Vinluan-Jularbal v. Redbubble, Inc.

1

2

3

4

5

6

7

8 UNITED STATES DISTRICT COURT

9 EASTERN DISTRICT OF CALIFORNIA

10

11 KAMILLE FAYE VINLUAN- No. 2:21-cv-00573-JAM-JDP

JULARBAL,

12

Plaintiff,

13 ORDER DENYING PLAINTIFF’S MOTION

v. FOR PRELIMINARY INJUNCTION

14

REDBUBBLE, INC.,

15

Defendant.

16

17 Plaintiff Kamille Faye Vinluan-Jularbal (“Plaintiff”)

18 purchased two sweatshirts from Defendant Redbubble (“Defendant”):

19 one with a United Nations symbol and the other with the words

20 “the Dadalorian” which she believes were counterfeit. See First

21 Am. Compl. (“FAC”) ¶¶ 35, 38, ECF No. 7. Plaintiff then brought

22 this class action against Defendant alleging violations of

23 (1) California’s Unfair Competition Law (“UCL”) and

24 (2) California’s Consumer Legal Remedies Act (“CLRA”). See

25 generally FAC. Before the Court is Plaintiff’s Motion for a

26 Preliminary Injunction. See Mot. for Prelim. Inj., ECF No. 16.

27 Defendant opposed this Motion, see Opp’n, ECF No. 36, to which

28 Plaintiff replied. See Reply, ECF No. 39. For the reasons set

1 forth below, Plaintiff’s request for a preliminary injunction is

2 denied.1

3

4 I. FACTUAL ALLEGATIONS AND PROCEDURAL BACKGROUND

5 Founded in 2006, Redbubble allows users to upload designs

6 that can be affixed to various products at the request of

7 consumers. FAC ¶¶ 6-7. When a consumer places an order,

8 Redbubble’s software automatically transmits the order to a

9 third-party manufacturer who prints the image onto a blank

10 product to be shipped and delivered to the customer. FAC ¶ 9;

11 Decl. of Daniel Vyrda in Supp of Def.’s Mot. for Prelim. Inj.

12 (“Vydra Decl.) ¶¶ 3, 8, 11-12. Plaintiff made two purchases from

13 Redbubble: the first, a United Nations sweatshirt, the second a

14 Dadalorian sweatshirt. FAC ¶¶ 35, 38. Plaintiff alleges the

15 items were counterfeit. Id. ¶ 43. She claims she was unaware of

16 their infringing nature at the time of purchase and would not

17 have bought them had she known they weren’t genuine. Id.

18 Plaintiff believes a high volume of the images available on

19 Redbubble’s website are counterfeit. Id. This is due in part to

20 the fact Redbubble does not proactively police its website for

21 counterfeit or infringing items. Id. ¶ 18. Rather Plaintiff

22 claims it is Redbubble’s policy to only review items when it

23 receives a takedown notice from or been sued by the rights

24 holder. Id. Further, Redbubble often does not ban an infringing

25 user until they have had several complaints. Id. ¶ 19.

26

27 1 This motion was determined to be suitable for decision without

oral argument. E.D. Cal. L.R. 230(g). The hearing was scheduled

28 for July 27, 2021.

1 Accordingly, Plaintiff brought this class action on behalf

2 of herself and those similarly situated, alleging violations of

3 the UCL and CLRA. Plaintiff, stressing the harm done to both the

4 trademark holders and consumers by such infringement, seeks a

5 preliminary injunction to enjoin Redbubble from selling any

6 counterfeit products on its website pending resolution of this

7 action. See Mot. at 23-25

8

9 II. OPINION

10 A. Judicial Notice

11 Courts may take judicial notice of “a fact that is not

12 subject to reasonable dispute because it: (1) is generally known

13 within the trial court’s territorial jurisdiction; or (2) can be

14 accurately and readily determined from sources whose accuracy

15 cannot reasonable be questioned.” Fed. R. Evid. 201(b).

