Opinion
Civil No. 03-6173 (PAM/RLE).
December 22, 2004
MEMORANDUM AND ORDER
On November 19, 2004, the Court declared Plaintiff owner of the disputed marks. However, the Court did not grant a permanent injunction and sought supplemental briefing on that issue. Based on the submissions of the parties, the Court grants a permanent injunction accordingly.
BACKGROUND
Plaintiff Lutheran Association of Missionaries and Pilots, Inc. ("LAMP-Canada") and Defendant Lutheran Association of Missionaries and Pilots, Inc. ("LAMP-US") operated a joint venture from 1985 to 2000. Throughout this joint venture, both parties solicited donations to benefit their joint ministry. In 2000, differences forced the joint venture to disaffiliate. Nevertheless, both entities continued to use the same "LAMP" acronym, use the same airplane graphic logo, and distribute a newsletter named the "LAMPlighter." In 2003, this litigation ensued.
In November 2003, both parties sought to obtain a preliminary injunction, prohibiting the other party from using the disputed marks. The Court denied both motions because the record was underdeveloped as to trademark ownership. In November 2004, the Court reached the merits of this dispute and determined that LAMP-Canada was the owner of the disputed marks. However, the Court refrained from granting an injunction, because the scope of such relief had not been briefed before the Court.
LAMP-Canada requests that the Court enter an injunction that immediately prohibits LAMP-US from using any of the disputed marks. LAMP-Canada further requests that LAMP-US, and "its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation" be prohibited from using the marks "or any similar mark thereto or likely to cause confusion" or from "committing any other act likely to cause confusion, mistake or deception with plaintiff."
LAMP-US requests that the Court enter a delayed injunction, granting LAMP-US thirty days to cease all use of the airplane graphic logo and the "LAMPlighter" name, and six months to eliminate all use of the "LAMP" name in the "solicitation of funds or in the provision of services related to its charitable mission." During these six months, LAMP-US proposes that the injunction permit LAMP-US to use the name "LAMP-US" and require it to include a disclaimer indicating that LAMP-US is not associated with LAMP-Canada.
DISCUSSION
A. Standard of Review
An injunction may be granted only if the moving party can demonstrate: (1) a likelihood of success on the merits; (2) that the balance of harms favors the movant; (3) that the public interest favors the movant; and (4) that the movant will suffer irreparable harm absent the injunction. Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 113 (8th Cir. 1981). Injunctive relief is considered to be a "drastic and extraordinary remedy that is not to be routinely granted." Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993). Neither party disputes that an injunction is an appropriate remedy in this case. However, the parties dispute the scope of the injunction.
B. Scope of the Injunction
The Court has discretion to tailor an injunction to the harm that it addresses. See Hartford-Empire Co. v. United States, 323 U.S. 386, 409-10 (1945); see generally J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30:3. In formulating the injunction, courts should evaluate factors including the nature of the interest to be protected, nature and extent of the wrongful conduct, relative adequacy to the plaintiff of an injunction and other remedies, relative harm likely to result to defendant's legitimate interests from injunction, interests of third parties and the public, any unreasonable delay by plaintiff in pursuing the litigation, any related misconduct by plaintiff, and the practicality of framing and enforcing the injunction. See Restatement (Third) of Unfair Competition § 35 (1995). LAMP-Canada and LAMP-US dispute three terms of the injunction: (1) when LAMP-US must cease all infringing use; (2) who is bound by the injunction; and (3) what activities are within the scope of the injunction.
1. Time injunction takes effect
LAMP-US has represented that it has stopped using the airplane graphic logo and the "LAMPlighter" name. However, LAMP-US continues to use the "LAMP" acronym and requests six months to phase out this use. LAMP-US submits that this phase out period is necessary to educate its donors about the name change. LAMP-Canada wants the injunction to take effect immediately. The Court agrees with LAMP-US. LAMP-US has the burden to educate its donors as to its name change. The Court further orders the parties to stipulate to a disclaimer to be distributed to donors that distinguishes between the two organizations. Avoiding donor confusion is of primary importance, and a disclaimer is an appropriate remedy to avoid such confusion. See Restatement (Third) of Unfair Competition § 35 ("If the defendant has acted in good faith and prospective purchasers can be adequately protected by disclaimers or other limited relief, or if a broad prohibition would seriously inhibit legitimate competition, the scope of the injunction may be appropriately narrow").
Thus, because one month has passed since the Court's November 2004 Order, and based on LAMP-US's affirmative efforts to discontinue infringing use, LAMP-US has twenty days from the date of this Order to cease using the airplane graphic logo and the "LAMPlighter" name. LAMP-US further must cease all use of the "LAMP" acronym by June 1, 2005. In the interim, all use of the "LAMP" acronym must be accompanied with "US" and it must include a disclaimer as stipulated by the parties.
