15 U.S.C. § 1116 — Injunctive relief

Page 1314 TITLE 15—COMMERCE AND TRADE § 1116 1 So in original. Probably should be ‘‘manufacturer’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1998 AMENDMENT Amendment by Pub. L. 105–330 effective Oct. 30, 1998, and applicable only to any civil action filed or pro- ceeding before the United States Patent and Trade- mark Office commenced on or after such date relating to the registration of a mark, see section 201(b) of Pub. L. 105–330, set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. § 1116. Injunctive relief (a) Jurisdiction; service The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title. A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irrep- arable harm upon a finding of a violation identi- fied in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a viola- tion identified in this subsection in the case of a motion for a preliminary injunction or tem- porary restraining order. Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the de- fendant of such injunction, or such extended pe- riod as the court may direct, a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction. Any such injunction grant- ed upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such in- junction is granted anywhere in the United States where they may be found, and shall be operative and may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose ju- risdiction the defendant may be found. (b) Transfer of certified copies of court papers The said courts shall have jurisdiction to en- force said injunction, as provided in this chap- ter, as fully as if the injunction had been grant- ed by the district court in which it is sought to be enforced. The clerk of the court or judge granting the injunction shall, when required to do so by the court before which application to enforce said injunction is made, transfer with- out delay to said court a certified copy of all pa- pers on file in his office upon which said injunc- tion was granted. (c) Notice to Director It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding involving a mark reg- istered under the provisions of this chapter to give notice thereof in writing to the Director setting forth in order so far as known the names and addresses of the litigants and the desig- nating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought, and in the event any other registration be subsequently included in the action, suit, or proceeding by amendment, answer, or other pleading, the clerk shall give like notice thereof to the Director, and within one month after the judgment is entered or an appeal is taken the clerk of the court shall give notice thereof to the Director, and it shall be the duty of the Director on receipt of such no- tice forthwith to endorse the same upon the file wrapper of the said registration or registrations and to incorporate the same as a part of the con- tents of said file wrapper. (d) Civil actions arising out of use of counterfeit marks (1)(A) In the case of a civil action arising under section 1114(1)(a) of this title or section 220506 of title 36 with respect to a violation that consists of using a counterfeit mark in connec- tion with the sale, offering for sale, or distribu- tion of goods or services, the court may, upon ex parte application, grant an order under sub- section (a) of this section pursuant to this sub- section providing for the seizure of goods and counterfeit marks involved in such violation and the means of making such marks, and records documenting the manufacture, sale, or receipt of things involved in such violation. (B) As used in this subsection the term ‘‘coun- terfeit mark’’ means— (i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or (ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available by reason of sec- tion 220506 of title 36; but such term does not include any mark or des- ignation used on or in connection with goods or services of which the manufacture 1 or producer was, at the time of the manufacture or produc- tion in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation. (2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reason- able under the circumstances to the United States attorney for the judicial district in which such order is sought. Such attorney may partici- pate in the proceedings arising under such appli- Page 1315 TITLE 15—COMMERCE AND TRADE § 1116 cation if such proceedings may affect evidence of an offense against the United States. The court may deny such application if the court de- termines that the public interest in a potential prosecution so requires. (3) The application for an order under this sub- section shall— (A) be based on an affidavit or the verified complaint establishing facts sufficient to sup- port the findings of fact and conclusions of law required for such order; and (B) contain the additional information re- quired by paragraph (5) of this subsection to be set