Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 1 of 8 Page ID #:1278
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`Present:
`
`The Honorable Philip S. Gutierrez, United States District Judge
`
`Wendy K. Hernandez
`Deputy Clerk
`
`Not Present
`Court Reporter
`
`n/a
`Tape No.
`
`Attorneys Present for Plaintiff(s):
`
`Attorneys Present for Defendant(s):
`
`Proceedings:
`
`Not Present
`Not Present
`(In Chambers) Order Granting Plaintiff’s Motion for Preliminary
`Injunction
`
`Pending before the Court is Plaintiff’s Motion for a Preliminary Injunction. The matter
`
`came on for hearing on January 11, 2010. After considering the moving and opposing papers, as
`well as oral argument, the Court GRANTS Plaintiff’s motion.
`
`I.
`
`Background
`
`Plaintiff Summit Entertainment, LLC (“Plaintiff”) claims to own a number of copyrights
`and trademarks associated with the motion picture Twilight, released in November 2008, and
`Twilight’s sequel, New Moon, released in November 2009. See Kimbrough Decl. ¶¶ 4-7.
`Plaintiff contends that Defendant Beckett Media, LLC (“Defendant”) has violated and continues
`to violate Plaintiff’s intellectual property rights in those films and related promotional materials
`by, among other things, publishing and selling two successive issues of a fan magazine (the
`“Twilight Fanzines”). See id. at ¶¶ 19-28. These Fanzines, according to Plaintiff, reproduce
`without authorization numerous images from the films, as well as trademarks and promotional
`images associated with the films. See id.
`
`More specifically, Plaintiff claims that Defendant’s Twilight Fanzines a) display without
`authorization Plaintiff’s stylized “Twilight” trademark on their covers; b) contain unauthorized
`reproductions of photographs from the films and their promotional materials, including
`photographs that are not obtainable from Plaintiff’s publicity website and photographs that have
`been altered in violation of the publicity website’s “Terms of Use”; c) contain removable posters
`that are unauthorized reproductions of Plaintiff’s Twilight-related photographs and artwork; and,
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 1 of 8
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 2 of 8 Page ID #:1279
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`d) contain unauthorized reproductions of a set of Twilight trading cards published by Plaintiff’s
`licensee. See Plaintiff’s November 10, 2009 Brief in Support of Ex Parte Application
`(“Motion”) 1:13-28. Plaintiff also contends that Defendant featured one of the offending
`Fanzine covers on its Facebook page and attempted to auction on eBay the printing plates used
`to print the Fanzine covers. See id. at 2:13-18. Finally, Plaintiff claims that Defendant recently
`announced its intention to publish additional issues of its Twilight Fanzine. See id. at 2:19-21.
`
`Based on the foregoing allegations, Plaintiff brought suit against Defendant on November
`6, 2009. The complaint asserts claims for false designation of origin under the Lanham Act,
`common law trademark infringement, dilution under the Lanham Act and Cal. Bus. & Prof.
`Code § 14330, copyright infringement, statutory and common law unfair competition, and
`breach of contract.
`
`On November 10, 2009, Plaintiff filed an ex parte application for a temporary restraining
`order (“TRO”) enjoining Defendant from, generally stated, 1) displaying any copyrightable
`subject matter related to Plaintiff’s Twilight and New Moon movies, 2) manufacturing,
`distributing, or selling any goods bearing Plaintiff’s Twilight-related trademarks or any
`confusingly similar marks, 3) falsely implying Plaintiff’s affiliation with or endorsement of
`Defendant or its products, and 4) knowingly assisting anyone else in these activities. See
`Application 1:27-2:28.
`
`On November 16, 2009, the Court denied Plaintiff’s ex parte application for a TRO,
`deemed Plaintiff’s papers to be in support of a motion for preliminary injunction, and set the
`matter for hearing on January 11, 2010. The Court now takes up the question of whether a
`preliminary injunction should issue.
`
`II.
`
`Legal Standard
`
`“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on
`the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the
`balance of equities tips in his favor, and 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, Inc., 129 S. Ct. 365, 374, 172 L. Ed. 2d 249 (2008)).
`
`III.
`
`Discussion
`
`A.
`CV-90 (06/04)
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`Likelihood of Success on the Merits
`CIVIL MINUTES - GENERAL
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 3 of 8 Page ID #:1280
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`Plaintiff need only establish a likelihood of success on the merits of its copyright and
`trademark claims to support the requested injunction. See Fin. Express LLC v. Nowcom Corp.,
`564 F. Supp. 2d 1160, 1168 (C.D. Cal. 2008) (noting that likelihood of success on plaintiff’s
`trademark infringement claim supported injunction without need to examine additional claims).
