Feldenkrais Guild of North America v. Wildman et al
Filing
48
STIPULATED FINAL JUDGMENT AND CONSENT ORDER. Signed by Judge Yvonne Gonzalez Rogers on 8/6/2018. (fs, COURT STAFF) (Filed on 8/6/2018)
1
2
3
4
5
6
7
8
9
10
TRAVIS WALL (SBN 191662)
twall@hinshawlaw.com
HINSHAW & CULBERTSON LLP
One California Street, 18th Floor
San Francisco, CA 94111
Telephone:
415-362-6000
Facsimile:
415-834-9070
MARK K. SURI (IL SBN 6199636) Pro Hac Vice
msuri@hinshawlaw.com
HINSHAW & CULBERTSON LLP
151 North Franklin Street, Suite 2500
Chicago, IL, 60606
Telephone:
312-704-3000
Facsimile:
312-704-3001
Attorneys for Plaintiff FELDENKRAIS GUILD OF NORTH AMERICA
11
12
UNITED STATES DISTRICT COURT
13
NORTHERN DISTRICT OF CALIFORNIA
14
OAKLAND DIVISION
15
16
17
18
19
20
21
22
FELDENKRAIS GUILD OF NORTH
AMERICA, an Oregon Not-For-Profit
Corporation,
)
) Case No. 4:18-cv-02340-YGR
)
) STIPULATED FINAL JUDGMENT AND
Plaintiff,
) [PROPOSED] CONSENT ORDER
)
vs.
)
)
FRANK WILDMAN, an Individual, and
)
FELDENKRAIS MOVEMENT INSTITUTE, a )
California Not-For-Profit Corporation,
)
)
Defendants.
)
23
24
25
26
27
28
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
Plaintiff Feldenkrais Guild of North America (“FGNA”) filed its complaint alleging
2
trademark infringement and breach of contract, as well as its ex parte motion for a temporary
3
restraining order and order to show cause for a preliminary injunction against defendants Frank
4
Wildman (“Wildman”) and Feldenkrais Movement Institute (“FMI”). Wildman and FMI are
5
collectively referred to herein as “defendants.” (Dkt. Nos. 1, 19.) On May 1, 2018, the Court granted
6
the temporary restraining order and issued its Order to Show Cause Why A Preliminary Injunction
7
Should Not Issue. (Dkt. No. 26.) The parties filed their response and reply (Dkt. Nos. 33 and 34),
8
and the matter came on for hearing on May 15, 2018. On May 21, 2018, defendants filed their
9
answer and counterclaim. (Dkt. No. 37). On May 23, 2018, the Court granted the Motion for
10
Preliminary Injunction. (Dkt. No. 38.)
11
The parties have resolved their dispute and entered into a written Settlement Agreement. As
12
part of the resolution of their dispute, the parties have stipulated to request that the Court enter this
13
Final Judgment and Consent Order and to retain jurisdiction for purposes of enforcing the Settlement
14
Agreement and this Final Judgment and Consent Order.
15
The Court, having read and considered the papers and pleadings on file, the evidence
16
submitted in support and in opposition, and the arguments of the parties, the parties’ stipulation to
17
the Final Judgment and Consent Order and for the reasons stated herein, GRANTS and enters the
18
Stipulated Final Judgment and Consent Order.
19
I.
SUMMARY OF FACTS
20
FGNA is a not-for-profit membership association that promotes and supports the Feldenkrais
21
Method® of somatic education and its practitioners. (Declaration of Nancy Haller, ¶ 3) (Dkt. No. 19-
22
1). The purposes of the FGNA include increasing public awareness of the Feldenkrais Method® of
23
somatic education, certifying and providing opportunities for continuing education of practitioners,
24
and protecting the quality of the Feldenkrais® work and research in the effectiveness of the
25
Feldenkrais Method® of somatic education. (Id.) FGNA first began certifying Feldenkrais®
26
practitioners in 1989. There are about 1300 current members of the FGNA, including over 1150
27
members offering services throughout the United States. (Id. ¶ 6.)
28
2
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
A.
