Lucky's Detroit, LLC v. Double L Inc.

Filing 69

ORDER granting 65 Motion for Permanent Injunction. Signed by District Judge Lawrence P. Zatkoff. (MVer)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

LUCKY’S DETROIT, LLC,
Plaintiff,
Case No. 09-14622
HON. LAWRENCE P. ZATKOFF

v.
DOUBLE L INC.,
Defendant.
/

OPINION AND ORDER
AT A SESSION of said Court, held in the
United States Courthouse, in the City of Port Huron,
State of Michigan, on May 11, 2012.
PRESENT: THE HONORABLE LAWRENCE P. ZATKOFF
UNITED STATES DISTRICT JUDGE

I. INTRODUCTION
This matter is before the Court on Defendant’s Motion for Permanent Injunction [dkt 65].
The motion has been fully briefed. The Court finds that the facts and legal arguments are adequately
presented in the parties’ papers such that the decision process would not be significantly aided by
oral argument. Therefore, pursuant to E.D. Mich. L.R. 7.1(f)(2), it is hereby ORDERED that the
motion be resolved on the briefs submitted. Defendant’s Motion for Permanent Injunction is
GRANTED.
II. BACKGROUND
This action involves Plaintiff’s use of marks confusingly similar to Defendant’s federal and
state registered trademarks “Lucky’s” and “Lucky’s Steakhouse” to identify Plaintiff’s restaurant

business. The Court previously set forth the relevant facts in its January 25, 2012, opinion and order
addressing the parties’ cross-motions for summary judgment, as follows:
Plaintiff and Defendant each operate bar and dining style
establishments in and around the Detroit metropolitan area. Plaintiff,
Lucky’s Detroit, LLC, a Michigan limited liability company, was
formed in February of 2009 and operates three pub-style dining
establishments under the name “Lucky’s Pub & Grill” within the City
of Detroit. . . . In May of 2010, during the pendency of this action,
Plaintiff opened a third establishment at 25333 W. 12 Mile in
Southfield. Waleed Mona is the manager of all three establishments
and owns all interest in Lucky’s Detroit, LLC.
Defendant, Double L, Inc., a Michigan corporation, operates
five steakhouse-themed restaurants called “Lucky’s Steakhouse”.
The restaurants are located in Imlay City, Davison, Fenton, Clio and
Bay City, Michigan, which includes Oakland County, Genesee
County, and Lapeer County. Defendant has registered two marks:
“Lucky’s” and “Lucky’s Steakhouse”. Defendant has registered its
“Lucky’s Steakhouse” mark with both the United States Patent and
Trademark Office (“USPTO”) and the State of Michigan.1 The mark,
“Lucky’s”, most relevant to this action, was registered (U.S.
Trademark Registration #2,459,279) on June 12, 2001. Lucky
Vasilakis is owner and officer of Defendant. He has a 100% stake in
three of the Lucky’s Steakhouses, and a 33% and 50% stake in the
other two restaurants.
On October 20, 2009, Defendant notified Plaintiff in writing
that it was using Defendant’s registered mark and demanded that
Plaintiff cease all use and reference to “Lucky’s” in its advertising
and marketing because Defendant’s use and registration predated
Plaintiff’s use. Plaintiff filed a Complaint for Declaratory Judgment
of Non-Infringement of Defendant’s marks on November 25, 2009,
seeking the Court to declare its rights and obligations with respect to
Defendant’s mark.
January 25, 2012, Opinion and Order, dkt 62.
After discovery, the parties filed cross-motions for summary judgment. The Court granted

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Both marks were registered with the State of Michigan in November of 1999.
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summary judgment to Defendant with respect to liability. The parties did not brief the issue of
damages. The Court found that Plaintiff’s marks are confusingly similar to Defendant’s marks and
infringe on Defendant’s trademark rights. Since the Court’s January 25, 2012, opinion and order,
Defendant asserts that Plaintiff continues to maintain and use the mark that the Court determined
infringes on Defendant’s trademark rights. As a result, Defendant has filed the instant motion
seeking a permanent injunction.
III. LEGAL STANDARD
In addition to the Court’s inherent equitable powers, the Lanham Act provides that a
district court may grant injunctive relief to prevent infringement of a party’s registered mark. 15
U.S.C. § 1116. A court is to consider the following four factors in determining whether a party
is entitled to permanent injunctive relief:
(1)

whether the movant has shown that he or she would suffer irreparable harm
if the permanent injunction is not issued;

(2)

whether remedies available at law, such as monetary damages, are
insufficient to adequately compensate the movant;

(3)

whether the balance of hardship between the two parties weighs in favor of
the movant; and

(4)

whether the public interest would be served by the issuance of a permanent
injunction.

eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). “The decision to grant or deny
permanent injunctive relief is an act of equitable discretion by the district court.” Id.

