United States District Court, E.D. Washington
ORDER GRANTING GONZAGA'S MOTION FOR PERMANENT INJUNCTION
LONNY R. SUKO, Senior District Judge.
BEFORE THE COURT is Plaintiff Corporation of Gonzaga University's ("Gonzaga") Motion For Entry of a Permanent Injunction Order, ECF No. 34, filed on October 22, 2014 and 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 September 4, 2014. On September 25, 2014, the Court entered its Order on Gonzaga's Motion for [Partial] Summary Judgment (ECF No. 33), granting Gonzaga's motion which the Court hereby incorporates by this reference into this Permanent Injunction. In its order granting summary judgment, the Court found that Defendants' conduct violated §43(a) [15 U.S.C. §1125(a)] of the Lanham Act through the Defendants' use of Gonzaga's Identifiers and Trademarks.
The Court finds that Plaintiff Gonzaga is the owner of the Gonzaga Identifiers and Trademarks as defined below, which have achieved secondary meaning through their use in the Spokane, Washington area. In the Spokane area, Gonzaga's Identifiers and Trademarks are commercially strong and there is no dispute that each of the Gonzaga Identifiers and Trademarks refer to or identify Gonzaga in the Spokane area.
The Defendants commercial use of the Gonzaga Identifiers and Trademarks have the potential to cause confusion in the minds of consumers about the origin of the goods or services in question or a sponsorship, approval or affiliation by Gonzaga that doesn't exist. The Court concludes that use of the Gonzaga Identifiers and Trademarks creates a likelihood of confusion between Defendants' goods and services and Gonzaga.
The Lanham Act gives the Court "power to grant injunctions according to the rules of equity and upon such terms as the court may deem reasonable, to prevent the violation" of a mark holder's rights. 15 U.S.C. § 1116(a); Pepsico, Inc., et al. v. Cal. Sec. Cans, 238 F.Supp.2d 1172, 1177-78 (2002).
A permanent injunction may be entered where the plaintiff shows: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of the hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
While "[t]he decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, " the "traditional principles of equity" demand a fair weighing of the factors listed above, taking into 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 Gonzaga has suffered irreparable injury to its goodwill and will suffer further irreparable injury if Defendants' conduct which this Court has found to violate §43(a) [15 U.S.C. §1125(a)] of the Lanham Act is allowed to continue. This irreparable injury includes, without limitation: 1) Gonzaga is unable to control use of the Gonzaga Identifiers and Trademarks; 2) Gonzaga is unable to control or approve the nature of the business or commercial enterprise that is being promoted with Gonzaga Identifiers and Trademarks; 3) Gonzaga is unable to control the type of event or services promoted in connection with the use of the Gonzaga Identifiers and Trademarks; 4) Gonzaga is unable to prescribe and control the conduct of the Gonzaga mascot wearing a Gonzaga identifying jersey; and 5) Gonzaga, a Jesuit Catholic University, cannot control the negative public perception and impact resulting from confusion that it is affiliated, connected, or associated with Defendants' businesses.
In considering injunctive relief, the Court further finds that the full scope of the past and future harm to Gonzaga's reputation is and would be difficult to quantify and difficult to convert to monetary damages. Therefore, monetary damages would be inadequate to compensate for injury that would result from Defendants' continued use of Gonzaga's Identifiers and Trademarks.
The Court further finds that the balance of hardships of the entry of a permanent injunction favors Gonzaga, as the Court notes that Defendants are not presently conducting businesses in the bar and radio enterprises but have not abandoned plans to do so in the future. Finally, the Court finds that the public interest is served by the removal of the creation of a likelihood of confusion that Defendants are affiliated, connected or associated with Gonzaga, or that there was a sponsorship or approval by Gonzaga of Defendants' goods, services, or commercial activities, when there is no such connection, association or affiliation.
Good cause exists to enter a permanent injunction. Based upon the facts, evidence and the Court's Order on Gonzaga's Motion For [Partial] Summary Judgment (ECF No. 33) finding that Defendants' conduct violated §43(a) [15 U.S.C. §1125(a)] of the Lanham Act through Defendants' use of Gonzaga's Identifiers and Trademarks, Plaintiff Gonzaga's Motion for Entry of A Permanent Injunction, ECF No. 34, is hereby GRANTED. Accordingly,
(1) Judgment is entered in favor of Plaintiff and against Defendants on the first cause of action only (Violation of the Lanham Act, 15 U.S.C. §1125(a).
(2) A permanent injunction order is hereby issued pursuant to Rule 65 of the Federal Rules of Procedure to restrain and enjoin Defendants Pendleton Enterprises, LLC, Pendleton Broadcasting Inc., and Jamie Pendleton (collectively referred to as "Defendants") as well as each of their agents, ...