2Die4Kourt v. Hillair Capital Management, LLC
692 F. App'x 366
| 9th Cir. | 2017Background
- Parties: Kardashians (2Die4Kourt, Kimsaprincess, Khlomoney, Kourtney Kardashian, Kim Kardashian West, Khloe Kardashian) sued Hillair (Hillair Capital Management, Hillair Capital Investments, Haven Beauty, Neal Kaufman, Sean McAvoy) over trademark use and publicity rights.
- There was a licensing Agreement requiring Hillair to make quarterly royalty payments; Kardashians were to provide invoices but Agreement preserved their right to amounts due even if invoices were not produced.
- Hillair never made royalty payments but continued using the Kardashians’ trademarks during the Agreement and after its termination, and released an unapproved cosmetics line post-termination.
- District court granted a preliminary injunction barring Hillair from using the trademarks; Hillair appealed.
- Ninth Circuit reviews preliminary injunction for abuse of discretion under the Winter factors (likelihood of success, irreparable harm, balance of equities, public interest).
Issues
| Issue | Plaintiff's Argument (Kardashians) | Defendant's Argument (Hillair) | Held |
|---|---|---|---|
| Likelihood of success on trademark/right-of-publicity claims | Breach of Agreement (no royalties) and continued trademark use supports infringement/right-of-publicity claims | Hillair challenged merits, claiming defenses and contractual dispute | Court: Kardashians likely to succeed; failure to pay royalties while using marks supports claims |
| Effect of missed invoices on amounts owed | Agreement preserves Kardashians’ right to amounts due even if invoices not provided | Hillair argued invoices were prerequisite to payment | Court: Agreement shows royalties were due despite missing invoices |
| Unclean hands affirmative defense | N/A (Hillair asserted Kardashians acted inequitably) | Hillair argued Kardashians engaged in inequitable conduct (false advertising/breach) | Court: Hillair failed to show Kardashians used marks to deceive consumers; unclean hands defense unlikely to succeed |
| Balance of equities, irreparable harm, bond | Kardashians: continued unauthorized use harms reputation and goodwill; sought injunction with minimal/no bond | Hillair: injunction will force shutdown, layoffs, default — severe harm; requested bond | Court: Balance favors Kardashians; loss of control over reputation and goodwill is irreparable; minimal or no bond appropriate given likelihood of Kardashians’ success |
Key Cases Cited
- Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013) (preliminary injunction standard in trademark cases; irreparable harm and goodwill loss)
- United States v. Hinkson, 585 F.3d 1247 (9th Cir. 2009) (standard for reviewing district court factual findings)
- Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 (2008) (four-factor preliminary injunction test)
- Costandi v. AAMCO Automatic Transmissions, Inc., 456 F.2d 941 (9th Cir. 1972) (party may not invoke contract benefits while refusing performance)
- S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371 (3d Cir. 1992) (same principle)
- Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (burden shift after movant shows likelihood of success)
- Japan Telecom, Inc. v. Japan Telecom Am. Inc., 287 F.3d 866 (9th Cir. 2002) (elements of unclean hands in trademark defense)
- Dollar Sys., Inc. v. Avcar Leasing Sys., Inc., 890 F.2d 165 (9th Cir. 1989) (breach of contract alone does not establish deception for unclean hands)
- Am. Passage Media Corp. v. Cass Commc’ns, Inc., 750 F.2d 1470 (9th Cir. 1985) (economic injury can be irreparable in some contexts)
- Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330 (9th Cir. 1995) (injunctions may issue even if defendant’s harm flows from its infringing conduct)
- Johnson v. Couturier, 572 F.3d 1067 (9th Cir. 2009) (district court discretion on bond under Rule 65(c))
- Jorgensen v. Cassiday, 320 F.3d 906 (9th Cir. 2003) (same)
- Van De Kamp v. Tahoe Reg’l Planning Agency, 766 F.2d 1319 (9th Cir. 1985) (likelihood of success can justify minimal or no bond)
- Sports Form, Inc. v. United Press Int’l, Inc., 686 F.2d 750 (9th Cir. 1982) (appellate review limited to record before district court)
- Twentieth Century Fox Film Corp. v. Marvel Enters., Inc., 277 F.3d 253 (2d Cir. 2002) (licensee’s remedies under Lanham Act when licensor makes false claims)