When I was in law school, my trademark law seminar instructor was a practicing lawyer who has his share of war stories, some involving actual weapons. He had accompanied federal customs officers on warehouse raids to identify and confiscate bootleg goods bearing marks that belonged to or infringed on marks belonging to his firmâ€™s clients. It sounded pretty damned cool.
Some ten years later I confiscated my first counterfeit item. Not from a warehouse but from a garage, for the item was a truck. An ice cream truck. A counterfeit Mister Softee ice cream truck.
My firm was local counsel to Mister Softee in New York City, where there is a great number of knockoff refreshment-peddling vehicles on the streets giving the false impression that they are true Mister Softee trucks selling genuine Mister Softee (or Mister Softee-approved) ice cream products. Mister Softeeâ€™s general counsel in Philadelphia would commence suit in federal court (often the Southern or Eastern District of New York) asserting, inter alia, trademark and trade dress infringement (under the Lanham Act) and unfair competition under both federal and state laws; more often than not, the defendant would default in the action. Because the Lanham Act allows recovery of attorneyâ€™s fees in counterfeiting actions, which would typically be awarded with the default judgment, Mister Softee would use the money judgment to seize the defendantâ€™s sole asset: the truck with the outright counterfeit (or otherwise sufficiently deceptive) markings. (Not every judge allowed this, though. A motion for a seizure order is necessary, and some judges refused to allow seizure of a truck worth thousands to satisfy a judgment of only hundreds.)
So it was that in late October 2008 I traveled to the Bronx, where I met up with the two U.S. Marshals assigned to this seizure. Iâ€™d arranged with one of them, a lovely, petite but fit young woman all of 24 years old, to meet them at a corner near the garage at 10 a.m. (Iâ€™d asked her to bring me a bulletproof vest, but she said she didnâ€™t have an extra. So I asked if I could wear hers and she told me that she might just shoot me herself.) I got to the rendezvous point a bit early, and while I waited to meet the Marshals, there was a domestic disturbance in the street in front of the garageâ€”a 9:45 a.m. knife fight, in factâ€”that brought to the scene six marked NYPD cruisers, several unmarked police cars, and an ambulance. Inauspicious, I thought.
Soon enough the Marshals arrived, and the actual seizure of the truck went off relatively without a hitch (excepting the one on the tow truck… and that I had to front $300 in cash to pay the tow truck driver.) The offending truck owner was there (called to the scene by the garage owner). He had, he claimed, no idea what was happening. I believed him. I tried to explain, without giving him any legal advice, what had led to the seizure, procedurally. He still didnâ€™t understand. He argued that he had come to the United States from Cuba to make a living. Why was he being mistreated here? This isnâ€™t Cuba! I had no counterargument to that.Notwithstanding rumors started by my then-fiancÃ©e (now wife), there were no bawling children watching inconsolably from the curb as the ice cream truck was taken away.
I was in my office by noon, in time to receive a call from the counterfeit truck owner’s lawyer. His bankruptcy lawyer. It seems that the man had, unbeknownst to any of us on the Mister Softee legal team, filed for bankruptcy protection ten days earlier. So we were not allowed to take his truck. And here weâ€™d been so pleased that weâ€™d finally been able to make some headway in enforcing one of the many judgments against deadbeat trademark infringers against whom Mister Softee had judgments… only to have to give back the truck. (But not immediately, and in the end, the parties settled, with Mister Softee returning the truck after having it repainted in a non-infringing color scheme.)
Then, in June of 2009, I was called upon to lead another seizure, this time of two trucks, from a depot in Brooklyn. (am New York even ran a piece about it, not mentioning me at all. Trust me: I was there.) This time, I was accompanied by three U.S. Marshals, all male, all in their forties or fifties, none of them in particularly good shape. We looked more like characters from Barney Miller than The Fugitive. On the other hand, they can be pretty funny, those U.S. Marshals.
This depot at least twelve ice cream trucks parked there, all of which infringed on Mister Softeeâ€™s rights, but only two of which I had orders to seize. So I had to determine which those two were. I tried the easy way: by looking at the vehiclesâ€™ registration stickers to find the ones with the registration numbers that matched the numbers in the seizure orders. Wouldnâ€™t you know: At least two different trucks had identical registration stickers displayed. Imagine that! (For the obvious reason, I didnâ€™t even bother looking long at license plates.) So I moved on to the less easy way: looking for the vehicle identification numbers in the trucks, which were displayed on etched metal plates on the dashboards, buried under years of dust and grime. I found the two VINs I needed, and I was glad Iâ€™d not worn a suit that morning.
While I was looking for the right trucks to seize, the depot owner was calling the cops. Yes, the cops. So eight uniformed New York City police officers pulled up en masse in four patrol cruisers. Did I mention that the depot was tucked away on a dead-end street under a bridge? It was like something out of a Western: Three U.S. Marshals behind meâ€¦ eight cops walking toward us, thinking that they had arrived in time to stop grand theft auto in progress. Tensions were running high that warm morning in Juneâ€¦.
Fortunately the flash of a badge from the lead Marshal brought us all together in law-enforcement camaraderie. (Forgetting that I was not obviously part of the group, I neglected to introduce myself until the biggest cop asked, â€œAnd who are you?â€ â€œIâ€™m the lawyer with the seizure order,â€ I said. â€œThese guys are with me.â€ That felt good.)
By noon it was all over but the paperwork.
And of course my thoughts on both days turned to my trademark law seminar instructor, he who had raided warehouses to confiscate counterfeit goods, and how exciting heâ€™d made his practice sound back then. Itâ€™s a funny thing to realize that youâ€™re doing something youâ€™d previously only heard or read about. And Iâ€™m glad I got to do thisâ€¦ because itâ€™s the only damned story from ten years of practice that anyone ever wants to hear me tell.