182 F. Supp. 3d 1065
E.D. Cal.2016Background
- National Grange is a longstanding national fraternal organization that owns registered trademarks containing the word “Grange.”
- California State Grange (CSG) was chartered as the California state affiliate but was disaffiliated in 2013 after disputes; plaintiff then reorganized a California state chapter under a different name.
- Despite disaffiliation and a prior permanent injunction (Sept. 29, 2015) prohibiting use of marks containing “Grange,” CSG continued to use “California State Grange” publicly (corporate filings, website, email addresses, billing, directory listings) and created related entities (California Grange Foundation) sharing personnel and addresses.
- Plaintiff obtained partial summary judgment on trademark infringement and unfair competition (July 14, 2015) and moved under 15 U.S.C. § 1116(a) to enjoin additional uses: corporate names, business activities, domain/email names, directory listings, and certain references to past affiliation; it also sought attorney’s fees for post-judgment violations.
- The court found defendant’s continued uses caused actual confusion, held it retained jurisdiction under Rule 62(c) to preserve the status quo during appeal, and concluded many of defendant’s practices violated the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of district court authority to modify injunction during appeal | Grange should be removed from defendant’s corporate registrations, public listings, domain/email, business activities, and references to past affiliation to preserve the injunction’s effect | Post-judgment modification exceeds Rule 62(c); relief would alter status quo and exceed issues litigated | Court may modify/enforce injunction under Rule 62(c) to preserve status quo and supervise compliance; jurisdiction exists to grant requested relief tied to original findings |
| Whether a corporate name using “Grange” constitutes a prohibited "mark" under the injunction | Corporate names, trade names, and registrations containing “Grange” are uses of the mark and infringe plaintiff’s rights | “Marks” in the injunction was intended to mean only trademarks, not corporate names | Under Lanham Act definitions, “mark” includes words/names; corporate and trade names are protected and defendant must remove “Grange” from government filings |
| Whether court may enjoin use of related words/abbreviations (e.g., “Granger,” “CSG”) | Plaintiff sought to enjoin “Granger” and “CSG” as likely confusing variations | Relief as to “Granger” and “CSG” was not litigated; would be new issue and alter status quo on appeal | Denied: injunction limited to marks litigated ("Grange"); court will not enjoin "Granger" or "CSG" absent litigation of those marks |
| Remedies for continued post-injunction conduct and attorney’s fees | Plaintiff seeks removal of “Grange” from filings/listings, ban on business use, removal from domains/emails, prohibit references indicating succession, and attorneys’ fees for enforcement motions | Defendant contends fee claims were abandoned and contests scope/control over third-party web listings | Court ordered broad compliance remedies (remove “Grange” from filings, listings, domain/email, business use, and references to being former/successor entity) and found defendant willful; plaintiff is prevailing party and may recover fees—court ordered fee accounting and will award reasonable fees if approved |
Key Cases Cited
- Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175 (9th Cir. 1988) (injunctive relief is primary remedy in trademark unfair competition cases)
- Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) (district court retains remedial discretion to fashion injunctions alleviating confusion)
- Sys. Fed’n No. 91, Ry. Emp. Dep’t, AFL-CIO v. Wright, 364 U.S. 642 (1961) (injunctions require continuing district court supervision)
- Nat. Res. Def. Council, Inc. v. Sw. Marine, Inc., 242 F.3d 1163 (9th Cir. 2001) (Rule 62(c) permits district court to preserve status quo while appeal is pending)
- A & M Records, Inc. v. Napster, Inc., 284 F.3d 1091 (9th Cir. 2002) (district court properly used Rule 62(c) to supervise compliance and clarify injunction)
- McClatchy Newspapers v. Cent. Valley Typographical Union No. 46, 686 F.2d 731 (9th Cir. 1982) (appeal does not deprive district court of jurisdiction to alter injunction to maintain status quo)
- Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir. 1989) (corporate and trade names are governed by same infringement test as trademarks)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (Lanham Act aims to prevent consumer deception and protect source-identifying marks)
- TrafficSchool.com, Inc. v. Edriver, Inc., 653 F.3d 820 (9th Cir. 2011) (evidence of actual confusion supports willfulness finding)
- Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210 (9th Cir. 2003) (deliberate infringement can make a case exceptional, justifying fee awards)