Get Bak'D OKC, LLC v. Releaf Labs, LLC

• Docket Number: Case No. 119,859
• Decision Date: 26 October 2023
• Citation: 540 P.3d 1117
• Parties: GET BAK'D OKC, LLC, an Oklahoma limited liability company, Plaintiff/Appellant, v. RELEAF LABS, LLC, an Oklahoma limited liability company and Michael Girocco, an individual, Defendants/Appellees.
• Court: United States State Court of Criminal Appeals of Oklahoma. Court of Civil Appeals of Oklahoma

540 P.3d 1117

GET BAK'D OKC, LLC, an Oklahoma limited liability company, Plaintiff/Appellant,

v.RELEAF LABS, LLC, an Oklahoma limited liability company and Michael Girocco, an individual, Defendants/Appellees.

Case No. 119,859

Court of Civil Appeals of Oklahoma, Division No. 4.

Filed October 26, 2023

Mandate Issued: December 6, 2023

Jon E. Brightmire, DOERNER, SAUNDERS, DANIEL & ANDERSON, L.L.P., Tulsa, Oklahoma and D. Ward Hobson, Elizabeth V. Salomone, DOERNER, SAUNDERS, DANIEL & ANDERSON, L.L.P., Oklahoma City, Oklahoma, for Plaintiff/Appellant

J. Blake Johnson, Justin R. Williams, OVERMAN LEGAL GROUP, PLLC, Oklahoma City, Oklahoma, for Defendants/Appellees

OPINION BY JOHN F. FISCHER, JUDGE:

¶1 Get Bak'd OKC, LLC, appeals the denial of its motion for a preliminary injunction in this trademark infringement and deceptive trade practices action that it brought against Releaf Labs, LLC, and one of Releaf's owners, Michael Girocco.See12 O.S.2021 § 952(b)(2), andOkla. Sup. Ct. R. 1.60(c), 12 O.S.2021, ch. 15, app. 1 (regarding Interlocutory Orders Appealable by Right).Because Get Bak'd failed to establish all the elements necessary for the issuance of a preliminary injunction, we affirm.

BACKGROUND¹

¶2 Get Bak'd operates a medical marijuana dispensary through which it sells Thunder Stixx, a product it describes as a medical marijuana pre-roll infused with cannabis concentrate and kief.Get Bak'd began using the name Thunder Stixx with the sale of this product to the public as early as December 2018 and registered the name as a trademark with the State of Oklahoma on May 28, 2019.

¶3 Releaf Labs is a medical marijuana processor which processes and distributes a multitude of concentrated cannabis products using the brand name ALTRD.Releaf Labs sells its pre-rolled, marijuana cigarettes for sale to medical marijuana dispensaries using this brand name and the product name ALTRD Thundersticks.²Both Get Bak'd and Releaf Labs operate pursuant to the appropriate Oklahoma license.

¶4 Get Bak'd filed this action on June 18, 2021, against Releaf Labs and Girocco after it learned that Releaf Labs was selling its medical marijuana pre-rolled, cannabis-infused product using the name Thundersticks.Get Bak'd filed a motion for a preliminary injunction with its petition.Attached to the motion is the affidavit of Marion King, Chief Marketing and Technology Officer for Get Bak'd.The affidavit and attached exhibits establish Get Bak'd's trademark and use of the Thunder Stixx name.Also attached to the affidavit are documents purporting to be positive consumer reviews of Get Bak'd's Thunder Stixx product.Releaf Labs filed a response and the matter was set for hearing.At the hearing, no witnesses were called.The district court heard the arguments of counsel and found that Get Bak'd failed to establish the need for a preliminary injunction.Get Bak'd appeals the order denying its motion for a preliminary injunction.

STANDARD OF REVIEW

¶5An appellate court reviews the district court's decision regarding the issuance of an injunction for an abuse of discretion.Brown v. Oklahoma Secondary Sch. Activities Ass'n , 2005 OK 88, ¶ 11, 125 P.3d 1219, 1225."Granting or denying injunctive relief is generally within the sound discretion of the trial court and a judgment issuing or refusing to issue an injunction will not be disturbed on appeal unless the lower court has abused its discretion or the decision is clearly against the weight of the evidence."Sharp v. 251st St. Landfill, Inc ., 1996 OK 109, ¶ 4, 925 P.2d 546, 549."An abuse of discretion occurs when a decision is clearly against the weight of the evidence, contrary to law, or contrary to established principles of equity."Id .

¶6"We apply the appellate standard of review to what petitioners were required to show in the trial court in the context of the asserted errors on appeal by petitioners."Western Heights Indep. Sch. Dist. v. State , 2022 OK 79, ¶ 25, 518 P.3d 531, 542.

ANALYSIS

I.Burden of Proof

¶7 Get Bak'd's burden of proof to secure a preliminary injunction is well settled.

To obtain a preliminary injunction, the plaintiffs must show that four factors weigh in their favor: (1) the likelihood of success on the merits; (2) irreparable harm to the parties seeking injunctive relief if the injunction is denied; (3) their threatened injuries outweigh the injury the opposing party will suffer under the injunction; and (4) the injunction is in the public interest.

