City of San Francisco v. City of Oakland

1

CITY AND COUNTY OF SAN FRANCISCO, Plaintiff, v. CITY OF OAKLAND, et al., Defendants.

No. 24-cv-02311-TSH

United States District Court, N.D. California

November 12, 2024

ORDER GRANTING IN PART AND

DENYING IN PART SAN

FRANCISCO'S MOTION FOR A

PRELIMINARY INJUNCTION

RE: DKT. NO. 35

THOMAS S. HIXSON, UNITED STATES MAGISTRATE JUDGE

Plaintiff City and County of San Francisco filed a motion for a preliminary injunction. ECF No. 35. Defendants Port of Oakland and City of Oakland filed oppositions. ECF Nos. 49 50. San Francisco filed replies. ECF Nos. 61, 67. The Court held a hearing on November 7, 2024, and now issues the following order.^[1]

I. BACKGROUND

A. San Francisco International Airport

In May 1927, San Francisco inaugurated the Mills Field Municipal Airport of San Francisco, which formally rebranded as the San Francisco Airport in 1931, and again as San Francisco International Airport in 1954. Declaration of Melissa Andretta, ECF No. 37 (“Andretta Decl.”) ¶ 3. SFO is a major west coast hub airport serving travelers to and from the Bay Area and has grown to become one of the busiest airports in the United States. Every year SFO welcomes tens of millions of travelers from around the world. This included more than 50 million travelers in 2023. By passenger count, SFO is among the top 12 busiest airports in the United States. Id. ¶ 4 & Ex. A. SFO receives more than twice the number of travelers serviced by the neighboring airports in Oakland and San Jose combined. Id. ¶ 5 & Ex. B. SFO has had average annual operating revenues of approximately $1 billion over the past five years. Declaration of Jessica Williams, ECF No. 36 (“Williams Decl.”) ¶ 2 & Ex. A.

San Francisco owns SFO, and acting through its Airport Commission, has complete authority to use, operate, maintain, manage, regulate, improve, and control SFO. Declaration of Charles Schuler, ECF No. 39 (“Schuler Decl.”) ¶ 4. San Francisco has made thoughtful investments in the airport's infrastructure and facilities in order to attract and support airlines and to ensure that travelers are comfortable and well-served throughout their journey. This includes having nearly 70 restaurants at the airport, high-end shopping options for visitors, several prestigious club lounges, an on-airport Hyatt Hotel, and a fully accredited museum. Id. ¶¶ 4-7. SFO has won many awards and recognitions. Id. ¶¶ 8-9 & Exs. B & C.

San Francisco has a registered trademark for “San Francisco International Airport” (the “Mark”) covering “airport services” in Class 39. Williams Decl. ¶ 6 & Ex. E. The registration indicates a first use in 1954. Id. Ex. E. The Mark became incontestable in 2017. Id. ¶ 7 & Ex. F.

As a result of San Francisco's marketing efforts and the recognitions SFO has received for its services, the name and trademark San Francisco International Airport is widely known among air travelers and within the travel industry. Schuler Decl. ¶ 10. Travelers making their way through the airport encounter the Mark in some from. The Mark appears on signs in and around the airport and in connection with airport parking or other airport related services. Id. ¶ 11. (The parties dispute whether and how often the Mark appears to customers in connection with purchasing plane tickets. The Court addresses that issue below.)

San Francisco displays its Mark in advertising materials promoting the airport. The City invests millions of dollars annually to promote its airport services under the San Francisco International Airport trademark. San Francisco's annual marketing and promotion investment for the airport combined with its aviation marketing investment over the last 10 years is approximately $34 million. Id. ¶ 12. SFO's website and radio ads for the airport use the Mark. Id. ¶¶ 13, 14 & Exs. E & F. The Mark embodies the goodwill San Francisco has bult up in the Mark over decades of hard work making SFO a first class airport. Id. ¶ 17. The San Francisco International Airport brand is routinely ranked among the top 25 airport brands by Brand Finance, a respected independent evaluator of international brands. Id. ¶ 17 & Ex. I.

B. Oakland International Airport

The Port of Oakland owns and manages a seaport, nearly 20 miles of waterfront along the San Francisco Bay, submerged lands beneath the Bay, the Oakland airport, and a publicly owned utility. Declaration of Danny Wan, ECF No. 54 (“Wan Decl.”) ¶ 10. The Port and its airport are an important part of the San Francisco Bay Area. They are an economic engine for Oakland and the Bay Area, and facilitate the movement of goods and people that enables the region to function and flourish. Id. ¶ 12. The Port strives to provide a convenient and positive airport experience and promote the economic and community benefits of the Port for Oakland and Bay Area residents. Id. ¶ 13.

