Champion-Cain et al v. MacDonald et al

Filing 55

ORDER Denying 18 Plaintiffs' Motion for Preliminary Injunction. Signed by Judge Gonzalo P. Curiel on 7/15/2015. (srm)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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GINA CHAMPION-CAIN, an
individual; LUV SURF, LP, a
12 California limited partnership; ANI
COMMERCIAL CA I, LLC, a
13 California limited liability company;
and ANI COMMERCIAL CA II, LP, a
14 California limited partnership,

CASE NO. 14-cv-2540-GPC-BLM

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Plaintiffs,

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[ECF No. 18]

v.

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ORDER DENYING PLAINTIFFS’
MOTION FOR PRELIMINARY
INJUNCTION

BRIAN MACDONALD, an individual;
LOVESURF, INC., a Delaware
corporation; and DOES 1-10, inclusive,

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Defendants.

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AND RELATED COUNTERCLAIM.

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Before the Court is Plaintiffs Gina Champion-Cain, Luv Surf, LP, ANI

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Commercial CA I, LLC, and ANI Commercial CA II, LP’s (“Plaintiffs” or “Luv Surf”)

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motion for a preliminary injunction against Defendants Brian MacDonald and

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LoveSurf, Inc. (“Defendants” or “LoveSurf”). (ECF No. 18.) The parties have fully

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briefed the motion. (ECF Nos. 23, 32.)

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A hearing was held on June 18, 2015. Following careful consideration of the

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parties’ oral arguments and legal briefing, as well as the applicable law, and for the

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reasons set forth below, the Court DENIES Plaintiffs’ motion for a preliminary

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injunction.

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PROCEDURAL HISTORY

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On October 23, 2014, Plaintiffs filed this action alleging claims of: (1) trademark

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infringement (Lanham Act, 15 U.S.C. § 1125(a)); (2) slander; (3) defamation; and

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(4) interference with a business advantage. (ECF No. 1.) On December 5, 2014,

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Defendants answered and filed counterclaims for: (1) trademark infringement (Lanham

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Act, 15 U.S.C. § 1125(a)); and (2) misappropriation of trade secrets (Uniform Trade

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Secrets Act, Cal. Civ. Code § 3426). (ECF No. 9.)

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On January 23, 2015, Plaintiffs filed the instant motion for a preliminary

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injunction, seeking to enjoin Defendants from making defamatory and disparaging

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statements, and from using the allegedly infringing trademarks. (ECF No. 18.)

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Defendants opposed on February 20, 2015. (ECF No. 23.) After receiving two

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extensions of time in order to allow their forensic expert to conduct a forensic analysis

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of the computer equipment from which Defendant MacDonald produced the documents

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attached to his declaration in opposition to the preliminary injunction motion (ECF No.

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23-1), Plaintiffs filed a reply on April 20, 2015 (ECF No. 32). In conjunction with their

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reply brief, Plaintiffs filed the Declaration of Peter Garza (“Garza Declaration”),

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wherein their forensic expert Peter Garza (“Garza”) described the analysis that lead him

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to conclude that Defendant MacDonald manufactured the evidence he used to support

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his claim of first use of the mark. (ECF No. 32-2.) On May 8, 2015, Defendants filed

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objections to the Garza Declaration (ECF No. 33) as well as a motion for sanctions

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before the magistrate judge (ECF No. 46).

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Plaintiffs subsequently filed three ex parte applications relating to the pending

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preliminary injunction motion. On May 22, 2015, Plaintiffs filed an Ex Parte

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Application for Leave to Submit New Evidence in Support of Motion for Preliminary
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Injunction. (ECF No. 37.) Defendants filed a response on June 2, 2015. (ECF No. 42.)

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On May 27, 2015, Plaintiffs filed an Ex Parte Motion for Order Permitting Oral

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Argument and Limited Witness Testimony on Plaintiffs’ Motion for Preliminary

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Injunction. (ECF No. 38.) Defendants filed a response on June 3, 2015. (ECF No.

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43.) Finally, on June 2, 2015, Plaintiffs filed an Ex Parte Application for Leave to

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Submit Additional Evidence in Support of Motion for Preliminary Injunction. (ECF

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No. 41.) Defendants filed their opposition on June 3, 2015. (ECF No. 45.) On June

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11, 2015, Plaintiffs filed a reply. (ECF No. 48.)
FACTUAL BACKGROUND

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As will be discussed below, the parties vehemently dispute which company first

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used the trademark at issue. Without making any finding at this stage as to the truth

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of the allegations, the Court details the parties’ claimed first uses below.

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A.

Plaintiffs’ Claimed Use of their Mark

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Plaintiffs allege that they began using the brand “LUV SURF” in connection

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with a vacation rental business in San Diego in August 2011, and had a logo designed

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for “LUV San Diego SURF.” (Champion-Cain Decl., ECF No. 18-2 ¶ 2; Ex. I, ECF

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No. 19-11 at 221 .) In October 2011, Plaintiffs received a vacation rental Transient

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Occupancy Registration Certificate for a business named “LUV SAN DIEGO SURF.”

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(Champion-Cain Decl., ECF No. 18-2 ¶ 2; Ex. K, ECF No. 19-11 at 27). In December

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2011, Plaintiffs ordered tote bags with their logo, and indicated on Facebook that

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guests would receive a tote bag. (Champion-Cain Decl., ECF No. 18-2 ¶ 4; Ex. O, ECF

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No. 19-11 at 37-38.)2

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In February 2012, Plaintiffs ordered other merchandise (clothing, hats, towels)

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with their logo. (Champion-Cain Decl., ECF No. 18-2 ¶ 4; Exhs. N, P, ECF No. 19-11

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Unless otherwise indicated, the Court cites to the page numbers imprinted on the top of each
page by the Court’s CM/ECF system and not the parties’ page numbering at the bottom of the page.
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There is a picture of the tote bag with the logo at Ex. O, ECF No. 19-11 at 38.
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at 34-35, 40.) Also in February 2012, Plaintiffs filed an application for a seller’s permit

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to sell clothing online and in a retail store, which they received in March 2012.

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(Champion-Cain Decl., ECF No. 18-2 ¶ 7; Exhs. L-M, ECF No. 19-11 at 29-30, 32.)

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On April 12, 2012, Plaintiffs’ online store became available. (Champion-Cain

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Decl., ECF No. 18-2 ¶ 8.) On July 4, 2012, Plaintiffs opened their retail store. (Id.)

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Plaintiff Gina Champion-Cain has multiple federal trademark registrations and

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applications. (Id. ¶ 9.)

