Emoe Norman, Todd Graves, & Todd Graves Golf Sch. LLC v. Greg Lavern, & Friesen Press, Inc.

• Decision Date: 20 May 2015
• Docket Number: Case No. CIV-14-01435-M
• Parties: ESTATE OF MOE NORMAN, TODD GRAVES, and TODD GRAVES GOLF SCHOOL LLC, Plaintiffs, v. GREG LAVERN, and FRIESEN PRESS, INC., Defendants.
• Court: U.S. District Court — Western District of Oklahoma

ESTATE OF MOE NORMAN, TODD GRAVES, and TODD GRAVES GOLF SCHOOL LLC, Plaintiffs, v. GREG LAVERN, and FRIESEN PRESS, INC., Defendants.

Case No. CIV-14-01435-M

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF OKLAHOMA

May 20, 2015

ORDER

Before the Court is plaintiffs the Estate of Moe Norman, Todd Graves, and Todd Graves Golf School LLC's (collectively, "plaintiffs") Motion for Temporary Restraining Order and Preliminary Injunction, filed April 10, 2010. On May 06, 2015, defendant Greg Lavern (hereinafter, "defendant") filed his response.¹ On May 11, 2015, the Court held an evidentiary hearing on plaintiffs' motion.² On May 15, 2015, plaintiffs' filed a supplemental brief.³ Based upon the parties' submissions and the evidentiary hearing, the Court makes its determination.

I. Introduction

Moe Norman was a renowned golf player known for his golf swing who is now deceased. Moe Norman, through his will, granted his estate the title and interest in and to Moe Norman's name and right of publicity. The Estate of Moe Norman also owns the trademark rights to the MOE NOREMAN® mark for uses in connection with golf instructions, DVDs, and other golf related goods/services. Subsequently, the Estate of Moe Norman licensed this right to Todd Graves and his school, the Todd Graves Golf School LLC, located in Oklahoma, where he teaches Moe Norman's golf swing. Allegedly, Todd Graves is a former student of Moe Norman who also previously served as a co-instructor with Moe Norman. The Estate of Moe Norman, Todd Graves, and the Todd Graves Golf School LLC sued defendant Greg Lavern, who is proceeding pro se and is also an alleged former student of Moe Norman for over thirty years. Defendant Lavern is the author of a book titled "FINISH TO THE SKY THE GOLF SWING MOE NORMAN TAUGHT ME: GOLF KNOWLEDGE WAS HIS GIFT TO ME".

Plaintiffs filed this suit alleging the following nine causes of action: trademark infringement, false designation of origin, false advertising, defamation, commercial disparagement, common law unfair competition, violation of the right of publicity, Oklahoma Consumer Protection Act violation, and Oklahoma Uniform Deceptive Trade Practices Act violation. Plaintiffs now move the Court to issue a preliminary injunction enjoining defendantfrom using the MOE NORMAN® trademark and from further disparaging the Estate of Moe Norman, Todd Graves, and/or Todd Graves Golf School LLC.

II. Discussion

A movant seeking a TRO or preliminary injunction must show: (1) a substantial likelihood of success on the merits; (2) irreparable injury to the movant if the injunction is denied; (3) the threatened injury to the movant outweighs the injury to the party opposing the preliminary injunction; and (4) the injunction would not be adverse to the public interest. Dominion Video Satellite, Inc. v. EchoStar Satellite Corp., 269 F.3d 1149, 1154 (10th Cir. 2001). "Because a preliminary injunction is an extraordinary remedy, the movant's right to relief must be clear and unequivocal." Id. (internal citation omitted). Whether to grant a preliminary injunction rests within the sound discretion of the trial court. United States v. Power Eng'g Co., 191 F.3d 1224, 1230 (10th Cir. 1999).

If, however, a movant is seeking a disfavored preliminary injunction—preliminary injunctions that alter the status quo, mandatory preliminary injunctions, or preliminary injunctions that afford the movant all the relief that it could recover at the conclusion of a full trial on the merits—the movant must satisfy a heightened burden. O Centro Espirita Beneficiente Uniao Do Vegetal v. Ashcroft, 389 F.3d 973, 975 (10th Cir. 2004). "[A]ny preliminary injunction fitting within one of the disfavored categories must be more closely scrutinized to assure that the exigencies of the case support the granting of a remedy that is extraordinary even in the normal course." Id. at 975. Specifically, "a party seeking such an injunction must make a strong showing both with regard to the likelihood of success on the merits and with regard to the balance of harms". Id. at 976.

