SST Records Inc et al v. Garfield et al

Filing 39

ORDER DENYING PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION 17 by Judge Dean D. Pregerson. (lc). Modified on 10/8/2013 (lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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SST RECORDS, INC., a Texas
corporation; GREGORY R.
GINN, an individual,

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Plaintiffs,

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v.
HENRY GARFIELD aka HENRY
ROLLINS, an individual;
KEITH MORRIS, an individual;
GARY McDANIEL aka CHUCK
DUKOWSKI, an individual;
DENNIS PAUL CADENA aka DEZ
CADENA, an individual; JOHN
WILLIAM STEVENSON aka BILL
STEVENSON, an individual;
and STEPHEN PATRICK O'REILLY
aka STEPHEN EGERTON, an
individual,

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Defendants.
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___________________________

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Case No. CV 13-05579 DDP (MANx)

ORDER DENYING PLAINTIFFS’ MOTION
FOR PRELIMINARY INJUNCTION

[Dkt. No. 17]

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Presently before the court is Plaintiffs SST Records, Inc.

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(“SST”) and Gregory Ginn’s Motion for a Preliminary Injunction.

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Having considered the submissions of the parties and heard oral

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argument, the court denies the motion and adopts the following

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order.

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I.

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Background
In 1976, Plaintiff Gregory Ginn (“Ginn”) and Defendant Keith

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Morris formed a band, which Defendant Gary McDaniel (also known as

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Chuck Dukowski) later joined.

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In 1978, the band changed its name to “Black Flag,” and played its

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first paid show under that name in January 1979.

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Declaration of Chuck Dukowski ¶ 3.)

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people joined and/or left Black Flag, including Defendants Dennis

(Declaration of Gregory Ginn, ¶ 4.)

(Id. ¶ 5;

Between 1979 and 1986, several

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Cadena, Stevenson, and Garfield (also known as Henry Rollins).

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The parties dispute their various roles in the band.

For at

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least some period of time, the band considered itself to be a

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statutory partnership, making decisions by majority, distributing

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earnings evenly, and submitting tax filings as the “Black Flag

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Partnership.”1

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which Plaintiff Ginn is the sole remaining shareholder, released

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and distributed all of Black Flag’s eighteen albums.

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7.)

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(Dukowski Decl. ¶ 4; Ex. A.)

Plaintiff SST, of

(Ginn Decl. ¶

Black Flag also adopted a logo, consisting of four uneven

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black bars simulating a waving flag (“the Logo”), that ultimately

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became very well-known.

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distributes clothing bearing the Logo.

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parties with no relationship to either Black Flag, SST, or any of

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the parties to this suit also make use of the Logo on clothing and

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promotional materials and in various other ways.

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16; Ex. D.)

(Ginn Decl. ¶ 8.)

SST manufactures and

(Id. ¶ 9.)

Several third

(Dukowski Decl. ¶

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At other times, Dukowski listed Black Flag as his sole
proprietorship, allegedly at Ginn’s request. (Dukowski Decl. ¶ 5.)
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By 1986, Plaintiff Ginn and Defendant Rollins were the only

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parties remaining in Black Flag.

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or Rollins was the last member of the band.

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Rollins Decl. ¶ 5.)

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performed under the Black Flag name for almost twenty years until,

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in 2003, certain former members of Black Flag, including Plaintiff

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Ginn and Defendant Cadena, played three reunion shows in Southern

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California.

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The parties dispute whether Ginn
(Ginn Decl. ¶ 6;

In any event, the band broke up, and no party

(Ginn Decl. ¶ 11.)

Almost a decade later, in December 2011, Defendants Stevenson,

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Morris, Dukowski, and Egerton (who had not been a member of Black

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Flag) performed a single show as Black Flag.

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21.)

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decision to play shows as “Flag,” which they envisioned as a “Black

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Flag tribute band.”

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with the exception of Rollins.

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(Dukowski Decl. ¶

In July 2012, Dukowski and other Defendants came to a

(Id. ¶¶ 22-23.)

Flag includes all defendants,

(Id. ¶ 27.)

In September 2012, after the December 2011 Black Flag show but

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before Flag began performing, Defendants Morris and Rollins filed

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trademark applications for the name Black Flag and for the Logo.

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(Morris Decl. ¶ 5.)

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marks on behalf of the Black Flag Partnership.

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¶ 7.)

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application by submitting material belong to SST as their own and

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by falsely claiming that they had continuously used the Black Flag

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name and Logo on merchandise and in live performances.

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¶¶ 14-16.)

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has yet acted upon the application.