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On August 27, 2013 (corrected December 9, 2014), she registered the “LUV San

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Diego SURF” mark for beachwear, hooded sweatshirts, t-shirts, and tank tops

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(Registration No. 4,390,537).3 (Champion-Cain Decl., ECF No. 18-2 ¶ 9; Ex.

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A, ECF No. 19-11 at 2.) The registration states: “First Use: 2-9-2012; In

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Commerce 2-9-2012.”) (Ex. A, ECF No. 19-11 at 2.)

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On August 5, 2014 (corrected December 9, 2014), she registered the “HEART

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SURF” mark for bathing suits and hats (Registration No. 4,578,750).4

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(Champion-Cain Decl., ECF No. 18-2 ¶ 9; Ex. A, ECF No. 19-11 at 3.) The

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registration states: “First Use 7-4-2012; In Commerce 7-4-2012.” (Ex. A, ECF

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No. 19-11 at 3.)

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On October 21, 2014, she applied to register the “LUV San Diego SURF” mark

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for various goods and services, including clothing, pet accessories, surfboard

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accessories, and rental of vacation homes (Application Serial No. 86430225).

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(Champion-Cain Decl., ECF No. 18-2 ¶ 9; Ex. R, ECF No. 18-12 at 2-4.)

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On October 21, 2014, she applied to register the “HEART SURF” mark for
various goods and services. (Application Serial Nos. 86430191 and 86430195)

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A picture and description of the mark is found at Ex. A, ECF No. 19-11 at 2. It consists of
the stylized words “LUV San Diego SURF” in a blue cloud overlapping a beige surfboard and a white
bone.
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A picture and description of the mark is found at Ex. A, ECF No. 19-11 at 3. It consists of
the blue stylized word “surf” overlapping a pink heart. (Id.)
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(Champion-Cain Decl., ECF No. 18-2 ¶ 9; Ex. R, ECF No. 18-12 at 5-8.)

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On October 21, 2014, she applied to register the terms “LUV SURF” for various

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goods and services. (Application Serial No. 86430220.) (Champion-Cain Decl.,

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ECF No. 18-2 ¶ 9; Ex. R, ECF No. 18-12 at 9-10.)

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Plaintiffs currently manufacture and sell various products (clothing, hats, towels,

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pet accessories with the “LUV SURF” and “HEART SURF” logos. (Champion-Cain

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Decl., ECF No. 18-2 ¶¶ 3-4.) They market the apparel and accessories to individuals

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with a surfer-type style, and attend and sell their merchandise at surfing competitions

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and similar events throughout Southern California. (Id. ¶ 3.)

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Plaintiffs argue they have “made a significant financial investment to develop

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the LUV SURF Brand with its marketing materials, a website, an online presence, a

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retail store, and in placing the LUV SURF products in local stores.” (Id. ¶ 15.)

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Plaintiffs declare that industry sales representatives are confused between the two

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companies, and that a surfing magazine would not run an article from Luv Surf because

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of the possible confusion for readers with LoveSurf.5 (Kramer Decl., ECF No. 18-3

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¶¶ 9, 11; Villatyua Decl., ECF No. 18-4 ¶ 5; Diefenbach Decl., ECF No. 18-5 ¶¶ 3-5;

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Ex. AA, ECF No. 18-12 at 69-70.)

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B.

Defendants’ Claimed Use of their Mark

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Defendants allege that they started making hats and t-shirts labeled with a tag

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displaying “LOVESURF” in 2010. (MacDonald Decl., ECF No. 23-1 ¶ 2.) Also in

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2010, Defendants sponsored several beach clean-ups, and passed out its hats and t-

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shirts at those events. (Id. ¶ 3; Ex. 20, Dkt No. 23-21 at 2.6)

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Plaintiffs also declare that Defendant McDonald’s own teenage daughter expressed confusion
about the two companies at a surf competition, but McDonald declares that his daughter is only four
years old and did not attend the competition. (Long Decl., ECF No. 18-7 ¶¶ 2-3; McDonald Decl.,
ECF No. 23-1 ¶ 17.)
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Ex. 20 is a flyer for a July 5, 2010 beach clean up. (Ex. 20, Dkt No. 23-21 at 2.) It states
that those who join the beach clean up will “receive a hat or tee sponsored by LoveSurf.” (Id.) It
includes a photo of a hat with the phrase “I [red heart] SURF.” (Id.)
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By July 12, 2011, Defendants added other clothing lines using the

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“LOVESURF” brand, and by August 15, 2011, Defendants were selling clothing under

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the “LOVESURF” brand.7 (MacDonald Decl., ECF No. 23-1 ¶ 4.) Defendants listed

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the clothing for sale on several websites, and the first sale of “LOVESURF” clothing

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was a t-shirt on August 23, 2011. (Id. ¶¶4-5; Ex. 14, ECF No. 23-15 at 2.)

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In December 2011, Defendants created the “HEART WAVE” logo.8

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(MacDonald Decl., ECF No. 23-1 ¶ 6; Exhs. 10-11, ECF Nos. 23-11, 23-12.) By

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December 28, 2011, Defendants used the “HEART WAVE” logo above the word

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“LoveSurf” on tags of clothing for sale on the internet.9 (MacDonald Decl., ECF No.

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23-1 ¶ 7; Exhs. 12-13, ECF Nos. 23-13, 23-14.) The first sale of clothing displaying

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the “HEART WAVE” logo above the word “LoveSurf” occurred within a few weeks.10

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(MacDonald Decl., ECF No. 23-1 ¶ 8.)

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On May 27, 2014, Defendants applied for a trademark registration for a mark

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consisting of the “HEART WAVE” logo to the left of the word “LoveSurf”

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(Application Serial No. 86292235). (Id. ¶ 9; Ex. Q, ECF No. 19-1 at 42-58.) The

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application states that the first use was by March 4, 2012, and the first use in commerce

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was by July 5, 2013. (MacDonald Decl., ECF No. 23-1 ¶ 9; Ex. Q, ECF No. 19-1 at

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Examples of the clothing and tags are at Exhs. 1-9, ECF Nos. 23-2, 23-3, 23-4, 23-5, 23-6,
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ECF No. 23-1 ¶ 6 contains a picture of the “HEART WAVE” logo.

