BGC Inc. v. Robinson

Background

BGC Inc. sued Rauhmel Fox Robinson and Black Girls Code Inc. over the “Black Girls Code” trademark. BGC alleged that it owned common-law and federally registered trademark rights in the mark for charitable fundraising, education, and charitable services. BGC said Defendants used the same mark on a website and social-media posts for similar services and represented that Robinson was BGC’s “new leadership” and that Black Girls Code Inc. was an “upgraded” version of BGC.

BGC had previously operated under the name “Black Girls Code Inc.” Its corporate registration later lapsed, and BGC renewed its registration under the name BGC Inc. Robinson then registered Black Girls Code Inc. as an exempt organization in Delaware and registered it to do business in California. The parties entered a stipulation under which Defendants agreed not to use the mark, or a confusingly similar mark, for in-person events until the case settled or the court ruled on a preliminary-injunction motion.

BGC moved for a preliminary injunction, which is a temporary court order intended to prevent harm while a case is pending. Defendants opposed the motion and asked the court to permit discovery before ruling. The court had earlier denied in part Defendants’ motion to dismiss, finding that BGC had alleged enough facts to show standing and support its claims against Robinson. The court dismissed BGC’s intentional-interference claim with leave to amend.

Discovery Request

The court denied Defendants’ request for discovery before ruling on the injunction. Defendants focused mainly on ownership of the mark, but the court found no evidence that Defendants had used the mark before BGC. The court also found that the existing record was sufficient to show BGC had standing to enforce the mark. The order stated that Defendants could later seek to dissolve the injunction based on discovery.

Likelihood of Success

To obtain preliminary relief on its federal and state trademark-infringement and unfair-competition claims, BGC had to show a likelihood that it owned a valid, protectable mark and that Defendants’ conduct was likely to confuse consumers.

The court concluded that BGC was likely to establish ownership of the mark. It also independently evaluated the factors commonly used to assess consumer confusion, including the similarity and strength of the marks, the relationship between the services, the marketing channels, and the alleged infringer’s intent. The court found that the marks were identical in sight, sound, and meaning; that both parties used them for the same services and on the internet; and that Defendants knew of BGC’s use of the mark. The court concluded that BGC was likely to succeed on its trademark and unfair-competition claims.

Other Injunction Factors

The court applied a statutory presumption of irreparable harm because it found that BGC was likely to succeed on its trademark-infringement claim. It found that Defendants did not rebut that presumption.

The court also found that the balance of hardships favored BGC. In reaching that conclusion, it considered evidence that Defendants may have asked volunteers to pay to participate and that Defendants knew about BGC’s mark. The court further found that preventing consumer confusion served the public interest.

Order

The court granted BGC’s motion for a preliminary injunction under Federal Rule of Civil Procedure 65. The injunction bars Defendants, and people acting with them, from:

- using, copying, imitating, or otherwise infringing the “Black Girls Code” mark; - distributing, selling, advertising, promoting, or displaying copies or confusingly similar versions of the mark; - making false statements likely to cause the public to believe that Defendants’ services were provided, authorized, or sponsored by BGC; - using the mark or variations of it in Defendants’ trade or corporate names to advertise or market services; - using or operating domain names or URLs incorporating “Black Girls Code,” or confusingly similar marks, to advertise or market services; - engaging in other activities infringing BGC’s rights in the mark, including posting events under the mark; and - helping others engage in those activities.

The court did not require Defendants to change their corporate name or surrender their URLs or Twitter handles at that stage. The injunction took effect when BGC posted the required security, remained effective during the proceeding or until dissolved by the court, and required BGC to post a $1,000 bond.