`Accordingly, the Court limits its analysis to those claims.
`
`1.
`
`Copyright Infringement
`
`To prevail on its copyright infringement claim, Plaintiff must show that it owns the works
`in question and that Defendant copied them. See Metcalf v. Bochco, 294 F.3d 1069, 1072 (9th
`Cir. 2002). Copying may be established by showing that Plaintiff’s and Defendant’s works are
`substantially similar in their protected elements and that Defendant had access to the works. Id.
`
`Plaintiff has submitted credible evidence that it owns the photographs at issue, see
`Kimbrough Decl. ¶ 17, Exs. 4-20, that the photographs in Defendant’s Twilight Fanzines are
`substantially and even strikingly similar in their protected elements to the photographs owned by
`Plaintiff, see Vaclavik Decl. ¶ 12, Ex. 6, and that Defendant had access to many of these
`photographs by virtue of their availability on Plaintiff’s publicity website and to others by virtue
`of their pervasiveness resulting from the Twilight movies’ enormous popularity, see Kimbrough
`Decl. ¶¶ 4-18, 29-30.
`
`Defendant disputes none of this. Rather, Defendant argues that many of the images in the
`Twilight Fanzines were obtained with Plaintiff’s permission from Plaintiff’s publicity website.
`See Opp. 5:22-6:5. While it is true that “the existence of a license creates an affirmative defense
`to a claim of copyright infringement,” see Worldwide Church of God v. Philadelphia Church of
`God, Inc., 227 F.3d 1110, 1114 (9th Cir. 2000), it is Defendant’s burden to show a likelihood of
`success on that affirmative defense. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146,
`1158 (9th Cir. 2007) (stating that, at preliminary injunction stage, once a plaintiff “has shown a
`likelihood of success on the merits, the burden shifts to [the defendant] to show a likelihood that
`its affirmative defenses will succeed”). Defendant has not carried that burden here since, most
`notably, Defendant makes no effort to account for its use of allegedly infringing photographs
`that were not even available on Plaintiff’s publicity website. See Kimbrough Decl. ¶ 24.
`
`Moreover, “[a] licensee infringes the owner’s copyright if its use exceeds the scope of its
`license.” S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir. 1989). Here, Plaintiff has
`presented credible evidence that Defendant’s Fanzines displayed altered versions of Plaintiff’s
`images. See Vaclavik Decl. ¶ 12, Ex. 6. Plaintiff has also presented evidence that the publicity
`CIVIL MINUTES - GENERAL
`CV-90 (06/04)
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 4 of 8 Page ID #:1281
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`website’s “Terms of Use” expressly require users to agree that they “will not edit, alter or
`modify any of the Content without Summit’s prior written approval.” See Suppl. Kimbrough
`Decl. ¶ 4, Ex. 3. Defendant offers no evidence to rebut either point. Thus, the Court finds it
`likely that Plaintiff will overcome Defendant’s “license” defense by establishing that Defendant
`impermissibly copied Plaintiff’s images beyond the scope of any license Defendant may have
`had to use those images. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir. 1989)
`(indicating that where defendant raises license defense plaintiff has burden of proving “copying”
`beyond the scope of the license).1
`
`For these reasons, then, the Court finds that Plaintiff will likely succeed on the merits of
`its copyright infringement claim.
`
`2.
`
`Trademark Infringement
`
`To succeed on its trademark infringement claim, Plaintiff must establish that 1) it has a
`valid, protectable trademark in its Twilight-related marks and 2) Defendant used, without
`authorization, a similar mark likely to cause consumer confusion, deception, or mistake.2
`Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1046 (9th Cir. 1999).
`In considering the second requirement, often referred to as the “likelihood of confusion”
`requirement, courts in the Ninth Circuit weigh the following eight factors: 1) the strength of the
`mark, 2) the proximity or relatedness of the goods, 3) the similarity of the marks, 4) evidence of
`actual confusion, 5) the marketing channels used, 6) the type of goods and the degree of care
`likely to be exercised by the purchaser, 7) the defendant's intent in selecting the mark, and 8) the
`likelihood of expansion of product lines. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-
`
`1 “The word ‘copying’ is shorthand for the infringing of any of the copyright owner’s five
`exclusive rights, described at 17 U.S.C. § 106.” S.O.S., 886 F.2d at 1085.
`
`2 Plaintiff’s claims for false designation and unfair competition turn on essentially the
`same test, namely, “whether the public is likely to be deceived or confused by the similarity of
`the marks.” See Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988);
`New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir. 1979) (“Whether
`we call the violation infringement, unfair competition or false designation of origin, the test is
`identical[:] is there a ‘likelihood of confusion’?”).