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ECF No. 23-1 ¶ 7 contains a picture of the “HEART WAVE” logo with the word “LoveSurf”
underneath.
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In December 2011, Defendants hired Chris Kramer to work on a project called
“LuvYourBeach.” (MacDonald Decl., ECF No. 23-1 ¶ 13; Exhs. 15-18, ECF Nos. 23-16, 23-17, 2318, 23-19; Kramer Decl., ECF No. 18-3 ¶ 2.) Kramer allegedly learned of Defendants’ plans to use
the term “Luv” in connection with a line of products for different interests including “LuvSurf,” and
also worked on the design of Defendants’ logos including the “HEART WAVE” logo. (MacDonald
Decl., ECF No. 23-1 ¶¶ 14-15; Exhs. 10-11, ECF Nos. 23-11, 23-12.) Kramer quit working for
Defendants after about one month, on January 3, 2012. (MacDonald Decl., ECF No. 23-1 ¶ 16; Ex.
19, ECF No. 23-20.) Shortly thereafter, Kramer began working for Plaintiffs in February 2012.
(Champion-Cain Decl., ECF No. 18-2 ¶ 5; Kramer Decl., ECF No. 18-2 ¶ 2.) Kramer declares that
while he worked with Defendants they never discussed a brand called “LoveSurf” or a line of products
bearing that brand name. (Kramer Decl., ECF No. 18-2 ¶ 3.)
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46.) Defendants state that those first use dates refer to the first use of the combined

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configuration of the “HEART WAVE” logo together with a stylized version of the

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“LoveSurf” wordmark. (MacDonald Decl., ECF No. 23-1 ¶ 9; Ex. Q, ECF No. 19-1

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at 42.)

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Defendants currently use another version of the same logo with a pink “HEART

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WAVE” logo and the word “LOVESURF” in all capitals.11 (MacDonald Decl., ECF

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No. 23-1 ¶ 9.) Plaintiffs declare that Defendants changed the color of their logo to

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match Plaintiffs’ “HEART SURF” logo. (Kramer Decl., ECF No. 18-3 ¶ 12.)

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C.

Defendants’ Alleged Defamation of Plaintiffs

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Plaintiffs contend that Defendants made slanderous and defamatory statements

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about Luv Surf on the internet, on social media, and in email correspondence with

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those working for Plaintiffs and with people in the surf apparel industry.

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1.

Defendants’ Website

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Plaintiffs contend that Defendants’ website contains numerous disparaging

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postings. (Champion-Cain Decl., ECF No. 18-2 ¶¶ 12-14.) First, Defendants’ website

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has a posting which is entitled: “LUV SURF APPAREL – THE REAL STORY.” (Ex.

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B, ECF No. 19-1 at 5.) It states that Plaintiffs’ employee, Kramer, is trying to “rip-off”

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and impersonate Defendants’ brand. (Id.) Second, Defendants’ website has a posting

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entitled: “BEWARE OF COUNTERFEIT LOVESURF PRODUCTS TRADING

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UNDER THE NAME LUV SURF.” (Ex. C, ECF No. 19-1 at 9.) Third, Defendants’

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website has a posting entitled: “LUV SURF APPAREL BRAND DIRECTOR CHRIS

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KRAMER - RIP-OFF REPORT.” (Ex. D, ECF No. 19-1 at 11.) This posting also

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states “Too bad the entire vision for this Luv Surf Apparel photo shoot was a blatant

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ECF No. 23-1 ¶ 9 contains a picture of the current pink “HEART WAVE” logo with the
word “LOVESURF” to the right in all capitals.
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RIP-OFF of our 2013 video shoot . . . .” (Id.)12

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2.

Contact with Plaintiffs’ Employees

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Plaintiffs contend that Defendants solicited three of Plaintiffs’ employees to go

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work for Defendants, and in the process disparaged “Luv Surf” and its employee

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Kramer. (Villatoya Decl., ECF No. 18-4 ¶¶ 1-3; Diefenbach Decl., ECF No. 18-5 ¶¶ 1-

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2; Corey Decl., ECF No. 18-6 ¶¶ 1-2.) First, Plaintiffs’ Design Director received an

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email from Defendant MacDonald which stated that Plaintiffs’ apparel “is a complete

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RIP-OFF” of Defendants’ brand, and asked her to come work for “the real LoveSurf.”

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(Villatoya Decl., ECF No. 18-4 ¶¶ 1-3; Ex. E, ECF No. 19 at 13.) The email also stated

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that Luv Surf is a “lame, juvenile, mis-spelled brand.” (Ex. E, ECF No. 19 at 13.)

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Second, Plaintiffs’ Sales Director received an invitation on LinkedIn from Defendant

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MacDonald to “talk about becoming a Sales Manager at the real LoveSurf.”

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(Diefenbach Decl., ECF No. 18-5 ¶¶ 1-2; Ex. H, ECF No. 19-1 at 20.) Finally,

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Plaintiffs’ Retail Manager and Merchandise Buyer received an invitation on LinkedIn

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from Defendant MacDonald to “work for the real LoveSurf” and received a message

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on Facebook that Plaintiffs’ apparel “is a complete RIP-OFF” of Defendants’ brand.

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(Corey Decl., ECF No. 18-6 ¶¶ 1-2; Ex. G, ECF No. 19-1 at 18; Ex. AC, ECF No. 18-

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12 at 78-79.)

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3.

Social Media

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Plaintiffs contend that Defendants identify Luv Surf in social media as

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“#luvsurfislame” and “#staysloppyluvsurf.” (Evans Decl., ECF No. 18-9 ¶ 3; Exhs. T-

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U, ECF Nos. 18-12 at 20, 22.)

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4.

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Plaintiffs assert that Defendant MacDonald contacted various third parties to

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Contact with Third Parties

disparage Luv Surf.

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Plaintiff Champion-Cain does not state in her declaration on what date she took these
screenshots. The screenshots themselves are undated, though all three contain the following at the
bottom of the page: “©2014 LoveSurf Inc.” (Exs. B-D, ECF No. 19-1 at 5-11.)
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First, Plaintiffs contend that Defendant MacDonald contacted Plaintiffs’ public

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relations firm, Little Penguin. He sent an email stating “I noticed that you have been

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publishing articles about a brand called LUV SURF. I hate to be the bearer of bad

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news but you are promoting a brand that is a complete rip-off of the real LOVESURF,

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also out of Southern California. . . . . [I]f you want to support a good cause, work with

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us and do a write up on the real, true, authentic LOVESURF and take down the articles

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on the lame LUV SURF.” (Stansbury Decl., ECF No. 18-8 ¶ 2; Ex. V, ECF No. 18-12

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at 24-25.) Defendant MacDonald followed up his email with a similar voice mail

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message. (Stansbury Decl., ECF No. 18-8 ¶ 3; Ex. W, ECF No. 18-12 at 27.)

