UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN

Transcription

1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN MILWAUKEE WORLD FESTIVAL, INC., a Wisconsin Corporation, Plaintiff, RED LOBSTER MANAGEMENT, LLC, a Delaware Limited Liability Company, v. Case No. 17-CV-908 Defendant. BRIEF IN SUPPORT OF PLAINTIFF'S MOTION FOR TEMPORARY RESTRAINING ORDER AND/OR PRELIMINARY INJUNCTION Milwaukee World Festival, Inc. ("Milwaukee World Festival" or "Plaintiff"), by and through its attorneys Reinhart Boerner Van Deuren s.c., hereby moves this Court pursuant to Federal Rule of Civil Procedure 65(b) for a temporary restraining order and Federal Rule of Civil Procedure 65(a) for a preliminary injunction in the above-captioned matter. The grounds for this motion are as follow. I. INTRODUCTION Milwaukee World Festival brings this suit for trademark infringement and unfair competition pursuant to the Lanham Act, 15 U.S.C and 15 U.S.C. 1125(a), as well as Wisconsin common law, to protect its long-held, valuable interest in its SUMMERFEST trademark (the "SUMMERFEST Mark"). Summerfest, the World's Largest Music Festival, is a longstanding Milwaukee institution. (Declaration of Frank Nicotera ("Nicotera Decl.") 3.) Now in its fiftieth year, Summerfest is well-known and well-established throughout the United States, and particularly strongly in the Case 2:17-cv Filed 06/30/17 Page 1 of 19 Document 4

2 Wisconsin and Northern Illinois market where it takes place; it attracts hundreds of thousands of visitors per year. (Id. 3-4.) This year, Summerfest began on June 28, 2017, and will run until July 9, (Id. 8.) In connection with its operation of Summerfest, Plaintiff has a number of registered trademarks, including the SUMMERFEST Mark (Registration No ). (Id. 6.) The SUMMERFEST Mark has been federally registered since 1972 and in use in commerce since 1968, nearly as long as Summerfest itself has been in existence. (Id.) This longstanding use of the SUMMERFEST Mark has imbued it with substantial meaning and goodwill. (Id. 7.) This case involves Plaintiff's efforts to protect that goodwill from repeated and unmistakable infringement. Though this suit focuses on Defendant Red Lobster's current promotional campaign, this is not the first time that Defendant has run afoul of Plaintiff's rights in the SUMMERFEST Mark. In 2016, days before the forty-ninth annual Summerfest was set to begin, Plaintiff became aware that Defendant, without authorization, was running a promotion that it called "Lobster and Shrimp Summerfest." (Id. 12.) Milwaukee World Festival immediately contacted Defendant, and though Defendant refused to acknowledge that its use of the SUMMERFEST Mark infringed Plaintiff's intellectual property rights, Defendant eventually rebranded its promotion as "Crabfest." (Id. 14; see also Declaration of Jessica Hutson Polakowski ("Polakowski Decl.") 3 9 & Exs. B F.) That was not the end of the matter, however. Once again, Milwaukee World Festival has recently become aware that Defendant is using the SUMMERFEST Mark without authorization. In fact, Defendant is using the SUMMERFEST Mark in the exact same way as last year, advertising its "Lobster and Shrimp Summerfest" concurrently with Milwaukee World Festival's 2 Case 2:17-cv Filed 06/30/17 Page 2 of 19 Document 4

3 Summerfest. (Nicotera Decl. 15.) Once again, Milwaukee World Festival has repeatedly reached out to Defendant to demand that it cease its infringing activity. (Id. 17.) Unfortunately, Defendant has not only refused to stop using the SUMMERFEST Mark, it has also refused to engage in meaningful discussions about the matter. (See Polakowski Decl & Exs. G J.) Most recently, Defendant informed Milwaukee World Festival that it would not be providing a response to Milwaukee World Festival's concerns until July 5th just four days before Summerfest 2017 is over. (Polakowski Decl. 13 & Ex. J.) Thus, Milwaukee World Festival is in need of immediate relief to prevent Defendant from infringing the SUMMERFEST mark, causing substantial consumer confusion during the 2017 festival, and unjustly profiting off the goodwill associated with Summerfest. II. BACKGROUND a. The Summerfest Mark Milwaukee World Festival is the owner and producer of Summerfest, an eleven-day music festival that has occurred annually in Milwaukee, Wisconsin, for the past forty-nine years. (Nicotera Decl. 2 3.) This year, 2017, marks the festival's fiftieth anniversary. (Id. 3.) Summerfest is a well-established part of Wisconsin culture and attracts hundreds of thousands of visitors per year from all over the United States. (Id. 3 4.) In 2016, more than 800,000 people attended Summerfest. (Id. 4.) Summerfest's fame also allows it to attract worldrenowned entertainers to perform at its festival. For example, Summerfest has featured (or will feature this year) such performers as Paul McCartney, Paul Simon, Bob Dylan, Stevie Wonder, and the Rolling Stones. (Id. 5.) In connection with its operation and production of Summerfest, Milwaukee World Festival owns a number of trademarks. One such trademark is SUMMERFEST, Registration 3 Case 2:17-cv Filed 06/30/17 Page 3 of 19 Document 4

