The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER DENYING PLAINTIFF'S APPLICATION FOR A TEMPORARY RESTRAINING ORDER AND DENYING WITHOUT PREJUDICE PLAINTIFF'S APPLICATION FOR A PRELIMINARY INJUNCTION
On November 14, 2006, plaintiff GameCaster, Inc. ("Plaintiff") filed a complaint against defendants DirecTV, Inc. ("DirecTV"), IGN Entertainment, Inc. ("IGN"), and JetBlue Airways Corporation ("JetBlue;" collectively "Defendants") alleging several claims related to trademark infringement and dilution.*fn1 (Doc. No. 1.) On December 15, 2006, Plaintiff submitted to the Court an ex parte application for a temporary restraining order ("TRO") and preliminary injunction ("the application"). On December 19, 2006, Defendants filed an opposition. The Court held a telephonic hearing on the application on December 19, 2006. Richard Wirtz appeared on behalf of Plaintiff, and Diana Torres and David Ono appeared on behalf of Defendants. For the reasons stated below, the Court DENIES Plaintiff's application for a TRO and DENIES WITHOUT PREJUDICE Plaintiff's application for a preliminary injunction.
Plaintiff is a California corporation that develops, produces, and markets video game competitions and related programs for broadcast worldwide in all forms of media. (Pl.'s Mem. P. & A. Supp. Mot. TRO and Prelim. Inj. 1 ("Pl.'s Mem. P. & A.").) Plaintiff sells corporate sponsorships for such competitions and programs, licenses and sells Gamecaster-branded merchandise, and licenses and sells the Gamecaster Cybercam S2 technology, which films live video game tournaments from "within" the game. (Id.)
Plaintiff owns U.S. Service Mark Registration No. 2,931,561 for the service mark "GAMECASTER" in International Class 041, which encompasses "entertainment services, namely, staging, organizing and conducting computer and video game tournaments and events." (Notice Lodgment Supp. Pl.'s Mot. TRO and Prelim Inj., Ex. 1, at 3 ("Notice Lodgement").) The Certificate of Registration indicates that Plaintiff filed for the trademark on May 15, 2002, first used the trademark in commerce on August 24, 2004, and that the trademark was federally registered on March 8, 2005. Plaintiff also owns registered trademarks for a "GAMECASTER" mark in Europe, Australia, and Hong Kong. (Id., Ex. 2.) Plaintiff has applied for a United States trademark for the service mark "GAMECASTER" in International Classes 006, 009, 014, 016, 018, 020, 021, 025, 028, 035, and 038. (Id.) Plaintiff is also the owner of the World Wide Web URL address http://www.gamecaster.com, through which it sells merchandise with the service mark "GAMECASTER." (David MacIntosh's Decl. Supp. Pl.'s Mot. TRO and Prelim. Inj. ¶ 7 ("MacIntosh Decl."); Pl.'s Mem. P. & A. 2.)
David MacIntosh, president and chief executive officer of Plaintiff, stated in his declaration that Plaintiff has licensed its "GAMECASTER" mark, and the worldwide broadcast rights to its second Gamecaster branded video game competition, to the television station channel GamePlay HD, available nationally on Dish Network. (MacIntosh Decl. ¶ 4.) Plaintiff has concluded taping its second video game competition, titled "Gamecaster's Battlefield 2142 Invitational Presented by GamePlay HD." (Id. ¶ 5.) The eight episode series is scheduled to air on GamePlay HD in the first quarter of 2007. (Id.) MacIntosh also stated that Plaintiff has entered into a licensing representation agreement with Lisa Mark & Associates regarding Plaintiff's "GAMECASTER" mark, and that Plaintiff sells merchandise bearing the mark on its online retail store. (Id. ¶¶ 6-7.)
MacIntosh stated in his declaration that on May 18, 2005, Plaintiff's representatives met with executives from DirecTV to discuss a relationship between Plaintiff and DirecTV to organize, conduct, tape, and broadcast "GAMECASTER" branded video game competitions. (Id. ¶ 8.) Plaintiff presented its 2004 "GAMECASTER" branded television pilot and patent pending Gamecaster video game camera-controller technology during the meeting. (Id.) Plaintiff did not receive a response to their proposal, and on January 3, 2006, DirecTV issued a press release stating that it intended to launch a video game competition league similar to the one proposed by Plaintiff. (Id. ¶¶ 9, 11.)
