Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`ELIAS KIFLE,
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`Plaintiff,
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`v.
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`YOUTUBE LLC, et al.,
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`Case No. 21-cv-01752-CRB
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`
`ORDER DENYING AMENDED
`MOTION FOR TEMPORARY
`RESTRAINING ORDER AND
`PRELIMINARY INJUNCTION
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`Defendants.
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`Pro se Plaintiff Elias Kifle is suing Defendants YouTube LLC and Paypal, Inc. for
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`copyright infringement, trademark infringement, and breach of contract. See Second
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`Amended Complaint (SAC) (dkt. 33). His claims arise from YouTube’s termination of
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`Kifle’s YouTube channel and other users’ subsequent display of Kifle’s videos on
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`YouTube without Kifle’s permission. Id. at 3–4. Kifle now seeks a temporary restraining
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`order and preliminary injunction “to restrain Defendants from allowing the copying,
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`reproducing, uploading, displaying, or distributing of [Kifle]’s copyrighted and protected
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`marks on their websites.” Amend. Mot. for TRO (dkt. 31) at 1–2. He also asks the Court
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`to “restore” his channel “and its automated copyright tools.” Id. at 26. The Court
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`concludes that there is no need for oral argument. The Court denies Kifle’s motion
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`because the grounds for relief raised in his motion are not likely to succeed on the merits,
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`and Kifle has failed to raise serious questions going to the merits.
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`I.
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`BACKGROUND
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`A.
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`Procedural History
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`On January 14, 2021, Kifle sued YouTube in the U.S. District Court for the
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`Northern District of Georgia. See Complaint (dkt. 1). On February 16, 2021, Kifle moved
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`Northern District of California
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`United States District Court
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`Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 2 of 13
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`for a TRO and a preliminary injunction. See First Mot. for TRO (dkt. 11). YouTube
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`moved to transfer the case to this Court or, in the alternative, to dismiss the case for failure
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`to state a claim. See Mot. to Transfer (dkt. 15). Kifle then moved for leave to file an
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`amended complaint. See Mot. to File Amend. Compl. (dkt. 17). On March 12, 2021, the
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`Northern District of Georgia granted Kifle leave to amend his complaint and evaluated
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`YouTube’s motion to transfer based on the Amended Complaint’s allegations. See Order
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`Granting Mot. to Transfer (dkt. 24) at 3–4. The Northern District of Georgia granted
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`YouTube’s motion to transfer. Id. at 7–9.
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`On March 16, 2021, this Court set a briefing schedule regarding Kifle’s first motion
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`for a TRO and preliminary injunctive relief, see Order re Mot. for TRO (dkt. 29), and
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`YouTube filed an opposition to the motion, see First Opp. (dkt. 30). Kifle then moved for
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`leave to file a second amended complaint and an amended motion for a temporary
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`restraining order. See Amend. Mot. for TRO (dkt. 31); Mot. for Leave to File SAC (dkt.
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`32). The Court granted Kifle leave to file a second amended complaint and an amended
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`motion for a TRO. See Order Denying TRO, Granting Leave to File SAC (dkt. 35). The
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`court also denied Kifle’s initial motion for a temporary restraining as moot and set a
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`briefing schedule regarding Kifle’s amended motion. See id.1
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`B.
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`SAC Allegations
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`The SAC alleges that Kifle owns the “Mereja.tv website and Mereja TV satellite
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`television channel.” SAC (dkt. 33) ¶ 6. Between January 2016 and November 2020, Kifle
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`operated a “parallel” YouTube channel that livestreamed his television program, displayed
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`approximately 2,500 videos, and had 220,000 subscribers. Id. ¶¶ 9, 17. Kifle’s channel
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`was successful enough that YouTube invited Kifle to participate in a “Publishing Partner
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`1 Kifle then moved for leave to file a supplemental brief containing new allegations in support of
`his amended motion for a TRO. See Mot. to File Supp. Br. (dkt. 39). The Court denied the
`motion for leave to file a supplemental brief and explained that Kifle could either proceed with his
`amended motion based on the allegations in the SAC or move to file yet another amended
`complaint based on whatever new allegations he wished to add. See Order Denying Mot. to File
`Supp. Br. (dkt. 41) at 2. Kifle has not moved for leave to file a third amended complaint, and the
`parties have now fully briefed his amended motion for a TRO.
