## Facts

- Vuitton et Fils S.A. sold luxury leather goods under a distinctive, long-registered and heavily advertised trademark.
- Vuitton alleged that Dame Belt & Bag Co., Inc. and an individual associated with it were selling luggage and handbags identical in appearance to Vuitton goods, at substantially lower prices.
- Vuitton filed a federal action seeking injunctive relief and damages for trademark infringement and unfair competition under the Lanham Act and New York law.
- Contemporaneously, Vuitton sought an ex parte temporary restraining order (TRO) under Federal Rule of Civil Procedure 65(b), supported by affidavits explaining why notice and ordinary service would be ineffective.
- Vuitton asserted that counterfeit distribution operated through closely connected networks and that counterfeiters commonly dispose of or conceal inventory upon learning of litigation.
- The district court refused to issue the requested ex parte TRO based on concerns about granting such relief without notice and the scope of the requested order.
- Vuitton petitioned the Second Circuit for a writ of mandamus directing the district judge to issue an appropriate ex parte TRO.

## Issues

1. Whether mandamus was an appropriate vehicle for the court of appeals to review and correct the district court’s refusal to issue an ex parte TRO in a trademark-counterfeiting case.
2. Whether Vuitton’s affidavits satisfied Rule 65(b) by showing immediate and irreparable injury before defendants could be heard, thereby justifying an ex parte TRO.

## Decision

- The Second Circuit granted mandamus relief and directed the district court to issue an appropriate ex parte order under Rule 65.
- The court treated the case as exceptional because inconsistent district-court handling of repeat counterfeiting TRO requests created a need for circuit-level guidance and uniform administration.
- The court concluded that Vuitton’s showing supported ex parte relief because advance notice would likely lead to rapid disposal or concealment of counterfeit goods, defeating effective relief.

## Legal Principles

- Mandamus may be used in unusual circumstances to correct a clear misapplication of governing standards and to address serious problems of inconsistent administration in recurring matters.
- Under Rule 65(b), an ex parte TRO may issue only if specific facts in affidavits or a verified complaint show that immediate and irreparable injury will occur before the adverse party can be heard, and counsel certifies efforts to give notice and why notice should not be required.
- In trademark-counterfeiting cases, evidence that defendants are likely to dissipate inventory or frustrate enforcement upon receiving notice can satisfy Rule 65(b)’s immediacy and irreparability requirements.
- Where infringement allegations involve goods identical in appearance to the trademark owner’s products, the likelihood of consumer confusion may support a finding of irreparable harm for interim relief.

## Conclusion

The Second Circuit used mandamus to require issuance of an ex parte Rule 65(b) TRO where the record showed that notice would likely enable counterfeiters to dispose of goods and defeat effective enforcement, and where consistent treatment of recurring counterfeiting requests warranted appellate intervention.


In re Vuitton et Fils S.A., 606 F.2d 1 (2d Cir. 1979)