2
FGNA has been using certain trademarks since as early as the early 1970s, and first obtained
3
trademark registrations covering certain marks in 1985. (Id. ¶ 4.) The United States Patent and
4
Trademark Office have issued numerous federal trademark registrations to FGNA, set forth as
5
follows:
FGNA’s Trademarks, Service Marks, and Certification Marks
6
Mark
Registration No.
Date of Registration
8
Feldenkrais
1,374,266
December 3, 1985
9
Feldenkrais Method
1,982,044
June 25, 1996
10
Guild Certified Feldenkrais Teacher
2,187,073
September 8, 1998
11
Awareness Through Movement
1,353,317
August 6, 1985
12
ATM
4,011,600
August 16, 2011
Functional Integration
1,286,531
July 17, 1984
FI
4,184,962
August 7, 2012
7
13
14
15
16
In addition, FGNA owns other trademarks, service marks, and certification marks. (Haller
17
Decl. ¶10.) For example, FGNA owns the certification mark GCFTCM, an acronym for Guild
18
Certified Feldenkrais Teacher®, the certification mark Certified Feldenkrais TrainerCM and its
19
acronym CFTCM, as well as the certification mark Guild Certified Feldenkrais PractitionerCM and its
20
acronym GCFPCM. Relevant consumers recognize the use of these marks as certifying that the user is
21
a qualified Feldenkrais® Practitioner or Teacher. (Id. ¶ 10.) All of the foregoing marks are
22
collectively referred to herein as the “FGNA Marks.”
23
FGNA regulates the quality of those persons holding themselves out as practitioners and
24
trainers of the Feldenkrais Method® of somatic education by controlling the use of the marks. The
25
FGNA has established rules for those who may use the FGNA Marks. (Id. ¶¶ 12-16; Exh. D FGNA
26
Policy E2.4.2.1 FGNA Service Marks, Certification Marks and Trademarks, hereinafter “FGNA
27
Marks Policy”). Guild Certified Feldenkrais Practitioners, FGNA Professional Members, and
28
authorized trainees are granted licenses to use certain of the FGNA Marks, subject to enumerated
3
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
conditions in the FGNA Marks Policy. (Id. ¶ 5.) To be eligible to use the FGNA Marks, persons
2
must provide verification of graduation from a professional Feldenkrais Method® training program
3
that has been accredited by FGNA or another recognized international board under approved
4
policies; completion of a “crossover plan” approved by the North American Training Accreditation
5
Board (an entity related to FGNA that is responsible for accrediting training programs); or have been
6
granted an exception to those requirements by the FGNA Board of Directors. (Id. ¶ 13.) Members
7
must complete: (i) continuing competence requirements, including self-assessment, creation of
8
learning plan; (ii) twenty hours of appropriate continuing education annually; and (iii) 100 hours of
9
professional practice annually. Members also must agree to comply with FGNA policies. 1 (Id. ¶¶ 14-
10
15.) Finally, new members must complete the applicable form and pay the applicable fee. (Id. ¶ 16.)
11
Certified Feldenkrais® Practitioners are allowed to use its trademarks, service marks and
12
certification marks in connection with educational services relating to somatic education, among
13
other services. (Id. ¶ 4.) FGNA and its authorized licensees have continuously used the FGNA’s
14
trademarks, service marks and certification marks in connection with these services for several
15
decades. (Id.) Only people personally trained by Dr. Feldenkrais, graduates of FGNA-accredited
16
training programs, and others who have received authorization from FGNA are eligible to be
17
certified by, to become members of FGNA, and to use the FGNA’s trademarks, service marks and
18
certification marks. (Id. ¶ 5.)
19
B.
20
From 1978 to January 22, 2018, defendant Wildman was a FGNA member. He was certified
21
by FGNA as a Feldenkrais® Practitioner and was authorized to use the FGNA Marks. He agreed and
22
was obligated to abide by the FGNA code of conduct. Wildman was president of FGNA during
23
1997, and was the chair of the FGNA committee that wrote the FGNA standards of practice. (Id. ¶
24
17.)
Conduct of Wildman and Feldenkrais Movement Institute
25
26
27
28
1
See Haller Decl. Exh. D (“E2.3.2.1 The Feldenkrais Method® of Somatic Education
Standards of Practice; E2.3.3.2 Code of Professional Conduct; and E2.4.2.1-ED FGNA Service
Marks, Certification Marks and Trademarks.”)