2. Parties bound by the Injunction
LAMP-Canada contends that the injunction should apply to LAMP-US and "its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with it." LAMP-US contends that such language is unnecessary and redundant, in light of the injunction's prohibitions. LAMP-Canada submits that LAMP-US's Canadian counterpart, MPI, is not bound by the terms of the injunction unless this language is included. Although the Court believes that such language is somewhat unnecessary, the Court nonetheless will include this language in the injunction as a precautionary measure to reduce the possibility of consumer confusion.
3. Prohibited activities
LAMP-Canada seeks to prohibit LAMP-US from (1) using the disputed marks "or any mark similar thereto or likely to cause confusion therewith in the solicitation of funds or the providing of services related to its charitable mission," and (2) "committing any other act likely to cause confusion, mistake or deception with plaintiff." Indeed, LAMP-Canada formats its language in accord with that included in a learned trademark treatise. See McCarthy, supra § 30:12. LAMP-US argues that this language is unnecessarily vague and overly broad, and that such an injunction would "make it difficult if not impossible for LAMP-US to continue raising funds for its mission." (LAMP-US Mem. in Opp'n at 6.)
As noted above, the Court has the discretion to tailor the injunction to the facts of the case. LAMP-US relies on Calvin Klein Cosmetics Corporation v. Parfums de Coeur, Ltd., to support its position. 824 F.2d 665 (8th Cir. 1987). In Calvin Klein, the Eighth Circuit upheld the district court's injunction, but vacated the portion of the injunction that required the defendant to "obey the law." Id. at 669. "Broad language in an injunction that essentially requires a party to obey the law in the future is not encouraged." Id. However, in this case, the proposed language preventing LAMP-US from using "any mark similar thereto or likely to cause confusion" does not require LAMP-US to "obey the law," but rather seeks to keep LAMP-US a "safe distance" from the perimeter of future infringement. See Broderick Bascom Rope Co. v. Manoff, 41 F.2d 353, 354 (6th Cir. 1930) (discussing "safe distance" rule in context of trademarks). Thus, this language is not vague or overly broad.
However, LAMP-Canada's proposed language that prohibits LAMP-US from "committing any other act likely to cause confusion, mistake, or deception" is vague and overly broad. The Court finds that this language is more akin to that vacated in Calvin Klein. Furthermore, the Court's November 2004 Order found LAMP-US liable for trademark infringement for LAMP-US's use of the three disputed marks, and the proposed language is more applicable in the context of unfair competition. To prohibit LAMP-US from "committing any other act" may ultimately require LAMP-US "to guess at what kind of conduct would be deemed trademark infringement" and therefore exceeds the scope of the Court's November 2004 Order. Calvin Klein, 824 F.2d at 669. Thus, the Court will exclude this language from the injunction.
C. Additional Issues
LAMP-Canada also submits that the Court should determine ownership of the donor list used by LAMP-US. However, the Court believes that adjudication on that issue is more appropriate in the forthcoming briefing on additional issues. The Court thus defers any ruling on those issues until briefing is complete.
LAMP-US also seeks to strike various affidavits that accompanied LAMP-Canada's initial brief. The Court will likewise defer any ruling on these issues until the forthcoming briefing is complete.
CONCLUSION
Accordingly, IT IS HEREBY ORDERED that:
1. This Court has jurisdiction over the parties and the subject matter;
2. The following trademarks:
a. The airplane graphic logo herein shown;
b. The name "LAMPlighter";
c. And the name "LAMP"; are valid common law trademarks owned by Plaintiff LAMP-Canada;
3. Defendant LAMP-US has infringed the above-identified marks;
4. Defendant LAMP-US and its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with it are hereby forever enjoined from using the above-identified marks or any other mark similar thereto or likely to cause confusion therewith in the solicitation of funds or in the provision of services related to its charitable mission;
5. Defendant LAMP-US is ordered to cease all use of the airplane logo and the name "LAMPlighter" in the solicitation of funds or in the provision of services related to its charitable mission within twenty (20) days after the issuance of this Order;
a. Defendant LAMP-US is required to file with the Clerk of this Court and serve on Plaintiff LAMP-Canada, a report in writing, under oath, setting forth in detail the manner and form in which Defendant LAMP-US has complied with the foregoing by February 15, 2005;
6. Defendant LAMP-US is ordered to cease all use of the name "LAMP" in the solicitation of funds or in the provision of services related to its charitable mission by June 1, 2005. During that time, Defendant LAMP-US may not use the name "LAMP" alone to identify itself or services but may identify itself as "LAMP-US." Defendant LAMP-US, in conjunction with Plaintiff LAMP-Canada, must create and stipulate to a disclaimer that distinguishes between Plaintiff LAMP-Canada's and Defendant LAMP-US's organizations. This disclaimer must accompany Defendant LAMP-US's use of "LAMP-US";
a. Defendant LAMP-US is required to file with the Clerk of this Court and serve on Plaintiff LAMP-Canada, a report in writing, under oath, setting forth in detail the manner and form in which Defendant LAMP-US has complied with the foregoing. by July 1, 2005;
7. Destruction of infringing materials need not occur until thirty (30) days after this Order becomes final following any appeal thereof.