AGASSI ENTERPRISES, INC., Plaintiff, v. TARGET CORPORATION, Defendant No. 2:07-cv-01252-RLH-GWF United States District Court, D. Nevada December 11, 2007 Counsel Jennifer Ko Craft, Michael J. McCue, Lewis and Roca LLP, Las Vegas, NV, for Plaintiff. Patrick G. Byrne, Andrew Sedlock, Snell & Wilmer, Las Vegas, NV, for Defendant. Hunt, Roger L., United States District Judge PRELIMINARY INJUNCTION *1 Upon consideration of Plaintiff's Motion for Preliminary Injunction, Defendant's opposition thereto, the accompanying declarations and exhibits, and for other good cause shown, the Court finds as follows: FINDINGS OF FACT 1. Plaintiff Agassi Enterprises Inc. (“AEI”) owns all right, title and interest in and to the rights of publicity of Andre Agassi and the common law trademark rights in the AGASSI name. 2. Andre Agassi is well known to the public through his accomplishments as one of the greatest tennis players of all time, as well as his personal appearances, endorsements and charitable endeavors. 3. Through extensive and widespread use, the AGASSI name has acquired secondary meaning; the public has come to recognize the AGASSI name as referring to Andre Agassi and as a symbol that identifies and distinguishes the source of goods and services from those of others. 4. Defendant Target Corporation (“Target”) is an upscale discounter that owns and operates more than 1,500 stores in 47 states, including 15 stores in Nevada, and an online store located at <target.com>. Target sells a variety of products. 5. Target sells several products that feature the name of sports celebrities, including, for example, “Wilson Federer 25” tennis racquets (named after tennis star Roger Federer), “Target D Beckham Instinct” fragrance (named after soccer star David Beckham), Dale Earnhardt Jr. teddy bears (named after the NASCAR star), “Jordan Cologne Spray” (named after basketball Michael Jordon), “Prince Wimbledon Sharapova Rackets (named after tennis star Maria Sharapova), and “Wilson Venus and Serena 25 Tennis Racket” (named after tennis star sisters Venus and Serena Williams). Several of these products are sold under a brand name (e.g., Wilson) followed by the name of a celebrity (e.g., Federer). 6. Target sells a line of footwear under the Mossimo brand, including athletic shoes, dress shoes, casual shoes, and sandals. 7. In June 2007, AEI learned that Target was offering footwear for sale using the AGASSI name. The products appeared on the online stores at Target.com and Amazon.com. The product description read: “Men's Mossimo® Agassi Sandals-Brown.” Target also sold the AGASSI footwear in Target stores. The footwear had hangtags bearing the AGASSI name. The AGASSI footwear sold for $12.99 per pair. 8. AEI did not authorize Target to use the AGASSI name on footwear. 9. On July 27, 2007, in response to AEI's cease and desist letter, Target represented that: (a) it ceased selling sandals bearing the AGASSI name through its website at Target.com and through Amazon.com; (b) it had changed the model name to “Ainsley” and would incorporate the name in packaging beginning in the third week of August 2007; and (c) it had taken reasonable measures to remove from Target stores any reference to “Agassi.” 10. On August 14, 2007, Target further represented to AEI that Target had changed the name of the AGASSI footwear to “Ainsley” and had undertaken to remove from stores all references to the AGASSI name on packaging, including by “at least placing opaque stickers over printed references to Agassi” and “removing from shelves or other in-store displays any other reference to that model name.” *2 11. AEI purchased AGASSI footwear from Target stores in Clark County, Nevada, and/or through Amazon.com in August and September 2007 and found the footwear on display at a Target store as recently as October 6, 2007. 12. The AGASSI footwear sold by Target is related to the source of Agassi's fame, because Agassi has endorsed footwear products and Agassi is known in part for his endorsements. CONCLUSIONS OF LAW 13. To obtain a preliminary injunction, AEI must show that: (1) it will suffer irreparable harm if injunctive relief is not granted; (2) it is likely to succeed on the merits; (3) the balance of equities tips in its favor; and (4) granting the injunction is in the public interest. See Stanley v. Univ. of S. Cal., 13 F.3d 1313, 1319 (9th Cir.1994). Alternatively, the Court may issue a preliminary injunction if there is either a combination of probable success on the merits and the possibility of irreparable injury without injunctive relief or that serious questions are raised and the balance of hardships tips sharply in the moving party's favor. Id. 14. Irreparable injury is presumed in intellectual property cases when the intellectual property owner establishes a likelihood of success on the merits. In trademark infringement actions, “once the plaintiff establishes a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm.” Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 n. 3 (9th Cir.1989); Teletech Customer Care Management, Inc. v. Teletech Co., 977 F.Supp. 1407, 1412 (C.D.Cal.1997) (“there is always irreparable injury when trademark infringement exists”). The same principle applies in rights of publicity and false endorsement cases. See J. Thomas McCarthy, Rights of Publicity and Privacy § 11:22; see also Michaels v. Internet Entertainment Group, Inc., 5 F.Supp.2d 823, 838 (CD.Cal.1998) (celebrity's right of publicity is unique; violation of the right of publicity cannot be adequately compensated for through damages) (citations omitted). 