In May 2006, DirecTV and IGN formed the Championship Gaming Series, a video game competition league planned to be launched in 2007. (Notice Lodgement, Ex. 5, at 1.) On July 21 through 22, 2006, DirecTV and IGN held a video game competition called the Championship Gaming Invitational ("July 2006 CGI") in San Francisco, California. (Id., Ex. 6, at 1.) Greg Munson, an executive producer and an advisory board member of Plaintiff, stated in his declaration that he was an audience member of the July 2006 CGI on July 22, 2006, and heard the hosts of the event use the term "gamecaster" on at least two occasions. (Greg Munson's Decl. Supp. Pl.'s Mot. TRO and Prelim. Inj. ¶ 5.)
On July 25, 2006, Plaintiff's attorney Thomas Foster sent DirecTV's attorney John Crook a letter stating that DirecTV's use of the term "GAMECASTER" in any manner for closely related goods and services constituted an infringement of Plaintiff's rights. (Notice Lodgement, Ex. 8, at 1.) On August 2, 2006, Foster e-mailed Ted Suzuki, Vice-President of Business and Legal Affairs for DirecTV, raising the same concern, indicating that Plaintiff believed that DirecTV would soon air footage of the July 2006 CGI, and requesting DirecTV take corrective action. (Id., Ex. 9, at 3.) In response, Suzuki e-mailed Foster on August 7, 2006, stating that although he did not believe the use of the term "gamecaster" to refer to the hosts/announcers at the July 2006 CGI constituted use as a trademark, the final footage of the broadcast of the July 2006 CGI would not contain the word "gamecaster." (Id. at 2.) Cort Carpenter, a member of Plainitiff's board of directors, stated in his declaration that he viewed a broadcast of the July 2006 CGI in October 2006 on DirecTV while on a JetBlue flight from San Diego to New York City, during which the term "gamecaster" was used. (Greg Munson's Decl. Supp. Pl.'s Mot. TRO and Prelim. Inj. ¶ 4, see also Notice Lodgement, Exh. 7, at 4, 7, 27 (transcript of broadcast provided by Plaintiff which describes the use of the term "gamecaster" to refer to announcers on the broadcast at least four times).)
On November 14, 2006, Plaintiff filed a complaint against Defendants alleging trademark infringement, false designation, and dilution under 15 U.S.C. § 1501, et seq. (the "Lanham Act"), common law trademark infringement under California law, dilution under section 14330 of California's Business and Professions Code, unfair competition under section 17200 of California's Business and Professions Code, and common law conversion under California law. (Compl. ¶¶ 1-81.) Plaintiff's prayer for relief for its trademark infringement, false designation, and dilution claims under the Lanham Act, and its trademark infringement and dilution claims under California law included a request for temporary, preliminary, and permanent injunctions enjoining Defendants from using Plaintiff's "GAMECASTER" trademark, or any similar terms, to promote its products or services, and from falsely designating or diluting the "GAMECASTER" mark. (Id. at p. 12.) Plaintiff's prayer for relief for its unfair competition claim included a request for temporary, preliminary, and permanent injunctions enjoining Defendants from competing unfairly against Plaintiff. (Id.)
On December 15, 2006, Plaintiff submitted to the Court the application requesting an order requiring Defendants to immediately cease from distributing or broadcasting the July 2006 CGI recording in its current form containing the mark "GAMECASTER," edit the use of the mark "GAMECASTER" from the production of the July 2006 CGI, and cease all use of the term "GAMECASTER" in current or future activities, recordings, or productions. (Pl.'s Mem. P. & A. 6.) The Court declined the ex parte application, and scheduled a telephonic hearing involving all of the parties for December 19, 2006. During the hearing, the parties agreed to file a joint stipulation by December 22, 2006, indicating that Defendants will not rebroadcast any portion of the July 2006 CGI using the term "gamecaster," or use the term "gamecaster" during the broadcast of its second Championship Gaming Invitational special, at least until the issues in this suit are resolved or this Court orders otherwise.*fn2
1. Legal Standard for Temporary Restraining Order and Preliminary Injunction
A TRO is a form of preliminary injunctive relief whose sole purpose is to preserve the status quo pending a hearing on the moving party's application for a preliminary injunction. See Schwarzer, et al., Cal. Practice Guide: Federal Civil Procedure Before Trial, ¶ 13:7, p. 13-4 (The Rutter Group 2006) (citing Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers, 415 U.S. 423, 439 (1974)). A preliminary injunction is a device for preserving the status quo and preventing the irreparable loss of rights before a judgment in the suit. See Textile Unlimited, Inc. v. A..BMH and Co., Inc., 240 F.3d 781, 786 (9th Cir. 2001). The same standard governs the issuance of both TROs and preliminary injunctions. See, e.g., Cal. Indep. Sys. Operator Corp. v. ...