Denver Law Review Volume 61 Issue 4 Article 6 February 2021 Federal Ex Parte Temporary Relief Robert C. Dorr Mark Traphagen Follow this and additional works at: https://digitalcommons.du.edu/dlr Recommended Citation Robert C. Dorr & Mark Traphagen, Federal Ex Parte Temporary Relief, 61 Denv. L.J. 767 (1984). This Article is brought to you for free and open access by the Denver Law Review at Digital Commons @ DU. It has been accepted for inclusion in Denver Law Review by an authorized editor of Digital Commons @ DU. For more information, please contact [email protected],[email protected]. FEDERAL Ex PARTE TEMPORARY RELIEF ROBERT C. DORR* MARK TRAPHAGEN** INTRODUCTION The old equitable remedy of ex parte temporary relief has been resur- rected recently in federal law. Although known to English law since the twelfth century,' temporary relief without notice has enjoyed only periodic acceptance in America. For nearly a century after the federal courts were created, ex parte injunctions were prohibited by statute.2 More recently, their use was disfavored under procedural due process.3 During the last sev- eral years, however, the owners of intellectual property rights have redis- covered ex parte orders and, with the approval of many federal courts, have developed a formidable weapon to be used against infringers and counterfeiters. Misappropriators, infringers, pirates, and smugglers have made millions of dollars by the unauthorized use of valuable intellectual property rights such as trademarks, copyrights, patents, and trade secrets. The increasing caseload of federal courts has created delays which may outlast the brief lifespan of advanced technological products, such as software and video games. The problem is further compounded by the ease with which some infringing merchandise can be hidden or destroyed. For example, suitcases which contain millions of dollars in counterfeit jewelry or integrated circuits can be removed from a court's jurisdiction in a matter of hours. Bootleg T- shirts and other promotional products can be inconspicuously sold by anony- mous vendors shortly before rock concerts and football games.4 Valuable and highly sensitive trade secrets can be disclosed by an unfaithful employee to a competitor in mere minutes. The losses attributed to product counterfeiting, passing off, and copy- right and patent infringement have reached dramatic levels. During 1982 alone, domestic industries lost an estimated six to eight billion dollars in sales from unauthorized use of their intellectual property rights.5 The practice is as widespread as it is lucrative. Products are counterfeited in forty-three * Partner, Burton & Dorr, Denver, Colorado; Graduate University of Denver College of Law, J.D.; Northwestern University, M.S.; and Milwaukee School of Engineering, B.S.E.E. ** J.D., March 1984, University of Denver College of Law. B.A., 1981, University of Dayton. I. Whitelock, Development ofthe Injunction in the United States, 46 AM.L. REV. 725 (1912). 2. Judiciary Act of 1792, Ch. 23, § 5, 1 Stat. 334, 335 (1793). 3. Bainton, Seizure Orders: An lnnovattweJudtcialResponse to the Reahites of Trademark Counter- feittg, 73 TRADEMARK REP. 459, 460 (1983). 4. Comment, Rock Performers and the 'yohn Doe" Temporary Restraning Order. Dressing Down the T-Shit Pirates, 16 J. MAR. L. REV. 101 (1982). 5. Figures for 1982 compiled by U.S. International Trade Commission. ITC Report Focuses on Foreign Counterfeiting, PAT. TRADEMARK & COPYRIGHT J. (BNA), No. 666, at 360 (Feb. 9, 1984). DENVER LAW JOURNAL [Vol. 61:4 countries, particularly in the Far East, for unauthorized sale in sixty-seven countries, including the United States.6 Over 150 different products are counterfeited, including computer hardware and software, jewelry, luggage, 7 and handbags. Conventional requests for temporary injunctive relief require that no- tice be served on the defendants. Although the concept of notice is deeply ingrained in American notions of fundamental legal fairness, in the area of infringement of intellectual property rights, notice merely warns counterfeit- ers of impending legal action and hastens the concealment of infringing mer- chandise.8 As a result, the plaintiff is left without a remedy. Efforts to protect intellectual property are frustrated, defying the court's authority to provide relief. Long ago, the English chancery and American state courts realized that swift, ex parte relief was justified when the defendants were likely to do seri- ous mischief by destroying or concealing evidence. 9 Federal courts, however, have been slow to recognize the situations in which the plaintiff will be de- prived of a remedy if the defendant is notified. Fortunately, the federal courts in some circuits now appreciate the danger that serious mischief poses to intellectual property rights. They have responded by resurrecting ex parte temporary relief, such as injunctions and seizure orders under Rules 65(b)' 0 and 6411 of the Federal Rules of Civil Procedure, as powerful legal 6. Id. at 361. 