Corporation of Gonzaga University v. Pendleton Enterprises LLC et al, No. 2:2014cv00093 - Document 48 (E.D. Wash. 2015)
Court Description: ORDER GRANTING 34 GONZAGA'S MOTION FOR PERMANENT INJUNCTION. Case closed. Signed by Senior Judge Lonny R. Suko. (CV, Case Administrator)
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Corporation of Gonzaga University v. Pendleton Enterprises LLC et al Doc. 48 1 2 3 4 UNITED STATES DISTRICT COURT 5 EASTERN DISTRICT OF WASHINGTON 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 ) CORPORATION OF GONZAGA ) NO. CV-14-0093-LRS UNIVERSITY, ) ) ORDER GRANTING GONZAGA’S Plaintiff, ) MOTION FOR PERMANENT ) INJUNCTION -vs) ) PENDLETON ENTERPRISES, LLC, ) a Washington LLC; PENDLETON ) BROADCASTING, INC., a ) Washington Corporation; and ) JAMIE PENDLETON, an ) individual and a resident of ) the State of Washington, ) ) Defendants. ) ) BEFORE THE COURT is Plaintiff Corporation of Gonzaga University’s (“Gonzaga”) Motion For Entry of a Permanent 21 Injunction Order, ECF No. 34, filed on October 22, 2014 and 22 23 24 25 argued on December 10, 2014 in Yakima, Washington. Plaintiff Gonzaga filed its Motion for Summary Judgment on July 16, 2014. After briefing, oral argument was held on 26 ORDER - 1 Dockets.Justia.com 1 2 September 4, 2014. On September 25, 2014, the Court entered its Order on Gonzaga’s Motion for [Partial] Summary Judgment 3 4 (ECF No. 33), granting Gonzaga’s motion which the Court hereby 5 incorporates by this reference into this Permanent Injunction. 6 In its order granting summary judgment, the Court 7 found that Defendants’ conduct violated §43(a) [15 U.S.C. 8 9 10 §1125(a)] of the Lanham Act through the Defendants’ use of Gonzaga’s Identifiers and Trademarks. 11 12 The Court finds that Plaintiff Gonzaga is the owner of the Gonzaga Identifiers and Trademarks as defined below, which 13 14 have achieved secondary meaning through their use in the 15 Spokane, Washington area. 16 Identifiers and Trademarks are commercially strong and there 17 is no dispute that each In the Spokane area, Gonzaga’s of the Gonzaga Identifiers and 18 19 Trademarks refer to or identify Gonzaga in the Spokane area. 20 The Defendants commercial use of the Gonzaga Identifiers 21 and Trademarks have the potential to cause confusion in the 22 minds of consumers about the origin of the goods or services 23 24 in question or a sponsorship, approval or affiliation by 25 Gonzaga that doesn’t exist. 26 the Gonzaga Identifiers and Trademarks creates a likelihood of ORDER - 2 The Court concludes that use of 1 2 confusion between Defendants’ goods and services and Gonzaga. The Lanham Act gives the Court "power to grant injunctions 3 4 according to the rules of equity and upon such terms as the 5 court may deem reasonable, to prevent the violation" of a mark 6 holder's rights. 15 U.S.C. § 1116(a); Pepsico, Inc., et al. v. 7 Cal. Sec. Cans, 238 F.Supp.2d 1172, 1177–78 (2002). 8 9 A permanent injunction may be entered where the plaintiff 10 shows: (1) that it has suffered an irreparable injury; (2) 11 that remedies available at law, such as monetary damages, are 12 inadequate to compensate for that injury; (3) that, 13 14 considering the balance of the hardships between the plaintiff 15 and defendant, a remedy in equity is warranted; and (4) that 16 the public interest would not be disserved by a permanent 17 injunction. 18 19 While "[t]he decision to grant or deny permanent 20 injunctive relief is an act of equitable discretion by the 21 district court," the "traditional principles of equity" demand 22 a fair weighing of the factors listed above, taking into 23 24 25 26 account the unique circumstances of each case. Ebay,Inc. v. Mercexchange, L.L.C., 547 U.S. 388, 395 (2006). In considering injunctive relief, the Court finds that ORDER - 3 1 2 Gonzaga has suffered irreparable injury and irreparable will suffer further to its goodwill injury if 3 4 Defendants’ conduct which this Court has found to violate 5 §43(a) [15 U.S.C. §1125(a)] of the Lanham Act is allowed to 6 continue. 