Wood v. Kapustin et al
Filing
19
ORDER granting 2 Motion for Preliminary Injunction (Written Opinion). Signed by Senior Judge David S. Doty on 7/23/2013. (PJM)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Civil No. 13-1495(DSD/AJB)
Nadezhda V. Wood,
Plaintiff,
ORDER
v.
Sergey Kapustin, Irina Kapustina,
Mikhail Goloverya, Global Auto,
Inc., G Auto Sales, Inc., Effect
Auto Sales, Inc.,
Defendants.
Nadezhda V. Wood, Esq., 500 Laurel Avenue, St. Paul, MN
55102.
Nicholas M. Wenner, Esq., Boris Parker, Esq. and Parker
& Wenner, 100 South Fifth Street, 2100 Fifth Street
Towers, Minneapolis, MN 55402, counsel for defendants.
This matter is before the court upon the motion for temporary
restraining order and preliminary injunction by plaintiff Nadezhda
V. Wood.
Based on a review of the file, record and proceedings
herein, and for the following reasons, the court grants the motion
for preliminary injunction.1
BACKGROUND
This dispute arises out of Wood’s representation of nonparties
Igor
Glazunov
and
Irina
Glazunova
(collectively,
nonparty
plaintiffs) in an unrelated matter. Wood is an attorney practicing
1
At oral argument, the court informed Wood that it would
construe the motion as one for preliminary injunction.
in St. Paul, Minnesota.
Ver. Compl. ¶ 14.
Wood represents the
nonparty plaintiffs in an action currently pending in the Eastern
District of New York.
Id. ¶ 18.
In January 2013, the nonparty plaintiffs, who are Russian
citizens, wired money to defendant G Auto Sales, Inc. (G Auto) as
payment
for
an
automobile.
Id.
¶
17.
After
the
nonparty
plaintiffs failed to receive the vehicle, Wood sent demand letters
to G Auto and defendant Mikhail Goloverya, as President of G Auto.
Id. ¶¶ 17-18.
Defendant Sergey Kapustin responded to the demand
letter, claiming to be negotiating on behalf of Goloverya.
Id.
¶ 19. Kapustin asked Wood to email him at sales@globalautousa.com.
Wood complied but, to date, has been unsuccessful in obtaining the
vehicle or a refund.
Id. ¶ 23.
Thereafter, Glazunov posted on an online forum about his
transaction with G Auto.
Id. ¶ 24.
Several other forum users
shared similar experiences regarding transactions with G Auto
Sales, defendant Global Auto, Inc. (Global Auto) and defendant
Effect Auto Sales, Inc. (Effect Auto). Id. After being alerted to
the
additional
posts
on
the
forum,
Wood
started
a
website,
KapustinCars.com, in order to collect information from individuals
claiming
to
be
victimized
by
2
defendants.
Id.
¶
32.
KapustinCars.com includes a header and logo2 depicting Wood’s name
and likeness.
Id.
Wood uses the same header and logo on her law
firm’s website, NadiaWood.com.3
Wood posted a link to KapustinCars.com on the online forum.
Id. ¶ 38.
Thereafter, Kapustin issued a takedown notice for
KapustinCars.com, pursuant to the Digital Millennium Copyright Act
(DMCA).
Id. ¶ 40.
The website’s host reviewed the takedown
notice, found no violation of the DMCA and declined to take further
action.
In
Id.
response,
Global
Auto
registered
NadiaWoodBlackmailer.com and NadiaWoodLaw.com.
website
redirects
domain.
Id.
to
NadiaWood.net,
an
the
domain
Id. ¶ 41.
names
Each
anonymously-registered
At the time Wood filed suit, NadiaWood.net displayed
Nadia Wood’s logo and business address and included the header
2
Wood asserts that she has a copyright application pending
with the United States Copyright Office for this logo. Ver. Compl.
¶ 32.
3
Wood practices under the name “Nadia Wood.”
