The National Grange of the Order of Patrons of Husbandry v. California State Grange

Filing 138

MEMORANDUM AND ORDER RE 126 Motion for Injunction signed by Senior Judge William B. Shubb on 4/20/16. Defendant shall pay plaintiff these attorney's fees and file an affidavit with the court confirming payment within five (5) business days after the court issues its Order regarding the attorney's fees.(Mena-Sanchez, L)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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----oo0oo----

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THE NATIONAL GRANGE OF THE
ORDER OF PATRONS OF
HUSBANDRY, a District of
Columbia nonprofit
corporation,

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CIV. NO. 2:14-676 WBS AC
MEMORANDUM AND ORDER RE: MOTION
FOR INJUNCTION

Plaintiff,
v.

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CALIFORNIA STATE GRANGE d/b/a
“CSG,” a California
corporation,
Defendant.

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----oo0oo----

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Plaintiff National Grange of the Order of Patrons of

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Husbandry brought this action against defendant California State

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Grange for trademark infringement and unfair competition under

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the Lanham Act.

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for an injunction pursuant to the Lanham Act, 15 U.S.C.

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§ 1116(a).

Presently before the court is plaintiff’s motion

(Docket No. 126.)

For the reasons explained below,
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plaintiff’s motion is GRANTED in part.

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I.

Factual and Procedural Background

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Plaintiff is a national fraternal organization founded

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in 1867 to promote the interests of farming and agriculture.

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(July 14, 2015 Order at 1-2 (Docket No. 60).)

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grown to a network of approximately 2,000 local chapters across

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the country, through which it provides a variety of goods and

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services to agricultural communities.

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owns numerous registered numerous trademarks featuring the word

Plaintiff has

(Id. at 2.)

Plaintiff

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“Grange,” which it uses for associational, educational, and

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advocacy activities.

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(Id.)

Plaintiff chartered defendant as its affiliate

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California state chapter in 1873.

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affiliate, defendant collected dues from local subordinate

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granges and turned over a portion of those dues to plaintiff.

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(Id.)

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with the California Secretary of State.

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22, 2016 (Docket No. 126-3).)

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(Id.)

As a chartered

In 1946, defendant registered as a non-profit corporation
(Huber Decl. ¶ 8, Mar.

In 2012, a dispute arose between plaintiff and

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defendant.

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revoked defendant’s charter and the parties disaffiliated.

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¶ 7.)

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reorganize a California state chapter under the name Grange of

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the State of California’s Order of Patrons of Husbandry,

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Chartered.

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(Compl. ¶ 5 (Docket No. 1).)

As a result, plaintiff
(Id.

Plaintiff’s California-based members subsequently voted to

(Id. ¶ 38.)

Despite the parties’ disaffiliation, defendant

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continued to use its registered corporate name, California State

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Grange, and represent itself publically as California State
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Grange on its website, at events, and in its newsletters.

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14, 2015 Order at 2.)

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action, bringing claims for (1) federal trademark infringement

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under Section 32 of the Lanham Act, 15 U.S.C. § 1114; (2) unfair

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competition and false designation of origin under Section 43(a)

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of the Lanham Act, 15 U.S.C. § 1125(a); (3) federal trademark

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dilution under § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c);

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and (4) federal trademark counterfeiting under § 32(1) of the

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Lanham Act, 15 U.S.C. § 1114(1).

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(July

In March 2014, plaintiff filed this

(Compl. ¶¶ 48-101.)1

On July 14, 2015, the court granted plaintiff’s motion

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for partial summary judgment on its claims for trademark

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infringement and unfair competition and false designation of

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origin.

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plaintiff’s motion to enjoin defendant from using the words

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“Granger,” “CSG,” and “CG” because summary judgment was limited

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to the use of “Grange.”

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September 29, 2015, the court entered final judgment permanently

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enjoining “defendant and its agents, affiliates, and assigns, or

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any party acting in concert with defendant and its agents,

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affiliates, and assigns from using marks containing the word

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‘Grange.’”

(July 14, 2015 Order at 12, 19.)2

The court then denied

(Sept. 29, 2015 Order at 4.)

On

(Docket No. 86.)

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This case is related to another action presently
pending before this court, National Grange of the Order of
Patrons of Husbandry v. California State Grange, Civ. No. 2:16201 WBS AC. (Docket No. 112.) Plaintiff also filed an action in
California state court seeking a declaration of the parties’
rights and duties following the revocation of defendant’s
charter. National Grange v. California State Grange, Civ. No.
34-2012-130434 (Cal. Sup. Ct. filed Oct. 1, 2013).
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Plaintiff voluntarily dismissed its remaining claims
with prejudice. (Docket No. 64.)
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On October 28, 2015, defendant filed a notice of appeal

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from the court’s judgment and its July 14 and September 29

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Orders.

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of the court’s September 29, 2015 Order limiting injunctive

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relief to the word “Grange.”

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currently pending before the United States Court of Appeals for

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the Ninth Circuit.

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motion to stay the injunction pending appeal, holding that

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plaintiff “would be substantially injured by defendant’s

(Docket No. 87.)

Plaintiff cross-appealed the portion

(Docket No. 90.)

The appeals are

In January 2016, the court denied defendant’s

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continued infringement of its trademark were the court to grant a

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stay of the injunction.”

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108).)

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(Jan. 12, 2016 Order at 4 (Docket No.

Defendant additionally registered with Sacramento

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County to do business as “California State Guild” and “CSG.”

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(Sept. 29, 2015 Order at 4.)

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continues to use “California State Grange” as its corporate name

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on file with the California Secretary of State.

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¶¶ 12-13, Feb. 22, 2016 (“McFarland I Decl.”) (Docket No. 114-

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1).)

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Grange,” among other things, plaintiff brought a motion for an

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order to show cause why defendant should not be held in contempt

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for violating the court’s injunction.

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court denied that motion without prejudice to plaintiff filing

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the pending motion and requesting to enjoin defendant’s specific

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conduct based on the issues litigated and evidence presented to

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the court at the time of the injunction.

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125.)

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To date, however, defendant

(McFarland Decl.

Based on defendant’s continued use of “California State

(Docket No. 109.)

The

(Docket Nos. 117, 120,

Plaintiff now moves to enjoin defendant, its agents,
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affiliates, and any party acting in concert with defendant, from:

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(1) using “Grange,” “Granger,” or “CSG” in conducting business

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activities or as part of a business, trade, or domain name; (2)

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using “Grange” in corporate registrations or other filings with

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any federal, state, or local government; and (3) representing

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themselves to be the successor to “California State Grange.”

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(Docket No. 126-4.)

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(4) remove the name “Grange” from all telephone and business

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directory listings; (5) include a prominent disclaimer on its

Plaintiff further requests that defendant

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website and in all future communications that it is “not

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affiliated with the California State Grange”; (6) include a

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hyperlink on its website that redirects users to plaintiff’s

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California-based grange website; and (7) pay plaintiff reasonable

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attorney’s fees in bringing the pending motion and its previous

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motion for an order to show cause why defendant should not be

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held in contempt.

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II.

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(Id.)

Legal Standards
A.

Injunctive Relief Under the Lanham Act
Plaintiff here succeeded on its claims for trademark

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infringement, 15 U.S.C. § 1114, and unfair competition, 15 U.S.C.

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§ 1125(a), under the Lanham Act.

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Defendant has conceded that its services are identical to those

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offered by plaintiff and that the use of “Grange” by two

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California organizations had caused actual confusion among

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consumers and “great confusion” among local granges.

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11; see also Compl. ¶ 44 (“Defendant’s continued use of GRANGE

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Marks will likely lead to actual confusion among members of the

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public, since there are two organizations--one legitimately

(See July 14, 2015 Order.)

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(Id. at 10-

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affiliated with the National Grange and one that is not--using

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the same or substantially similar Grange name and GRANGE Marks to

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offer the same goods and services to the same members of the

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public.”).)

