House of Bryant Publications, LLC v. City of Lake City, Tennessee et al (TV1)
Filing
52
MEMORANDUM OPINION. After balancing the factors that the Court must consider in examining a motion for injunctive relief at this procedural stage of the litigation, the Court finds that the factors do not militate toward granting such extraordinary relief. It therefore DENIES Plaintiff's Motion for Injunction Pending Appeal [Doc. 47]. Signed by Chief District Judge Thomas A Varlan on 7/2/14. (JBR)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
AT KNOXVILLE
HOUSE OF BRYANT PUBLICATIONS, LLC, )
)
Plaintiff,
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v.
)
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CITY OF LAKE CITY, TENNESSEE, et al.,
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)
Defendants.
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No.: 3:14-CV-93-TAV-HBG
MEMORANDUM OPINION
On May 28, 2014, the Court denied plaintiff’s motion for a preliminary injunction,
which requested that the Court enjoin defendant City of Lake City, Tennessee (“Lake
City”) from changing its name to “Rocky Top,” enjoin all defendants from pursuing or
supporting efforts pertaining to the city’s name change to “Rocky Top,” and prohibit
development of plans for an amusement park or other development trading on the name
“Rocky Top” until such time that the Court may determine the rights of the parties and
whether Lake City should be permanently enjoined from changing its name to “Rocky
Top” [Doc. 45]. Subsequently, plaintiff filed a notice of appeal [Doc. 46] and then asked
this Court to enjoin Lake City from changing its name to “Rocky Top” pending the
decision of the United States Court of Appeals for the Sixth Circuit [Doc. 47]. The
motion for an injunction was filed approximately twenty-four hours before Lake City was
scheduled to vote on the name change [Doc. 48 p. 7; Doc. 49 p. 2]. The Court thus set
the matter for a hearing, and Lake City filed a prompt response in opposition [Doc. 49].
After hearing the parties’ arguments and considering their filings, the Court denied the
motion. In doing so, the Court indicated that it would file a written opinion supporting its
decision.
I.
Analysis
Plaintiff moved the Court to issue an injunction pursuant to Federal Rule of Civil
Procedure 62(c). 1 Rule 62(c) provides that a “court may . . . grant an injunction” “[w]hile
an appeal is pending from an interlocutory order or final judgment that . . . denies an
injunction[.]” Fed. R. Civ. P. 62. In considering a request for such relief, a district court
evaluates the same four factors evaluated in a request for a preliminary injunction. Hilton
v. Braunskill, 481 U.S. 770, 777 (1987) (noting also that under both Rule 62(c) of the
Federal Rules of Civil Procedure and Rule 8(a) of the Federal Rules of Appellate
Procedure, “the factors regulating the issuance of a stay are generally the same”). These
factors are: (1) the likelihood the party seeking an injunction will prevail on the merits of
the appeal; (2) the prospect of irreparable harm absent the injunction; (3) the prospect of
harm to others if the court grants the injunction; and (4) the public interest in granting the
injunction. Id.; Coal. to Defend Affirmative Action v. Granholm, 473 F.3d 237, 244 (6th
Cir. 2006); Mich. Coal. of Radioactive Material Users, Inc. v. Griepentrog, 945 F.2d 150,
153 (6th Cir. 1991) (“In essence, a party seeking a stay must ordinarily demonstrate to a
reviewing court that there is a likelihood of reversal.”).
1
“All four factors are not
Normally, “the filing of a notice of appeal divests the district court of jurisdiction
and transfers jurisdiction to the court of appeals.” Cochran v. Birkel, 651 F.2d 1219, 1221 (6th
Cir. 1991). An exception to the jurisdiction-transfer principle has been codified in Rule 62(c) of
the Federal Rules of Civil Procedure.
2
prerequisites but are interconnected considerations that must be balanced together.”
