no plaintiff 98-997, at H.R.Rep. No. goods. seized the DOC- EFFECT” D. “PRACTICAL goods no possession The court’s TRINE plaintiffs the vindicates more order the court’s Deciding that district own the counterfeiter’s than would rights injunction does literally refuse an not did destruction; both ac- faith tactic” of “bad inquiry. prac- A jurisdictional not end our mar- goods off the keep the defective tions 1292(a)(1) appro- is §of construction tical possession give court’s Nor does the ket. limited where in the circumstances priate on further judicial prohibition any rise the district “interlocutory the legal has no counterfeiting. plaintiff serious, irrep- perhaps a have might court possess court the having in the interest arable, it can be “effec- consequence,” and simply pro- property; defendant’s ap- immediate challenged only tually pend- in integrity of evidence the the tects 83-84, Carson, peal.” action. ing civil an issue that should judgment and thus de- Curiously, the Third Circuit’s Vuitton, subject granted to immediate pends on whether the order may approach Although this parte at 573-74. grant of an ex F.2d the denied. likens discuss in the next restraining as we temporary have surface a order order, section, contrast, seriously logic undermine would appealable. In which is not exception and the narrow both the final order order as the denial of a seizure it views appeals. escape prior to final review that would matter (internal quotation marks omit- appellate level, the the district court ex- ted). test, Applying this we look to pressed the concern with the timeliness of the “1) facts of Lorillard’s case to determine if application because four weeks had al- practical the order has the effect of enter- ready passed since the were 2) ing refusing injunction; to enter an purchased. By the time argu- we heard ‘serious, perhaps irreparable the has ment, even with an expedited appeal, the consequences’; immediate evidence was almost seven months old. only way challenge the order.” Or. jurisdictional undertaking this analy Council, Kantor, Inc. v. Natural Res. sis, we observe our result accords (9th Cir.1996). Lorillard has strong with policy concerns favor of that its claim shown satisfies as- respecting “integrity congres pect test. the Carson As a conse- policy sional against piecemeal appeals.” quence, does not allow us to Switzerland Cheese Ass’n. v. E. Horne’s jurisdiction. appellate exercise Mkt., Inc., 23, 25, Although recognize the value and (1966). Indeed, L.Ed.2d 23 the denial of a importance parte preserv- of ex orders in motion for an seizure order raises ing evidence acknowledge and we very spectre the final judgment rule trademark holders view the potential de- seeks to Appeals eliminate. of such deni irreparable, struction of evidence as als early occur so in a they case that reality denial of an ex likely to record, come with an anemic as in order is not tantamount to refusing to this case. Because the nature of the ex injunction. Indeed, enter an in the face of parte motion is to catch the defendant a denial of an ex surprise, only plaintiff will have had applicant proceed still with a tempo- the opportunity to present its side of the rary restraining order with notice and/or case. These circumstances add up to en injunction. (Here, sure a one-sided and ill-developed record fact, Lorillard filed a combined motion before appellate court.10 Without for ex seizure and temporary re- full record and without the benefit of an order.) straining The trademark holder is adversarial proceeding, court not forced proceed empty to handed and in particularly would be poor position to without infringing goods, presum- pass propriety on the of the district court’s ably it had sufficient evidence to advance Thus, exercise of discretion. it is particu in good faith its initial ex parte application. larly true this context applying matter, practical As a the trademark loose construction of only “en plaintiff likely is more to preserva- secure courages juris unsuccessful of assertions by tion of the evidence proceeding diction, wasting with precious appellate re options sources, immediate before the district court burdening parties, adverse rather than awaiting lengthy the appeal perhaps diverting effort expeditious from process involving docketing, briefing, argu- continuation of trial court proceedings.” ment, and the issuance of an opinion from 16 Federal Practice and Procedure a circuit court. Before 3922.1, this case reached at 94. suggested Petrucci, It has Casenote, been that ex