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IV. ANALYSIS
A. STAY PENDING PLAINTIFF’S APPEAL
As a threshold matter, Plaintiff has raised in its response that the Court should stay the case,
and not address Defendant’s motion, pending Plaintiff’s appeal of this Court’s opinion and order to
the Sixth Circuit. When addressing such a request, the Sixth Circuit applies the same standard
governing a request for injunctive relief:
The court balances the traditional factors governing injunctive relief
in ruling on motions to stay pending appeal. Thus, we consider (1)
whether the defendant has a strong or substantial likelihood of
success on the merits; (2) whether the defendant will suffer
irreparable harm if the district court proceedings are not stayed; (3)
whether staying the district court proceedings will substantially injure
other interested parties; and (4) where the public interest lies. See
Grutter v. Bollinger, 247 F.3d 631, 632 (6th Cir.2001) (order);
Michigan Coalition of Radioactive Material Users, Inc. v.
Griepentrog, 945 F.2d 150, 153 (6th Cir.1991). . . . However, in
order to justify a stay of the district court’s ruling, the defendant must
demonstrate at least serious questions going to the merits and
irreparable harm that decidedly outweighs the harm that will be
inflicted on others if a stay is granted. See In re DeLorean Motor
Co., 755 F.2d 1223, 1229 (6th Cir.1985).
Baker v. Adams Cnty./Ohio Valley Sch. Bd., 310 F.3d 927, 928 (6th Cir. 2002).
Plaintiff, however has demonstrated no “serious questions going to the merits” in its
response. The Court found in its January 25, 2012, opinion and order that six of eight factors—the
factors applied by the courts to determine whether Plaintiff’s competing mark created a likelihood
of confusion—weighed in favor of Defendant. The Court further addressed Plaintiff’s motion for
reconsideration, in which Plaintiff raised four issues with the Court’s opinion and order. In
resolving the motion for reconsideration, the Court found no merit in Plaintiff’s issues and denied
Plaintiff’s motion for reconsideration. Plaintiff raises no new grounds in its response. As such,

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Plaintiff has failed to demonstrate “serious questions going to the merits,” Baker, 310 F.3d at 928,
and its request to stay this case pending appeal is denied.
B. PERMANENT INJUNCTIVE RELIEF
As to Defendant’s request for permanent injunctive relief, the Court finds that all four factors
weigh in favor of Defendant and therefore grants Defendant’s request for a permanent injunction.
First, the Court has determined that Plaintiff’s use of the “Lucky’s” mark in connection with its
restaurant establishments in the Detroit metro area infringes upon Defendant’s marks and creates
a likelihood of confusion. A finding of likelihood of confusion establishes that Defendant has
suffered irreparable harm for purposes of the requested injunctive relief. Wynn Oil Co. v. American
Way Serv. Corp., 943 F.2d 595, 608 (6th Cir. 1991); see Circuit City Stores, Inc. v. CarMax, Inc.,
165 F.3d 1047, 1056 (6th Cir. 1999) (“[A] court need only find that a defendant is liable for
infringement or unfair competition for it to award injunctive relief.”).
As to the second factor, Plaintiff’s continued use of Defendant’s mark may not be adequately
addressed by monetary damages. It would be difficult to accurately calculate the loss of good will
and reputation caused to Defendant by Plaintiff’s continued use of confusingly similar marks. See
Fresenius Medical Care Holdings v. Baxter Int’l, Inc., 2008 WL 928496, *4 (N.D. Cal. 2008)
(noting that loss of goodwill, reputation and the legal right to exclude constitute irreparable injury
that cannot be easily remedied through monetary damages). The potential for future harm from
further infringement is also a basis to find that remedies at law are inadequate to compensate the
moving party. Audi AG v. D’amato, 469 F.3d 534, 550 (6th Cir. 2006). Here, Plaintiff’s projected
future expansion of its establishments also supports that there is no adequate remedy at law. The
Court, however, notes that Plaintiff has stated it is in the process of identifying a new mark and

