Federal Express Corporation et al v. Robrad, LLC et al
Filing
12
MEMORANDUM OPINION AND ORDER denying 5 Motion for Preliminary Injunction. (Ordered by Judge Jane J Boyle on 8/7/2014) (skt)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
FEDERAL EXPRESS
CORPORATION and
FEDEX GROUND PACKAGE
SYSTEM,
Plaintiffs,
v.
ROBRAD, L.L.C d/b/a THE LONE
STAR SHIPPING COMPANY and
BRADLEY T. WARD,
Defendants.
§
§
§
§
§
§
§
§
§
§
§
§
§
§
CIVIL ACTION NO. 3:14-CV-2152-B
MEMORANDUM OPINION AND ORDER
Before the Court is Plaintiff Federal Express Corporation’s (“FedEx”) Motion for Preliminary
Injunction (doc. 5), filed on June 12, 2014. For the reasons stated below, Plaintiff’s Motion is hereby
DENIED.
I.
BACKGROUND
This case arises out of Defendants’ alleged illegal and unauthorized use of the FedEx
trademark. FedEx is engaged in both international and domestic transportation of cargo. Compl. 3.
FedEx permits customers to create shipping accounts, which the customers can choose to have billed
in a variety of ways. Id. On November 27, 2006, Defendant Bradley T. Ward (“Ward”), as President
and on behalf of Defendant The Lone Star Shipping Company (“Lone Star”), entered into a FedEx
Authorized ShipCenter Agreement (the “FASC Agreement”) with FedEx. Id. at 4; Doc. 1-2, Compl.
-1-
Ex. A. The FASC Agreement authorized Defendants to accept packages on behalf of FedEx and
tender packages for transportation via FedEx, in exchange for discounts on FedEx’s services. Id.;
Compl. Ex. A. As a FedEx Authorized ShipCenter (“FASC”), Lone Star was provided with FedEx
Authorized ShipCenter signage, which it displayed in the storefront window. Compl. 4.
By letter dated April 4, 2011, FedEx terminated Lone Star’s FASC status. Id. at 4; Doc. 1-5,
Compl. Ex. D. Pursuant to Paragraph V of the FASC Agreement, Lone Star was required to
immediately discontinue all use of FedEx packaging and trademarks, including signage. Compl. 4;
Compl. Ex. A. On April 5, 2011, a FedEx-contracted vendor picked up the FedEx window sign that
Lone Star had been using. Compl. 7. Thereafter FedEx Express and FedEx Ground stopped picking
up packages from Lone Star. Id. Notwithstanding the termination of its FASC status and the
retrieval of its signage, Lone Star allegedly continued to display a FedEx sign in its storefront. Id. In
addition, it continued to ship with FedEx by delivering packages to various FedEx drop boxes. Id.
On June 12, 2014, FedEx filed suit in this Court against Defendants Robrad, L.L.C., d/b/a
The Lone Star Shipping Company, and Bradley T. Ward, asserting claims for fraud and breach of
contract, as well as for trademark infringement and trademark dilution under the Lanham Act.
Compl. 1; 15 U.S.C. §§ 1114, 1125. Plaintiff also separately filed its present Motion for Preliminary
Injunction. Doc. 5. On July 17, 2014, Defendants filed their Answer, which included a response to
FedEx’s Motion. Docs. 9, 9-1. Though Defendants’ filing was untimely, given the extraordinary
nature of the relief requested and the absence of any objection to the response by FedEx, the Court
will consider Defendants’ response in its analysis below. See Docs. 7–9; see also L.R. 7.1(e)(response
and brief to an opposed motion must be filed within 21 days from the date the motion is filed).
-2-
II.
LEGAL STANDARD
The decision to grant a preliminary injunction is within the Court’s discretion. TGI Friday’s
Inc. v. Great Nw. Restaurants, Inc., 652 F. Supp. 2d 763, 766 (N.D. Tex. 2009)(citing Miss. Power &
Light Co. v. United Gas Pipe Line, 760 F.2d 618, 621 (5th Cir. 1985)). However, a preliminary
injunction is considered an “extraordinary and drastic remedy” and is not granted routinely, “but
only when the movant, by a clear showing, carries the burden of persuasion.” Digital Generation, Inc.
v. Boring, 869 F. Supp. 2d 761, 772 (N.D. Tex. 2012). To obtain a preliminary injunction, a plaintiff
must show “(1) a substantial likelihood of success on the merits; (2) a substantial threat that it will
suffer irreparable injury absent the injunction; (3) that the threatened injury outweighs any harm the
injunction might cause the defendants; and (4) that the injunction will not impair the public
interest.” Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439, 442 (5th Cir. 2000).
III.
ANALYSIS
FedEx seeks a preliminary injunction “requiring the Defendants to (a) immediately remove
all FedEx signage from its [sic] business located at 6611 Hillcrest, Dallas, Texas, and (b) cease and
refrain for [sic] all use of FedEx signage in the future.” Compl. 11. FedEx further asks the Court to
waive the bond requirement for such relief. Pl.’s Mot. 3. Defendants discourage the Court from
granting FedEx’s Motion because they claim they “have already taken the necessary remedial actions
necessary to remove any references to FedEx from its store and Defendants have no intention of
using FedEx’s trade names or materials in the future.” Defs.’ Resp. 2. Defendants therefore claim
FedEx’s request for an injunction is moot. Id.
