Ronaldo Designer Jewelry, Inc. v. Prinzo
ORDER granting 31 Motion for Preliminary Injunction Signed by Honorable David C. Bramlette, III on 9/19/2016 (ECW)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
RONALDO DESIGNER JEWELRY, INC.
CIVIL ACTION NO. 5:14-cv-73(DCB)(MTP)
ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION
This cause is before the Court on the plaintiff Ronaldo
Injunction (docket entry 31).
Ronaldo moves for a preliminary
plaintiff, Phillip Prinzo (“Prinzo”), from copying, manufacturing,
transmitting, selling or otherwise placing on the market the
jewelry, marketing and advertising materials which Ronaldo contends
infringe upon Ronaldo’s copyrights, trademarks, and trade dress
immediately withdraw from all sales outlets any and all inventory
of the jewelry, marketing, and advertising materials which Ronaldo
contends infringe upon Ronaldo’s copyrights, trademarks, and trade
dress; and (3) to require Prinzo to identify each and every person
or entity from whom Prinzo has acquired any and all Infringing
Works and to whom Prinzo has licensed, assigned, or otherwise
distribute, or sell jewelry which Ronaldo contends infringes upon
Ronaldo’s copyrights, trademarks, and trade dress.
irreparable injury, loss, or damage will result to Ronaldo if
Prinzo, or those with whom Prinzo is in concert or privity, are
permitted to copy, reproduce, manufacture, import, market, display,
Ronaldo also makes its motion on grounds that immediate and
irreparable injury will result to Ronaldo if an injunction is not
Ronaldo’s Verified Complaint seeks relief from copyright
infringement, trademark infringement, trade dress infringement,
unfair competition, and false advertising.
The Complaint also
seeks a permanent injunction restraining Prinzo from infringing
Ronaldo’s Catalogs and Designs, Works, Trade Dress, and trademark;
from manufacturing, reproducing, importing, publishing, displaying,
distributing, transmitting, selling, or otherwise placing on the
market the Infringing Works; and from using such Catalogs and
Designs, Works, Trade Dress, and trademark without authorization.
Complaint, p. 6.
In response to the Motion for Preliminary Injunction, Prinzo
states that “[s]ome of the pieces I make may be similar to
Ronaldo’s but they are not identical.”
Response, p. 2.
rebuttal, Ronaldo states: “Plaintiff does not seek to prevent
Defendant from making wire jewelry.
Plaintiff simply seeks an
copyrighted designs and trade dress.
The Defendant should in no
way be restricted from making his own original wire jewelry
Plaintiff’s Reply, p. 1.
The decision whether to grant a preliminary injunction is
within the discretion of the district court.
Allied Mktg. Group,
Inc. v. CDL Mktg., Inc., 878 F.2d 806, 809 (5th Cir. 1989).
preliminary injunction is [meant] to preserve the status quo and
thus prevent irreparable harm until the respective rights of the
Exhibitors Poster Exch., Inc. v. Nat’l Screen Serv. Corp., 441 F.2d
560, 560 (5th Cir.1971)(per curiam)(citations omitted).
“[A movant] seeking a preliminary injunction must show: (1) a
substantial likelihood of success on the merits, (2) a substantial
threat that [the movant] will suffer irreparable harm if the
injunction is not granted, (3) that the threatened injury outweighs
any damage that the injunction might cause the [non-movant], and
(4) that the injunction will not disserve the public interest.”
Nichols v. Alcatel USA, Inc., 532 F.3d 364, 372 (5th Cir.2008)
(citing Planned Parenthood of Houston & S.E. Tex. v. Sanchez, 403
F.3d 324, 329 (5th Cir.2005)). Because a preliminary injunction is
an “extraordinary remedy,” the movant must “clearly carr[y] the
burden as to all four elements.”
Guy Carpenter & Co., Inc. v.
Provenzale, 334 F.3d 459, 464 (5th Cir.2003)(citing Kern River Gas
Transmission Co. v. Coastal Corp., 899 F.2d 1458, 1462 (5th Cir.
Intellectual property law looks more favorably upon this form
of injunctive relief than do other areas of law.
the social and commercial importance of protecting the intangible
rights inhering in a copyrighted work, and have noted that “the
protections.” See, e.g., Apple Computer, Inc. v. Franklin Computer
Corp., 714 F.2d 1240, 1255 (3rd Cir. 1983), cert. denied 464 U.S.
Ronaldo shows that its copyright, trademark, and trade dress
infringement case has a high probability of success on the merits.