`2
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`Northern District of California
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`United States District Court
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`Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 3 of 13
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`Program,” giving Kifle access to certain special features. Id. ¶¶ 74, 77.
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`On November 9, 2020, YouTube “abruptly terminated the livestream” and on
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`November 11, 2020, YouTube “terminated” the YouTube channel and removed all videos
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`on it. Id. ¶ 9. Kifle alleges that when YouTube took down his channel, the channel “was
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`fully in compliance” with YouTube’s terms of service. Id. ¶ 20. YouTube did not provide
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`Kifle with an explanation for terminating the channel. Id. ¶ 9. But in its opposition to the
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`instant motion, YouTube explains that YouTube had suspended another user, Zemedkun
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`Bekele, for posting content that promoted violence, hate speech, and harassment. Opp.
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`(dkt. 46) at 3 (citing Zhu Decl. (dkt. 46-2) ¶¶ 8–11). YouTube then observed that “videos
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`of Bekele were still being uploaded to YouTube on other channels,” including Kifle’s
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`channel, “in violation of YouTube’s anticircumvention policy.” Id. (citing Zhu Decl.
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`¶¶ 12–16).2
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`1.
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`Copyright Allegations
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`The SAC provides conflicting information regarding what happened next. For
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`example, it states that starting “[r]ight after” Kifle’s YouTube channel was terminated,
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`YouTube allowed “all of” his videos to be displayed on YouTube “without his
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`permission.” SAC ¶ 9. But the SAC later alleges that YouTube users “infringed at least
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`256 of [Kifle]’s copyrighted works and protected marks.” Id. ¶ 13(7). Either way, Kifle
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`has alleged that a number of YouTube users began posting his content without permission.
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`The SAC provides screenshots purporting to show these videos. See id. ¶¶ 21, 22.
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`Although YouTube has a “repeat-infringer policy that provides for the termination
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`of users who receive 3 copyright strikes,” and copyright strikes include “when YouTube
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`receives a valid takedown notice” regarding a user’s channel, Kifle alleges that YouTube
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`did not enforce this policy against users posting Kifle’s videos. Id. ¶ 27. Kifle sent
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`YouTube email notices containing URLs for over 250 allegedly infringing videos, but
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`2 Kifle’s reply states that Bekele “appears only in 10” of Kifle’s videos, and that “a simple request
`to [Kifle] would have resolved the issue,” but does not otherwise dispute YouTube’s statements
`regarding Bekele’s appearances in videos on Kifle’s channel. Reply (dkt. 47) at 2.
`3
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`Northern District of California
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`United States District Court
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`Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 4 of 13
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`YouTube “ignored” Kifle’s emails at first. Id. ¶¶ 24–25.3 On November 27, 2020, Kifle
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`complained to YouTube that YouTube was not acting on his video takedown requests. Id.
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`¶ 33. YouTube responded by telling Kifle to submit his claims via a specific form on
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`YouTube’s website, but when Kifle explained that he could not access the form due to his
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`channel’s termination, YouTube did not respond. Id. ¶ 34.
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`The SAC notes that YouTube “belatedly” removed “some of the infringing content”
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`on March 18, 2021. Id. ¶ 41. According to YouTube, YouTube has now removed “dozens
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`of videos in response to [Kifle]’s requests and all but two of the more than 250 allegedly
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`infringing videos identified in the SAC were not available on YouTube as of April 5,
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`2021.” Opp. at 4 (citing Zhu Decl. ¶¶ 32–34). Further, Kifle has “retracted his claims of
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`copyright infringement against the two remaining videos.” Id. (citing Zhu Decl. ¶¶ 34–
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`36). Kifle disputes this to the extent that at least one allegedly infringing video mentioned
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`in the SAC remained on YouTube as of the date he filed his reply brief. See Reply at 3.
