Blue v. Johnson
Northern District of California
Case No. 07-5370
May 9, 2008
Order Granting Plaintiff's Motion for a Preliminary Injunction
Plaintiff has filed a motion for a preliminary injunction. The motion is scheduled for hearing on May 9, 2008. Pursuant to Civil Local Rule 7-1(b), the Court finds this matter appropriate for resolution without oral argument, and hereby VACATES the hearing. Having considered the arguments of the parties and the papers submitted, and for good cause shown, the Court hereby GRANTS plaintiff's motion for a preliminary injunction.
This case involves, among other things, a trademark infringement claim brought by an author against an adult film actress who has acted under the same name. Plaintiff and counterclaim defendant Violet Blue is a “well-known and respected personality in the field of human sexuality, sexual health, and relationship education” who has worked as a “writer, lecturer, blogger, podcaster, editor, and newspaper columnist.” Amended Complaint at ¶ 17. Beginning in 1996, plaintiff began using her own name to advance her career as a machine and robotics artist, Blue Decl. at ¶¶ 4-6; Blue Decl. exs. A-D, and since 1999, plaintiff has regularly published articles on the Internet about human sexuality, erotica, and pornography. Blue Decl. at ¶¶ 11-14; Blue Decl. ex. E; McKeeman Decl. at ¶¶ 5, 6; Roche Decl. at ¶ 8; Queen Decl. at ¶ 5. Plaintiff's reputation in the field of human sexuality was such that she signed a book deal on January 17, 2001, to write a book called The Sweet Life: Stories of Sexual Fantasies and Adventures for Couples. Blue Decl. at ¶¶ 16; Blue Decl. ex. G. More recently, plaintiff has written about sex for publications such as the San Francisco Chronicle, Forbes, and O: Oprah Magazine. Blue Decl. at ¶ 2. On March 4, 2008, the U.S. Patent and Trademark Office registered “Violet Blue” as a trademark and recognized that plaintiff first used her name in commerce on May 1, 1999. Costa Decl. ex. V.
Defendant and counterclaim plaintiff Aida Mae Woffinden is an actress who has appeared in dozens of pornographic films. fn.1 Amended Complaint at ¶ 28. Defendant claims that she first used the name “Violet Blue” as a stage name at least as early as December 20, 2000. Woffinden Decl. at ¶ 3. She has since appeared in over one hundred adult films under the name “Violet Blue.” See Costa Decl. ex. D.
Sometime in late October
2006, plaintiff Blue received several communications from other journalists and
acquaintances indicating that they believed she would be appearing at the
Exotic Erotic Ball the weekend of October 28, 2006, in
The Court has the authority
to grant a preliminary injunction in the exercise of its equitable powers. See Fed.R.Civ.P. 65. As the Court is acting in equity, the
decision to enter a preliminary injunction is largely left to its discretion.
See Big Country Foods, Inc. v. Bd. of Educ. of
Requests for preliminary
injunctive relief may be satisfied by either of two sets of criteria. The
“traditional” test requires the movant to: (1)
establish a strong likelihood of success on the merits; (2) show the
possibility of irreparable injury to the plaintiff if the preliminary relief is
not granted; (3) show a balance of hardships favoring the movant;
and (4) show that granting the injunction favors the public interest. See Earth Island Inst. v.
The primary purpose of a
preliminary injunction is to preserve the status quo until the action can be
determined on its merits. Chalk v.
Plaintiff asks the Court to issue a preliminary injunction enjoining defendant from using the name “Violet Blue.” Plaintiff seeks the injunction on the basis of four different causes of action: trademark infringement, trademark dilution, violation of California Civil Code § 3344, and unfair competition. Plaintiff argues that a preliminary injunction should be granted under the alternative test discussed above because she can demonstrate probable success on the merits and irreparable injury. In addition, plaintiff argues that in the event she cannot establish probable success on the merits, the balance of hardships tips sharply in her favor. The Court will consider whether plaintiff has demonstrated probable success on the merits of each cause of action alleged, and will then consider whether plaintiff has demonstrated irreparable injury.
I. Likelihood of success on the merits
A. Trademark infringement and unfair competition
Plaintiff's first cause of
action alleges trademark infringement in violation of 15 U.S.C. § 1125; her
fourth cause of action alleges unfair competition under
1. Valid, protectable trademark
To prevail on a trademark
infringement claim, a plaintiff must show that she (1) has a “valid,
protectable trademark,” and (2) that defendant's use of the mark “is likely to
cause confusion.” Applied Info. Sciences,
Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th Cir.2007). There are three
ways for a plaintiff to show that she has a protectable trademark: “(1) [she]
has a federally registered mark in goods or services; (2)[her]
mark is descriptive but has acquired a secondary meaning in the market; or (3)[she]
has a suggestive mark, which is inherently distinctive and protectable.”
