## Facts

- Country music artist Toby Keith Covel authorized SKS Merch, LLC (SKS) to manufacture, market, and sell official concert merchandise bearing Keith’s name, photograph, likeness, logo, tour information, and related identifiers.
- SKS sold authorized merchandise at Keith’s concerts throughout the United States.
- Unauthorized sellers (“bootleggers”) regularly appeared near Keith concert venues and sold merchandise using Keith’s name and image without permission.
- The bootleg merchandise was described as closely resembling SKS’s authorized items, but generally of poorer quality.
- When SKS employees attempted to confront the bootleggers, the sellers scattered quickly, making it hard to identify them and to stop repeat sales at later tour dates.
- SKS identified several individuals as bootleg sellers, including Mike Barry, Lou Black, and Louie Cutone, and also sued unidentified “John Doe” and “Jane Doe” defendants involved in the same bootlegging activity.
- Police were generally unwilling to assist SKS in stopping the bootleg sales absent a court order.
- Keith and SKS brought suit in the U.S. District Court for the Eastern District of Kentucky under Lanham Act § 43(a), seeking a nationwide preliminary injunction (and related seizure relief) to stop the ongoing tour-related bootlegging.

## Issues

1. Whether Keith and SKS showed a likelihood of success on their Lanham Act § 43(a) unfair-competition claim based on defendants’ use of Keith’s unregistered name, image, and related identifiers on unauthorized concert merchandise.
2. Whether Keith and SKS showed irreparable harm and the inadequacy of money damages from the recurring sales by transient, difficult-to-identify bootleggers.
3. Whether the court could issue a nationwide preliminary injunction and related seizure relief against named defendants and unidentified Doe defendants connected to the bootlegging activity at tour locations.

## Decision

- The court granted a nationwide preliminary injunction in favor of Keith and SKS against the named defendants and the Doe defendants involved in selling unauthorized Toby Keith merchandise.
- The court found Keith and SKS were likely to succeed on the merits of their Lanham Act § 43(a) claim, concluding that defendants’ unauthorized use of Keith’s name, image, likeness, and logos on merchandise sold in connection with concerts was likely to cause consumer confusion as to source or sponsorship.
- The court found defendants acted with wrongful intent by targeting concert audiences and attempting to profit from demand created by Keith’s performances and the official merchandise operation.
- The court found irreparable injury for preliminary-injunction purposes because the bootleggers’ conduct was recurring, sellers were hard to identify and locate, and damages could not realistically be calculated or collected.
- The court concluded that limiting relief to a single district would be ineffective given the interstate, tour-following nature of the infringement, and that nationwide injunctive relief was warranted to prevent continued unlawful sales at future concert locations.
- The court also granted related seizure relief to enable enforcement against infringing merchandise sold in connection with the concert bootlegging activity.

## Legal Principles

- Lanham Act § 43(a) can protect unregistered identifiers, including an entertainer’s name, likeness, and related symbols used in commerce, when unauthorized use is likely to cause confusion about source, sponsorship, or approval.
- Unauthorized sales of performer-branded merchandise in the concert setting can create a strong likelihood of confusion because consumers may assume the goods are officially licensed.
- For preliminary injunctive relief in trademark and unfair-competition cases, irreparable harm may be inferred from likely confusion; it can also be shown by proof that damages are not realistically measurable or collectible, especially where infringers are transient.
- A federal court may issue a nationwide preliminary injunction under the Lanham Act when the infringement is interstate and itinerant and narrower geographic relief would not stop the continuing misconduct.
- Injunctive and seizure relief may extend to unidentified Doe defendants participating in the same bootlegging activity when necessary to make the order effective against evasive, fast-moving sellers.

## Conclusion

In SKS Merch, LLC v. Barry, the Eastern District of Kentucky held that Toby Keith and his exclusive merchandise licensee were likely to succeed on a Lanham Act § 43(a) claim against bootleg concert sellers using Keith’s unregistered name and image on unauthorized merchandise, and it issued a nationwide preliminary injunction (with seizure relief) because the infringement was repeated, tour-based, and resistant to ordinary damage remedies due to the bootleggers’ transient conduct.


SKS Merch, LLC v. Barry, 233 F. Supp. 2d 841 (2002)