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UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

CASE NO.: CV 12-02009 SJO (DTBx) DATE: August 13, 2012

TITLE: Joshua Homme v. Kyuss Lives, Inc., et al.

========================================================================PRESENT: THE HONORABLE S. JAMES OTERO, UNITED STATES DISTRICT JUDGE

Victor Paul CruzCourtroom Clerk

Not PresentCourt Reporter

COUNSEL PRESENT FOR PLAINTIFFS:

Not Present

COUNSEL PRESENT FOR DEFENDANTS:

Not Present

========================================================================PROCEEDINGS (in chambers): ORDER GRANTING IN PART AND DENYING IN PARTPLAINTIFFS' MOTION FOR PRELIMINARY INJUNCTION [Docket No. 25]

This matter is before the Court on Plaintiffs Joshua Homme, Scott Reeder, and KyussPartnership's (collectively, "Plaintiffs") Motion for Preliminary Injunction ("Motion"), filed June 27,2012. Defendants Kyuss Lives, Inc., Kyuss Lives Recording, LLC, John Garcia, and Brant Bjork(collectively, "Defendants") filed an Opposition ("Opposition"), to which Plaintiffs replied ("Reply"). The Court found this matter suitable for disposition without oral argument and vacated the hearingset for July 30, 2012. See Fed. R. Civ. P. 78(b). For the following reasons, Plaintiffs' Motion forPreliminary Injunction is GRANTED IN PART AND DENIED IN PART.

I. FACTUAL AND PROCEDURAL BACKGROUND

In 1987, Homme, Garcia, and Bjork, together with Nick Oliveri and Chris Cockrell, formed a rockband known as Katzenjammer. (Decl. of John Garcia in Supp. of Opp'n ("Garcia Decl.") ¶ 3, July9, 2012, ECF No. 29.) In 1989, the band changed its name to Sons of Kyuss and released oneeponymous extended play ("EP").1 (Garcia Decl. ¶ 4.) The band shortened its name to Kyuss in1991. (Garcia Decl. ¶ 5.) By this time, Chris Cockrell was no longer part of the band. (GarciaDecl. ¶ 5.)

Kyuss obtained a record contract with Chameleon Music Group in 1991. (Decl. of Brant Bjork inSupp. of Opp'n ("Bjork Decl.") ¶ 8, July 9, 2012, ECF No. 30.) The recording contract wasbetween Chameleon Music Group and an entity identified as "Kyuss Partnership." (Bjork Decl.Ex. A.) The parties dispute whether an entity known as Kyuss Partnership actually existed in1991. Plaintiffs claim that an oral partnership did exist in 1991, with Homme, Garcia, Bjork, andOliveri as the partners (Decl. of Joshua Homme in Supp. of Mot. ("Homme Decl.") ¶ 5, June 27,

1 An EP is a musical recording containing more music than a single, but is too short toqualify as a full studio album.

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2012, ECF No. 25-2)2; Defendants highlight the fact that there was no written partnershipagreement at the time, and seem to suggest that no partnership existed in 1991 (Bjork Decl. ¶ 8;Garcia Decl. ¶ 11). The parties agree that the terms of any partnership agreement were notmemorialized in writing until 1994, as discussed later.

Kyuss released its debut album Wretch in September 1991. (Garcia Decl. ¶ 5.) Kyuss was apioneer in the genre of "desert rock," a style of rock music featuring down-tuned, bass-heavyguitar riffs as the principal framework of the sound. (Homme Decl. ¶ 10.) In 1992, the bandreleased its second album, Blues for the Red Sun. (Garcia Decl. ¶ 6.) Reeder replaced NickOliveri for the band's third album, referred to either as Kyuss or Welcome to Sky Valley, which wasreleased in 1994. (Garcia Decl. ¶ 7.) Upon leaving the band in 1992, Oliveri signed a PartnershipSettlement Agreement renouncing all his right, title, and interest in and to the band partnership andits assets. (Homme Decl. ¶ 6.) Although Bjork was featured on Welcome to Sky Valley, he alsoleft the band before this album was released. (Garcia Decl. ¶ 7; Bjork Decl. ¶ 9.) Bjork executeda Partnership Settlement Agreement dated June 13, 1993, withdrawing as a partner and affirmingthat he had no interest in or rights to any assets or goodwill of the Partnership or in the nameKyuss. (Homme Decl. ¶ 7 and Ex. A.)

On January 1, 1994, Homme, Reeder, and Garcia executed a Partnership Agreement, whichformally established the Kyuss Partnership. (Homme Decl. Ex. B.) Among the relevant terms ofthe partnership agreement is the following:

The name under which the Partnership will conduct its business isKyuss Partnership ("Partnership Name"), or such other name(s)agreed upon by the Partners from time to time. The Partners agreethat, notwithstanding anything herein to the contrary, the PartnershipName shall not be used by any Partner separate and apart from thePartnership's use of the Partnership Name.

(Homme Decl. Ex. B, at ¶ 1.)

In 1995, Kyuss released its fourth studio album, ... And the Circus Leaves Town, with new memberAlfredo Hernandez. (Garcia Decl. ¶ 8.) After the band went on tour to promote ... And the CircusLeaves Town, the group parted ways. (Garcia Decl. ¶ 9.) No further studio albums were madewith the name Kyuss, and there were no additional music tours by the band Kyuss. (Garcia Decl.¶ 9.) Throughout the band's recording career, Garcia was the only vocalist. (Garcia Decl. ¶ 10.)

Although Kyuss stopped recording and touring together in 1995, their music continues to generateconsistent revenue for the band members. (Homme Decl. ¶¶ 11-12.) In 2000, a compilationalbum was released entitled Muchas Gracias: The Best of Kyuss. (Homme Decl. ¶ 11.)

2 To the extent this order relies on evidence to which one of the parties has objected, theobjection is overruled.

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As some point in time, trademarks were registered to the Kyuss Partnership for the trademark"Kyuss" (the "Kyuss Mark") in Classification 009 (Musical Recordings) and Classification 041(Education and Entertainment Services). (Decl. of Steven Webb in Supp. of Opp'n ("Webb Decl.")¶ 8, July 9, 2012, ECF No. 31.) However, both of these trademarks were canceled in 2003. (Webb Decl. ¶ 8.) The reason for the cancellations has not been explained to the Court. However, another trademark for the Kyuss Mark in Classification 025 (Clothing) was alsoregistered to the Kyuss Partnership, and this trademark has not been canceled. (Webb Decl.¶ 10.)

