BBC Group NV LLC v. Island Life Restaurant Group LLC et al, No. 2:2018cv01011 - Document 91 (W.D. Wash. 2019)
Court Description: ORDER denying Counterclaim Plaintiff Island Life RestaurantGroup, LLC.'s 90 Motion for Reconsideration. Signed by Judge Ricardo S. Martinez. (PM)
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recognized in the legislative history of the [Lanham] Act quoted above, make acts of trade-mark infringement, or at the very least acts of deliberate trade-mark piracy, unprofitable.”). Under Island Life’s reasoning, the fact that it prevailed on its infringement claim automatically entitles it to a nationwide injunction regardless of whether it can show actual harm. However, Island Life’s argument was foreclosed by the 2013 Herb Reed decision, wherein the Ninth Circuit stated: “[A]ctual irreparable harm must be demonstrated to obtain a permanent injunction in a trademark infringement action . . . [g]one are the days when once the plaintiff in an infringement action has established a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm if injunctive relief does not issue.” Herb Reed Enterprises, LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239, 1249–50 (9th Cir. 2013) (emphasis added) (internal quotations omitted). See also LG Corp. v. Huang, 2017 WL 476539, at *11 (S.D. Cal. Feb. 6, 2017) (“Although irreparable harm was once presumed in meritorious trademark infringement actions, irreparable harm now must be demonstrated to obtain a permanent ORDER DENYING COUNTERCLAIM PLAINTIFF ISLAND LIFE’S MOTION FOR RECONSIDERATION - 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 injunction in a trademark infringement action.”) (internal quotations omitted); Anhing Corp. v. Thuan Phong Co. Ltd., 2015 WL 4517846, at *5 (C.D. Cal. July 24, 2015) (“A district court may not assume irreparable harm merely upon a showing of infringement.”). Island Life provides no case law holding otherwise. On the contrary, it makes no mention of Herb Reed or any cases that followed it. On this basis alone, Island Life has failed to demonstrate manifest error in the Court’s decision. Next, Island Life argues that the Court’s broad equity powers allow it to act preemptively before “specific damage has occurred in each specific state.” Dkt. #90 at 4. It relies on case law discussing the power of courts to “go much farther both to give and withhold relief in furtherance of the public interest” when crafting equitable remedies. Id. at 3 (quoting United States v. CocaCola Bottling Co. of Los Angeles, 575 F.2d 222, 228 (9th Cir. 1978)). Similarly, it argues that the geographic scope is improperly narrow because it forces Island Life to repeatedly file suit any time BBC infringes on its trademark rights in the future. Id. at 4 (citing T-Mobile USA, Inc. v. Terry, 862 F. Supp. 2d 1121, 1133 (W.D. Wash. 2012)). In denying Island Life a nationwide injunction, Island Life argues, the Court has rendered Island Life’s rights under the Lanham Act “meaningless and illusory” if BBC can “notoriously disregard the law and profit from violations . . . in every state except where specific damages have been shown.” Id. (citing 15 U.S.C. §§ 1057(b); 1115(b)). Again, Island Life’s argument fails to even acknowledge the binding precedent set forth in Herb Reed requiring some showing of harm to obtain injunctive relief. Island Life invokes Terry in support of a nationwide injunction, but this 2012 case relies on a pre-Herb Reed standard for permanent injunctions in trademark infringement cases wherein success on the merits automatically entitled a party to equitable relief. See Terry, 862 F. Supp. 2d at 1133 (“[O]nce infringement is shown, irreparable injury is generally presumed in a trademark case.”). Moreover, ORDER DENYING COUNTERCLAIM PLAINTIFF ISLAND LIFE’S MOTION FOR RECONSIDERATION - 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 in Terry, the court found irreparable harm on a nationwide scale that could only be remedied by a nationwide injunction. Id. (Finding that defendant’s ability to sell T-Mobile’s confidential and proprietary codes, SIM cards and Phones not just throughout the United States but “throughout the world” would make it impossible for T-Mobile to retrieve its infringing product). Here, in contrast, Island Life demands that the Court “put Island Life back in the position it would have been in without the BBC’s willful and deliberate violations” without adequately explaining what damages it has incurred that can only be rectified through equitable relief outside of Washington or online. Dkt. #90 at 3. In articulating the harm caused by BBC’s actions, Island Life cited litigation costs yet “failed to adequately explain how monetary damages or attorney’s fees would be insufficient to compensate for these damages.” Dkt. #84 at 