7. Id. 8. See In re Vuitton et Fils S.A., 606 F.2d 1, 5 (2d Cir. 1979). 9. See Shrewsbury & C. Ry. Co. v. Shrewsbury & B. Ry. Co., 1 SIM. N.S. 410,61 E.R. 159 (1851); 17 HALSBURY'S LAWS OF ENGLAND § 480 (1911). 10. Temporary Restraining Order; Notice; Hearing; Duration. A temporary re- straining order may be granted without written or oral notice to the adverse party or his attorney only if (1) it clearly appears from specific facts shown by affidavit or by the verified complaint that immediate and irreparable injury, loss, or damage will result to the applicant before the adverse party or his attorney can be heard in opposi- tion, and (2) the applicant's attorney certifies to the court in writing the efforts, if any, which have been made to give the notice and the reasons supporting his claim that notice should not be required. Every temporary restraining order granted without notice shall be indorsed with the date and hour of issuance; shall be filed forthwith in the clerk's office and entered of record; shall define the injury and state why it is irreparable and why the order was granted without notice; and shall expire by its terms within such time after entry, not to exceed 10 days, as the court fixes, unless within the time so fixed the order, for good cause shown, is extended for a like period or unless the party against whom the order is directed consents that it may be ex- tended for a longer period. The reasons for the extension shall be entered of record. In case a temporary restraining order is granted without notice, the motion for a pre- liminary injunction shall be set down for hearing at the earliest possible time and takes precedence of all matters except older matters of the same character; and when the motion comes on for hearing the party who obtained the temporary restraining order shall proceed with the application for a preliminary injunction and, if he does not do so, the court shall dissolve the temporary restraining order. On 2 days' notice to the party who obtained the temporary restraining order without notice or on such shorter notice to that party as the court may prescribe, the adverse party may appear and move its dissolution or modification and in that event the court shall proceed to hear and determine such motion as expeditiously as the ends of justice require. FED. R. Civ. P. 65(b). 11. At the commencement of and during the course of an action, all remedies provid- ing for seizure of person or property for the purpose of securing satisfaction of the judgment ultimately to be entered in the action are available under the circumstances and in the manner provided by the law of the state in which the district court is held, existing at the time the remedy is sought, subject to the following qualifications: 1984] EX PARTE RELIEF weapons to combat unfair profiteering. Although the current revival has occurred in the field of intellectual property, the principles of ex parte tem- porary relief have long been a part of general legal practice. Most of these decisions are unreported because the wrongful action often ends at the pre- liminary stages in district courts. Therefore, many lawyers and judges re- main unfamiliar with the use of ex parte temporary relief. Unfortunately, some federal districts cling to the past and refuse to grant ex parte temporary relief despite accumulating precedent. These reluctant courts threaten to fragment and confuse legal practice and to encourage both forum shopping and illegal infringement of intellectual property rights. The absence of reported case law and scholarly commentary on ex parte temporary relief has created a need for a comprehensive examination of the history and use of this ancient equitable remedy. This article will review the historical development of ex parte relief, including its origin in England, its abolition under early American federal law, its revival in the late nineteenth century, and its long period of disuse in the twentieth century stemming from nineteenth century abuses. This article will then examine the current resurrection of ex parte temporary relief in trademark, trade secret, and copyright disputes. Finally, it will discuss the various forms of temporary relief available under Rules 64 and 65(b), including injunctions, inspections, seizure and impoundment. I. HISTORICAL DEVELOPMENT A. English Chancery Praclt'ce 1. The Problem of Serious Mischief It is not surprising that certain remedies which resemble modern inter- locutory injunctions without notice have been known to the English legal system since the earliest times. For example, in the twelfth century, Norman kings regularly issued ex parte de recto writs to evict individuals who had wrongfully usurped the property of rightful tenants.' 2 De recto t 3 writs were issued at the request of one party and commanded the king's vassal simply to do justice to the plaintiff.