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Second, Plaintiffs submit that Defendant MacDonald contacted a photographer

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who has done contract work for Plaintiffs. He sent the photographer an email that her

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images are not original concepts, but imitations of LoveSurf campaigns. (Evans Decl.,

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ECF No. 18-9 ¶¶ 1-2; Ex. F, ECF No. 19-1 at 15.) In addition, Defendant MacDonald

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posted several comments on the photographer’s publicly viewable instagram account,

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stating the Luv Surf is a “Rip-Off” of LoveSurf and it should be “cancelled.” (Evans

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Decl., ECF No. 18-9 ¶¶ 3; Ex. T, ECF No. 18-12 at 20.)

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Third, Defendants sent a cease and desist letter to Nordstrom asserting that

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“LOVESURF recently learned that you carry a brand called ‘Luv Surf’ which bears a

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logo that infringes on LOVESURF’s registered trademark.” (Ex. B, ECF No. 37 at 9.)

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Defendants went on to write “[w]e are urging you to remove all of the infringing

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products from your website AND retail store floors and reply back to us when

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complete.” (Id.) Thereafter, on May 15, 2015, Nordstrom emailed a representative for

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Plaintiffs to inform her of the cease and desist letter and Nordstrom’s decision to stop

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selling Plaintiffs’ merchandise as a result. (Ex. A, ECF No. 37 at 6.)

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Fourth, in an email, dated May 13, 2015, Defendant Brian MacDonald asked the

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organizer of the “Sisters of the Sea” female surf competition not publish Luv Surf’s

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logo or brand on “Sisters of the Sea” marketing materials because they were stolen.

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(Ex. A, ECF No. 41 at 6-7.)
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Fifth and finally, by email dated May 27, 2015, Defendant Brian MacDonald

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encouraged one of Plaintiffs’ brand ambassadors not to do business with Plaintiffs

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because Luv Surf is “a[n] embarrassing copy of LOVESURF.” (Ex. B, ECF No. 41 at

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9.)
5.

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Conduct at Surf Competition

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Plaintiffs contend that in Summer 2013, Plaintiffs were selling their

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merchandise at a surf competition, and learned from attendees and customers that

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Defendant MacDonald was walking around the event giving his hats to Luv Surf

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customers for free, and sometimes placing his hats over the customers’ Luv Surf hats.

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(Kramer Decl., ECF No. 18-3 ¶ 6.)

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D.

Communications Between the Parties

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On July 1, 2014, Plaintiffs sent Defendants a cease and desist letter regarding

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alleged trademark infringement and disparaging statements. (Ex. X, ECF No. 18-12

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at 29-30.) On July 24, 2014, Defendants responded that they were not infringing, and

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they would remove the website posts if Plaintiffs discontinued their claims of

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infringement. (Ex. Y, ECF No. 18-12 at 48-49.) The parties exchanged other

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correspondence. (Ex. Z, ECF No. 18-12 at 53-67.)

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LEGAL STANDARD

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To obtain a preliminary injunction, the moving party must show: (1) a likelihood

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of success on the merits; (2) a likelihood of irreparable harm to the moving party in the

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absence of preliminary relief; (3) that the balance of equities tips in the moving party’s

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favor; and (4) that an injunction is in the public interest. Winter v. Natural Res. Def.

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Council, Inc., 555 U.S. 7, 20 (2008).

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Under the Ninth Circuit’s “sliding scale” approach, the first and third elements

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are to be balanced such that “serious questions” going to the merits and a balance of

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hardships that “tips sharply” in favor of the movant are sufficient for relief so long as

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the other two elements are also met. Alliance for the Wild Rockies v. Cottrell, 632 F.3d

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1127, 1134-35 (9th Cir. 2011). A preliminary injunction is “an extraordinary remedy
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that may only be awarded upon a clear showing that the plaintiff is entitled to such

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relief.” Winter, 555 U.S. at 22. The moving party bears the burden of meeting all four

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Winter prongs. See Cottrell, 632 F.3d at 1135; DISH Network Corp. v. FCC, 653 F.3d

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771, 776 (9th Cir. 2011).
DISCUSSION

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A.

Trademark Infringement

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1.

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Plaintiffs argue that they will succeed on the merits of their claim for federal

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trademark infringement, and Defendants oppose. (ECF No.18-1 at 15-20; ECF No. 23

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Likelihood of Success on the Merits

at 16-21.)

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The Lanham Act provides “national protection of trademarks in order to secure

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to the owner of the mark the goodwill of his business and to protect the ability of

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consumers to distinguish among competing producers.”13 Park ‘N Fly, Inc. v. Dollar

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Park & Fly, Inc., 469 U.S. 189, 198 (1985). To prevail on a claim of trademark

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infringement, a plaintiff must show: “(1) that it has a protectible ownership interest in

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the mark; and (2) that the defendant’s use of the mark is likely to cause consumer

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confusion.” Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th Cir.

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2012) (citation and internal quotation marks omitted).

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The parties primarily dispute whether Plaintiffs have a protectible ownership

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Under the Lanham Act, a “trademark” includes:

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any word, name, symbol, or device, or any combination thereof –
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(1) used by a person, or
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(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.
15 U.S.C. § 1127.
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interest in the mark based on priority of use. (ECF No. 18-1 at 16-17; ECF No. 23 at

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18-21.) “‘It is axiomatic in trademark law that the standard test of ownership is priority

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of use. To acquire ownership of a trademark it is not enough to have invented the mark

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first or even to have registered it first; the party claiming ownership must have been the

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first to actually use the mark in the sale of goods or services.’” Rearden LLC, 683 F.3d

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at 1203 (quoting Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir.

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1996)). Therefore, a party must show that it was the first to use the mark in commerce.

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Id.

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Under the Lanham Act, the term “‘use in commerce’ means the bona fide use of

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a mark in the ordinary course of trade, and not made merely to reserve a right in a

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mark.” 15 U.S.C. § 1127. Further,

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a mark shall be deemed to be in use in commerce –

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(1) on goods when –

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(A) it is placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels affixed thereto,
or if the nature of the goods makes such placement impracticable, then on
documents associated with the goods or their sale, and

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(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the services are
rendered in more than one State or in the United States and a foreign
country and the person rendering the services is engaged in commerce in
connection with the services.

20
21

Id. “For both goods and services, the ‘use in commerce’ requirement includes (1) an

22

element of actual use, and (2) an element of display.” Chance v. Pac-Tel Teletrac Inc.,

23

242 F.3d 1151, 1159 (9th Cir. 2001).

24

The Ninth Circuit has explained that:

25

In determining whether the two prongs of the “use in commerce” test have
been satisfied, we have . . . generally followed a “totality of the
circumstances” approach. This approach turns on “‘evidence showing,
first, adoption, and, second, use in a way sufficiently public to identify or
distinguish the marked goods in an appropriate segment of the public
mind.’” . . . We have . . . indicated that evidence of actual sales, or lack
thereof, is not dispositive in determining whether a party has established

26
27
28

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1
2
3
4

“use in commerce” within the meaning of the Lanham Act. Instead, we
have acknowledged the potential relevance of non-sales activity in
demonstrating not only whether a mark has been adequately displayed in
public, but also whether a service identified by the mark has been
“rendered in commerce,” 15 U.S.C. § 1127.
Rearden LLC, 683 F.3d at 1205 (internal citations omitted).