In 2010, Garcia performed around thirty concerts in Europe as Garcia Plays Kyuss, in which heplayed mostly songs recorded by Kyuss. (Garcia Decl. ¶ 27.) Bjork would sit in on drums for afew songs during each Garcia Plays Kyuss show. (Garcia Decl. ¶ 27.) In June 2010, Nick Oliverijoined Garcia and Bjork to perform some songs during one of the Garcia Plays Kyuss shows. (Garcia Decl. ¶ 28.)

On July 21, 2010, Garcia sent Homme an email with a link to a video of Garcia Plays Kyuss. (Garcia Decl. ¶ 29.) Homme responded on July 28, 2010, and wrote the following language: "Ithink Garcia Plays Kyuss is a fantastic idea dude & I'm glad you're doing it. You're breathing newlife into our long lost band & blowing peoples [sic] minds whilst doing it. . . . Look, I know youdidn't need my blessing to carry out this idea, but I gotta say: for whatever it's worth, I admire whatyou're doing & I think you're a badass." (Garcia Decl. Ex. D.) The text of this email exchangenever references the concept of "Kyuss Lives."

In 2010, Garcia had plans of releasing a solo album, Garcia vs. Garcia, in 2011. (Homme Decl.¶ 19.) In November 2010, Garcia, Bjork, and Oliveri announced that they would be touring Europeunder the name Kyuss Lives in March and April of 2011. (Garcia Decl. ¶ 30.) Garcia informedHomme and Reeder of this plan via email on November 3, 2010. (Garcia Decl. Ex. E.) Garciawrote: "Just wanted to touch base with you both in regard to what you may or may not have heardabout me doing this Kyuss Lives Chapter Two piece. This is being done for one reason and onereason only, to promote Garcia Vs Garcia which will be coming out about this time next year. . . .[T]his is something I do not plan of making a habit of, I assure you . . . ." (Garcia Decl. Ex. E.) Reeder responded the same day, stating: "I think you know that for me, it's everyone involved ornothing . . . ." (Garcia Decl. Ex. E.) Homme did not respond to the email. (Garcia Decl. ¶ 30.) However, based on Garcia's email and other statements Garcia had made to the media, Hommebelieved that the Kyuss Lives tour would be a limited engagement and was solely a promotionaltour to promote the forthcoming Garcia vs. Garcia project. (Homme Decl. ¶ 19.)

The European Tour of Kyuss Lives enjoyed tremendous success. (Garcia Decl. ¶ 31.) Based onthat success, Garcia, Bjork, and Oliveri booked a Kyuss Lives tour of Australia and New Zealandin May 2011. (Garcia Decl. ¶ 31.) In June 2011, Kyuss Lives announced additional concert datesfor Europe and North America based on the success of their previous shows. (Garcia Decl. ¶ 32.) Because of Oliveri's unavailability, Reeder joined Bjork and Garcia for eleven of the Kyuss Livesshows during 2011. (Garcia Decl. ¶ 34.)

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The Kyuss Lives tours were promoted with promotional flyers that included the language "KYUSSLIVES," all in capital letters, with the word "LIVES" in larger font than the word "KYUSS." (GarciaDecl. ¶ 36, and Ex. F.) The promotional materials also listed the last names of the individual bandmembers who would be performing. (Garcia Decl. Ex. F.)

Homme gave an interview to the Los Angeles Times that was published on October 3, 2011, inwhich he wished his former band-mates luck in their Kyuss Lives tour. The newspaper quoted himas saying: "I want to shout from the mountaintops: 'Go get 'em, boys!' . . . I'm stoked for them. I hope they blow your mind." (Garcia Decl. Ex. G.) However, Homme informs the Court that atthe time he gave this interview, he still believed that Kyuss Lives was a limited engagement thatwas solely to promote Garcia's solo work, which would bear a different name or mark. (HommeDecl. ¶ 21-22.)

Homme informs the Court that by January 2012, he had begun to realize that Defendants werenot using Kyuss Lives to promote other projects; rather, Kyuss Lives was the main event, withmore concert tours planned and new studio recordings under the name Kyuss Lives in the works. (Homme Decl. ¶¶ 23-24.) At Homme's request, a meeting was held on January 25, 2012, thatHomme, Homme's manager, Garcia, and Reeder attended. (Homme Decl. ¶ 23; Garcia Decl.¶ 41.) Homme expressed his position that he did not want any recordings, including liverecordings, released under the name Kyuss Lives. (Homme Decl. ¶ 24.) However, no agreementwas reached at this meeting. (Garcia Decl. ¶ 41.) On February 20, 2012, a hard rock gossip website published the news that Kyuss Lives was mixing a live record. (Homme Decl. ¶ 25.)

On September 9, 2011, a lawyer working for Defendants filed applications to register trademarksfor Kyuss Lives under Classifications 009 (Musical Recordings), 041 (Education and EntertainmentServices), and 025 (Clothing). (Webb Decl. ¶ 4.) Noting that the trademarks for Kyuss had beencanceled in the Classifications for Musical Recordings and Entertainment, Defendants' lawyersubmitted applications for trademarks for "Kyuss" in these classifications as well. (Webb Decl. ¶¶4, 7-9.) Realizing that there was a live trademark registered to the Kyuss Partnership for theKyuss Mark in the Clothing Classification, Defendants' lawyer also filed a Declaration of ContinuingUse and Incontestability with respect to this trademark. (Webb Decl. ¶¶ 5, 10.) Plaintiffs believethat Defendants are trying to steal the rights not only to the trademark Kyuss Lives, but also to thetrademark for Kyuss. (Homme Decl. ¶ 24.) Defendants' trademark applications for Kyuss andKyuss Lives were published for opposition on February 21, 2012, and Homme became aware ofthem two days later. (Homme Decl. ¶ 26.) Homme initiated Opposition proceedings against thesetrademark applications. (Homme Decl. ¶ 27.)

