United States District Court, D. Colorado
BALL DYNAMICS INTERNATIONAL, LLC, a Colorado limited liability company, Plaintiff,
DEBORAH G. SAUNDERS, d/b/a WIZARD OF PAWS, aka DEBORAH SAUNDERS aka DR. DEBBIE GROSS aka DR. DEBBIE GROSS SAUNDERS, an Individual, MARTHA MCCORMICK, an Individual, and TOTO FIT, LLC, a Connecticut limited liability company, Defendants.
MEMORANDUM OPINION AND ORDER
Y. Wang United States Magistrate Judge.
matter is before the court on Plaintiff Ball Dynamics
International, LLC's (“BDI” or
“Plaintiff”) Motion for a Temporary Restraining
Order (“Motion for TRO”). [#41, filed October 17,
2016]. The undersigned Magistrate Judge disposes of the
Motion for TRO pursuant to her authority under 28 U.S.C.
§ 636(c), Fed.R.Civ.P. 73, and D.C.COLO.LCivR 72.2.
See [#15]. The court has considered the Motion for
TRO and associated briefing, the applicable case law, and the
comments offered by counsel during the October 21, 2016
Motion Hearing. For the following reasons, the Motion for TRO
is GRANTED IN PART and DENIED IN PART.
initiated this civil action on February 26, 2016, to assert
six common law claims for breach of contract, bad faith and
unfair dealing, unjust enrichment, unfair
competition/misappropriation of trade secrets, intentional
interference with existing and prospective business
relations, and civil conspiracy. [#1 at 16-22]. The action
arises out of an ultimately unsuccessful business
relationship between BDI and Defendant Deborah G. Saunders
for services related to BDI's FitPAWS brand. See
[#1; #22]. On April 18, 2016, Defendants Deborah G. Saunders,
d/b/a Wizard of Paws, a/k/a Deborah Saunders, a/k/a Dr.
Debbie Gross, a/k/a Dr. Debbie Saunders (“Dr.
Gross”), Martha McCormick, and Toto Fit, LLC
(collectively, “Defendants”) filed an Answer and
the following counterclaims: intentional misrepresentation;
negligent misrepresentation; tortious interference with
prospective business relations; and breach of the covenant of
good faith and fair dealing. [#16]. BDI filed an Answer to
Defendants' counterclaims on May 2, 2016. [#20].
3, 2016, the court held a Scheduling Conference at which it
set certain pre-trial dates and deadlines, including a
discovery deadline of November 4, 2016 and a dispositive
motions deadline of December 16, 2016. [#21; #22]. On August
17, 2016, Dr. Gross filed a Motion for Partial Judgment on
the Pleadings. [#29]. BDI and Dr. Gross finished briefing the
Motion for Partial Judgment on the Pleadings on September 26,
2016. See [#39; #40].
filed the Motion for TRO on October 17, 2016. [#41]. In the
ensuing twenty-four hours, Defendants filed a Response [#43]
and BDI filed a Reply [#44], followed by an unopposed First
Amended Complaint. See [#46]. The First Amended
Complaint (“FAC”) adds the following claims:
violation of the Colorado Consumer Protection Act
(“CCPA”), C.R.S. § 6-1-101, et
seq.; violation of the Anti-Cybersquatting Consumer
Protection Act, (“ACPA”), 15 U.S.C. §
1125(d); violation of the Lanham Act, 15 U.S.C. 1125(a); and
trademark infringement in violation of 15 U.S.C. § 1114.
The court held argument on the Motion for TRO on October 21,
2016, at which time Defendants tendered the Declaration of
Jonathan Hochman. See [#48 at 48-2]. The court took
the Motion under advisement and instructed Plaintiff to
respond to the Hochman Declaration on or before October 28,
2016. Plaintiff filed a timely Response on October 27, 2016.
following facts are derived from the Complaint, the Motion
for TRO, and the Response thereto. BDI launched the FitPAWS
brand in 2009. The brand is specifically designed as
“canine conditioning and rehabilitation
products.” [#41 at 5]. On June 1, 2010, BDI registered
the trademark “FitPAWS” with the United States
Patent and Trademark Office (“USPTO”) for a
variety of classes of goods and services. BDI lists its marks
June 1, 2010, Reg. No. 3, 797, 098: Physical rehabilitation
and physical therapy equipment for animals, namely, physical
rehabilitation and physical therapy balls, balance apparatus,
agility training equipment, strength training equipment, and
training harnesses all used for physical rehabilitation and
physical therapy animals.