5

The Ninth Circuit has further explained that:

6

In applying [the “totality of the circumstances”] approach, the district
courts should be guided in their consideration of non-sales activities by
factors we have discussed, such as the genuineness and commercial
character of the activity, the determination of whether the mark was
sufficiently public to identify or distinguish the marked service in an
appropriate segment of the public mind as those of the holder of the mark,
the scope of the non-sales activity relative to what would be a
commercially reasonable attempt to market the service, the degree of
ongoing activity of the holder to conduct the business using the mark, the
amount of business transacted, and other similar factors which might
distinguish whether a service has actually been “rendered in commerce.”

7
8
9
10
11
12

Id. (quoting Chance, 242 F.3d at 1159).

13

Here, Plaintiffs have provided evidence that they first used the “LUV San Diego

14

SURF” name in connection with their vacation rental business in August 2011,

15

indicated on Facebook that guests would receive a tote bag with the “LUV San Diego

16

SURF” logo in December 2011, and ordered other merchandise (clothing, hats, towels)

17

with the “LUV San Diego SURF” logo in February 2012. (Champion-Cain Decl., ECF

18

No. 18-2 ¶ 4; Exhs. I, N-O, ECF No. 19-11 at 22, 34-35, 37-38, 40.) Plaintiffs have

19

also provided evidence that their online store became available in April 2012, and that

20

their retail store opened in July 2012. (Champion-Cain Decl., ECF No. 18-2 ¶ 8.)

21

Plaintiffs’ registration for the “HEART SURF” logo states that it was first used in

22

commerce in July 2012. (Ex. A, ECF No. 19-11 at 3.)

23

Plaintiffs contend that Defendants did not first use their mark until March 2012,

24

or in commerce until July 2013, based on information in Defendants’ trademark

25

application. (ECF No. 18-1 at 16-17; Ex. Q, ECF No. 19-1 at 42-58.) However,

26

Defendants have provided evidence that the first use dates in their trademark

27

application refer to the first use of the combined configuration of the “HEART WAVE”

28

logo together with a stylized version of the “LoveSurf” wordmark, not their use of the
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1

“LOVESURF” wordmark or the “HEART WAVE” logo by themselves. (MacDonald

2

Decl., ECF No. 23-1 ¶ 9; Ex. Q, ECF No. 19-1 at 42.)

3

Rather, Defendants have provided evidence that in 2010 they began using the

4

wordmark “LOVESURF” on tags for hats and t-shirts. (MacDonald Decl., ECF No.

5

23-1 ¶¶ 2-3; Ex. 20, Dkt No. 23-21 at 2.) By August 15, 2011, Defendants were selling

6

clothing under the “LOVESURF” brand online, and their first sale was on August 23,

7

2011. (MacDonald Decl., ECF No. 23-1 ¶¶ 4-5; Ex. 14, ECF No. 23-15 at 2.)

8

December 28, 2011, Defendants used the “HEART WAVE” logo above the word

9

“LoveSurf” on tags of clothing for sale on the internet, and the first sale of such

10

clothing occurred within a few weeks. (MacDonald Decl., ECF No. 23-1 ¶¶ 7-8; Exhs.

11

12-13, ECF Nos. 23-13, 23-14.)

By

12

On first blush, it appears that Defendants actually were the first to use the mark

13

in commerce. However, according to Plaintiffs’ computer forensics expert (Garza),

14

Defendant MacDonald manufactured the evidence he filed in conjunction with his

15

declaration to show first use.

16

vehemently object to the filing of Garza’s declaration and also disagree with Garza’s

17

findings and have filed objections to Garza’s declaration (ECF No. 33) as well as a

18

motion for sanctions (ECF No. 46).

(See Garza Decl., ECF No. 32-2.)

Defendants

19

While the Court takes allegations of perjury very seriously, because the Court

20

finds that Plaintiffs have failed to satisfy the other three prongs of the Winter test, the

21

Court declines at this time to address the credibility issues necessary to resolve the

22

question of which party made first use of the mark. Further discovery is needed in this

23

case before a determination can be made as to who is the owner of the mark.

24

2.

Irreparable Harm

25

In their motion, Plaintiffs argue that they will suffer irreparable harm if the

26

requested injunction is not granted because of damage to Plaintiffs’ goodwill and

27

reputation. (ECF No. 18-1 at 20-21.) Defendants oppose, contending that Plaintiffs

28

have not shown an immediate threat of irreparable harm because Plaintiffs have not
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1

provided any evidence of actual threatened harm and because Plaintiffs delayed before

2

moving for an injunction. (ECF No. 23 at 12-16.) In subsequently filed ex parte

3

applications, Plaintiff presented evidence that (1) Defendants sent a cease and desist

4

letter to Nordstrom, which resulted in Nordstrom discontinuing sales of Plaintiffs’ t-

5

shirts, (2) Defendant MacDonald emailed the organizer of the “Sisters of the Sea”

6

female surf competition asking that she not publish Luv Surf’s logo or brand on

7

“Sisters of the Sea” marketing materials because they were stolen, and (3) Defendant

8

MacDonald emailed one of Plaintiffs’ brand ambassadors and encouraged her not to

9

do business with Plaintiffs because Luv Surf is “a[n] embarrassing copy of

10

LOVESURF.” (ECF No. 37, Ex. A; ECF No. 41, Exs. A & B.) Plaintiffs argue that

11

these actions demonstrate immediate harm and that Defendant MacDonald continues

12

to damage Plaintiffs’ credibility and goodwill in the community in which its products

13

are sold. (ECF No. 41 at 3.) The evidence relating to Nordstrom also purportedly

14

shows that Plaintiff has lost revenue and goodwill and will lose future profits. (ECF

15

No. 37 at 3.)