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Morris and Rollins intended to register the
(Id.; Rollins Decl.

Ginn asserts that Morris and Rollins lied in their trademark

(Ginn Decl.

It does not appear that the Patent and Trademark Office

In January 2013, Flag publicly announced that it would begin
touring.

(Dukowski Decl. ¶ 25.)

Flag’s promotional materials
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feature the band name, and the language “Featuring Original Members

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Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with

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Stephen Egerton, Performing the Music of Black Flag.”

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Ex. G.)

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spaced black bars in a straight line (as opposed to the Logo’s

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offset bars).

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is scheduled to finish its 2013 tour on November 8, 2013.2

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In February 2013, two weeks after Flag announced its tour dates,

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Ginn announced that he would be touring as Black Flag.

The materials also include a logo comprised of four evenly

(Id.)

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Decl. ¶ 25.)

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September 2013.

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(Ginn Decl.

Flag played its first show in April 2013, and
(Id.)

(Dukowski

Black Flag toured in the United States through
(Barraza Decl. ¶ 8.)

On August 2, 2013, Ginn and SST filed this suit for trademark

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infringement, unfair competition, and breach of contract.

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Plaintiffs now seek a preliminary injunction enjoining all

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Defendants from using the name Black Flag or the Logo.

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II.

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Legal Standard
Typically, a private party seeking a preliminary injunction

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must show (1) that he is likely to succeed on the merits, (2) that

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he is likely to suffer irreparable harm in the absence of

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preliminary relief, (3) that the balance of equities tips in his

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favor, and (4) that an injunction is in the public interest.

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Winter v. Natural Res. Defense Counsel, 555 U.S. 7, 20 (2008).

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Preliminary relief may be warranted where a party (1) shows a

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Plaintiffs submit the Declaration of Jose Barraza in support
of their assertion that Flag sells Black Flag merchandise at Flag
shows. The quality of the picture is so poor, however, that it is
difficult to tell whether the design on the shirt is the Logo or
the straight-line bars, as well as whether the photo depicts, as
Plaintiffs claim, a Flag merchandise table at a Flag show or a
bookcase of some sort.
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combination of probable success on the merits and the possibility

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of irreparable harm, or (2) raises serious questions and the

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balance of hardships tips in favor of an injunction.

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v. Continental Air Lines, Inc., 819 F.2d 935, 937 (9th Cir. 1987).

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“These two formulations represent two points on a sliding scale in

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which the required degree of irreparable harm increases as the

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probability of success decreases.”

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the party must demonstrate a “fair chance of success on the merits”

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and a “significant threat of irreparable injury.”3

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Id.

See Arcamuzi

Under both formulations,

Id.

III. Discussion
To prevail on a trademark claim, a plaintiff must show that it

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has some protectable interest in the mark.

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Corp. v. eBAY, Inc., 511 F.3d 966, 696 (9th Cir. 2007).

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ownership, the “core element” of a trademark infringement claim is

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the likelihood that the similarity of the marks will confuse

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consumers as to the source of goods or services.

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Network, Inc. v. Oey, 505 F.3d 898, 902 (9th Cir. 2007).

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factors include the strength of the mark, proximity of the goods,

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similarity of the marks, evidence of actual confusion, marketing

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channels used, degree of care likely to be exercised by consumers,

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defendant’s intent, and likelihood of expansion of product lines.

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AMF Inc. v. Sleekcraft Boats, 599 F.2d 941, 348-49 (9th Cir. 1979).

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Apllied Info. Sciences
Beyond

Freecycle
Relevant

Plaintiffs have not shown a sufficient likelihood of success
on the merits to warrant preliminary injunctive relief.

As an

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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).
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initial matter, even putting aside the question whether either

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Plaintiff owns either of the marks, the court is not persuaded that

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Plaintiffs can demonstrate a protectable interest in either the

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Black Flag name or the Logo, neither of which are registered to

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either Plaintiff.

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well known, but at some point, marks may “transcend their

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identifying purpose” and fall outside the protection of trademark

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law.

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Cir. 2002).

Plaintiffs assert that both marks are extremely

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th
“Such genericide can occur as a result of a trademark

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owner’s failure to police the park, resulting in widespread usage

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by competitors leading to a perception of genericness among the

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public, who sees many sellers using the same term.”

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F.3d at 905.

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even if Plaintiffs own the marks, they have allowed them to fall

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into generic use.

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have been distributing unlicensed merchandise featuring the Logo

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since at least 2009, without any action from Plaintiffs.

