Delta Sigma Theta Sorority, Inc. v. Bivins et al

Filing 65

ORDER granting 62 Plaintiff's Motion for Temporary Restraining Order. The Court defers ruling on Plaintiff's request for a preliminary injunction. This temporary restraining order will remain in effect until the Court rules on Plaintiff's Motion for a Preliminary Injunction, but in no event longer than fourteen (14) days. SEE ORDER FOR DETAILS. Signed by Judge Sheri Polster Chappell on 4/1/2014. (LMF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
DELTA SIGMA THETA SORORITY,
INC.,
Plaintiff,
v.

Case No: 2:14-CV-147-FtM-38CM

LETISHA D. BIVENS, ALPHONSO
F. GOINS, and FRATHOUSE
CLOTHING, INC.,
Defendants.
/
ORDER 1
This matter comes before the Court on Plaintiff Delta Sigma Theta Sorority, Inc.'s
ex parte Motion for a Temporary Restraining Order and Preliminary Injunction (Doc.
#62) filed on March 25, 2014. Plaintiff moves the Court for a temporary restraining
order and preliminary injunction to enjoin Defendants from infringing on Plaintiff's
trademarks and service marks (hereinafter "Marks"), and taking other actions that would
frustrate Plaintiff's ability to pursue relief in this matter. (Doc. #62).
BACKGROUND
Plaintiff is a not-for-profit membership service organization founded in 1913 and
is incorporated under the laws of the District of Columbia. Plaintiff purports to own a

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of the court.

number of Marks and has registered many of them with the United States Patent and
Trademark Office ("PTO").

Plaintiff further alleges that it has trademark rights for

several unregistered Marks.
Plaintiff commenced the instant litigation (Doc. #1) against Defendants on
February 26, 2013, in the United States District Court for the District of Columbia ("D.C.
District Court").

Plaintiff alleges trademark infringement, counterfeiting, trademark

dilution, and unfair competition under the Lanham Act, 15 U.S.C.§ 1051 et seq., as well
as several other common law claims. After a jurisdictional review, the D.C. District
Court transferred this case to this Court. 2 (Doc. #58). Before doing so, the D.C. District
Court granted Plaintiff's previous motion for a temporary restraining order. (Doc. #37).
The court trice extended the temporary restraining order, the last of which expired on
March 12, 2014, when the case was transferred here. (Doc. #60).
As set forth in the Complaint, Plaintiff claims that Defendants have sold and are
selling merchandise (e.g., tee shirts, polo shirts, tote bags, and drawstring bags) that
bear its Marks or confusingly similar imitations thereof.

Plaintiff maintains that

Defendants have placed such merchandise in interstate commerce via their website at
www.frathouseclothing.com. Plaintiff continues that Defendants have advertised the
FratHouse website and available merchandise on Facebook, Twitter, Flicker, and

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Defendant FratHouse Clothing, LLC ("FratHouse") is a Florida limited liability company with a principal
address of 1200 Goodlette Road #11533, Naples, Florida. Defendant Letisha Bivens is an individual
residing in Florida with an address of record of P.O. Box 11138, Naples, Florida 34101. Defendant Goins
is also an individual residing in Florida with an address of record of 1200 Goodlette Road #11533,
Naples, Florida 34101. Plaintiff alleges that Defendants Bivens and Goin are founding Managing
Members of FratHouse, and that during the time of the alleged infringing activities at issue, they directed,
controlled, and were the moving forces behind FratHouse's acts.

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HBCUConnect. 3

Finally, Plaintiff asserts that, even after commencing this instant

litigation and the D.C. District Court issuing the prior temporary restraining order,
Defendants continue to display tee shirt and bag designs with its Marks on their website
and Facebook page as well as advertise merchandise on Facebook that infringes on its
Marks.
DISCUSSION
To obtain a temporary restraining order, a party must demonstrate (1) a
substantial likelihood of success on the merits; (2) irreparable injury will be suffered if
the relief is not granted; (3) the threatened injury outweighs the harm the relief would
inflict on the non-movant; and (4) the entry of the relief would serve the public interest."
Schiavo ex. rel Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005).
Additionally, a court may only issue a temporary restraining order without notice to the
adverse party or its attorney if:
(A) specific facts in an affidavit or a verified complaint clearly
show that immediate and irreparable injury, loss, or damage
will result to the movant before the adverse party can be
heard in opposition [and] (B) the movant's attorney certifies
in writing any efforts made to give notice and the reasons
why it should not be required.
Fed. R. Civ. P. 65(b); see also M.D. Fla. Local Rule 4.05(a) ("Pursuant to Rule 65(b),
Fed. R. Civ. P., temporary restraining orders may be issued without notice to be
effective for a period of fourteen (14) days unless extended or sooner dissolved."). Ex
parte temporary restraining orders should be "entered only in emergency cases to
maintain the status quo until the requisite notice may be given and an opportunity is
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Plaintiff identifies the following websites: Facebook (www.facebook.com/frathouseclothing), Twitter
(twitter.com/FHC_Greek), Flicker (www.flicker.com/photos77736948@NO6), and HBCUConnect
(www.hbcuconnect.com).

