United States District Court, W.D. Washington, Seattle
ORDER DENYING NPI'S MOTION FOR PERMANENT
P. DONOHUE, UNITED STATES MAGISTRATE JUDGE.
INTRODUCTION AND SUMMARY CONCLUSION
matter comes before the Court on plaintiff National Products,
Inc.'s (“NPI”) motion for a permanent
injunction against defendant Arkon Resources, Inc.
(“Arkon”), following a jury verdict in NPI's
favor on its trade dress infringement claim. Dkt. 219.
Specifically, NPI requests an injunction that would, among
other things, require Arkon to continue storing the
infringing products indefinitely. Dkt. 219-1. Having reviewed
the parties' submissions, the governing law, and the
balance of the record, the Court DENIES NPI's motion.
Dkt. 219. Arkon redesigned its products and ceased all sales
of the infringing products by no later than April 30, 2016,
rendering it unnecessary to permanently enjoin Arkon from
future infringement. Instead, the Court ORDERS Arkon to
destroy the part of the accused products that infringed
NPI's trade dress. Although Arkon may salvage the product
parts that do not bear the infringing trade dress, it may not
dispose of the infringing products (or the double-socket
mount arm bearing NPI's hourglass shaped trade dress) in
any manner other than destruction.
Court conducted a jury trial in this matter from December 4,
2017 to December 8, 2017, on NPI's claims against Arkon
for infringement of NPI's federally registered
trademarkin violation of the Lanham Act, 15 U.S.C.
§ 1114(1), as well as the Washington Consumer Protection
Act (“WCPA”). NPI's trade dress is the
hourglass shaped design of a mounting arm, which is used to
attach a cell phone (or similar device) to a base in the
interior of a vehicle. Arkon denied NPI's claims, arguing
that NPI's trade dress was invalid as functional, as
lacking secondary meaning, and as generic. Alternatively, if
the jury found that NPI's trade dress was valid, Arkon
argued that there was no infringement.
December 8, 2017, the jury returned a verdict in NPI's
favor on its trade dress infringement claim, finding that
NPI's trade dress was valid, and infringed, and that the
infringement was “deliberate or willful.”
However, the jury found in favor of Arkon on NPI's WCPA
claim. The jury awarded NPI money damages in the amount of
$193, 598. Dkt. 177 (jury verdict). The Court entered
judgment on December 11, 2017. Dkt. 179.
Order dated February 14, 2018, the Court ruled on the
parties' numerous post-trial motions. Dkt. 218.
Specifically, the Court denied the parties' Rule 50(b)
motions, as well as Arkon's motion for judgment as a
matter of law and motion to alter or amend the judgment.
Id. Finally, the Court denied Arkon's motion for
a new trial as to damages, conditional upon NPI accepting a
remittitur reducing the damages award in this case from $193,
598 to $167, 239.55. Id. To date, NPI has not
responded to the Court's Order or otherwise indicated
whether it accepts the remittitur in lieu of a new trial as
current motion asks the Court to enter a permanent injunction
prohibiting Arkon from infringing NPI's registered trade
dress by selling, distributing, donating, exporting, using,
transferring, or otherwise moving or disposing of the
Infringing Products (or any other products which infringe
upon NPI's registered hourglass shape trademark). Dkt.
219-1 at 2. Because Arkon would be prohibited from disposing
of the products in any manner, NPI asks the Court to further
require Arkon to “maintain records of its inventory of
Infringing Products, to be made available to NPI at its
plaintiff seeking a permanent injunction must satisfy a
four-factor test before a court may grant such relief: (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 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. eBay Inc. v.
MercExchange, LLC, 547 U.S. 388, 391, 126 S.Ct. 1837,
164 L.Ed.2d 641 (2006). See also Herb Reed Enters., LLC
v. Fla. Entm't Mgmt., 736 F.3d 1239, 1249 (9th Cir.
2013) (holding that “the traditional four-factor test
employed by courts of equity, including the requirement that
the plaintiff must establish irreparable injury in seeking a
permanent injunction” applies not only in the patent
and copyright context, but “the same principle applies
to trademark infringement under the Lanham Act.”). In
addition, the Lanham Act expressly states that courts
“have power to grant injunctions, according to the
principles of equity and upon such terms as the court may
deem reasonable, to prevent the violation of any right of the
registrant of a mark....” 15 U.S.C. § 1116(a).
the first factor of the eBay test, the Ninth Circuit
has held that “actual irreparable harm must be
demonstrated to obtain a permanent injunction in a trademark
infringement action.” Herb Reed Enterprises,
LLC, 736 F.3d at 1249. Courts have recognized that in
trademark cases, the irreparable harm may be shown through
evidence of the loss of prospective customers, goodwill, or
reputation. See e.g., Stuhlbarg Intern. Sales Co., Inc.
v. John D. Brush & Co., Inc., 240 F.3d 832, 841 (9th
respect to the second eBay factor, the plaintiff
must show that “remedies available at law, such as
monetary damages, are inadequate to compensate for the
injury.” eBay, 547 U.S. at 391. Courts have
broadly accepted the general proposition that, even after the
Supreme Court's decision in eBay, monetary
damages alone are often inadequate to remedy trademark
the third eBay factor, the court must consider and
balance “the hardships that might afflict the parties
by the grant or denial of Plaintiffs' motion for a
permanent injunction.” Metro-Goldwyn-Mayer Studios,
Inc. et al. v. Grokster, Ltd.. 518 F.Supp.2d 1197, 1220
(C.D. Cal. 2007). Specifically, the court looks at the
plaintiff's hardship if the infringing behavior does not
stop, as well as the defendant's hardship in refraining
from its infringement. See, e.g., Getty Images
(US), Inc. v. Virtual Clinics, Case No. C13-626-JLR,
2014 WL 358412 (W.D. Wash. 2014); Amini Innovation Corp.
v. KTY Intern. Mktg.,768 F.Supp.2d 1049, 1057 (C.D.
Cal. 2011). A court may ...