A federal judge from the Middle District of Alabama has issued a permanent injunction against a man who manufactured, marketed and sold an oversized foam hand that infringed on the trademarks of Auburn University.
The court concluded specifically that Auburn “has demonstrated a substantial likelihood of success on the merits, that the threat of irreparable injury exists, that the harm suffered by the plaintiff would exceed the harm suffered by the defendants, and that it is in the best interest of the public not to be deceived or confused by any unauthorized use of Auburn’s trademarks and service marks” by defendant Mike Moody and his web site sixfingeryear.com
Before sharing its rationale, the court rehashed the storied history of the rivalry between the University of Alabama and Auburn, including the fact that Auburn had won the last six meetings. That success had spurred Moody to create a foam hand that had six fingers on it, one for each victory.
It didn’t take long for Auburn to get wind of Moody’s activities and sue him for trademark and service mark infringement, false designation and misrepresentation of origin, unfair competition, trademark dilution, and state law claims of deceptive trade practices.
Entertaining Auburn’s motion for an injunction, the court noted that Auburn must demonstrate the following:
(1) a substantial likelihood of success on the merits of the underlying case, (2) the movant will suffer irreparable harm in the absence of an injunction, (3) the harm suffered by the movant in the absence of an injunction would exceed the harm suffered by the opposing party if the injunction issued, and (4) an injunction would not disserve the public interest.
North Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1217 (11th Cir. 2008)
To prove the first point, Auburn must show that the marks were used “in commerce” and that there was a likelihood on confusion regarding the use of the marks. The court sided with Auburn on part one, noting that Moody had sold product through his web site, including one to an employee of Auburn’s Trademark Management and Licensing Office. Regarding part two, the court found that Auburn had satisfied key “factors:” strength of marks, similarity of the marks, similarity of the product, and an identical customer base.
Turning to whether the movant would suffer irreparable harm, the court again sided with Auburn, writing that “by permitting unlicensed vendors to sell products containing Auburn’s marks, Auburn loses control of its reputation, dilutes its marks and weakens its brand. The court concludes that the plaintiff has demonstrated that the threat of irreparable harm to Auburn exists without the issuance of an injunction.”
Auburn also met the requirements of the third point, with the court again pointing to the value of Auburn’s “reputation” versus the potential harm to the defendants.
Finally, it agreed with the school on the fourth point, writing: “the public has an interest in avoiding confusion with licensed and unlicensed products. Thus, the court concludes that the issuance of an injunction will not disserve the public interest.”
In sum it wrote that “Moody is clearly offsides in this scrimmage. The court has carefully reviewed the plaintiff’s motion and the evidence presented at the hearing and concludes that the plaintiff has demonstrated that it meets each of the prerequisites for the issuance of a preliminary injunction.”
Auburn University v. Mike Moody et al.; M.D. Ala.; CIVIL ACT. NO. 3:08cv796-CSC; 11/4/08