YVONNE GONZALEZ ROGERS, District Judge.
This Court, having read and considered the Complaint on file in this action by FELDENKRAIS GUILD OF NORTH AMERICA ("FGNA"), FGNA's Application for Temporary Restraining Order, Memorandum of Points and Authorities, Declaration of Nancy Haller and attached exhibits filed in support thereof, for a temporary restraining order, and an order to show cause why a preliminary injunction should not issue against Defendants FRANK WILDMAN and FELDENKRAIS MOVEMENT INSTITUTE ("Defendants"), being fully advised in the premises, and GOOD CAUSE appearing therefore, hereby finds and orders as follows, and makes the following findings of fact and conclusions of law:
1. FGNA is a not-for-profit membership association that promotes and supports the Feldenkrais Method® of somatic education and its practitioners. The purposes of the FGNA include, without limitation, increasing public awareness of the Feldenkrais Method® of somatic education, certifying and providing opportunities for continuing education of practitioners, and protecting the quality of the Feldenkrais® work and research in the effectiveness of the Feldenkrais Method® of somatic education.
2. FGNA and its predecessors have been using the FGNA Marks since as early as the early 1970s, and first obtained trademark registrations covering any of the FGNA Marks in 1985. FGNA first began certifying Feldenkrais® practitioners in 1989. Certified Feldenkrais® practitioners are allowed to use its trademarks, service marks and certification marks in connection with educational services relating to somatic education, among other services. FGNA and its authorized licensees have continuously used the FGNA's trademarks, service marks and certification marks in connection with these services for decades.
3. Only people personally trained by Dr. Feldenkrais, graduates of FGNA accredited training programs, and others who have received authorization from FGNA are eligible to be certified by, to become members of FGNA, and to use the FGNA's trademarks, service marks and certification marks.
4. There are about 1300 current members of the FGNA, including over 1150 members offering services in almost every state in the United States.
5. In recognition of FGNA's rights in trademarks, service marks and certification marks, the United States Patent and Trademark Office has issued to it numerous federal trademark registrations, including the following:
6. Each of these trademark registrations are current, in force and are incontestable under 15 U.S.C. § 1065. Through the extensive and widespread use of its marcks, the FGNA's trademarks, service marks, certification marks and related common law marks have acquired significant and extensive good will.
7. In addition, FGNA owns other trademarks, service marks and certification marks. For example, FGNA owns the certification mark GCFT
8. Through the extensive and wide-spread use of the FGNA's marks and the maintenance of the high quality of the services offered in connection therewith, especially through practitioner certification, the FGNA's marks have acquired significant and extensive goodwill. They are distinctive as a source identifier and certification indicator in connection with the FGNA providing of services and licensing of others to use its marks in connection with the services identified in those registrations and as indicating that the user has met the FGNA's rigorous requirements.
9. The FGNA regulates the quality of those persons holding themselves out as practitioners and trainers of the Feldenkrais Method® of somatic education by controlling the use of the marks. The FGNA has established rules for those who may use the FGNA Marks.
10. To be eligible to use the FGNA Marks, persons must provide verification of graduation from a professional Feldenkrais Method® training program that has been accredited by FGNA or another recognized international board under approved policies; completion of a "crossover plan" approved by the North American Training Accreditation Board (an entity related to FGNA that is responsible for accrediting training programs); or have been granted an exception to those requirements by the FGNA Board of Directors.
11. Applicants must complete continuing competence requirements, including self-assessment, creation of learning plan, and completion of twenty hours annually of appropriate continuing education. Applicants must complete 100 hours annually of professional practice.
12. Applicants must agree annually to comply with the following FGNA policies: "E2.3.2.1 The Feldenkrais Method® of Somatic Education Standards of Practice; E2.3.3.2 Code of Professional Conduct; and E2.4.2.1-ED FGNA Service Marks, Certification Marks and Trademarks."