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drawn: defendant’s use of ‘Grange’ is likely to cause, and

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apparently has caused, a reasonably prudent consumer in the

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marketplace to be confused about the origin of defendant’s

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services.”

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The court thus found that “only one inference can be

(July 14, 2015 Order at 12.)

“Injunctive relief is the remedy of choice for

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trademark and unfair competition cases, since there is no

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adequate remedy at law for the injury caused by a defendant’s

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continuing infringement.”

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Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988).

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authorizes the court “to grant injunctions, according to the

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principles of equity and upon such terms as the court may deem

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reasonable, to prevent the violation” of trademark rights and to

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prevent unfair competition.

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Century 21 Real Estate Corp. v.
The Lanham Act

15 U.S.C. § 1116(a).

“[I]f a district court finds infringement, it retains

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the discretion to fashion any remedy which alleviates that

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confusion.”

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304 F.3d 936, 948 (9th Cir. 2002).

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especially appropriate where the infringing use is for a similar

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service.

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injunctive relief was appropriate to prevent defendant’s

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continued trademark violations and unfair competition.

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U.S.C. § 1116(a).

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///

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///

Interstellar Starship Servs., Ltd. v. Epix, Inc.,

Sandlin, 846 F.2d at 1181.

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Broad injunctions are

This court thus found that

See 15

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B.

Injunctive Relief During a Pending Appeal

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“[A]n injunction often requires continuing supervision

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by the issuing court and always a continuing willingness to apply

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its powers and processes on behalf of the party who obtained that

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equitable relief.”

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Wright, 364 U.S. 642, 647-48 (1961).

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continuing jurisdiction here to “supervise the injunctive relief

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[it had] granted.”

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768 F.2d 1001, 1030 (9th Cir. 1985).

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Sys. Fed’n No. 91, Ry. Emp. Dep’t, AFL-CIO v.
The court thus has

Transgo, Inc. v. Ajac Transm’n Parts Corp.,

Defendant appealed the court’s judgment on October 28,

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2015.

(Docket No. 87.)

Although an appeal ordinarily divests

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the district court of jurisdiction over the matters on appeal,

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Federal Rule of Civil Procedure 62(c) creates an exception to

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that rule: “While an appeal is pending from an interlocutory

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order or final judgment that grants, dissolves, or denies an

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injunction, the court may suspend, modify, restore, or grant an

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injunction on terms for bond or other terms that secure the

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opposing party’s rights.”

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Def. Council, Inc. v. Sw. Marine, Inc., 242 F.3d 1163, 1166 (9th

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Cir. 2001).

Fed. R. Civ. P. 62(c); see Nat. Res.

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Rule 62(c) confers upon the district court the power

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“it has always inherently possessed to preserve the status quo

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during the pendency of an appeal.”

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F.3d at 1166.

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to the district court to adjudicate anew the merits of the case.”

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Id. (citation omitted).

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62(c) “may not materially alter the status of the case on

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appeal.”

Nat. Res. Def. Council, 242

However, the Rule “does not restore jurisdiction

Thus, any action taken pursuant to Rule

Id. (citation omitted); see In re TFT-LCD (Flat Panel)
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Antitrust Litig., Civ. No. C-07-01827 SI, 2013 WL 6055079, at *1

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(N.D. Cal. Nov. 13, 2013) (“[W]hile an appeal is pending, the

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district court . . . may not take any action that would change

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the core issues before the appellate court.”).

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Defendant makes much of the fact that in its Reply

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Brief (Docket No. 133) plaintiff stated that it “is not asking

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the Court to maintain the status quo . . .” (Id., p. 3).

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court remains befuddled by that statement in the Reply Brief,

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since preserving the status quo is exactly what plaintiff appears

The

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to be asking for elsewhere in its moving papers, and it is all

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the court intends to do by this Order.

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Where the court supervises a continuing course of

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conduct pursuant to an injunction, and new facts develop that

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require additional action by the court to ensure compliance with

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its order, an appeal from the original order “does not divest the

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district court of jurisdiction to continue its supervision, even

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though in the course of that supervision the court acts upon or

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modifies the order from which the appeal is taken.”

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Beer Drivers & Salesmen’s Local Union No. 888, 536 F.2d 1268,

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1276 (9th Cir. 1976).

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preserve the status quo and ensure the effectiveness of its

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judgment, despite the pending appeal in this action.

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Newspapers v. Cent. Valley Typographical Union No. 46, 686 F.2d

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731, 734-35 (9th Cir. 1982); Tribal Vill. of Akutan v. Hodel, 859

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F.2d 662, 663 (9th Cir. 1988).

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Hoffman v.

The court thus retains jurisdiction to

McClatchy

The status quo is measured at the time the appeal is

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filed.

In re Delta Smelt Consol. Cases, Civ. No. 1:09-407 OWW,

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2011 WL 2559021, at *4 (E.D. Cal. June 24, 2011); see Nat. Res.
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Def. Council, 242 F.3d at 1166); see also TFT-LCD, 2013 WL

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6055079, at *1 (“[W]hile an appeal is pending, the district court

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may act to preserve the status quo at the time the appeal was

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filed.”).

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29, 2015, and defendant filed its appeal on October 28, 2015.

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Accordingly, the status quo at the time the appeal was filed

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prohibited “defendant and its agents, affiliates, and assigns, or

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any party acting in concert with them, from using marks

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containing the word “Grange.”

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The permanent injunction here was entered on September

III. Analysis

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Plaintiff seeks an order enjoining defendant and its

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agents, affiliates, and assigns, or any party acting in concert

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with them, from using the word “Grange,” including “California

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State Grange” and “California Grange Foundation,” in any business

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activities or as part of any trademark, service mark, trade name,

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corporate name, domain name, or e-mail address.

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A.

Subject Matter Jurisdiction
Defendant argues that enjoining it from using “Grange”

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as part of its corporate name is impermissible under Rule 62(c)

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because the requested relief “goes well beyond preserving the

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status quo” and “seeks to change the status quo” by granting “new

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relief that plaintiff chose not to pursue during the litigation

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of this action.”

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defendant argues plaintiff’s motion “must be denied for lack of

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jurisdiction.”

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(Opp’n at 2 (Docket No. 132).)

On that basis,

(Id.)

Defendant’s contention that the requested relief

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constitutes “new relief that plaintiff chose not to pursue during

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the litigation of this action” is not accurate.
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Plaintiff’s

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Complaint sought to “[p]ermanently enjoin Defendant, as well as

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its agents, successors, assigns, and all persons in active

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concert or participation with Defendant, from using the GRANGE

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Marks or any other mark, corporate name or trade name that

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contains the word GRANGE.”

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The Complaint also requested that the court “direct that

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Defendant’s registration of the corporate entity name ‘California

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State Grange’ be revoked.”

(Compl. at 21-22 (emphasis added).)

(Id. at 22 (emphasis added).)

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The Ninth Circuit has repeatedly rejected the argument

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that a district court lacks subject matter jurisdiction to grant

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additional injunctive relief or modify its existing injunction

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while an appeal is pending.

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(“[A]n appeal from an order granting an injunction does not

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deprive the district court of jurisdiction to alter the

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injunction for purposes of maintaining the status quo.”);

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Hoffman, 536 F.2d at 1276 (“[I]n the case of an appeal from an

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order granting an injunction, the district court does not lose

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jurisdiction to alter the injunction.”).

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supra Part II.B, Rule 62(c) authorizes the court to grant or

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modify injunctive relief to preserve the status quo or ensure

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compliance with its earlier orders.

