Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 44 of 47
Ultimately, considering the record on remand, and the nominative fair use factors in conjunction with the likelihood of confusion analysis, the court finds that Defendant’s use of Plaintiffs’ word marks is nominative fair use, but its use of Plaintiffs’ logos is not.
- C. Remedy
Having found that Plaintiffs have succeeded on the merits of their copyright claim as to 32 standards that do not qualify for the fair use defense, and its trademark claim as to Defendant’s use of Plaintiffs’ trademarked logos, the court turns to Plaintiffs’ request that it permanently enjoin Defendant from all reproduction, display, or distribution of those standards and logos. See Pls.’ 2d MSJ at 38. A preliminary injunction is “an extraordinary remedy,” that is “never awarded as of right.” Winter, 555 U.S. at 22, 24. To obtain a permanent injunction, Plaintiffs must show (1) irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for their injury; (3) that a remedy in equity is warranted after considering the balance of hardships; and (4) that the public interest would not be disserved by a permanent injunction. See eBay Inc., 547 U.S. at 391. Failure to satisfy any factor “is grounds for denying relief.” Morgan Drexen, Inc. v. Consumer Fin. Prot. Bureau, 785 F.3d 684, 694 (D.C. Cir. 2015). “If a less drastic remedy … [is] sufficient to redress [the] injury, no recourse to the additional and extraordinary relief of an injunction [is] warranted.” Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 165–66 (2010).
- 1. Irreparable Injury
Plaintiffs claim they will face three separate irreparable injuries if Defendant is permitted to continue distribution of Plaintiffs’ standards and logos: substantial declines in revenue that may cause their business models to change; loss of the exclusive rights under the Copyright Act
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