June 1, 2010, Reg. No. 3, 797, 098: Exercise and conditioning
equipment for animals, namely, exercise and conditioning
balls, balance apparatus, agility training equipment,
strength training equipment, and training harnesses, all used
for exercise and physical conditioning of
August 28, 2012, Reg. No. 4, 199, 563: Printed instructional,
educational and teaching materials in the fields of physical
therapy, rehabilitation, exercise, conditioning and training
August 28, 2012, Reg. No. 4, 199, 564: Educational services,
namely, conducting live classes, seminars, conferences and
workshops in the fields of physical therapy, rehabilitation,
exercise, conditioning and training for animals and
distribution of printed materials in connection therewith in
hard copy or electronic format on the same topics.
December 9, 2014, Reg. No. 4, 653, 151: Digital media,
namely, digital video discs, digital versatile discs,
downloadable audio and video recordings, DVDs, and high
definition digital discs featuring physical therapy,
rehabilitation, exercise, conditioning and training programs
[#41 at 5 (citing #41-1)]. BDI asserts that mark Reg. No. 3,
797, 098 has achieved “incontestable” status and
thus cannot be challenged in litigation. [Id. at
maintained and operated the website
www.fitpawsusa.com from November 2009 to present.
From October 2009 through November 2015, “Wizard of
Paws, ” a limited liability company controlled by Dr.
Gross, was a dealer of FitPAWS products in the United States.
On or about March 1, 2011, Dr. Gross entered into an
Independent Contractor Consulting Agreement with BDI to
provide consulting services (the “Agreement”).
[#1 at ¶ 20; #1-1]. Pursuant to the Agreement, Dr. Gross
served as a paid independent contractor and acted as a
spokesperson for BDI and the FitPAWS brand. [#41 at 6].
October 13, 2015, Dr. Gross and Ms. McCormick organized
Defendant Toto Fit, LLC (“TotoFit”). [#1 at
¶ 43]. On or around November 19, 2015, Dr. Gross ended
her relationship with BDI. [Id. (citing #41-3)]. The
termination and duration of Dr. Gross and BDI's Agreement
are in dispute in this action. [#41 at 6]; see also
[#1 at ¶¶ 70-76]. On or about November 19, 2015,
TotoFit filed a federal trademark application for TotoFit for
goods BDI contends are identical to FitPAWS's products;
the application specifies September 17, 2015 as the date the
goods were first used in commerce. [#1 at ¶ 48].
Following a round of correspondence with Dr. Gross and Ms.
McCormick about the Parties' obligations under the
Agreement, BDI commenced an effort to enforce its legal
rights under the Agreement. See [#41 at 6]; see
also [#1 at ¶¶ 49-55].
January 1, 2016, Ms. McCormick and TotoFit had purchased the
following domain names: fitpaws.info; fitpaws.net;
fitpaws.org; fitpawsusa.biz; fitpawsusa.info; fitpawsusa.net;
fitpawsusa.org; and fitpawsusa.training (collectively,
“FitPAWS URLs”). [#41 at 6-7 (citing #41-2)]. At
the October 20, 2016 Motion Hearing, the Parties informed the
court that a total of eleven URLs had been disclosed. BDI
asserts that it did not authorize or otherwise approve
Defendants' use of its trademark for the FitPAWS URLs.
Rule of Civil Procedure 65 authorizes the court to enter
preliminary injunctions and issue temporary restraining
orders. Fed.R.Civ.P. 65(a), (b). “When the opposing
party actually receives notice of the application for a
restraining order, the procedure that is followed does not
differ functionally from that on an application for a
preliminary injunction and the proceeding is not subject to
any special requirements.” 11A Charles Alan Wright
& Arthur R. Miller, Federal Practice and Procedure:
Civil § 2951 (3d ed.) Because Defendants have
notice of the Motion for TRO, and, indeed, filed a Response,
the court treats the Motion for TRO as a motion for
preliminary injunction is considered an extraordinary remedy.