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F.3d 1130, 1138 (9th Cir. 2014); A&M Records, Inc. v. Napster,

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Inc., 284 F.3d 1091, 1099 (9th Cir. 2002) (“The district court

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properly exercised its power under Rule 62(c) to continue

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supervision of [defendant’s] compliance with the injunction.”);

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Armstrong v. Brown, 732 F.3d 955, 959 n.6 (9th Cir. 2013) (“The

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district court acted to preserve the status quo and protect

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plaintiffs’ rights in direct response to defendants’ repeated and

See McClatchy, 686 F.2d at 735

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As discussed above,

E.g., In re Icenhower, 755

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willful non-compliance with its earlier orders.”).
The court may modify or broaden the scope of its

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injunction under its continuing duty to supervise the relief

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granted if it is informed of new facts that require additional

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supervisory action.

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general rule that an appeal to the circuit court deprives the

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district court of jurisdiction “should not be applied in those

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cases where the district court, as here, has a continuing duty to

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maintain a status quo”); see Sys. Fed’n No. 91 v. Wright, 364

Hoffman, 536 F.2d at 1276 (holding that the

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U.S. 642, 647-48 (1961) (holding that a district court has “wide

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discretion” to modify an injunction based on changed

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circumstances or new facts); A&M Records, 284 F.3d at 1098-99

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(modification of injunction during pendency of appeal was proper

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to clarify the injunction and supervise compliance in light of

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new facts); Meinhold v. U.S. Dep’t of Def., 34 F.3d 1469, 1480

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n.14 (9th Cir. 1994) (“DOD also contends that the district court

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lacked jurisdiction to issue its amended order, which broadened

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the scope of injunctive relief, because an appeal had already

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been taken from the original order.

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the amended order to clarify its original injunction and to

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supervise compliance in the wake of [plaintiff’s] motion for

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contempt, it did not lack jurisdiction.”).

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therefore grant the relief requested here.

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As the district court issued

The court may

The court also has the authority to enforce its orders

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while an appeal is pending.

Sekaquaptewa v. MacDonald, 544 F.2d

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396, 406 (9th Cir. 1976).

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judgments of courts must be complied with promptly.”

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Crystal Palace Gambling Hall, Inc., 817 F.2d 1361, 1364 (9th Cir

“Absent a stay, all orders and

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In re

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1987) (citation omitted).

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motion to stay the injunction pending appeal.

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Order.)

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court’s previous injunction and, absent a stay, with any

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injunctive relief granted here.

The court here denied defendant’s
(See Jan. 12, 2016

Defendant is therefore obliged to comply with the

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Granting the requested relief would also not change the

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status quo or materially alter the status of this case on appeal.

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In granting the requested relief, the court would not be

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adjudicating new issues that were “not decided in its original

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disposition of the case.”

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that the district court’s post-judgment adjudication of an issue

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not decided in its original disposition of the case materially

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affected the substantial rights of the parties and thus did not

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fall within the authority of Rule 62(c)).

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Banking Group, 916 F.2d 1405 (9th Cir. 1990), the Ninth Circuit

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explained that a district court’s post-judgment order may not

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“change . . . the result of the very issue on appeal.”

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1412.

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court’s decision on the original order would be moot.

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Alternatively, the appellate court would be dealing with a

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“moving target” if it were to rule on the post-judgment order

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instead.

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McClatchy, 686 F.2d at 735 (holding

In Britton v. Co-op

Id. at

If such an order were allowed to stand, the appellate
Id.

Id.
Here, by contrast, granting the requested relief would

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not change the result of the issues on appeal.

The issues on

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appeal involve whether the court properly (1) granted plaintiff’s

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motion for partial summary judgment on its trademark infringement

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and unfair competition claims, and (2) entered its September 29,

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2015 permanent injunction.

(Docket Nos. 87, 90.)
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Enjoining

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defendant and its agents and affiliates from using the word

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“Grange” in conducting any business activities or as part of any

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corporate name, trademark, service mark, trade name, domain name,

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or email address would not change the status quo because the

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questions presented to the Ninth Circuit would remain unaffected.

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See Nat. Res. Def. Council, 242 F.3d at 1166-67 (upholding

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district court’s post-judgment order because it “left unchanged”

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the core questions before the appellate court); Armstrong, 732

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F.3d at 959 n.6 (“[T]he status of this case on appeal remains

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unaltered by the [post-judgment order] because the question

11

before us remains unchanged.”).

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Nor would the court be adjudicating any new issues that

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were not decided in its original disposition of the case.

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McClatchy, 686 F.2d at 735.

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injunctive relief in the pending motion on the court’s

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disposition that (1) plaintiff has a protectable interest in its

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valid and federally-registered “Grange” mark, and (2) there is

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substantial evidence that defendant’s conduct created a strong

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likelihood that a reasonably prudent consumer would be confused

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as to the origin of defendant’s services and believe that

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defendant was affiliated with plaintiff.

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5-10.)

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relief based upon these previously-adjudicated findings.

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Delta Smelt, 2011 WL 2559021, at *6 (“This is not a case where

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the requested actions will change the judgment in any way.”).

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See

Plaintiff bases its requests for

(July 14, 2015 Order at

The court may grant plaintiff’s requested injunctive
See

Requiring defendant and its affiliates to remove the

27

word “Grange” from their corporate names would in fact preserve

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the status quo by ensuring compliance with the court’s summary
13

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judgment Order and permanent injunction.

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(district courts may enforce their injunctions granted under the

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Lanham Act); Nat. Res. Def. Council, 242 F.3d at 1166 (“We

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conclude that the district court possessed jurisdiction to modify

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the injunction while the consolidated appeal was pending, because

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the changes preserved the status quo and did not materially alter

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the status of the case on appeal.”).

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rejects defendant’s argument that it lacks jurisdiction to grant

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the requested relief.

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B.

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See 15 U.S.C. § 1116(a)

Accordingly, the court

Defendant’s Corporate Name
Defendant continues to use “Grange” as part of its

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corporate name.

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publically displays defendant’s name as “California State Grange”

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and Robert McFarland as its president.

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Detail for “CALIFORNIA STATE GRANGE,” http://kepler.sos.ca.gov

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(last visited Apr. 14, 2016).3

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filed with the California Secretary of State also lists its name

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as “California State Grange.”

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2016 (“McFarland II. Decl.”) (Docket No. 132-8).)

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The California Secretary of State website

See Business Entity

Defendant’s lobbying registration

(McFarland Decl. Ex. C, Apr. 1,

Defendant has also filed its fictitious name statements
for “California Guild Foundation” and “CSG” with Sacramento

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The court takes judicial notice of filings with the
California Secretary of State and County of Sacramento because
they are matters of public record whose accuracy is not subject
to reasonable dispute. See Fed. R. Evid. 201; Lee v. City of Los
Angeles, 250 F.3d 668, 689 (9th Cir.2001); see also Grant v.
Aurora Loan Servs., Inc., 736 F. Supp. 2d 1257, 1265 (C.D. Cal.
2010) (judicial notice of incorporation filings with Delaware
secretary of state); Helmer v. Bank of Am., N.A., Civ. No. 2:12733 TLN, 2013 WL 4546285, at *2 (E.D. Cal. Aug. 27, 2013)
(judicial notice of records filed with county).
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County under its corporate name.

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a result, the Sacramento County website displays “CALIFORNIA

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STATE GRANGE” as the entity that owns every one of defendant’s

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business names.

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Decl.”) (Docket No. 109-1); see McFarland II Decl. ¶¶ 4-5.)

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continuing to use the word “Grange” in this manner, defendant

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continues to infringe plaintiff’s registered mark and engage in

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unfair competition against plaintiff.

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Allen Decl. ¶ 20 (Docket No. 126-3) (“[M]any local Grange members

(McFarland I Decl. Ex. A.)

As

(Komski Decl. Ex. 2, Feb. 1, 2016 (“Komski II
By

(See July 14, 2015 Order;

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are relying on the official records of the California Secretary

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of State, among other governmental authorities, to ascertain the

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‘true’ California State Grange.”.)

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The court’s injunction in this case enjoined the

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defendant and those acting in concert with it from using “marks

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containing the word ‘Grange.’”