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`Of the allegedly infringing videos, a portion (71) consist of Kifle’s television
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`broadcasts that were “simultaneously transmitted” on YouTube by other users. SAC ¶ 39.
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`Although Kifle sent YouTube “48-hour advance notices before the live broadcasts,”
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`YouTube took no action until recently. Id.
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`As to both the prerecorded videos and the simultaneously transmitted broadcasts,
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`Kifle has not alleged that he obtained valid copyright registrations before filing this
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`lawsuit. He alleges that he has since registered one of his live broadcasts, after initiating
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`this lawsuit but before filing the SAC. See id. ¶ 21; SAC Ex. 1 (dkt. 33-2) at 3; Opp. at 8;
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`Reply at 3–4.
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`2.
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`Trademark Allegations
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`Kifle also alleges that “[t]he trademark ‘Mereja TV’ and logo are unique marks that
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`3 The SAC lists nine YouTube channels that Kifle characterizes as “repeat infringers[,] having five
`or more videos and marks that have been illegally copied from [Kifle]’s website.” SAC ¶ 29. In
`at least one instance, although a YouTube user removed one of Kifle’s videos “when YouTube
`started cracking down on March 18, 2021,” YouTube did not terminate the infringer’s channel.
`Id. ¶ 23.
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`Northern District of California
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`identify [Kifle]’s website, television channel, and videos.” SAC ¶ 55. The word “Mereja”
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`means “information.” See Opp. at 12. Kifle also refers to his television show title (“ነጭ
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`ነጯን ከዘመዴ ጋር,” which translates to “The Facts with Zemede”) as a “mark.” SAC ¶ 56.
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`Kifle alleges that he “owns” a “pending U.S. federal trademark application for Mereja
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`TV,” and both the Mereja TV logo and his show title are “clearly displayed on all his
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`works.” Id. ¶¶ 57, 58.
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`As with the allegedly infringing videos, Kifle alleges that he sent YouTube many
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`requests to remove all materials that “infringe on his protected marks,” but that YouTube
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`“ignore[d] the notices until March 18, 2021, when it finally decided to remove many of
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`them.” Id. ¶ 59. Kifle has also discovered that one of the YouTube channels that has
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`posted his content links to a separate Paypal website. The Paypal account at that website
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`uses Kifle’s channel and program titles; Kifle sent Paypal several cease and desist notices
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`but has apparently not received a response. Id. ¶¶ 64–68.
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`3.
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`Claims for Relief
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`Based on these allegations, the SAC asserts three claims for relief.
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`First, the SAC asserts a claim for “contributory and vicarious” copyright
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`infringement under 17 U.S.C. § 512. Id. ¶¶ 96, 98. The SAC alleges that based on Kifle’s
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`emails to YouTube, YouTube has (or had) “both actual and red flag knowledge of the
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`infringement,” and “failed to take simple measures to prevent damage to [Kifle]’s
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`copyrighted works.” Id. ¶¶ 44, 51. Kifle asserts that YouTube’s failure to enforce its
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`repeat-infringer policy constitutes a violation of a service provider’s obligations to qualify
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`for certain limitations of liability under 17 U.S.C. § 512(i). Id. ¶¶ 98–102.
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`Second, the SAC asserts a claim for “contributory trademark infringement” in
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`violation of 15 U.S.C. § 1114, resulting in trademark dilution under 15 U.S.C. § 1125(c).
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`Id. ¶¶ 116–17. And the SAC states that this trademark infringement gives rise to several
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`derivative claims under California law. Id. ¶¶ 118–19 (citing Cal. Civ. Code § 3344(a);
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`Cal Bus. Prof. Code §§ 17200, 17203).
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`Third, the SAC asserts a claim for breach of contract based on YouTube’s terms of
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`Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 6 of 13
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`service and partner program. Id. ¶¶ 123–27. This claim arises from (1) YouTube’s
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`termination of Kifle’s YouTube channel despite its alleged compliance with YouTube’s
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`terms of service, and (2) YouTube’s conduct “contributing to the infringement of his
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`copyright and trademarks.” Id. ¶¶ 74, 124.
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`C.