Defendant attempts to carry
this burden by arguing that because “Violet Blue” is a personal name, it is not
inherently distinctive and therefore must be shown to have acquired secondary
meaning in the market in order to be protectable. See J.
Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition, § 13.2 (4th
ed.2008). Defendant contends that although plaintiff's mark may by now
have acquired secondary meaning, defendant was actually the first to achieve
secondary meaning in the mark and therefore plaintiff's mark is not valid. 2
McCarthy on Trademarks, § 16:34 (“For secondary meaning marks, the issue of
priority and ownership is not which party first used the mark, but which party
first achieved secondary meaning in the mark.”). Secondary meaning occurs when
“in the minds of the public, the primary significance of a [mark] is to
identify the source of the product rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
personal name rule applies to the trademark “Violet Blue,” the Court finds it
unlikely that defendant will be able to meet her burden of proving that her use
of the mark was the first to achieve secondary meaning. Defendant takes the
position that she first used the stage name “Violet Blue” at the very latest in
December 2000, and that she then appeared as “Violet Blue” in “no less than
fifteen adult films during the following year 2001.” Defendant's
Opposition at 9. Plaintiff, however, has put forth substantial evidence
that her mark acquired secondary meaning prior to December 2000. Plaintiff, for
instance, has pointed to evidence showing that she began using her name as a
“machine and robotics artist” as early as 1996 up through 1999, appearing in
various events and productions in the
2. Likelihood of confusion
Next, plaintiff must
demonstrate that defendant's use of the mark is likely to cause confusion. Applied Info. Sciences, 511 F.3d at 969.
“Likelihood of confusion exists when customers viewing the mark would probably
assume that the product or service it represents is associated with the source
of a different product or service identified by a similar mark.” Fuddruckers, Inc. v. Doc's B.R. Others,
Inc., 826 F.2d 837, 845 (9th Cir.1987) (internal quotation marks omitted).
“The test for likelihood of confusion is whether a ‘reasonably prudent
consumer’ in the marketplace is likely to be confused as to the origin of the
good or service bearing one of the marks.” Dreamwerks
Prod. Group v. SKG Studio, 142 F.3d 1127, 1129 (9th
Cir.1998). The Ninth Circuit has identified eight factors to facilitate
the inquiry into likelihood of confusion. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979).
They are: (i) strength of the mark; (ii) proximity or
relatedness of the goods; (iii) similarity of sight, sound and meaning; (iv)
evidence of actual confusion; (v) marketing channels; (vi) type of goods and
purchaser care; (vii) intent; and (viii) likelihood of expansion.
Having examined the Sleekcraft factors, the Court finds that plaintiff is likely to succeed in demonstrating a likelihood of confusion. In making this finding, the Court relies primarily on the second, third, and fourth factors. The second factor looks to the proximity or relatedness of the goods. It is undisputed that plaintiff writes about human sexuality and reviews pornography. It is also undisputed that defendant acts in pornographic films. Both parties therefore use the name “Violet Blue” in relationship to goods and services that are extremely similar and, at times, overlapping. Defendant argues that the parties' goods and services are not proximate because while plaintiff promotes safe sex, defendant appears in hard-core pornography, and thus their respective fields are antithetical. The problem with defendant's argument is that it assumes a very sophisticated consumer, not a “reasonably prudent consumer” as established by the Ninth Circuit. Dreamwerks Prod. Group, 142 F.3d at 1129.
The fourth factor examines
the similarity of the marks. Here, defendant concedes that her mark is
identical to plaintiff's mark. The fifth factor, which examines whether there
is evidence of actual confusion, also weighs strongly in favor of plaintiff.
Plaintiff has put forth significant evidence of actual confusion. For example,
when reviewing plaintiff's book The Ultimate Guide to Sexual Fantasy, the adult
industry news publication AVN described the author of the book as a “porn
star,” evidently confusing plaintiff with defendant. Blue Decl. ex. I.