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using the word “marks” in its order the court intended only to

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preclude the use of trademarks, not names, containing the word

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“Grange.”

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intention.

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plaintiff sought to prevent defendant from using.

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way the word “Grange” was written.

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word “Grange” in defendant’s name which plaintiff sought to

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enjoin, and that is what the court intended to do in its Order.

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If the court erred in employing the term “marks” instead of

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“names” in its order, it was a big mistake, but plaintiff should

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not have to pay for that mistake by being required to wait while

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a long appeal is processed before the court can correct it.

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(Opp’n at 6.)

Defendant now argues that by

That certainly was not the court’s

It was never some design, symbol, or logo which
Nor was it the

It was always the use of the

Upon more than just a cursory analysis, however,
15

1

defendant’s interpretation of the injunction fails because, under

2

the Lanham Act, the term “mark” includes “words.”

3

§ 1127.

4

service mark, collective mark, or certification mark.

5

of these is defined as “any word, name, symbol, or device, or any

6

combination thereof.”

7

any words or names used to identify and distinguish goods or

8

services and to indicate the source of those goods or services.

9

Id.4

See 15 U.S.C.

The Lanham Act defines a “mark” as any trademark,

See id.

Id.

Each

Trademarks and service marks are

Trademarks apply to goods; service marks apply to services.

10

Defendant’s argument therefore amounts to no more than

11

a game of “gottcha” because the court’s September 29, 2015

12

injunction prohibiting defendant from using marks containing

13
14

4

Section 1127 of the Lanham Act provides in relevant

part:

15
16
17
18
19
20
21
22
23
24
25
26
27
28

The term “trademark” includes any word, name, symbol, or
device, or any combination thereof-(1) used by a person, or
(2) which a person has a bona fide intention to use
in commerce and applies to register on the principal
register established by this chapter,
to identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that
source is unknown.
The term “service mark” means any word, name, symbol, or
device, or any combination thereof-(1) used by a person, or
(2) which a person has a bona fide intention to use
in commerce and applies to register on the principal
register established by this chapter,
to identify and distinguish the services of one person,
including a unique service, from the services of others
and to indicate the source of the services, even if that
source is unknown.
Id. § 1127 (emphases added).
16

1

“Grange” did indeed prohibit defendant from using the word

2

“Grange” or any name containing “Grange” in connection with its

3

goods or services.

4

containing the word “Grange.”

5

“Grange” or a name containing “Grange” in any articles of

6

incorporation, fictitious business name registrations, lobbying

7

licenses, and public filings.

8
9

This includes using a corporate name
It also includes using the word

Numerous courts have held that the unauthorized use of
a registered mark in a corporate name constitutes trademark

10

infringement.

See Accuride Int’l, Inc. v. Accuride Corp., 871

11

F.2d 1531, 1534-35 (9th Cir. 1989) (emphasizing that trademark

12

and corporate trade name protection are intertwined and governed

13

by the same test of infringement); Nat’l Customer Eng’g Inc. v.

14

Lockheed Martin Corp., Civ. No. 96-8938 DDP ANX, 1997 WL 363970,

15

at *6 (C.D. Cal. Feb. 14, 1997) (enjoining defendants’ use of

16

“MountainGate” in their corporate name because it was

17

substantially similar to plaintiff’s “Mountain” trademark);

18

accord Atlas Supply Co. v. Atlas Brake Shops, Inc., 360 F.2d 16,

19

19 (6th Cir. 1966) (enjoining use of the word “Atlas” in

20

defendant’s corporate name); Safeway Stores, Inc. v. Safeway

21

Props., Inc., 307 F.2d 495, 499 (2d Cir. 1962) (defendant’s use

22

of the word “Safeway” in its corporate name, “Safeway Properties,

23

Inc.,” was trademark infringement); Alfred Dunhill of London,

24

Inc. v. Dunhill Shirt Co., 213 F. Supp. 179, 184 (S.D.N.Y. 1963)

25

(defendant’s use of “Dunhill” in its corporate name infringed

26

plaintiff’s “Dunhill” trademark); see also Hulburt Oil & Grease

27

Co. v. Hulburt Oil & Grease Co., 371 F.2d 251, 254 (7th Cir.

28

1966) (“[A] state does not pass upon the legality of a corporate
17

1
2

name by merely permitting incorporation under that name.”).
In addition, the Lanham Act also protects trade names.

3

A trade name is “any name used by a person [or entity] to

4

identify [its] business or vocation.”

5

Trademarks and service marks distinguish goods and services,

6

while trade names distinguish companies and their goodwill.

7

Steel Foundries v. Robertson, 269 U.S. 372, 380 (1926).

8

names commonly function as trademarks or service marks, and

9

actions brought under the Lanham Act typically challenge the use

15 U.S.C. § 1127.

Am.

Trade

10

of a mark as a trademark, service mark, and trade name.

11

Accuride, 871 F.2d at 1534 (15 U.S.C. § 1114 governs trademark or

12

service mark infringement; 15 U.S.C. § 1125(a) governs trade name

13

infringement); Stork Rest. v. Sahati, 166 F.2d 348, 353 (9th Cir.

14

1948) (“A corporate name or trade name identifies a corporation;

15

it also identifies its business and the goods or services which

16

it sells or renders.” (citation omitted)).

17

See

Trade names are accorded the same protection as

18

trademarks and service marks because they serve the same

19

fundamental purpose: “to identify a business and its products or

20

services, to create demand for those products or services, and to

21

protect the company’s good will.”

22

see also Sahati, 166 F.2d at 360 (“A trade name is . . . no less

23

effective than a trade-mark as a means of identification.”); W.

24

Des Moines State Bank v. Hawkeye Bancorp., 722 F.2d 411, 413 (8th

25

Cir. 1983) (“Trade names (business names) are under modern law

26

accorded the same protection as trademarks.”).

27

work to “preclude one from using another’s distinctive mark or

28

name if it will cause a likelihood of confusion or deception as
18

Accuride, 871 F.2d at 1536;

All three also

1

to the origin of the goods [or services].”

2

Co. of Cal., 595 F.2d 1194, 1201 (9th Cir. 1979).

3

New W. Corp. v. NYM

The Supreme Court has emphasized that the distinction

4

between trademarks, service marks, and trade names is often

5

immaterial because “the law affords protection against [their]

6

appropriation in either view, upon the same fundamental

7

principles.”

8

F.2d at 1534 (“As a practical matter, courts are rarely called

9

upon to distinguish between trade names, trademarks and service

Robertson, 269 U.S. at 380; accord Accuride, 871

10

marks.”).

11

infringement of the names of corporate, professional[,] and

12

business organizations is likelihood of confusion [and the key

13

question is] whether the public is likely to be deceived or

14

confused by the similarity of the marks.”

15

1533 (citation omitted).

16

“As in general trademark law, the test for

Accuride, 871 F.2d at

Accordingly, defendant’s use of a corporate name

17

containing the word “Grange” is a use of a mark containing the

18

word “Grange” within the definition of the Lanham Act.

19

Defendant’s use of “California State Grange” as its corporate

20

name therefore infringes plaintiff’s registered mark and

21

constitutes unfair competition against plaintiff.

22

166 F.2d at 357 (“[T]he use of the advertising or trade name or

23

distinguishing mark of another, is in its [n]ature, fraudulent

24

and will be enjoined.” (citation omitted)).

25

See Sahati,

Pursuant to section 1116(a) of the Lanham Act,

26

defendant is ordered to remove the word “Grange” from all

27

corporate registrations and other documents filed with any

28

federal, state, or local government.
19

These include defendant’s

1

articles of incorporation and lobbying licenses on file with the

2

California Secretary of State and all fictitious business names

3

on file with Sacramento County under the corporate name

4

“California State Grange.”

5

C.

6

“California Grange Foundation”
California Grange Foundation (the “Foundation”) is a

7

corporation that was created by defendant in 1992 and is

8

currently operated by defendant’s president, Robert McFarland.

