Uber Promotions, Inc. v. Uber Techs., Inc.

162 F.Supp.3d 1253

Uber Promotions, Inc., a Florida Corporation, Plaintiff,

v.Uber Technologies, Inc., a Delaware Corporation, Defendant.

CASE NO. 1:15CV206-MW/GRJ

United States District Court, N.D. Florida, Gainesville Division .

Signed February 16, 2016

Alexander Daniel Brown, Scott Dale Smiley, Concept Law Group PA, Joseph Vincent Priore, Santucci Priore PL, Fort Lauderdale, FL, for Plaintiff.

Adam Felix Diamond, Lott & Fischer PL, Ury Fischer, Lott & Friedland PA, Coral Gables, FL, Chantal Hwang, John Crittenden, Cooley LLP, San Francisco, CA, John Paul Oleksiuk, Cooley LLP, Santa Monica, CA, for Defendant.

ORDER ON PRELIMINARY INJUNCTION

Mark E. Walker, United States District Judge

I. INTRODUCTION

You live in Gainesville and need to book a party bus, or perhaps a non-party bus or a limo to take a number of people to an event. You run a Google search for “Gainesville party bus” and, not satisfied with any of the offerings on page one of the results, turn to page two. There is a listing there for “Uber Promotions.” Thinking that perhaps this is somehow affiliated with Uber, a nationally known taxi-like service that has recently come to town, you click on the link. You are taken to a webpage with a bright green and purple “über PROMOTIONS” logo. The crux of this trademark infringement case is (roughly speaking) whether you could reasonably conclude that Uber Promotions and Uber the taxi-like service are in some way connected.

Plaintiff Uber Promotions, Inc. (“Promotions”) is a Gainesville, Florida company that provides a variety of services, including “promotional and event planning services, ... graphic, web design and print media photography services, ... modelling and talent agency services, [and] ... private venue rental services.” ECF No. 47, at 5 ¶ 12. It also provides “passenger transportation services, including through limousine and charter services.” Id. Promotions claims that it has been using “UBER,” “ÜBER,” “UBER PROMOTIONS,” and “ÜBER PROMOTIONS” since at least 2006. ECF No. 27-1, at 3 ¶¶ 5–6. Promotions is run by its President, Joey Friedman, ECF No. 36-1, at 2 ¶ 3, and its Vice-President, Michael Farzad, ECF No. 27-1, at 1 ¶ 3.

Defendant Uber Technologies, Inc. (“Tech”) is a San Francisco-based corporation (though it's incorporated in Delaware) that puts out a well-known software app allowing people to “get a ride on demand from a nearby driver registered with the UBER [Technologies] service.” ECF No. 63, at 2. Tech refers to these drivers—who use their own cars to transport passengers—as “driver partners.” ECF No. 37, at 1–3 ¶¶ 2–4; 10–13 ¶¶ 13–16. Tech launched its service in 2010 as UBERCAB and received a federal registration for that trademark on August 31 of that year. ECF No. 41-1, at 2. Later in 2010, Tech began using the mark “UBER” and registered that trademark on June 14, 2011. Id. at 10.¹

At first, Tech operated in just a few select cities, but it has expanded rapidly over the past few years.² Tech first operated in Florida during the 2012 Republican National Convention in Tampa. ECF No. 37, at 16–17 ¶¶ 22–23. Tech's first permanent entry into the Florida market came in November 2013 when it launched UberBLACK³ in Jacksonville. ECF No. 63, at 161. Tech expanded further into Florida throughout 2014; in August of that year, Tech started operating in Gainesville. Id. at 161–62.

Apparently alarmed by Tech's expansion into Florida—and in particular by the use of “Uber Promotions” on one of Tech's Twitter accounts—Promotions sent Tech a letter in April 2014 demanding that Tech “discontinue the use of the terms ‘Uber Promotions' in connection with [Tech's] marketing and advertising campaigns ... and undertake in writing that [Tech] will not at any time in the future use any of Uber Promotions name [sic] in any future marking [sic] or advertising campaigns, Twitter Accounts, or apply for registration of any trademarks/service mark that may be confusingly similar to Uber Promotions.” ECF No. 27-21, at 2–3. Tech responded by (1) removing the term “Uber” from the title of a page on its website that had previously been titled “Uber Promotions” and (2) responding (through counsel) to Promotions' letter as follows:

Re: UBER PROMOTIONS

Dear Ms.[REDACTED\]

Thank you for your April 18th letter.

Uber disagrees that there is any potential for confusion regarding its use of the "Uber Promotions" heading on Twitter. However, to resolve the matter amicably, and without admission, Uber has removed the "Uber Promotions" reference.

Very truly yours,

ECF No. 40, at 3–4 ¶¶ 7–10; ECF No. 40-1. Tech apparently did not hear from Promotions again until this suit was filed. ECF No. 40, at 4 ¶ 11.