Homme filed this action on March 9, 2012. On May 21, 2012, with the Court's permission, a FirstAmended Complaint ("FAC") was filed, adding Reeder and the Kyuss Partnership as Plaintiffs. The FAC states causes of action for: (1) statutory trademark infringement; (2) federal statutory andcommon law false designation of origin and/or unfair competition; (3) misrepresentation andpassing off; (4) common law trademark infringement; (5) unfair competition under California

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statutes; (6) common law unfair competition; and (7) false advertising. (See generally FAC,May 21, 2012, ECF No. 19.)

On May 21, 2012, Rolling Stone Magazine published an interview with Bjork and Garcia thatstated, among other things, that Defendants had a record deal and would begin recording in July. (Homme Decl. ¶¶ 29-30.) On June 27, 2012, Plaintiffs filed the instant Motion for PreliminaryInjunction. Plaintiffs seek an order from the Court enjoining Defendants from using the KyussMark or any mark containing the Kyuss Mark, including the mark Kyuss Lives. (Mot. 1, June 27,2012, ECF No. 25.)

II. DISCUSSION

A. Legal Standard

"A preliminary injunction is an extraordinary and drastic remedy." Munaf v. Geren, 553 U.S. 674,689 (2008) (internal quotation marks omitted). The decision to grant a preliminary injunction iscommitted to the sound discretion of the trial court. See L.A. Mem'l Coliseum Comm'n v. Nat'lFootball League, 634 F.2d 1197, 1200 (9th Cir. 1980). Courts may issue an injunction only "upona clear showing that the plaintiff is entitled to such relief." Winter v. Natural Res. Def. Council, Inc.,555 U.S. 7, 22 (2008). In Winter, the Supreme Court articulated the following test for preliminaryinjunctions:

A plaintiff seeking a preliminary injunction must establish [1] that heis likely to succeed on the merits, [2] that he is likely to sufferirreparable harm in the absence of preliminary relief, [3] that thebalance of equities tips in his favor, and [4] that an injunction is in thepublic interest.

Small v. Avanti Health Sys., LLC, 661 F.3d 1180, 1187 (9th Cir. 2011) (quoting Winter, 555 U.S.at 20) (alterations in original). Under an "alternate formulation of the Winter test," the Ninth Circuithas held that a court can issue a preliminary injunction where "serious questions go to the meritsand a balance of hardships [] tips sharply towards the plaintiff . . . so long as the plaintiff alsoshows the likelihood of irreparable injury and that the injunction is in the public interest." Farrisv. Seabrook, 667 F.3d 1051, 1057 (9th Cir. 2012) (internal quotation marks omitted).

B. Analysis

1. Likelihood of Success

In order to obtain a preliminary injunction, Plaintiffs must show that they have a likelihood ofsuccess on the merits. In the instant case, this means Plaintiffs must show that they are likely toprevail on two separate points: (1) that Plaintiffs have intellectual property rights in the Kyuss Markthat allow them to prevent others (including Defendants) from using the Kyuss Mark; and (2) thatDefendants have made unauthorized use of the Kyuss Mark or a confusingly similar mark. The

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Court will analyze each of these points to determine if Plaintiffs have displayed a likelihood ofsuccess on the merits.

a. Plaintiffs' Ownership of the Kyuss Mark

As discussed above, at some point in time, trademarks for the Kyuss Mark were registered to theKyuss Partnership. These trademarks were canceled in two classifications (music recordings andentertainment services), but the trademark is live in a third classification (clothing).

Regardless of whether the registered trademark is live or has been canceled, it is the use of themark in commerce that establishes the trademark right, not merely the registration of the mark. "It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquireownership of a trademark it is not enough to have invented the mark first or even to haveregistered it first; the party claiming ownership must have been the first to actually use the markin the sale of goods or services." Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1219 (9thCir. 1996). There is no question that, in the instant case, the Kyuss Partnership used the markKyuss in commerce at least as early as 1994 (and likely earlier, assuming that the KyussPartnership existed prior to 1994).

Moreover, the Kyuss Mark has been used in commerce in the fields of music recordings andentertainment consistently to the present, as the Partnership continues to offer Kyuss's previously-recorded music for sale, and the audio recordings continue to generate revenue. Even adisbanded performing group does not abandon its trademark rights to the group name so long asit continues to promote the sales of recordings made while the group was active. Kingsmen v. K-Tel Int'l, Ltd., 557 F. Supp. 178, 183 (S.D.N.Y. 1983) ("Even though plaintiffs disbanded theirgroup in 1967 and ceased recording new material, there is no evidence suggesting that they failedto use the name Kingsmen during the period from 1967 to the present to promote their previouslyrecorded albums. Moreover, the fact that these individuals continue to receive royalties forKingsmen recordings flies in the face of any suggestion of intent to abandon use of the nameKingsmen. These plaintiffs have no more abandoned their right to protect the name of Kingsmenthan have The Beatles, The Supremes or any other group that has disbanded and ceasedperforming and recording, but continues to collect royalties from the sale of previously recordedmaterial."). The parties have not explained to the Court why two of the trademark registrations forthe Kyuss Mark were canceled, but it does appear that the Kyuss Mark was first used incommerce in either 1989 or 1991, and it has been in continuous use since that date.

The more complicated question is which entity holds the right to the Kyuss Mark, a mark that hasbeen in continuous use since 1989 or 1991. Although Defendants highlight the fact that the termsof the Kyuss Partnership were not memorialized in writing until 1994, the evidence profferedsupports Plaintiffs' position that an oral partnership agreement was in place since at least 1991. In 1987, a group of individuals banded together with a common purpose - recording music,releasing music recordings for sale, giving live concerts - and an intent to split any resultant profits. As of 1991, this group referred to itself as Kyuss, and it was comprised of four members.