16 Plaintiff has requested the Court take judicial notice of

17 two Australian Federal Court decisions; two declarations filed

18 in a Northern District of California case; the fact the United

19 Nations Organization logo and wordmark are registered with the

20 United State Patent and Trademark Office; and a jury verdict in

21 a case in the Central District of California. See Pl.’s First

22 Req. for Judicial Notice, ECF No. 17; Pl.’s Second Req. for

23 Judicial Notice, ECF No. 40. The court filings and

24 registrations with the United States Patent and Trademark Office

25 are all proper subjects of judicial notice. See Reyn’s Pasta

26 Bella, LLC v. Visa USA, Inc., 442 F.3d 741, 746 n.6 (9th Cir.

27 2006) (“We may take judicial notice of court filings and other

28 matters of public record.”); see also Cerner Middle E. Ltd. v.

1 iCapital, LLC, 939 F.3d 1016, 1023 n.8 (9th Cir. 2019) (taking

2 judicial notice of a French trial court decision); Threshold

3 Enter. Ltd. v. Pressed Juicery, Inc., 445 F.Supp.3d 139, 145

4 (N.D. Cal. 2020) (“Materials in the online files of the USPTO

5 and other matters of public record are proper subjects of

6 judicial notice.”) Accordingly, the Court GRANTS Plaintiff’s

7 request. In doing so the Court takes judicial notice only of

8 the existence of these documents, not disputed facts contained

9 within. Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 999

10 (9th Cir. 2018).

11 B. Analysis

12 1. Article III Standing

13 Article III of the Constitution limits the jurisdiction of

14 federal courts to actual “Cases” and “Controversies.” U.S.

15 Const. art. II, § 2. “One element of the case-or-controversy

16 requirement is that plaintiffs must establish that they have

17 standing to sue.” Clapper v. Amnesty Int’l USA, 566 U.S. 398,

18 408 (2013). In order to have standing “[t]o seek injunctive

19 relief, a plaintiff must show that [they are] under threat of

20 suffering [an] ‘injury in fact’ that is concrete and

21 particularized; the threat must be actual and imminent, not

22 conjectural or hypothetical; it must be fairly traceable to the

23 challenged action of the defendant; and it must be likely that a

24 favorable judicial decision will prevent or redress the injury.”

25 Summers v. Earth Island Inst., 555 U.S. 488, 493 (2009).

26 In Davisson v. Kimberley-Clark Corp., 889 F.3d 956 (9th

27 Cir. 2017), the Ninth Circuit held that a “previously deceived

28 consumer may have standing to seek an injunction against false

1 advertising or labeling, even though the consumer now knows or

2 suspects that the advertising was false at the time of the

3 original purchase, because the consumer may suffer an ‘actual

4 and imminent, not conjectural or hypothetical’ threat of future

5 harm.” Id. at 969. In so holding the Court rejected the

6 argument that a plaintiff does not have standing to seek

7 injunctive relief because “plaintiffs who are already aware of

8 the deceptive nature of an advertisement are not likely to be

9 misled into buying the relevant product in the future and,

10 therefore, are not capable of being harmed again in the same

11 way.” Id. at 968 (internal quotation marks and citation

12 omitted). Rather, the Court explained that such plaintiffs

13 still suffer a threat of future harm which in some cases “may be

14 the consumer’s plausible allegations that she will be unable to

15 rely on the product’s advertising or labeling in the future, and

16 so will not purchase the product although she would like to.”

17 Id. at 969-70.

18 Defendant argues Plaintiff does not have standing because

19 she “swears under oath that she will never ‘knowingly support’

20 Redbubble based on her unsubstantiated beliefs about items

21 available for sale on its Marketplace, and so admits that she

22 will never again purchase anything on the platform in the

23 future.” Opp’n at 10 (citing Pl. Decl. in Supp. Of Mot. ¶ 9,

24 ECF No. 16-1). The Court disagrees. While Plaintiff stated

25 that she “would never knowingly support a company selling

26 illegal products in violation of federal law” that does not mean

27 she faces no risk of future harm. Pl.’s Decl. in Supp. Of Mot.