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discontinuing the use of a mark confusingly similar to Defendant’s. Even so, the second factor
weighs in favor of Defendant at the present time.
The third factor also weighs in favor of Defendant. The balance of hardship caused to either
party weighs in favor of Defendant because any hardship experienced by Plaintiff is merely the
result of complying with applicable federal laws. Furthermore, the Court entered its opinion and
order finding that Plaintiff’s mark infringed Defendant’s trademark rights on January 25, 2012. As
of the date that this opinion and order is entered, Plaintiff will have had at least three months to
begin identifying a new mark and cease the use of Defendant’s mark. Continued use of the
confusing similar mark only compounds the consumer confusion in the marketplace and causes
hardship to Defendant through loss of reputation and sales. Id.
With respect to the final factor, the public interest is served when the Court enforces valid
intellectual property rights and prevents an infringing party from continuing to confuse and deceive
the public. Microsoft Corp. v. McGee, 490 F. Supp. 2d 874, 883 (S.D. Ohio 2007). Having
determined that Plaintiff is infringing Defendant’s intellectual property rights, the public interest is
served by ceasing the infringement of Defendant’s marks. Thus, this factor weighs in favor of
Defendants.
In sum, the Court grants Defendants request for permanent injunctive relief as ordered below.
C. THE PARTIES’ PROPOSED PRELIMINARY INJUNCTIVE ORDERS
Both parties have submitted proposed preliminary injunctive orders to the Court. In
reviewing those proposed orders, the Court finds neither order sufficient. The main difference
between the two orders is the time line in which Plaintiff has to stop use of Defendant’s marks and
adopt a new restaurant mark. Of little surprise, Defendant’s time line permits Plaintiff fifteen days

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after entry of this opinion and order to stop using Defendant’s mark, and thirty days to provide a
written statement to the Court of Plaintiff’s compliance with the ordered injunctive relief. On the
opposing end of the spectrum, Plaintiff’s time line permits Plaintiff 180 days to cease use of
Defendant’s marks and 210 days to provide the Court with a written statement of its compliance
with the ordered injunctive relief. As the Court sets forth below, Plaintiff is permitted 45 days to
cease use of Defendant’s marks. Within 45 days of entry of this order, Plaintiff must also file a
written statement with the Court indicating its compliance with this opinion and order.
V. CONCLUSION
Accordingly, for the reasons set forth above, IT IS HEREBY ORDERED that Defendant’s
request for a permanent injunction [dkt 65] is GRANTED as follows:
1.

Plaintiff, its parents, subsidiaries, affiliates, officers, including but not limited to Waleed
Mona, agents, distributors, retailers, servants, employees, attorneys, and those in active
concert or participation with them, are hereby permanently enjoined from advertising,
marketing, promoting, displaying, selling, or otherwise offering restaurant services under the
marks LUCKY’S or LUCKY’S PUB & GRILLE or any other mark which is confusingly
similar to the LUCKY’S or LUCKY’S STEAK HOUSE marks.

2.

Plaintiff, its parents, subsidiaries, affiliates, officers, including but not limited to Waleed
Mona, agents, distributors, retailers, servants, employees, attorneys, and those in active
concert or participation with them, who receive actual notice of this order by personal
service or otherwise, are ordered within forty-five (45) days after entry of this Permanent
Injunction to:
a.

remove all signage bearing the mark LUCKY’S PUB & GRILLE from all restaurants
owned in whole or in part by Plaintiff and/or Waleed Mona;

b.

remove LUCKY’S and LUCKY’S PUB & GRILLE from all interior signage, menus,
buses, staff uniforms or anywhere else that the marks appear in or in connection with
all LUCKY’S PUB & GRILLE restaurants owned in whole or in part by Plaintiff
and/or Waleed Mona;

c.

remove from the marketplace all Internet, radio, print or other advertisements in
which the marks LUCKY’S or LUCKY’S PUB & GRILLE is used by or on behalf
of Plaintiff or related establishments;
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d.

file a written report under oath with this Court, and serve upon Defendant’s counsel,
within forty-five (45) days of entry of this Opinion and Order, setting forth in detail
the manner and form in which it has complied with this injunction.

IT IS SO ORDERED.

s/Lawrence P. Zatkoff
LAWRENCE P. ZATKOFF
UNITED STATES DISTRICT JUDGE
Dated: May 11, 2012
CERTIFICATE OF SERVICE
The undersigned certifies that a copy of this Order was served upon the attorneys of
record by electronic or U.S. mail on May 11, 2012.

s/Marie E. Verlinde
Case Manager
[phone]

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