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Notwithstanding the fact that there was no formal, written partnership agreement at the time, whenthe band members entered into a recording contract with Chameleon Music Group in 1991, theyentered the contract as Kyuss Partnership. (Bjork Decl. Ex. A.) Notwithstanding the fact thatthere was no formal, written partnership agreement at the time, when two of the band membersleft the band - Nick Oliveri in 1992 and Bjork in 1993 - they signed a Partnership SettlementAgreement renouncing their rights and interest in the band partnership and its assets. (HommeDecl. ¶¶ 6-7, and Ex. A.) Plaintiffs have succeeded in showing that a partnership existed evenbefore the formal partnership agreement was drafted in 1994. This partnership was created atleast as early as 1991. It was initially comprised of Homme, Garcia, Bjork, and Nick Oliveri. In1992, Nick Oliveri left the partnership and Reeder joined the partnership. In 1993, Bjork left thepartnership. The Court is not convinced by Defendants' argument that because the 1994Partnership Agreement states that the Partners "form a general partnership," that therefore apartnership must not have existed before that time. The Court finds that Plaintiffs have shown ahigh likelihood of success on the merits in their argument that a partnership existed beginning inat least 1991, and that this partnership was formalized in 1994.

The trademarks, when registered, were registered to the entity Kyuss Partnership. Thus, theKyuss Partnership was the entity that held the trademarks rights to the Kyuss Mark. As the Courthas explained, even absent registration, the Kyuss Mark belongs to the Kyuss Partnership, as itwas the Kyuss Partnership that recorded music under the name Kyuss, toured and gave musicalperformances under the name Kyuss, and sold Kyuss-branded merchandise.

Defendants argue, however, that the Kyuss Partnership no longer exists. (Opp'n 13-15.) Interestingly, Defendants do not actually argue what becomes of the rights to Kyuss Mark in theevent that they are correct that the Kyuss Partnership has terminated. Is it their position that theKyuss Mark has been abandoned, such that anyone could begin to use it in commerce and claimpriority of use? This result seems unlikely in light of the rule espoused in Kingsmen, 557 F. Supp.at 183. Is it their position that each of the former partners has the right to use the Kyuss Markindividually? This result is frowned upon.

[W]hen an entity is dissolved and the business symbolized by themark is divided among the separate participants, the potential arisesfor multiple and fragmented ownership of the trademark property. Under the 'Customer Protection' policy, good will symbolized by amark should be an indivisible asset. If upon dissolution, good will andits trademark symbol is apportioned among owners of the dissolvedentity, the ensuing fragmented use can lead to customer confusion. Such confusion can lead to destruction of the mark's ability to identifyand distinguish a single source.

J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 16.40 (4th ed. 2012.) Furthermore, "A court should apply the relevant state law governing dissolution in such a way asto prevent multiple, fragmented trademark use. . . . For example, in a trademark dispute between

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the manager and performers of a performing group, it is not proper to split the mark and allow bothparties to use it." Id. at § 16.44.

Not even Defendants seem to know what happens to the Kyuss Mark assuming the KyussPartnership terminated; notwithstanding this ambiguity, the Court finds that Plaintiffs havedemonstrated a likelihood of success on the merits regarding their argument that the KyussPartnership has not terminated, but rather, it is an extant entity.

Defendants put forth two main arguments to support their position that the Kyuss Partnership isno longer. First, they point to paragraph 15(a)(iii) of the Partnership Agreement, which provides:

Dissolution. The Partnership will be dissolved upon the first to occurof the following events . . . The expiration of the term.

(Homme Decl. Ex. B, at ¶ 15(a)(iii).) The term of the Kyuss Partnership "will start as of the datehereof [January 1, 1994], and will continue for ten (10) years thereafter, unless the Partnershipis earlier terminated and dissolved." (Homme Decl. Ex. B, at ¶ 4.) Defendants direct the Courtto this language to argue that the Partnership dissolved on January 1, 2004. (Opp'n 13-15.)

However, pursuant to California Corporations Code section 16406, "If a partnership for a definiteterm . . . is continued, without an express agreement, after the expiration of the term . . . the rightsand duties of the partners remain the same as they were at the expiration or completion, so faras is consistent with a partnership at will." Cal. Corp. Code § 16406(a).

Plaintiffs argue that, with Garcia's consent and participation, the Kyuss Partnership has continuedto operate after the expiration of the term, and thus the Kyuss Partnership continues to be anextant entity. Plaintiffs have presented evidence that since the end of the term of the PartnershipAgreement, the Kyuss Partnership has continued to administer and distribute income to thepartners (including Garcia), and has regularly filed tax returns, including for 2011. (Homme Decl.¶¶ 12-15.) By 2007, the former members of Kyuss became aware that counterfeit apparel andother merchandise using the Kyuss Mark were being made and sold. (Homme Decl. ¶ 16.) Homme suggested that the Kyuss Partnership should seek out licensing opportunities for ancillarymerchandise, so that fans of the group could purchase authorized Kyuss merchandise. (HommeDecl. ¶ 16.) Garcia and Reeder agreed and signed a document dated February 22, 2007,authorizing such merchandise. (Homme Decl. ¶ 16, and Ex. D.) In 2010, Garcia took a personalloan against the Kyuss Partnership's income. (Homme Decl. ¶ 17, and Ex. E.) Finally, onDecember 21, 2011, Garcia assisted in filing a Declaration of Continuing Use and Incontestabilitywith the U.S. Patent and Trademark Office in the name of the Kyuss Partnership to preserve therights to the Kyuss Mark that was registered to the Kyuss Partnership. (Homme Decl. ¶ 20, andEx. G; Webb Decl. ¶ 10.)

Under the Corporations Code, "If the partners . . . continue the business without any settlementor liquidation of the partnership, they are presumed to have agreed that the partnership willcontinue" past the expiration of the term. Cal. Corp. Code § 16406(b). Moreover:

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At any time after the dissolution of a partnership and before thewinding up of its business is completed, all of the partners [] maywaive the right to have the partnership's business wound up and thepartnership terminated. In that event [] [t]he partnership resumescarrying on its business as if dissolution had never occurred . . . .

