Coldwell Banker Real Estate, LLC v. Larson, Derek

Filing 19

ORDER granting plaintiff's 4 Motion for Preliminary Injunction. Signed by District Judge Barbara B. Crabb on 5/19/2014. (jef),(ps)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - COLDWELL BANKER REAL ESTATE, LLC,
ORDER
Plaintiff,
14-cv-206-bbc
v.
DEREK M. LARSON,
Defendant.
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - In this civil action, plaintiff Coldwell Banker Real Estate, LLC alleges that defendant
Derek M. Larson has been infringing and diluting plaintiff’s trademarks and breaching the
parties’ contract since the parties’ franchise relationship ended. Plaintiff seeks a preliminary
injunction ordering defendant to stop using plaintiff’s marks in defendant’s real estate
business. Dkt. #4. Defendant admitted to the infringing behavior in his response to
plaintiff’s motion, dkt. #15, but I could not issue an injunction at that time because plaintiff
had not proposed specific language for the order, as required by Fed. R. Civ. P. 65(d). Now,
plaintiff has filed a proposed injunction, dkt. #18. Defendant has not objected to the
proposed injunction although he was given an opportunity to do so.
From my review of plaintiff’s proposed injunction, I conclude that it complies with
Fed. R. Civ. P. 65(d) in large part. I have disregarded any portion that was vague or included
items beyond the scope of plaintiff’s motion.

1

ORDER
IT IS ORDERED that plaintiff Coldwell Banker Real Estate LLC’s motion for a
preliminary injunction is GRANTED.
FURTHER, IT IS ORDERED that defendant Derek M. Larson is preliminarily
enjoined during the pendency of this action from using in any manner the trademarks
registered at 4,400,923; 4,175,759; 4,175,758; 3,254,878; 3,179,803; 3,179,802;
3,100,659; 2,745,034; 2,453,334; and 2,058,501 (“the Coldwell Banker Marks”) in
connection with defendant’s real estate brokerage business and services on signage,
advertising, websites, metatags, and real estate listings, including (without limitation)
on defendant’s website, www.cblarsonrealty.com, at defendant’s office located at
1114 4th Avenue S (Hwy 13), Park Falls, WI 54552, and on third-party websites
where defendant has profiles and listings related to his real estate business and
services, such as:
1. http://www.homefinder.com/broker/Coldwell-Banker-Larson-Realty---Pf-4308032d/
2. http://www.trulia.com/profile/derek-larson-agent-park-falls-wi-1453617/
3. http://www.realtor.com/realestateagents/Derek-Larson_Park-Falls_WI_879174_
43735990
4. http://www.countryhomesofmichigan.com/member/38597
5. http://www.realestatebook.com/agents/usa/wi/phillips/dereklarson-id7522051
6. http://www.homes.com/real-estate-agents/derek-larson/id-5180945/
7. http://www.lakehousesofwisconsin.com/member/51880/about

2

(collectively “Third Party Sites.”)
FURTHER, IT IS ORDERED that defendant is preliminarily enjoined during the
pendency of this action from using in any manner the Coldwell Banker Marks in
connection with defendant’s business or services in such a manner as to make it likely
to create the erroneous belief that his business or services are authorized by,
sponsored by, licensed by or in some way associated with Coldwell Banker.
FURTHER, IT IS ORDERED that defendant shall take immediate steps to remove
all Coldwell Banker Marks and colorable imitations thereof from his own website,
signage and advertising materials, and shall contact all Third Party Sites to update his
profiles and listings to remove all references to Coldwell Banker and all Coldwell
Banker Trademarks.
Entered this 16th day of May, 2014.
BY THE COURT:
/s/
BARBARA B. CRABB
District Judge

3