28 ¶ 9. Because Plaintiff states that she would make further

1 purchases from Redbubble in the future if she could be assured

2 the products were not counterfeits, Pl.’s Decl. in Reply ¶ 4,

3 ECF No. 53-1, Plaintiff suffers a threat of future harm of being

4 “unable to rely on the product’s [authenticity], and so will not

5 purchase the product although she would like to.” See Davisson,

6 889 F.3d at 969-70. Accordingly, the Court finds Plaintiff has

7 standing to seek injunctive relief.

8 2. UCL and CLRA Standing

9 To have standing under the UCL or CLRA, Plaintiff must

10 “(1) establish a loss of deprivation of money or property

11 sufficient to qualify as injury in fact, i.e., economic injury,

12 and (2) show that that economic injury was the result of, i.e.,

13 caused by, the unfair business practice or false advertising

14 that is the gravamen of the claim.” Kwikset Corp v. Superior

15 Court, 51 Cal. 4th 310, 322 (2011).

16 Defendant argues Plaintiff has failed to establish standing

17 under the UCL or CLRA as Plaintiff hasn’t shown or offered any

18 convincing evidence that the items she purchased were

19 counterfeit. See Opp’n at 12. Plaintiff argues that she has

20 shown an economic injury as she explains she paid more for the

21 sweatshirt than she would have if she had known it was

22 counterfeit. See Pl.’s Reply at 3. But Plaintiff’s argument

23 fails to address Defendant’s argument that she offers

24 insufficient evidence to support this claim and, instead, asks

25 this Court to simply assume that the items she purchased are

26 counterfeit. See Def.’s Opp’n at 12 (citing Essence Imaging

27 Inc. v. Icing Images LLC, No. 13-cv-5449-CAS(PLAx), 2014 WL

28 1384028 at *2 (C.D. Cal Apr. 9, 2014) (noting that a plaintiff

1 must provide evidence to support a preliminary injunction)). The

2 Court refuses to reach any such conclusion or finding regarding

3 the items purchased by Plaintiff at this early stage of the

4 litigation.2

5 3. Whether Plaintiff is Entitled to Preliminary

6 Injunctive Relief

7 A preliminary injunction is an “extraordinary remedy.”

8 Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24

9 (2008). “A plaintiff seeking a preliminary injunction must

10 establish that he is likely to succeed on the merits, that he is

11 likely to suffer irreparable harm in the absence of preliminary

12 relief, that the balance of equities tips in his favor, and that

13 an injunction is in the public interest.” Am. Trucking Ass’ns,

14 Inc. v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir.

15 2009). Alternatively, “serious questions going to the merits’

16 and a hardship balance that tips sharply towards the plaintiff

17 can support issuance of an injunction, so long as the plaintiff

18 also shows a likelihood of irreparable injury and that the

19 injunction is in the public interest.” All. of the Wild Rockies

20 v. Cottrell, 622 F.3d 1045, 1053 (9th Cir. 2010).

21 A preliminary injunction can take two forms. A prohibitory

22 injunction prohibits a party from taking action and “preserve[s]

23 the status quo pending a determination of the action on the

24 merits.” Chalk v. U.S. Dist. Court, 840 F.2d 701, 704 (9th Cir.

25

2 Defendant also argues that Plaintiff failed to demonstrate

causation for claims based on fraud. See Opp’n at 13. However,

26

because Plaintiff’s claims are not based on fraud the Court need

27 not address these arguments. See MGA Ent., Inc. v. Dynacraft

BSC, Inc., No. 2:17-cv-08222-ODW-KS, 2018 WL 2448123, at *3 (C.D.

