Coldwell Banker Real Estate, LLC v. Larson, Derek

Filing 17

ORDER staying plaintiff's 4 Motion for Preliminary Injunction. Plaintiff must respond as described in this order no later than May 7, 2014. If plaintiff fails to respond, its motion will be denied. If defendant Derek M. Larson chooses to respond to plaintiff's proposed injunction, he must do so no later than May 14, 2014. Signed by District Judge Barbara B. Crabb on 4/23/2014. (jef),(ps)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - COLDWELL BANKER REAL ESTATE, LLC,
OPINION AND ORDER
Plaintiff,
14-cv-206-bbc
v.
DEREK M. LARSON,
Defendant.
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - In this civil action, plaintiff Coldwell Banker Real Estate, LLC alleges that it and
defendant Derek M. Larson were once parties to a franchise contract and that defendant has
continued to use plaintiff’s trademarks even though the parties’ franchise relationship has
ended. Plaintiff contends that defendant is infringing and diluting its trademarks and that
defendant has breached their contract and been unjustly enriched.
Now before the court is plaintiff’s motion for a preliminary injunction against
defendant. Dkt. #4. Defendant responded to the motion by admitting to the infringing
behavior and promising to stop, but under the doctrine of voluntary cessation, defendant’s
promise does not moot plaintiff’s motion.

Friends of the Earth, Inc. v. Laidlaw

Environmental Services (TOC), Inc., 528 U.S. 167, 189 (2000) (“It is well settled that ‘a
defendant’s voluntary cessation of a challenged practice does not deprive a federal court of
its power to determine the legality of the practice.’”) (quoting City of Mesquite v. Aladdin’s

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Castle, Inc., 455 U.S. 283, 290 (1982)). Because plaintiff’s motion is ripe and unopposed,
plaintiff appears to be entitled to relief.
However, plaintiff failed to include a proposed injunction with its submissions on the
motion. At the conclusion of its brief in support of its motion, plaintiff says “defendant
should be immediately enjoined from utilizing Coldwell Banker Marks and be required to
de-identify the websites and such from displaying the marks.” Plt.’s Br., dkt. #5, at 11.
Further, plaintiff says that “[i]f the defendant fails to de-identify as required, grounds exist
for relief in order to allow Coldwell Banker to de-identify.” Id. These statements are too
vague to serve as an adequate injunction. Fed. R. Civ. P. 65(d)(1)(B)-(C) (“Every order
granting an injunction and every restraining order must . . . state its terms specifically [and]
describe in reasonable detail—and not by referring to the complaint or other document—the
act or acts restrained or required”).
The term “de-identify” is ambiguous as to plaintiff requires of defendant. Plaintiff
must explain more precisely what defendant is expected to do. Similarly, “websites and
such” does not give sufficient notice of which of defendant’s properties are infringing
plaintiff’s marks, so plaintiff must state with greater specificity which properties it intends
to include in the injunction. In addition, plaintiff must explain specifically what it means
by “relief in order to allow Coldwell Banker to de-identify,” that is, what sort of action does
plaintiff believe it may take against defendant?. Finally, plaintiff must state which of the
allegedly infringed upon marks should be included in the injunction.
Accordingly, I am staying a decision on plaintiff’s motion until plaintiff provides the

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court a proposed injunction that states specifically the terms of the injunction and “the act
or acts restrained or required.” If defendant opposes the proposed injunction, he may
respond; otherwise, a response is not required.

ORDER
IT IS ORDERED that plaintiff Coldwell Banker Real Estate, LLC’s motion for
preliminary injunction, dkt. #4, is STAYED. Plaintiff must respond as described in this
order no later than May 7, 2014. If plaintiff fails to respond, its motion will be denied. If
defendant Derek M. Larson chooses to respond to plaintiff’s proposed injunction, he must
do so no later than May 14, 2014.
Entered this 23d day of April, 2014.
BY THE COURT:
/s/
BARBARA B. CRABB
District Judge

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