Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF CALIFORNIA
`
`PROTECTMARRIAGE.COM -
`YES ON 8, a PROJECT OF
`CALIFORNIA RENEWAL,
`
`Plaintiff,
`
`NO. CIV. S-10-132 LKK/DAD
`
`O R D E R
`
`v.
`COURAGE CAMPAIGN, COURAGE
`CAMPAIGN INSTITUTE,
`Defendants.
` /
`This is a trademark dispute. Plaintiff seeks a temporary
`restraining order enjoining defendant from using the allegedly
`infringing mark. For the reasons stated below, the court concludes
`that plaintiff is unlikely to overcome the conclusion that
`defendant’s use of the mark is protected under the First Amendment,
`in that the use is relevant to an expressive parody and the use is
`not explicitly misleading. Plaintiff’s motion is therefore denied.
`I. BACKGROUND
`In 2008, the California Electorate passed Proposition 8, which
`amended the state constitution to provide that “Only marriage
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF CALIFORNIA
`
`PROTECTMARRIAGE.COM -
`YES ON 8, a PROJECT OF
`CALIFORNIA RENEWAL,
`
`Plaintiff,
`
`NO. CIV. S-10-132 LKK/DAD
`
`O R D E R
`
`v.
`COURAGE CAMPAIGN, COURAGE
`CAMPAIGN INSTITUTE,
`Defendants.
` /
`This is a trademark dispute. Plaintiff seeks a temporary
`restraining order enjoining defendant from using the allegedly
`infringing mark. For the reasons stated below, the court concludes
`that plaintiff is unlikely to overcome the conclusion that
`defendant’s use of the mark is protected under the First Amendment,
`in that the use is relevant to an expressive parody and the use is
`not explicitly misleading. Plaintiff’s motion is therefore denied.
`I. BACKGROUND
`In 2008, the California Electorate passed Proposition 8, which
`amended the state constitution to provide that “Only marriage
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 2 of 9
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`between a man and a woman is valid or recognized in California.”
`California Constitution Art. I, § 7.5. Plaintiff California
`Renewal
`is
`a
`nonprofit
`corporation
`which
`operates
`“ProtectMarriage.com - Yes on 8.” Plaintiff helped place
`Proposition 8 on the ballot, campaigned for Proposition 8’s
`passage, and has since informed the public about challenges to
`Proposition 8 and raised funds to defend against such challenges.
`Perhaps most recently, plaintiff has intervened as a defendant in
`a federal constitutional challenge to Proposition 8 currently being
`tried in the Northern District of California, Perry v.
`Schwarzenegger, 09-cv-02292.
`In all of the above activities, plaintiff has used a logo it
`refers to as the “ProtectMarriage Trademark.” This logo depicts
`four stylized silhouettes: two larger figures, one in pants and one
`in a dress, standing on either side of two smaller figures, also
`one in pants and one in a dress. Thus, the logo represents a
`heterosexual family. All four figures have their arms raised.
`This graphic is often, but not always, presented in blue, under an
`arcing banner reading “Yes on 8 Protect Marriage.” In this banner,
`the 8 is centered and in larger type. Plaintiff submits the
`following rendition:
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 3 of 9
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`Defendant is a nonprofit organization that supports a right
`to homosexual marriage. Thus, plaintiff and defendant have
`opposing views on Proposition 8. When trial in Perry v.
`Schwarzenegger began on January 11, 2010, defendant began operating
`a website dedicated to providing coverage of the trial,
`prop8trialtracker.com. Prop8trialtracker.com uses a logo
`admittedly derived from the “ProtectMarriage” logo. The
`prop8trialtracker logo also features four stylized silhouettes.
`While plaintiff’s logo depicts the “parent” figures in pants and
`a dress, both “parent” figures in defendant’s logo wear dresses,
`suggesting same-sex parents. The text in
`the banner in defendant’s logo has been
`replaced to read “Prop 8 Trial Tracker.”
`On January 19, 2010 (the day the TRO was
`filed), the image appeared on the website
`as the image to the left.