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`The Instant Motion
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`The amended motion incorporates the SAC’s core allegations, but implicates only
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`Kifle’s copyright and trademark claims (and not Kifle’s breach of contract claim). See
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`Amend. Mot. for TRO ¶¶ 45–46. Kifle requests that the Court order YouTube and Paypal
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`to stop permitting users to post his protected content. Id. at 1–2. He also requests that the
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`Court order YouTube to “fully restore” his YouTube channel “and its automated copyright
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`tools that he was using for uploading his videos and matching them with infringing videos
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`for instantaneous action.” Id. ¶ 55.
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`II.
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`LEGAL STANDARD
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`“A plaintiff seeking a preliminary injunction must establish that he is likely to
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`succeed on the merits, that he is likely to suffer irreparable harm in the absence of
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`preliminary relief, that the balance of equities tips in his favor, and that an injunction is in
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`the public interest.” Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).
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`Alternately, such a plaintiff may demonstrate that “serious questions going to the merits
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`were raised” and that “the balance of hardships tips sharply in [the plaintiff’s] favor,” so
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`long as the other two Winter elements are met. Alliance for Wild Rockies v. Cottrell, 632
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`F.3d 1127, 1131–32 (9th Cir. 2011) (quotation omitted). The “[l]ikelihood of success on
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`the merits is the most important Winter factor.” Disney Enterprises, Inc. v. VidAngel,
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`Inc., 869 F.3d 848, 856 (9th Cir. 2017) (quotation omitted). These same principles apply
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`to a motion for a TRO. See Martinez Franco v. Jennings, 456 F. Supp. 3d 1193, 1196–97
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`(N.D. Cal. 2020).
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`III. DISCUSSION
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`Kifle argues that he is entitled to the prospective relief that he seeks because he has
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`alleged plausible claims for contributory copyright and trademark infringement, Amend.
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`Mot. for TRO ¶¶ 45–46, and because the continued infringement necessarily causes him
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`irreparable harm, id. ¶¶ 47–48. He also argues that YouTube would not “be harmed in any
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`way” by stopping users from posting Kifle’s content, id. ¶ 49, and that enforcing the
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`relevant copyright and trademark statutes is in the public interest, id. ¶¶ 52–53.
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`YouTube argues that Kifle’s copyright and trademark claims have no possibility of
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`succeeding on the merits. See Opp. at 5. YouTube argues that Kifle’s copyright claim
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`fails based on Kifle’s failure to (1) register any copyrights before filing suit, (2) identify
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`the works he claims are being infringed, and (3) allege that YouTube had actual
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`knowledge about ongoing infringement. See id. at 8–11. And YouTube argues that
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`Kifle’s trademark claim must also fail because Kifle has not plausibly alleged (1) that he
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`has valid, protectable trademarks, (2) that YouTube intentionally induced any third-party
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`to infringe on those trademarks, or (3) that YouTube was aware of any infringement and
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`continued to supply services to the alleged infringer. See id. at 11–13. YouTube also
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`argues that Kifle has failed to show irreparable harm or that the equities and public interest
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`support granting the relief he seeks. See id. at 13–17.
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`The Court concludes that Kifle has not shown a likelihood of success on the merits,
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`or serious questions going to the merits. Kifle’s allegations indicate that YouTube was
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`less than diligent in ensuring that users do not post Kifle’s content. But those same
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`allegations—in their current form—do not plausibly give rise to claims for copyright or
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`trademark infringement. Nor could they justify the sweeping prospective relief that Kifle
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`seeks. Therefore, the Court denies Kifle’s motion.
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`A.
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`Likelihood of Success on the Merits
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`The Court’s analysis begins and ends with the merits of Kifle’s claims because the
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`SAC does not plausibly state claims for copyright or trademark infringement. See Winter,
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`555 U.S. at 20.
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`1.
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`Copyright Claim
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`Section 502(a) of the Copyright Act authorizes a court to grant injunctive relief “on
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`such terms as it may deem reasonable to prevent or restrain infringement of a copyright.”
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`Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 8 of 13
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`17 U.S.C. § 502(a).