16

A plaintiff must demonstrate that irreparable injury is likely in the absence of an

17

injunction. Winter, 555 U.S. at 20. A party seeking injunctive relief for trademark

18

infringement must provide “evidence sufficient to establish likelihood of irreparable

19

harm.” Herb Reed Enters., LLC v. Fla. Ent’t Mgmt., Inc., 736 F.3d 1239, 1251 (9th

20

Cir. 2013); see also Active Sports Lifestyle USA, LLC v. Old Navy, LLC, No. 12-cv-

21

572-JVS, 2014 WL 1246497, at *2 (C.D. Cal. Mar. 21, 2014) (trademark infringement,

22

itself, does not constitute irreparable harm and the existence of intangible harms such

23

as loss of goodwill must be shown by evidence). However, “monetary injury is not

24

normally considered irreparable.” Los Angeles Mem'l Coliseum Comm'n v. Nat'l

25

Football League, 634 F.2d 1197, 1202 (9th Cir. 1980). As the Supreme Court has

26

made clear:

27
28

(T)he temporary loss of income, ultimately to be recovered, does not
usually constitute irreparable injury ... The key word in this consideration
is irreparable. Mere injuries, however substantial, in terms of money, time
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and energy necessarily expended ... are not enough. The possibility that
adequate compensatory or other corrective relief will be available at a
2
later date, in the ordinary course of litigation, weighs heavily against a
claim of irreparable harm.
3 Id. (quoting Sampson v. Murray, 415 U.S. 61, 90 (1974) (internal quotations omitted)).
1

4

Conclusory or speculative allegations also are not enough. Herb Reed, 736 F.3d at

5

1250; see also Caribbean Marine Servs. Co. v. Baldrige, 844 F.2d 668, 674 (9th

6

Cir.1988) (“[s]peculative injury does not constitute irreparable injury sufficient to

7

warrant granting a preliminary injunction”); Am. Passage Media Corp. v. Cass

8

Commc’ns, Inc., 750 F.2d 1470, 1473 (9th Cir.1985) (finding irreparable harm not

9

established by statements that “are conclusory and without sufficient support in facts”).

10

Although preliminary relief may be ordered to prevent harm to a plaintiff’s reputation

11

and goodwill, a finding of reputational harm may not be based on “pronouncements

12

[that] are grounded in platitudes rather than evidence.” Herb Reed, 736 F.3d at 1250.

13

A plaintiff also must show that the harm not only is irreparable, but that

14

immediate injury is threatened. Carribean Marine Servs., 844 F.2d at 674. A “long

15

delay before seeking a preliminary injunction implies a lack of urgency and irreparable

16

harm.” Oakland Tribune, Inc. v. Chronicle Pub. Co., 762 F.2d 1374, 1377 (9th Cir.

17

1985); see also Hanginout, Inc. v. Google, Inc., 54 F. Supp. 3d 1109, 1132-33 (S.D.

18

Cal. 2014) (finding delay of seven months before initiating litigation, and even longer

19

before filing preliminary injunction motion, to be inexcusable); Edge Games, Inc. v.

20

Elec. Arts, Inc., 745 F. Supp. 2d 1101, 1117-18 (N.D. Cal. 2010) (finding, where the

21

plaintiff waiting twenty-one months before seeking preliminary injunction, that “[t]he

22

undisputed fact that plaintiff did not timely act to prevent the ‘Mirror's Edge’ franchise

23

from inundating the market is alone sufficient to deny the instant motion”).

24

Here, Plaintiffs’ delay in seeking injunctive relief undermines its claim that it

25

will be irreparably harmed. Plaintiffs state that they knew that Defendants were

26

marketing “LoveSurf” products around July 2013, and Plaintiffs sent Defendants a

27

cease and desist letter on July 1, 2014. (Kramer Decl., ECF No. 18-3 ¶¶ 4, 6; Ex. X,

28

ECF No. 18-12 at 29-30.) However, Plaintiffs did not file this case until October 23,
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1

2014 (15 months after learning that Defendants were marketing “LoveSurf” products),

2

and did not file the instant motion for a preliminary injunction until January 23, 2015

3

(18 months after learning of the “Lovesurf” marketing).14 (ECF No. 18.) These actions

4

do not imply a sense of urgency.

5

In addition, Plaintiffs have provided insufficient evidence that they will suffer

6

irreparable harm. Plaintiffs contend that they will suffer irreparable harm because they

7

spent money to develop their brand, Defendants knowingly copied their mark, the

8

parties’ products directly compete, Plaintiffs have no ability to control quality, the

9

products are sold through the same channels, and individuals in the surf industry have

10

indicated that they associate Defendants’ LoveSurf products with Plaintiffs’ LUV

11

SURF mark. (ECF No. 18-1 at 20-21.) Additionally, Plaintiffs point to the loss of

12

income from Nordstrom and the damage to their goodwill caused by Defendant

13

MacDonald’s ongoing contacts with Plaintiffs’ vendors and brand ambassadors. (ECF

14

No. 37 at 3; ECF No. 41 at 3.) While all of these factors certainly show some degree

15

of harm to Plaintiffs, Plaintiffs have not demonstrated harm that cannot be compensated

16

through monetary damages or other corrective relief on a later date. Los Angeles

17

Mem’l Coliseum Comm’n, 634 F.2d at 1202 (concluding plaintiff failed to show

18

irreparable harm where alleged injuries of diminution of revenues and market value of

19

property, loss of goodwill normally attached to a profitable enterprise, and inability to

20
21
22
23
24
25
26
27
28

14

In their recently-filed reply regarding one of their ex parte applications, Plaintiffs argue that
any delay should not be held against them because (1) “any delay is excusable where the Plaintiff acts
as soon as the Defendant has a measurable impact on Plaintiffs’ goodwill and business reputation,”
and (2) Plaintiffs were attempting to resolve their dispute with Defendants without court intervention.
(ECF No. 48 at 2-3.) Plaintiffs quote a portion of E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th
Cir. 1983) in support of their argument, but the whole quote says “[h]ad defendant's encroachment
been minimal, or its growth slow and steady, there would be no laches.” The Court finds that
regardless of how slow Defendants’ growth may have been, LoveSurf’s encroachment was far from
minimal. From the beginning, both companies have been selling t-shirts and other clothing
emblazoned with the words “LoveSurf” or “Luv Surf” in the same market, which means Defendants’
encroachment was significant from the onset. Moreover, Plaintiffs argue that they “became aware that
Defendants broadened the scope of its infringing conduct” in June of 2014 and that they opened
discussions with Defendants soon thereafter to try to resolve the dispute. (ECF No. 48 at 3.) This still
does not explain the three-month delay between filing the instant lawsuit and filing their preliminary
injunction motion. Therefore, Plaintiffs’ new arguments do not alter this Court’s determination.
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1

enter lease agreement and begin stadium renovations all could be remedied by a

2

damage award). Moreover, though “[e]vidence of loss of control over business

3

reputation and damage to goodwill could constitute irreparable harm,” Herb Reed, 736

4

F.3d at 1250, the fact that Plaintiffs have been competing in the same market with

5

Defendants for at least two years and have presented only one piece of evidence of

6

damage to their goodwill15 counsels against such a finding. If Plaintiffs’ evidence

7

suggested that, absent an injunction, Defendants’ actions were likely to put Plaintiffs

8

out of business, the Court’s decision might be different. See Los Angeles Mem’l

9

Coliseum Comm’n, 634 F.2d at 1203 (finding insufficient showing of irreparable harm

10

where monetary remedy would suffice and “the Commission [did not] contend or show

11

that loss of the Raiders as a tenant threatened to put it or the Coliseum out of

12

business”); Drakes Bay Oyster Co. v. Salazar, 921 F. Supp. 2d 972, 994 (N.D. Cal.