4
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
Wildman’s relationship with the FGNA ended on January 22, 2018, when the FGNA and
2
Wildman entered into a confidential agreement 2 amidst allegations of Wildman’s misconduct.
3
(Haller Decl., Exh. E, “the Agreement.”) Under the four-page Agreement, Wildman acknowledged
4
that he is no longer a FGNA member, a FGNA Certified Feldenkrais® Practitioner, nor a FGNA
5
Certified Feldenkrais® Trainer. (Id. §§ 2-4.) Wildman agreed not to teach or practice the
6
Feldenkrais® Method. (Id. § 8.) As of the effective date of the Agreement, Wildman agreed to
7
“refrain from using any FGNA trademarks, service mark, or certification marks.” (Id. § 5.) He
8
agreed to “not represent himself or hold himself out as being certified, licensed, accredited by, or
9
otherwise associated with, the FGNA, the Feldenkrais® Method, or any FGNA trademark, service
10
mark, or certification mark.” (Id.) The Agreement requires that Wildman refrain from all use of the
11
FGNA Marks. (Id.) Under the Agreement, Wildman had until March 22, 2018, to make the changes
12
required. (Haller Decl. ¶ 26.) By his own admission, Wildman failed to complete the changes.
13
(Declaration of Frank Wildman, Dkt. No. 33-3, at ¶13.) This action ensued.
14
II.
APPLICABLE STANDARD
15
The standards for granting permanent injunction relief are the same as those for granting
16
preliminary injunction relief and the Court previously found that FGNA met the standards for
17
receiving preliminary injunctive relief. (Dkt. No. 38). The plaintiff must show: (1) that it has
18
suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are
19
inadequate [**18] to compensate for that injury; (3) that, considering the balance of hardships
20
between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest
21
would not be disserved by a permanent injunction. See Facebook, Inc. v Power Ventures, Inc., citing
22
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390, 126 S. Ct. 1837, 164 L. Ed. 2d 641 (2006).
23
See also,Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008); American Trucking
24
Associations, Inc. v. City of Los Angeles, 559 F.3d 1046, 1054 (9th Cir. 2009).
25
26
27
28
2
The parties have agreed to waive the confidentiality provision of the Agreement.
5
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
III.
DISCUSSION AND FINDINGS
2
A.
3
As to the breach of contract claims, Wildman concedes that he failed to make all the changes
4
required under the Agreement. (Oppo. at 1:3-4; 4:4-6; Wildman Decl. ¶ 13.) By the time of the
5
application for the temporary restraining order, Wildman and his assistant were only able to remove
6
or revise 70% of the items identified by FGNA’s counsel as being in violation of the Agreement.
7
(Wildman Decl. ¶ 13.)
8
Breach of Contract
Wildman
owns,
operates,
produces,
and
manages
a
website
at
the
url
9
FeldenkraisInstitute.org, and is responsible for all content on the website. (Haller Decl. ¶ 26.)
10
Wildman uses this website to market and promote himself and FMI. The required changes to his
11
website at FeldenkraisInstitute.org have not been made and it continues to contain numerous
12
unauthorized uses of the FGNA Marks. Wildman is also the owner, operator, producer and manager
13
of a website at the url “FrankWildmanMovement.com,” which he uses to market and promote
14
himself and his business. Wildman has made some required changes to his website at
15
FrankWildmanMovement.com, but not all, such that the website continues to include unauthorized
16
uses of the FGNA Marks. (Id. ¶ 27.) Wildman also markets and promotes himself through various
17
social media and social networking platforms such as Facebook, YouTube, and LinkedIn.
18
Each of Wildman’s pages on these social media and social networking platforms continue to
19
contain numerous unauthorized uses of the FGNA Marks. (Id. ¶ 28.) 3 In addition, Wildman has
20
failed to remove FGNA Marks from his biography for purposes of promotion of himself and his
21
business. For instance, Wildman’s biography for a 1440 Multiversity program states that he is a
22
“Feldenkrais Method® expert,” and uses the Feldenkrais Method® trademark five times in one
23
paragraph. By his continued use of the FGNA Marks, Wildman is in violation of the parties’
24
25
26
27
28
3
The evidence is sufficient to establish that Wildman breached the contract by continuing to
use the marks, including: Wildman’s own concession of continued unauthorized use; and the
declaration of Nancy Haller, which represented based on personal knowledge that as of the date of
the declaration, the enumerated unauthorized uses continued on the social media and social
networking platforms used by Wildman. (Haller Decl. ¶¶ 1, 28.)
