United States District Court, Middle District of Tennessee, Nashville Division
CRITTER CONTROL, INC.
CARY YOUNG, d/b/a ELITE CRITTER CONTROL
Honorable Aleta A. Trauger, District Judge
REPORT AND RECOMMENDATION
JULIET GRIFFIN United States Magistrate Judge
By Order entered July 16, 2013 (Docket Entry No. 54), the Court referred this action to the Magistrate Judge for case management, decision on all pretrial, nondispositive motions and report and recommendation on all dispositive motions under 28 U.S.C. § 636(b)(1), and to conduct any necessary proceedings under Rule 72 of the Federal Rules of Civil Procedure.
Presently pending before the Court is the plaintiff’s motion for a permanent injunction (Docket Entry No. 136) and proposed order granting a permanent injunction and other relief. See Docket Entry No. 138. The defendant has filed a response in opposition (Docket Entry No. 146) to the motion for a permanent injunction. Also before the Court is the plaintiff’s reply. See Docket Entry No. 147. For the reasons set out below, the motion should be granted and a permanent injunction should be entered in this action.
Critter Control, Inc. (“Critter Control”) is a Michigan corporation engaged in the business of animal and wildlife removal services and has franchises located across the United States. On January 11, 2013, it filed this action in the Western District of Michigan against Cary Young (“Young”), a citizen of Tennessee residing in Madison, Tennessee, who operates a wildlife removal and relocating business using the name “Elite Critter Control.” The plaintiff alleged that the defendant was violating the plaintiff’s protected rights in the service mark “CRITTER CONTROL, ” which the plaintiff uses in commerce as a designator for its services and which was registered with the United States Patent and Trademark Office (“USPTO”) on September 6, 1988. The plaintiff asserted a claim for trademark infringement under 15 U.S.C. § 1114(1) of the Lanham Act (the “Lanham Act”) and a claim for unfair competition under Michigan common law and sought damages and various forms of injunctive relief. See Complaint (Docket Entry No. 1). Throughout the action, the defendant has acted pro se. By Order entered July 12, 2013 (Docket Entry No. 51), the Defendant’s motion in support of improper venue (Docket Entry No. 29) was granted, and the case was transferred to this District.
By Memorandum and Order entered September 30, 2014 (Docket Entry No. 114), the Court granted summary judgment to the plaintiff as to the defendant’s liability with respect to the plaintiff’s Lanham Act claim, denied without prejudice the plaintiff’s request for summary judgment on the Michigan unfair competition claim, denied the defendant’s motions for summary judgment and a preliminary injunction, and denied as moot the plaintiff’s motion to dismiss the defendant’s counterclaims.
Additional proceedings were held before the Magistrate Judge, and a protective order was entered regarding the defendant’s production of his invoice books to the plaintiff, see Order entered October 31, 2014 (Docket Entry No. 130), the plaintiff filed a notice that it would not seek money damages in the action but reserved its right to seek a permanent injunction, an order of destruction of infringing articles, cancellation of the defendant’s Tennessee trademark, attorneys’ fees and court costs, pursuant to the Lanham Act, along with any and all other equitable and legal relief available to the plaintiff, see Docket Entry No. 134, and the parties agreed that the plaintiff’s Michigan unfair competition claim should be dismissed without prejudice. See Order entered November 20, 2014 (Docket Entry No. 141).
II. MOTION FOR PERMANENT INJUNCTION
The plaintiff has been granted summary judgment as to the defendant’s liability under the Lanham Act, and the plaintiff is entitled to appropriate relief. Although the plaintiff has forgone its right to seek damages under 15 U.S.C. § 1117(a), the plaintiff is entitled to seek injunctive relief in accordance with 15 U.S.C. § 1116, which provides, in pertinent part:
The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.
Further, 15 U.S.C. § 1118, provides:
In any action arising under this chapter, in which a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) of this title, or a willful violation under section 1125(c) of this title, shall have been established, the court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark or, in the case of a violation of section 1125(a) of this title or a willful violation under section 1125(c) of this title, the word, term, name, symbol, device, combination thereof, designation, description, or representation that is the subject of the violation, or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same, shall be delivered up and destroyed.
Generally, a plaintiff seeking a permanent injunction must demonstrate that it has suffered irreparable injury, there is no adequate remedy at law, that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted, and that it is in the public’s interest to issue the injunction. Audi AG v. D’Amato, 469 F.3d 534, 550 (6th Cir. 2006). Having reviewed the parties' filings, the Court finds that the plaintiff has supported its motion and is entitled to permanent injunctive relief in accordance with Rule 65 of the Federal Rules of Civil Procedure. The plaintiff has established (1) that it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) it is in the public’s interest to issue an injunction. The defendant’s use of the infringing mark has harmed the plaintiff, will continue to irreparably harm the plaintiff if not enjoined, and causes a likelihood of confusion to the public. ...