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 4 of 9
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`Defendant has filed an opposition to plaintiff’s motion. The
`court concludes that no hearing on the matter is necessary, and
`resolves the motion on the papers.1
`II. STANDARD
`Fed. R. Civ. P. 65 provides authority to issue either
`preliminary injunctions or temporary restraining orders.
`Ordinarily, a plaintiff seeking a preliminary injunction must
`demonstrate that it is “[1] likely to succeed on the merits, [2]
`that he is likely to suffer irreparable harm in the absence of
`preliminary relief, [3] that the balance of equities tips in his
`favor, and [4] that an injunction is in the public interest.” Am.
`Trucking Ass’ns v. City of Los Angeles, 559 F.3d 1046, 1052 (9th
`Cir. 2009) (quoting Winter v. Natural Res. Def. Council, 129 S. Ct.
`365, 374 (2008)). The requirements for a temporary restraining
`order are largely the same. Stuhlbarg Int’l Sales Co. v. John D.
`Brush & Co., 240 F.3d 832, 839 (9th Cir. 2001); see also Wright and
`Miller, 11A Fed. Prac. & Proc. Civ. § 2951 (2d ed.).
`In the trademark context, however, the likelihood of success
`on the merits largely determines the remaining factors. The Ninth
`Circuit has held that in trademark cases, “irreparable injury may
`be presumed from a showing of likelihood of success on the merits.”
`Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d
`873, 877 (9th Cir. 2009) (quotations omitted). This presumption
`in turn influences the balancing of hardships. Id. Finally,
`
` Because the court denies the request for a TRO, the court
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 5 of 9
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`“avoiding confusion to consumers,” the goal of trademark
`protection, is itself a public interest that is often demonstrated
`by likelihood of success. Internet Specialties West, Inc. v.
`Milon-Digiorgio Enters., 559 F.3d 985, 993 (9th Cir. 2009). Both
`Marlyn Nutraceuticals and Internet Specialties West were decided
`subsequent to Winter, and cited Winter in their analysis.
`Accordingly, the court’s analysis is limited to the first Winter
`factor.
`
`III. ANALYSIS
`Plaintiff’s complaint alleges claims under section 43(a) of
`the Lanham Act, 15 U.S.C. § 1125(a), and under California unfair
`competition and common law trademark infringement. Plaintiff’s
`motion for a temporary restraining order refers only the to Lanham
`Act trademark claim.
`“Trademark law aims to protect trademark owners from a false
`perception that they are associated with or endorse a product.”
`Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792, 806 (9th Cir.
`2003). The traditional elements of a claim for trademark
`infringement are ownership of a protectable mark and likelihood of
`confusion arising from defendant’s use of the mark. Applied Info.
`2
`Scis. Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th Cir. 2007). In
`this case, the mark is protectable in that it is suggestive and
`
` Plaintiff’s claim is “traditional” in this regard, in that
`2
`the alleged harm is likelihood of confusion. Trademark law also
`protects against other types of harm, such as dilution even when
`there is no likelihood of confusion. Plaintiff has not alleged
`such harm in the instant motion.
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 6 of 9
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`thus inherently distinctive. Id. at 970. While the mark is
`unregistered, registration is not a prerequisite to suit. Two
`Pesos v. Taco Cabana, 505 U.S. 763, 768 (1992). Plaintiff’s prior
`public use of the mark indicates plaintiff’s ownership thereof.
`Sengoku Works v. RMC Int’l, 96 F.3d 1217, 1219 (9th Cir. 1996).
`The second element of a claim for infringement is the
`likelihood of confusion as to the source, sponsorship, or approval
`of the allegedly infringing product. Dr. Seuss Enters., L.P. v.
`Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997). One
`way to negate the element of confusion is to show that the
`allegedly infringing mark is a parody of the original mark, and
`that this parody is unlikely to show confusion. Id. The Ninth
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`Circuit has explained that for this reason, parody is not
`technically a defense to a trademark infringement claim. Id., see
`also Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776
`F. Supp. 1454, 1462 (W.D. Wash. 1991); but see E.S.S. Entm’t 2000,
`Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008)
`(implicitly treating parody as a defense).