13

2013) (finding irreparable harm where injunction would effectively destroy business

14

and plaintiff satisfied requirement of providing adequate evidence of the threat that was

15

causally connected to the alleged wrongdoing), aff'd sub nom. Drakes Bay Oyster Co.

16

v. Jewell, 729 F.3d 967 (9th Cir. 2013) and aff'd sub nom. Drakes Bay Oyster Co. v.

17

Jewell, 747 F.3d 1073 (9th Cir. 2014). It does not. To the contrary, Plaintiff’s counsel

18

acknowledged during the hearing that Plaintiffs are still able to operate their business.

19

Thus, Plaintiffs have not made a showing of irreparable harm.

20

On a final note, Plaintiffs cited during the hearing before this Court to Stuhlbarg

21

Int’l Sales Co., Inc. v. Brush and Co., Inc., 140 F.3d 832 (9th Cir. 2001) for the

22

proposition that the denial of expansion of one’s business constitutes irreparable harm.

23

Plaintiffs’ contend that they had been working hard to expand their business and that

24

Defendant MacDonald’s interference with Nordstrom and other potential customers has

25
26
27
28

15

Though, Nordstrom’s decision to stop carrying the Luv Surf line may be less evidence of
lost goodwill as it is evidence that Nordstrom does not wish to be caught in the middle of a trademark
dispute. Having made the decision following receipt of Defendants’ cease and desist letter, Nordstrom
may well agree to resume carrying Plaintiffs’ products if Plaintiffs are successful in this case and
present Nordstrom with a court order confirming their right to the mark.
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1

inhibited their ability to expand the business. Defendants responded that the standard

2

for preliminary injunctions has become more stringent since Stuhlbarg, as explained

3

by the Supreme Court in Winter, so Stuhlbarg is of limited value.

4

As an initial matter, Defendants are correct that in Stuhlbarg, the standard for a

5

preliminary injunction required the moving party to “show either (1) a combination of

6

probable success on the merits and the possibility of irreparable injury, or (2) that

7

serious questions are raised and the balance of hardships tips sharply in favor of the

8

moving party.” Stuhlbarg, 140 F.3d at 839-40 (emphasis added). After Winter, the

9

Ninth Circuit’s sliding scale approach may still be employed, but the moving party

10

must make a sufficient showing as to all four prongs of the test. Winter, 555 U.S. at

11

20; Cottrell, 632 F.3d at 1135 (“[t]o the extent prior cases applying the ‘serious

12

questions’ test have held that a preliminary injunction may issue where the plaintiff

13

shows only that serious questions going to the merits were raised and the balance of

14

hardships tips sharply in the plaintiff's favor, without satisfying the other two prongs,

15

they are superseded by Winter, which requires the plaintiff to make a showing on all

16

four prongs”). In Stuhlbarg, the court found a likelihood of success on the merits and

17

the possibility of irreparable harm and ended the inquiry there. More is required in this

18

case.

19

Additionally, the facts of Stuhlbarg are distinguishable. In Stuhlbarg, Sisco16

20

and Brush were both in the business of selling home safes marketed as “firesafe,”

21

though Brush actually had trademarks for the term “Fire-Safe.” Stuhlbarg, 140 F.3d

22

at 834-35. Sisco had used the term “firesafe” with Brush’s knowledge for at least

23

fourteen years, but Brush did not immediately take action to enforce its marks. Id. at

24

835. However, when Sisco began targeting Brush’s customers, Brush recorded its

25

“Fire-Safe” trademark with the U.S. Customs Service, which resulted in Customs

26

detaining over 6,000 Sisco safes, which were destined for one of Sisco’s new

27
28

16

Stuhlbarg International Sales Company was known as “Sisco.”
- 19 -

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1

customers. Id. Sisco responded by filing suit for a declaratory judgment of non-

2

infringement and cancellation of Brush’s trademarks, and sought a preliminary

3

injunction to prevent Brush for interfering with the importation of Sisco’s safes. Id. at

4

835-36. The district court granted the injunction finding that “[e]vidence of threatened

5

loss of prospective customers or goodwill certainly supports a finding of the possibility

6

of irreparable harm.” Id. at 841. Concluding that this finding was not clearly

7

erroneous, the appellate court affirmed.

8

However, the district court also explained that the “appropriate status quo” was

9

permitting Sisco to continue to import safes and use the term “firesafe” as it had for

10

over a decade. Id. In the instant case, as in Stuhlbarg, Plaintiffs were aware of

11

Defendants’ use of the marks long before they took action. Plaintiffs acknowledge

12

knowing of Defendants’ use as early as July 2013, but they did not file this action until

13

over a year later when Defendants began having an impact on their business. However,

14

unlike in Stuhlbarg, Plaintiffs are trying to enjoin Defendants from selling their

15

products instead of the other way around. Thus, under the reasoning of Stuhlbarg, the

16

“appropriate status quo” would not be to enjoin Defendants, but rather to allow

17

Defendants to continue to use “LoveSurf” as they have been, with Plaintiffs’

18

knowledge, for several years. Furthermore, while the Ninth Circuit found that it was

19

not clearly erroneous for the district court to find that loss of prospective customers

20

supports a finding of irreparable harm, the Court does not construe the holding as

21

requiring a finding of irreparable harm upon any showing of loss of prospective

22

customers. The Court, therefore, finds that Stulhbarg does not bolster Plaintiffs’ claim.

23

For the foregoing reasons, the Court finds that Plaintiffs failed to demonstrate

24

a likelihood of irreparable harm. Though the Court need not address the remaining

25

prongs of the preliminary injunction test where the moving party fails to establish

26

likelihood of irreparable harm, see Cottrell, 632 F.3d at 1135 (requiring the moving

27

party to satisfy all four prongs of Winter test), the Court will consider the final two

28

factors in light of the uncertainty surrounding the first prong of the test.
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1

3.