Granholm, 473 F.3d at 244. In addition, to justify an injunction at this procedural
juncture, “a movant need not always establish a high probability of success on the
merits.” Griepentrog, 945 F.2d at 153. “[I]f a movant demonstrates irreparable harm
that decidedly outweighs any potential harm to the defendant if a stay is granted, he is
still required to show, at a minimum, ‘serious questions going to the merits.’” Id. at 153–
54 (quoting In re DeLorean Motor Co., 755 F.2d 1223, 1229 (6th Cir. 1985)).
A.
Likelihood of Prevailing on the Merits of the Appeal
Plaintiff argues that the Court is likely to be reversed on appeal because it erred in
applying the “in commerce” standard applicable to Lanham Act claims to the claims
brought under the Trademark Dilution Revision Act (“TDRA”), 15 U.S.C. § 1125(c)
[Doc. 48]. In support of this argument, plaintiff makes three points. First, plaintiff
argues that the plain language of the Lanham Act and the TDRA make clear that the
provisions contain different standards because the Lanham Act imposes liability upon
“any person who . . . on or in connection with any goods or services . . . uses in
commerce” a mark that is “likely to cause confusion,” 15 U.S.C. § 1125(a)(1), whereas
the TDRA provides that “the owner of a famous mark” may obtain “an injunction against
another person who, at any time after the owner’s mark has become famous, commences
use of a mark or trade name in commerce,” 15 U.S.C. § 1125(c)(1). Second, citing
legislative history, plaintiff argues that Congress deliberately removed the commercial
use requirement from the dilution statute. Finally, plaintiff argues that the case law relied
upon by the Court in its memorandum opinion and order denying the initial request for an
3
injunction interprets the Federal Trademark Dilution Act (“FTDA”), the precursor to the
TDRA, and was therefore not applicable.
In response, Lake City argues that even assuming the Court incorrectly applied the
statute, which Lake City does not concede, the error was harmless because plaintiff has
failed to meet the threshold requirement of proving its trademarks are famous. More
specifically, Lake City contends that “Rocky Top” has achieved only “niche fame,”
which, under case law interpreting the TDRA, is not enough to prevail on the merits.
The Court first turns to the text of its opinion denying the initial request for an
injunction. While the Court referenced the FTDA in opening its discussion about the
dilution claim [Doc. 45 p. 20] and in subsequent sentences as shorthand reference to
plaintiff’s § 1125(c)(1) claim, the Court expressly referenced the current language of the
statute—that is, the language of the TDRA [Id.]. Thus, reference to the FTDA, alone,
does not lead the Court to conclude that there are serious questions going to the merits of
plaintiff’s § 1125(c)(1) claim or that the Sixth Circuit will likely reverse this Court on
appeal.
Along the same lines, plaintiff argues that the case law interpreting the FTDA,
upon which the Court relied, was inapplicable to the Court’s analysis. In examining
plaintiff’s § 1125(c)(1) claim, the Court relied upon, as instructive, Bosley Medical
Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005). The Ninth Circuit instructed that
“as with infringement claims, dilution claims are ‘subject to a commercial use
requirement.’”
403 F.3d at 676 (citing, along with a prior Ninth Circuit decision,
Huthwaite, Inc. v. Sunrise Assisted Living, Inc., 261 F. Supp. 2d 502, 517 (E.D. Va.
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2003), for the proposition that the commercial use requirement of the FTDA is “virtually
synonymous with the ‘in connection with the sale, offering for sale, distribution, or
advertising of goods and services’ requirement” of the Lanham Act). While not cited in
the Court’s opinion, there is case law following the passage of the TDRA and interpreting
the current version of the statute as imposing a “commercial use” requirement, just as in
Bosley. See, e.g., Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 110–12 (2d Cir. 2010)
(“There is no second mark or product at issue here to blur with or to tarnish ‘Tiffany.’ . .
. [I]nsofar as eBay did not itself sell the goods at issue, it did not itself engage in
dilution.”); Cleary Bldg. Corp. v. David A. Dame, Inc., 674 F. Supp. 2d 1257, 1268 (D.
