Curves International, Inc. v. Virginia Chattley Fox

Filing 15

Judge Richard G. Stearns: ORDER entered granting 11 Motion for Injunctive Relief (RGS, law4)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 12-12250-RGS
CURVES INTERNATIONAL, INC.
v.
VIRGINIA CHATTLEY FOX
MEMORANDUM AND ORDER ON PLAINTIFF’S MOTION FOR
PRELIMINARY INJUNCTIVE RELIEF
May 9, 2013
STEARNS, D.J.
Plaintiff Curves International, Inc. (Curves) brought this lawsuit against its
former franchisee Virginia Chattley Fox (Fox) a/k/a Cheryl Springsteen1, alleging
breach of contract, including breach of a non-competition provision; misappropriation
of trade secrets; trademark infringement, 15 U.S.C. § 1114; unfair competition, 15
U.S.C. § 1125(a); and trademark dilution, 15 U.S.C. § 1125(c). Curves now moves to
enjoin Fox from using Curves’ trademarks. Curves also seeks the return of its
proprietary materials, and an order directing Fox to comply with the non-competition

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Curves also occasionally refers to defendant as Victoria (as opposed to
Virginia) Chattley Fox. The court assumes this is an innocent oversight.

provision of the Franchise Agreement.2
BACKGROUND
Because Fox has failed to oppose Curves’ motion for injunctive relief, the court
considers the motion on the facts presented by Curves. See Perez-Cordero v. WalMart Puerto Rico, 440 F.3d 531, 533-534 (1st Cir. 2006).3 Curves is a franchisor of
fitness centers located throughout the United States. Each franchise offers fitness and
weight-loss services to women under a proprietary business model, the hallmark of
which is a thirty-minute fitness program. Franchisees also receive a license to use
Curves’ federally-registered trademarks, including “Curves,” “Curves for Women,” and
“30 minute fitness and weight loss center.”
On November 2, 2006, Fox entered into a Franchise Agreement with Curves that
permitted her to operate a Curves fitness center in Chelmsford, Massachusetts for a
period of five years. The Agreement specified that the Curves trademarks belonged
solely to Curves and that Fox’s license to use the marks was contingent upon her

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Curves asks for “injunctive relief in the form of a temporary restraining order
. . . .” The motion is properly construed as one for a preliminary injunction, as Curves
is seeking relief for more than a limited duration and the motion was not presented ex
parte.
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As Fox has failed to respond to the complaint or motion for injunctive relief,
there are no facts in dispute and scheduling an evidentiary hearing would be futile. See
Campbell Soup Co. v. Giles, 47 F.3d 467, 470 (1st Cir. 1995).
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compliance with the contract terms. Upon expiration of the Agreement Fox was
required to cease using Curves’ marks and return all franchise materials to Curves. The
Franchise Agreement also contained a non-compete provision prohibiting Fox from
engaging in any similar business within ten miles of her former facility or any other
franchise location for a period of one year.
Neither Fox nor Curves opted to renew the Franchise Agreement and it expired
on November 2, 2011. Fox, however, has continued to operate a Curves fitness center
at the same location as her formerly approved franchise facility. On May 11, 2012,
Curves sent Fox a cease and desist letter demanding that she stop using Curves’
trademarks and otherwise comply with the non-compete provision of the Franchise
Agreement. Fox, however, has refused to comply.
DISCUSSION
The court considers four factors in determining whether a preliminary injunction
should issue: “1) a likelihood of success on the merits, 2) irreparable harm to the
plaintiff should preliminary relief not be granted, 3) whether the harm to the defendant
from granting the preliminary relief exceeds the harm to the plaintiff from denying it,
and 4) the effect of the preliminary injunction on the public interest.” Naser Jewelers,
Inc. v. City of Concord, N.H., 513 F.3d 27, 32 (1st Cir. 2008) (internal quotations and
citation omitted). The movant’s “likelihood of success is the main bearing wall of the
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four-factor framework.” Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 102 F.3d 12,
15 (1st Cir. 1996).
To prevail on a claim for trademark infringement, Curves must demonstrate: (1)
that it is the owner of a distinctive mark entitled to trademark protection; and (2) that
Fox’s use of a similar mark is likely to cause consumer confusion. See DeCosta v.
Viacom Int’l Inc., 981 F.2d 602, 605 (1st Cir. 1992). Curves has a valid trademark.
See Compl. Ex. A. Fox’s continued use of this trademark beyond the expiration of her
license is without doubt likely to sow consumer confusion. It is unnecessary to wade
individually through the eight factors informing a “likelihood of confusion” analysis4
here, where a franchisee has persisted in unauthorized use of her former franchisor’s
trademark to operate a business identical to that of her formerly licensed franchise. See
S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 375 (3d Cir. 1992) (“Once a
franchise is terminated, the franchisor has the right to enjoin unauthorized use of its
trademark under the Lanham Act. Thus, [movant] will merit preliminary injunctive
relief if it can adduce sufficient facts indicating that its termination of [defendant’s]