Cal. Corp. Code § 16802(b). Plaintiffs have established a likelihood of success on the meritsregarding their argument that the Kyuss Partnership has not dissolved, but is rather an extantentity, notwithstanding the fact that the express 10-year term of the partnership expired.3

Defendants' other argument is that the purpose of the Kyuss Partnership was to operate as a full-time musical band, and because the partners no longer operate as a full-time musical band, theKyuss Partnership must have dissolved and terminated. (Opp'n 5-6, 13-15.) Defendants pointto paragraphs 11.1(a) and 11.2 of the Partnership Agreement, which state that the "Partners shallfurnish to the Partnership exclusively . . . such Partner's Services," and "no Partner will enter intoan agreement to perform, nor will any Partner perform, as a featured member of a recordingand/or performing musical group other than the Group . . . ." (Homme Decl. Ex. B, at ¶¶ 11.1(a),11.2.) Defendants proffer evidence that after 1995, all of the Partners, including Homme, haveperformed as featured members of other musical groups besides Kyuss. (Garcia Decl. ¶ 26.)

That the Partners ceased performing as Kyuss and began performing as members of othermusical groups simply means that the Partners may have breached the terms of the PartnershipAgreement, not that the Partnership has dissolved or terminated. The Partnership Agreementdefines the "character of business" of the Partnership as follows:

The business of the Partnership [] is to promote and enhance theprofessional standing, reputation and success of the Group and tocommercially exploit, and to license or authorize others to do so []throughout the universe in all manners and media . . . the following,and all results and proceeds thereof: (a) the Partners' respectiveentertainment services [], including [] the creation and performance ofmusic [], audio and/or visual recording, broadcast appearances,literary, theatrical, video, film and/or dramatic performances relatedthereto and any and all similar or dissimilar services, of the Partnersin their capacity as members of the Group []; (b) all right, title andinterest in and to the Partners' respective names, photographs,likenesses, voices and other identifying features and characteristics,

3 This analysis is unaffected by Defendants' argument that an earlier draft of thePartnership Agreement listed a partnership term of 75 years, but this term was shortenedto 10 years. (Opp'n 4-5.)

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and biographical materials, in their capacity as members of the Group. . .; and (c) the Group Name.

(Homme Decl. Ex. B, at ¶ 2 (emphases added).) Thus, one of the goals of the Partnership, asexpressed in the Partnership Agreement, was to commercially exploit the Group's audiorecordings, a goal that the Partnership has continued to pursue without stop since the PartnershipAgreement was formalized. (See Suppl. Decl. of Joshua Homme in Supp. of Mot. ("Suppl.Homme Decl.") ¶ 8 (listing licensing agreements the Partnership has entered for Kyuss's songsto be used in video games and television shows through 2009), July 27, 2012, ECF No. 47.)4 Thatthe Partnership Agreement also anticipated that the Partnership would continue to commerciallyexploit the Partners' live performances and record new music does not mean that the Partnershipdissolves if the Partners stop performing and recording together as a group.

Notwithstanding Defendants' arguments that the Kyuss Partnership has dissolved or terminated,the Court finds that Plaintiffs have established a likelihood of success on their argument that theKyuss Partnership exists and owns trademark rights to the Kyuss Mark.5

b. Defendants' Unauthorized Usage

It is undisputed that Defendants have used the mark "Kyuss Lives." Plaintiffs also presentevidence that Defendants used the mark "Kyuss," even without the word "Lives," to promote theirmusical endeavors. The Facebook page for Kyuss Lives includes the following language: "KyussPresents Chapter Two . . . and the Legacy Continues." (Decl. of Gabriel Miller in Supp. of Mot.("Miller Decl.") ¶ 11 and Ex. N, July 27, 2012, ECF No. 46-3.)6 One of the photo albums on thewebsite is entitled: "Kyuss Photo Contest." (Miller Decl. ¶ 12.) The timeline on the Facebookpage states that the group was founded in 1989, which is the year Kyuss was founded (as Sonsof Kyuss), not the year Kyuss Lives was founded. (Miller Decl. ¶ 11.) Obviously, unauthorizeduse of the Kyuss Mark constitutes a violation of the Kyuss Partnership's trademark rights.

4 Defendants argue that Plaintiffs have improperly introduced new evidence in their Reply. (Defs.' Obj. to Ev., July 27, 2012, ECF No. 48.) However, Defendants have suffered noprejudice from this "late" introduction of evidence, as the evidence presented simplyinforms the Court of facts Defendants already knew prior to the filing of this action, such asthe licensing agreements to television games and video games for Kyuss's music. TheCourt overrules Defendants' objections to the evidence Plaintiffs submitted on Reply.

5 Defendants' argument that the Kyuss Partnership does not have any trademark rights tothe Kyuss Mark because the Partnership Agreement nowhere states that it owns rights tothe Kyuss Mark or otherwise mentions trademarks (Opp'n 12-13) is specious. ThePartnership Agreement need not list every asset of value owned by the Partnership or riska judicial forfeiture of said asset.

6 The Kyuss Lives Facebook page is publicly-available. The Court takes judicial notice ofthe content of this web page.

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Defendants put forward two arguments for why their use of the Kyuss Mark and the mark "KyussLives" (the "Kyuss Lives Mark") do not violate trademark law. First, they argue that Garcia is anauthorized user of the Kyuss Mark. Second, they argue that the Kyuss Lives Mark is not likely tocause customer confusion. Neither argument has merit.

In support of their argument that Garcia is authorized to use the Kyuss Mark, Defendants note thatthe Partnership Agreement only forbids the Partners from using the Partnership Name for anypurpose "separate and apart from the Partnership's use" of the Partnership Name. (Opp'n 6-7(citing Homme Decl. Ex. B, at ¶ 1).) Defendants note that the Partnership Name is "KyussPartnership"; it is the Group Name that is Kyuss, and Defendants have not used the name "KyussPartnership" at all. (Opp'n 6-7, 16.) The Court is not convinced. The Partnership's right to theKyuss Mark stems not from the Partnership Agreement, but from trademark law and thePartnership's continuous use in commerce of the Kyuss Mark since (at the latest) 1991. Thus, byoperation of trademark law, wholly independent of the terms of the Partnership Agreement, thePartnership has the authority to prevent others from infringing on its trademark, including anindividual Partner who without authorization uses the Kyuss Mark for purposes other than thePartnership business. Even without an explicit provision on the point, the Partners are notpermitted to use the Partnership's assets (such as trademarks) for non-Partnership businesswithout the approval of a majority of the Partners. Thus, Defendants' argument that Garcia ispermitted to use the Kyuss Mark because there is no provision in the Partnership Agreementexplicitly forbidding him from using it is unpersuasive.7

Defendants also argue that with respect to their usage of the Kyuss Lives Mark, there is nolikelihood of customer confusion. (Opp'n 16-17.) In order to determine whether a likelihood ofconfusion exists, the Ninth Circuit relies on an eight-factor test: (1) strength of the mark;(2) proximity or relatedness of the goods; (3) similarity of the marks; (4) evidence of actualconfusion; (5) marketing channels used; (6) types of goods and degree of care likely to beexercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood ofexpansion of the product lines. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979); see also Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005).