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`To present a prima facie case of direct infringement, a plaintiff “must show
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`ownership of the allegedly infringed material” and “must demonstrate that the alleged
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`infringers violate at least one exclusive right granted to copyright holders under 17 U.S.C.
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`§ 106.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159 (9th Cir. 2007).
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`To establish secondary infringement, i.e., “contributory” or “vicarious”
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`infringement, a plaintiff must first “establish that there has been direct infringement by
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`third parties.” Id. at 1169. If the plaintiff can do so, the plaintiff may show contributory
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`infringement by establishing that the defendant intentionally induced or encouraged direct
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`infringement. See id. at 1170–71. The plaintiff may show vicarious infringement by
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`establishing that the defendant has profited from direct infringement “while declining to
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`exercise a right to stop or limit it.” Id. at 1173 (quoting Metro-Goldwyn-Mayer Studios
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`Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005)).
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`Copyright infringement claims must overcome certain procedural hurdles. Under
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`17 U.S.C. § 411(a), with certain exceptions, “no civil action” for copyright infringement
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`“shall be instituted until the preregistration or registration of the copyright claim has been
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`made in accordance with this title.” In plain English, that means most copyright owners
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`may not file an infringement suit before they have registered the relevant work. Fourth
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`Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 887 (2019).
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`“[R]egistration occurs, and a copyright claimant may commence an infringement suit,
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`when the Copyright Office registers a copyright.” Id. at 886.
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`17 U.S.C. § 411(c) contains one relevant exception. For a work, “the first fixation
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`of which is made simultaneously with its transmission, the copyright owner may
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`. . . institute an action for [copyright] infringement” without having registered the work in
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`certain circumstances. The copyright owner must (1) serve “notice upon the infringer, not
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`less than 48 hours before such fixation, identifying the work and the specific time and
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`source of its first transmission, and declaring an intention to secure copyright in the work,”
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`and (2) make “registration for the work,” if otherwise required under § 411(a), “within
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`three months after its first transmission.” 17 U.S.C. §§ 411(c)(1)–(2). The copyright
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`owner must take these steps “in accordance with requirements that the Register of
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`Copyright shall prescribe by regulation.” 17 U.S.C. § 411(c). Regulations require that
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`service of the “Advance Notice” be made “on the person responsible for the potential
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`infringement” within the 48 hour window. 37 C.F.R. § 201.22(e)(1). They also require
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`that the copyright owner sign the notice with “an actual handwritten signature,” though if
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`the notice is served via email, the handwritten signature requirement “shall be considered
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`waived” if the other service requirements enumerated in 37 C.F.R. § 201.22(e) are met. Id.
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`§§ 201.22(d)(2), (3). Those requirements, in turn, state that an Advance Notice may be
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`“effected” via email only if before the “simultaneous transmission take[s] place, the person
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`responsible for the potential infringement receives written confirmation of the Advance
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`Notice, bearing the actual handwritten signature of the copyright owner or duly authorized
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`agent.” Id. § 201.22(e)(iii)(B). Thus, Advance Notice generally requires a handwritten
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`signature, but not if Advance Notice is sent through email, so long as the proper recipient
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`timely receives written confirmation of the Advance Notice and that written confirmation
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`includes a handwritten signature.
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`Applying these rules, Kifle has not shown a likelihood of success on the merits of
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`his copyright claim, Winter, 555 U.S. at 20, nor has he raised serious questions going to
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`the merits, Alliance for Wild Rockies, 632 F.3d at 1131–32. Kifle’s copyright claims are
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`barred by 17 U.S.C. § 411.