Colo. 2009) (citing the language of the TDRA and Bosley, finding that “‘commercial use’
of the mark is a requirement to state a claim for trademark dilution”); see also Howard
Johnson Int’l, Inc. v. Vraj Brig, LLC, No. 08-1466, 2010 WL 215381, at *7 (D.N.J. Jan.
14, 2010) (noting that “[l]ike infringement claims, dilution claims require a showing that
the defendant used the protected mark in offering or providing its own goods or
services,” although not referencing the TDRA).
Finally, relying upon legislative history, plaintiff argues that Congress intended to
remove the commerciality requirement from the “prima facie case for dilution” [Doc. 48
p. 5]. 2 Although the Court declines to engage in a full statutory interpretation analysis at
this time given the procedural posture and limited briefing on the issue, the Court makes
2
The Court notes the recognized sparseness of the legislative history. 4 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:101 (4th ed.) (“The 2006
TDRA must largely speak from the text of the statute itself. There is very little legislative
history.”).
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a few observations. First, the current statute requires “use of a mark or trade name in
commerce,” 15 U.S.C. § 1125(c)(1), and the statutory definition of “use in commerce” is
“the bona fide use of a mark in the ordinary course of trade . . . on goods . . . and . . .
services,” 15 U.S.C. § 1127. Second, the current statute exempts “noncommercial use”
of a mark from liability. 15 U.S.C. § 1125(c)(3)(C). Finally, courts have acknowledged
that the TDRA revised the FTDA in three substantial ways, none of which include the
deletion of the commerciality requirement. See, e.g., Nike, Inc. v. Nikepal Int’l, Inc., No.
2:05-cv-1468-GEB-JFM, 2007 WL 2782030, at *5 n.5 (E.D. Cal. Sept. 18, 2007) (noting
only three ways in which the TDRA revised the FTDA: it established that likelihood of
dilution, not actual dilution, is required to establish a dilution claim; it set forth four
factors regarding famousness; and it listed factors regarding likelihood of dilution).
Hence, all of this, in conjunction with the fact that plaintiff has not pointed the
Court to any case law supporting plaintiff’s interpretation of the TDRA, leads the Court
to find that its reliance on case law pre-dating the TDRA does not raise serious questions
going to the merits of plaintiff’s § 1125(c) claim or that it is likely the Court of Appeals
will reverse this Court on appeal.
In addition, even if the Court erred in its finding that Lake City is not using the
“Rocky Top” mark in commerce, the Court finds the error was harmless. Plaintiff is also
not likely to succeed on its dilution claim because the Court finds—on the record before
it—that the “Rocky Top” mark is not likely famous. 3
3
The issue of “famousness” was raised in connection with plaintiff’s initial motion
for an injunction [See Docs. 23, 26], so the Court finds it appropriate to address here. It did not
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A mark is “famous” if it “is widely recognized by the general consuming public of
the United States as a designation of source of the goods or services of the mark’s
owner.” 15 U.S.C. § 1125(c)(2)(A) (emphasis added). The term “‘general consuming
public’. . . presumably eliminates any possibility that niche fame—something viable prior
to 2006—can justify a basis for finding a mark famous.”
Quicken Loans, Inc. v.
Nationwide Biweekly Admin., LLC, No. 13-13431, 2014 WL 505576, at *5 (E.D. Mich.
Feb. 7, 2014) (citation omitted); see also Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 1372 (Fed. Cir. 2012).
The bar for fame is high. See TCIP Holding Co. v. Haar Commc’ns, 244 F.3d 88,
100–01 (2d Cir. 2001) (noting that “Congress envisioned that marks would qualify as
‘famous’ only if they carried a substantial degree of fame,” such as “Dupont” or “Buick”
or “Kodak,” which are “highly distinctive, arbitrary or fanciful marks”). In determining
whether a mark is famous, the statute lists four factors to consider:
(i) The duration, extent, and geographic reach of advertising and
publicity of the mark, whether advertised or publicized by the owner
or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or
services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3,
1881, or the Act of February 20, 1905, or on the principal register.
