Seed Services Inc. v. Winsor Grain, Inc.
868 F. Supp. 2d 998
E.D. Cal.2012Background
- Seed Services, Inc. purchases and sells agricultural seeds and acquired Winsor Grain’s customer list and certain marks via a contract signed August 30, 2010.
- Under the contract, Seed Services would receive trademarks (including California Gold), to recruit Winsor Grain’s customers in the Middle East, and to appoint Cook as Seed Services’s agent for nine months, in exchange for $1,000,000.
- Seed Services later alleged that Cook/ Winsor Grain planned to sell alfalfa seeds under the California Gold mark to Erzam in Saudi Arabia, and that CLAC (Cook Land and Cattle Pty. Ltd.) registered the Australian California Gold mark.
- Seed Services sought a preliminary injunction arguing trademark infringement under the Lanham Act and attempted to show imminent infringement through Cook’s communications and CLAC’s Australian filing.
- Defendants argued CLAC is not a party to the case and that there was no imminent infringement, among other defenses; the court granted a preliminary injunction to Seed Services.
- The injunction restrains use of the California Gold and other marks abroad and in the Middle East, imposes a bond, and vacates the earlier hearing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of success on the merits | Seed Services asserts likelihood of confusion from use of California Gold against its marks. | Defendants argue no direct infringement or confusion; CLAC’s actions are not bound by this court. | Seed Services likely to prevail on Lanham Act claims. |
| Irreparable harm standard | Trademark harm and loss of goodwill justify irreparable harm. | No presumption; must show irreparable harm, which is not conclusively shown here. | No automatic irreparable harm presumed; however irreparable harm found on facts supporting potential harm. |
| Balance of equities and public interest | Equities favor Seed Services for protecting its marks and contractual obligations. | Overseas activity has little public interest impact and no distribution yet. | Equities and public interest favor Seed Services; bond set at $25,000. |
| Extraterritorial reach of the injunction | Prevents overseas use of California Gold to protect U.S. commerce. | Foreign actors and trademark decisions limit enforceability and separate jurisdictions. | Injunction properly extends to overseas conduct affecting U.S. commerce; CLAC’s actions attributed to Cook. |
Key Cases Cited
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (eight-factor test for likelihood of confusion)
- Winter v. Natural Resources Defense Council, 555 U.S. 7 (S. Ct. 2008) (established four-part injunction standard)
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (irreparable harm considerations in preliminary injunctions)
- Church of Scientology Int’l v. Elmira Mission of Church of Scientology, 794 F.2d 38 (2d Cir. 1986) (licensee confusion and brand association after license termination)
- Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500 (9th Cir. 1991) (extraterritorial reach criteria for Lanham Act injunctions)
- Cadence Design Systems, Inc. v. Avant! Corp., 125 F.3d 824 (9th Cir. 1997) (relevance of conduct and likelihood of confusion in injunctions)
- Sardi’s Restaurant Corp. v. Sardie, 755 F.2d 719 (9th Cir. 1985) (likelihood of confusion and proof requirements in trademark actions)
- Johnson v. Couturier, 572 F.3d 1067 (9th Cir. 2009) (admissibility of hearsay in preliminary injunction decisions)
- Ramirez & Feraud Chili Co. v. Las Palmas Food Co., 146 F. Supp. 594 (S.D. Cal. 1956) (foreign-trademark implications in injunctive relief)