¶ 14.
3
Ver. Compl.
“InvestigateNadiaWood@gmail.com.”4
Id. ¶ 43.
“Nadia Wood Blackmail, Chantage,5 Racket[.]
money to NadiaWood.com, or Nadia Wood?
The page read:
Did you paid [sic]
Investigate Nadia Wood ...
Beware of Blackmailer Lawyers of NadiaWood.com.”
On
(1)
June
19,
copyright,
2013, Wood
trade
dress
Id. ¶ 44.
filed suit, alleging
and
service
mark
claims
for
infringement;
(2) violations of the Anticybersquatting Consumer Protection Act
(ACPA);
(3)
cyberpiracy
violations
under
15
U.S.C.
§
1129;
(4) defamation; and (5) tortious interference with prospective
economic advantage.
On that same day, Wood moved for a temporary
restraining order and preliminary injunction, seeking a court order
that the web host redirect the infringing websites pending trial.
A hearing on the request for injunctive relief was held on
July 8, 2013.
Defendants failed to appear at the hearing, and the
court ordered that they respond within ten days.
See ECF No. 12.
Thereafter, defendants moved to dismiss the complaint but have not
responded to the motion for preliminary injunction.
See ECF No.
17.
4
After the court ordered defendants to respond to the motion
for preliminary injunction, the information was removed from the
website. NadiaWood.net now reads: “COMING SOON !!!!!
NadiaWood.NET!!!!NadiaWoodLaw.COM!!!! Coming soon!” Defendants’
voluntary cessation of the challenged practice, however, does not
moot the request for preliminary injunction.
See Lankford v.
Sherman, 451 F.3d 496, 503 (8th Cir. 2006). As a result, the court
rules on the motion for preliminary injunction.
5
Wood alleges that “chantage” is the phonetic spelling of a
Russian word meaning “blackmail.” Ver. Compl. ¶ 44.
4
DISCUSSION
A preliminary injunction is an extraordinary remedy, and the
movant bears the burden of establishing its propriety.
Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir. 2003).
considers
injunction
four
factors
should
in
issue:
determining
(1)
the
whether
likelihood
a
of
Watkins
The court
preliminary
the
movant’s
ultimate success on the merits, (2) the threat of irreparable harm
to the movant in the absence of relief, (3) the balance between the
harm alleged and the harm that the relief may cause the non-moving
party and (4) the public interest.
Dataphase Sys., Inc. v. C.L.
Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981) (en banc).
The
movant bears the burden of proof concerning each factor. See Gelco
v. Coniston Partners, 811 F.2d 414, 418 (8th Cir. 1987).
factor is determinative.
No single
See Dataphase, 640 F.2d at 112-14.
Instead, the court considers the particular circumstances of each
case, remembering that the primary question is whether the “balance
of equities so favors the movant that justice requires the court to
intervene
to
determined.”
I.
preserve
the
status
quo
until
the
merits
are
Id. at 113.
Likelihood of Success on the Merits
The court first considers the “most significant” Dataphase
factor: likelihood that the movant will prevail on the merits.
S &
M Constructors, Inc. v. Foley Co., 959 F.2d 97, 98 (8th Cir. 1992).
Wood need only demonstrate that she is likely to succeed on one of
5
her claims in order to satisfy this prong of Dataphase.
See United
Healthcare Ins. Co. v. AdvancePCS, 316 F.3d 737, 742-43 (8th Cir.
2002).
To prevail on her claim for copyright infringement, Wood “must
prove ownership of a valid copyright and copying of original
elements of the work.”
Taylor Corp. v. Four Seasons Greetings,
LLC, 403 F.3d 958, 962-63 (8th Cir. 2005) (citation and internal
quotation marks omitted).
The court concludes that Wood is likely
to succeed on her claim for copyright infringement.
A.
