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• PHILIP MORRIS USA INC, Plaintiff, vs. ZHILIN JIANG, et a!., Defendants. (PDF) 

Defendants have not responded to Plaintiffs Application for Preliminary Injunction, nor made any filing in this case, nor have Defendants appeared in this matter either individually or through counsel. UPON CONSIDERATION of the Motion, the pertinent portions of the Record, and being otherwise fully advised in the premises, the Court enters the following Order.

I. BACKGROUND1

Plaintiff Philip Morris USA is the registered owner of numerous trademarks used in connection with the manufacture and distribution of cigarettes. Among these trademarks are trademarks associated with United States Patent and Trademark Office ("USPTO") No. 68,502, registered on April 14, 1908, and USPTO No. 938,510, registered on July 25, 1972 (collectively, "Philip Morris USA Marks"). Defendants are unknown individuals, residing in the People's Republic of China ("PRC") . . .

Recently Plaintiff became aware of the potential sale of counterfeit versions of Plaintiff's products by Defendants. This is alleged to have been accomplished by Defendants through the operation of commercial Internet websites operating under domain names such as marlborocigarette.biz, marlboro-gold.biz, and marlborowholesale.com.2 In response to Defendants' alleged trademark infringement, Plaintiff retained Investigative Consultants, a licensed private investigative firm, to investigate the sale of counterfeit versions of Plaintiff's products by Defendants. . . .

5. The domain name Registrars for the Subject Domain Names are directed, to the extent it is not already done, to transfer to Plaintiff's counsel, for deposit with this Court, domain name certificates for the Subject Domain Names;

6. The Registrars and the top-level domain (TLD) Registries for the Subject Domain Names, upon receipt of this Preliminary Injunction shall, to the extent it is not already done, cause to be changed or change the registrar of record for the Subject Domain Names . . .

Plaintiff may continue to enter the Subject Domain Names into Google's Webmaster Tools and cancel any redirection of the domains that have been entered there by Defendants which redirect traffic to the counterfeit operations to a new domain name and thereby evade the provisions of this Order; . . .

9. Upon receipt of notice of this Order, Western Union Financial Services, Inc. ("Western Union") shall divert and/or continue diverting all money transfers sent by United States consumers to: (1) Zhilin Jiang in Putian, China, with the date of birth and identification number provided by the recipient of MTCN 455-906-9491; (2) Haidong Huang in Putian, China, with the date of birth and identification number provided by the recipient of MTCN 853673-9729; and (3) Haidong Huang in Putian, China, with the date of birth and identification number provided by the recipient of MTCN 9464580813, and continue to hold such transfers until it receives further direction from the Court;4

10. In the event any money transfers are diverted in accordance with Paragraph 9 of this Order, Western Union shall be permitted to inform consumers who may contact Western Union about the transfers that the transfers are being held pursuant to a Court Order in Philip Morris USA Inc. v. Jiang

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Philip Morris Granted Injunction Against Online Counterfeit Cigarette Sellers ($$) 

Finding that cigarette manufacturer Philip Morris USA Inc. has "a very strong probability of proving" that the operators of 60 websites are guilty of selling counterfeit cigarettes bearing Philip Morris' trademarks, a Florida federal judge on Dec. 12 granted the plaintiff's motion for a preliminary injunction (Philip Morris USA Inc. v. Zhilin Jiang, et al., No. 1:11-cv-24049, S.D. Fla.; 2011 U.S. Dist. LEXIS 142630). Full story on lexis.com

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• Incontestable: Philip Morris USA, Inc. v. Jiang 

Philip Morris USA, Inc. v. Jiang, No. 11-cv-24049 (S.D. Fla. Dec. 12, 2011)

by David M. Kelly

As part of a preliminary injunction against a cybersquatter and counterfeiter, the Southern District of Florida ordered defendants’ domain name registrar to redirect the infringing domain names to a website displaying the injunction and other legal documents from the lawsuit.