Balancing of Equities

2

Plaintiffs contend that the balance of equities tips in its favor because Defendants

3

brought any injury upon themselves by knowingly adopting the LoveSurf mark with

4

the intent to deceive. (ECF No. 18-1 at 21.) Defendants counter that if an injunction

5

issues, they will face considerable monetary and reputational costs. (ECF No. 22.)

6

The Court concludes that the balance of the equities weighs in favor of

7

Defendants. Defendants would be forced to rebrand all of their merchandise, change

8

the name of their company, and stop selling all of the items emblazoned with the term

9

“LoveSurf.” While Plaintiffs have lost one customer and some goodwill due to

10

Defendant MacDonald’s actions, the impact on Plaintiffs in denying their motion

11

would be far less severe. Moreover, the purpose of a preliminary injunction is to

12

maintain the status quo pending a determination on the merits, see Los Angeles Mem'l

13

Coliseum Comm'n, 634 F.2d at 1200, and denying, not granting, the injunction motion

14

is more likely to maintain the status quo that has existed during the two years since

15

Plaintiffs first learned of Defendants’ allegedly infringing conduct.

16

4.

Public Interest

17

Plaintiffs do not specifically argue why an injunction would be in the public

18

interest. (See ECF No. 18-1 at 22.) Defendants point out that in trademark cases,

19

courts often define the public interest as the public’s right not to be confused or

20

deceived. (ECF No. 23 at 22 (citiing Moroccanoil, Inc. v. Moroccan Gold, LLC, 590

21

F. Supp. 2d 1271, 1282 (C.D. Cal. 2008), Davidoff & Cie, S.A. v. PLD Int’l Corp., 263

22

F.3d 1297, 1304 (11th Cir. 2001), and BellSouth Adver. & Publ’g Crop. v. The Real

23

Color Pages, Inc., 792 F. Supp. 775, 785 (M.D. Fla. 1991)).

24

While Defendant is correct and issuance of an injunction would put an end to the

25

confusing marketing and sale of two nearly identical brands, the uncertainty over who

26

is the senior user of the mark makes it impossible for the Court to make a determination

27

as to how best to prevent deception or confusion of the public. As a result, the outcome

28

on this prong is a draw.
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1

5.

Conclusion Regarding Trademark Infringement

2

The Court concludes that Plaintiffs have not made a clear showing that they are

3

entitled to the extraordinary remedy of a preliminary injunction on their trademark

4

infringement claim, Winter, 555 U.S. at 22, and therefore DENIES Plaintiffs’ motion.

5

B.

Defamation

6

Plaintiffs seek to enjoin Defendants from making defamatory statements about

7

the Luv Surf brand on LoveSurf’s website, in solicitations to Luv Surf employees, and

8

on social media. (ECF No. 18-1 at 13.) Defendants argue that the Court cannot grant

9

Plaintiffs’ request to enjoin Defendants’ future speech because such an action would

10

constitute a prior restraint on speech, which is unconstitutional. (ECF No. 23 at 16-20.)

11

Plaintiffs counter that Defendants’ statements are commercial speech and may be

12

enjoined. (ECF No. 32 at 9-10.)

13

As with Plaintiffs’ trademark infringement claim, in order to justify a

14

preliminarily injunction, Plaintiffs would have to satisfy the four-prong Winter test.

15

The first question then is whether Plaintiffs can show likelihood of success on the

16

merits. “Defamation is an invasion of the interest in reputation . . . which involves the

17

intentional publication of a statement of fact that is false, unprivileged, and has a

18

natural tendency to injure or which causes special damage.” Smith v. Maldonado, 72

19

Cal. App. 4th 637, 645 (1999), as modified (June 23, 1999) (citing Cal. Civ. Code,

20

§§ 45, 46, 5 Witkin, Summary of Cal. Law (9th ed. 1988) Torts § 471, pp. 557-558)).

21

“In all cases of alleged defamation, whether libel or slander, the truth of the offensive

22

statements or communication is a complete defense against civil liability, regardless of

23

bad faith or malicious purpose.” Id. at 646. Because the Court cannot discern at this

24

juncture which party owns the mark, the Court also cannot determine whether

25

Defendants’ statements are true or false.

26

MacDonald’s statements constitute commercial speech—that is, speech proposing a

27

commercial transaction—which is afforded a more limited measure of First

28

Amendment protection. (ECF No. 32 at 9.) However, even commercial speech may
- 22 -

Plaintiffs suggest that Defendant

14cv2540-GPC-BLM

1

be suppressed if the “communication[s] [are] more likely to deceive the public than to

2

inform it.” Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n of New York, 447

3

U.S. 557, 563 (1980). Again, without knowing whether Defendants’ statements are

4

true or deceptive, the Court cannot determine whether Defendants’ speech may be

5

enjoined.

6

In regard to irreparable harm, Plaintiffs argue, without elaboration, that

7

Defendants’ statements have damaged its business and are adversely affecting sales.

8

(ECF No. 18-1 at 15.) While Defendants’ aggressive behavior towards Plaintiffs as

9

well as their vendors, customers, and employees has caused Plaintiffs some economic

10

and reputational harm (and seems unwise while litigation is ongoing), the Court finds

11

the analysis for this element the same as detailed above in regard to Plaintiffs’

12

trademark infringement claim. Accordingly, the Court finds that Plaintiffs have not

13

demonstrate that irreparable harm is likely and finds that Plaintiffs’ alleged damages

14

can be addressed through monetary and/or other corrective relief on a later date. Los

15

Angeles Mem’l Coliseum Comm’n, 634 F.2d at 1202.

16

Plaintiffs’ memorandum addresses the balance of hardships and public interest

17

prongs of the Winter test jointly as to their trademark infringement and defamation

18

causes of action. (ECF No. 18-1 at 21-22.) Thus, the arguments are the same as those

19

set forth in the preceding section of this order. Given the overlap in the claims and that

20

the alleged hardships and public interest are the same, the Court’s previous

21

determination on these issues applies equally to Plaintiffs’ defamation claim.

22

The Court, therefore, finds that Plaintiffs have failed to satisfy all four prongs

23

of the Winter test and DENIES Plaintiffs’ motion for a preliminary injunction in regard

24

to its defamation claim.

25

///

26

///

27

///

28

///
- 23 -

14cv2540-GPC-BLM

CONCLUSION AND ORDER

1
2

For the foregoing reasons, the Court finds that Plaintiffs have not made a clear

3

showing that they are entitled to the extraordinary remedy of a preliminary injunction.

4

Winter, 555 U.S. at 22. The Court, therefore, DENIES Plaintiffs’ motion for a

5

preliminary injunction (ECF No. 18).

6

IT IS SO ORDERED.

7

DATED: July 15, 2015

8
9

HON. GONZALO P. CURIEL
United States District Judge

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