9

(See Komski Decl. ¶ 33, Ex. 22, Dec. 28, 2015 (“Komski I Decl.”)

10

(Docket Nos. 99-2 to 99-43); McFarland Decl. Ex. C; Keel Decl.

11

¶¶ 3, 6, Apr. 1, 2016 (Docket No. 132-2).)

12

Secretary of State lists the same corporate address for both

13

defendant and the Foundation, and both entities list McFarland as

14

their agent for service of process.

15

Detail for “CALIFORNIA GRANGE FOUNDATION,” with Business Entity

16

Detail for “CALIFORNIA STATE GRANGE,” http://kepler.sos.ca.gov

17

(last visited Apr. 14, 2016).

18

The California

Compare Business Entity

McFarland exercises control over both entities,

19

including the contents of the Foundation’s website.

20

Decl. ¶ 33; Keel Decl. ¶¶ 3, 6.)

21

directors is also composed of members who sit on defendant’s

22

executive committee.

23

24 at 1.)

24

(Komski I

The Foundation’s board of

(McFarland I Decl. ¶ 22; Komski I Decl. Ex.

The court thus finds that the Foundation is defendant’s

25

agent, affiliate, assign, or an entity acting in concert with

26

defendant.

27

1983) (“When a person owns most or all of the shares in a

28

corporation and controls the affairs of the corporation, it is

Cf. In re Gottheiner, 703 F.2d 1136, 1140 (9th Cir.

20

1

presumed that in any litigation involving that corporation the

2

individual has sufficient commonality of interest.” (citation

3

omitted)).

4

September 29, 2015 injunction prohibiting it from using the word

5

“Grange.”

6

injunction is binding upon the parties to an action and their

7

officers, agents, servants, employees, and attorneys and those

8

who are in active concert or participation with them, provided

9

that such non-parties received actual notice of the injunction).

10

The Foundation is therefore bound by the court’s

See Fed. R. Civ. P. 65(d)(2) (providing that an

The Foundation has registered fictitious business names

11

with Sacramento County to do business as “California Guild

12

Foundation.”

13

GRANGE FOUNDATION,” Sacramento County On-Line Servs., https://

14

actonline.saccounty.net/CitizenAccess/SACCO_FBNSearch.aspx (last

15

visited Apr. 14, 2016).

16

“California Grange Foundation” as the owner of that fictitious

17

business name, however, and the Foundation continues to retain

18

“California Grange Foundation” as its corporate name registered

19

with the California Secretary of State.

20

See Fictitious Business Name Search for “CALIFORNIA

The Sacramento County website lists

Accordingly, for the reasons discussed above, supra

21

Part III.B, California Grange Foundation is ordered to remove the

22

word “Grange” from all corporate registrations and other

23

documents filed with any federal, state, or local government.

24

These include articles of incorporation and lobbying licenses on

25

file with the California Secretary of State and all fictitious

26

business names on file with Sacramento County under its corporate

27

name “California Grange Foundation.”

28

that non-parties may be held liable in contempt for violating the
21

The Foundation is advised

1

court’s injunction.

2

1313, 1323-24 (9th Cir. 1998); see also Reebok v. McLaughlin, 49

3

F.3d 1387, 1392 (9th Cir. 1995) (the court has personal

4

jurisdiction over domestic non-parties who act in concert with a

5

party in violating an injunction).

6

D.

7

Peterson v. Highland Music, Inc., 140 F.3d

Use of “Granger” and “CSG”
Plaintiff also requests the court to enjoin defendant’s

8

use of the words “Granger” and “CSG.”

As discussed in detail in

9

the court’s Order of September 29, 2015, plaintiff’s Complaint

10

did not seek trademark protection for “Granger” or “CSG.”

11

29, 2015 Order at 3-4.)

12

Complaint were limited to ten registered trademarks: “NATIONAL

13

GRANGE,” “THE GRANGE FOUNDATION,” “NATIONAL GRANGE OF THE ORDER

14

OF PATRONS OF HUSBANDRY,” two trademarks for “P OF H GRANGE,” and

15

five trademarks for “GRANGE.”

16

alleged that defendant used “Granger” or “CSG” nor requested the

17

court to enjoin defendant from using “Granger” or “CSG.”

18

summary judgment was limited to the use of “Grange,” whether

19

“Granger” or “CSG” are protected trademarks was never litigated

20

or before the court.

21

(Sept.

All of the allegations in plaintiff’s

(Compl. ¶ 20.)

Plaintiff neither

Because

Enjoining defendant’s use of “Granger” or “CSG” would

22

be improper because it would require the court to adjudicate new

23

issues that were “not decided in its original disposition of the

24

case.”

25

also change the status quo and materially alter the status of the

26

case on appeal.

27

1166.

28

relief to the relief plaintiff had requested in its Complaint and

McClatchy, 686 F.2d at 735.

Such an injunction would

See id.; Nat. Res. Def. Council, 242 F.3d at

The court must therefore limit its grant of injunctive

22

1

the marks upon which the court granted summary judgment.

2

Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105, 1116 (9th

3

Cir. 2012) (“Injunctive relief under the Lanham Act must be

4

narrowly tailored to the scope of the issues tried in the

5

case.”); Crawford v. Gould, 56 F.3d 1162, 1168 (9th Cir. 1995)

6

(holding that a court may not enter a judgment that goes beyond

7

the claims asserted in the pleadings).

8

will deny plaintiff’s request to enjoin defendant’s use of

9

“Granger” and “CSG.”

10
11

E.

See

Accordingly, the court

Use of “Grange” in Business Activities
Plaintiff requests the court to enjoin defendant and

12

its agents and affiliates from conducting any business activities

13

using the name “Grange.”

14

currently uses two bank accounts opened under the name

15

“California State Grange.”

16

states it has removed the word “Grange” from its checks.

17

(McFarland II Decl. ¶ 21.)

18

defendant has removed the word “Grange” from the actual names of

19

its bank accounts.

20

accounts remain in its corporate name.”).)

21

Defendant acknowledges that it

(McFarland I Decl. ¶ 19.)

Defendant

But there is no indication that

(See Docket No. 114 at 12 (“Defendant’s bank

Defendant further contends that, at least since the

22

court’s judgment of September 29, 2015, it has not solicited any

23

membership dues using the name “Grange.”

24

II Decl. ¶ 22.)

25

Until at least February 4, 2016, defendant issued billing

26

statements titled “Grange Dues.”

(Hoag Decl. ¶¶ 1, 4 (Docket No.

27

132-1); e.g., Docket No. 99-29.)

During that time, defendant

28

collected membership dues paid by checks that were addressed to

(Opp’n at 6; McFarland

These statements do not appear to be true.

23

1

“California State Grange,” and it endorsed those checks under the

2

name “California State Grange” and deposited them into its bank

3

accounts.

4

¶ 8 (Docket No. 114-12).)

5

(Hoag Decl. ¶ 5; McFarland I Decl. ¶ 19; Wallis Decl.

These actions amount to a blatant disregard for and

6

violation of the court’s September 29, 2015 injunction.

7

described above, supra Part III.B, the permanent injunction

8

restricted defendant from using the word “Grange” or any name

9

containing “Grange” in connection with its goods or services.

10

This included mailing billing statements titled “Grange dues,”

11

endorsing checks using any name containing the word “Grange,” and

12

using bank accounts under any name containing the word “Grange.”

13

As

Accordingly, the court will enjoin defendant and its

14

agents, affiliates, and assigns, and any party acting in concert

15

with them, from conducting any business activities using the name

16

“Grange,” including, but not limited to, soliciting dues using

17

the name “Grange,” collecting checks addressed to any entity that

18

contains the word “Grange” in its name, endorsing checks using

19

any name that contains the word “Grange,” using bank accounts or

20

other financial accounts under any name containing the word

21

“Grange,” and endorsing, signing, or executing any document,

22

lease, instruction, or financial instrument using any name

23

containing the word “Grange.”