6
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
Agreement. 4
2
The Agreement precludes Wildman from “teaching or engaging in the professional practice
3
of the Feldenkrais® Method.” It does not prohibit Wildman from teaching or engaging in any
4
professional practice so long as he does not represent that practice to be “the Feldenkrais® Method.”
5
Thus, the Court concludes that plaintiff prevails on the merits of its breach of contract claim.
6
B.
7
In addition, the Court finds that defendants are infringing on plaintiff’s trademark rights.
8
Based upon the record before the Court, defendants’ continued use of the FGNA Marks constitutes
9
trademark infringement. To succeed on its claim of trademark infringement, FGNA must
10
demonstrate: (1) ownership of a valid and protectable trademark; and (2) defendants’ use of the mark
11
is likely to cause consumer confusion, thereby infringing on the plaintiff’s rights. Aurora World,
12
Inc. v. Ty Inc., 719 F.Supp.2d 1115, 1141 (C.D. Cal. 2009) (quoting Dep’t of Parks & Rec. v. Bazaar
13
Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006)). When, as here, two marks are identical and
14
used for the same goods, courts have found that the likelihood of confusion is overwhelming, even if
15
no other factors favor a finding of confusion. Brookfield Communs., Inc. v. W. Coast Ent’t. Corp.,
16
174 F.3d 1036, 1056 (9th Cir 1999); see also Lindy Pen Co. v. Bic Pen Corp., 796 F.2d 254, 256-57
17
(9th Cir. 1986) (reversing district court’s finding of no likelihood of confusion given “the
18
overwhelming likelihood of confusion resulting from the direct competition of pens with virtually
19
identical marks”). 5 Further, use of the same marketing channels “increase[s] the likelihood of
Trademark Infringement
20
21
22
23
24
25
26
27
28
4
Whether or not FMI is a party to the Agreement, or is an alter ego of Wildman, FMI is
responsible for its acts of infringement. Use of the FGNA Marks without authorization, in a manner
that is likely to cause consumer confusion, results in trademark infringement. FMI derived its rights
to use the FGNA Marks solely from Wildman. When Wildman was authorized to use the FGNA
Marks, that license also was applicable to FMI. Consequently, when Wildman gave up his license to
use the FGNA Marks, FMI could no longer use the FGNA Marks based upon Wildman’s
membership. FMI did not have a license or other right to use the FGNA Marks independent of
Wildman’s rights to use them under the FGNA Service Marks Policy.
5
The Ninth Circuit has developed an eight-factor test to guide the determination of a
likelihood of confusion. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)
(“Sleekcraft”). “The Sleekcraft factors are intended as an adaptable proxy for consumer confusion,
not a rote checklist.” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 3d 1137, 1145
(9th Cir. 2011) (citations omitted). Given that the marks at issue here are identical and are being
7
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
confusion.” Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 606 (9th Cir. 1987) (citing
2
Sleekcraft, 599 F.2d at 353).
3
The facts of ownership here are not contested. FGNA asserts, and defendants do not dispute,
4
that each of its registrations for trademarks are current, presumed valid, in force, and incontestable
5
under 15 U.S.C. section 1065. All of the FGNA Marks at issue were in existence and in use at the
6
time Wildman was the president of FGNA, and many had been in use or registered many years
7
before he was president. Similarly undisputed is FGNA’s contention that all of its claimed marks,
8
whether trademarks, service marks, certification marks or related common law marks, regardless of
9
registration, have acquired significant good will through the extensive and widespread use. They are
10
distinctive as a source identifier and certification indicator in connection with the FGNA providing
11
of services and licensing of others to use its marks in connection with the services identified in those
12
registrations and as indicating that the user has met the FGNA’s rigorous requirements. FGNA has
13
invested significant resources to advertise its and its licensee’s educational services offered in
14
connection with the FGNA Marks. FGNA is the beneficiary of many third party stories and articles
15
providing significant and positive press coverage to the FGNA services resulting in the development
16
of significant goodwill for the FGNA Marks.