28 Cal. May 30, 2018).

1 1988). A mandatory injunction on the other hand “orders a

2 responsible party to ‘take action.’” Meghrig v. KFC W., 516

3 U.S. 479, 484 (1996). A mandatory injunction “goes well beyond

4 simply maintaining the status quo [p]endente lite [and] is

5 particularly disfavored.” Anderson v. United States, 612 F.2d

6 1112, 1114 (9th Cir. 1980) (internal quotation marks and

7 citation omitted). “In general, mandatory injunctions are not

8 granted unless extreme or very serious damage will result and

9 are not issued in doubtful cases or where the injury complained

10 of is capable of compensation in damages.” Id. at 115. The

11 status quo ante litem “means the last, uncontested status which

12 preceded the pending controversy.” Marlyn Nutraceauticals, Inc.

13 v. Mucos Pharma GmbH & Co., 571 F.3d 873, 879 (9th Cir. 2009)

14 (internal quotation marks and citation omitted).

15 The parties dispute whether the preliminary injunction

16 Plaintiff seeks is prohibitory or mandatory. See Opp’n at 14-

17 15; Reply at 4-5. Plaintiff argues that because in the

18 trademark context, the status quo is the status that existed

19 before the alleged infringer began using the alleging infringing

20 mark, her preliminary injunction is prohibitory in that it would

21 prohibit Redbubble from continuing to use counterfeit marks.

22 See Reply at 4-5. Defendant on the other hand contends that the

23 requested injunction is mandatory as it would require Redbubble

24 to take on the affirmative task of identifying which of its 51

25 million or so third-party product listings may be counterfeit

26 under the Lanham Act and remove them. See Opp’n at 14.

27 While it is true that in the trademark context, the status

28 quo ante litem is the status that existed before the alleged

1 infringement, see GoTo.com, Inc v. Walt Disney Co., 202 F.3d

2 1199, 1210 (9th Cir. 2000), the Court agrees with Defendant that

3 this case is distinguishable from those cited by Plaintiff and

4 the preliminary injunction is mandatory in nature. The

5 trademark cases Plaintiff relies upon involved a single

6 trademark infringement. See Pom Wonderful LLC v. Hubbard, 775

7 F.3d 1118, 1122 (9th Cir. 2014) (involving use of the mark “pom”

8 on a pomegranate-flavored energy drink); CycleBar Franchising,

9 LLC v. StarCycle Franchise, LLC, No. CV 19-9911-DMG (KSx), 2020

10 WL 3840442 (C.D. Cal. Mar. 27, 2020) (involving indoor cycling

11 studios use of the “CycleStars” mark). As such, the requested

12 preliminary injunction specified what marks were infringing and

13 what defendants were prohibited from using. See Pom Wonderful

14 LLC, 775 F.3d at 1122 (“Pom Wonderful moved for a preliminary

15 injunction to enjoin Pur from selling or marketing its ‘pom’

16 beverage.”); CycleBar Franchising, LLC, 2020 WL 3840442 at *1

17 (“StarCycle seeks an order from this Court preventing CycleBar

18 from using its CycleStars mark ‘in any form or stylization in

19 connection with providing fitness instruction or any goods or

20 services thereto.’”)

21 Contrastingly here, the relief Plaintiff seeks is much more

22 sweeping. Plaintiff asks the Court not just to prohibit the

23 sale of the alleged counterfeit United Nations and Dadalorian

24 sweatshirts she purchased but also to prohibit Defendant from

25 selling any counterfeit merchandise. See Mot. at 25 (“Plaintiff

26 respectfully requests that the Court enjoin Redbubble from

27 selling or allowing the sale of counterfeit products on its

28 website.”) While phrased in a prohibitory manner, practically,

1 because Plaintiff has not identified all the items that are

2 allegedly counterfeit, this would require Defendant to take on

3 the affirmative task of identifying which of its third-party

4 product listings may be counterfeit and ensure they are removed.

