Versatop Support Systems, Inc. v. Georgia Expo, Inc.
Filing
97
Opinion and Order. The Court VACATES its previously entered Judgment [#51] only as to Counts IV and V for Trademark Infringement in Plaintiff's First Amended Complaint and enters JUDGMENT in favor of Plaintiff and against Defendant on those clai ms only. Because the Mandate refers only to the trademark claims, the remainder of Plaintiff's claims (Counts I, II, and III) remain dismissed with prejudice. Finally, for the reasons previously stated, the Court also DENIES Plaintiff's request for a permanent injunction. Signed on 11/13/19 by Judge Anna J. Brown. See attached 9 page Opinion and Order for full text. (bb)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
VERSATOP SUPPORT SYSTEMS, LLC,
3:15-cv-02030-JE
Plaintiff,
OPINION AND ORDER
v.
GEORGIA EXPO, INC.,
Defendant.
BROWN, Senior Judge.
This matter comes before the Court pursuant to the Mandate
(#86) issued May 28, 2019, by the United States Court of Appeals
for the Federal Circuit remanding this matter for further
proceedings.
For the reasons that follow, the Court denies Plaintiff
Versatop Support System LLC's request for entry of a permanent
injunction.
BACKGROUND
Plaintiff brought this action against Defendant Georgia
Expo, Inc., and alleged five claims in its First Amended
1 – OPINION AND ORDER
Complaint:
violation of patent law (Ct. I); violation of
copyright law (Counts II and III); and violation of trademark
law (Counts IV and V).
Plaintiff's trademarks at issue are
"2.0" and "Pipe & Drape 2.0."
The parties filed cross-motions for summary judgment on all
counts.
On February 16, 2017, Magistrate Judge John Jelderks issued
Findings and Recommendations (F&R)(#45) and recommended the
Court grant Defendant's Cross-Motion on all counts and deny
Plaintiff's Motion.
On April 13, 2017, this Court adopted the
F&R, entered Judgment in favor of Defendant, and dismissed
Plaintiff's case with prejudice.
On February 12, 2018, the
Court subsequently denied Defendant's Motion for extraordinary
attorneys' fees.
Plaintiff appealed the Court's dismissal of the case, and
Defendant appealed the Court's denial of its request for
attorneys' fees.
On appeal the Federal Circuit noted "[o]nly the trademark
issue is before us" and addressed only two issues:
whether
there was a violation of trademark law and whether Defendant was
entitled to an award of extraordinary attorneys' fees.
On the
trademark issue the Federal Circuit found this Court's adoption
2 – OPINION AND ORDER
of the F&R was erroneous as a matter of law and that there was a
violation of the Trademark Act based on Defendant's admitted use
of Plaintiff's trademarks.
The Federal Circuit reversed the
judgment in favor of Defendant, stated "judgment is entered in
favor of Plaintiff," and remanded the case "for any appropriate
further proceedings."
The Federal Circuit also denied without
opinion Defendant's appeal on the attorneys' fees issue.
Following return of the Mandate Magistrate Judge Jelderks
contacted the parties and directed them to confer regarding the
form of judgment to be entered in light of the Federal Circuit
holding.
When the parties were unable to agree on a form of
judgment, Magistrate Judge Jelderks directed the parties to
submit their proposed respective forms of judgment and
supporting memoranda for the court's consideration.
On October 4, 2019, each party filed a proposed form of
judgment and a supporting memorandum.
On October 8, 2019,
Plaintiff filed the same papers again, but Plaintiff included
additional Declarations that were referenced but not included in
their earlier submission.
Although the parties concur the court must now enter
judgment in Plaintiff's favor as to Counts IV and V for
Trademark Infringement, they disagree as to whether such
3 – OPINION AND ORDER
judgment should also include injunctive relief.
Plaintiff
contends it is entitled to a form of judgment that includes a
permanent injunction against Defendant, but Defendant contends
entry of a permanent injunction as part of the judgment is not
appropriate.
STANDARDS
The Lanham Act permits a court to grant injunctions
"according to the principles of equity and upon such terms as
the court may deem reasonable" to prevent further trademark
infringement.
15 U.S.C. § 1116.
See also Reno Air Racing Ass'n
v. McCord, 452 F.3d 1126, 1137 (9th Cir. 2006).
According to well-established principles of equity, a
plaintiff seeking a permanent injunction must satisfy
a four-factor test before a court may grant such
relief. A plaintiff must demonstrate (1) that it has
suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are
inadequate to compensate for that injury; (3) that,
considering the balance of hardships between the
plaintiff and the defendant, a remedy in equity is
warranted; and (4) that the public interest would not
be disserved by a permanent injunction.
eBay v. MercExchange, 547 U.S. 388, 391 (2006).
The Ninth
Circuit has held "actual irreparable harm must be demonstrated
to obtain a permanent injunction in a trademark-infringement
action," and it may not be presumed.
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Herb Reed Enter., LLD v.
Florida Ent. Mgt., Inc., 736 F.3d 1239, 1249 (9th Cir. 2013).
Irreparable harm may be shown through evidence of the loss of
prospective customers, goodwill, or reputation.