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More on Ex Parte Cutoffs of Foreign "Rogue" Domain Names 

Eric's comments: This email helps to answer some of my prior questions, such as how many similar cases are out there (many) and whether these cases will multiply (it appears the True Religion case was brought by an unrelated law firm, Greenberg Traurig). Yet, it leaves open my most basic question, which is what can be done proactively to educate judges about the potential abuses of the ex parte process, joinder, notice to defendants and orders purportedly binding non-litigant third parties. It also leaves open the implicit question of whether attorneys who seek overreaching ex parte requests will be subject to discipline or sanction for any possible abuses of the process.

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Does the House Judiciary Committee Debating SOPA Know What's Going On In the Courts?--Philip Morris v. Jiang 

The plaintiff in this case is Philip Morris, who alleges that an investigator purchased products from various websites. The investigator forwarded the products to a Philip Morris representative, who alleged that "what appeared to be Marlboro cigarettes were in fact counterfeit." Additionally, the representative reviewed and visually inspected the internet websites operating under each of the subject domain names, as well as pictures of items bearing the Philip Morris USA Marks offered for sale on the internet websites, and determined that the products were not genuine and/or authorized Philip Morris USA products.

The court issues a TRO that is similar in scope to the Chanel TRO. (The same lawyer was involved in both cases on the plaintiff's side, so this is probably more of a function of the fact that Chanel and Philip Morris sought similar relief.) The TRO contains the following:

- Defendants are enjoined from using any Philip Morris marks, in websites, domain name extensions, links to other websites, search engine databases. . . .

As with the Chanel and True Religion cases, the same questions remain. Is there a relationship between the various defendants and the domain names? What type of notice of the lawsuit did defendants actually receive? Was there actually infringement or counterfeiting? The plaintiffs in these cases end up convincing the court of a key fact: immediate, ex parte relief is necessary because defendants will hide assets and shift operations. Courts seem to take this allegation at face value.

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Magistrate Judge Appointed in Star Scientific Patent Infringement Lawsuit Against RJ Reynolds 

Star Scientific, Inc. /quotes/zigman/80562/quotes/nls/cigx CIGX +35.78% received an Order today from the US District Court for Maryland that refers the company's patent infringement litigation against RJ Reynolds Tobacco Company (RJR) to the Honorable Beth P. Gesner, US Magistrate Judge, for possible settlement. The Order of Reference was signed by Judge Marvin J. Garbis, who has overseen the litigation since August, 2004. Paul L. Perito, Esq., Star Scientific Chairman and President, commented, "We are pleased that after ten years of hard-fought litigation -- where both sides seldom agreed on issues -- the Court's decision to refer the litigation to a Magistrate Judge for settlement purposes was agreed to by the parties. We believe this augurs well for good faith negotiations by the parties that hopefully can lead to a mutually acceptable global resolution."

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• CORRECTED-UPDATE 1-Star Scientific, Reynolds American to explore patent settlement  

Star Scientific Inc, a maker of smokeless and dissolvable tobacco products, said a federal court referred its patent infringement case with a unit of Reynolds American Inc to a magistrate judge for possible settlement.

The news sent Star Scientific's shares up as much as 39 percent in afternoon trade on the Nasdaq.

The lawsuit concerns two of Star Scientific's patents on tobacco-leaf curing methods that claim to prevent the formation of cancer-causing chemicals during the process.

"We are pleased that after ten years of hard-fought litigation -- where both sides seldom agreed on issues -- the Court's decision to refer the litigation to a Magistrate Judge for settlement purposes was agreed to by the parties," Star Scientific Chairman Paul Perito said in a statement.

A Star Scientific spokeswoman told Reuters that this did not mean the companies were close to a settlement. However, both parties would explore whether there is a basis for discussion and resolution of the dispute, she said.

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• Top silks in tobacco fight over plain packaging laws 

A WHO'S who of the legal fraternity will appear in the High Court today when big tobacco challenges the federal government over plain packaging laws.

Eleven senior counsel - including Allan Myers QC, Alan Archibald QC and Bret Walker SC, three of Australia's highest paid barristers representing the four tobacco companies and the government will appear before Justice William Gummow in Sydney as they prepare for the three-day hearing starting on April 17 in Canberra, The Daily Telegraph reported.

Philip Morris, British American Tobacco Australasia, Imperial Tobacco Australia and Japan Tobacco International are suing the government, claiming plain packaging violates the Australian Constitution because the government is trying to take their brands without paying compensation.