17
The facts regarding confusion are likewise not in contention. Defendants’ services are nearly
18
identical to those of FGNA’s and its licensees, and both are marketed and promoted through the
19
Internet, key word searching, social media and social networking platforms and direct mail. The
20
record before the Court indicates that defendants are using marks identical to the FGNA Marks to
21
promote services that are the same services FGNA promotes, licenses, or certifies. (Haller Dec. ¶
22
33.) Consequently, the parties are in direct competition with each other.
23
Any argument that defendants are not liable for trademark infringement because they are
24
simply making “fair use” of the trademarks in their webpages and other marketing materials is
25
incorrect. A nominative fair use is one that “does not attempt to capitalize on consumer confusion or
26
to appropriate the cachet of one product for a different one . . . [but instead is a use] where the only
27
28
used for nearly identical services, and that defendants do no contest the Sleekcraft factors in
opposition, the Court does not analyze the showing on each factor in reaching the decision herein.
8
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
word reasonably available to describe a particular thing is pressed into service.” New Kids on the
2
Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992). The nominative fair use standard
3
bars liability for an unauthorized use of a trademark where: (1) the product or service is not be
4
readily identifiable without use of mark; (2) only so much of the mark is used as is reasonably
5
necessary to identify the product or service; and (3) the user does nothing that would, in conjunction
6
with the mark, suggest sponsorship or endorsement by the trademark holder. Id. All three elements
7
must be met for the defense to apply. See, e.g. Brother Records, Inc. v. Jardine, 318 F.3d 900, 908
8
(9th Cir. 2003) overruled on other grounds in Toyota Motor Sales, U.S.A. v. Tabari, 610 F.3d 1171
9
(9th Cir. 2010). Wildman can identify and describe his services without making use of the FGNA
10
Marks and has done so in identifying his services as “Frank Wildman Movement” and “Change
11
Your Age Method.” Thus, there are other ways to describe the public-domain body movement and
12
principles than the use of the term “Feldenkrais.”
13
14
The Court therefore finds the plaintiff has established that defendants’ continued use of the
FGNA Marks constitutes infringement upon FGNA’s rights in the FGNA Marks.
15
C.
16
To establish a right to a permanent injunction, a plaintiff must demonstrate irreparable injury.
17
eBay, 542 U.S. at __; Flexible Lifeline Sys. v. Precision Lift Inc., 654 F.3d 989, 998 (9th Cir. 2011);
18
Herb Reed Enterprises, LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239, 1249-50 (9th Cir. 2013).
19
Evidence of lost business or business opportunities, as well as damage to goodwill, will satisfy the
20
requirement to show irreparable harm. See, e.g., Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and
21
Co., 240 F.3d 832, 841 (9th Cir. 2001) (“[e]vidence of threatened loss of prospective customers or
22
goodwill certainly supports a finding of the possibility of irreparable harm”); Herb Reed Enterprises,
23
LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239, 1250 (9th Cir. 2013) (“Evidence of loss of control
24
over business reputation and damage to goodwill could constitute irreparable harm.”). “A district
25
court has considerable discretion in fashioning suitable relief and defining the terms of an
26
injunction.” Lamb-Weston, Inc. v. McCain Foods, Ltd., 941 F.2d 970, 974 (9th Cir. 1991).
27
“Injunctive relief, however, must be tailored to remedy the specific harm alleged.” Id.
28
Irreparable Harm
The Court finds that, as a result of defendants’ conduct, FGNA is suffering immediate and
9
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
irreparable harm loss, damage, and injury, unless FGNA’s request for injunctive relief is granted.
2
Defendants’ unauthorized use of the FGNA Marks prevents FGNA from controlling the quality of
3
the services associated with its marks. FGNA has received numerous complaints about Wildman’s
4
ongoing use of the FGNA Marks, and his continuing to hold himself out as being associated with
5
FGNA. (Haller Decl. ¶ 36.) Wildman’s continued use of the FGNA Marks is likely to result in harm,
6
loss of the value associated with the FGNA Marks and reputational harm, as well as loss of goodwill
7
with respect to FGNA’s members. These losses are not readily compensable by an award of
8
monetary damages. Further, under the Agreement, Wildman acknowledged that any breach would
9
cause FGNA irreparable injury and that damages would be an inadequate remedy in the event of
10
such breach, such that injunctive relief would be permissible for a breach or threatened breach by
11
Wildman. (Haller Decl., Exh. E § 19.) This factor favors injunctive relief.