24
25

F.

Use of “Grange” in Domain Names and Email Addresses
The court has previously expressed that the permanent

26

injunction prohibits defendant from using “Grange” in any domain

27

name or email address.

28

Defendant and McFarland currently list their email address on the

(See Sept. 29, 2015 Order at 5.)

24

1

California Secretary of State website as “president@california

2

grange.org.”

3

cal-access.ss.ca.gov/Lobbying/Employers/Detail.aspx?id=1146807&se

4

ssion=2015 (last visited Apr. 14, 2016); Lobbying Activity for

5

“MC FARLAND, BOB E.,” http://cal-access.ss.ca.gov/Lobbying

6

/Lobbyists/Detail.aspx?id=1326773&session=2015 (last visited Apr.

7

14, 2016).

8

to enjoin defendant and its agents and affiliates from using the

9

word “Grange” in any domain name or email address.

10

G.

11

See Lobbying Activity for “C.S.G.,” http://

Accordingly, the court will grant plaintiff’s request

Reference to Past Affiliation
Plaintiff seeks to enjoin defendant from making certain

12

references, discussed below, pertaining to defendant’s past

13

affiliation with plaintiff.

14

2013, plaintiff’s California-based members reorganized a state

15

chapter under the name “Grange of the State of California’s Order

16

of Patrons of Husbandry, Chartered.”

17

11.)

18

prospective or current member [of plaintiff] would be uncertain

19

as to which California Grange originates from [plaintiff’s]

20

organization.”

21

After the parties disaffiliated in

(July 14, 2015 Order at

The court previously found it “foreseeable that a

(Id.)

Defendant conceded that the use of “Grange” by two

22

separate California organizations had caused actual confusion

23

among consumers regarding the origin of defendant’s services.

24

(Id. at 11-12; see also id. at 9 (finding the record “replete

25

with evidence that a reasonably prudent Grange member,

26

prospective member, or other person contemplating doing business

27

with [plaintiff] is likely to be confused as to the origin of

28

defendant’s services due to its use of ‘Grange’”).)
25

In enjoining

1

defendant from using the word “Grange” or any name containing

2

“Grange,” the court’s September 29, 2015 injunction aimed to

3

protect consumers from being misled or confused about the source

4

of defendant’s services or its association with plaintiff.

5

This is not to say that defendant can never make

6

reference to the history of its organization.

But that is not

7

what defendant is doing here.

8

defendant has referred to itself as the legal successor to the

9

former California State Grange.

Since the court’s injunction,

(Allen Decl. ¶¶ 10-11.)

10

Defendant also identifies itself publically as CSG, formerly

11

known as California State Grange; formerly trading as California

12

State Grange; and formerly doing business as California State

13

Grange.

14

prominent header at the top that says: “CSG Formerly the

15

California State Grange.”

16

www.csgunited.org (last visited Apr. 14, 2016).

Every page on defendant’s website currently contains a

17

E.g., Welcome to the CSG,

It appears that these references to defendant’s past

18

affiliation with plaintiff are an attempt to do an “end-run”

19

around the court’s permanent injunction prohibiting defendant

20

from using the word “Grange” in connection with its goods or

21

services.

22

820, 830 (9th Cir. 2011) (evidence of actual confusion strongly

23

supports a finding of willfulness); Earthquake Sound Corp. v.

24

Bumper Indus., 352 F.3d 1210, 1218 (9th Cir. 2003) (same).

25

Defendant’s references have caused a number of plaintiff’s

26

members to believe that defendant is currently plaintiff’s

27

authorized representative.

28

¶¶ 20, 29 (Docket No. 126-3).)

Cf. TrafficSchool.com, Inc. v. Edriver, Inc., 653 F.3d

(Allen Decl. ¶¶ 10-11; Huber Decl.

26

1

These references, including representations that

2

defendant is the “former California State Grange,” have also

3

caused actual confusion among at least fifty of plaintiff’s

4

members since September 2015 regarding the origin of defendant’s

5

services and defendant’s association with plaintiff.

6

Decl. ¶¶ 3, 10.)

7

homepage states: “The CSG (formerly California State Grange) is

8

the oldest agricultural organization in California, started in

9

1870.”

10

(Allen

In addition, the first sentence of defendant’s

Id.
The court previously held that similar references to

11

defendant’s historical affiliation with plaintiff strongly

12

suggested to consumers that defendant was presently affiliated

13

with plaintiff.

14

“defendant recounts plaintiff’s history, and not its own” and

15

that this is likely to cause plaintiff’s members or prospective

16

members to believe that defendant is affiliated with

17

plaintiff).); cf. FTC v. Algoma Lumber Co., 291 U.S. 67, 81

18

(1934) (“[T]here is a kind of fraud, as courts of equity have

19

long perceived, in clinging to a benefit which is the product of

20

misrepresentation, however innocently made.

21

respondents’ plight today, no matter what their motives may have

22

been when they began.

23

purging their business methods of a capacity to deceive.”).

(July 14, 2015 Order at 9-10 (finding that

That is the

They must extricate themselves from it by

24

Most importantly, by identifying itself as “formerly

25

the California State Grange,” defendant is effectively using a

26

name containing the word “Grange” in violation of the court’s

27

permanent injunction.

28

past affiliation with plaintiff in a manner that causes consumers

Precluding defendant from referencing its

27

1

to be misled or confused about the origin of defendant’s services

2

or its association with plaintiff serves the key objective of the

3

Lanham Act.

4

469 U.S. 189, 198 (1985).

5

previous rulings and permanent injunction in this case.

6

Accordingly, the court will grant plaintiff’s request and enjoin

7

defendant from referencing its past affiliation with plaintiff,

8

including representing that it is the former California State

9

Grange; successor to the California State Grange; or formerly

See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,
Doing so also accords with the court’s

10

known as, trading as, or doing business as the California State

11

Grange.

12

H.

Business Directory Listings

13

Plaintiff requests that the court order defendant to

14

“cancel and discontinue use of all telephone number[] listings

15

containing the name ‘Grange’ and delete all appearances of the

16

name ‘Grange’ from Defendant’s business directory listings with

17

Google and those appearing at ZoomInfo and similar internet

18

websites.”

19

the contents of Google or ZoomInfo, has never requested any

20

information to be posted on those sites, and has not encouraged

21

any third-party website to refer to defendant using the word

22

“Grange.”

23

Defendant argues that it does not have control over

(McFarland II Decl. ¶ 12; Keel Decl. ¶ 8.)
Defendant’s address and telephone number appear in

24

response to a Google search for “California State Grange.”

25

(Komski I Decl. ¶ 10.)

26

for “California State Grange” in the Google Maps database.

27

“California State Grange,” Google Search, https://www.google.com

28

/search?q=California+State+Grange (last visited Apr. 14, 2016).

The Google result is a business listing

28

See

1

Immediately under the listed information, there is a link titled

2

“Suggest an edit.”

3

wrong with a business [they] don’t own or manage” to report wrong

4

business information or remove their own information from an

5

unrelated business that appears on a Google search result.

6

or Edit Business Information on Maps, Google.com, https://

7

support.google.com/business/answer/6174435 (last visited Apr. 14,

8

2016).5

9

legal reasons by submitting a “legal request.”

That link allows users who “see something

Add

Users can also remove data from Google’s directory for
Report a Data

10

Problem in Google Maps, Google.com, https://support.google.com

11

/maps/answer/3094088 (last visited Apr. 14, 2016).

12

Defendant’s company profile on ZoomInfo.com lists its

13

name as “CSG” and its website as www.californiagrange.org.

14

“CSG” Company Profile, www.zoominfo.com/c/California-State-

15

Grange/353967545 (last visited Apr. 14, 2016).

