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A party whose acts have been found to likely constitute trademark infringement cannot claim that a preliminary injunction barring infringement violates its free speech rights, the U.S. Court of Appeals for the Ninth Circuit ruled July 24 in a ruling designated as not for publication and non-precedential (Am. Rena Int'l Corp. v. Sis-Joyce Int'l Co., 9th Cir., No. 12-57169, 7/24/13, unpub.).
Affirming a preliminary injunction award, the court found no abuse of discretion in a federal district court's application of a test for likelihood of confusion and a test for the appropriateness of a preliminary injunction.
American Rena International Corp. of Los Angeles markets skin care products under the name “Rena.” Its competitor Sis-Joyce International Co. of Sacramento, Calif., began using the brand name “ARëna.”
American Rena sued, alleging trademark infringement, trade dress infringement, and unfair competition and sought a preliminary injunction. Sis-Joyce claimed priority of use over American Rena.
Judge Dolly M. Gee of the U.S. District Court for the Central District of California determined that American Rena was likely to succeed on the merits of its claims and granted the preliminary injunction motion. Sis-Joyce appealed, arguing, among other things, that enjoining it from using the “ARëna” mark violated its constitutional rights.
In a per curiam ruling, the court affirmed the grant of injunction, finding no abuse of discretion on the part of the district court.
In particular, the court pointed to “the lack of evidence in the record supporting Sis-Joyce's claims of priority.” The court found no error in the district court's application of an eight-factor test for likelihood of confusion as set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9th Cir. 1979). There was also no abuse of discretion regarding the lower court's finding of irreparable harm to American Rena in the absence of an injunction:
“[American] Rena has provided “[e]vidence of threatened loss of … customers or goodwill,” … and pointed to a wide range of “intangible injuries, such as damage to ongoing recruitment efforts and goodwill,” … likely to result--and already resulting--from Sis-Joyce's infringing practices. Even if Rena's bad business practices contributed in some part to its decline in business, the district court did not clearly err in finding that Sis-Joyce's actions, too, have significantly contributed to Rena's loss of business.
The remaining factors of the test for preliminary injunction--the balance of hardships and the public interest--also weighed in favor of American Rena, the court said. Finally, the court said that the preliminary injunction was not unconstitutionally overbroad:
because it does not prevent Sis-Joyce from selling non-infringing products or from engaging in speech that does not constitute infringement or intentional interference with economic advantage. Sis-Joyce cannot sow confusion in the marketplace by violating the rights of others and then escape the consequences by arguing that any action curtailing its infringing actions impinges on its Constitutional rights.
The appellate panel comprised Judge A. Wallace Tashima, Judge Jay S. Bybee, and Judge Cathy Ann Bencivengo.
American Rena was represented by Ryan Geoffrey Baker of Baker Marquart, Los Angeles. Sis-Joyce was represented by Leon Emmanuel Jew of Jew & Associates, Pleasanton, Calif.
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