7 This irreparable limitation: 1) Gonzaga is injury unable to includes, control without use of the 8 9 Gonzaga Identifiers or approve the nature of the is unable 10 to 11 commercial enterprise that is being promoted with Gonzaga 12 control and Trademarks; 2) Gonzaga business or Identifiers and Trademarks; 3) Gonzaga is unable to control 13 14 the type of event or services promoted in connection with the 15 use of the Gonzaga Identifiers and Trademarks; 4) Gonzaga is 16 unable to prescribe and control the conduct of the Gonzaga 17 mascot wearing a Gonzaga identifying jersey; and 5) Gonzaga, 18 19 a Jesuit Catholic University, cannot control the negative 20 public perception and impact resulting from confusion that it 21 is 22 affiliated, connected, or associated with Defendants’ businesses. 23 24 In considering injunctive relief, the Court further finds 25 that the full scope of the past and future harm to Gonzaga’s 26 reputation is and would be difficult to quantify and difficult ORDER - 4 1 2 to convert to monetary damages. Therefore, monetary damages would be inadequate to compensate for injury that would 3 4 5 result from Defendants’ continued use of Gonzaga’s Identifiers and Trademarks. 6 7 The Court further finds that the balance of hardships of the entry of a permanent injunction favors Gonzaga, as the 8 9 Court notes that Defendants are not presently conducting 10 businesses in the bar and radio enterprises but have not 11 abandoned plans to do so in the future. Finally, the Court 12 finds that the public interest is served by the removal 13 14 of the creation of a likelihood of confusion that Defendants 15 are affiliated, connected or associated with Gonzaga, or that 16 there was a sponsorship or approval by Gonzaga of Defendants’ 17 goods, services, or commercial activities, when there is no 18 19 such connection, association or affiliation. Good cause exists to enter a permanent injunction. 20 21 22 Based upon the facts, evidence and the Court’s Order on Gonzaga’s Motion For [Partial] Summary Judgment (ECF No. 33) finding 23 24 that Defendants’ conduct violated §43(a) [15 U.S.C. §1125(a)] 25 of the Lanham 26 Identifiers and Trademarks, Plaintiff Gonzaga’s Motion for ORDER - 5 Act through Defendants’ use of Gonzaga’s 1 2 Entry of GRANTED. A Permanent Injunction, ECF No. 34, is hereby Accordingly, 3 4 (1) Judgment is entered in favor of Plaintiff and against 5 Defendants on the first cause of action only (Violation of the 6 Lanham Act, 15 U.S.C. §1125(a).1 7 (2) A permanent injunction order is hereby issued pursuant 8 9 to Rule 65 of the Federal Rules of Procedure to restrain and 10 enjoin Defendants Pendleton Enterprises, LLC, Pendleton 11 Broadcasting Inc., and Jamie Pendleton (collectively referred 12 to as "Defendants") as well as each of their agents, servants, 13 14 employees, attorneys, and all those in active concert with tem 15 from: 16 (a) displaying, advertising, marketing, promoting, 17 stating or suggesting affiliation with, or otherwise using in 18 19 commerce, or contributing to the use of in commerce, any of 20 Gonzaga's Identifiers and Trademarks, as defined below, or 21 using or contributing to the use in commerce any goods, 22 products, or tangible property bearing any of the Gonzaga's 23 24 Identifiers and Trademarks; 25 26 1 Plaintiff amended the complaint to delete all remaining claims in the original complaint. Order Granting Motion to Amend (ECF No. 47). ORDER - 6 1 2 (b) engaging in any activity that misleads or confuses or is likely to mislead or confuse the public to the detriment 3 4 5 of Gonzaga, including (without that 6 7 constitutes a violation limitation) of 15 any activity U.S.C.