16

description states:

17
18
19

See

Its company

The CSG (formerly California State Grange) is the oldest
agricultural organization in California, started in 1870.
Cities and townships have grown up around our rural halls
and the CSG has evolved into a community service
organization with 10,000 members and 206 chapters across

20
21
22
23
24
25
26
27
28

5

To the extent some of the descriptions about Google and
ZoomInfo’s websites are not in the record, the court takes
judicial notice of www.Google.com and www.ZoomInfo.com and the
information contained therein pursuant to Federal Rule of
Evidence 201. See Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir.
2005) (finding judicial notice of webpages appropriate because
“[j]ust as a reader must absorb a printed statement in the
context of the media in which it appears, a computer user
necessarily views web pages in the context of the links through
which the user accessed those pages”); Hendrickson v. eBay, Inc.,
165 F. Supp. 2d 1082, 1084 n.2 (C.D. Cal. 2001) (taking “judicial
notice of www.eBay.com and the information contained therein
pursuant to Federal Rule of Evidence 201”).
29

1

California. CSG community halls are often the center of
their community, providing opportunities, culture and
education, entertainment, emergency shelter, and a
meeting place where new friends are made and old friends
are cherished. Everyone is welcome to apply for
membership in the CSG. Each member contributes at their
own pace and level of participation. Each chapter decides
how to best serve the community.

2
3
4
5
6

Id.

The court has previously found that similar language posted

7

on defendant’s website strongly suggested that defendant was

8

affiliated with plaintiff.

(July 14, 2015 Order at 9-10.)

Like Google, ZoomInfo also allows users to notify it if

9
10

a company profile in their name is inaccurate or out-of-date and

11

to correct that information.

12

www.zoominfo.com/business/contact (last visited Apr. 14, 2016).

13

Users may also remove their business profile completely from the

14

directory.

15

usercenter/index.php/pro-faq#removal (last visited Apr. 14,

16

2016).

See Contact Us, ZoomInfo, http://

See FAQ, ZoomInfo, http://subscriber.zoominfo.com/

17

Defendant’s assertions that it has no control over the

18

contents of its listings on Google or ZoomInfo are therefore not

19

entirely true.

20

influence[] Google or ZoomInfo search results” and has not sent

21

any communications to those websites “since the injunction was

22

entered.”

23

Accordingly, since defendant is able to utilize easily-accessible

24

features on Google and ZoomInfo to remove or correct its public

25

business information, the court will order defendant to remove

26

the word “Grange” from all public telephone and business

27

directory listings, on the internet and otherwise, to the extent

28

it can do so.

Defendant concedes that it has not “attempted to

(McFarland I Decl. ¶ 18; Docket No. 114 at 14.).

30

1

I.

2

Disclaimer on Defendant’s Website
Plaintiff requests an injunction ordering defendant to

3

include a prominent disclaimer on its website that it is “not

4

affiliated with the California State Grange.”

5

requests that defendant include a hyperlink on its website that

6

redirects users to plaintiff’s website.

7

than what the court enjoined or intended to compel in its

8

original injunction, and would go beyond merely preserving the

9

status quo.

Plaintiff also

That is something more

Accordingly, the court will deny plaintiff’s request

10

to expand the injunction to require defendant to provide a

11

disclaimer on its website or include a hyperlink that redirects

12

users to plaintiff’s website.

13

J.

Attorney’s Fees

14

Plaintiff requests that the court order defendant to

15

pay its reasonable attorney’s fees in bringing this motion and

16

its previous motion for an order to show cause why defendant

17

should not be held in contempt for violating the court’s original

18

injunction, including the declarations of Ed Komski.

19

argues that plaintiff voluntarily abandoned its claim for fees

20

when it moved to voluntarily dismiss its monetary claims on

21

September 4, 2015.

22

motion, however, plaintiff sought to dismiss its claims for

23

damages or fees without prejudice “to any claims that it may make

24

in the future.”

25

Defendant

(Opp’n at 9 (citing Docket No. 75).)

In that

(Docket No. 75 at 1.)

The parties later filed a stipulated motion to dismiss

26

plaintiff’s claims for damages with prejudice.

27

The parties stipulated “that nothing in the Order sought by this

28

[stipulated] Motion shall be understood to preclude Plaintiff for
31

(Docket No. 80.)

1

making a claim for damages in the event of a future violation of

2

any permanent injunction that is ultimately issued in this case.”

3

(Id. ¶ 3; Docket No. 80-1 at 2.)

4

stipulated motion on September 29, 2015.

5

at 1-2, 6.)

6

The court granted the parties’
(Sept. 29, 2015 Order

As discussed in this Order, defendant violated the

7

court’s permanent injunction by continuing to use “Grange” in its

8

corporate name, business activities, email address on the

9

California Secretary of State website, and business directory

10

listings that it had the opportunity to correct or remove.

11

Plaintiff’s fee request here is thus for “a future violation of

12

any permanent injunction” as contemplated by the parties and

13

stipulated in their motion.

14

plaintiff did not abandon its claim for attorney’s fees here.

(Docket No. 80 ¶ 3.)

Accordingly,

15

Under 15 U.S.C. § 1117(a), the court may award

16

reasonable attorney’s fees to the prevailing party in an

17

exceptional case, “which includes cases in which the act is

18

fraudulent, deliberate, or willful.”

19

Garcia, 475 F.3d 1029, 1039 (9th Cir. 2007).

Horphag Research Ltd. v.

20

1.

Prevailing Party

21

“A party is a prevailing party for purposes of an

22

attorneys’ fee award if it ‘achieved a material alteration in the

23

legal relationship of the parties that is judicially

24

sanctioned.’”

25

Inc., 778 F.3d 1059, 1078 (9th Cir. 2015) (citation omitted).

26

“The material alteration in the legal relationship of the parties

27

must be relief that the would-be prevailing party sought.”

28

Klamath Siskiyou Wildlands Ctr. v. U.S. Bureau of Land Mgmt., 589

Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A.,

32

1

F.3d 1027, 1030 (9th Cir. 2009).

2

of its claims to be the prevailing party.

3

at 1078.

4

A party need not succeed on all
A.V.E.L.A., 778 F.3d

As for the pending motion, the court has granted a

5

large part of plaintiff’s requested relief.

Plaintiff has thus

6

obtained a material alteration in the legal relationship of the

7

parties that is judicially sanctioned.

8

589 F.3d at 1035.

9

denied that motion without prejudice to plaintiff bringing its

See id. at 1078; Klamath,

As for plaintiff’s contempt motion, the court

10

pending motion.

11

based on exhibits and evidence that plaintiff had submitted with

12

its contempt motion.

13

(Docket Nos. 117, 125.)

The pending motion is

(Mot. at 5.)

Plaintiff’s contempt motion also sought much of the

14

relief the court has granted here.

(See Docket Nos. 109, 109-2

15

(seeking to enjoin defendant and California Grange Foundation

16

from using “Grange” in their corporate names; seeking to enjoin

17

defendant from conducting business using the name “Grange” or

18

representing its email address using the word “Grange”; and

19

requesting the court to order defendant to remove the word

20

“Grange” from its business directory listings on Google and

21

ZoomInfo).)

22

sought in its motion for an order to show cause why defendant

23

should not be held in contempt.

24

the relief it sought in both of its motions, it is the prevailing

25

party on both motions for purposes of a fee award.

Plaintiff has therefore obtained the relief it

Because plaintiff has obtained

26

2.

27

A case is considered exceptional “when the infringement

28

Exceptional Case

is malicious, fraudulent, deliberate, or willful.”
33

A.V.E.L.A.,

1

778 F.3d at 1078 (citation omitted).

“Egregious conduct is not

2

required.”

Id.

3

pressed to find that defendant’s acts were anything other than

4

deliberate and willful.

5

defendant was aware that its conduct infringed plaintiff’s

6

trademark rights and constituted unfair competition against

7

plaintiff.

8
9

Id.

“Nor is bad faith.”