Plaintiff cites other examples as well: an adult video actor named “Dave
Pounder” emailed plaintiff at her San Francisco Chronicle email address
thinking she was defendant, Blue Decl. ex. L (“I'll never forget you because
you were my first scene ever ....”); a web commentator confused plaintiff with
defendant after plaintiff was named to the Forbes.com list of 25 most
influential people online, Costa Decl. ex. I; and a
Turning briefly to the other factors, the Court finds the first factor, the strength of the mark, weighs somewhat in favor of plaintiff because her trademark is registered and received no objection on the basis that the mark was descriptive. Quicksilver, Inc., 466 F.3d at 760 (“Where, as here, the PTO issues a mark registration without requiring proof of secondary meaning, the registrant ... enjoys a presumption that the purchasing public perceives the ... mark to be inherently distinctive.” (internal quotation marks omitted)). In addition, as discussed above, plaintiff can likely demonstrate that her mark has acquired secondary meaning, a circumstance that would strengthen her mark. The fifth factor weighs heavily in plaintiff's favor because it is undisputed that both parties use the same marketing channel-the Internet-to market, sell, and distribute their goods. GoTo.com, Inc., 202 F.3d at 1207 (explaining that “the Web, as a marketing channel, is particularly susceptible to a likelihood of confusion since, as it did in this case, it allows for competing marks to be encountered at the same time, on the same screen”). On this record, the Court does not find the three remaining factors to be particularly helpful, and notes that in any case they do not outweigh the balance of the other factors discussed above.
For all of these reasons, the Court finds that plaintiff has demonstrated that she will likely succeed on the merits of her trademark infringement and unfair competition claims.
B. Trademark dilution
Plaintiff also argues that a preliminary injunction should be granted because she is likely to succeed on the merits of her trademark dilution claim. Under the Federal Trademark Dilution Act,
the owner of a famous mark
that is distinctive, inherently or through acquired distinctiveness, shall be
entitled to an injunction against another person who, at any time after the
owner's mark has become famous, commences use of a mark or trade name in commerce
that is likely to cause dilution by blurring or dilution by tarnishment of the
famous mark, regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury. 15 U.S.C. § 1125(c)(1). The Ninth Circuit has explained that injunctive relief
is available under the Act if a plaintiff “can establish that (1) its mark is
famous; (2) the defendant is making commercial use of the mark in commerce; (3)
the defendant's use began after the plaintiff's mark became famous; and (4) the
defendant's use presents a likelihood of dilution of the distinctive value of
the mark.” Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165,
1180 (9th Cir.2007) (internal quotation marks omitted). The Court need
not reach each of the four elements, because the third element is dispositive.
The third element examines whether defendant's use began after plaintiff's mark
became famous. This element necessarily invokes the first element, whether the
mark is famous. The Act explains that “a mark is famous if it is widely
recognized by the general consuming public of the
Although the Court agrees with plaintiff that her trademark may well be famous now-given her widespread media recognition and prolific production of written works in both new and traditional mediums-plaintiff has not put forth sufficient evidence to demonstrate that she will probably succeed in proving that her trademark was famous prior to the time defendant began using the name Violet Blue. All of the evidence plaintiff cites in support of the famousness of her mark, such as her weekly newspaper column on the website of the San Francisco Chronicle and her recognition by Forbes magazine and the Wall Street Journal, relates to events occurring well after both December 20, 2000, the date at which defendant claims she first used the stage name “Violet Blue,” and 2001, when many adult videos were released describing defendant as “Violet Blue.” While plaintiff may have already been recognized in certain circles as a sex-positive writer and machine artist in 1999 and 2000, nothing in the record suggests that plaintiff's trademark was “widely recognized by the general consuming public,” 15 U.S.C. § 1125(c)(2)(A) (emphasis added), or was “truly prominent and renowned,” Avery Dennison Corp., 189 F.3d at 875, during those early years of her career. Accordingly, at this juncture, plaintiff is unable to demonstrate that she is likely to succeed on the merits of her trademark dilution claim.
C. California law claim for right of publicity
Plaintiff's remaining cause
of action falls under California Civil Code § 3344, which provides that “[a]ny person who knowingly uses another's name ... in any
manner, on or in products, merchandise, or goods, or for purposes of
advertising or selling, or soliciting purchases of, products, merchandise,
goods or services, without such person's prior consent ... shall be liable for
any damages sustained by the person or persons injured as a result thereof.”