15 U.S.C. § 1125(c)(2)(A).
consider this issue previously because of its finding regarding Lake City’s use of the mark in
commerce, another required component to succeeding on a dilution claim [See Doc. 45].
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To achieve fame, the mark must be “so ubiquitous and well-known to stand toe-totoe with Buick or KODAK.” Bd. of Regents, Univ. of Tex. Sys. v. KST Electric, Ltd., 550
F. Supp. 2d 657, 678 (W.D. Tex. 2008) (approving and accepting report and
recommendation of magistrate judge). Put another way, only a “select class of marks—
those marks with such powerful consumer associations that even non-competing uses can
impinge on their value” are considered famous. Id. at 674; see also Avery Dinnison
Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999) (“Dilution is a cause of action
invented and reserved for a select class of marks—those marks with such powerful
consumer associations that even non-competing uses can impinge their value.”). Courts
have determined that brands such as “Pepsi” and “Nike” are famous. Nike, 2007 WL
2782030, at *5–6; Pepsico, Inc. v. #1 Wholesale, LLC, No. 07-CV-367, 2007 WL
2142294, at *4 (N.D. Ga. July 20, 2007). As will be discussed below, however, the
University of Texas’s longhorn logo is not famous. 550 F. Supp. 2d at 673–79. Nor is
Maker’s Mark’s red-wax seal. Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703
F. Supp. 2d 671, 699–700 (W.D. Ky. 2010); see also Am. Mensa, Ltd. v. Inpharmatica,
Ltd., No. 07-3283, 2008 U.S. Dist. LEXIS 99394, at *31–42 (D. Md. Nov. 6, 2008)
(finding that MENSA is not a famous mark).
The Court recognizes that “Rocky Top” is registered as a federal trademark for
nine different categories of goods and services [See Doc. 1 ¶ 18]. This factor favors
plaintiff, but registration alone does not demonstrate fame. KST Electric, 550 F. Supp. 2d
at 576 (quoting 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
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Competition, § 24:106 (4th ed.)). The Court must therefore consider the other factors set
forth in § 1125(c)(2)(A).
Plaintiff argues that the “Rocky Top” mark is famous because the song “Rocky
Top” has been protected by copyright since 1967 and recorded and replayed countless
times by licensees, including the University of Tennessee, Buck Owens, The Osborne
Brothers (who named their band “The Rocky Top Express”), Terry Gibb, Dinah Shore,
Chet Atkins, Boots Randolph, Glen Campbell, and Dolly Parton, among others, and sold
and distributed in interstate and foreign commerce.
Plaintiff also notes that the
copyrighted song “Rocky Top” is a state song of Tennessee. Further, plaintiff points out
that plaintiff registered the federal trademark for the phrase “Rocky Top” for nine
different categories of goods and services, and these goods and services are sold and
distributed in interstate and foreign commerce as well. And it contends that its licensing
relationship with the University of Tennessee and other entities invokes ideas of the state
of Tennessee and the University of Tennessee. It relies upon the affidavit of L. Lee
Wilson, General Counsel for plaintiff, in support of these assertions [Doc. 3-11].
Aside from this affidavit of plaintiff’s general counsel—which includes several
conclusory statements about fame—plaintiff offers no evidence of fame, and particularly,
no evidence regarding the first three factors enumerated in § 1125(c)(2)(A). See Quicken
Loans, 2014 WL 505576, at *6 (questioning, in ruling on a motion for preliminary
injunction, “whether general consumers outside the State of Michigan ‘widely recognize’
Plaintiff’s Mark” where the plaintiff offered only “self-proclaimed acclamations”). At
best, plaintiff’s assertions demonstrate “niche fame.” In Board of Regents, University of
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Texas System v. KST Electric, Ltd., the court determined in ruling on a motion for
summary judgment that the University of Texas (“UT”) longhorn logo was not famous
despite evidence that the UT football and basketball games are nationally televised on
NBC and ESPN and the logo is prominently featured during the broadcasts; that over 35
million television viewers watched the Bowl Championship Series Rose Bowl game
when UT beat the University of Southern California, which was at that time the highestrated college football game since 1987; that from 1963–2006, UT football players had
been featured on the cover of Sports Illustrated ten times; that a writer from the Sports
Illustrated website named UT’s football helmet as the number one non-letter helmet; that
the same helmet was displayed on two boxes of Wheaties; that UT holds the record for
most royalties earned in a single year and has been the number one university for
licensing royalties for the past two years; that Forbes recently had valued UT’s football
program as the second most valuable in the country; and that retail sales of UT products
in stores such as Wal-Mart and Target totaled nearly $400 million in 2005–06. 550 F.