5 See Opp’n at 14. Accordingly, this case is more akin to Garcia

6 v. Google, Inc., 786 F.3d 733 (9th Cir. 2015). In that case the

7 plaintiff requested a preliminary injunction requiring Google to

8 remove a film that she claimed violated her copyright interest

9 from all of its platforms, including YouTube. Id. at 737. The

10 Ninth Circuit found this was a mandatory injunction because it

11 required Google to take affirmative action—to remove and keep

12 removing the film from YouTube and other sites, whenever and by

13 whomever the film was uploaded. Id. at 740. Similarly here,

14 Plaintiff’s requested injunction would require Defendants to

15 sift through and identify which images uploaded by third-parties

16 may be counterfeit and remove those items. Thus, the

17 preliminary injunction is mandatory in nature. Accordingly,

18 Plaintiff has a greater burden to demonstrate this relief is

19 warranted. See id.

20 Likelihood of Success on the Merits

21 Plaintiff has brought two claims: one under the UCL and one

22 under the CLRA. See generally FAC. The CLRA prohibits the

23 “[passing] off goods or services as those of another.” Cal.

24 Civ. Code § 1770(a)(1). The UCL creates a cause of action for

25 business practices that are (1) unlawful, (2) unfair, or

26 (3) fraudulent. Cal. Bus. & Profs. Code § 17200. The unlawful

27 prong of the UCL prohibits “anything that can properly be called

28 a business practice and that at the same time is forbidden by

1 law.” Cel-Tech Commc’n, Inc. v. Los Angeles Cellular Tel. Co.,

2 20 Cal. 4th at 180 (quotation marks and citation omitted). By

3 proscribing “any unlawful” business practice, the UCL permits

4 injured consumers to “borrow” violations of other laws and treat

5 them as unfair competition that is independently actionable.

6 Id. A practice may be unlawful and actionable under the UCL if

7 it violates any “civil, criminal, statutory or judicially made,

8 federal, state or local” law. McKell v. Washington Mutual,

9 Inc., 142 Cal.App.4th 1457, 1474 (Ct. App. 2006).

10 Here, Plaintiff brings a claim under the unlawful prong of

11 the UCL for violations of the Lanham Act. Defendant argues that

12 because Plaintiff would not have statutory standing to bring a

13 claim under the Lanham Act, she cannot bring a UCL claim for

14 such violations. See Opp’n at 17. The Court disagrees.

15 Defendant is correct that Plaintiff as a consumer would not have

16 standing to sue under the Lanham Act itself. See Barrus v.

17 Sylvania, 55 F.3d 468, 470 (9th Cir. 1995) (“As consumers,

18 [plaintiffs] have alleged neither commercial injury nor

19 competitive injury. Therefore [. . .] they lack standing.”)

20 However, this does not preclude her from bringing a claim under

21 the UCL for violations of the Lanham Act. See Ferrington v.

22 McAfee, Inc., No. 10-cv-01455-LHK, 2010 WL 3910169, at *15 (N.D.

23 Cal. Oct. 5, 2010) (finding that plaintiff could assert a Lanham

24 Act claim as the predicate for a UCL claim even though the

25 plaintiff had no standing under the Lanham Act). As the Court

26 in Ferrington explained, California courts have found that “[t]o

27 forestall an action under the unfair competition law, another

28 provision must actually ‘bar’ the action.” Id. (quoting Cel-

1 Tech, 20 Cal. 4th at 183). “Thus, if a statute indicates that

2 exclusive enforcement authority shall lie with the government

3 and explicitly precludes private enforcement, or if a statute

4 expressly provides immunity for the conduct alleged, a plaintiff

5 may not plead around this bar by bringing a claim under the

6 UCL.” Id. Further the court explained that “[t]he Lanham Act

7 permits private enforcement by individuals and businesses who

8 have suffered competitive or commercial injuries, and while the

9 courts have determined that standing is limited to such persons,

10 Defendant cites no authority suggesting that this limitation

11 constitutes an express, absolute bar.” Id. Accordingly,

12 “Plaintiffs may predicate their UCL claim on the Lanham Act,

13 even though they have no independent private right of action

14 under the Act itself.” Id.