In the case at bar, the Court finds that plaintiffs must satisfy a heightened burden because they are seeking a disfavored preliminary injunction. Specifically, the Court finds that at the very least plaintiffs are requesting an injunction that alters the status quo in that they seek to enjoin defendant from his alleged current improper use that impedes on plaintiffs' right in the Moe Norman mark and Moe Norman's right of publicity.

A. Substantial likelihood of success on the merits?⁴

Plaintiffs assert that they have a substantial likelihood of success on the merits on their (a) Lanham Act and parallel state law claims under the Oklahoma Deceptive Trade Practices Act ("ODTPA"), (b) right of publicity and Oklahoma Consumer Protection Act, Okla. Stat. tit. 15, § 753(29) claims, and (c) commercial disparagement claim.

1. Lanham Act and parallel state law claims

A Court may grant an injunction under the Lanham Act "according to the principles of equity and upon such terms as the court may deem reasonable[.]" 15 U.S.C. § 1116(a). Plaintiffs assert a federal trademark infringement claim under Section 32 of the Lanham Act, 15 U.S.C. § 1114, a false designation of origin claim under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), a false advertising claim under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1)(b), and a common law unfair competition⁵ claim. The Tenth Circuit Court of Appeals has held that because "[t]rademark infringement is a type of unfair competition; the two claims have virtually identical elements and are properly addressed together under . . . section 43 of the Lanham Act." Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1050 (10th Cir. 2008) (citations omitted); see also Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 527 (10th Cir. 1987) (noting that "passing off" under ODTPA is similar to section 43 of the Lanham Act claim to be determined by the "likelihood of confusion standard"). Thus, to prevail on their claims, plaintiffs must show that (1) the mark is protectable, (2) defendant used the trademark in connection with any goods or services, and (3) defendant's use "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." Utah Lighthouse Ministry, 527 F.3d at 1050 (internal quotation marks and citation omitted).

Where a mark is federally registered, it is presumed to be protected. 15 U.S.C. § 1115(a). Further, plaintiffs bear the burden of proving likelihood of confusion. See Utah Lighthouse Ministry, 527 F.3d at 1055.

Likelihood of confusion is typically evaluated according to a six-factor test in which the court considers: (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in using the mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. No one factor is dispositive.

Id. (internal citation omitted).

Plaintiffs assert that defendant is engaged in conduct intended, or at least has the inevitable effect, of creating a likelihood of confusion as to affiliation between defendant and the Moe Norman mark. Specifically, plaintiffs cite defendant's prominent and serial invocation of the "Moe Norman" name and his likeness as the key feature of all his promotional activities as evidence. Plaintiffs also contend that defendant's express claims that he is the "exclusive" keeper of Moe Norman's secrets, is Moe Norman's sole protégé, and is an heir to Moe Norman's golf knowledge are evidence of his intentions to create a likelihood of confusion that he is affiliated with plaintiffs who have the legal right to the Moe Norman trademark and his publicity rights.

Defendant, who is proceeding pro se, responds to all of plaintiffs' allegations in bulk. Construing his allegations liberally, defendant essentially contends, among other assertions, plaintiffs' motion should be denied because he holds the true knowledge of Moe Norman's original swing, which Moe Norman taught him for more than thirty years (as opposed to plaintiff Todd Graves who only knew Moe Norman towards the last ten years of Moe Norman's life and is teaching a much limited and different "single plane golf" swing that is different from Moe Norman's "original golf swing"); plaintiffs suffered no damages as it appears most of their instruction sessions sold out from their website; Moe Norman, while he was alive, visited defendant and gave him the exclusive rights to teach, promote, and write a book on his golf swing and their relationship; defendant's book is based on defendant's own personal and golf relationship with Moe Norman for over thirty years, which provides him with his own publicity to promote the book or his relationship with Moe Norman and is also protected under the First Amendment; the images he used in his book were used with permission from Lawson Mitchell who had copyrights on those pictures; plaintiffs have no valid trademark rights to the Moe Norman swing instruction because defendant learned the Moe Norman swing directly from MoeNorman and it is now part of defendant's own intellectual property which he owns a copyright to, which overrides defendant's trademark on Moe Norman's swing. In addition, defendant contends that he is the one who has suffered damages as a result of plaintiffs' threatening and forcing his publisher to remove his current book offline and other acts which he alleges led to the removal of his previous book and plaintiffs subsequently usurping that book's title as their domain name.

In the case at bar, it is clear that the Moe Norman mark is a federally...