Ronaldo and its predecessor-in-interest, Gold Craft Fashions, Inc.
(“Gold Star”), have sold millions of items to jewelry stores and
major retailers, generating millions of dollars in annual revenue
in thirty-five states and five countries.
p. 1 (docket entry 32).
Prinzo, as a former employee of Gold
Craft, learned to make company-owned-and-designed jewelry and also
served as a dealer of Gold Craft’s products.
In 1994, Gold
Craft and Prinzo terminated their relationship.
entered into a Mutual Release Agreement which does not grant Prinzo
any right to sell or license intellectual property rights including
any copyright or other rights to reproduce, sell or license jewelry
design works, Trade Dress, or catalogs owned by Ronaldo and/or Gold
Id., p. 2.
Ronaldo also asserts that it has learned that
Prinzo is selling unauthorized copies of Ronaldo’s Works, and is
misrepresenting to jewelry retailers and other potential customers
that he has the right to sell jewelry items depicted in Ronaldo’s
Ronaldo shows that it will suffer irreparable business injury
believing they are genuine Ronaldo Collection designs.
also shows that it will be irreparably harmed if its customers can
go to Prinzo (or any of the retail outlets to which Prinzo sells)
and purchase imitations of Ronaldo’s products at prices lower than
the prices Ronaldo’s customers pay for the real Works.1
An illustrated comparison of Prinzo’s products with those
of Ronaldo, and other facts in support of Ronaldo’s claims of
copyright infringement, trademark infringement, and trade dress
infringement are set forth in detail on pages 6 through 17 of
Ronaldo’s Memorandum (docket entry 32). In addition, Ronaldo has
furnished the Court with the following appendices which will be
attached to the Preliminary Injunction and incorporated by
reference: Appendix 1 (materials that infringe upon Plaintiff’s
copyrights, Trade Dress, and “THE POWER OF PRAYER” BRACELET
trademark (collectively the “Infringing Works”)); Appendix 2
(copies of the Infringing Works); Appendix 3 (other jewelry or
product substantially or confusingly similar to Ronaldo’s Works,
including without limitation “The Power of Prayer Bracelet,” “The
Tranquility Bracelet,” “Stackable Bracelet,” “THE “LOVE KNOT,”
“The Angelina Bracelet,” “The Spring Time Bracelet,” “I Love
You,” “TRC-S297 Birthstone Bracelet,” “Forever Fellowship
Bracelet,” and the “Pearl of My Heart” Works); and Appendix 4
(materials using, incorporating, or containing Plaintiff’s “THE
POWER OF PRAYER” BRACELET® trademark or any mark or term similar
thereto, or substantially similar to Plaintiff’s copyrighted
catalogs or website, including without limitation “Gold Craft
Associates Dealer Handbook,” “Gold Craft Fashions,” and “Gold
Craft Associates Fall Catalog 2000”).
The threatened injury to Ronaldo therefore outweighs any
damage that the injunction might cause Prinzo, and the injunction
will not disserve the public interest.
Finally, Ronaldo asserts that the equities in this case favor
a small bond requirement.
Although the Federal Rules of Civil
Procedure make the posting of security a prerequisite to granting
the relief Ronaldo seeks, the Court has discretion to require
whatever amount best serves the interests of justice. Fed.R.Civ.P.
The Court finds that any harm Prinzo may suffer due to the
issuance of a preliminary injunction is limited, and results solely
from Prinzo’s decision to continue to sell copies of Ronaldo’s
infringement, trademark infringement, and trade dress infringement,
and is likely to succeed on the merits, having shown ownership,
access, similarity, and likelihood of confusion.
stands to suffer irreparable harm if an injunction does not issue.
The Court finds that a bond in the amount of One Thousand Dollars
($1,000) will be sufficient security for the payment of any costs
and damages that may be incurred or suffered in the event that
See Registral.com, LLC v. Fisher Controls Intern.,
Inc., 2001 WL 34109376, *10 (S.D. Tex. June 28, 2001)(setting
$1,000 bond in trademark infringement case).
In light of the foregoing, the Court finds that a Preliminary
Injunction should issue and bond set accordingly.
IT IS HEREBY ORDERED that the plaintiff Ronaldo Designer
Jewelry, Inc.’s Motion for Preliminary Injunction (docket entry 31)
A separate Preliminary Injunction shall be entered of
even date herewith.
SO ORDERED, this the 19th day of September, 2016.
/s/ David Bramlette
UNITED STATES DISTRICT JUDGE
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