-3-
As a general matter, “a request for injunctive relief . . . becomes moot upon the happening
of the event sought to be enjoined.” Harris v. City of Houston, 151 F.3d 186, 189 (5th Cir. 1998).
However, discontinuance of the illegal conduct at issue does not automatically terminate the Court’s
power to grant injunctive relief. U.S. v. W.T. Grant Co., 345 U.S. 629, 633 (1953). This is because
“[t]he purpose of an injunction is to prevent future violations.” Id. To obtain an injunction, “the
moving party must [therefore] satisfy the court that the relief is needed.” Id.
After reviewing the parties’ filings and the relevant law, the Court concludes that FedEx has
failed to show that a preliminary injunction is warranted. Specifically, FedEx has failed to make a
clear showing that there is a substantial threat it will suffer irreparable injury if the preliminary
injunction is not granted. “To be considered irreparable, the injury in question must be imminent and
cannot be speculative.” Terex Corp. v. Cubex Ltd., No. 3:06–CV–1639–G, 2006 WL 3542706, at *9
(N.D. Tex. Dec. 7, 2006)(emphasis added)(citing Watson v. Fed. Emergency Mgmt. Agency, 437 F.
Supp. 2d 638, 648 (S.D. Tex. 2006), vacated on other grounds by No. 06–20651, 2006 WL 3420613
(5th Cir. 2006)(per curiam)); see Chacon v. Granata, 515 F.2d 922, 925 (5th Cir. 1975)(“An
injunction is appropriate only if the anticipated injury is imminent and irreparable.”). FedEx argues
that it will “likely suffer irreparable harm” because Defendants “have continued to pass off” Lone Star
as an FASC location. Pl.’s Br. 6. As result, FedEx claims it has lost control over its valuable
trademark and is at risk of a substantial threat of injury to its reputation and goodwill. Id. Though
loss of control of trademarks or reputation may constitute a substantial threat of irreparable injury,
see 652 F. Supp. 2d at 771, FedEx has here failed to demonstrate this loss or the substantial threat
thereof. In other words, FedEx has not shown that Defendants continue to hold Lone Star out as an
FASC location or otherwise infringe on their trademarks, or that there is a substantial risk they will
-4-
do so. All FedEx has offered is the statement that “[t]o the best of FedEx’s information, Ward
continues to display the FedEx signage in the window of his business and Defendants continue to
hold themselves out as ‘FedEx.’” Compl. 7; Pl.’s Br. 3.
Not only does this fall short of clearly showing a substantial threat of irreparable harm, it
distinguishes FedEx’s Motion from the authority on which FedEx relies. TGI Friday’s involved
defendants who admitted that they continued to use the plaintiff’s trademarks despite the
termination of franchise agreements authorizing them to do so. TGI Friday’s, 652 F. Supp. 2d at
767–8. Here, Defendants have made no such concession. In fact, they have stated in their response
that they “have removed and will not use in the future any advertising and advertising [sic] or
materials referring to or used by Fedex,” and that they have taken steps necessary to “remove any
references to Fedex from [their] store and . . . have no intention of using Fedex’s trade names or
materials in the future.” Defs.’ Resp. 2. Regrettably, FedEx has adduced no evidence, in the form of
affidavits or other, that contradicts these statement or demonstrates that its risk of injury is more
than speculative. In other words, FedEx has failed to show that there is a substantial threat that
irreparable harm will result if the injunction is not granted. See, e.g., Gonannies, Inc. v. Goupair.com,
Inc., 464 F. Supp. 2d 603, 608–09 (N.D. Tex. 2006)(“Plaintiffs have not introduced any evidence
of their own to show a threat of irreparable injury which cannot be adequately compensated by
monetary damages.”); H.D. Vest, Inc. v. H.D. Vest Mgmt. and Servs., LLC, No. 3:09–CV–00390–L,
2009 WL 1766095, at *4 (N.D. Tex. June 23, 2009)(denying motion for preliminary injunction
where “Plaintiff pointed to no evidence in the record to show a threat of irreparable injury” and
“merely states” that its harm is imminent); see also W. T. Grant Co., 345 U.S. at 633 (“The necessary
determination is that there exists some cognizable danger of recurrent violations, something more
-5-
than the mere possibility which serves to keep the case alive.”).
This is a critical shortcoming. “[The Fifth Circuit has] made it clear in [its] decisions that
preliminary injunctions will be denied based on a failure to prove separately each of the four elements
of the four prong test for obtaining the injunction.” Plains Cotton Co-op Ass’n of Lubbock v.
Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1261 (5th Cir. 1987). FedEx has failed to carry its
burden of persuasion with respect to the second element—irreparable harm, and, in the context of
a claim for trademark infringement under the Lanham Act, such injury simply cannot be presumed.
See Gonannies Inc., 464 F. Supp. 2d at 608–09 (N.D. Tex. 2006)(citing Plains Cotton Co-op., 807
F.2d at 1261). Accordingly, the Court concludes that FedEx’s Motion must be DENIED..
IV.
CONCLUSION
For the foregoing reasons, Plaintiff Federal Express Corporation’s Motion for Preliminary
Injunction is DENIED.
SO ORDERED.
SIGNED: August 7, 2014.
_________________________________
JANE J. BOYLE
UNITED STATES DISTRICT JUDGE
-6-
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?