Duck Dive v. Michaeline Heydari et al, No. 2:2013cv07791 - Document 27 (C.D. Cal. 2014)
Court Description: ORDER GRANTING PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION against defendant and its agents (see document for specifics) 19 by Judge Dean D. Pregerson . (lc) .Modified on 3/27/2014 (lc).
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Duck Dive v. Michaeline Heydari et al Doc. 27 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 DUCK DIVE, a California limited partnership, 12 Plaintiff, 13 v. 14 15 16 17 18 MICHAELINE HEYDARI, individually and doing business as THE DUCK DIVE and DUCK DIVE GASTROPUB, INC; DUCK DIVE GASTROPUB, INC., a California corporation, doing business as DUCK DIVE GASTROPUB or DUCK DIVE GASTROPUB MALIBU, 19 Defendants. 20 ___________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 13-07791 DDP (SHx) ORDER GRANTING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION [Dkt. No. 19] 21 22 Presently before the court is Plaintiff Duck Dive’s Motion for 23 Preliminary Injunction. 24 parties and heard oral argument, the court grants the motion and 25 adopts the following order. 26 I. 27 28 Having considered the submissions of the Background In March 2012, Plaintiff Duck Dive, a limited partnership, opened an eponymous “gastropub,” essentially a bar with high Dockets.Justia.com 1 quality food offerings, in San Diego, California. (Complaint ¶ 15- 2 16, 18.) 3 Beach, and derives its name from the surfing term “duck dive,” a 4 method of diving beneath a breaking wave with a surfboard. 5 (Complaint ¶ 15.) 6 “Duck Dive” alongside a graphic of a woman performing a duck dive. 7 (Declaration of Todd Winn ¶5; Mot. at 2.) 8 and hats bearing the logo to local customers and beach tourists. 9 (Winn Decl. ¶ 6.) Duck Dive is located very close to San Diego’s Pacific Duck Dive also uses a logo displaying the text Duck Dive sells shirts Duck Dive has been the subject of favorable 10 media coverage in local outlets such as the San Diego Reader and 11 more distant sources, such as the Los Angeles-area Government 12 Center Gazette and Van Nuys News Press. 13 Dive has filed trademark registrations for the “Duck Dive” name and 14 logo, but has not yet received the registrations. 15 (Mot. Exhs. 3, 4.) Duck (Compl. ¶ 19.) In May 2013, Defendants opened the “Duck Dive Gastropub” in 16 Malibu, California, a beachside community near Los Angeles. 17 Defendants attempted to register the name “The Duck Dive,” but 18 later abandoned that effort. 19 Defendants continue to pursue efforts to register the name “Duck 20 Dive Gastropub Malibu,” and currently operate an establishment 21 under that name. 22 (Compl. ¶ 23; Mot. Ex. 11.) (Mot. Ex. 11.) After sending Defendants a cease and desist letter, to no 23 avail, Plaintiff filed the instant action, alleging trademark 24 infringement, unfair competition, unfair business practices, and 25 unjust enrichment. 26 enjoining Defendants from using the name “Duck Dive” in connection 27 with bar or restaurant services. 28 /// Plaintiff now seeks a preliminary injunction 2 1 2 II. Legal Standard A private party seeking a preliminary injunction must show (1) 3 that he is likely to succeed on the merits, (2) that he is likely 4 to suffer irreparable harm in the absence of preliminary relief, 5 (3) that the balance of equities tips in his favor, and (4) that an 6 injunction is in the public interest. 7 Defense Counsel, 555 U.S. 7, 20 (2008). 8 warranted where a party (1) shows a combination of probable success 9 on the merits and the possibility of irreparable harm, or (2) Winter v. Natural Res. Preliminary relief may be 10 raises serious questions and the balance of hardships tips in favor 11 of an injunction. 12 F.2d 935, 937 (9th Cir. 1987). 13 two points on a sliding scale in which the required degree of 14 irreparable harm increases as the probability of success 15 decreases.” 16 demonstrate a “fair chance of success on the merits” and a 17 “significant threat of irreparable injury.”1 18 III. Discussion Id. See Arcamuzi v. Continental Air Lines, Inc., 819 “These two formulations represent Under both formulations, the party must Id. 19 A. 20 Defendants first argue that Plaintiff has not demonstrated a Irreparable Harm 21 likelihood of irreparable harm, and that irreparable harm cannot be 22 presumed in trademark infringement cases. 