12
D.
13
In determining the balance of equities, courts look to “the degree of harm that will be
14
suffered by the plaintiff or the defendant if the injunction is improperly granted or denied.” Scotts
15
Co. v. United Indus. Corp., 315 F.3d 264, 284 (9th Cir. 2002); accord Winter, 555 U.S. at 24 (2008).
16
The balance of potential harm to defendants of being enjoined from use of the FGNA Marks is far
17
outweighed by the potential harm to FGNA, its goodwill, and reputation associated with the FGNA
18
Marks if a permanent injunction order is not issued. Defendants concede that Wildman did not
19
comply with the terms of the Agreement timely. Wildman concedes that he did not take down
20
webpages that he knew were in clear violation of the Agreement, but instead continued piecemeal
21
efforts to edit the material well past the deadline, never taking down pages with potential violations
22
until the temporary restraining order herein issued. (Wildman Decl. ¶¶ 10-13.) Wildman represents
23
that the process of removing even those uses he acknowledges are in violation of the Agreement is
24
“time-consuming” and requires review of “hundreds of pages.” (Id. ¶ 11.) In view of the hundreds of
25
potential violations and improper uses of the FGNA Marks, the equities favor a permanent
26
injunction, even if it requires Wildman to take down defendants’ websites entirely for a period of
27
time.
28
Balance of Equities
The balance of harms favors granting permanent injunctive relief.
10
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
E.
2
“The public interest inquiry primarily addresses [the] impact on non-parties rather than
3
parties.” Sammartano v. First Judicial District Court, 303 F.3d 959, 974 (9th Cir. 2002). The public
4
interest will be served by the issuance of a temporary restraining order and preliminary and
5
permanent injunction, as the public has a strong interest in being free from confusion caused by the
6
unauthorized use of trademarks. See Brookfield Communs., 174 F.3d at 1066 (“preliminary
7
injunctive relief is appropriate. . . to promote the public interest in protecting trademarks generally”);
8
Wetzel’s Pretzels, LLC v. Johnson, 797 F. Supp. 2d 1020, 1029 (C.D. Cal. 2011) (“public has a
9
strong interest in being free from the confusion caused by unauthorized use”); Morrocanoil, Inc. v.
10
Moroccan Gold, LLC, 590 F. Supp. 2d 1271, 1281 (C.D. Cal. 2008) (holding the public has a “right
11
not to be deceived or confused”). The public has a right to choose services knowing that they are not
12
being misled as to whether those services are offered by parties authorized by FGNA to hold
13
themselves out as being associated with the FGNA. The public interest favors issuance of a
14
permanent injunction to protect the public from being harmed or deceived by defendants
15
representing their services as authorized by, certified by, endorsed by, or associated with FGNA.
Public Interest
16
F.
17
The parties have advised the Court that they have resolved their dispute and entered into a
18
written Settlement Agreement that supersedes the January 22, 2018 Agreement referred to herein. As
19
part of their resolution, the parties have stipulated to the entry of this Final Judgment and Consent
20
Order. In addition, the parties advise further the Court the following:
Settlement
21
Over the past four years, defendants have conducted a certain Feldenkrais® training program
22
in the state of Oregon, referred to as the Eugene Training. Wildman was the educational director of
23
the Eugene Training, and has resigned that role. The Eugene Training is almost concluded, but there
24
are two more billing cycles to complete. In the Settlement Agreement, the parties’ stipulated that
25
defendants shall be permitted to use the name “Feldenkrais Movement Institute” solely for purposes
26
of sending out two (2) billings for the Eugene Training and to receive funds at a PayPal account that
27
uses the name “Feldenkrais Movement Institute.” This is reflected in the proposed order below.
28
11
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
2
3
4
IV.
CONCLUSION
Based upon the foregoing, the Stipulated Final Judgment and Consent Order is GRANTED.