4 No (the "SUMMERFEST Mark"), for use in connection with "arranging and conducting an annual summer entertainment festival." (Id. 6; Polakowski Decl. Ex. A.) The SUMMERFEST Mark has been federally registered since August 1, 1972 and has been in continuous use by Milwaukee World Festival since February (Nicotera Decl. 6; Polakowski Decl. Ex. A.) The Summerfest festival, and the SUMMERFEST Mark, are wellknown throughout the United States and are particularly famous in the immediate vicinity in which Summerfest operates, a territory including Wisconsin and northern Illinois. (Nicotera Decl. 3.) The SUMMERFEST Mark is valuable to Milwaukee World Festival and represents a valuable asset in Plaintiff's business. (Id. 7.) As part of operating Summerfest, Milwaukee World Festival offers a variety of food and beverage options at the festival through various vendors. (Id. 9.) Milwaukee World Festival authorizes these vendors to use the SUMMERFEST Mark in promoting their goods in conjunction with the festival. (Id. 10.) Such authorizations are short-term and expire upon termination of the food and beverage agreements that exist between Summerfest and its vendors. (Id.) Milwaukee World Festival also enters into sponsorship agreements with other restaurants, which pay for the right to use the SUMMERFEST Mark for a limited time. (Id. 11.) b. Defendant's 2016 Infringement In June of 2016, just days before Summerfest was scheduled to open, Milwaukee World Festival became aware that Defendant was running a food promotion under the confusingly similar name "Lobster and Shrimp Summerfest." (Id. 12.) Defendant was not authorized to use the SUMMERFEST Mark in connection with its promotion, nor had it paid for the right to use the SUMMERFEST Mark for a limited time. (Id.) Defendant's use of the SUMMERFEST Mark in connection with its "Lobster and Shrimp Summerfest" quickly engendered actual 4 Case 2:17-cv Filed 06/30/17 Page 4 of 19 Document 4

5 confusion, with numerous city officials and business leaders inquiring whether there was an affiliation between Plaintiff and Defendant. (Id. 13.) On or about June 16, 2016, Milwaukee World Festival contacted Defendant to apprise it of its infringement and to demand that Defendant cease and desist its unauthorized use of the SUMMERFEST Mark. (Polakowski Decl. 3 & Ex. B.) On or about June 17, 2016, Defendant responded and denied infringing Milwaukee World Festival's SUMMERFEST Mark. (Id. 4 & Ex. C.) The parties exchanged three more letters, dated June 21, 2016; June 24, 2016; and July 8, (Id. 5 8 & Exs. D F.) Defendant did not respond to Milwaukee World Festival's July 8 letter. (Id. 9.) Nevertheless, following this correspondence, Defendant ceased its use of the SUMMERFEST Mark and rebranded its promotional event as "Crabfest." (Nicotera Decl. 14.) c. Defendant's 2017 Infringement That should have settled the matter. However, in or about May of 2017, Milwaukee World Festival became aware that Defendant was once again advertising a summertime food promotion under the name "Lobster and Shrimp Summerfest." (Id. 15.) As was the case in 2016, Defendant is not authorized to use the SUMMERFEST Mark in connection with its promotion, nor has it paid for the right to use the SUMMERFEST Mark for a limited time. (Id.) Accordingly, on June 6, 2017, Milwaukee World Festival contacted Defendant to apprise it of its infringement, demand that Defendant cease and desist its infringing use of the SUMMERFEST Mark, and request that Defendant return to the "Crabfest" mark or employ an alternative non-infringing mark. (Polakowski Decl. 10 & Ex. G.) On June 9, 2017, Defendant responded, denying that it was infringing Milwaukee World Festival's SUMMERFEST Mark 5 Case 2:17-cv Filed 06/30/17 Page 5 of 19 Document 4