13. Finally, applicants must complete the applicable form and pay the applicable fee.
14. Defendant Wildman was a longtime FGNA member who was authorized to use the FGNA Marks by virtue of having studied at and graduated from the 1977 San Francisco training. He was certified by the FGNA as a Feldenkrais® practitioner who was permitted to use the FGNA Marks. Every year, he has agreed to abide by the FGNA code of conduct and was obligated to abide by it. Defendant Wildman was president of FGNA during 1997. He was the chair of the FGNA committee that wrote the FGNA standards of practice. From 1978 through January 22, 2018, Defendant Wildman was a FGNA member and from 1989 through January 22, 2018, he was certified by the FGNA as a Feldenkrais® Practitioner who was permitted to use the FGNA marks. All of the FGNA Marks at issue were in existence and in use at the time he was the President of FGNA. Many of the FGNA Marks had been registered for many years before he was president of FGNA. Defendant Wildman is intimately familiar with the FGNA, its procedures and rights to use the valuable FGNA Marks.
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19. Defendant Wildman is the owner, operator, producer and manager of a website at the url Feldenkraislnstitute.org. Defendant Wildman uses this website to market and promote himself and Defendant Feldenkrais Movement Institute. [REDACTED\] The required changes have not been made, that website contains numerous unauthorized uses of the FGNA Marks.
20. Defendant Wildman is the owner, operator, producer and manager of a website at the url FrankWildmanMovement.org. Defendant Wildman uses this website to market and promote3463467647 himself. [REDACTED\] That website continues to include unauthorized uses of the FGNA Marks.
21. Defendant Wildman markets and promotes himself through various social media and social networking platforms such as Facebook, YouTube, and Linkedln. Each of Defendant Wildman's pages on these social media and social networking platforms continue to contain numerous unauthorized uses of the FGNA Marks.
22. Defendant Wildman is promoting himself at an entity called 1440 Multiversity, a conference center in Scotts Valley, California, in violation of FGNA's trademark rights and in violation of the Agreement. Defendant Wildman's biography for the 1440 Multiversity program states that he is a "Feldenkrais Method® expert." Defendant Wildman's biography for the 1440 Multiversity program uses the Feldenkrais Method® trademark five times in one paragraph.
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24. FGNA has carried out all of its obligations under the Agreement.
25. Both Defendants' services and FGNA's and its licensee's services are marketed and promoted through the Internet, key word searching, social media and social networking platforms and direct mail, and are in direct competition with each other.
26. FGNA has invested significant resources to advertise its and its licensee's educational services offered in connection with the FGNA Marks. FGNA is the beneficiary of many third party stories and articles providing significant and positive press coverage to the FGNA services resulting in the development of significant goodwill for the FGNA Marks.
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28. Defendants' improper use of the FGNA Marks has caused, and will continue to cause, damaging and actual confusion among the public as to whether Wildman is affiliated with, sponsored or endorsed by FGNA. FGNA has received numerous complaints about Wildman's ongoing use of the FGNA Marks, and his continuing to hold himself out as being associated with FGNA. Wildman's continued use of the FGNA Marks is harming the value of the FGNA Marks. [REDACTED\]
29. FGNA will suffer irreparableharm, including through theinjury to its reputation, if Defendants are allowed touse the FGNA Marks. FGNA will lose the ability to control its reputation if Defendants are allowed tooffer, promote, advertiseand/or conduct services the FGNA Marks. This loss of control is not recompensable by monetary damages. The quality of the services offered by Defendants is solely controlled by Defendants and is beyond FGNA's control. The quality of those services is damaging FGNA's reputation.
30. Any finding of fact herein that is actually a conclusion of law shall be so considered and construed.
31. FGNA is likely to prevail on its trademark infringement claims, related state law unfair competition claims, and breach of contract claims at trial.
32. As a result of Defendants' conduct, FGNA is likely to suffer immediate and irreparable harm loss, damage, and injury, unless FGNA's Application for Relief is granted.