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`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 5 of 8 Page ID #:1282
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`49 (9th Cir. 1979). This list of factors is not a rigid set of requirements, but “a non-exclusive
`series of factors that are helpful in making the ultimate factual determination.” See Eclipse
`Assoc., Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir. 1990). Especially at the
`preliminary injunction stage, the court is not required to examine every one of the eight factors.
`See Apple Computer, Inc. v. Formula International, Inc., 725 F.2d 521, 526 (9th Cir. 1984).
`
`Here, Plaintiff has presented credible evidence that it owns a valid, protectable trademark
`in a stylized, block-lettered version of the word “Twilight,” see Kimbrough Decl. ¶¶ 7-9, and
`that Defendant displayed a virtually identical version of this mark in and on its Fanzines,
`including on their outside front covers and on pull-out posters. See id. at ¶¶ 19-20, 23, 25, Exs.
`22-24. Plaintiff has also presented evidence that it has licensed its “Twilight” mark for use in
`selling a seemingly endless variety of goods, including board games, bottled water, automobiles,
`and posters. See id. at ¶¶ 9, 11-18. This indicates that Plaintiff’s mark is “commercially strong,”
`see GoTo.com, 202 F.3d at 1207, and that the “relatedness of the goods” factor, too, weighs in
`Plaintiff’s favor. Defendant does not oppose Plaintiff’s evidence or argument regarding
`“likelihood of confusion.” Accordingly, the Court finds that Plaintiff is likely to succeed on the
`merits of its trademark claims.
`
`B.
`
`Irreparable Injury
`
`In copyright and trademark infringement actions, irreparable injury is presumed upon a
`showing of likelihood of success on the merits. See Marlyn Nutraceuticals, Inc. v. Mucos
`Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009); LGS Architects, Inc. v. Concordia
`Homes, 434 F.3d 1150, 1155 (9th Cir. 2006).
`
`Defendant contends, however, that Plaintiff will not suffer irreparable injury in the
`absence of a preliminary injunction here because Defendant has already voluntary ceased the
`activities Plaintiff complains of. Specifically, Defendant claims that it has 1) recalled both of its
`Fanzines and does not intend to redistribute them, 2) terminated the auction of its printing plates
`on eBay, 3) removed the offending Fanzine cover image from its Facebook page, and 4)
`abandoned its intention to publish any additional issues of its Fanzine. See Opp. 4:25-5:11.
`
`While cessation of unlawful conduct can “moot” a dispute in a manner that renders a
`preliminary injunction inappropriate, “the reform of the defendant must be irrefutably
`demonstrated and total.” See Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th
`Cir. 1986). Here, Plaintiff has submitted evidence indicating that as of December 7 and
`December 8, 2009—that is, the day Defendant’s Opposition was filed, as well as the day
`CIVIL MINUTES - GENERAL
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 6 of 8 Page ID #:1283
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`after—Defendant’s Fanzines were still widely available in Los Angeles-area retail stores and
`over the Internet. See Jones Decl. ¶¶ 3-10. Because Plaintiff has therefore failed to demonstrate
`irrefutably a total cessation of the activities complained of, the Court does not find this dispute
`moot.
`
`Finally, Defendant offers no authority to support its contention that Plaintiff’s case for
`irreparable injury fails for lack of a declaration from a “third party witness.” See Opp. 14:9-27.
`Nor is the Court aware of any such authority. The Court therefore finds that Plaintiff will suffer
`irreparable injury in the absence of a preliminary injunction.
`
`C.
`
`Balance of Hardships
`
`The real issue in evaluating the balance of hardships “is the degree of harm that will be
`suffered by the plaintiff or the defendant if the injunction is improperly granted or denied.” See
`Scotts Co. v. United Industries Corp., 315 F.3d 264, 284 (4th Cir. 2002). Plaintiff credibly
`maintains that if an injunction is improperly denied, Plaintiff’s copyrights, trademarks, and
`goodwill are at risk of being devalued by Defendant’s continuing to sale and distribute infringing
`products. If an injunction is improperly granted, on the other hand, Defendant would not appear
`to suffer substantial hardship, since the injunction would merely enforce what Defendant has
`already announced its intention to do, namely, cease all offending activity. See Levi Strauss &
`Co. v. Shilon, 121 F.3d 1309, 1314 (9th Cir. 1997) (“If [defendant] sincerely intends not to
`infringe, the injunction harms [him] little; if [he does], it gives [plaintiff] substantial protection
`of its trademarks.”). Accordingly, the Court determines that the balance of hardships favors
`granting Plaintiff’s request for a preliminary injunction.
