Do Trademarks Trump Public Health?

The answer to this question might seem obvious that public health—­and especially protecting the public from the coronavirus pandemic—should always take precedent. But, a recent dispute before the U.S. District Court for the Northern District of Illinois highlights a conflict that judges likely did not contemplate when entering General Orders to protect public health.


Following the March 15th CDC Guidance to cancel mass gatherings, the Northern District of Illinois first modified court rules on March 17, 2020. Subsequently, on March 30, 2020, it struck all civil case hearings, bench trials, and settlement conferences scheduled on or before May 1, 2020. However, both of these orders provide that parties may seek emergency relief for any case by filing an emergency motion with the presiding judge.

One plaintiff attempted to comply with these rules in a case involving a complaint regarding alleged trademark infringement of its client’s unicorn drawings. In particular, Art Ask Agency, an international licensing agency based in Spain, filed a complaint on March 9, 2020. They alleged individuals in foreign jurisdictions had been counterfeiting their products and submitted a motion for a hearing on a temporary restraining order (TRO). Although a TRO is not unusual in trademark cases, the court denied the motion on March 13 and moved the date of the hearing “by a few weeks to protect the health and safety of our community.” Art Ask Agency then filed an emergency motion to reconsider the Court’s previous denial of its motion for hearing concerning a TRO.

What is an emergency motion, but a name?

Emergency motions are special as they are usually presented to the court to avoid irreparable harm. In trademark infringement cases, TROs may put in place to prevent a specific action that would cause harm that is not easily addressed by monetary damages later. Generally, TROs are likely to be granted to stop irreparable harm, as IP lawsuits can be long and, without immediate action, great financial harm can ensue—especially for trademark claims that inherently deal with the owner’s reputation. Art Ask Agency asked the Court for a TRO to prevent their mark being used on counterfeit goods.  In particular, Art Ask Agency was representing an artist who prides himself/herself on “life-like portrayals of fantasy subjects.” In other words, Art Agency was seeking to stop the unauthorized and ongoing use of a trademarked unicorn on or in connection with a third party’s goods/services, alleging the use is likely to cause confusion by individuals in foreign jurisdictions, namely the People’s Republic of China.

At a time when the world is in a global pandemic, Judge Steven C. Seeger denied Art Ask Agency’s motion for a hearing on a TRO on March 13, ”to protect the health and safety of our community.” However, Art Ask Agency filed its motion to reconsider, it prompted Judge Seeger to pen a strongly worded order. He noted, “As things stand, the government has forced all restaurants and bars in Chicago to shut their doors, and the schools are closed, too”—proactive measures put in place in hopes to curve the current pandemic and stop the spread of coronavirus.

Know when to hold, know when to fold.

Art Ask Agency felt the need to push their case forward, to the ridicule of the public. Art Ask Agency is currently unable to stop anyone from using their trademark on potential counterfeit goods until their order can be heard, at the earliest, after May 1, 2020.

Despite the great potential for harm to Art Ask Agency’s mark, Judge Seeger’s order points out that waiting a few weeks is prudent, as fake fantasy product is not likely to be experiencing high sales volume given the circumstances. Low sales are not always indicative of a lack of harm, given the potential for negative repercussions. However, a hearing, even a telephonic one, would eat up valuable court resources. Thus, Judge Seeger did not find this motion to be necessary or qualify as an “emergency.” Judge Seeger ends by pointing to the words of Elihu Root: “About half of the practice of a decent lawyer is telling would-be clients that they are damned fools and should stop.”

While I agree that this motion is not an emergency in light of what is going on in the world around us, I wonder if the outcome would have been different if the case dealt with marks concerning toilet paper or web conferencing, such as the recently popularized web company, Zoom. Intellectual property (IP) rights are often seen as vital to keep a business running and producing income.  Although it may initially seem that enforcement of IP rights is unnecessarily being put on hold, nothing in the court order suggests such rights are in general unworthy. Rather, the case has some unique elements.  For example, Art Ask Agency was trying to protect a trademark that is not intimately associated with the company; perhaps a trademark infringement suit by Charmin regarding counterfeit toilet paper would be considered differently than a suit by the owner of one of several licensed IP rights.  Moreover, given that Art Ask Agency could not even identify any perpetrators within the United States, the harm seems more tangential than in most trademark cases.


Erica Achepohl, Associate Blogger

J.D. Candidate 2021