23 demonstration of likely success on the merits of a trademark claim 24 gave rise to a presumption of irreparable injury. Historically, a See Marlyn 25 1 26 27 28 Even under the “serious interests” sliding scale test, a plaintiff must satisfy the four Winter factors and demonstrate “that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011). 3 1 Nutraceticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 2 (9th Cir. 2009). 3 held that in copyright cases, a presumption of irreparable harm 4 could no longer follow from a finding of likelihood of success on 5 the merits. 6 654 F.3d 989, 998 (9th Cir. 2011). 7 not, however, address the viability of the presumption in the 8 trademark context, and the Ninth Circuit has yet to do so. 9 absence of any binding authority, districts in this court have In the wake of Winter, the Ninth Circuit then Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., The Flexible Lifeline court did In the 10 taken conflicting approaches. 11 ID Armor, Inc., No. 12-CV-0920 EJD, 2012 WL 2368466 at *4 (N.D. 12 Cal. Jun. 21, 2012) with Otter Prods., LLC v. Berrios, No. CV 13- 13 4384 RSWL, 2013 WL 5575070 at *11 (C.D. Cal. Oct. 10, 2013); 14 Nordstrom, Inc. v. NoMoreRack Retail Group, Inc., No. C12-1853-RSM, 15 2013 WL 1196948 at *13 (W.D. Wash. Mar. 25, 2013). 16 Compare, e.g., BoomerangIt, Inc. v. Here, the court need take no position on the existence of a 17 presumption because Plaintiff has presented evidence of irreparable 18 harm. 19 mistakenly associated Plaintiff’s establishment with Defendants’, 20 and multiple patrons have confused one gastropub for the other. 21 While Defendants are correct that monetary losses alone do not 22 constitute irreparable injury, harm to a business’ reputation and 23 goodwill and loss of prospective customers do qualify as 24 irreparable damage. 25 Co., Inc., 240 F.3d 832, 841 (9th Cir. 2001); MySpace, Inc. v. 26 Wallace, 498 F.Supp.2d 1293, 1305 (C.D. Cal. 2007). 27 /// 28 /// As discussed in further detail below, press reports have Stuhlbarg Int’l Sales Co. v. John D. Brush and 4 1 B. Likelihood of Success 2 To prevail on a trademark claim, a plaintiff must show that it 3 has some protectable interest in the mark. Apllied Info. Sciences 4 Corp. v. eBAY, Inc., 511 F.3d 966, 696 (9th Cir. 2007). 5 ownership, the “core element” of a trademark infringement claim is 6 the likelihood that the similarity of the marks will confuse 7 consumers as to the source of goods or services. 8 Network, Inc. v. Oey, 505 F.3d 898, 902 (9th Cir. 2007). 9 factors include the strength of the mark, proximity of the goods, Beyond Freecycle Relevant 10 similarity of the marks, evidence of actual confusion, marketing 11 channels used, degree of care likely to be exercised by consumers, 12 defendant’s intent, and likelihood of expansion of product lines. 13 AMF Inc. v. Sleekcraft Boats, 599 F.2d 941, 348-49 (9th Cir. 1979). 14 15 1. Ownership of the Mark Defendants suggest, without any citation to authority, that 16 Plaintiff has no protectable interest in the “Duck Dive” mark 17 because other businesses around the country, including musicians, 18 housing providers, artists, and restauranteurs as far away as North 19 Carolina use the term “Duck Dive” in some form. (Opp. at 7-8.) 20 The test of trademark ownership is priority of use. 21 Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217 (9th Cir. 1996). 22 first to use a mark is deemed the ‘senior’ user and has the right 23 to enjoin ‘junior’ users from using confusingly similar marks in 24 the same industry and market or within the senior user’s natural 25 zone of expansion.” 26 Corp., 174 F.3d 1036, 1047 (9th Cir. 1999) (emphases added). 27 fact that others may use the term “Duck Dive” with respect to art, 28 clothing, or even food services thousands of miles from Plaintiff’s Sengoku “The Brookfield Commc’ns. Inc. V. West Coast Entm’t 5 The 1 establishment has no bearing on Plaintiff’s ability to obtain 2 trademark protection in its industry and market, within which 3 Plaintiff is undisputedly the senior user of the Duck Dive mark. 4 (Winn Decl. ¶ 7.) 5 6 2. Likelihood of Confusion The strength of a trademark depends, in part, on its position 7 on a specturm ranging from generic to arbitrary. Rearden LLC v. 8 Rearden Commerce, Inc., 683 F.3d 1190, 1211 (9th Cir. 2012). 9 Arbitrary marks consist of words that have no connection with the 10 product. 