15. The Nevada right of publicity statute recognizes that “[t]here is a right of publicity in the name, voice, signature, photograph or likeness of every person.” N.R.S. § 597.790.1. The statute further provides that “[a]ny commercial use by another of the name, voice, signature, photograph or likeness of a person requires the written consent of that person or his successor in interest” with certain exceptions that are not applicable here. N.R.S. § 597.790.2. “Commercial use” includes the use of the name, voice, signature, photograph or likeness of a person on or in any product, merchandise or goods or for the purposes of advertising, selling or soliciting the purchase of any product, merchandise, goods or service. N.R.S. § 597.770. “Any commercial use of the name, voice, signature, photograph or likeness of another by a person, firm or corporation without first having obtained written consent for the use is subject to: (a) [i]njunctive relief to prevent or restrain the unauthorized use; and (b) [a]n action at law for any injuries sustained by reason of the unauthorized use.” N.R.S. § 597.810.1. Target violated AEI's right of publicity by making commercial use of the AGASSI name without obtaining the written consent of AEI. *3 16. False endorsement occurs under 15 U.S.C. § 1125(a) when a defendant uses the name or likeness of a celebrity in a manner that is likely to cause confusion among consumers as to the affiliation, connection, or association between the celebrity and the defendant's goods or as to the celebrity's sponsorship or approval of defendant's goods. In determining a celebrity's false endorsement claim under the Lanham Act, the courts consider the following factors: (1) the level of recognition that the plaintiff has among the segment of the society for whom the defendant's product is intended; (2) the relatedness of the fame or success of the plaintiff to the defendant's product; (3) the similarity of the likeness used by the defendant to the actual plaintiff; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the plaintiff; and (8) likelihood of expansion of the product lines. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir.2001); see also White v. Samsung Elec. Am., Inc., 971 F.2d 1395, 1400-1401 (9th Cir.1992). These factors favor a finding of false endorsement. The level of recognition of the AGASSI name is high; Agassi's fame has some relationship to footwear; Target used a name identical to AGASSI in connection with the sale of the footwear at issue; the marketing channels of Agassi-endorsed products and Target products overlap; purchaser care is likely to be low given the low price of the product at issue; and Target could have selected from thousands of other names for the product. 17. “The likelihood of confusion is the central element of trademark infringement, and the issue can be recast as the determination of whether ‘the similarity of the marks is likely to confuse consumers about the source’ “ of the goods or services. See Goto.com, 202 F.3d 1199. In determining likelihood of confusion, the Ninth Circuit generally considers eight factors: (1) the strength of the allegedly infringed mark; (2) the proximity or relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) the degree to which the marketing channels converge; (6) the degree of care consumers are likely to exercise in purchasing the goods or services; (7) the intent of the defendant in selecting the allegedly infringing mark; and (8) the likelihood that the parties will expand their product lines. See Sleekcraft, 599 F.2d at 348-49. Based on the confusion factors, which are comparable to the false endorsement factors, AEI is likely to succeed on the merits of its trademark infringement claim. 18. The balance of the hardships in this case clearly favors AEI. As a company that generates more than $56 Billion in revenue on an annual basis, requiring Target to cease using the AGASSI name in connection with a single footwear product would not cause undue hardship. In contrast, failing to enjoin Target from continuing to use the AGASSI name and mark in connection with the sale of footwear would cause AEI to suffer irreparable injury. Although AEI can recover its actual damages and Target's profits generated from the sale of the AGASSI footwear, AEI has no monetary remedy for the damage to Andre Agassi's goodwill and reputation caused by Target's unauthorized use of the AGASSI name and mark. *4 19. The public interest favors entry of a preliminary injunction in this case by avoiding injury to consumers who would purchase Target's AGASSI footwear believing that the footwear was approved by, endorsed by, or affiliated with Andre Agassi. THEREFORE, IT IS HEREBY ORDERED THAT: A. Plaintiffs Motion for Preliminary Injunction is GRANTED; B. Defendant is preliminarily enjoined from using the AGASSI name or mark in connection with the sale, offering for sale, or advertising of the sandals at issue or any goods or services unless such goods and services are actually endorsed by Andre Agassi; C. Defendant shall preserve all documents and other evidence (including, but not limited to, electronic documents such as email relating to its use of the AGASSI name, including, but not limited to, all documents identifying sales of the AGASSI footwear at issue, the Defendant's clearance and adoption of the AGASSI mark, instances of actual confusion, and efforts to remove footwear bearing the AGASS mark; and D. Within thirty (30) days of the date of entry of this order, Defendant shall file with the Court and serve upon Plaintiffs counsel a report signed under oath setting forth in detail the manner and form in which Target complied with this preliminary injunction. IT IS SO ORDERED.