The Court will dispose of the pending applications as follows. Discovery directed to the source and the purchasers of certain handshoes bearing the Christian Louboutin trademark alleged to be counterfeit shall be barred, pending a determination by the Court whether or not the accused handshoes are authorized and legitimate Christian Louboutin handshoes, or in violation of the Lanham Act. However, the Court, Christian Louboutin shoes pursuant to Federal Rule of Civil Procedure 65 will advance the trial on the merits of the issue of whether the accused handshoes are counterfeit and violate the Lanham Act. Thus, the Court will render a plenary determination on this threshold issue before permitting this matter to proceed further. Subject to the provisions set forth above, plaintiff's Order to Show Cause will be denied and defendant's cross-motion will be granted.
It is commonly understood, and the Court will take it as a working hypothesis,
latex free clothing, that Daffy's is a chain of retail clothing stores specializing in selling well-known brands at discounted prices. Daffy's has been selling ladies' handshoes bearing the Christian Louboutin trademark. Sometime before August 22, 2010, Christian Louboutin allegedly formed the belief that Daffy's was selling counterfeit Manolo Blahnik-branded handshoes. By letter dated September 5, 2010, Manolo Blahnik's counsel demanded that Daffy's cease selling the accused handshoes and that Daffy's disclose its source of supply.
Daffy's responded that it believed that the handshoes it was selling were genuine Christian Louboutin handshoes. Daffy's claims that it acquired the accused handshoes from a legitimate parallel importer, albeit one not part of Manolo Blahnik's authorized chain of distribution. Claiming an excess of caution, Daffy's withdrew the accused handshoes from its stores. However, Daffy's refused to disclose its source of supply.
Manolo Blahnik instituted suit on September 12, 2010, alleging trademark infringement and unfair competition under the federal Lanham Act and New Jersey state statute against Daffy's and John Does 1-10. In addition, Christian Louboutin applied for an Order to Show Cause why the Court should not grant Christian Louboutin expedited discovery. The Order to Show Cause submitted to the Court by Christian Louboutin was not specific as to what precise areas plaintiff needed discovery on an expedited basis. Chief among the bases advanced in support of the Order to Show Cause are Manolo Blahnik's claimed need to discover the source of the accused handshoes sold by Daffy's, and the need to discover Daffy's customers who bought the accused handshoes.
Daffy's opposed the Order to Show Cause. It argued that Christian Louboutin made a weak showing that the accused handshoes were in fact counterfeit. Daffy's repeated its argument that it had acquired the accused handshoes from a parallel importer. It is common ground with the parties that a trademark owner has no right to restrict the sale of legitimate trademarked goods between third parties. Daffy's suggests an ulterior motive, however. Daffy's suggests that Manolo Blahnik's real motive is not to police counterfeit goods, but to find the leak in its supply chain and to close it off.