The Court ORDERS as follows:
(a)
Defendants Frank Wildman and Feldenkrais Movement Institute, their owners,
5
affiliates, officers, directors, managers, agents, servants, employees, and any and all persons in
6
active concert or participation with any of them (collectively “Enjoined Persons”), SHALL NOT
7
use, without FGNA’s prior authorization, the FGNA’s Marks or any other name, logo, or mark that
8
includes the designation “Feldenkrais” or that is confusingly or deceptively similar to any of the
9
FGNA Marks, either alone or in conjunction with other words or symbols, as part of any trademark,
10
service mark, certification mark, logo, trade name, corporate name, assumed name, domain name,
11
website, email address, keywords, or metatags on or in relation to any goods or services marketed,
12
promoted, advertised, sold, offered for sale or consignment or provided by the defendants, directly or
13
indirectly, or in any other manner, including without limitation, any marketing literature, printed or
14
electronic, on websites, on social media sites or on social networking sites.
15
For purposes of clarification, this Order prohibits and enjoins:
16
(1)
any Enjoined Person’s use of the word “Feldenkrais” in any form other than
17
as part of the phrase “Dr. Moshe Feldenkrais” in any marketing literature,
18
printed or electronic, or in any online medium including social media, social
19
networking sites, and any other website or application; and
20
(2)
21
Enjoined Person; and
22
(3)
23
24
use of the word “Feldenkrais” in the website url or email address for any
use of the word “Feldenkrais” as part of the organizational name of
defendant Feldenkrais Movement Institute.
(b)
Defendants Frank Wildman and Feldenkrais Movement Institute, their owners,
25
affiliates, officers, directors, managers, agents, servants, employees, and any and all persons in
26
active concert or participation with any of them (collectively “Enjoined Persons”), SHALL NOT
27
use, authorize, permit, or encourage others to use on either defendants’ behalf, without the prior
28
authorization of FGNA, the FGNA Marks in any form or manner that would tend to associate
12
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
defendants, or their business or services, with FGNA, including, without limitation, in the marketing,
2
promotion, advertising, identification, sale, or offer for sale of goods or services, or in any other
3
manner.
4
(c)
Notwithstanding the foregoing, the Enjoined Persons are permitted to send out two
5
electronic mailings under the name Feldenkrais Movement Institute to send invoices and to receive
6
and collect payment for the “Eugene Training.” These electronic mailings are to be made in June
7
and July, 2018. If not paid, some of those invoices may need to be and can be rebilled up to and until
8
September 21, 2018, which is the final day of the training program. The PayPal account that
9
currently uses the name Feldenkrais Movement Institute shall have its name changed to remove
10
Feldenkrais therefrom after the Eugene Training billing is concluded, but no later than October 1,
11
2018.
12
(d)
The injunctive orders set forth in (a) through (c) above shall remain in force and
13
effect until defendant Frank Wildman regains his FGNA Feldenkrais Practitioner certification or
14
Feldenkrais Trainer certification.
15
(e)
The Court retains jurisdiction to enforce the terms of the parties’ Settlement
16
Agreement and the terms of this Stipulated Final Judgment and Consent Order. The terms of this
17
Stipulated Final Judgment and Consent Order may be enforced by a motion for contempt. If the
18
Court grants such a motion, defendants may be ordered to pay FGNA’s costs, reasonable attorneys’
19
and experts’ fees
20
(f)
The Clerk is ordered to release to FGNA all security FGNA has placed with the
(g)
Subject to the foregoing, the complaint and counterclaim are hereby dismissed.
21
22
23
24
25
26
27
Court.
Dated August 1, 2018
HINSHAW & CULBERTSON LLP
By: /s/ Travis Wall
TRAVIS WALL
MARK K. SURI Pro Hac Vice
Attorneys for Plaintiff FELDENKRAIS
GUILD OF NORTH AMERICA
28
13
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
2
3
4
5
6
7
LAW OFFICE OF LAWRENCE G. TOWNSEND, ESQ.
By: /s/ Lawrence G. Townsend
LAWRENCE G. TOWNSEND
Attorneys for Defendants FRANK WILDMAN and
FELDENKRAIS MOVEMENT INSTITUTE
FILER’S ATTESTATION
8
I, Travis Wall, am the ECF user whose identification and password are being used to file this
9
[Proposed] STIPULATED FINAL JUDGEMENT AND CONSENT ORDER. In compliance with
10
Local Rules, I hereby attest that all party signatories hereto concur in this filing.