10. tiffs.” Michael L. Trade may susceptible by orders plain- to abuse mark Law: Vuitton v. White and the Ex Parte judge, tiffs deciding because "a when a re- Order Litiga in Trademark Seizure Counterfeit quest End, for an ex largely is Dayton tion: The Trend Must 18 U. limited put plain- (1992). to the evidence forth L.Rev. 231-32 & n. 136 said, the district fully or- dissent. With of the seizure purpose Because that certain evidence clearly to ensure not abuse its discretion or court did der trial, regard to with it is wise makes it to for an denying err in Lorillard’s motion into the intrusion potential caution the Therefore, I would parte seizure order. judge’s tradition- district court heart of the affirm. that it is somehow suggest To al domain. motion deny the ex

unfair to I. AND PROCEDUR- BACKGROUND of immediate review the benefit without AL HISTORY1 court. The role of the district impugns the mech- extraordinary is an of counterfeit peddlers Before allegedly seizure of pre-notice for nearly anism immune to the merchandise were The statute sets out infringing goods. civil remedies available then-conventional applicant If cannot standards. specific victims in- infringement; standards, immediate seizure meet those deed,”[t]he ... who pirate [was] served remedy pre- ultimate but the foreclosed at a hear- appear with a civil summons the con- lightly do not take served. We ing [would] on a may upon evaporate that evidence cern quickly dispose of ex- disappear either But notice is the norm party. notice to a inventory.” McCarthy, 4 J. Thomas isting court has other in our courts. The district McCarthy on Trademarks Unfair disappearing to address available vehicles 25:10, at 25-19 ed. Competition evidence, spoliation including sanctions (“McCarthy”). Recognizing this view, In it is better our of evidence.11 passed special legisla- problem, Congress interfering refrain from with here to now codified at 15 U.S.C. advancing orders case judge’s “district 1116(d), enabling judges cumbersome method of trial orders to confíscate counter- parte seizure stage approached before he has appeal providing first notice goods feit without Cheese, adjudication.” Switzerland bootlegger. McCarthy, purported S,Ct. at 25 n. 30:36, §§ at 30-70 to 30-77. 30:34— Accordingly, appeal is DISMISSED just moved such an order Lorillard jurisdiction. for lack of from Doe packages to seize CALLAHAN, dissenting: Judge, Circuit allegedly phony Newport bear motion, Lor- support its trademark. jurisdic- this court has Convinced sworn declaration of presented illard respect- I tion to hear Lorillard’s Moreover, simply be- none. opinion potential where there is express We no on other dispos- may Lorillard have had treat "a remedies cause we notice mandamus, al, Loril- as a writ -of which unappealable such ... as a an otherwise did not of us. See v. Pac. lard Cordoza we petition” does mean must. mandamus Corp., 320 F.3d States Steel collapse we should Id. Nor does it mean that Cir.2003) (mandamus extraordinary is "an jurisdiction concepts the of may only remedy be obtained to confine that jurisdiction and mandamus exercise of its court to a lawful an inferior under 28 U.S.C. 1651. compel jurisdiction it to exer- prescribed so”) authority duty when it is its to do cise its opinion majority does not 1. Whereas the omitted). (internal quotation The dis- marks conduct of the I must reach the merits holding suggestion opt sent’s for - analysis, including a independent thor- an jurisdiction because we would have exists background procedur- ough and of the review odd one the merits on mandamus is an reach history. al statutory of indeed. Jurisdiction is matter authorization; we cannot create Hill, regional manager years. sales who Moring explained Curtis in his declaration employed by company the for had that he had quality management directed been years. Having closely fifteen worked with packaging many years, and for and that he quality programs, Lorillard’s assurance possessed “substantial knowledge of Loril- specialized Hill that he had stated knowl- lard’s products, including packaging.” the edge employer’s packaging. Hill, of his He also Like Moring elaborated that he had pack- attested that he had examined two inspected packages Newport two ciga- ages Newport cigarettes Doe, contained in rettes obtained from and he had not- and, purchased cartons from Doe based on ed the discrepancies same in measure- certain packaging measurements and other ments and other packaging Moring traits. traits,2 packages concluded that these were virtually added that “it would be impossi- counterfeit. anyone ble for smuggle genuine New- port cigarettes out of the manufacturing The district court found Hill’s declara- plant.” inadequate purposes of supporting Seemingly unimpressed by and issued a supplemental stating: showing, written order the district court found: Although Hill’s observations be in- products, they