Stuhlbarg
Intern. Sales Co., Inc. v. John D. Brush & Co., Inc., 240 F.3d
832, 841 (9th Cir. 2001).
Conclusory and factually unsupported
allegations are insufficient to establish irreparable harm.
Herb, 736 F.3d at 1250.
DISCUSSION
In support of its proposed form of judgment that includes a
permanent injunction against Defendant, Plaintiff asserts it is
entitled to a form of judgment that is "broader than merely an
order to not use the exact marks" and the Court should require
Defendant to be "permanently enjoined from using [Plaintiff's]
Trademarks, or any trademark confusingly similar to
[Plaintiff's] Trademarks, in any manner in its online marketing,
including in any keywords or in metadata or on its website,
packaging, marketing materials, catalogs, and other sales or
promotion materials."
In particular, Plaintiff argues a
permanent injunction is necessary to enjoin Defendant from any
future trademark infringement and to prevent product confusion
in the public market, including a loss of control over business
5 – OPINION AND ORDER
reputation, loss of trade, and loss of goodwill.
According to
Plaintiff, it has satisfied each of the equitable criteria for
entry of an injunction:
(1) it has suffered irreparable injury;
(2) remedies at law, including monetary damages, are inadequate
to compensate for that injury; (3) in the balance of hardships
between the parties, a remedy in equity is warranted; and (4)
the public interest would not be disserved by a permanent
injunction.
Plaintiff contends the "actual, irreparable harm"
it sustained is the "loss of control over its goodwill in its
trademarks," and Plaintiff points to evidence that it "sent a
letter to customers to combat the damages that [Defendant's]
infringement was causing."
Decl. of David Cooper (#96-2),
attaching deposition transcripts from Vince Ovist (Ex. 5).
Defendant, in turn, asserts there is not any basis for the
Court to enter an injunction in this case.
In particular,
Defendant argues a permanent injunction is not automatic and
even though Plaintiff prevailed on the merits, Plaintiff has not
established any harm let alone irreparable harm.
As evidence of
a lack of injury, Defendant points to the fact that Plaintiff
did not promptly move for a permanent injunction when the
Federal Circuit issued its opinion in April 2019 nor before this
Court contacted the parties in July.
6 – OPINION AND ORDER
Moreover, Defendant
maintains entry of an injunction at this point would "continue
this litigation rather than help to put an end to it" because
one of Plaintiff's marks ("2.0") is so broad and vague that
Plaintiff may seek a contempt finding for even the innocuous use
of that term.
This Court notes it did not reach, and, therefore, did not
evaluate, the issue of an injunction previously because it ruled
in Defendant's favor on the merits.
The Court also notes
Defendant conceded at summary judgment that it used a picture of
Plaintiff's product and referenced Plaintiff's product name in a
marketing brochure.
Defendant also acknowledged it believed in
good faith that the Patent Office was not going to issue
Plaintiff's patent at the time it used the materials.
Defendant
emphasizes it stopped all activity regarding Plaintiff's product
when the Patent Office issued a notice of allowance and before
the patent was issued.
Moreover, the Court notes Plaintiff does
not provide any authority for its contention that the mere fact
that Plaintiff sent a warning letter to its customers about
Defendant's infringement constitutes evidence of irreparable
harm.
In addition, the record only establishes Plaintiff was
concerned about the potential loss of prospective customers,
goodwill, and/or reputation, but Plaintiff does not provide any
7 – OPINION AND ORDER
evidence of actual loss.
Based on this record the Court concludes Plaintiff has not
made any showing of irreparable harm and, therefore, Plaintiff
fails to meet the standard required for a permanent injunction.
Accordingly, the Court concludes Plaintiff is not entitled to a
judgment as to its trademark claims against Defendant that
includes a permanent injunction.
CONCLUSION
For these reasons, the Court declines to adopt Plaintiff's
form of Judgment.
The Court also declines to enter Defendant's
proposed form of Judgment because it is overbroad in that it
addresses all claims Plaintiff originally asserted, fails to
clarify the status of each of those non-trademark claims, and
includes claims not reviewed on appeal.
As noted, the Court previously found in favor of Defendant
Georgia Expo, Inc., on cross-motions for summary judgment;
dismissed with prejudice the First Amended Complaint filed by
Plaintiff Versatop Support Systems, Inc.; and entered Judgment
(#51) in favor of Defendant.
Plaintiff, however, pursued its
claim on appeal and prevailed.
Accordingly, the Court now VACATES its previously entered
8 – OPINION AND ORDER
Judgment (#51) only as to Counts IV and V for Trademark
Infringement in Plaintiff's First Amended Complaint and enters
JUDGMENT in favor of Plaintiff and against Defendant on those
claims only.
Because the Mandate refers only to the trademark
claims, the remainder of Plaintiff's claims (Counts I, II, and
III) remain dismissed with prejudice.
Finally, for the reasons
previously stated, the Court also DENIES Plaintiff's request for
a permanent injunction.
IT IS SO ORDERED.
DATED this 13th day of November, 2019.
/s/ Anna J. Brown
___________________________________
ANNA J. BROWN
United States Senior District Judge
9 – OPINION AND ORDER
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