Supp. 2d at 677–78. But see Univ. of Kan. v. Sinks, 644 F. Supp. 2d 1287, 1306–08 (D.
Kan. 2008) (finding sufficient evidence of fame to support jury verdict where the
“plaintiffs submitted an abundance of evidence on the use of various marks both within
and outside the context of sporting events”). Thus, even if plaintiff had similar proof
related to the University of Tennessee’s use of the mark “Rocky Top,” the Court would
find it difficult to conclude that the “Rocky Top” mark has achieved more than “niche
fame.” And, similarly, to the extent plaintiff argues the “Rocky Top” mark is famous
because of the song bearing the same name, that fame would exist only among those to
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whom the song has appeal—not the general consuming public [Accord Doc. 3-11 ¶ 18
(noting that the “Rocky Top” mark covering nine different categories of goods “is very
recognizable among the consuming public with whom the Marks and the Copyrighted
Song have commercial appeal.” (emphasis added))].
Hence, given the high level of fame required to succeed on a dilution claim, the
Court finds on the record before it that plaintiff is not likely to succeed on the merits of
its dilution claim. Put another way, the Court has serious doubts at this time that “Rocky
Top” can stand toe-to-toe with Buick or Kodak. 4
In sum, the Court finds that, with respect to the dilution claim, plaintiff has not
shown serious questions going to the merits or that it is likely the Court of Appeals will
reverse this Court on appeal. This factor thus weighs against granting the requested
injunction.
B.
Irreparable Injury
Plaintiff asserts that it will suffer irreparable harm absent an injunction because
dilution is an injury that cannot be recompensed by money damages. The Court fully
recognizes this proposition, see Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 46,
469 (7th Cir. 2000) (“Irreparable harm is generally presumed in cases of trademark . . .
dilution.”), but because plaintiff has not shown serious questions going to the merits of
4
The Court notes that it is not defendant’s burden to prove the “Rocky Top” mark
is not famous, as plaintiff seemed to suggest during the hearing; rather, it is plaintiff’s burden to
prove the mark is famous. KST Electric, 550 F. Supp. 2d at 677 (noting that plaintiff “bears the
burden of proof on the famousness issue at trial”). And the Court is not determining whether
plaintiff has a plausible cause of action for dilution; the Court is determining whether plaintiff is
likely to succeed on the merits of the claim on the record before it.
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the dilution claim, the Court finds that this factor weighs against granting the requested
injunction. See Fallat v. Cryomed, LLC, No. 08-14875, 2009 WL 1514311, at *1 (E.D.
Mich. May 29, 2009) (finding that “because Plaintiff did not establish a strong likelihood
of success on the merits of his claims . . . , he is not entitled to a presumption of
irreparable harm”).
C.
Public Interest and Harm to Others
As the Court stated during the hearing on this matter, the Court finds its analysis
regarding these factors in connection with the initial request for an injunction applicable
here. 5
II.
Conclusion
In sum, after balancing the factors that the Court must consider in examining a
motion for injunctive relief at this procedural stage of the litigation, the Court finds that
the factors do not militate toward granting such extraordinary relief.
It therefore
DENIES Plaintiff’s Motion for Injunction Pending Appeal [Doc. 47].
s/ Thomas A. Varlan
CHIEF UNITED STATES DISTRICT JUDGE
5
The Court notes that the prejudice Lake City claims it would suffer because of the
timing of plaintiff’s instant motion has not factored into the Court’s analysis.
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