The Oakland airport opened in 1927. It later opened for commercial activity in 1962. Williams Decl. ¶ 8 & Ex. G. It was originally named the Oakland Municipal Airport (Declaration of Craig Simon, ECF No. 55 (“Simon Decl.”) ¶ 7)), but in 1954, the Port of Oakland adopted Metropolitan Oakland International Airport as the “full formal name” of the airport. Wan Decl. ¶ 26 & Ex. H. However, since 1963 the Port has used the name and trademark Oakland International Airport to refer to the airport. Williams Decl., Exs. H (use since 1963) & I (“exclusive and continuous” use of Oakland International Airport mark for at least 5 years before 2020).^[2] The Port owns this mark, which covers “airport services” in Class 39. Id., Ex. H.

The Oakland airport sits in the southern part of the City of Oakland in the East Bay. Andretta Decl. ¶ 6; see generally Wan Decl. ¶ 10 (picture of Port's facilities, including the airport). The Port takes pride in providing an array of concessions at the airport that showcase the extensive and unique food and beverage, as well as retail, offerings from Oakland and the greater East Bay. Simon Decl. ¶ 15.

The Oakland airport received the International Air Transport Association (“IATA”) code OAK in or around the 1930s and has used it ever since. Simon Decl. ¶ 17. The Port has used the IATA code as part of its brand campaign and “I Fly OAK” logo. Id. ¶ 19. This logo and branding are prominently featured throughout the airport and in the Port's marketing materials. Id. ¶ 20; see generally Declaration of John Albrecht, ECF No. 56 (“Albrecht Decl.”) ¶¶ 8-14 (describing the “I Fly OAK” branding). The Port has three registered trademarks for variations on the “I Fly OAK” logo. Declaration of Tiffany Yamasaki, ECF No. 57 (“Yamasaki Decl.”), Exs. 6-8.

The Oakland airport is much smaller than SFO, with more limited infrastructure to support airlines. Andretta Decl. ¶ 7. It has far fewer flights than SFO. For example, in August 2023, which is typically the busiest month of the year, OAK averaged 140 flights per day, whereas SFO averaged 518 flights per day. As a result, OAK services far fewer passengers than SFO, around 11.2 million in 2023. Id. ¶ 7 & Exs. B & C. SFO and OAK share some of the same airlines. These include Alaska Airlines, Delta, Hawaiian Airlines, and Southwest. Id. ¶ 13.

In a recent North America Airport Satisfaction Study conducted by J.D. Power, SFO ranked near the top of all “mega” airports in overall customer satisfaction, whereas OAK ranked near the bottom of its category of “large” airports. Id. ¶ 8 & Ex. D.

C. Oakland International Airport's New Name

In theory, one of OAK's greatest assets should be its location. The airport is well positioned to offer easy access to air travel into and out of the San Francisco Bay Area, including into downtown Oakland, across the Bay Bridge to downtown San Francisco, to major universities, wine country, most major Bay Area employers, and other local Bay Area attractions and destinations. Wan Decl. ¶ 11. However, from research and analysis conducted by the Port's Aviation Division and others, the Port concluded that OAK's actual geographic location is not well known outside of the Bay Area. This is especially true outside of California and gets worse the farther away from the region one is. Id. ¶ 15. The Port believes that this lack of awareness combined with how flight search results are organized and displayed has created challenges for the Port in maintaining and securing nonstop flight routes that otherwise seem supportable by local population and related travel data. Id.; see also Simon Decl. ¶¶ 24-27; Declaration of Sabine Reim, ECF No. 53 (“Reim Decl.”) ¶¶ 20-25; Albrecht Decl. ¶¶ 22-26.

On March 29, 2024, the Port informed San Francisco of its intent to rename the Oakland International Airport the San Francisco Bay Oakland International Airport. Declaration of Ivar Satero, ECF No. 40 (“Satero Decl.”) ¶ 2. San Francisco formally objected to the name change on April 1, 2024, citing its Mark and the likelihood of confusion. Id., Ex. A. The Port publicly announced that the name modification would be considered by the Board at its April 2024 meeting. Simon Decl. ¶ 32. United Airlines, Japan Airlines, Vietnam Airlines, Aer Lingus, WestJet Airlines and Starlux Airlines objected to the proposed name change, asserting that it would or could cause confusion for travelers. Declaration of Doug Yakel, ECF No. 41 (“Yakel Decl.”) ¶¶ 15-20 & Exs. L-Q. In addition, tour operators America Unlimited GmbH, American Sky, Ferrara Viajes and CRD Touristik GmbH objected, also citing confusion. Id. ¶¶ 11-14 & Exs. H-K. On the other hand, Southwest Airlines, Volaris and Spirit Airlines supported the proposed name change. Simon Decl. ¶ 33 & Ex. B.

On April 11, 2024, the Board of Port Commissioners held a public meeting to consider the first reading of the ordinance to change the full formal name of...