Defendants focus on the third and fourth factors. They argue that because Kyuss Lives has theadditional word "Lives" and because this additional word is displayed prominently wherever themark is used, the marks are not confusingly similar. Even putting aside for the moment the factthat Plaintiffs have presented evidence that Defendants occasionally use the Kyuss Mark withoutthe word "Lives," the Court finds that "Kyuss Lives" is confusingly similar to "Kyuss." An ordinary

7 Moreover, after the filing of the FAC, Homme and Reeder expelled Garcia from thePartnership pursuant to paragraph 14.3 of the Partnership Agreement. (Suppl. HommeDecl. ¶ 15.) Thus, even if Garcia was allowed to use the Group Name for non-Partnershipbusiness while he was a Partner (which he was not), such use would have becomeunauthorized upon his expulsion.

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consumer could easily be forgiven for missing the fact that "Lives" is even part of the mark. Aposter containing the phrase "Kyuss Lives" could just as easily be construed to mean that Kyuss -the same Kyuss that recorded desert rock music in the early 1990's - continues to live, as opposedto simply listing the name of a new band, with the group name "Kyuss Lives." (Similarly, if a posteradvertising a concert had the words "No Doubt, Forever" most consumers would think that theband No Doubt was performing, as opposed to thinking that a new, unrelated band named "NoDoubt, Forever" would be giving a performance.)

Indeed, this impression is precisely the impression that Defendants were trying to foster when theypicked their new group name. They want the audience to think that they are watching Kyuss - theold Kyuss, the Kyuss that made the music you know and love - perform. If this were not thedesired effect, Defendants could have picked any name under the sun. Defendants admit that their "motivation in choosing the mark was meant to signify a new group including former membersof Kyuss that would play Kyuss songs." (Opp'n 17.) While Defendants might be entitled to playKyuss songs at concerts and while Defendants might be entitled to advertise themselves as formermembers of Kyuss, the one thing they are not permitted to do without authorization from thePartnership is use or otherwise infringe upon the Kyuss Mark.

Defendants suggest that because the promotional materials for the Kyuss Lives concerts list thelast names of the individual performers, no consumer will mistakenly think that Homme isperforming in Kyuss Lives. (Opp'n 17.) This is irrelevant. For Defendants to have infringed onPlaintiffs' trademark, it need not be shown that consumers mistakenly believe that Homme is partof Kyuss Lives; rather, consumers must mistakenly believe that Kyuss Lives has the same originor is somehow associated with the band Kyuss. And in this respect, the Kyuss Lives mark isincredibly confusing. The name "Kyuss Lives" implies that the band Kyuss got back together toperform after a long hiatus. Even if every consumer understands that Homme is not part of thisreunion, they still would think that this band is a reincarnation of Kyuss and wonder why Hommeis not part of it. (However, it is unlikely that every consumer even realizes that the compositionof Kyuss Lives is any different than the composition of Kyuss. Many bands have fans who cannotname each individual musical artist in the band.) The Court concludes that tacking on a genericword (Lives) to the end of a mark comprised of a highly-fanciful word (Kyuss) is insufficient toavoid customer confusion.

The Court finds that Plaintiffs have established a likelihood of success on the merits regardingtheir argument that Defendants infringed their trademark. Thus, the Court finds that the firstrequirement for a preliminary injunction - likelihood of success on the merits - has been satisfied.

2. Irreparable Harm

"In each case, the Court must balance the competing claims of injury and must consider the effecton each party of the granting or withholding of the requested [preliminary injunction]." AmocoProd. Co. v. Village of Gambell, 480 U.S. 531, 542 (1987). Plaintiffs claim that they will sufferirreparable harm if Defendants are permitted: (1) to continue touring as Kyuss Lives; or (2) tobegin recording and releasing music as Kyuss Lives during the pendency of this lawsuit. (Mot.

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15-16.) They seek an injunction that would enjoin Defendants from using the Kyuss Mark or aconfusingly similar mark in conjunction with either live musical performances or audio recordings.

Plaintiffs rely on two primary types of harm that they claim they will suffer: (1) harm to the brand'slegacy and reputation; and (2) loss of sales for Kyuss music and merchandise. (Mot. 15-16.)Defendants counter, without any legal support, that injury to the band's "legacy" is not arecognized legal harm. (Opp'n 18.) The Court disagrees. As an initial matter, it is clear thatPlaintiffs' use of the word "legacy" is a reference to the band's reputation. Reputational harm isa legally-recognized injury. The purpose of trademark law is to permit the owner of a mark tocontrol the use of that mark in commerce, so that consumers can see the mark in commerce andimmediately identify the source. A mark can come to represent a certain level of quality,craftsmanship, or value. In the recording industry, a mark could represent a certain sound, style,or image. If a mark does not identify a single source, the benefit of using the mark immediatelydiminishes. For this reason, courts historically have presumed irreparable injury upon a showingof likelihood of success on the merits in trademark cases. See, e.g., Abercrombie & Fitch Co. v.Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007) ("[I]n a trademark case . . . [i]rreparableinjury is ordinarily presumed upon a showing of a likelihood of success."). Defendants argue thatthis presumption is no longer valid in the wake of the Supreme Court's decision in Winter. Winterheld that the issuance of a preliminary injunction required that it be likely a plaintiff would sufferirreparable harm in the absence of the injunction, rather than merely possible. Winter, 555 U.S.at 20-21. However, Winter was not a trademark case, and it said nothing specifically about thepresumption of irreparable harm in trademark cases. Indeed, the case Defendants cite for theproposition that the presumption of irreparable harm no longer applies post-Winter actually foundthat plaintiff had shown a likelihood of irreparable harm and the preliminary injunction wasgranted. CytoSport, Inc. v. Vital Pharm., Inc., 617 F. Supp. 2d 1051 (E.D. Cal. 2009). InCytoSport, the Court noted:

Trademarks serve as the identity of their owners and in them residesthe reputation and goodwill of their owners. Thus, if another personinfringes the marks, that person borrows the owner's reputation,whose quality no longer lies within the owner's control. A trademarkowner's loss of the ability to control its marks, thus, creates thepotential for damage to its reputation. Potential damage to reputationconstitutes irreparable injury for the purpose of granting a preliminaryinjunction in a trademark case.