11 with the bar or restaurant services that both Plaintiff and 12 Defendant provide.2 13 does not dispute that its use of “Duck Dive gastropub” is virtually 14 identical to the “Duck Dive” mark Plaintiff seeks to protect in 15 relation to its gastropub. 16 Id. Here, “Duck Dive,” a surfing term, has nothing to do The mark is, therefore, strong. Defendant Defendants argue that consumers are not likely to confuse the 17 two establishments because Plaintiffs operate in San Diego and 18 Defendants’ business is in Malibu, near Los Angeles. 19 disagrees. 20 insignificant, both are located in popular Southern California 21 beach communities, thus placing Malibu within Plaintiff’s zone of 22 natural expansion. 23 it has considered expanding to the Los Angeles area, where it has The court While the distance between the two Duck Dives is not Indeed, Plaintiff has submitted evidence that 24 25 26 27 28 2 While the word “dive” could describe certain downscale bars, Plaintiff does not characterize its establishment as such, nor does the evidence presented suggest that the parties’ relatively upscale businesses qualify as dive bars. Indeed, a “dive bar gastropub” would border on the oxymoronic. 6 1 already received some media attention. 2 4.) 3 (Winn Decl. ¶ 15; Mot. Ex. Lastly, though evidence of actual confusion is not necessary 4 to a finding of likelihood of confusion, evidence of “actual 5 confusion among significant numbers of consumers provides strong 6 support for the likelihood of confusion.” 7 Netscape Comms. Corp., 354 F.3d 1020, 1026 (9th Cir. 2004). 8 Defendants make unsupported assertions that consumer confusion is 9 unlikely, Plaintiff has presented evidence of actual consumer Playboy Enters., Inc. v. Though 10 confusion. 11 declared under penalty of perjury that multiple customers have 12 called Plaintiff’s San Diego Duck Dive in the mistaken belief that 13 it is Defendants’ Malibu establishment, and that confused customers 14 have placed to-go orders with Plaintiff that are then never picked 15 up. 16 blog erroneously reported, even after communicating with 17 Defendants, that Defendants’ establishment is Plaintiff’s “second 18 location.” 19 favor of a preliminary finding of likelihood of confusion. 20 IV. 21 22 23 Tom Winn, a limited partner of Plaintiff Duck Dive, has (Winn Decl., ¶ 14.) Furthermore, a Los Angeles-based food (Mot. Exs. 10, 11.) These factors weigh heavily in Conclusion For the reasons stated above, Plaintiff’s Motion for Preliminary Injunction is GRANTED. IT IS HEREBY ORDERED that Defendants and their employees, 24 servants, agents, affiliates, distributors, dealers, attorneys, 25 successors and/or assigns, and all persons in active concert or 26 participation with any of them, are, pending trial on the merits or 27 until further order of court, preliminarily enjoined from: 28 7 1 a. Using “DUCK DIVE” or “DUCK DIVE GASTROPUB” as a 2 trademark, trade name, or service mark for bar/restaurant 3 services, or for the retail and/or internet sale of 4 apparel, or any confusingly similar mark, or any 5 colorable imitations thereof; 6 b. Using “DUCK DIVE” or “DUCK DIVE GASTROPUB” in any 7 advertisements, media promotions, or in any internet 8 posting containing audio over which Defendants have 9 control, including but not limited to Facebook and 10 11 Pinterest; c. Opening any new gastropubs or other commercial corporate 12 locations bearing the name or signage “DUCK DIVE” or 13 “DUCK DIVE GASTROPUB” or any similar mark; 14 d. Using the mark “DUCK DIVE” or “DUCK DIVE GASTROPUB” 15 inside any new gastropub locations, on displays or 16 otherwise; 17 e. Selling in any current or new gastropub locations any 18 goods bearing the marks “DUCK DIVE” or “DUCK DIVE 19 GASTROPUB”; 20 f. 21 22 23 24 Advertising or publicizing any current or new gastropubs bearing the name “DUCK DIVE” or “DUCK DIVE GASTROPUB”; g. Performing or allowing any act or thing which may tarnish the distinctive quality of DUCK DIVE’s Duck Dive Marks. Nothing herein shall prevent Defendants from the use of the 25 generic term “Gastropub” by itself; the use of the name “Gastropub” 26 by itself in any advertisements, media promotions, or any internet 27 postings; or the use of the generic term “Gastropub” by itself in 28 8 1 connection with any of the activities described in paragraphs (c) 2 through (g) above. 3 4 5 IT IS SO ORDERED. 6 7 8 Dated: March 27, 2014 DEAN D. PREGERSON United States District Judge 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9
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