Shortly after this suit was filed, Tech unveiled a new service called UberEVENTS. ECF No. 37, at 19 ¶ 31. This service allows customers to purchase rides for others that can be used at a particular time in the future. Id. at 19–21 ¶¶ 31–32. So, if a customer is hosting a large birthday party at a local park, that customer can purchase rides in advance with Tech driver partners for guests to use to go from their homes to the park and back again. Technically, the customer purchases a single code or a set of codes which are then sent to guests; the guests then use Tech's app as they normally would to request rides and use the code to pay for those rides. Id. This service “has been a popular option for corporate events.” Id. A customer wishing to purchase rides for their guests can do so through Tech's website. Id.

In this suit, Promotions brings various claims against Tech under the Lanham Act and Florida state law alleging trademark⁴ infringement and unfair competition. ECF No. 47. Promotions seeks preliminary injunctive relief to keep Tech from continuing to use its “UBER” marks in connection with its services throughout Florida. ECF No. 27. This order partially grants and otherwise denies the motion for a preliminary injunction.

II. PRELIMINARY INJUNCTION STANDARD

A. Basic Standard

“A district court may grant injunctive relief only if the moving party shows that: (1) it has a substantial likelihood of success on the merits; (2) irreparable injury will be suffered unless the injunction issues; (3) the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and (4) if issued, the injunction would not be adverse to the public interest.” Siegel v. LePore , 234 F.3d 1163, 1176 (11th Cir.2000) (en banc). A “preliminary injunction is an extraordinary and drastic remedy not to be granted unless the movant clearly carries the burden of persuasion as to the four prerequisites.” United States v. Jefferson County , 720 F.2d 1511, 1519 (11th Cir.1983) (quotation and citation omitted).

B. Preliminary Injunctions in Trademark Cases

In a trademark infringement case, there is an extra wrinkle to the preliminary injunction standard. For years, the Eleventh Circuit (along with many other circuits) held that courts should “extend a presumption of irreparable harm once a plaintiff establishes a likelihood of success on the merits of a trademark infringement claim.” N. Am. Med. Corp. v. Axiom Worldwide, Inc. , 522 F.3d 1211, 1227 (11th Cir.2008). The appropriateness of this presumption is doubtful, however, after the Supreme Court's decision in eBay Inc. v. MercExchange, LLC , 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). There the Court held that a similar rule in patent cases was wrong, and that “the traditional four-factor framework that governs the award of injunctive relief” should apply in patent cases. 547 U.S. at 394, 126 S.Ct. 1837.

Although eBay was a patent case and not a trademark case, and although it concerned a permanent rather than a preliminary injunction, courts have applied its reasoning in the context of preliminary injunctions in trademark cases and concluded that the presumption of irreparable harm is no longer good law. See Ferring Pharm., Inc. v. Watson Pharm., Inc. , 765 F.3d 205, 216 (3d Cir.2014) ; see also Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc. , 736 F.3d 1239, 1249 (9th Cir.2013). Other courts, while not going so far as to hold that the presumption of irreparable harm is no longer appropriate in trademark cases, have suggested that that is the correct (and inevitable, once the question is squarely presented) result. See, e.g. , Salinger v. Colting , 607 F.3d 68, 78 n.7 (2d Cir.2010).

The Eleventh Circuit is in this latter group of courts, having stated in dicta that “a strong case can be made that eBay' s holding necessarily extends to the grant of preliminary injunctions” in a trademark- infringement case. Axiom Worldwide , 522 F.3d at 1228. District courts in the Eleventh Circuit have dealt with Axiom Worldwide and eBay in a variety of ways, but have mostly declined to decide the question. See Sylvan Learning Inc. v. Learning Sols., Inc. , 795 F.Supp.2d 1284, 1295–99 (S.D.Ala.2011) (discussing the approaches taken by various courts in the Eleventh Circuit).

This Court is persuaded by eBay that a presumption of irreparable harm is no longer appropriate in a trademark-infringement case once a substantial likelihood of success on the merits is shown. The Supreme Court made clear in eBay that “a major departure from the long tradition of equity practice should not be lightly implied,” and that the Patent Act did not evince an intent on the part of Congress to depart from that tradition. eBay , 547 U.S. at 391, 126 S.Ct. 1837. The Lanham Act, like the Patent Act, provides that courts “shall have power to grant injunctions[ ] according to the principles of equity. ” 15 U.S.C. § 1116(a) (emphasis added). This does not suggest that irreparable harm should be presumed in a trademark infringement case, but instead indicates that the appropriateness of injunctive relief must be analyzed using the traditional framework. See Ferring Pharm. , 765 F.3d at 215–17.

That said, it is true that in trademark cases, just as in patent cases, “[w]hen it comes to discerning and...