See, e.g., Winter v. Nat'l Res. Defense Council,
Inc., 555 U.S. 7, 24 (2008) (citation omitted). Thus,
the right to such relief must be “clear and
unequivocal.” Petrella v. Brownback, 787 F.3d
1242, 1256 (10th Cir. 2015) (quoting Beltronics USA, Inc.
v. Midwest Inventory Distrib., LLC, 562 F.3d 1067, 1070
(10th Cir. 2009)). A party seeking preliminary injunctive
relief must satisfy four factors: a likelihood of success on
the merits; a likelihood that the movant will suffer
irreparable harm in the absence of preliminary relief; that
the balance of equities tips in the movant's favor; and
that the injunction is in the public interest. Id.
primary goal of a preliminary injunction is to preserve the
pre-trial status quo. “Status quo” is defined to
be the last uncontested status between the parties that
preceded the controversy until the outcome of the final
hearing. See Schrier v. University of Colorado, 427
F.3d 1253, 1260 (10th Cir. 2005). Therefore, courts view the
following types of injunctions with caution: (1) preliminary
injunctions that alter the status quo; (2) preliminary
injunctions that require the nonmoving party to take
affirmative action (“mandatory preliminary
injunctions”); and (3) preliminary injunctions that
give the movant all the relief it would be entitled to if it
prevailed in a full trial. RoDa Drilling Co. v.
Siegal, 552 F.3d 1203, 1208 (10th Cir. 2009) (citing
O Centro Espirita Beneficiente Uniao Do Vegetal v.
Ashcroft, 389 F.3d 973, 975 (10th Cir. 2004) (per
curiam), affirmed, 546 U.S. 418, 126 S.Ct. 1211, 163
L.Ed.2d 1017 (2006)). Movants who seek a disfavored
injunction must demonstrate a substantial likelihood
of success on the merits, as well as a heightened showing of
the other three elements. Id. (citing O
Centro, 389 F.3d at 980). See also Fundamentalist
Church of Jesus Christ of Latter-Day Saints v. Horne,
698 F.3d 1295, 1301 (10th Cir. 2012) (the movant must show
that the factors “weigh heavily and compellingly”
in his or her favor). The court may grant a disfavored
injunction only if the moving party demonstrates that the
“exigencies of the case require extraordinary interim
relief, ” and satisfies the heightened burden. RoDa
Drilling, 552 F.3d at 1209 (citing O Centro,
389 F.3d at 978). “The determination of whether an
injunction is mandatory as opposed to prohibitory can be
vexing, ” but the United States Court of Appeals for
the Tenth Circuit (“Tenth Circuit”) has explained
that a mandatory injunction affirmatively requires the
non-moving party to act in a particular way.
Schrier, 427 F.3d at 1261. Whether to issue a
preliminary injunction lies in the sound discretion of the
trial court. See Id. at 1208 (citations omitted).
asserts that Defendants “must be restrained to preserve
the status quo and protect against further irreparable
injury.” As discussed above, the status quo is
“the last uncontested status between the parties which
preceded the controversy until the outcome of the final
hearing.” Dominion Video Satellite, Inc. v.
EchoStar Satellite Corp., 269 F.3d 1149, 1155 (10th Cir.
2001) (quoting SCFC ILC, Inc. v. Visa, USA Inc., 936
F.2d 1096, 1100, n.8 (10th Cir. 1991)). In determining the
status quo for preliminary injunctions, the court
“looks to the reality of the existing status and
relationship between the parties and not solely to the
parties' legal rights.” Id.
asserts that the “last uncontested status between that
parties [sic] which preceded the controversy would be prior
to the ‘launch' of the TotoFit.com website and its
Facebook page.” [#41 at 9]. Defendants frame the
Parties' status quo as “Plaintiff is operating its
business and Defendants are operating their business.”
[#43 at 5]. The court is not fully persuaded by either
Party's assertion, and finds, rather, that the status quo
dates to on or around November 19, 2015, when Dr. Gross
terminated the Agreement. Based on the Complaint, Dr. Gross
and Ms. McCormick had organized TotoFit and launched the
associated Facebook page by November 19, 2015. See
[#1 at ¶¶ 42, 43]. Were the court to date the
status quo to “prior to the ‘launch'”
of TotoFit, it would effectively rule on the merits of the
bulk, if not the entirety, of BDI's claims. A preliminary
injunction is not intended to produce such an outcome or
court now turns to the factors identified above, and begins
by noting that BDI seeks a mandatory injunction because it
would have the court compel Defendants to take certain
action. BDI also seeks a prohibitory injunction because it
would have the court prohibit Defendants from taking certain
actions. Therefore, with respect to requests such as, and for
example, compelling Defendants to publish a communication in
the trade press informing the public that they directed
FitPAWS internet traffic to themselves, BDI must ...