FILED
NOT FOR PUBLICATION JUL 24 2013
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
AMERICAN RENA INTERNATIONAL No. 12-57169
CORP., a California corporation; et al.,
D.C. No. 2:12-cv-06972-DMG-
Plaintiffs - Appellees, JEM
v.
MEMORANDUM*
SIS-JOYCE INTERNATIONAL CO.
LTD., a California corporation and ALICE
ANNIE LIN, an individual,
Defendants - Appellants.
Appeal from the United States District Court
for the Central District of California
Dolly M. Gee, District Judge, Presiding
Submitted July 11, 2013**
Pasadena, California
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
**
The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
Before: TASHIMA and BYBEE, Circuit Judges, and BENCIVENGO, District
Judge.***
American Rena International Company and Sis-Joyce International Co. each
produce skin care, healthcare, and anti-aging products, under the respective brand
names of “Rena” and “ARëna.” Both brands use bottles of similar size, shape, and
style, and appear to share much of the same customer base.
Rena sought a preliminary injunction in federal district court against Sis-
Joyce, asserting a number of claims relating to trademark infringement and unfair
competition. The district court granted Rena’s motion in part, finding that there
was likely trademark infringement, trade dress infringement, and intentional
interference with economic advantage, and granted Rena a preliminary injunction.
Although Sis-Joyce has not sought a stay of the preliminary injunction, which
remains in effect, Sis-Joyce has timely appealed the preliminary injunction. We
affirm the judgment of the district court.
We review the district court’s grant of a preliminary injunction for abuse of
discretion. Farris v. Seabrook, 677 F.3d 858, 864 (9th Cir. 2012). Our review
“does not extend to the underlying merits of the case,” Johnson v. Couturier, 572
F.3d 1067, 1078 (9th Cir. 2009), and we afford particular deference to the district
***
The Honorable Cathy Ann Bencivengo, District Judge for the U.S.
District Court for the Southern District of California, sitting by designation.
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court’s findings of facts, which are reviewed only for clear error, Hawkins v.
Comparet-Cassani, 251 F.3d 1230, 1239 (9th Cir. 2001).
“A plaintiff seeking a preliminary injunction must establish (1) that he is
likely to succeed on the merits, (2) that he is likely to suffer irreparable harm in the
absence of preliminary relief, (3) that the balance of equities tips in his favor, and
(4) and that an injunction is in the public interest.” Toyo Tire Holdings of Ams. Inc.
v. Cont’l Tire N. Am., Inc., 609 F.3d 975, 982 (9th Cir. 2010) (citing Winter v.
NRDC, Inc., 129 S. Ct. 365, 374 (2005)).
The district court did not abuse its discretion in concluding that Rena was
likely to succeed on the merits of its claims for trademark infringement, trade dress
infringement, and intentional interference with economic advantage. First, given
the lack of evidence in the record supporting Sis-Joyce’s claims of priority, the
district court did not abuse its discretion in concluding that Rena is “the owner of a
valid, protectable [trade]mark,” Grocery Outlet, Inc. v. Albertson’s Inc., 497 F.3d
949, 951 (9th Cir. 2007) (per curiam). The district court also appropriately
considered the eight-factor test set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d
341, 348–49 (9th Cir. 1979), abrogation on other grounds recognized in Mattel,
Inc. v. Walking Mountain Prods., 353 F.3d 792, 800 (9th Cir. 2003), in concluding
that Sis-Joyce is using a confusingly similar mark. Second, the court reasonably
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found that Rena would likely “prove[] trade dress infringement” by
“demonstrat[ing] that (1) the trade dress is nonfunctional, (2) the trade dress has
acquired secondary meaning, and (3) there is a substantial likelihood of confusion
between the plaintiff’s and defendant’s products.” Art Attacks Ink., LLC v. MGA
Entm’t, Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). Third, the district court
reasonably found that Rena was likely to succeed on the merits of its intentional
interference with prospective economic advantage claim under California law
because it could show (1) the existence of at least one specific economic
relationship between plaintiffs and third parties that may economically benefit
plaintiffs; (2) knowledge by the defendants of this relationship; (3) intentional and
wrongful acts by the defendants designed to disrupt the relationship; (4) “actual
disruption of the relationship”; and (5) economic harm proximately caused by
defendant. Korea Supply Co. v. Lockheed Martin Corp., 63 P.3d 937, 950 (Cal.
2003). Sis-Joyce’s assertion that “[t]here is no evidence supporting interruption of
relationship” is contradicted by the record, and therefore the district court did not
clearly err in finding facts that support the Korea Supply elements for an
intentional interference claim.
The district court also did not abuse its discretion in finding that irreparable
harm will likely result in the absence of preliminary injunction relief. Rena has
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provided “[e]vidence of threatened loss of . . . customers or goodwill,” Stuhlbarg
Int’l Sales Co., v. John D. Brush & Co., 240 F.3d 832, 841 (9th Cir. 2001), and
pointed to a wide range of “intangible injuries, such as damage to ongoing
recruitment efforts and goodwill,” Rent-A-Center, Inc. v. Canyon Television &
Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991), likely to result—and
already resulting—from Sis-Joyce’s infringing practices. Even if Rena’s bad
business practices contributed in some part to its decline in business, the district
court did not clearly err in finding that Sis-Joyce’s actions, too, have significantly
contributed to Rena’s loss of business.
Moreover, the district court did not abuse its discretion in finding that the
balance of hardships favors Rena. That the present injunction will allegedly drive
Sis-Joyce out of business does not weigh in Sis-Joyce’s favor where it appears that
Sis-Joyce’s entire business model is premised on its infringing use of the ARëna
mark.
Nor did the district court abuse its discretion in finding that the public
interest favors the injunction. An injunction that prevents consumer confusion in
trademark cases, as this injunction does, serves the public interest. Internet
Specialties W., Inc. v. Milon-DiGiorgio Enters., Inc., 559 F.3d 985, 993 (9th Cir.
2009).
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Finally, we do not find this injunction to be unconstitutionally overbroad,
because it does not prevent Sis-Joyce from selling non-infringing products or from
engaging in speech that does not constitute infringement or intentional interference
with economic advantage. Sis-Joyce cannot sow confusion in the marketplace by
violating the trademark rights of others and then escape the consequences by
arguing that any action curtailing its infringing actions impinges on its
Constitutional rights.
AFFIRMED.
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