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The eight factors are: “(1) the similarity of the marks; (2) the similarity of the
goods; (3) the relationship between the parties’ channels of trade; (4) the relationship
between the parties’ advertising; (5) the classes of prospective purchasers; (6) evidence
of actual confusion; (7) the defendant’s intent in adopting its mark; and (8) the strength
of the plaintiff’s mark. Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 29 (1st Cir.
1989) (citation omitted).
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franchise[] was proper.”). In light of the uncontested facts, it is extremely likely that
Curves’ trademark infringement claim will succeed on the merits.
Curves has also demonstrated a strong likelihood that it will prevail on its breach
of contract claims, including breach of the non-compete provision of the Franchise
Agreement. In Massachusetts, a covenant not to compete is enforceable if it is
“necessary to protect a legitimate business interest, reasonably limited in time and
space, and consonant with the public interest.” Boulanger v. Dunkin’ Donuts Inc., 442
Mass. 635, 639 (2004). The one-year restraint on Fox’s operation of a fitness facility
within ten miles of a Curves location is geographically and temporally reasonable.
Indeed, Fox acknowledged as much in the Franchise Agreement. As the non-compete
agreement is necessary to protect Curves’ business of selling fitness franchises, it is
enforceable.
Because Curves has demonstrated that it is likely to succeed in establishing
trademark infringement, it is presumed that Fox’s operation of a rogue Curves fitness
facility will cause irreparable harm to Curves unless injunctive relief is granted. See
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 33 (1st Cir. 1998) (irreparable harm
may be assumed if trademark holder shows an infringement claim is likely to succeed).
Moreover, Curves suffers harm to its goodwill and reputation, and is unable to protect
its other franchisees from the actions of Fox while she holds herself out to be a
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legitimate Curves franchisee. See K-Mart Corp. v. Oriental Plaza, Inc., 875 F.2d 907,
915 (1st Cir. 1989) (“[H]arm to goodwill, like harm to reputation, is the type of harm
not readily measurable or fully compensable in damages – and for that reason, more
likely to be found ‘irreparable.’”).
The last two factors to be considered in awarding a preliminary injunction also
favor granting relief. Any hardship Fox suffers upon the issuance of an injunction was
precipitated by her own breach of the Franchise Agreement. An injunction will merely
force Fox to comply with her contractual obligations: refraining from using the Curves
marks, returning Curves’ confidential business information, and operating a new gym
ten miles away from her former franchisor’s locations (or, in the alternative, waiting
one year to resume business at her current location). The balance of harms weighs in
favor of Curves. See also Robert J. Fritz, DMA, Inc. v. Arthur D. Little, Inc., 944 F.
Supp. 95, 97-98 (D. Mass. 1996) (“Harm to the defendant flowing from an injunction
where infringement appears likely is entitled to less consideration than other harms.”).
Finally, “[i]n copyright and trademark cases, the public interest almost always favors
the granting of otherwise appropriate injunctions.” Id. at 97.
ORDER
For the foregoing reasons, the court hereby ORDERS Fox to:
1. Immediately cease operation of a fitness center using and/or displaying
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Curves’ federally registered marks;
2. Immediately cease use of Curves’ trademarks or any confusingly similar name,
device, mark, service mark, trademark, trade name, slogan, or symbol used in
connection with the Curves business system or any Curves franchise including any
reproduction, counterfeit copy, variation, emulation, or colorable imitation thereof
which is likely to cause confusion or mistake or deceive the public;
3. Return to Curves, at her own expense, all printed material furnished by Curves
to Fox, including without limitation, all Curves manuals, advertising material,
stationary, printed forms, and all other materials relating to the operation of Fox’s
Curves franchise and/or bearing any Curves mark or trademark;
4. Immediately cease maintenance, ownership, or any interest in any business
which sells products or services similar to those sold as part of the Curves franchise
system within ten miles of Fox’s formerly authorized Curves franchise location for a
period of one year following the date on which this Order is entered;
5. Immediately cease employment or seeking to employ any person who is
employed by Curves or any other Curves franchisee, or otherwise inducing or seeking
to induce such person to leave his or her employment;
6. Immediately cease use of any confidential information from Curves’ manuals
or system in any similar business to that licensed and established under and pursuant
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to the Franchise Agreement governing Fox’s operation of a Curves franchise in
Chelmsford, Massachusetts; and
7. Immediately cease diverting or attempting to divert any customer or business
from Curves, or soliciting or endeavoring to obtain the business of any person who
shall have been a customer of Fox’s formerly authorized franchise.
The court declines to order the posting of a bond by Curves.
SO ORDERED.
/s/ Richard G. Stearns
_______________________________
UNITED STATES DISTRICT JUDGE

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