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`Kifle has not plausibly alleged that he obtained a valid copyright registration for
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`any relevant video before initiating this lawsuit. See SAC ¶ 21; SAC Ex. 1 at 3; Opp. at 8;
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`Reply at 3–4. At best, Kifle registered a single video after filing suit but before filing his
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`SAC. Id. The Court agrees with other courts in this district that a plaintiff “cannot cure
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`its failure to meet the preconditions set forth in 17 U.S.C. § 411(a) by amending [the
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`plaintiff’s] pending complaint.” UAB “Planner 5D” v. Facebook, Inc., No. 19-cv-3132-
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`WHO, 2019 WL 6219223, at *7 (N.D. Cal. Nov. 21, 2019) (citing Izmo, Inc. v. Roadster,
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`Inc., No. 18-cv-6092-NC, 2019 WL 2359228, at *2 (N.D. Cal. June 4, 2019)). By tying
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`the registration requirement to when a “civil action” is “instituted,” the plain language of
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`§ 411(a) refers to the beginning of a lawsuit, not the filing of an amended pleading. See
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`also Fourth Estate, 139 S. Ct. at 887 (interpreting § 411(a) to govern when a copyright
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`holder may “commence” an infringement “suit”).
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`The § 411(c) simultaneous transmission exception to § 411(a) does not apply here.
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`For it to apply, Kifle would have needed to serve Advance Notice “upon the infringer” at
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`least 48 hours before the simultaneous transmission, 17 U.S.C. § 411(c)(1), and if that
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`Advance Notice came via email, the “person responsible for the infringement” would have
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`to receive “written confirmation of the Advance Notice, bearing [Kifle’s] actual
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`handwritten signature,” 37 C.F.R. § 201.22(e)(2)(iii)(B). Even assuming that YouTube
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`could be considered “the infringer” or the “person responsible for the infringement” based
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`on Kifle’s theory of contributory and vicarious infringement, Kifle sent YouTube notice
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`via email and does not allege that YouTube received written confirmation of the Advance
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`Notice bearing his handwritten signature. See Reply at 5–6 (arguing that the handwritten
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`signature requirement is antiquated and unwise, but not asserting that Kifle complied with
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`the requirement).
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`Therefore, § 411(a) bars Kifle’s copyright claim, and § 411(c) does not provide an
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`exception for his claim insofar as it relates to simultaneous transmissions.4 Because
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`Kifle’s copyright claim cannot proceed, the Court need not reach the question whether
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`Kifle has otherwise plausibly alleged the elements of a contributory or vicarious copyright
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`infringement claim.
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`2.
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`Trademark Claim
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`To prevail on a direct trademark infringement claim, a plaintiff must show that “(1)
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`4 The Court notes one additional point regarding the single video for which Kifle obtained
`registration after initiating this lawsuit but before filing the SAC. See SAC ¶ 21; SAC Ex. 1 at 3;
`Opp. at 8; Reply at 3–4. Even if Kifle could raise a copyright infringement claim based on this
`video, Kifle has not alleged that this video remains available for viewing on YouTube. Therefore,
`with respect to that video, Kifle has failed to show irreparable harm in the absence of prospective
`relief. See Alliance for Wild Rockies, 632 F.3d at 1131–32.
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`it has a valid, protectable trademark,” and (2) the defendant’s “use of the mark is likely to
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`cause confusion.” Applied Info. Sciences Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir.
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`2007). A defendant can be held liable for a third party’s infringing acts if the defendant
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`“intentionally induces another to infringe a trademark, or if [the defendant] continues to
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`supply its product to one whom it knows or has reason to know is engaging in trademark
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`infringement.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982).
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`Thus, whether a plaintiff asserts a claim for direct or indirect trademark
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`infringement, the threshold question is whether the relevant language used in connection
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`with a product is “entitled to protection.” Applied Info. Sciences Corp., 511 F.3d at 969
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`(citation omitted). A plaintiff may establish a “protectable interest” by showing that “(1) it
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`has a federally registered mark . . .; (2) its mark is descriptive but has acquired a secondary
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`meaning in the market; or (3) it has a suggestive mark, which is inherently distinctive and
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`protectable.” Id. at 970. A mark is “inherently distinctive” if its “intrinsic nature serves to
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`identify a particular source.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
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`210 (2000). “In the context of word marks” Courts have applied the “test . . . in which
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`word marks that are ‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film) or
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`‘suggestive’ (‘Tide’ laundry detergent) are held to be inherently distinctive. Id. at 210–211
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`(citing Abercrombie & Fitch Co. v. Hunting World, Inc., 53 F.2d 4, 10–11 (2d Cir. 1976)
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`(Friendly, J.)). But a mark that is “not inherently distinctive” can also acquire
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`distinctiveness “if it has developed secondary meaning, which occurs when, ‘in the minds
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`of the public, the primary significance of a [mark] is to identify the source of the product
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`rather than the product itself.’” Id. (quoting Inwood Labs, 456 U.S. at 851 n.11).