dicative of counterfeit real are difference from the evi- satisfy not sufficient to the dence which presented Court was earlier is the subject cigarettes qualifications the are company counterfeit. official appear inspected does not that there who packages has been the two of ciga- any analysis expert by anyone conducted rettes. There has still been nothing qualified who in packaging inspection is well more than a visual of two quality appear cigarette control nor does it packs there and there has been no any analysis performed inspection has been upon any the contents of cigarettes cigarette packs the actual that were contained or cartons. It appears acquired significant within the three cartons there is a amount of the Defendant’s establishment. Given evidence that has not inspected been extraordinary nature of the cigarettes would include: Court, themselves, being requested including to, from the some but not limited greater expert opinion analysis than the tobacco within cigarettes, inspection packs wrapping visual of two on cigarettes, the filters of cigarettes by cigarettes manager sales will need packaging other presented. be materials which normally would cigarette found within a pack. deny Rather than Lorillard’s motion out- right, however, granted the district court The district court went on to elaborate leave to supplement Lorillard, the evidence. One despite having “the re- later, week responded by Lorillard submit- sources to conduct the kind of ting the declaration Moring, of Tom one of reasonably that would establish that the company’s presidents vice who had in question counterfeit,” had been employed thirty-three there “only superficial made showing.” Ulti- 2. Hill’s provided a divulged declaration more detailed cifics are not here. To do otherwise account packaging of the measurements and prejudice by suggesting Lorillard's case traits, papers by as did by other filed Lorillard alleged methods counterfeiters motion, support of its but these materials improve could their efforts to elude detection were filed Accordingly, spe- prosecution. seal. the or thwart 1116(d). by 15 U.S.C. denied Loril- afforded court mately, the district 30:36, (quoting at from parte McCarthy, seizure 30-77 for an application lard’s notice of timely Explanatory filed a State- Lorillard Joint order and Senate-House Counterfeiting Legis- on Trademark appeal. ment lation). majority Additionally, opinion the II. DISCUSSION quantity appellate the re- overestimates reasoning the Third Circuit’s Following that be conserved its hold- will sources (3d White, 945 F.2d v. in Vuitton ing. “Vuitton”), 1991) (hereinafter, Cir. jurisdiction to appellate have court would IN- 1. CONGRESS PRESUMABLY merits of Lorillard’s reach the APPEAL TENDED A DIRECT below, Nevertheless, explained for reasons failed demonstrate Lorillard has majority, the the Third As noted court its discretion the district abused the denial of a motion Circuit has held that of law. on a clear error based its decision is a relief under 15 U.S.C. for at 574. See id. immediately per that is decision 1292(a)(1). Vuitton, F.2d 28 U.S.C. IS A. APPELLATE JURISDICTION subsequently Circuit 571-74. The Sixth NOT LACKING conclusion. basically the same reached jurisdic- court lacks Concluding that this v. Safety Systems, Depi Tech. Inc. First of a (6th Cir.1993) (here tion to review denial net, majority ”). inafter, “Depinet accurately distinctions describes opinion on certain differences Dwelling technical to perceive familiar trees fails between but injunctions and ex between majority “that agree I with the the forest. orders, majority not find the rea- does something sui Congress intended create soning of Third and Sixth Circuits it ... when enacted generis point disagree. persuasive. On this 1116(d).” metaphorically, Speaking rationally Third Circuit surmised The however, majority’s focus- examination denying a motion for an degree much on the to which es too akin, identical, to refus- order is albeit differ from on ex seizure orders leafs injunction, and the ing Sixth See, e.g., foliage injunctions. found on holding. correctly followed Circuit (3d Greene, Sims motion for an ex the denial of a true that Cir.1947) terminology and (disregarding ways in some parte seizure differs restraining order as treating temporary injunction, of a from the denial traditional of se- purposes much a definitive just but the result jurisdiction). curing appellate moving party. to the defeat majority’s also overlooks judges circuit Beyond opinions whatever well-being ecological forest’s whether the between may hold about the similarities certain trees from by preventing served by 15 injunctive afforded re- growing toward the sun 1116(d), paramount consider- sight U.S.C. opinion loses Specifically, view. See, intent. Congressional here is ation indicating Congres- pertinent factors PSA, Inc., 871, 874 e.g., Price v. appeals immediate permit intent to sional (9th Cir.1987) (“Such appropri- appeals instances, too it discounts in these not intend because did ate drastically impact the substantial review....”). There is suffi- preclude of the relief being deprived stems 992 that Congress