33. The balance of potential harm to Defendants of being prevented from continuing their activities if a temporary restraining order is issued is far outweighed by the potential harm to FGNA, its goodwill and reputation built up in and associated with the FGNA trademarks, service marks and certification marks, and to its reputation if a temporary restraining order is not issued.
34. The public interest favors issuance of a temporary restraining order to protect FGNA's interests in and to the FGNA trademarks, service marks and certification marks, and to protect the public from being harmed, deceived and defrauded by Defendants' passing off of its services as authorized by or certified by, endorsed, or associated with FGNA.
35. Any conclusion of law herein that is actually a finding of fact shall be so considered and construed.
Based on the foregoing findings of fact and conclusions of law, FGNA's Application is hereby GRANTED as follows (the "Order"):
1. That Defendants Frank Wildman and Feldenkrais Movement Institute, their owners, affiliates, officers, directors, managers, agents, servants, employees, and any and all persons in active concert or participation with any of them (the "Restrained Persons"), are temporarily enjoined and restrained from:
a) Using without the authorization of FGNA, any of FGNA's trademarks, service marks, certification marks, logos, and trade names, including, but not limited to, the marks "FELDENKRAIS", "FELDENKRAIS METHOD", "FUNCTIONAL INTEGRATION", "FI", "AWARENESS THROUGH MOVEMENT", "ATM", "GUILD CERTIFIED FELDENKRAIS TEACHER", "GCFT" "GUILD CERTIFIED FELDENKRAIS PRACTITIONER", and "GCFP" (the "FGNA Marks") or any other name, logo, or mark that includes the designation "FELDENKRAIS" or that is confusingly or deceptively similar to any of the FGNA Marks, either alone or in conjunction with other words or symbols, as part of any trademark, service mark, certification mark, logo, trade name, corporate name, assumed name, domain name, website, email address, keywords, or metatags on or in relation to any goods or services marketed, promoted, advertised, sold, offered for sale or provided by the defendants, or in any other manner, including without limitation, any marketing literature, printed or electronic, on websites, on social media sites or on social networking sites; and
b) Using, authorizing, permitting, or encouraging others to use on either of Defendants' behalf, the FGNA Marks in any form or manner that would tend to identify or associate Defendants or their business or services with FGNA, including, without limitation, in the marketing, promotion, advertising, identification, sale or offer for sale of goods or services, or in any other manner.
1. That Defendants, Frank Wildman and Feldenkrais Movement Institute, their owners, affiliates, officers, directors, managers, agents, servants, employees, and any and all persons in active concert or participation with any of them, be preliminarily enjoined and restrained from:
a) Using without the authorization of FGNA, any of FGNA's trademarks, service marks, certification marks, logos, and trade names, including, but not limited to, the marks "FELDENKRAIS", "FELDENKRAIS METHOD", "FUNCTIONAL INTEGRATION", "FI", "AWARENESS THROUGH MOVEMENT", "ATM", "GUILD CERTIFIED FELDENKRAIS TEACHER", "GCFT" "GUILD CERTIFIED FELDENKRAIS PRACTITIONER", and "GCFP" (the "FGNA Marks") or any other name, logo, or mark that includes the designation "FELDENKRAIS" or that is confusingly or deceptively similar to any of the FGNA Marks, either alone or in conjunction with other words or symbols, as part of any trademark, service mark, certification mark, logo, trade name, corporate name, assumed name, domain name, website, email address, keywords, or metatags on or in relation to any goods or services marketed, promoted, advertised, sold, offered for sale or provided by the defendants, or in any other manner, including without limitation, any marketing literature, printed or electronic, on websites, on social media sites or on social networking sites; and
b) Using, authorizing, permitting, or encouraging others to use on either of Defendants' behalf, the FGNA Marks in any form or manner that would tend to identify or associate Defendants or their business or services with FGNA, including, without limitation, in the marketing, promotion, advertising, identification, sale or offer for sale of goods or services, or in any other manner.
