United States District Court, W.D. Washington, Seattle
BBC GROUP NV LLC, a Nevada Limited Liability Company, Plaintiff, Counterclaim Defendant,
ISLAND LIFE RESTAURANT GROUP LLC, et al., Defendants, Counterclaim Plaintiffs.
ORDER GRANTING IN PART COUNTERCLAIM PLAINTIFF ISLAND
LIFE'S MOTION FOR PERMANENT INJUNCTION
RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE
matter comes before the Court on Counterclaim Plaintiff
Island Life Restaurant Group, LLC (“Island
Life”)'s Motion for Permanent Injunction. Dkt. #77.
Counterclaim Defendant BBC GROUP NV LLC (“BBC”)
opposes. Dkt. #80. The Court held oral argument on this
motion on December 4, 2019. Dkt. #83. Having reviewed the
relevant briefing, the exhibits attached thereto, and the
remainder of the record, the Court GRANTS IN PART Island
Life's Motion for Permanent Injunction.
background of this case is not necessary given this
Court's previous order ruling on the merits of Island
Life's claims against BBC. Dkt. #65.
March 28, 2019, this Court partially granted Island
Life's motion for preliminary injunction and enjoined BBC
from expanding into western Washington during the pendency of
this action. Dkt. #35. The Court found that Island Life would
likely suffer substantial and irreparable harm in the form of
customer confusion, loss of goodwill, vendor confusion and
lost profits unless BBC was enjoined from using the name
“BOK BOK” in western Washington. Id. at
September 20, 2019, this Court dismissed all of BBC's
claims against Island Life and granted summary judgment on
Island Life's counterclaims under the Lanham Act, 15
U.S.C. §§ 1114, 1125. Dkt. #65 at 2. In finding
actual confusion between the “BOK BOK” and
“Bok a Bok” marks, the Court acknowledged that
both parties maintain an active Internet presence that
“has led to misdirected emails from marketers, vendors,
and potential employees.” Id. at 18-19. The
Court also noted BBC's repeated intention to expand its
restaurant chain nationwide, including into California and
Washington. Id. at 19. However, the Court declined
to address the issue of a permanent injunction against BBC
without further briefing from the parties. Id. at
21-22. The Court will now consider the issue.
Life requests a permanent injunction that enjoins BBC from
three activities: (1) nationwide use of the unlicensed
“BOK BOK” mark and “any other name that
includes this chicken sound, ” including but not
limited to “BOC BOC” and “BOQ BOQ”;
(2) use of “bokbokchicken” as a domain name for
websites or for email or social media accounts; and (3)
acquiring any rights to use the third-party “BOCBOC
Chicken Delicious” mark, including requesting or
accepting help from the current owner of the third-party
mark, Mr. Guang Li. Dkt. #77 at 18.
15 U.S.C. § 1116(a) of the Lanham Act, district courts
may “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 registered in the Patent and Trademark Office or to
prevent a violation under subsection (a), (c), or (d) of
section 1125 of this title.” In deciding whether to
grant permanent injunctive relief, district courts apply
traditional principles of equity. Herb Reed Enters., LLC
v. Fla. Entm't Mgmt., 736 F.3d 1239, 1249 (9th Cir.
2013) (quoting eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388, 391 (2006)).
plaintiff seeking a permanent injunction must demonstrate
four factors: (1) it has suffered an irreparable injury; (2)
remedies available at law, such as monetary damages, are
inadequate to compensate for that injury; (3) considering the
balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) the public interest
would not be disserved by a permanent injunction. Reno
Air Racing Ass'n., Inc. v. McCord, 452 F.3d 1126,
1138 (9th Cir. 2006). The court must conduct “a fair
weighing of the factors listed above, taking into account the
unique circumstances of each case, ” and
“consider the totality of circumstances bearing on
whether a permanent injunction is appropriate equitable
relief.” La Quinta Worldwide LLC v. Q.R.T.M., S.A.
de C.V., 762 F.3d 867, 880 (9th Cir. 2014).
are split on whether a finding of infringement automatically
presumes irreparable harm. See Dkt. #77 at 11.
However, the Ninth Circuit's controlling precedent in
Herb Reed makes clear that in this Circuit, the fact
of infringement itself is not sufficient to show irreparable
harm-the infringement must somehow cause injury. Active
Sports Lifestyle USA, LLC v. Old Navy, LLC, No. SACV
12-572 JVS EX, 2014 WL 1246497, at *2 (C.D. Cal. Mar. 21,
2014) (citing Herb Reed Enters., 736 F.3d at
1250-51); see also San Miguel Pure Foods Co. v. Ramar
Int'l Corp., 625 Fed.Appx. 322, 327 (9th Cir. 2015)
(“Irreparable harm may not be ...