15 Having determined that Plaintiff may bring a claim under

16 the unlawful prong of the UCL based on violations of the Lanham

17 Act, the next step is to determine whether Plaintiff has

18 demonstrated she is likely to succeed in showing a violation of

19 the Lanham Act. The Lanham Act prohibits the use of a

20 “reproduction, counterfeit, copy, or colorable imitation” of a

21 registered trademark in such a way as “is likely to cause

22 confusion, or to cause mistake, or deceive.” 15 U.S.C.

23 § 1114(1). There is a similar provision prohibiting the use of

24 “any word, term, name, symbol, or device, or any combination

25 thereof, or any false designation of origin” which “is likely to

26 cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.

27 § 1125(a)(1)(A). For infringement to rise to the level of

28 counterfeiting the defendant (1) must use a non-genuine mark

1 identical to the registered mark; (2) that was registered on the

2 Principal Register for use on the same goods to which defendant

3 applied the mark; (3) the registered mark was in use; and

4 (4) defendant was not authorized to use the mark. See State of

5 Idaho Potato Comm’n v. G & T Terminal Packaging, Inc., 425 F.3d

6 708, 721 (9th Cir. 2005).

7 Plaintiff’s UCL and CLRA claims rest on a theory that the

8 sweatshirts she purchased, as well as other products sold on

9 Redbubble’s website, are counterfeit. See Mot. at 13-20. But

10 Plaintiff asks the Court to conclude at this early stage of the

11 litigation that these items are in fact counterfeit without

12 offering much to support this contention. See Mot. at 13 (“That

13 massive quantities of counterfeit products are sold and offered

14 for sale by Redbubble on www.redbubble.com cannot be seriously

15 disputed.”) While Plaintiff offers evidence that the United

16 Nations Organization has an active registered word mark and

17 logo, see Decl. of Mathew Venezia, ECF No. 16-5., she offers no

18 convincing evidence that the mark on the sweatshirt was not

19 genuine3, that the mark was registered for use on the same goods

20 to which defendant applied the mark (sweatshirts), or that

21 defendant was not authorized to use the mark. See State of

22

23 3 Plaintiff’s declarations from her attorneys that they reviewed

the website and thought the items appeared to be counterfeit are

24 insufficient. See Decl. of Phillip Paley in Support of Prelim.

Inj. ¶ 3, ECF No. 16-13 (declaration of a paralegal at

25

Plaintiff’s attorney’s firm stating he visited Redbubble’s

website and numerous items appeared to be counterfeit); Tseng v.

26

Home Depot USA, Inc., No. C05-0908RSM, 2006 WL 521723, at *3

27 (W.D. Wash. Mar. 2, 2006) (noting that arguments of counsel and

“conclusory factual statements [. . .] are improper in support of

28 [a] motion for preliminary injunction.”)

eee mm RENE INI III □□□ RENEE NOI II IEEE IE ESI I EO

1 Idaho Potato Comm’n, 425 F.3d at 721. Accordingly, the Court

2 finds Plaintiff has not met her heavy burden of showing a

3 likelihood of success on the merits on either claim.

4 Because Plaintiff has failed to demonstrate a likelihood of

5 success on the merits the Court need not consider the remaining

6 elements. See Garcia v. Google, Inc., 786 F.3d 733, 740 (9th

7 Cir. 2015) (“Because it is a threshold inquiry, when a plaintiff

8 | has failed to show the likelihood of success on the merits, we

9 need not consider the remaining three Winter elements.”)

10 (internal quotation marks and citations omitted).

11

12 IIl. ORDER

13 Because Plaintiff has failed to meet her burden to

14 demonstrate preliminary injunctive relief is warranted, the Court

15 DENIES her Motion for Preliminary Injunction.

16 IT IS SO ORDERED.

17 Dated: September 20, 2021

18 kA

19 teiren staves odermacr 7008

20

21

22

23

24

25

26

27

28

14