Owens v. Zumwalt , 2022 OK 14, ¶ 8, 503 P.3d 1211, 1214.Although " ‘the burden of proof is less stringent than required in proceedings on the merits,’ a right to this equitable remedy ‘must be established by clear and convincing evidence and the nature of the injury must not be nominal, theoretical or speculative.’ "Western Heights , 2022 OK 79, ¶ 25, 518 P.3d at 542(footnotes omitted)(quotingBowlin v. Alley , 1989 OK 66, ¶ 15, 773 P.2d 365, 370andRevolution Res., LLC v. Annecy, LLC , 2020 OK 97, ¶ 12, 477 P.3d 1133, 1141 ).

¶8 At the hearing on Get Bak'd's motion, the district court focused on the irreparable harm requirement.Relying on federal case law, Get Bak'd argued, as it did in its motion and supporting brief, that irreparable harm was presumed where an infringement of the plaintiff's trademark was established.For purposes of this Opinion, we assume, without deciding, that Get Bak'd established it was likely to succeed on the merits of its claim that Releaf Labs' use of the Thundersticks tradename infringed on Get Bak'd's registered trademark, Thunder Stixx.However, because Get Bak'd failed to establish the irreparable harm element necessary for the issuance of a preliminary injunction, we affirm the district court's denial of Get Bak'd's motion."[A]ll four factors must be proven by clear and convincing evidence in order to obtain a temporary injunction ...."Revolution Res., LLC v. Annecy, LLC , 2020 OK 97, ¶ 14, 477 P.3d 1133, 1141(affirming the denial of a preliminary injunction where the district court found the movant failed to show irreparable harm).

II.Irreparable Harm

¶9"Injury is irreparable when it is incapable of being fully compensated for in damages or where the measure of damages is so speculative that it would be difficult if not impossible to correctly arrive at the amount of the damages."Edwards v. Bd. of Cnty. Comm'rs of Canadian Cnty ., 2015 OK 58, ¶ 29, 378 P.3d 54, 63(citingHines v. Indep. Sch. Dist. No. 50, Grant Cnty. , 1963 OK 85, ¶ 14, 380 P.2d 943, 946 ).The movant must establish irreparable harm to be granted an injunction pursuant to 12 O.S.2021 § 1382.In re Estate of Foresee , 2020 OK 88, ¶ 10, 475 P.3d 862, 865.

¶10 Get Bak'd contends that it satisfied the irreparable harm requirement, citing paragraphs 10 and 11 of its Chief Marketing and Technology Officer's affidavit.In that portion of the affidavit, the affiant asserted that Releaf Labs' Thundersticks label is a "confusingly similar trademark" and its use constitutes "an appropriation of [Get Bak'd's] reputation, goodwill, business opportunities and revenues," and that Releaf Labs' use of the Thundersticks tradename "constitutes an appropriation of Plaintiff's reputation," which "infringe Plaintiff's rights in the Registered Trademark and harm Plaintiff's business reputation."No specific instances of this reputational harm are provided in the affidavit.And, although the affiant states that Get Bak'd has been damaged and is entitled to preliminary injunctive relief, the affidavit does not address the issue of whether the damage is claimed to be irreparable.In fact, the term "irreparable harm" does not appear in the affidavit.

¶11 At the hearing, Get Bak'd argued that "consumers are going to be confused" by the two similarly sounding product names but did not introduce any consumer testimony.Further, Get Bak'd did not identify any particular harm to its business reputation resulting from the alleged product confusion.In its appellate briefing, Get Bak'd speculates what "would happen if Releaf Labs sold a bad batch of its Thunder Sticks [sic] which made people sick."However, at the hearing, Get Bak'd did not attempt to show that Releaf Labs' product was inferior.The district court judge specifically asked if the Releaf Labs product was "inferior;" no evidence was offered to show that it was.And, it appears to be undisputed that during the relevant time Releaf Labs' ALTRD Thundersticks product won a "prestigious award" at an industry event in Oklahoma.Releaf Labs argued that Get Bak'd was more likely to benefit from, rather than be harmed by, any confusion between the two products.

¶12 Finally, the Chief Technology Officer's affidavit asserts that Get Bak'd "has no control over the quality of products or services offered by [Releaf Labs]."However, there is nothing in the record to establish that Get Bak'd was ever entitled to control over the quality of Releaf Labs' product or even had the ability to require Releaf Labs to meet its quality standards.Cf., Sonic Indus., LLC v. Simple Tie Ventures, LP , 2020 WL 4783917, at *5(W.D. Okla.July 23, 2020)(finding irreparable harm because "the [franchise] agreements have been terminated, [and Sonic] has lost control over its trademark and the ability to exercise quality control, approve vendors, conduct inspections, etc.").Absent showing that Releaf Lab's product was actually inferior, the affidavit does not advance Get Bak'd's argument for irreparable harm.

A.The Federal Law Presumption of Irreparable Harm

¶13 Here, Get Bak'd relies on a federal law presumption of irreparable harm in trademark infringement cases.Get Bak'd cites 15 U.S.C. § 1116, an injunctive relief provision of the Lanham Act,15 U.S.C. §§ 1051 through 1141n.In relevant part, section 1116(a) provides:

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

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