Helio LLC v. Palm, Inc.

Filing 62

Proposed Order re 56 Memorandum in Opposition to Motion for Preliminary Injunction by Palm, Inc.. (Colt, Douglas) (Filed on 3/20/2007)

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Helio LLC v. Palm, Inc. Doc. 62 Case 4:06-cv-07754-SBA Document 62 Filed 03/20/2007 Page 1 of 4 1 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Claude M. Stern (Bar No. 96737) 2 Brian Cannon (Bar No. 193071) Doug Colt (Bar No. 210915) 3 Andrea Pallios Roberts (Bar No. 228128) claudestern@quinnemanuel.com 4 briancannon@quinnemanuel.co m dougcolt@quinnemanuel.co m 5 andreaproberts@quinnemanuel.co m 555 Twin Dolphin Drive, Suite 560 6 Redwood Shores, California 94065-2139 Telephone: (650) 801-5000 7 Facsimile: (650) 801-5100 8 Attorneys for Defendant Palm, Inc. 9 10 11 12 13 14 HELIO LLC 15 16 vs. Plaint iff, UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION CASE NO. C 06 7754 SBA __________________________ [PROPOSED] ORDER DENYING PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION 17 PALM, INC. 18 19 20 1. On March 6, 2007, plaintiff Helio filed a motion for a preliminary injunction. Its Defendant. 21 motion was supported by the declarations of Harold Davis, Jr. and Kathryn Wheble, as well as the 22 exhibits thereto. 23 2. On March 20, 2007, defendant Palm filed an opposition to plaintiff's motion. Its 24 opposition was supported by the declarations of Doug Colt, Scott Hancock, Howard Marylander, 25 and Julie Patterson, as well as exhibits thereto. 26 27 28 51175/2082075.1 3. The Court heard oral argument on plaintiff's motion on April 10, 2007. -1- Case No. C 06 7754 SBA [PROPOSED] ORDER Dockets.Justia.com Case 4:06-cv-07754-SBA Document 62 Filed 03/20/2007 Page 2 of 4 1 4. Having considered the papers and evidence in support of and in opposition to 2 plaintiff's motion, the relevant authorities, and the respective arguments of counsel, the Court 3 denies plaintiff's motion and now rules as follows: 4 5. In this action, Helio asserts ownership and use of the marks "Don't Call it a Phone" 5 and "Don't Call Us a Phone Company." 6 6. Palm asserts that it makes and sells mobile communications devices including the 7 Treos. Palm's advertising for the Treo 680 device includes use of the theme line "Not Just a Cell 8 Phone. A Treo." Palm used this theme line in outdoor advertising, print advertising, and online 9 advertising. 10 7. Pursuant to its motion, plaintiff seeks an order enjoining Palm from continuing to 11 use the theme line "Not Just a Cell Phone. A Treo." 12 8. Palm asserts that its theme line is separate and apart from Helio's marks, that there 13 is no threat of continuing harm because it no longer uses the "Not Just a Cell Phone. A Treo." 14 theme line, that Helio's marks are, at most, descriptive, and that there is no likelihood of 15 confusion. 16 9. An analysis of Helio's claim of trademark infringement requires analysis of the 17 eight factors articulated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979): 18 19 20 21 22 23 24 25 26 10. a. b. c. d. e. f. g. h. The strength of the allegedly infringed mark; The similarity of goods and services; The similarity of marks; The similarity of marketing channels; Palm's intent on selecting its mark; Evidence of actual confusion; The degree of care likely to be exercised by consumers, and The degree of expansion into other markets. Having analyzed these factors both individually and collectively, the Court 27 concludes that, on balance, they weigh in favor of a finding of no likelihood of confusion. 28 51175/2082075.1 -2- Case No. C 06 7754 SBA [PROPOSED] ORDER Case 4:06-cv-07754-SBA Document 62 Filed 03/20/2007 Page 3 of 4 1 11. Wit h regard to the strength of the allegedly infringed mark, the Court finds that 2 plaintiff has not produced evidence of secondary meaning. The evidence presented by defendant 3 convincingly shows that there is no secondary meaning. 4 12. Wit h regard to the similarity of goods and services, the Court finds that they are 5 different. Plaintiff did not produce evidence to show similarity. The evidence presented by 6 defendant shows that the functions available on plaintiff's devices are entertainment- and youth7 oriented and are not available on the Treo 680. The evidence further establishes that plaintiff is a 8 network service provider and defendant is not. 9 13. Wit h regard to similarity of marks, the Court finds that they are different. Plaintiff 10 did not present evidence to show similarity. The evidence presented by defendant shows that the 11 marks are different in sight, sound, and meaning. 12 14. Wit h regard to similarity of marketing channels, the Court finds that they are 13 different. Plaintiff did not produce evidence to show similarity. 14 15. Wit h regard to defendant's intent on selecting its mark, the Court finds that plaintiff 15 did not produce evidence sufficient to establish that defendant intentionally selected its mark due 16 to its alleged similarity to plaintiff's marks. The evidence presented by defendant shows that 17 defendant selected its mark independent of plaintiff. 18 16. Wit h regard to actual confusion, the Court finds that plaintiff did not produce any 19 evidence of confusion. The evidence presented by defendant convincingly establishes that there is 20 no actual confusion and no likelihood of confusion. 21 17. Wit h regard to the degree of care likely to be exercised by consumers, the Court 22 finds that plaintiff did not produce evidence to show that consumers exercise a low degree of care. 23 The evidence presented by defendant shows that cellular phone devices are expensive and 24 plaintiff's market is tech-savvy, suggesting a high degree of care. 25 18. The parties agreed that the degree of expansion in other markets is not relevant in 26 this case. 27 19. On balance, the above factors suggest that plaintiff is not likely to succeed on the 28 merits of its trademark infringement claim. 51175/2082075.1 -3- Case No. C 06 7754 SBA [PROPOSED] ORDER Case 4:06-cv-07754-SBA Document 62 Filed 03/20/2007 Page 4 of 4 1 20. The Court additionally finds that plaint iff did not make a showing of a threat of 2 continuing harm. 3 21. The Court finds that plaintiff did not demonstrate that it will suffer irreparable harm 4 if injunctive relief is not granted. 5 22. The Court finds that plaintiff did not demonstrate that "serious questions" are raised 6 because plaintiff's claim of trademark infringement is not one as to which it has "a fair chance of 7 success on the merits." Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1421 (9th 8 Cir. 1984). 9 23. The Court finds that plaintiff did not demonstrate that the balance of hardships tips 10 in its favor. 11 24. Having analyzed the above factors, the Court concludes that plaintiff has not met 12 its burden for receiving injunctive relief. Plaint iff's motion for a preliminary injunction is 13 therefore denied. 14 So ordered. _______________________ Saundra B. Armstrong United States District Judge 15 Dated: April ___, 2007 16 17 18 19 20 21 22 23 24 25 26 27 28 51175/2082075.1 -4- Case No. C 06 7754 SBA [PROPOSED] ORDER

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