11
12
/s/Travis Wall
TRAVIS WALL
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
14
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
[PROPOSED] CONSENT ORDER
2
Based the Stipulated Final Judgment and Consent Order is GRANTED. The Court ORDERS
3
as follows:
4
(a)
Defendants Frank Wildman and Feldenkrais Movement Institute, their owners,
5
affiliates, officers, directors, managers, agents, servants, employees, and any and all persons in
6
active concert or participation with any of them (collectively “Enjoined Persons”), SHALL NOT
7
use, without FGNA’s prior authorization, the FGNA’s Marks or any other name, logo, or mark that
8
includes the designation “Feldenkrais” or that is confusingly or deceptively similar to any of the
9
FGNA Marks, either alone or in conjunction with other words or symbols, as part of any trademark,
10
service mark, certification mark, logo, trade name, corporate name, assumed name, domain name,
11
website, email address, keywords, or metatags on or in relation to any goods or services marketed,
12
promoted, advertised, sold, offered for sale or consignment or provided by the defendants, directly or
13
indirectly, or in any other manner, including without limitation, any marketing literature, printed or
14
electronic, on websites, on social media sites or on social networking sites.
15
For purposes of clarification, this Order prohibits and enjoins:
16
(1)
any Enjoined Person’s use of the word “Feldenkrais” in any form other than as part of
17
the phrase “Dr. Moshe Feldenkrais” in any marketing literature, printed or electronic, or in any
18
online medium including social media, social networking sites, and any other website or application;
19
and
20
21
22
23
24
(2)
use of the word “Feldenkrais” in the website url or email address for any Enjoined
Person; and
(3)
use of the word “Feldenkrais” as part of the organizational name of defendant
Feldenkrais Movement Institute.
(b)
Defendants Frank Wildman and Feldenkrais Movement Institute, their owners,
25
affiliates, officers, directors, managers, agents, servants, employees, and any and all persons in
26
active concert or participation with any of them (collectively “Enjoined Persons”), SHALL NOT
27
use, authorize, permit, or encourage others to use on either defendants’ behalf, without the prior
28
authorization of FGNA, the FGNA Marks in any form or manner that would tend to associate
15
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
1
defendants, or their business or services, with FGNA, including, without limitation, in the marketing,
2
promotion, advertising, identification, sale, or offer for sale of goods or services, or in any other
3
manner.
4
(c)
Notwithstanding the foregoing, the Enjoined Persons are permitted to send out two
5
electronic mailings under the name Feldenkrais Movement Institute to send invoices and to receive
6
and collect payment for the “Eugene Training.” These electronic mailings are to be made in June
7
and July, 2018. If not paid, some of those invoices may need to be and can be rebilled up to and until
8
September 21, 2018, which is the final day of the training program. The PayPal account that
9
currently uses the name Feldenkrais Movement Institute shall have its name changed to remove
10
Feldenkrais therefrom after the Eugene Training billing is concluded, but no later than October 1,
11
2018.
12
(d)
The injunctive orders set forth in (a) through (c) above shall remain in force and
13
effect until defendant Frank Wildman regains his FGNA Feldenkrais Practitioner certification or
14
Feldenkrais Trainer certification.
15
(e)
The Court retains jurisdiction to enforce the terms of the parties’ Settlement
16
Agreement and the terms of this Stipulated Final Judgment and Consent Order. The terms of this
17
Stipulated Final Judgment and Consent Order may be enforced by a motion for contempt. If the
18
Court grants such a motion, defendants may be ordered to pay FGNA’s costs, reasonable attorneys’
19
and experts’ fees.
20
(f)
All security bonds placed by FGNA in this matter shall be released to FGNA. (See
21
Dkt. Nos. 31, 39.)
22
(g)
23
IT IS SO ORDERED.
24
August 6
Dated _____________, 2018
Subject to the foregoing, the complaint and counterclaim are hereby DISMISSED.
25
26
27
28
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT COURT JUDGE
16
STIPULATED FINAL JUDGMENT AND [PROPOSED] CONSENT ORDER
Case No. 4:18-cv-02340-YGR
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?