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Japanese company’s registration of the Black Flag mark in 2008

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elicited no response from Plaintiffs.

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Nor, in the years following the band’s dispersal in 1986, did

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Plaintiffs take any action to maintain the distinctiveness of the

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marks.

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whether Plaintiffs can establish that the marks are protectable.

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Freecycle, 505

Defendants have submitted evidence suggesting that

Several manufacturers, for example, appear to

Indeed, a

(Dukowski Decl., Ex. J.)

See Freecycle, 505 F.3d at 906.

It is, therefore, doubtful

Even if Plaintiffs could establish a protectable interest in

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the marks, they have not adequately demonstrated that the marks and

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Flag’s marks are particularly similar.

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tested on three levels: sight, sound, and meaning.

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considered as they are encountered in the marketplace.”
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“Similarity of the marks is
Each must be
Network

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Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,

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1150 (9th Cir. 2011) (quoting Sleekcraft, 599 F.2d at 354 (internal

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quotation marks omitted)).

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greater the likelihood of confusion.”

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examples of Flag promotional posters or flyers that a consumer

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might encounter in the marketplace.

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these examples includes, immediately adjacent to the name Flag and

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the evenly spaced black bars, the explanatory, and undisputedly

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accurate, language, “Featuring Original Members Keith Morris, Chuck

“The more similar the marks . . ., the
Id.

Plaintiffs provide four

(Ginn Decl., Ex. G.)

Each of

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Dukowski, Bill Stevenson, and Dez Cadena, with Stephen Egerton,

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Performing the Music of Black Flag.”

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“Flag” bear some visual similarity to Plaintiff’s alleged marks,

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the inclusion of explanatory language clearly distinguishes the

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marks visually and aurally, and even more so in meaning.

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encountered, Flag’s marks are not very similar to Plaintiff’s

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alleged marks, and it appears unlikely that consumers will confuse

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them.

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While the black bars and word

So

As to the intent factor, given Plaintiffs’ dissociation from

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the marks for the better part of three decades, Plaintiffs’

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argument that defendants’ selection of the Flag marks was in bad

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faith is not persuasive.

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not claim any connection to the Black Flag and Logo marks until

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after Flag announced its tour plans in 2013.

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ultimately determined that SST owns the marks, Defendants have

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presented at least a colorable argument, and certainly some

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evidence of a good faith belief, that they, through some iteration

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of a partnership, own or owned the marks.

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Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025,

Aside from three shows in 2003, Ginn did

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Even if it is

See Fortune Dynamic,

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1043 (9th Cir. 2010) (The issue in the intent factor is “whether

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defendant in adopting its mark intended to capitalize on

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plaintiff’s good will.” (quotation and citation omitted) (emphasis

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added).4

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Lastly, though evidence of actual confusion is not necessary

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to a finding of likelihood of confusion, evidence of “actual

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confusion among significant numbers of consumers provides strong

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support for the likelihood of confusion.”

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Netscape Comms. Corp., 354 F.3d 1020, 1026 (9th Cir. 2004).

Playboy Enters., Inc. v.
Here,

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Plaintiffs’ only evidence of actual confusion is Ginn’s declaration

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that, at one of his shows, fans asked him if he would be at an

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upcoming Flag show.

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hardly establishes actual confusion among a significant number of

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consumers.

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coverage of this dispute, highlighting the differences between the

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two bands and, thus, decreasing the likelihood of consumer

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confusion.

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(Ginn Decl. ¶ 20.)

Such limited evidence

Furthermore, Defendants point to extensive media

The similarity, intent, and actual confusion factors weigh

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heavily against a finding of likelihood of confusion.

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Plaintiffs may ultimately be able to establish such a likelihood,

Though

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For these same reasons, Plaintiffs have not shown a
likelihood that they will succeed on their trademark cancellation
claim. See Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th
Cir. 1990) (“A party may seek cancellation of a registered
trademark on the basis of fraud under 15 U.S.C. § 1064(c) by
proving a false representation regarding a material fact, the
registrant’s knowledge or belief that the representation is false,
the intent to induce reliance upon the misrepresentation and
reasonable reliance thereon, and damages proximately resulting from
the reliance.” (emphasis added)). Furthermore, it does not appear
that the registration has issued.
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at this stage, they have failed to demonstrate a likelihood of

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success on the merits sufficient to warrant injunctive relief.

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IV.

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Conclusion
For the reasons stated above, Plaintiffs’ Motion for

Preliminary Injunction is DENIED.

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IT IS SO ORDERED.

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Dated: October 8, 2013
DEAN D. PREGERSON
United States District Judge

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