dent to find meant to 2. THE basis COLLATERAL ORDER AND THE DOCTRINE DEATH from the denial of a allow direct KNELL DOCTRINE A SUPPORT order, motion for an ex even DIRECT APPEAL IN THIS CASE precisely if label 15 it did U.S.C. 1116(d) injunctive § relief. Despite conclusion, the Third Circuit’s analysis explanation, without or that refus published our sister circuits their Since ing to seizure order is respective Depi decisions in Vuitton and Vuitton, order, not a final see 945 net, has twice amended 15 571, arguments reasonable can be made 1116(d) § ways in that did not alter U.S.C. appealable such decisions are holding opinions. of those See Pub.L. § example, 1291. For according 105-225, 5(b), 1499 (Aug. No. Stat. doctrine, to the collateral order some deci 107-273, 12, 1998); 13207(b); Pub.L. sions that do not litigation terminate the 2002). (Nov. 2, Likewise, in Stat.1908 directly are nonetheless appealable as final 1992, Congress amended 28 U.S.C. conclusive, they orders —if resolve im reduce, enlarge, rather than the list of portant questions separate from the mer non-final that could appeal decisions be its, and effectively cannot be reviewed questioning ed—and it did so without Vuit judgment. from the final Cunning See ton’s or determination. See 198, County, ham Hamilton 527 U.S. (Oct. 102-1006, H.R.Rep. pt. p. No. 1 at 204, 1915, 3, purpose (stating (1999). that the expand appealabil amendment was “to The deny district court’s decision to Lor- determinations”). ity interlocutory of 1116(d) illard relief under 15 U.S.C. is Consequently, may presume that Con chops conclusive insofar as it down Loril gress adopt was aware of and intended to ability lard’s to seize the allegedly counter interpretation. the Vuitton court’s Fils, goods. feit See Matter Vuitton et of Mgmt.,

Lindahl v. Pers. 470 U.S. S.A., (2d 1, Cir.1979) Office of 606 F.2d 2 and 5 1620, and n. 782-83 S.Ct. 84 (describing how notice to counterfeiters (1985) (discussing presump L.Ed.2d 674 processes justice).3 frustrates the Congressional finding tions intent denial of an appropriate otherwise ex parte jurisdiction); Dep’t. Palila v. Hawaii seizure order question séparate is vital Res., Land & Natural because, from the merits4 absent such an (9th Cir.1988) (same). n. 6 likely the merits of the case are not wit, ordering property 3. While infringement; process- the seizure is a both step, especially weigh goods somewhat drastic when no es pack- likelihood of the prior aging given party question being notice is to the from whom counterfeit. But confiscated, property is there are whether relief under 15 built-in U.S.C. is protections remedy ultimately determining warranted is less like to curb abuse and occurred, infringement unjust. harm when such actions turn out to be has and more 1116(d)(4)(A) deciding party like (requiring par- See 15 whether a entitled proceed seeking sacrificing ties in the action without orders first post right. adequate security payment some crucial Cohen v. for the Cf. Beneficial 541, 545-47, damages Corp., Indus. Loan wrongful result from a seizure, (1949) merely actually (holding 93 L.Ed. attempted it executed). require plaintiff the denial of a motion to post security proceeding bond before Admittedly, overlap litigation there between the with under the collat- doctrine); merits of a for an ex Ogden Corp., eral order FDIC v. (1st Cir.2000) order and (holding the merits of an overall action for 459-60 below, the district court explained As By the same at all. See id. reached to be in case— not commit a clear error token, 15 U.S.C. did denying final after a review not have found more precludes effective Lorillard would so judgment. taking the mandamus route. The success however, deciding whether to point, is