`
`D.
`
`The Public Interest
`
`“The sole interest of the United States and the primary object in conferring the monopoly
`[of copyright protection] lie in the general benefits derived by the public from the labors of
`authors.” Elvis Presley Enterprises, Inc. v. Passport Video, 357 F.3d 896, 899 (9th Cir. 2004)
`(internal quotations omitted). “In other words,” one court recently noted, “the public receives a
`benefit when the legitimate rights of copyright holders are vindicated.” Apple Inc. v. Psystar
`Corp., 2009 U.S. Dist. LEXIS 116502, *14-15 (N.D. Cal. Dec. 15, 2009). In trademark cases,
`moreover, courts have noted that the public has a right “not to be deceived or confused.” See,
`e.g., Moroccanoil, Inc. v. Moroccan Gold, LLC, 590 F. Supp. 2d 1271, 1282 (C.D. Cal. 2008)
`(citing Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 198 (3rd Cir. 1990)).
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 7 of 8 Page ID #:1284
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`Here, the Court determines that an injunction is in the public interest because Plaintiff has
`demonstrated that its rights as a copyright holder, as well as the public’s right “not to be
`deceived or confused,” are likely being violated by Defendant’s continuing to sell, distribute,
`and display the offending Fanzines, trading cards, and posters.
`
`Because Plaintiff has established that it is likely to succeed on the merits of its claims,
`that it is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of
`equities tips in its favor, and that an injunction is in the public interest, the Court finds that a
`preliminary injunction is appropriate. See Am. Trucking Ass'ns, 559 F.3d at 1052.
`
`E.
`
`Scope of the Injunction
`
`Defendant objects to the scope of the requested injunction on the grounds that it is
`unconstitutionally overbroad. See Opposition 15:1-23. Specifically, Defendant argues that the
`injunction sought by Plaintiff would enjoin constitutionally protected use of Plaintiff’s
`copyrighted and trademarked images, including use that would meet the standards of permissible
`“fair use” of a copyrighted work as set forth in 17 U.S.C. § 107. See id.
`
`The Court agrees with Defendant. The Court therefore requires that any language
`enjoining Defendant’s use of Plaintiff’s copyrighted works (see Proposed TRO (Dkt # 5-3) ¶
`1.a.) must make express allowance for permissible “fair use” as set forth in 17 U.S.C. § 107.
`The Court also requires that any use of the term “Twilight Marks” in language enjoining
`violation of Plaintiff’s rights in such marks (see id. at ¶¶ 1.c., 1.d.) must be expressly defined. In
`particular, it should be clear whether marks other than Plaintiff’s stylized “Twilight” mark are
`contemplated, and if so, which.
`
`F.
`
`Bond
`
`Lastly, the court must consider setting bond. The district court is afforded wide
`discretion in setting the amount of the bond, Walczak v. EPL Prolong, Inc., 198 F.3d 725, 733
`(9th Cir. 1999), and the bond amount may be zero if there is no evidence the party will suffer
`damages from the injunction. See Gorbach v. Reno, 219 F.3d 1087, 1092 (9th Cir. 2000).
`
`Plaintiff argues that the bond amount here should be minimal because Defendant only
`recently started using Plaintiff’s Twilight-related intellectual property and because Defendant is
`intentionally trading on the goodwill associated with Plaintiff’s marks and copyrights, rather
`than attempting to generate any goodwill of its own. Thus, Plaintiff contends, Defendant will
`CIVIL MINUTES - GENERAL
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`Case 2:09-cv-08161-PSG-MAN Document 23 Filed 01/12/10 Page 8 of 8 Page ID #:1285
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`O
`
`Case No.
`Title
`
`CV 09-8161 PSG (MANx)
`Summit Entertainment, LLC v. Beckett Media, LLC
`
`Date
`
`January 12, 2010
`
`suffer insignificant damage as a result of the Court’s entering the requested injunction.
`Plaintiff’s suggestion: a bond of $50,000. Defendant is silent on the matter.
`
`The Court therefore finds a bond in the amount of $50,000 to be appropriate in this case.
`
`Conclusion
`
`
`IV.
`
`For the foregoing reasons, the Court grants Plaintiff’s request for a preliminary injunction
`upon the posting of a bond in the amount of $50,000. Plaintiff is directed to submit a proposed
`preliminary injunction order consistent with this order within two days of the date of entry of
`this order. Defendant is directed to file any objections within twenty-four hours of Plaintiff’s
`filing of the proposed order.
`
`IT IS SO ORDERED.
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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