Court Upholds Injunction in Dispute Over Trademarks

Tuesday, August 12, 2014

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Court Upholds Injunction in Dispute Over Trademarks

Panel Rules for Darts Group in Tiff With Ousted Member

By a MetNews Staff Writer

The Ninth U.S. Circuit Court of Appeals yesterday upheld an injunction that bars a former member of the Southern California Darts Association from infringing the group’s trademarks.

In an opinion by visiting Senior District Judge Mark Wolf of the District of Massachusetts, the panel ruled, among other things, that the loss of the group’s corporate status does not bar it from owning trademarks or suing under federal law to protect them.

The association has been in a four-year battle with Dino M. Zaffina, who either quit or was expelled from the group after loudly protesting the fact that it did not use his middle initial when reporting his scores on its website. In its complaint, the association claimed Zaffina had misappropriated the name of the organization, its initials, its “SoCal Darts” nickname, and its logo for his own purposes.

Zaffina claimed he had a right to the marks because he had incorporated the Southern California Darts Association, Inc. after learning that the plaintiff’s corporate charter had lapsed. He sued a number of darts players and bars where the game is regularly played for using the name without his permission; he also established a website in the group’s name.

U.S. District Judge R. Gary Klausner, in granting summary judgment and a permanent injunction, held Zaffina had purposefully appropriated the marks because of the group’s reputation, and said the members were likely to suffer irreparable harm if Zaffina was not stopped from using the trademark. The loss of corporate status is irrelevant, the judge ruled, because unincorporated associations can own trademarks and can sue in federal court to protect rights established by federal law.

Nor is the lack of trademark registration fatal to the group’s claims, the judge held, because the federal Lanham Act protects unregistered marks.

Klausner had previously granted a preliminary injunction, which he said was in the public interest because:

“Defendants concede that they are second-comers to the marketplace intentionally trying to trade upon the efforts and goodwill established by Plaintiff….Plaintiff has demonstrated that an injunction is in the public interest. Plaintiff has shown that it has spent considerable time, energy, and money to have the public associate its services with the name Southern California Darts Association. By using confusingly similar marks, Defendants are depriving darts enthusiasts of their ability to distinguish among the services of Plaintiff and those of Defendants.”

In granting final judgment in April of last year, Klausner made the injunctive relief permanent, ordering Zaffina to terminate the corporation or change its name, and awarded more than $115,000 in damages. The judge subsequently held Zaffina in contempt for failure to comply with the injunction.

Wolf, writing for the Ninth Circuit, said the district judge was essentially correct on all issues, including the irrelevance of the plaintiff’s loss of corporate status for nonpayment of taxes.

“Even assuming that SoCal unlawfully failed to pay taxes, its misconduct would be unrelated to the purpose of the federal trademark laws and, therefore, collateral and immaterial,” the judge wrote.

Judges Ronald M. Gould and Kim McLane Wardlaw joined in the opinion.

The association was represented on appeal by James Kawahito and Timothy Patrick Hennessey of Kawahito Shraga & Westrick LLP. Zaffina—who, according to LA Weekly, which has reported extensively on the dispute, has a law degree—represented himself.

The case is Southern California Darts Association v. Zaffina, 13-55780.