§ 1125(a)(1); (c)using or displaying the Bulldog Mascot with a Gonzaga identifying jersey, in connection with Defendants’ 8 9 10 current and future business or commercial interests, or goods or services; 11 12 (d) using or displaying the Bulldog Mascot with a Gonzaga identifying jersey, in connection with the promotion 13 14 of third party businesses or commercial enterprises; 15 (e) using or displaying of Gonzaga Identifiers and 16 Trademarks on or in combination with Defendants’ vehicles used 17 to promote any business or commercial interests, or goods and 18 19 20 services, of the Defendants, including without limitation, defendants’ radio station 104.5 or bar services; 21 22 (f) using Gonzaga Identifiers and Trademarks in a way which is likely to cause confusion, or to cause mistake, or to 23 24 deceive as to the affiliation, connection, or association 25 of Defendants’ 26 sponsorship, or approval of Defendants’ radio station and bar ORDER - 7 businesses, or as to the origin, 1 2 services, or other current or future business or commercial interests, or goods and services, with or by Gonzaga; 3 (g) engaging in any activity that could or is likely 4 5 to lead anyone to believe that any product or service has been 6 produced, 7 distributed, offered, advertised, displayed, licensed, sponsored, approved, authorized, or otherwise used 8 9 10 in commerce by or for Gonzaga, when such is not true in fact; and/or 11 12 (h) assisting, aiding, abetting, or contributing to any other person or entity in engaging in or performing any 13 14 of the activities referred to above. (i) 15 16 17 For clarity and without limitation, the Defendants’ uses and displays of Gonzaga’s Identifiers and Trademarks as evidenced in paragraphs 13-31 of Gonzaga’s 18 19 Statement of Material Fact (ECF 22) are examples of uses of 20 Gonzaga’s Identifiers 21 commercial purposes, 22 or and Trademarks for in connection with business the goods or or services of the Defendants. 23 Gonzaga's “Identifiers and Trademarks,” as the term 24 25 used herein, refers to and includes the following: 26 /// ORDER - 8 is 1 C 2 "GONZAGA UNIVERSITY", which is the subject of U.S. Trademark Registration No. 1,931,286, and is an 3 incontestable U.S. trademark per 15 U.S.C. §1065. 4 5 C 6 "GONZAGA UNIVERSITY BULLDOGS", which is the subject of U.S. Trademark Registration No. 1,931,285, and is an 7 incontestable U.S. trademark per 15 U.S.C. §1065. 8 9 C "ZAGS", which is the subject of U.S. Trademark 10 Registration No. 1,931,449, and is an incontestable 11 U.S. trademark per 15 U.S.C. §1065. 12 C Gonzaga's "Bulldog mascot wearing a Gonzaga jersey", 13 which the record indicates that Gonzaga has used in 14 15 Spokane since the 1980's, and which is the subject of 16 Washington 17 State Trademark Registration File No. 56807. 18 19 C Gonzaga's Bulldog Head, for which Gonzaga has been 20 awarded Washington State Trademark Registration File 21 No. 56780, showing a date of first use in Washington 22 in 1998. 23 24 C Gonzaga's Bulldog Head combined with the word Gonzaga, 25 for which Gonzaga has been awarded Washington State 26 Trademark Registration File No. 56959, showing a date ORDER - 9 1 of first use in Washington in 1998. 2 C Gonzaga's Identifier "GU", for which Gonzaga has been 3 awarded Washington State Trademark Registration File 4 5 No. 56960, showing a date of first use in Washington 6 in 1998. 7 C Gonzaga's Bulldog Head combined with "GU", for which 8 Gonzaga has been awarded Washington State Trademark 9 10 Registration File No. 56958, showing a date of first 11 use in Washington in 1998. 12 (3) Defendants are further ordered to destroy and/or turn 13 14 over to counsel for Plaintiff any and all material, 15 merchandise, and/or items in their care, custody or control 16 bearing any of the Gonzaga's Identifiers and Trademarks. 17 (4) Pursuant to 15 U.S.C. §1116, the Defendants are 18 19 further ordered, to file with the Court and serve upon the 20 Plaintiff, an affidavit confirming compliance with injunctive 21 relief awarded by the court herein, by, without limitation, 22 removing all Gonzaga Identifiers and Trademarks from 23 24 Defendants’ advertising and promotional materials (including 25 website and 26 Identifiers and Trademarks from Defendants’ vehicles promoting ORDER - 10 social media), and have removed all Gonzaga 1 2 Defendants’ business and commercial interests, or goods or services. Accordingly, 3 4 The District Court Executive is directed to enter this 5 Order; enter judgment consistent with this Order; and CLOSE 6 THIS FILE. 7 8 DATED this 8th day of January, 2015. 9 s/Lonny R. Suko 10 LONNY R. SUKO SENIOR UNITED STATES DISTRICT JUDGE 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 ORDER - 11
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