Valid Copyright
“To establish ownership of a valid copyright, the plaintiff
must
prove
that
the
material
is
original,
that
it
can
be
copyrighted, and that all statutory formalities have been complied
with.”
Thimbleberries, Inc. v. C & F Enters., Inc., 142 F. Supp.
2d 1132, 1137 (D. Minn. 2001) (citation omitted).
To qualify for copyright protection, a work
must be original to the author. Original, as
the term is used in copyright, means only that
the work was independently created by the
author (as opposed to copied from other
works), and that it possesses at least some
minimal degree of creativity. To be sure, the
requisite level of creativity is extremely
low; even a slight amount will suffice.
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345
(1991) (internal citations omitted).
Wood asserts that the logo is original; that she filed a
copyright application, which is currently pending before the United
6
States Copyright Office;6 and that she has complied with all
statutory formalities.7
See Ver. Compl. ¶¶ 32, 48.
At this stage
in the proceedings, without the benefit of discovery or response
from defendants, the court determines that Wood is likely to meet
her burden of demonstrating a valid copyright.
B.
Copying by Defendants
Wood next must show that her logo was copied.
“Copying can be
shown either by (1) direct evidence of copying, or (2) access to
the copyrighted material and substantial similarity between the
[allegedly-infringing] work and the copyrighted work.”
Warner
Bros. Entm’t, Inc. v. X One X Prods., 644 F.3d 584, 595 (8th Cir.
2011) (citation omitted).
Wood presents no direct evidence of
copying and must rely on establishing access and substantial
similarity.
“Where the similarity between the original and the copy is so
striking as to preclude any possibility of independent creation,
6
The copyright application is pending as application number
1-948933351. Ver. Compl. ¶ 32.
7
There is disagreement among the courts as to whether a
validly-issued copyright - or merely a finalized copyright
application - is required to institute a copyright infringement
action. Compare Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384,
386-87 (5th Cir. 1984) (“One need only prove payment of the
required fee, deposit of the work in question, and receipt by the
Copyright Office of a registration application.” (citation
omitted)), with M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d
1486, 1488 (11th Cir. 1990) (requiring completed registration).
The Eighth Circuit has not addressed this issue. See TVI, Inc. v.
INFOSoft Techs., Inc., No. 4:06CV00697JCH, 2006 WL 2850356, at *3
(E.D. Mo. Sept. 29, 2006).
7
access may be inferred.”
Nelson v. PRN Prods., Inc., 873 F.2d
1141, 1142 n.3 (8th Cir. 1989) (citation omitted).
The Eighth
Circuit endorses a two-step approach in determining substantial
similarity.
determine
First,
whether
an
“extrinsic”
the
substantially similar.
general
analysis
idea
of
is
the
performed
two
works
to
is
Moore v. Columbia Pictures Indus., Inc.,
972 F.2d 939, 945 (8th Cir. 1992).
That analysis becomes cursory
where, as here, the similarities between the two logos are obvious.
“In cases such as this, where the extrinsic elements ... are
unquestionably similar, the court must then perform an intrinsic
analysis to determine whether there is similarity of expression.”
Thimbleberries, 142 F. Supp. 2d at 1139 (citation and internal
quotation marks omitted).
response of
expression.”
the
The intrinsic analysis depends “on the
ordinary,
reasonable
person
to the
forms of
Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 120
(8th Cir. 1987) (citation omitted).
In a case such as this - where the allegedly-infringing logo
is identical to the copyrighted logo - the court determines that a
reasonable observer could easily recognize the similarities as
striking.
As a result, Wood is likely to show that defendants
copied her logo.
In sum, Wood has shown a likelihood of success on
the merits of her copyright claim.
Therefore, this Dataphase
factor weighs in favor of injunctive relief.
8
II.
Irreparable Harm
To establish irreparable harm, “a party must show that the
harm is certain and great and of such imminence that there is a
clear and present need for equitable relief.”
