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BBC Group NV LLC v. Island Life Restaurant Group LLC

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

December 19, 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 DENYING COUNTERCLAIM PLAINTIFF ISLAND LIFE'S MOTION FOR RECONSIDERATION

          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 Reconsideration. Dkt. #90. On December 6, 2019, this Court granted in part Island Life's Motion for Permanent Injunction. Dkt. #84. Island Life now asks the Court to reconsider its decision. The Court has determined that response briefing from Counterclaim Defendant BBC GROUP NV LLC (“BBC”) is unnecessary. See Local Rules W.D. Wash. LCR 7(h)(3).

         II. BACKGROUND

         A full background of this case is not necessary for the purposes of this Motion. In its previous Order, the Court permanently enjoined BBC from using the unregistered “BOK BOK” mark, or any variation or derivative of that spelling, in Washington state or as part of a domain name, email account, or social media handle. Dkt. #84 at 12.

         Island Life now requests reconsideration as to the geographic scope of the permanent injunction, arguing that the Court should have issued a nationwide injunction instead of limiting it to Washington. Dkt. #90 at 2-4. Island Life also requests reconsideration of the Court's decision not to issue an injunction that would bar BBC from acquiring the third-party “BOCBOC Chicken Delicious” mark from Mr. Guang Li. Id. at 5-7.

         III. DISCUSSION

         A. Legal Standard

         “Motions for reconsideration are disfavored.” Local Rules W.D. Wash. LCR 7(h)(1). “The court will ordinarily deny such motions in the absence of a showing of manifest error in the prior ruling or a showing of new facts or legal authority which could not have been brought to its attention earlier with reasonable diligence.” Id.

         Island Life argues that this Court committed manifest error by (1) limiting the geographic scope of the injunction to Washington state; and (2) declining to enjoin BBC from obtaining a licensing agreement for the “BOCBOC Chicken Delicious” mark. Dkt. #90 at 2-7. The Court will address each argument in turn.

         B. Geographic Scope of Permanent Injunction

         First, Island Life argues that the Court erred in limiting the geographic scope of the injunction to Washington state. Island Life contends that an injunction restricted to Washington is a “per se abuse of discretion” because it fails to make BBC's willful trademark infringement unprofitable and fails to adequately protect Island Life. Dkt. #90 at 3. In support of its argument, Island Life relies on the language of Section 1116 of the Lanham Act, which provides a court with the “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 registered in the Patent and Trademark Office.” 15 U.S.C. § 1116(a)). Island Life also relies on two Ninth Circuit cases discussing the purpose of the Lanham Act and proper judicial remedies. Dkt. #90 at 2-3. See Playboy Enterprises, Inc. v. Baccarat Clothing Co., 692 F.2d 1272, 1275 (9th Cir. 1982) (“In addition to the harm caused the trademark owner, the consuming public is equally injured by an inadequate judicial response to trademark infringement.”); see also Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 122-23 (9th Cir. 1968) (“[T]he courts must, as was recognized in the legislative history of the [Lanham] Act quoted above, make acts of trade-mark infringement, or at the very least acts of deliberate trade-mark piracy, unprofitable.”).

         Under Island Life's reasoning, the fact that it prevailed on its infringement claim automatically entitles it to a nationwide injunction regardless of whether it can show actual harm. However, Island Life's argument was foreclosed by the 2013 Herb Reed decision, wherein the Ninth Circuit stated: “[A]ctual irreparable harm must be demonstrated to obtain a permanent injunction in a trademark infringement action . . . [g]one are the days when once the plaintiff in an infringement action has established a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm if injunctive relief does not issue.” Herb Reed Enterprises, LLC v. Fla. Entm't Mgmt., Inc., 736 F.3d 1239, 1249-50 (9th Cir. 2013) (emphasis added) (internal quotations omitted). See also LG Corp. v. Huang, 2017 WL 476539, at *11 (S.D. Cal. Feb. 6, 2017) (“Although irreparable harm was once presumed in meritorious trademark infringement actions, irreparable harm now must be demonstrated to obtain a permanent injunction in a trademark infringement action.”) (internal quotations omitted); Anhing Corp. v. Thuan Phong Co. Ltd., 2015 WL 4517846, at *5 (C.D. Cal. July 24, 2015) (“A district court may not assume irreparable harm merely upon a showing of infringement.”). Island Life provides no case law holding otherwise. On the contrary, it makes no mention of Herb Reed or any cases that followed it. On this basis alone, Island Life has failed to demonstrate manifest error in the Court's decision.

         Next, Island Life argues that the Court's broad equity powers allow it to act preemptively before “specific damage has occurred in each specific state.” Dkt. #90 at 4. It relies on case law discussing the power of courts to “go much farther both to give and withhold relief in furtherance of the public interest” when crafting equitable remedies. Id. at 3 (quoting United States v. Coca-Cola Bottling Co. of Los Angeles, 575 F.2d 222, 228 (9th Cir. 1978)). Similarly, it argues that the geographic scope is improperly narrow because it forces Island Life to repeatedly file suit any time BBC infringes on its trademark rights in the future. Id. at 4 (citing T-Mobile USA, Inc. v. Terry, 862 F.Supp.2d 1121, 1133 (W.D. Wash. 2012)). In denying Island Life a nationwide injunction, Island Life argues, the Court has rendered Island Life's rights under the Lanham Act ...


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