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`Applying these rules, Kifle has not shown a likelihood of success on the merits of
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`his trademark claim, Winter, 555 U.S. at 20, nor has he raised serious questions going to
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`the merits, Alliance for Wild Rockies, 632 F.3d at 1131–32.
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`Kifle has not plausibly alleged that he has a “valid, protectable trademark.”
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`Applied Info. Sciences Corp., 511 F.3d at 969. First, he does not allege that he has a
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`federally registered mark. See SAC ¶¶ 55–58. Second, although he alleges that the
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`Case 3:21-cv-01752-CRB Document 48 Filed 04/19/21 Page 12 of 13
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`Mereja TV (“Information TV”) and “The Facts with Zemede” channel and program titles
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`are “inherently distinctive,” id. ¶ 58, he has not explained why. It is not obvious why the
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`channel title “Mereja TV” (“Information TV”) and program title “The Facts with Zemede”
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`intrinsically identify a particular source, as opposed to merely describing the channel and
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`program. Third, although Kifle’s reply brief argues that the titles, if only descriptive, have
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`acquired a secondary meaning in the market, see Reply at 7–9, this argument relies
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`exclusively on allegations not in the SAC—and thus allegations that the Court may not
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`consider. See supra note 1. In sum, Kifle’s channel and program titles may be protectable,
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`but the SAC lacks sufficiently detailed allegations to support that conclusion.
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`Because the failure to allege a protectable trademark is fatal to Kifle’s trademark
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`infringement claim, the Court need not reach the more difficult question whether YouTube
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`had knowledge and failed to act regarding any trademark infringement. Furthermore, Kifle
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`complained to YouTube about trademark infringement (rather than copyright
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`infringement) for only a subset of the videos, and YouTube has apparently taken down
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`those videos, or is at least attempting to take down those videos. Thus, any prospective
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`relief regarding those videos would have little if any effect on the status quo.
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`*
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`Because the Court concludes that Kifle is unlikely to succeed on the merits with
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`respect to the claims raised in the instant motion, and indeed raises no serious questions
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`going to the merits of those claims, the Court need not consider the other factors relevant
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`to granting a TRO or a preliminary injunction. But the Court also notes that Kifle’s
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`requested relief is not adequately tailored to the claims giving rise to his motion. See
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`Stormans, Inc. v. Selecky, 586 F.3d 1109, 1119 (9th Cir. 2009) (“[I]njunctive relief must
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`be tailored to remedy the specific harm alleged”) (quotation omitted). If YouTube were
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`engaging in copyright or trademark infringement, the proper remedy would be an order
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`requiring YouTube to take the steps necessary to stop engaging in copyright or trademark
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`infringement. An order that also requires YouTube to restore Kifle’s channel would be
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`impennissibly “overbroad.” I_d. at 1141.5
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`IV.
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`CONCLUSION
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`For the foregoing reasons, Kifle’s motion for a TRO and a preliminary injunction is
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`denied.
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`The parties’ briefs indicate that before Kifle initiated this lawsuit, YouTube had not
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`taken steps to remove Kifle’s content posted by other users. That has since changed. The
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`briefs also indicate that before YouTube filed its opposition to Kifle’s motion, Kifle was
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`not aware why his channel was taken down. That has also changed. Given these
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`developments, the Court encourages the parties to communicate and attempt to reach a
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`mutually agreeable resolution.
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`IT IS SO ORDERED.
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`Dated: April 19, 2021
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`fl.”—
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`CHARLES R. BREYER
`United States District Judge
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`5 This may not be the case with respect to Kifle’s breach of contract claim, which focuses on
`YouTube shutting down Kifle’s channel in addition to YouTube users posting Kifle’s content.
`But the instant motion is not based on that claim.
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`AWN
`\OOONQUI
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