F.C.C.,
109
F.3d
418,
425
(8th
Cir.
Iowa Utils. Bd. v.
1996)
(per
curiam).
“Irreparable harm occurs when a party has no adequate remedy at
law, typically because its injuries cannot be fully compensated
through an award of damages.”
Gen. Motors Corp. v. Harry Brown’s,
LLC, 563 F.3d 312, 319 (8th Cir. 2009).
Wood
argues
that
her
professional
reputation
is
being
irreparably harmed by the inclusion of her professional logo on the
websites.
“Loss of intangible assets such as reputation and
goodwill can constitute irreparable injury. Harm to reputation and
goodwill is difficult, if not impossible, to quantify in terms of
dollars.”
Med. Shoppe Int’l, Inc. v. S.B.S. Pill Dr., Inc., 336
F.3d 801, 805 (8th Cir. 2003) (citations and internal quotation
marks omitted). As a result, Wood has demonstrated a likelihood of
irreparable harm, and this Dataphase factor weighs in favor of
injunctive relief.
III.
Balance of Harms
Under this factor, “a court should flexibly weigh the case’s
particular circumstances to determine whether ... justice requires
the court to intervene to preserve the status quo.”
United Indus.
Corp. v. Clorox Co., 140 F.3d 1175, 1179 (8th Cir. 1998) (citation
9
and internal quotation marks omitted).
As already explained, Wood
has established a likelihood of irreparable harm.
not responded,
and
the
court
discerns
no
Defendants have
apparent
harm
from
temporarily redirecting the web addresses with infringing material.
As a result, the balance of harms favors Wood and militates in
favor of injunctive relief.
IV.
Public Interest
“The fourth factor to be considered in determining whether a
preliminary injunction should issue is the public interest.
The
public interest is served in protecting the holders of valid
copyrights from infringing activity ....”
315
F.3d
Taylor Corp. v. Four
Seasons Greetings,
LLC,
1039, 1042 (8th
Cir.
(citation omitted).
As already explained, Wood has demonstrated a
likelihood of success on her copyright infringement claim.
result,
this
factor
weighs
in
favor
of
injunctive
2003)
As a
relief.
Therefore, based upon a balancing of the Dataphase factors, a
preliminary injunction is warranted.
V.
Bond Amount
Under Rule 65(c), the court is required to determine the
amount of security that the preliminary injunction movant must give
“to pay the costs and damages sustained by any party found to have
been wrongfully enjoined or restrained.” Given the likelihood that
Wood will succeed on the merits of her copyright infringement
claim,
and
the
minimal
chance
10
that
defendants
will
suffer
significant cognizable harm from the issuance of an injunction, the
court concludes that a nominal bond of $1,000.00 is appropriate in
this case.
CONCLUSION
Accordingly, based on the above, IT IS HEREBY ORDERED that:
1.
Plaintiff’s motion for preliminary injunction [ECF No. 2]
is granted.
2.
agents,
The defendants, their officers, directors, employees,
subsidiaries,
distributors
and
all
persons
in
active
concert or participation with the defendants, having notice of this
preliminary injunction, shall immediately cease display of any
websites displaying protected logos, service marks or trade dress,
or substantially-similar marks, logos and trade dress.
3.
immediate
GoDaddy.com, as the registrar of record, shall institute
domain
(NadiaWood.net,
name
forwarding
NadiaWoodLaw.com,
from
Subject
Domain
Names
NadiaWoodBlackmailer.com)
to
http://www.NadiaWood.com; and place the domains into REGISTRY-HOLD
status to prevent future modification or deletion of the Subject
Domain Names by either Defendants or Registrar.
11
4.
The preliminary injunction will not take effect until
plaintiff posts a bond or provides other security in the amount of
$1,000.
LET JUDGMENT BE ENTERED ACCORDINGLY.
Dated:
July 23, 2013
s/David S. Doty
David S. Doty, Judge
United States District Court
12
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