forth in such order. (4) The court shall not grant such an applica- tion unless— (A) the person obtaining an order under this subsection provides the security determined adequate by the court for the payment of such damages as any person may be entitled to re- cover as a result of a wrongful seizure or wrongful attempted seizure under this sub- section; and (B) the court finds that it clearly appears from specific facts that— (i) an order other than an ex parte seizure order is not adequate to achieve the pur- poses of section 1114 of this title; (ii) the applicant has not publicized the re- quested seizure; (iii) the applicant is likely to succeed in showing that the person against whom sei- zure would be ordered used a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services; (iv) an immediate and irreparable injury will occur if such seizure is not ordered; (v) the matter to be seized will be located at the place identified in the application; (vi) the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered of granting the application; and (vii) the person against whom seizure would be ordered, or persons acting in con- cert with such person, would destroy, move, hide, or otherwise make such matter inac- cessible to the court, if the applicant were to proceed on notice to such person. (5) An order under this subsection shall set forth— (A) the findings of fact and conclusions of law required for the order; (B) a particular description of the matter to be seized, and a description of each place at which such matter is to be seized; (C) the time period, which shall end not later than seven days after the date on which such order is issued, during which the seizure is to be made; (D) the amount of security required to be provided under this subsection; and (E) a date for the hearing required under paragraph (10) of this subsection. (6) The court shall take appropriate action to protect the person against whom an order under this subsection is directed from publicity, by or at the behest of the plaintiff, about such order and any seizure under such order. (7) Any materials seized under this subsection shall be taken into the custody of the court. For seizures made under this section, the court shall enter an appropriate protective order with re- spect to discovery and use of any records or in- formation that has been seized. The protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used. (8) An order under this subsection, together with the supporting documents, shall be sealed until the person against whom the order is di- rected has an opportunity to contest such order, except that any person against whom such order is issued shall have access to such order and sup- porting documents after the seizure has been carried out. (9) The court shall order that service of a copy of the order under this subsection shall be made by a Federal law enforcement officer (such as a United States marshal or an officer or agent of the United States Customs Service, Secret Serv- ice, Federal Bureau of Investigation, or Post Of- fice) or may be made by a State or local law en- forcement officer, who, upon making service, shall carry out the seizure under the order. The court shall issue orders, when appropriate, to protect the defendant from undue damage from the disclosure of trade secrets or other confiden- tial information during the course of the sei- zure, including, when appropriate, orders re- stricting the access of the applicant (or any agent or employee of the applicant) to such se- crets or information. (10)(A) The court shall hold a hearing, unless waived by all the parties, on the date set by the court in the order of seizure. That date shall be not sooner than ten days after the order is issued and not later than fifteen days after the order is issued, unless the applicant for the order shows good cause for another date or un- less the party against whom such order is di- rected consents to another date for such hear- ing. At such hearing the party obtaining the order shall have the burden to prove that the facts supporting findings of fact and conclusions of law necessary to support such order are still in effect. If that party fails to meet that burden, the seizure order shall be dissolved or modified appropriately. (B) In connection with a hearing under this paragraph, the court may make such orders modifying the time limits for discovery under the Rules of Civil Procedure as may be nec- essary to prevent the frustration of the purposes of such hearing. (11) A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was made, and shall be entitled to recover such relief as may be appropriate, including damages for lost profits, cost of materials, loss of good will, and punitive damages in instances where the seizure was sought in bad faith, and, unless the court finds extenuating circumstances, to recover a reason- able attorney’s fee. The court in its discretion may award