`The Ninth Circuit cases on the issue concern “artistic”
`parodies of trademarks. Rock Star Videos, 547 F.3d at 1099,
`Walking Mt. Prods., 353 F.3d at 807, Mattel, Inc. v. MCA Records,
`296 F.3d 894, 900 (9th Cir. 2002). Under a test borrowed from the
`
` In this regard, the Lanham Act is unlike the Copyright Act.
`3
`The Copyright Act includes a specific statutory provision defining
`“fair use” as non-infringing, 17 U.S.C. § 107, and this statutory
`provision protects parody. Campbell v. Acuff-Rose Music, 510 U.S.
`569 (1994).
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 7 of 9
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`Second Circuit, an artistic work’s use of a mark does not violate
`the Lanham Act unless the use “has no artistic relevance to the
`underlying work whatsoever” or the use “explicitly misleads as to
`the source or the content of the work.” Walking Mt. Prods., 353
`F.3d at 807 (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir.
`1989)). The Ninth Circuit has taken “no relevance” literally.
`Rock Star Videos, 547 F.3d at 1100. Thus, a video game’s use of
`a strip club’s trademark logo was entitled to First Amendment
`protection even though the video game was not primarily “about” the
`club, and was instead “about,” at most, the club’s neighborhood.
`Id.
`
`In this case, the logo itself is artistic. Moreover, the
`broader website, while perhaps not artistic, is undeniably
`expressive of a political idea, and both political and artistic
`expression are protected by the First Amendment. Rock Star Videos,
`547 F.3d at 1099 (parody defense rooted in the First Amendment).
`Defendant’s use of the mark has relevance to the expressive
`message, namely, support for homosexual marriages, and
`specifically, opposition to recent California efforts to limit the
`right to such marriages. This support is expressed by the
`modification of the “father” figure in the original mark to depict
`a second “mother.” Further, the mark does not explicitly mislead
`as to the source of the work. Any potential for confusion or
`misdirection is obviated by the images and text that uniformly
`accompany defendant’s use of the mark, namely, photos of homosexual
`couples together with text explicitly endorsing homosexual
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 8 of 9
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`marriage. C.f. Rogers, 875 F.2d at 999-1000 (discussing
`circumstances that might constitute explicit misdirection).
`Plaintiff is unlikely to succeed in showing that a visitor to the
`prop8trialtracker website is likely to be confused as to whether
`plaintiff is affiliated with the site. Rock Star Videos, 547 F.3d
`at 1100.
`The court further notes that the four parody cases relied upon
`by plaintiff all concerned cases in which a protected mark was used
`to sell a product. Hard Rock Cafe Licensing Corp. v. Pacific
`Graphics, Inc., 776 F. Supp. 1454 (W.D. Wash. 1991) (“Hard Rain
`Cafe” t-shirts), Nabisco Brands, Inc. v. Kaye, 760 F. Supp. 25 (D.
`Conn. 1991) (“A.2” steak sauce), Mutual of Omaha Ins. Co. v.
`Novak, 648 F. Supp. 905, 907 (D. Neb. 1986) (“mutant of Omaha”
`shirts and other items), Gucci Shops, Inc. v. R. H. Macy & Co., 446
`F. Supp. 838 (S.D.N.Y. 1977) (“Gucchi Goo” diaper bags). Plaintiff
`provides no indication of similar economic activity here.
`When use of a trademark is a protected parody under the Rogers
`rule, further analysis of the trademark infringement is
`unnecessary. Rock Star Videos, 547 F.3d at 1098, 1101.
`Alternatively, even if Rogers does not apply to this case, it
`appears that the text and images that uniformly accompany
`defendant’s use of the mark are sufficient to dispel any possible
`consumer confusion. For these reasons, plaintiff is unlikely to
`succeed on the merits of its trademark infringement claim.
`IV. CONCLUSION
`For the reasons stated above, plaintiff’s motion for a
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`Case 2:10-cv-00132-LKK-DAD Document 15 Filed 01/20/10 Page 9 of 9
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`temporary restraining order is DENIED.
`IT IS SO ORDERED.
`DATED: January 20, 2010.
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