Moreover, enacting 15 U.S.C. in cases like issue a writ of mandamus judicial 1116(d), created a not appeal a direct now is this —where motion of remedy. The denial circuit, prospect in this and the of available judi- request effectively terminated subsequent appeal was never realistic'—(cid:127) a any Lorillard without cial relief left of the merits. requires evaluation appellate than re- recourse other adequate jurisdiction does not denying Ergo, holding a motion To the extent view. puts §§ 1291 and exist under 28 U.S.C. for an 1292(a)(1) of the ax to an ac- final-swing Loril- proverbial plaintiffs like forces a infringement, such for trademark petitions to file mandamus lard —which immediately should be decision require any to reach the merits will us knell doctrine. See the death under Obviously, an outcome will event. such al., Moore’s Federal Moore et James Wm. re- preserve appellate not our valuable 202.09, to 202- at 202-40.10 Practice sources.5 (3d ed.2003). 40.12 sum, request a for an granting while provide not seizure order A THE APPEAL AS 3. TREATING major- parties, relief to the substantive A WRIT OF PETITION FOR denying of ity gravity underestimates the MANDAMUS tantamount a such —which jurisdic- finding toward Another avenue obtaining clear-Cutting prospect of ever discretion, exercise our tio'n be to would signifi- secondary relief. A but still Loril- to treat under 28 U.S.C. that, by reality cant consideration is petition for a writ appeal lard’s regu- matters via declining to review these Cordoza v. States mandamus. Pacific Cf. appellate re- appellate processes, lar our F.3d Cir. Corp., Steel spared not be but consumed sources will declining to ex (acknowledging but petitions for writs analyzing the merits discretion). permissi path This ercise Hence, approach the better of mandamus. available, a direct appeal ble where jurisdiction exists appellate hold that is to an inade appeal provide would subsequent merits of this to reach the the district court’s or quate remedy, and 998; see clearly erroneous. Id. der is DID COURT NOT B. THE DISTRICT S.A., Fils, et also Matter Vuitton ITS DISCRE- ERR OR ABUSE petition a mandamus (granting at 4-5 TION of an ex directing equivalent reviews a Generally, the Ninth Circuit issued a trademark seizure order to be in- case). court’s order on a district mandamus, do I nor petition for writ of order doctrine allows direct that the collateral discovery compelling appeal as a suggest we treat Lorillard’s materials). allegedly privileged production contrary, petition. I mere- On the mandamus majority's holding ly undermines note that the imply find is not to could This conserving goal appellate re- its stated sources. possible §§ wherever it is 1291 or challenge court’s decision in a a district discretion, junction control,” aging quality for abuse unless it is or or “the contents faulty cartons,” the order rests on a alleged cigarette legal premise, themselves,” in which novo cigarettes case de re “the “any other Davis, view is Rucker v. 237 packaging warranted. materials which would normally (9th Cir.2001) (en banc), be found a cigarette pack.” within grounds, Dep’t rev’d on other of Hous. In that the district court reached its Rucker, 125, 130, v. Urban Dev. decision weight based on the of the evi- (2002). dence, discretion, there was no abuse of apply should also That standard to the clearly never mind a interpreta- erroneous review of denials of ex or Cordoza, tion of applicable law. See Vuitton, Here, ders. 945 F.2d at 574. See (explaining F.3d at 998 that clear error triggered by de novo review is is something more than an abuse of discre- interpreted claim that the district court tion). in a applicable clearly law erroneous fashion. III. CONCLUSION it, As Lorillard sees the district court reasons, For foregoing respectfully I refused to seizure order disagree majority with the lack no because there was evidence that to hear I imitations, cigarettes themselves were re would reach the merits. In so I doing, gardless in packages of whether the which would find no abuse of discretion or clear they came were inauthentic. If Lorillard’s and, thus, error would affirm the district construction of the district court’s ratio denying court’s order Lorillard’s motion. sound, nale were denial of the motion would legal have been based on a clear Corp.

error. Enesco v. Price/Costco Inc., (9th Cir.1998) 1085-86

(noting repackaged goods must clear ly repackaging reveal the on the label use manufacturer’s trademark le

gitimately). court, however, The district LAING, A. Petitioner-Appellant, Trevor did not proclaim expert opinion was necessary or that required evidence was cigarettes

show that the themselves were ASHCROFT, Attorney General, John counterfeit. Respondent-Appellee. Rather, the district merely court found No. 03-56158. declarations two individuals who United States Court of Appeals, visually inspected the exterior materials of Ninth Circuit. packs two were insuffi- cient extraordinary warrant Argued and Submitted March 1116(d). contemplated by 15 U.S.C. Filed June language denying district court’s Loril- simply suggests possi- lard’s motion other

ble of counterfeiting indications that could analyzed

have been and offered to cure the i.e., shortcoming; “expert analysis con- by[someone] ducted qualified pack- well

Case Details

Case Name: In Re Lorillard Tobacco Company

Court Name: Court of Appeals for the Ninth Circuit

Date Published: Jun 7, 2004

Citation: 370 F.3d 982

Docket Number: 03-16553

Court Abbreviation: 9th Cir.