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BBC Group NV LLC v. Island Life Restaurant Group LLC

United States District Court, W.D. Washington, Seattle

December 6, 2019

BBC GROUP NV LLC, a Nevada Limited Liability Company, Plaintiff, Counterclaim Defendant,
v.
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

         I. INTRODUCTION

         This 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.

         II. BACKGROUND

         A full 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.

         On 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 8.

         On 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.

         Island 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.

         III. DISCUSSION

         A. Legal Standard

         Under 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)).

         A 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).

         1. Irreparable Harm

         Circuits 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 ...


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