The court is hard

There is significant evidence that

In its Order of July 14, 2015, the court found
significant evidence of representations made by defendant on its

10

website, in its newsletters, and in public media strongly

11

suggesting it was still affiliated with plaintiff.

12

2015 Order at 9-10; e.g., Turrill Decl. Exs. 7, 23-24 (Docket

13

Nos. 43-4 to 43-11).)

14

concluded that a reasonable current or prospective member of

15

plaintiff’s national organization, or any other person

16

contemplating doing business with plaintiff, would likely believe

17

defendant is affiliated with plaintiff and be confused as to the

18

origin of its services.

19

(July 14,

Based on that evidence, the court

(July 14, 2015 Order at 9-10.)

Defendant’s membership brochures and its current

20

website’s format, layout, and content are almost identical to

21

those it used when it was affiliated with plaintiff.

22

Decl. ¶¶ 7-8, 28-29, Exs. 1-2, 16-17.)

23

defendant listed the names of plaintiff’s members on its new

24

website, and it displayed links to historical publications made

25

by plaintiff’s organization in its website’s “News Archive”

26

section.

27
28

(Komski I

After its disaffiliation,

(Id. ¶¶ 19, 30, Exs. 9-10, 18.)
Despite this court’s permanent injunction barring

defendant from using “Grange,” defendant uses the name “Grange”
34

1

in public filings and registrations with the California Secretary

2

of State and the County of Sacramento.

3

Educ. & Co-op. Union of Am., 250 F.2d 809, 812-13 (8th Cir. 1958)

4

(“It is immaterial that the injunction did not include a general

5

prohibition of any use of the corporate names of the defendants.

6

It plainly and unambiguously forbade the appellant to use the

7

registered words [and his violations were thus] properly held to

8

be wilful and in contempt of court.”).

9

name “Grange” is visible to the public on the Secretary of State

See Stover v. Farmers’

Defendant’s use of the

10

and County websites.

11

and McFarland both represent their email addresses as

12

“[e-mail]” on lobbying licenses with the

13

Secretary of State that are visible to the public.

14

(E.g., Komski II Decl. Ex. 2.)

Defendant

Until at least February 4, 2016, defendant issued

15

billing statements titled “Grange Dues” and endorsed and

16

deposited checks addressed to “California State Grange.”

17

public business profiles on Google.com and ZoomInfo listed it as

18

“California State Grange” and its website as www.californiagrange

19

.org, even though defendant was free to correct or remove that

20

information any time it wished.

21

continued to represent that defendant is the “California State

22

Grange.”

23

defendant’s business number and asked if he had reached the

24

“California State Grange”; the receptionist answered, “Yes.”

25

(Komski I Decl. ¶ 11.)

26

Its

Defendant’s agents have

In December 2015, one of plaintiff’s members called

There is also evidence that defendant’s conduct has

27

caused actual confusion among at least fifty of plaintiff’s

28

members regarding defendant’s affiliation with plaintiff and the
35

1

origin of its services.

2

evidence of actual confusion is the most important support for a

3

finding of willfulness.

4

Earthquake Sound, 352 F.3d at 1218.

5

concludes that defendant has willfully and deliberately continued

6

to deceive the public by infringing plaintiff’s trademark and

7

engaging in unfair competition against plaintiff.

8

TrafficSchool.com, 653 F.3d at 833 (“There was overwhelming proof

9

that defendants knew their statements confused consumers and did

(E.g., Allen Decl. ¶¶ 3, 10-11.)

Ample

TrafficSchool.com, 653 F.3d at 833;
The court therefore

See

10

little or nothing to remedy it.

The district court could

11

reasonably infer that they willfully deceived the public.”);

12

Earthquake Sound, 352 F.3d at 1219 (“The total picture in this

13

case is one of deliberate, willful infringement . . . . We thus

14

hold that this is an exceptional case within the meaning of 15

15

U.S.C. § 1117(a) such that the district court did not abuse its

16

discretion in awarding Earthquake its attorney’s fees.”).

17

Accordingly, the court grants plaintiff’s request for

18

attorney’s fees incurred in bringing this motion and its motion

19

for an order to show cause why defendant should not be held in

20

contempt.

21

Order, plaintiff shall file a declaration detailing its

22

attorney’s fees for bringing these two motions.

23

review the accounting and will thereafter issue an Order

24

directing defendant to pay such of it as the court approves.

25

Within twenty-one (21) days from the date of this

The court will

IT IS THEREFORE ORDERED that plaintiff National Grange

26

of the Order of Patrons of Husbandry’s motion for an injunction

27

(Docket No. 126) be, and the same hereby is, GRANTED IN PART as

28

follows:
36

1

(1) defendant California State Grange and its agents,

2

affiliates, and assigns, and any party acting in concert with

3

defendant or its agents, affiliates, and assigns, including the

4

California Grange Foundation, shall remove the word “Grange” from

5

all corporate registrations and other documents filed with any

6

federal, state, or local government, including, but not limited

7

to, articles of incorporation and lobbying licenses on file with

8

the California Secretary of State and all fictitious business

9

name registrations with the County of Sacramento;

10

(2) within five (5) days from the date of this Order,

11

defendant shall serve upon California Grange Foundation a copy of

12

this Order and shall file with the clerk a certificate reflecting

13

such service;

14

(3) defendant and its agents, affiliates, and assigns,

15

and any party acting in concert with defendant or its agents,

16

affiliates, and assigns shall remove the word “Grange” from all

17

public telephone and business directory listings, on the internet

18

or otherwise, including, but not limited to, online business

19

directory listings on www.Google.com and www.ZoomInfo.com, to the

20

extent they can do so;

21

(4) defendant and its agents, affiliates, and assigns,

22

and any party acting in concert with defendant or its agents,

23

affiliates, and assigns are permanently enjoined from:

24

(a) conducting business using the name “Grange,”

25

including, but not limited to, soliciting dues using the name

26

“Grange,” collecting checks addressed to any entity whose name

27

contains the word “Grange,” endorsing checks using any name

28

containing the word “Grange,” using bank accounts or other
37

1

financial accounts under any name containing the word “Grange,”

2

and endorsing, signing, or executing any document, lease,

3

instruction, or financial instrument using any name containing

4

the word “Grange”;

5

(b) using “Grange” in any domain name or email

6

address or otherwise representing their domain name or email

7

address as containing the word “Grange”; and

8

(c) referencing their past affiliation with

9

plaintiff or any other entity whose name contains the word

10

“Grange,” including representing themselves to be the former

11

California State Grange; successor to the California State

12

Grange; or formerly known as, trading as, or doing business as

13

the California State Grange;

14

(5) within fifteen (15) days from the date of this

15

Order, defendant shall file with the court and serve on plaintiff

16

a report in writing under oath setting forth in detail the manner

17

and form in which defendant, its officers, agents, servants,

18

employees, representatives, partners, and all parties acting in

19

concert with defendant have complied with the terms of this

20

Order;

21

(6) within twenty-one (21) days from the date of this

22

Order, plaintiff shall file an accounting of its attorney’s fees

23

associated with its motion for an injunction (Docket No. 126),

24

its motion for an order to show cause why defendant should not be

25

held in contempt (Docket No. 109), and the declarations of Ed

26

Komski dated December 28, 2015 (Docket Nos. 99-2 to 99-43) and

27

February 1, 2016 (Docket No. 109-1).

28

opposition to plaintiff’s fee motion within fourteen (14) days
38

Defendant may file an

1

from the date plaintiff’s fee motion is filed.

2

review the accounting and will thereafter issue an Order

3

directing defendant to pay some or all of it; and

4

The court will

(7) defendant shall pay plaintiff these attorney’s fees

5

and file an affidavit with the court confirming payment within

6

five (5) business days after the court issues its Order regarding

7

the attorney’s fees.

8
9

IT IS SO ORDERED.
Dated:

April 20, 2016

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