prejudgment interest on relief recov- ered under this paragraph, at an annual interest rate established under section 6621(a)(2) of title Page 1316 TITLE 15—COMMERCE AND TRADE § 1116 26, commencing on the date of service of the claimant’s pleading setting forth the claim under this paragraph and ending on the date such recovery is granted, or for such shorter time as the court deems appropriate. (July 5, 1946, ch. 540, title VI, § 34, 60 Stat. 439; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 98–473, title II, § 1503(1), Oct. 12, 1984, 98 Stat. 2179; Pub. L. 100–667, title I, § 128(c)–(e), Nov. 16, 1988, 102 Stat. 3945; Pub. L. 104–153, § 6, July 2, 1996, 110 Stat. 1388; Pub. L. 106–43, § 3(a)(1), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 3003(a)(1), title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–548, 1501A–583; Pub. L. 107–273, div. C, title III, § 13207(b)(8)–(10), Nov. 2, 2002, 116 Stat. 1908; Pub. L. 110–403, title I, § 102(b), Oct. 13, 2008, 122 Stat. 4258; Pub. L. 116–260, div. Q, title II, § 226(a), Dec. 27, 2020, 134 Stat. 2208.) Editorial Notes REFERENCES IN TEXT The Rules of Civil Procedure, referred to in subsec. (d)(10)(B), probably means the Federal Rules of Civil Procedure, which are set out in the Appendix to Title 28, Judiciary and Judicial Procedure. PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, §§ 19, 20, 33 Stat. 729; Mar. 3, 1911, ch. 231, § 291, 36 Stat. 1167; June 25, 1936, ch. 804, 49 Stat. 1921. AMENDMENTS 2020—Subsec. (a). Pub. L. 116–260 inserted after first sentence ‘‘A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent in- junction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.’’ 2008—Subsec. (d)(7). Pub. L. 110–403 amended par. (7) generally. Prior to amendment, par. (7) read as follows: ‘‘Any materials seized under this subsection shall be taken into the custody of the court. The court shall enter an appropriate protective order with respect to discovery by the applicant of any records that have been seized. The protective order shall provide for ap- propriate procedures to assure that confidential infor- mation contained in such records is not improperly dis- closed to the applicant.’’ 2002—Subsec. (d)(1)(A), (B)(ii). Pub. L. 107–273, § 13207(b)(8), (9), substituted ‘‘section 220506 of title 36’’ for ‘‘section 110 of the Act entitled ‘An Act to incor- porate the United States Olympic Association’, ap- proved September 21, 1950 (36 U.S.C. 380)’’. Subsec. (d)(11). Pub. L. 107–273, § 13207(b)(10), sub- stituted ‘‘6621(a)(2) of title 26’’ for ‘‘6621 of title 26’’. 1999—Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title III, § 3003(a)(1)], substituted ‘‘(a), (c), or (d)’’ for ‘‘(a) or (c)’’ in first sentence. Pub. L. 106–43 substituted ‘‘subsection (a) or (c) of section 1125 of this title’’ for ‘‘section 1125(a) of this title’’ in first sentence. Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted ‘‘Director’’ for ‘‘Commis- sioner’’ wherever appearing. 1996—Subsec. (d)(9). Pub. L. 104–153 inserted first sen- tence and struck out former first sentence which read as follows: ‘‘The court shall order that a United States marshal or other law enforcement officer is to serve a copy of the order under this subsection and then is to carry out the seizure under such order.’’ 1988—Subsec. (a). Pub. L. 100–667, § 128(c), inserted ‘‘or to prevent a violation under section 1125(a) of this title’’ after ‘‘Office’’ in first sentence. Subsec. (c). Pub. L. 100–667, § 128(d), substituted ‘‘pro- ceeding involving a mark registered’’ for ‘‘proceeding arising’’ and ‘‘judgment is entered or an appeal is taken’’ for ‘‘decision is rendered, appeal taken or a de- cree issued’’. Subsec. (d)(1)(B). Pub. L. 100–667, § 128(e), inserted ‘‘on or’’ after ‘‘or designation used’’ in concluding provi- sions. 1984—Pub. L. 98–473 designated first, second, and third undesignated pars. as subsecs. (a), (b), and (c), respec- tively and added subsec. (d). 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by section 1000(a)(9) [title III, § 3003(a)(1)] of Pub. L. 106–113 applicable to all domain names reg- istered before, on, or after Nov. 29, 1999, see section 1000(a)(9) [title III, § 3010] of Pub. L. 106–113, set out as a note under section 1117 of this title. Amendment by section 1000(a)(9) [title IV, § 4732(b)(1)(B)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents. EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. CONSTRUCTION OF 2020 AMENDMENT Pub. L. 116–260, div. Q, title II, § 226(b), Dec. 27, 2020, 134 Stat. 2208, provided that: ‘‘The amendment made by subsection (a) [amending this section] shall not be con- strued to mean that a plaintiff seeking an injunction was not entitled to a presumption of irreparable harm before the date of enactment of this Act [Dec. 27, 2020].’’ TRANSFER OF FUNCTIONS For transfer of functions, personnel, assets, and li- abilities of the United States Customs Service of the Department of the Treasury, including functions of the Secretary of the Treasury relating thereto, to the Sec- retary of Homeland Security, and for treatment of re- lated references, see sections 203(1), 551(d), 552(d), and 557 of Title 6, Domestic Security, and the Department of Homeland Security Reorganization Plan of Novem- ber 25, 2002, as modified, set out as a note under section 542 of Title 6. For establishment of U.S. Customs and Border Protection in the Department of Homeland Se- curity, treated as if included in Pub. L. 107–296 as of Nov. 25, 2002, see section 211 of Title 6, as amended gen- erally by Pub. L. 114–125, and section 802(b) of Pub. L. 114–125, set out as a note under section 211 of Title 6. For transfer of the functions, personnel, assets, and obligations of the United States Secret Service, includ- ing the functions of the Secretary of the Treasury re- lating thereto, to the Secretary of Homeland Security, and for treatment of related references, see sections 381, 551(d), 552(d), and 557 of Title 6, Domestic Security, and the Department of Homeland Security Reorganiza- tion Plan of November 25, 2002, as modified, set out as a note under section 542 of Title 6. Page 1317 TITLE 15—COMMERCE AND TRADE § 1117 Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1117. Recovery for violation of rights (a) Profits; damages and costs; attorney fees When a violation of any right of the registrant of a mark registered in the Patent and Trade- mark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under sec- tion 1125(c) of this title, shall have been estab- lished in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not ex- ceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, ac- cording to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party. (b) Treble damages for use of counterfeit mark In assessing damages under subsection (a) for any violation of section 1114(1)(a) of this title or section 220506 of title 36, in a case involving use of a counterfeit mark or designation (as defined in section 1116(d) of this title), the court shall, unless the court finds extenuating cir- cumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney’s fee, if the violation consists of— (1) intentionally using a mark or designa- tion, knowing such mark or designation is a counterfeit mark (as defined in section 1116(d) of this title), in connection with the sale, of- fering for sale, or distribution of goods or serv- ices; or (2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipi- ent of the goods or services would put the goods or services to use in committing the vio- lation. In such a case, the court may award prejudg- ment interest on such amount at an annual in- terest rate established under section 6621(a)(2) of title 26, beginning on the date of the service of the claimant’s pleadings setting forth the claim for such entry of judgment and ending on the date such entry is made, or for such shorter time as the court considers appropriate. (c) Statutory damages for use of counterfeit marks In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of— (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or serv- ices sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or dis- tributed, as the court considers just. (d) Statutory damages for violation of section 1125(d)(1) In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory dam- ages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just. (e) Rebuttable presumption of willful violation In the case of a violation referred to in this section, it shall be a rebuttable presumption that the violation is willful for purposes of de- termining relief if the violator, or a person act- ing in concert with the violator, knowingly pro- vided or knowingly caused to be provided mate- rially false contact information to a domain name registrar, domain name registry, or other domain name registration authority in reg- istering, maintaining, or renewing a domain name used in connection with the violation. Nothing in this subsection limits what may be considered a willful violation under this section. (July 5, 1946, ch. 540, title VI, § 35, 60 Stat. 439; Pub. L. 87–772, § 19, Oct. 9, 1962, 76 Stat. 774; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93–600, § 3, Jan. 2, 1975, 88 Stat. 1955; Pub. L. 98–473, title II, § 1503(2), Oct. 12, 1984, 98 Stat. 2182; Pub. L. 99–514, § 2, Oct. 22, 1986, 100 Stat. 2095; Pub. L. 100–667, title I, § 129, Nov. 16, 1988, 102 Stat. 3945; Pub. L. 104–153, § 7, July 2, 1996, 110 Stat. 1388; Pub. L. 106–43, § 3(b), Aug. 5, 1999, 113 Stat. 219; Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 3003(a)(2), (b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–549; Pub. L. 107–273, div. C, title III, § 13207(a), (b)(11), Nov. 2, 2002, 116 Stat. 1906, 1908; Pub. L. 108–482, title II, § 202, Dec. 23, 2004, 118 Stat. 3916; Pub. L. 110–403, title I, §§ 103, 104, Oct. 13, 2008, 122 Stat. 4259.)