Id. at 1080. The CytoSport court went on to state that the plaintiff had shown a likelihood ofirreparable harm simply because the defendant's use of the plaintiff's mark would "prevent [theplaintiff] from controlling the reputation of its highly recognizable and valuable [] brand." Id. at1081. Thus, the very case Defendants cite for the proposition that the presumption of irreparableinjury no longer applies post-Winter appears to apply just that presumption. Other post-Wintercases have explicitly continued to apply the presumption of injury. See, e.g., Super-Krete Int'l, Inc.v. Sadleir, 712 F. Supp. 2d 1023, 1037 (C.D. Cal. 2010) ("In a trademark injury case, irreparable

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injury is ordinarily presumed upon a showing of a likelihood of success." (citing Abercrombie, 486F.3d at 633)).

In the instant case, the Court finds that if Defendants were to continue touring as Kyuss Livesduring the pendency of this action, Plaintiffs would likely suffer irreparable harm. They would nolonger control the reputation of the Kyuss Mark, which the Partnership owns. The Kyuss Markcould come to be associated not with the Kyuss Partnership, but with Defendants. Similarly, ifDefendants were to begin recording as Kyuss Lives and releasing music for sale under the KyussLives Mark, Plaintiffs would likely suffer irreparable injury for the same reasons.

Plaintiffs also contend that they are likely to suffer irreparable injury based on the loss of potentialcustomers, because people who attend Kyuss Lives concerts or purchase Kyuss Lives audiorecordings are less likely to purchase the original Kyuss audio recordings. (Mot. 15-16.) TheCourt does not agree that live concerts are substitute goods for music recordings; absentsupporting evidence, the Court will not assume that an individual who attends a Kyuss Livesconcert would be less likely to purchase a Kyuss audio recording. As Defendants point out, KyussLives has been touring under the Kyuss Lives Mark since November 2010; if the concerts hadcaused an appreciable reduction in the sales of Kyuss audio recordings, Plaintiffs should havepresented evidence of such effect to the Court. (Opp'n 18.) Plaintiffs have expressed no desireto give concerts as Kyuss (and have not done so since 1995), so the Kyuss Lives concerts cannotpossibly draw customers away from Plaintiffs' own concerts.

However, if Defendants were to release new music recordings, whether studio recordings or live,there is a strong possibility that these recordings would siphon customers away from Plaintiffs'sale of the original Kyuss recordings that are still offered for sale. It is undisputed that many ofthe songs Kyuss Lives performs are the same songs originally recorded by Kyuss. If Defendantswere to release new recordings of these songs under the name Kyuss Lives, customers could optto purchase the Kyuss Lives version mistakenly believing that they were purchasing the originalKyuss version. See Kingsmen, 557 F. Supp. at 182-83. The Court finds that with respect to therelease of audio recordings, the loss of potential customers presents another likelihood ofirreparable harm to Plaintiffs should the injunction not be granted.

However, the Court should not look merely to the harm to Plaintiffs if the preliminary injunction isnot granted. The Court must also look at the harm to Defendants if the preliminary injunction isgranted. Amoco, 480 U.S. at 542. Defendants are in the midst of a series of concerts that havealready been booked under the name Kyuss Lives. (Garcia Decl. ¶ 48.) To enjoin Defendantsfrom using the Kyuss Lives Mark in conjunction with these concerts would result in irreparableharm not only to Defendants, but also to the concert venues, concert promoters, and fans whohave purchased tickets to these events. This level of harm somewhat counteracts the irreparableharm to Plaintiffs regarding the use of the Kyuss Lives Mark for live concerts.

Defendants also point out that they are "poised to receive" a $300,000 advance in connection withthe anticipated release of an album under the name Kyuss Lives, and a $35,000 payment inconnection with a live album that has already been recorded. (Garcia Decl. ¶ 48.) The Court is

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not sure what is meant by the phrase "poised to receive." From the evidence presented, it is notclear how close Defendants are to actually inking the deal and receiving this money. They couldbe in preliminary negotiations, they could have a signed contract, the albums could be nearlyfinalized and ready to drop, etc. Because Defendants have not presented the Court with copiesof any contracts for audio recordings of Kyuss Lives's music, the Court does not believe that thenegotiations concerning the music albums are so far along in the process that they could not bealtered to provide for the release of the albums under a different group name. The Court finds thatDefendants have not shown a likelihood of irreparable harm if the Court were to issue an injunctionregarding the release of audio recordings or albums.

3. Balance of Equities

For a preliminary injunction to be appropriate, the balance of equities must tip in Plaintiffs' favor. The Court finds that with respect to the concert engagements, the equities do not tip in Plaintiffs'favor. Both Homme and Reeder engaged in actions and made statements suggesting thatDefendants were permitted to use the Kyuss Lives Mark for concert engagements. Reederactually performed with Defendants as part of Kyuss Lives on eleven separate occasions in 2011. Homme expressed his support for the Kyuss Lives concert tour to the Los Angeles Times in 2011. The Court does not suggest that this conduct necessarily results in promissory estoppel, but thisconduct shows that Defendants were not wrong at the outset for thinking that they had Plaintiffs'permission to use the Kyuss Lives Mark. By now, of course, Defendants have likely recognizedthe folly of attempting to establish a brand under a mark for which permission is required, as thatpermission can be revoked.

Homme argues that his statements of support for the Kyuss Lives concert tour were made at atime when he believed that Kyuss Lives was a limited venture that was intended to supportGarcia's solo projects. Even so, Homme must take some of the blame for giving what appearedto be an open-ended endorsement of the Kyuss Lives concert tour. If Homme was onlycomfortable with Kyuss Lives so long as it was a limited engagement, he should have explainedthis limitation to Defendants earlier, and the parties could have hopefully come to an agreementregarding how many concerts would be permitted under the name Kyuss Lives. With respect tothe concert tours, the Court finds that the balance of equities do not tip in Plaintiffs' favor.