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afforded to opposing parties to respond to the application for a preliminary injunction."
M.D. Fla. Local Rule 4.05(a). For the following reasons, the Court finds that Plaintiff has
met these four factors and is entitled to a temporary restraining order.
First, to prevail on trademark infringement and unfair competition claims under
the Lanham Act, the plaintiff must show the defendant used its mark in commerce
without its consent and the unauthorized use would likely confuse or deceive the public.
See Fantasia Distrib., Inc. v. Southern Wholesale, LLC, No. 8:14-CV-407, 2014 U.S.
Dist. LEXIS 19884, at *3-4 (M.D. Fla. Feb. 18, 2014) (citation omitted); see also Chanel,
Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1475 n.3 (11th Cir. 1991) ("[T]he
same facts support a cause of action for unfair competition as for trademark
infringement" (citation omitted)).

Here, Defendant is using its Marks in commerce

without consent, as Defendants are not amongst Plaintiff's select licensed vendors and
Defendant's use of Plaintiff's Marks is likely to confuse consumers under the
circumstances of this case. Plaintiff, therefore, is likely to prevail on the merits of its
claims.

More notably, Defendants have apparently continued to offer for sale

merchandise allegedly bearing Plaintiff's Marks, despite the pendency of this suit and
several cease and desist letters Plaintiff sent to Defendant. Plaintiff, therefore, has a
substantially likelihood of prevailing on its trademark infringement and unfair competition
claims under the Lanham Act.
Second, "[o]nce a plaintiff establishes a likelihood of success on the merits of a
trademark infringement claim, a presumption of irreparable harm arises."

Fantasia

Distrib., 2014 U.S. Dist. LEXIS 19884, at *3-4 (citation omitted); see also BellSouth
Adver. & Publ'g Corp. v. Real Color Pages, Inc., 792 F. Supp. 775, 784 (M.D. Fla. 1991)

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("The law is well settled that the existence of a likelihood of confusion constitutes
irreparable injury, as a matter of law, sufficient to satisfy the requirements of Federal
Rule of Civil Procedure 65."). As such, Defendants' alleged trademark infringement and
unfair competition are offenses that, by their very nature, cause irreparable injury. See
Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1029 (11th Cir. 1989) ("It is
generally recognized in trademark infringement cases that (1) there is not [an] adequate
remedy at law to redress infringement and (2) infringement by its nature causes
irreparable harm."). Even if irreparable injury is not presumed, Plaintiff has shown that it
will suffer irreparable injury absent an injunction. A temporary restraining order has
been in effect since the start of this litigation. Plaintiff has presented evidence that
Defendants (1) have refused to cease using Plaintiff's Marks after receiving notice of
infringement and cease and desist letters; and (2) did not fully comply with the prior
temporary restraining order.

"Such willful conduct demonstrates a likelihood that

Defendant would continue to harm Plaintiff's trademarks if the Court declined to issue
an injunction." Chanel, Inc. v. Purse Valley, No. 1:12-cv-22745, 2014 U.S. Dist. LEXIS
12218, at *16 (S.D. Fla. Jan. 31, 2014) (granting the plaintiff permanent injunctive relief
where, among other things, the defendant "willfully infringed the Chanel [m]arks and
continued to do so even after service of the Amended Complaint in this matter upon it").
Plaintiff also has shown that it will suffer irreparable injury to its goodwill and reputation
due to the loss of control over products and merchandise bearing its Marks. See id.
(finding "[d]efendant's counterfeit products . . . create[d] irreparable harm and confusion,
particularly because the counterfeit products b[ore] identical markings as [p]laintiff's
genuine merchandise, and [were] not manufactured to Chanel's quality standards").

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Moreover, Plaintiff has convincingly established that irreparable injury is so imminent
that injunctive relief is necessary pending a hearing on its motion for a preliminary
injunction and delaying such injunctive relief is impractical.
Third, Defendants will not suffer substantial harm from the Court granting
Plaintiff's Motion.

Defendants will be able to continue operating their business, as

Plaintiff does not seek to enjoin all sales of Defendants' products, but only to halt sales
of merchandise allegedly using Plaintiff's Marks.
Finally, protecting consumers from confusion and deception is in the public
interest. See Teledyne Indust., Inc. v. Windmere Prod., Inc., 433 F. Supp. 710, 740
(S.D. Fla. 1977) (stating "customer confusion is by its very nature against the public
interest").

