BBK Tobacco & Foods LLP v. Rocky Patel Premium Cigars Incorporated
Filing
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ORDER denying Plaintiff's 44 Motion for Preliminary Injunction. Signed by Judge Frederick J Martone on 7/25/2012.(LFIG)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE DISTRICT OF ARIZONA
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BBK Tobacco & Foods, LLP,
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Plaintiff,
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vs.
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Rocky Patel Premium Cigars, Inc.,
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Defendant.
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CV 11-01517-PHX-FJM
ORDER
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We have before us plaintiff's motion for preliminary injunction (doc. 44) and
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supplement to its motion (doc. 45), defendant's response (doc. 51), and plaintiff's reply (doc.
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59).
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Plaintiff designs and sells various tobacco products. In 1997, plaintiff launched the
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"Zen" brand of rolling papers and cigarette rolling machines. The "Zen" brand includes
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items such as tobacco, cigar wraps, and cigar rolling machines. At some point, plaintiff
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began developing a line of "Zen" cigars. Defendant launched a new line of cigars in July
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2011. It initially displayed boxes of the new cigars at a trade show bearing the brand "Zen
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by Nish Patel." After plaintiff objected to defendant's use of the name "Zen," defendant
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began calling its new cigar line "Xen by Nish Patel."
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Plaintiff filed this action in August 2011 and amended its complaint in September
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2011 (doc. 5). Plaintiff asserts three counts for (1) trademark infringement and false
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designation of origin under 15 U.S.C. § 1125(a); (2) dilution of mark under 15 U.S.C. §
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1125(c); and (3) unfair competition under Arizona law. Plaintiff asks us to enjoin defendant
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from selling or distributing the "Xen by Nish Patel" cigars, and requests an immediate
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hearing. Three days after filing its motion, plaintiff filed a supplement indicating that it
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shipped its first batch of "Zen" cigars to a retail store on June 25, 2012.
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Defendant asks us to strike plaintiff's supplement to its motion pursuant to LRCiv
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7.2(m). Plaintiff has not cited any authority that would allow it to supplement its response,
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and it did not seek an order from this Court before doing so. However, as the supplement
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does not affect our resolution of plaintiff's motion, striking it is unnecessary. Defendant's
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request to strike is denied.
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"A preliminary injunction is an extraordinary remedy never awarded as of right."
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Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24, 129 S. Ct. 365, 376 (2008). To
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obtain one, plaintiff must show that (1) it is "likely to succeed on the merits," (2) it is "likely
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to suffer irreparable harm in the absence of preliminary relief," (3) "the balance of equities
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tips in [its] favor," and (4) "an injunction is in the public interest." Id. at 20, 129 S. Ct. at
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374. A preliminary injunction hearing is appropriate when there are factual disputes
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requiring resolution. Here, however, a hearing is unnecessary, because even assuming all
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of plaintiff's facts are true, plaintiff fails to show that it is entitled to injunctive relief.
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Plaintiff has not presented any evidence of irreparable harm. Instead, plaintiff argues,
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applying pre-Winter case law, that it is entitled to an injunction because it can show both
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probable success on the merits and the possibility of irreparable injury. According to
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plaintiff, showing a likelihood of success on the merits in trademark infringement actions
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raises a presumption of irreparable harm. But, as we have already held, presumptions of
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irreparable harm are no longer available in trademark infringement cases post-Winter. See
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AFL Telecomms. LLC v. SurplusEQ.com, Inc., CV-11-01086-PHX-FJM, 2011 WL
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4102214, at *3 (D.Ariz. Sept. 14, 2011) (concluding that irreparable harm is no longer
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presumed in trademark cases). Winter explicitly rejected the Ninth Circuit's "possibility" of
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irreparable harm standard as "too lenient." Winter, 555 U.S. at 22, 129 S. Ct. at 375. Winter
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noted that awarding injunctive relief based upon the possibility of irreparable harm "is
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inconsistent" with the Supreme Court's characterization of injunctive relief as "an
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extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is
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entitled to such relief." Id. at 22, 129 S. Ct. at 375-76. Similarly, issuing an injunction based
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on a presumption of irreparable harm - an even more lenient standard that would not require
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any showing of irreparable harm - cannot stand after Winter.
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Although the Ninth Circuit has not yet explicitly held that there is no longer a
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presumption of irreparable harm in trademark infringement cases, a number of other district
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courts have reached that conclusion. See Leatherman Tool Grp., Inc. v. Coast Cutlery Co.,
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823 F. Supp. 2d 1150, 1157-58 (D. Or. 2011) (concluding that no "presumption of irreparable
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harm exists in a false advertising claim"); see also BoomerangIt, Inc. v. ID Armor, Inc., 5:12-
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CV-0920-EJD, 2012 WL 2368466, at *4 (N.D. Cal. June 21, 2012) (collecting district court
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cases concluding that there is no longer a presumption of irreparable harm for trademark
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infringement cases). Applying Winter, we reject plaintiff's argument that "it does not need
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to show the possibility of irreparable harm." Reply at 2.
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Moreover, Winter explicitly holds that a plaintiff "must establish. . . that the balance
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of equities tips in his favor, and that an injunction is in the public interest." Winter, 555 U.S.
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at 20, 129 S. Ct. at 374; see also Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127,
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1135 (9th Cir. 2011) (Winter "requires the plaintiff to make a showing on all four prongs").
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Plaintiff does not even address whether the balance of equities tips in its favor or whether an
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injunction would be in the public interest. Plaintiff's failure to do so provides an additional
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and independent basis upon which to deny its motion.
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In sum, because plaintiff has made no showing that it will likely suffer irreparable
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harm, no showing that the balance of equities tip in its favor, and no showing that an
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injunction is in the public interest, it is not entitled to the extraordinary remedy of a
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preliminary injunction. Accordingly, we do not need to address whether plaintiff has shown
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a likelihood of success on the merits.
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IT IS ORDERED DENYING plaintiff's motion for preliminary injunction (doc. 44).
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DATED this 25th day of July, 2012.
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