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• Whiff of despair circles Australia's cigar shops 

Australia and Cuba: one is a robust democracy with a free-trade agenda and the other is a one-party state where the government sets prices and rations food.

But that has not deterred Cuban Ambassador to Australia Pedro Monson Barata from accusing Canberra of ignoring trademark protection and trampling free trade.

New tobacco retailing rules that from December 2012 stand to spoil the sales of Cuban cigars in Australia sparked Barata's tirade.

Infinitely more worrisome than a dig from Havana is a High Court challenge to the world-first public health initiative from Philip Morris International Inc, which owns Marlboro and six more of the world's top 15 cigarette brands.

Philip Morris complains that 'plain packaging turns tobacco products into a commodity, robbing Philip Morris Ltd of its ability to differentiate its products from competitor brands.'

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Philip Morris Brings Packaging Row To Aussie High Court ($$) 

A Philip Morris International Inc. unit said Tuesday it was protesting an Australian law requiring cigarettes to be sold in plain packages before the country's high court, the latest challenge to legislation tobacco companies have called an attack on their intellectual property.

Philip Morris Ltd. submitted the filing against the Australian government to the High Court of Australia. Another arm of the tobacco giant, Philip Morris Asia Ltd., launched an arbitration case over the law in November under Australia's bilateral investment treaty with Hong Kong.

The challenges target the Tobacco Plain Packaging Act, a law passed by the Australian Senate in November. The legislation mandates that cigarettes be sold in logo-less, brown packages labeled in a small, uniform font. The graphic images representing smoking-related illnesses that currently cover part of Australian cigarette packs will also be retained under the law.

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• Philip Morris to fight Australia plain packaging laws 

Philip Morris on Tuesday became the third tobacco giant to file a legal challenge against new Australian laws that will force tobacco products to be sold in dull, plain packaging from late next year.

The tough, world-first legislation cleared by parliament is being closely watched by governments considering similar moves in Europe, Canada and New Zealand. It has angered tobacco companies worried it may set a global precedent and infringe on trademark rights.

Under the laws, cigarettes, pipe tobacco and cigars have to be sold in olive green packs free from branding, but carrying graphic health warnings, from December next year.

Philip Morris, with a 37 percent market share in Australia for its brands including Marlboro and Alpine, said the government had passed a law that acquired its "valuable brands and intellectual property" without offering compensation.

"We believe plain packaging violates the Australian Constitution because the Government is seeking to acquire our property without paying compensation," company spokesman Chris Argent said in a statement.

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JTI's response to the Australian Government's Consultation Paper on the Tobacco Plain Packaging Bill 2011 (PDF) 

1. EXECUTIVE SUMMARY

1.1 JTI is categorically opposed to plain packaging and the other proposals in the Government's Consultation Paper of 7 April 2011 (the Consultation) on the Tobacco Plain Packaging Bill 2011 Exposure Draft (the Draft).

1.2 It is among JTI's core beliefs that minors should not smoke and should not be able to obtain tobacco products and that adult smokers should be appropriately informed about the risks of smoking before they make the decision to smoke. These beliefs are central to our Code of Conduct, marketing practices, operational policies and the way JTI does business. However, JTI will question, and where necessary challenge, regulation that is flawed, unreasonable, disproportionate or without evidential foundation.

1.3 Although JTI does not have a corporate presence in Australia and its products (which represent only a small share of the Australian market) are distributed by third parties who may submit their own proposals to the consultation, the significance of the proposals in the Draft make it important and necessary to set out JTI's objection to it. JTI believes firmly that the proposals are manifestly disproportionate and inappropriate and that, given the serious concerns identified in this submission, the Government's plain packaging and other proposals should not be progressed further.