This Court has long recognized the gravity of protecting the public in

trademark infringement cases, stating
[i]n a trademark infringement or unfair competition case, a
third party, the consuming public, is present and its interests
are paramount. . . . When a trademark is said to have been
infringed, what is actually infringed is the right of the public to
be free of confusion and the synonymous right of the
trademark owner to control his products' reputation.
BellSouth Adver., 792 F. Supp. at 785 (citations omitted). As such, granting Plaintiff the
requested temporary restraining order will have no countervailing harm to the public.
Based on the Complaint, Motion for Temporary Restraining Order, and
documents filed in support thereof, the Court finds the four-part test for injunctive relief
has been satisfied and a temporary restraining order should be issued.

Notice is

unnecessary as Plaintiff has shown that immediate and irreparable damage will result to
Plaintiff before the adverse party can be heard in opposition.
Accordingly, it is now

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ORDERED:
(1) Plaintiff's Motion for Temporary Restraining Order (Doc. #62) is GRANTED. The
Court defers ruling on Plaintiff's request for a preliminary injunction. This
temporary restraining order will remain in effect until the Court rules on Plaintiff's
Motion for a Preliminary Injunction, but in no event longer than fourteen (14)
days.
(2) Defendants are temporarily RESTRAINED, ENJOINED, and PROHIBITED from:
a. Manufacturing, distributing, marketing, advertising, promoting,
transporting, disposing of, donating, or offering for sale, or otherwise
distributing any merchandise that uses any of Plaintiff's registered or
unregistered Marks as shown on the accompanying Schedules A and B,
or any mark that is confusingly similar to Plaintiff's Marks.
b. Hosting, acting as Internet Service Provider for, operating, or using any
website to advertise, offer for sale, or sell any products bearing Plaintiff's
registered or unregistered Marks, or linking any website or web content to
any such website.
c. Using any email address; email list; electronic bulletin board; listserv, etc.,
to offer for sale or sell any merchandise bearing Plaintiff's registered or
unregistered trademarks.
d. Falsely stating or implying Plaintiff's endorsement, support, or approval of
the Defendants' merchandise or engaging in any act or series of acts
which, either alone or in combination, constitute unfair methods of

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competition with Plaintiff, and from otherwise interfering with or injuring
Plaintiff's Marks or the goodwill associated therewith.
e. Representing or implying that Defendants are in any way sponsored by or
affiliated with, or have been endorsed, approved, or licensed by Plaintiff.
f. Secreting, destroying, altering, removing, or otherwise dealing with
merchandise bearing Plaintiff's Marks, or any books or records of any type
that contain any information relating to the manufacturing, producing,
importing, exporting, distributing, circulating, selling, marketing, offering for
sale, advertising, promoting, or displaying of merchandise that infringes
upon Plaintiff's Marks.
g. Effecting assignments or transfers, forming new entities or associations, or
using any other device for the purpose of circumventing or otherwise
avoiding the prohibitions set forth in this Order.
h. Selling or transferring ownership or control of FratHouse Clothing, LLC,
www.frathouseclothing.com or the FratHouse Clothing Facebook, Twitter,
or Flickr sites to any third party.
i.

Assisting, inducing, aiding or abetting any other person or business entity
in engaging in or performing any of the activities referred to in the
preceding letter numbered paragraphs.

(3) In addition, Defendants shall remove, within twenty-four (24) hours of receiving
this Order, all content from their FratHouse website
(www.frathouseclothing.com), as well as FratHouse Clothing Facebook pages,

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Twitter, and Flickr website depicting any of Plaintiff's registered or unregistered
Marks, or any mark that is confusingly similar to any of Plaintiff's Marks.
(4) Defendants shall provide a copy of this Order to each of their agents, officers,
employees, representatives, successors, assigns, and all other persons acting
for, with, by, through, or under Defendants' authority, or in concert or participation
with them with respect to the issues involved in this litigation and/or the activities
of Defendant FratHouse Clothing, LLC.
(5) Plaintiff shall post a bond or cash in the amount of $5,000.00. See FED. R. CIV.
P. 65(c) ("The court may issue a preliminary injunction or temporary restraining
order only if the movant gives security in an amount that the court considers
proper to pay the costs and damages sustained by any party found to have been
wrongfully enjoined or restrained.").
(6) A hearing on Plaintiff's Motion for a Preliminary Injunction will be held before the
undersigned on April 15, 2014, at 9:30 a.m. at the United States Courthouse
and Federal Building, Courtroom 5D, Fort Myers, Florida 33901.
(7) The Clerk of Court is directed to issue a separate notice of hearing and to
forthwith mail a copy of this Order to Defendants at the last known address in the
Court file.
DONE and ORDERED in Fort Myers, Florida this 1st day of April, 2014.

Copies: All Parties of Record

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