The only disagreement by the parties regarding this cause of action is whether plaintiff can prove that defendant knowingly used plaintiff's name. Defendant argues that plaintiff is not likely to succeed on the merits of this claim because plaintiff cannot “show that Defendant Woffinden adopted the name Violet Blue knowingly.” Defendant's Opposition at 22. The plain language of the statute is not concerned, however, with when defendant adopted the stage name “Violet Blue”; rather, the statute addresses the use of another's name for a commercial purpose. While it is true that plaintiff has not put forth any evidence suggesting that defendant knowingly used plaintiff's name in 2000 or 2001, plaintiff can establish that defendant knowingly used plaintiff's name without plaintiff's consent at least beginning in December 2006, when the parties were in communication regarding defendant's use of the name “Violet Blue.” See Blue Decl. ex. M (emails between plaintiff and defendant). For these reasons, the Court finds that plaintiff will probably succeed on the merits of her § 3344 claim.
II. Possibility of irreparable injury
Plaintiff argues that she is entitled to a presumption of irreparable harm because she has demonstrated that there is a high probability of confusion, primarily based on various instances of actual confusion. The Court agrees. See Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 n. 3 (9th Cir.1989) (“In trademark infringement or unfair competition actions, once the plaintiff establishes a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm if injunctive relief is not granted.”); see also LGS Architects, Inc. ., 434 F.3d at 1155 (“In a copyright infringement action ... a showing of a reasonable likelihood of success on the merits raises a presumption of irreparable harm.” (internal quotation marks omitted)). Defendant's only argument in rebuttal is that plaintiff and defendant peacefully coexisted for a number of years, both using the name “Violet Blue,” before any problems or confusion arose, and that because there was no damage to plaintiff's reputation during those years, there is no possibility of harm now. What defendant does not mention, however, is that it was only recently that defendant appeared at the Exotic Erotic Ball near San Francisco, plaintiff's hometown, and only recently that the instances of actual confusion began to occur. In addition, advertisements for the October 2008 Exotic Erotic Ball already state that defendant will be appearing as “Violet Blue,” Costa Decl. ex. L, and the adult video industry continues to release videos featuring defendant as “Violet Blue,” see, e.g., Costa Decl. ex. T (video release date of March 11, 2008). There is also evidence that defendant has in recent years branched out into adult sex education by making a video about sexual intercourse during pregnancy, under the name “Violet Blue.” See Vogele Decl. ex. E. Such an expansion beyond traditional pornography obviously impedes more directly on plaintiff's areas of expertise. For these reasons, the Court finds that defendant has not overcome the presumption that plaintiff will face irreparable harm if injunctive relief is not granted.
III. Balance of hardships
Although, under the alternative test for a preliminary injunction, the Court need not address whether the balance of hardships tips in plaintiff's favor, the Court does so briefly because the parties have addressed the question. The parties dispute the ease with which defendant could change her stage name from “Violet Blue” to another name. This concern may be somewhat moot, as defendant has claimed that she does not make adult movies any longer. Woffinden Decl. at ¶ 17. The Court recognizes, however, that if defendant were to resume her adult film career, she might face some degree of economic hardship were she required to appear under a different name from the name primarily associated with her prior work. But that concern does not outweigh the hardships plaintiff faces, particularly given the actual confusion she has demonstrated and the fact that “Violet Blue” is her real name. Plaintiff's Motion at 2 n. 2. The Court finds nothing in the balance of hardships analysis to suggest that a preliminary injunction should not be issued. The Court therefore GRANTS plaintiff's motion for a preliminary injunction.
For all of the foregoing reasons, the Court GRANTS plaintiff's motion for a preliminary injunction.
fn.1. Other defendants include businesses and people involved in operating defendant Woffinden's website, www.violetblue.org. None of these other defendants has responded to plaintiff's motion. At oral argument, plaintiff's attorney informed the Court that plaintiff had settled her claims against these other defendants. This order therefore will apply only to defendant Woffinden.
fn.2. The Court also notes that it is not entirely clear whether plaintiff must prove that her mark has acquired secondary meaning. Federal law provides that a trademark cannot be registered if it consists of a mark which “is primarily merely a surname,” 15 U.S.C. § 1052(e)(4), unless it acquires secondary meaning, id. § 1052(f). “Violet Blue” consists of both a given name and a surname, and neither name may be “primarily merely a surname” because both are names of colors and have dictionary definitions. See generally Quicksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760-61 (9th Cir.2006). Moreover, Judge Posner's exegesis of the rationale for requiring proof of secondary meaning of personal names may demonstrate that the rule is not appropriately applied in this instance. See Peaceable Planet, 362 F.3d at 988-93. Further briefing on this issue is certainly required, though based on the briefing and evidence submitted thus far, the Court finds that plaintiff has demonstrated probable success on the merits.
fn.3. Many of these instances of confusion also reinforce the second factor, i.e. the proximity of the goods, as consumers may have been more likely to be confused given the work of both plaintiff and defendant in fields related to human sexuality.