There is no suggestion that Homme or Reeder gave their endorsement for the use of the KyussLives Mark in conjunction with albums or audio recordings. Indeed, the evidence shows thatGarcia actually misled Plaintiffs with respect to his plans for audio recordings. Garcia's email toHomme and Reeder wherein he explained the upcoming Kyuss Lives concert tour stated: "Justwanted to touch base with you both in regard to what you may or may not have heard about medoing this Kyuss Lives Chapter Two piece. This is being done for one reason and one reasononly, to promote [the] Garcia Vs Garcia [album] which will be coming out about this time nextyear." (Garcia Decl. Ex. E.) Garcia informed Plaintiffs that while the concert tour would be calledKyuss Lives, the album and other music recordings would be called Garcia vs. Garcia. At leastas early as January 2012, Homme informed Defendants in no uncertain terms that he did not wantthem releasing any recorded music under the name Kyuss Lives. (Homme Decl. ¶ 24.) Garcia's

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misinformation leads the Court to conclude that with respect to audio recordings, the balance ofequities tips in Plaintiffs' favor.

4. The Public Interest

Defendants argue that the public has expressed a clear interest in seeing Kyuss Lives shows, asdemonstrated by the success of their past concerts. (Opp'n 20.) Plaintiffs urge that the publicinterest requires an assurance to consumers that products branded with the Kyuss Mark (or aconfusingly similar mark) have the imprimatur of the mark's owner, the Kyuss Partnership. Bothsides make decent arguments with respect to the public interest. However, Defendants' argumentis stronger with respect to the concert tour than with respect to audio recordings. Defendantshave not yet released any recorded music under the Kyuss Lives Mark, and there is no clearly-demonstrated demand for such a product. However, even with respect to the concerts, the Courtfinds that the public interest more strongly favors the clarity in designation of origin that trademarklaw provides, compared to the public interest in providing fans access to the Kyuss Lives showsin which they are interested. Moreover, the injunction Plaintiffs seek would not preventDefendants from giving live performances or from performing any specific music; it would onlyprevent them from using the Kyuss Lives Mark, which is confusingly similar to the Kyuss Mark. If the public is interested in seeking Garcia, Bjork, and Nick Oliveri perform Kyuss songs live, suchconcerts can still take place even if the preliminary injunction is entered; Defendants simply couldnot call themselves Kyuss Lives while giving these concerts.

5. Aggregation of the Factors

For a preliminary injunction to be appropriate, each of the four factors must be satisfied. It is nota sliding scale on which the strength of one factor can make up for the absence of another.

A plaintiff seeking a preliminary injunction must establish [1] that heis likely to succeed on the merits, [2] that he is likely to sufferirreparable harm in the absence of preliminary relief, [3] that thebalance of equities tips in his favor, and [4] that an injunction is in thepublic interest.

Avanti Health Sys., 661 F.3d at 1187 (emphasis added) (citation omitted). Plaintiffs have showna likelihood of success on the merits with respect to both concert tours and audio recordings. They have shown a likelihood of irreparable harm with respect to both concert tours and audiorecordings, although the degree of irreparable harm is greater with respect to the audio recordings. They have shown that the public interest favors a preliminary injunction with respect to bothconcert tours and audio recordings, although the public interest is more strongly in Plaintiffs' favorwith respect to the audio recordings. However, Plaintiffs have only shown that the equities tip inPlaintiffs' favor with respect to the audio recordings. With respect to concert performances,Plaintiffs must take some degree of the blame for initially expressing approval of the Kyuss Livesconcerts and later rescinding the approval (or for giving limited authorization but failing to clearlydelineate the limits of this authorization).

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The Court will issue a preliminary injunction prohibiting Defendants from using the Kyuss Mark inany capacity unless the word "Lives" follows the word "Kyuss" in equally-prominent lettering. TheCourt will issue a preliminary injunction prohibiting Defendants from using the Kyuss Lives Markin conjunction with any studio album, live album, or other audio recording. The Motion is denied,however, with respect to Plaintiffs' request that Defendants be enjoined from using the KyussLives Mark in conjunction with concerts and live performances.

Defendants are warned, however, that future concerts under the Kyuss Lives Mark might continueto subject them to liability for trademark infringement. It may be in Defendants' best interest tobegin re-branding under a new name.

C. Bond Federal Rule of Civil Procedure 65(c) provides: "The court may issue a preliminary injunction . . .only if the movant gives security in an amount that the court considers proper to pay the costs anddamages sustained by any party found to have been wrongfully enjoined or restrained." Fed. R.Civ. P. 65(c). Defendants argue for a bond of $1,000,000. However, this figure was calculatedon the assumption that the injunction would enjoin both recordings and concerts. With respect torecordings, Defendants have presented evidence that they were "poised" to receive $335,000 foraudio recordings under the Kyuss Lives Mark. Defendants have not shown the Court, however,that their recording deals will completely fall through if they are not permitted to use the KyussLives Mark. It is likely that Defendants could still obtain a recording deal under a different name,although the value of the deal may be diminished as the new name would not have the same levelof customer recognition. The Court imposes a bond requirement of $200,000.

III. RULING

For the foregoing reasons, the Court GRANTS IN PART AND DENIES IN PART Plaintiff's Motionfor Preliminary Injunction. The Court concludes and orders as follows:

1. Defendants are preliminarily enjoined from using the Kyuss Mark in commerce unless theword "Lives" immediately follows the word "Kyuss" in equally prominent lettering;

2. Defendants are preliminary enjoined from using the Kyuss Lives Mark in conjunction withany musical album, studio album, live musical performance album, or other audio or visualrecording;

3. Notwithstanding this preliminary injunction, Defendants are permitted to make truthfulfactual statements that utilize the word "Kyuss," such as referring to Garcia and Bjork asformer members of the band Kyuss; and

3. Plaintiffs shall post a $200,000 bond within 14 calendar days of the date of this order.

IT IS SO ORDERED.

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