Apple Inc. v. Amazon.Com, Inc.

Filing 24

Proposed Order re 18 MOTION for Preliminary Injunction NOTICE OF MOTION AND MOTION FOR PRELIMINARY INJUNCTION [PROPOSED] ORDER GRANTING PLAINTIFF APPLE INC.'S MOTION FOR PRELIMINARY INJUNCTION by Apple Inc.. (Eberhart, David) (Filed on 4/13/2011)

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DAVID R. EBERHART (S.B. #195474)
[e-mail]
RYAN J. PADDEN (S.B. #204515)
[e-mail]
DAVID J. SEPANIK (S.B. #221527)
[e-mail]
O’MELVENY & MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
APPLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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APPLE INC., a California corporation,
Plaintiff,

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v.

Case No. CV 11-01327 PJH
[PROPOSED] ORDER GRANTING
PLAINTIFF APPLE INC.’S MOTION
FOR PRELIMINARY INJUNCTION

AMAZON.COM, INC., a Delaware
corporation, and AMAZON DIGITAL
SERVICES, INC., a Delaware corporation,
Defendants.

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[PROPOSED] ORDER GRANTING
PRELIMINARY INJUNCTION
CASE NO. CV 11-01327 PJH

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Plaintiff Apple, Inc.’s Motion for Preliminary Injunction came on for hearing on

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_____________, 2011. Having read the parties’ papers and evidence and carefully considered

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their arguments and the relevant legal authority, and good cause appearing, the Court hereby

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GRANTS Apple’s Motion for Preliminary Injunction for the reasons stated at the hearing and set

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forth below.

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Under Ninth Circuit law, Apple is entitled to a preliminary injunction if it establishes that

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it is likely to succeed on the merits, it is likely to suffer irreparable harm in the absence of

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preliminary relief, the balance of equities tips in its favor, and an injunction is in the public

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interest. See Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 129 S. Ct. 365, 374 (2008).

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Here, Apple has established that it is likely to succeed in proving both trademark

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infringement (15 U.S.C. § 1125(a)) and dilution (15 U.S.C. § 1125(c)). Moreover, Apple has

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established that Amazon’s conduct will likely result in consumer confusion; Apple is thus entitled

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to the presumption of irreparable harm. See GoTo.com, Inc., 202 F.3d 1199, 1205 n.4; Cadence

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Design Sys., Inc. v. Avant! Corp., 125 F.3d 824, 830 (9th Cir. 1997); Brookfield Commc’ns, Inc.

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v. W. Coast Entm’t Corp., 174 F.3d 1036, 1066 (9th Cir. 1999). Even if Apple is not given the

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benefit of such a presumption, Apple has satisfied this Court that irreparable harm would result if

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Amazon’s conduct is not immediately enjoined. First, Apple has expended substantial efforts and

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resources in establishing an association between the mark APP STORE and Apple’s mobile

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software download service. Second, Apple has invested hundreds of millions of dollars in

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advertising and promoting the APP STORE brand and service such that consumers have

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overwhelmingly come to associate the mark APP STORE with Apple’s service. And third, Apple

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has invested substantial time and effort in maintaining the quality and safety of the software made

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available through the APP STORE service, leading consumers to rely on those efforts and to

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associate them with the APP STORE service. Such efforts, reputation, and goodwill will be

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undermined by Amazon’s continued use of the mark APPSTORE or any confusingly similar

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mark.

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Moreover, Amazon decided to move forward with the use of the mark APPSTORE after
multiple attempts by Apple to seek assurances that Amazon would not infringe Apple’s mark.
[PROPOSED] ORDER GRANTING
PRELIMINARY INJUNCTION
CASE NO. CV 11-01327 PJH

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Additionally, Amazon only recently launched its APPSTORE service on March 22, 2011, while

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Apple has been developing goodwill for its APP STORE service for more than three years. Any

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harm to Amazon that may result from an injunction is far outweighed by the irreparable harm

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Apple will suffer if an injunction is not ordered.

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Finally, the public’s interest weighs in Apple’s favor. The risk that consumers will be

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misled to believe there is a relationship between Apple and Amazon with respect to mobile

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software download services when none exists militates in favor of an injunction. See Caesars

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World, Inc. v. Milanian, 247 F. Supp. 2d 1171, 1205 (D. Nev. 2003) (“An important factor in

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protecting trademarks is to avoid consumer confusion, which is in the public interest.”) (citations

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omitted).
In accordance with the foregoing, it is hereby ordered that to prevent irreparable injury,

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loss, and damage to Apple’s goodwill and reputation and in order to protect the public from

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confusion as to source, Apple’s motion for preliminary injunction is GRANTED.

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IT IS HEREBY ORDERED THAT:

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1. Defendants Amazon.com, Inc. and Amazon Digital Services, Inc. (collectively

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“Amazon”), together with their officers, agents, servants, affiliates, employees,

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and attorneys, and those other persons who are in active concert or participation

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with any of them who receive actual notice of the order by personal service or

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otherwise shall immediately cease use of, directly or indirectly, Apple’s APP

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STORE trademark, or any other marks that are confusingly similar to or colorable

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imitations of Apple’s mark, including, without limitation, the term APPSTORE

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alone or as part of or together with any other designs, word or words, trademark,

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service mark, trade name, trade dress, or other business or commercial designation

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or any logo, symbol or design;

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2. Amazon shall file with the Court and serve on Apple, within ten (10) days of the

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entry of this preliminary injunction, a report in writing and under oath, setting

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forth in detail the manner and form in which Amazon has complied with the

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injunction;
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[PROPOSED] ORDER GRANTING
PRELIMINARY INJUNCTION
CASE NO. CV 11-01327 PJH

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3. This preliminary injunction shall stay in effect until final judgment in this case,
unless ordered otherwise.

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Dated: _______________, 2011

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By
The Honorable Phyllis J. Hamilton
United States District Court Judge

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[PROPOSED] ORDER GRANTING
PRELIMINARY INJUNCTION
CASE NO. CV 11-01327 PJH