4. Similarly, in citing harm caused by vendor and customer confusion, Island Life offered no evidence indicating that such confusion outside of Washington or online has damaged or would foreseeably damage its business reputation or goodwill. Id. at 5, 7. Finally, when the Court questioned Island Life on its intention to expand its restaurants outside of Washington, Island Life failed to provide any specifics as to when or where this expansion might occur. Id. at 5. Given Island Life’s persistent failure to provide any details as to the nature or timing of its alleged harm from infringement outside of Washington or online, the Court finds no manifest error in its decision to limit the scope of the permanent injunction. C. Acquisition of the Third-Party “BOCBOC Chicken Delicious” Mark Lastly, Island Life argues that the Court committed manifest error in declining to enjoin BBC from obtaining a licensing agreement from Mr. Li, the owner of the third-party “BOCBOC Chicken Delicious” mark. Dkt. #90 at 5. To foreclose the possibility of future conflict with BBC, Island Life asked the Court to prohibit BBC “from requesting or accepting from Mr. Li any 24 ORDER DENYING COUNTERCLAIM PLAINTIFF ISLAND LIFE’S MOTION FOR RECONSIDERATION - 5 1 2 assistance in using the BOC BOC Chicken Delicious mark for any purpose relating to restaurants.” Dkt. #77 at 18. Island Life contends that because courts have broad equitable authority to “go much 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 farther both to give and withhold relief in furtherance of the public interest than they are accustomed to go when only private interests are involved[,]” the Court erred in failing to address BBC’s potential use of the third-party marks. Dkt. #90 at 5. (citing Coca-Cola Bottling Co., 575 F.2d at 228) (internal quotations omitted). Through BBC’s efforts to obtain licensing agreements and create confusion where none existed, Island Life argues that BBC is operating with unclean hands and should not be permitted under principles of equity to further its “unconscionable” scheme. Id. at 5-6. In support of such broad requested relief, which would affect non-party Mr. Li, Island Life invokes Rule 65(d) authorizing courts to craft injunctions that include “other persons who are in active concert or participation with” the offending party. Id. at 6 (citing Fed. R. Civ. P. 65(d)(2)(C)). Island Life also cites instances where courts enjoined behavior that was either unethical or contrary to public policy but not necessarily illegal. See id. at 6-7 (listing cases). The Court finds no manifest error in its decision to deny Island Life the requested relief. While courts have broad discretion to fashion equitable remedies, this discretion is not unfettered. See Price v. City of Stockton, 390 F.3d 1105, 1117 (9th Cir. 2004) (“[A]n injunction must be narrowly tailored ‘to affect only those persons over which it has power,’ and to remedy only the specific harms shown by the plaintiffs, rather than ‘to enjoin all possible breaches of the law.’”) (quoting Zepeda v. INS, 753 F.2d 719, 728 n.1 (9th Cir. 1983)). Here, Island Life’s proposed remedy sought relief beyond the specific harms at issue in this action that were caused by BBC’s use of the unlicensed “BOK BOK” mark. Instead, Island Life sought to also enjoin BBC from activity that is considered a “well-settled commercial practice”, in an effort to preempt future ORDER DENYING COUNTERCLAIM PLAINTIFF ISLAND LIFE’S MOTION FOR RECONSIDERATION - 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 challenges to the “Bok a Bok” mark from BBC. See E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) (“[A]ssignment/license-back is a well-settled commercial practice.”) (internal quotations omitted). Neither Rule 65(d) nor the cited cases, see Dkt. #90 at 6-7, support Island Life’s proposition that appropriate equitable relief in a trademark infringement action requires not only enjoining use of the infringing mark, but also enjoining the acquisition of any third-party mark that could potentially create confusion with the infringed mark. Accordingly, the Court finds no manifest error in its decision denying the requested relief with respect to acquisition of the third-party “BOCBOC Chicken Delicious” mark. For the reasons set forth above, the Court DENIES Island Life’s Motion. IV. CONCLUSION Having reviewed Island Life’s Motion, the relevant briefing, and the remainder of the record, the Court hereby finds and ORDERS that Counterclaim Plaintiff’s Motion for Reconsideration (Dkt. #90) is DENIED. DATED this 19th day of December 2019. A RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE 18 19 20 21 22 23 24 ORDER DENYING COUNTERCLAIM PLAINTIFF ISLAND LIFE’S MOTION FOR RECONSIDERATION - 7
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