JTI's key objections to the proposals

An unjustified expropriation of property

1.4 Plain packaging would prevent JTI from using its brands, which are -- as with any consumer product manufacturer -- JTI's most valuable assets. In our view, the measures proposed by the Draft are not only an unconstitutional acquisition of property on unjust terms, they are also an unjustified expropriation of our property. A disproportionate measure without an appropriate evidential basis

1.5 The Consultation ignores a key fact: there is no credible evidence to demonstrate that plain packaging is capable of achieving the Government's stated objectives (set out below). The Government appears to have accepted this. It was reported on 24 May 2011 that Federal Health Minister Nicola Roxon said, in response to a call for such evidence, that: "[t]he sort of proof they are looking for doesn't exist when this hasn't been introduced around the world".1 Against this backdrop, the plain packaging proposal seeks to dictate arbitrarily the appearance of product packaging on the basis of a fundamental mischaracterisation of the role of packaging. An unreasonable interference with lawful market activity

1.6 Packaging plays an important role in the consumer goods market. It conveys guarantees of a product's origin and quality, and the investment in it. Plain packaging frustrates the provision of these guarantees, thereby impeding lawful competitive market activity. This is compounded by the ability of plain packaging to facilitate unlawful market activity through illicit trade and counterfeit products.

1.7 Given its leading international position and modest Australian presence, JTI's market share has significant potential for growth, through competition with wellestablished brands. JTI is therefore also concerned about the market crystallisation effects of plain packaging, which will deprive it of any meaningful ability to introduce international brands to the market for existing Australian adult smokers. A failure to meet international and Australia's own Better Regulation principles

1.8 Tobacco products carry risks to health and we believe that appropriate and proportionate regulation of our industry is both necessary and right. JTI supports legislative measures on tobacco control that meet the Better Regulation principles defined by the OECD2 and endorsed in the Handbook of the Australian Office of Best Practice Regulation (the Handbook).3 However, when measured against this benchmark and that of the Australian Constitution, the Consultation and Draft fall short of these fundamental requirements in a number of ways, as detailed in Part 4 below.

A packaging law seeking to go beyond the pack

1.9 The Draft is characterised as a bill regarding packaging, but also seeks to facilitate the regulation of the design of tobacco products themselves,4 and to increase the size of the front of pack health warnings. Like the plain packaging proposal, JTI rejects entirely these provisions of the Draft. Contrary to Better Regulation principles, the Government has cited no evidence demonstrating that either measure would achieve the objective of changing smoking behaviour. Further, the proposal to allow the regulation of the design of the product itself is vague and potentially very far reaching. If it proceeds with the Draft, the Government must consult separately on such proposals, having undertaken a full and proper review of the evidence and the impact of these proposals.

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Fed. Circ. Won't Rehear RJ Reynolds Patent Suit ($$) 

The Federal Circuit on Tuesday declined a request by R.J. Reynolds Tobacco Co. to rehear an appeal brought by tobacco product development company Star Scientific Inc. over a dispute covering patents for tobacco-curing technology. . . .

A spokesman for R.J. Reynolds, Bryan Hatchell, said the company is considering its options in light of Tuesday's ruling.

"It's important to note that the court has found that R.J. Reynolds did not infringe Star Scientific's patents," Hatchell said.

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• Federal Circuit Court Denies RJR Request for Rehearing of Decision in Star Scientific Patent Infringement Lawsuit  

Star Scientific, Inc. (NASDAQ: CIGX - News) has announced that the company is pleased to report that the United States Court of Appeals for the Federal Circuit today denied RJ Reynolds Tobacco Company's (RJR) petition for a rehearing of Star's appeal of its patent infringement lawsuit against RJR. On August 26 , the Federal Circuit Court issued a ruling on Star's appeal of the June, 2009 jury verdict in that lawsuit. The Court in its August decision affirmed the validity of each of the claims in the patents at issue in the prosecution of infringement against RJR, and specifically rejected each of the four invalidity defenses raised by RJR. The three-judge panel also reversed the district court's 2007 summary judgment ruling on priority date, which affirmed that the patents' claims deserve the September, 1998 priority date as originally claimed. The Federal Circuit ruling did not, however, reverse the jury verdict of non-infringement that Star had requested on appeal. RJR'S request for a rehearing of the August decision was based on its contention that the patents were indefinite.

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From Christ to cola, logos through the ages 

While the case is raising the hackles of advocates on both sides of the smoking-cessation debate, it is also highlighting the increasing importance of logos in a world where people are drowning in messages from brands.

By one measure, of course, logos are nothing new. "Every sort of movement in history had logos," noted Andreas Eisingerich, an associate professor of marketing at the Imperial College Business School in London. "If you think about Christianity, the one thing that comes to mind is a logo."

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