IP Law Daily, TRADEMARK—2d Cir.: Anonymous defendants who uploaded 3-D printing firearm files must reveal identities, (Jul 13, 2022)

By Brian Craig, J.D.

The anonymous defendants failed to show that their motion to dismiss for lack of personal jurisdiction would succeed if they did not provide their identities and addresses.

In a trademark infringement case brought by a gun violence prevention organization, the U.S. Court of Appeals for the Second Circuit has ruled that anonymous defendants who uploaded files for 3-D printing firearms must disclose their identities and addresses if they wish to assert a defense for lack of personal jurisdiction. In affirming the district court’s order, the Second Circuit held that anonymous defendants who uploaded files to an online repository of 3-D-printing files for firearms failed to show likelihood of success on the merits of their defense based on lack of personal jurisdiction without providing their identities and addresses (Everytown for Gun Safety Action Fund, Inc. v. Defcad, Inc., July 12, 2022).

A gun violence prevention organization that has more than six million members, Everytown for Gun Safety Action Fund, Inc. (“Everytown”), filed suit in the federal district court of New York against Defcad, Inc. (“Defcad”), an online repository of 3-D-printing files for firearms, and anonymous defendants who allegedly uploaded files for 3-D printing firearms. The gun violence prevention organization alleges that the anonymous defendants have uploaded files bearing Everytown’s name, which contain instructions for how to 3-D print gun parts and accessories bearing Everytown marks. The gun violence prevention organization asserted claims for trademark infringement and false designation of origin under federal law along with New York state law claims. The defendants contend that the use of the marks was a parody and therefore non-infringing. The district court ordered Defcad, Odysee, Inc., and Twitter, Inc. to provide copies of all documents and records relating to the true identities and addresses of anonymous defendants. The anonymous defendants filed a motion to dismiss arguing that the district court lacks personal jurisdiction. The district court then issued an order requiring the anonymous defendants to disclose their identities and addresses. The online repository and other defendants moved for a stay pending appeal.

Stay pending appeal. The Second Circuit concluded that the anonymous defendants failed to show likelihood of success or irreparable harm to warrant a stay pending appeal. The factors relevant in assessing a motion for a stay pending appeal are the applicant’s strong showing of likelihood of success on the merits, irreparable injury to the applicant in the absence of a stay, substantial injury to the nonmoving party if a stay is issued, and the public interest. The two most important factors are likelihood of success and irreparable injury.

Here, the Second Circuit concluded that the anonymous defendants could not show likelihood of success on the merits of their defense based on lack of personal jurisdiction without providing their identities and addresses. The anonymous defendants failed to make a strong showing that they are likely to succeed on the merits of their challenge of the district court’s order to disclose their identities. Likewise, the appeals court concluded that the anonymous defendants failed to show irreparable harm because a stipulated confidentiality agreement permits the anonymous defendants to designate their identifying information as “Highly Confidential.” Therefore, the Second Circuit denied the motion to stay pending appeal to the extent the district court ordered the anonymous defendants to reveal their identities as relating solely to the issue of the district court’s exercise of personal jurisdiction.

Remand on scope of order. The appeals court remanded the case to the district court to clarify the scope of the district court’s order to disclose the identities of the anonymous defendants. On remand, the Second Circuit ordered the district court to clarify whether the disclosure order was solely for purposes of litigating the claim of lack of personal jurisdiction or whether it applied also to the litigation of the merits of the trademark claim.

The Case is No. 22-1183.

Attorneys: Marcella Ballard (Venable LLP) for Everytown for Gun Safety Action Fund, Inc. Daniel Louis Schmutter (Hartman & Winnicki, P.C) for Defcad, Inc.

Companies: Everytown for Gun Safety Action Fund, Inc.; Defcad, Inc.; Odysee, Inc.; Twitter, Inc.

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