6 and referring Plaintiff to its June 17, 2016 correspondence. (Id. 11 & Ex. H.) It offered no further substantive response to Plaintiff's position. On June 22, 2017, Milwaukee World Festival wrote to Defendant, again requiring that Defendant cease its infringing use of the SUMMERFEST Mark and reiterating Plaintiff's position, this time with reference to the 2016 correspondence on which Defendant was apparently relying. (Id. 12 & Ex. I.) On June 23, 2017, counsel for Defendant responded via . The body of that stated, in its entirety: I understand that you sent me a letter regarding our Lobster & Shrimp Summerfest promotion. I will respond after I return to the office on July 5th. (Id. 13 & Ex. J.) Despite receiving notice of Milwaukee World Festival's intellectual property rights and the harm caused by Defendant's infringement, Defendant has continued to use the SUMMERFEST Mark without authorization and over Milwaukee World Festival's written objections. Absent immediate relief, upon information and belief, Defendant will continue to use the SUMMERFEST Mark in connection with its food promotion throughout the course of the 2017 Summerfest festival, engendering substantial confusion in the marketplace. III. ANALYSIS a. Temporary Restraining Order/Preliminary Injunction Standards 1 "A party seeking to obtain a preliminary injunction must demonstrate: (1) its case has some likelihood of success on the merits; (2) that no adequate remedy at law exists; and (3) it will suffer irreparable harm if the injunction is not granted." Ty, Inc. v. The Jones Grp., 237 F.3d 1 In the Seventh Circuit, "[t]he standards for a temporary restraining order and preliminary injunction are identical." Monk v. Luy, No. No. 09-CV-646, 2010 WL , at *1 (E.D. Wis. June 3, 2010); see also, e.g., Bulgari, S.p.A. v. P'ships & Unincorporated Ass'ns Identified on Schedule A, No. 14-cv-4819, 2014 WL , at *3 (noting that "the standard for granting a TRO and the standard for granting a preliminary injunction are identical in this Circuit"). Accordingly, the preliminary injunction analysis applies with equal force to the motion for temporary restraining order, and vice versa. 6 Case 2:17-cv Filed 06/30/17 Page 6 of 19 Document 4

7 891, 895 (7th Cir. 2001). This process entails what the Seventh Circuit has called the "sliding scale" approach: the more likely the movant is to succeed on the merits, the less the balance of harms needs to favor injunctive relief. Id. Likewise, if a plaintiff's case is relatively weaker on the merits, the balance of harms must more strongly favor its side to justify relief. Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 12 (7th Cir. 1992). If these initial conditions are met, the Court then engages in a balancing of the harms, measuring the harm the moving party will suffer in the absence of relief against the harm the non-moving party will suffer if relief is granted. Ty, Inc., 237 F.3d at 895. Finally, the court considers the public interest and whether it favors preliminary injunctive relief. Id. For the reasons that follow, each and every step in this analysis favors the entry of a temporary restraining order and preliminary injunction. b. Milwaukee World Festival is Likely to Succeed on the Merits of its Claims. The threshold a plaintiff must meet to demonstrate likelihood of success on the merits is low. Cooper v. Salazar, 196 F.3d 809, 813 (7th Cir. 1999); see also Roland Mach. Co. v. Dresser Indus., Inc., 749 F.2d 380, 387 (7th Cir. 1984). "Plaintiffs need only demonstrate a 'better than negligible chance of succeeding.'" Cooper, 196 F.3d at 813 (quoting Boucher v. Sch. Bd. of Greenfield, 134 F.3d 821, 824 (7th Cir. 1998)). For the reasons discussed below, Milwaukee World Festival certainly has a better than negligible chance of succeeding on its trademark infringement claims -- indeed, its infringement case is very strong even at the outset of this case -- and it is thus comfortably above the threshold required to justify entry of preliminary relief. Milwaukee World Festival has brought claims for trademark infringement and unfair competition under both the Lanham Act, 15 U.S.C and 1125, and Wisconsin common 7 Case 2:17-cv Filed 06/30/17 Page 7 of 19 Document 4

8 law. Under all three theories, the analysis is the same, and so Milwaukee World Festival analyzes its three claims together. See Smith Fiberglass Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993) (collapsing analysis of claims under 1114, 1125, and Wisconsin common law); see also RDK Corp. v. Larsen Bakery Inc., No. 02-C-0675, 2006 WL , at *14 (E.D. Wis. July 31, 2006) (Analysis of state common law trademark infringement claim is "the same as that under federal law."); Nat'l Football League Props., Inc. v. ProStyle, Inc., 16 F. Supp. 2d 1012, 1014 (E.D. Wis. 1998) ("As defendants correctly note, the same legal standards govern an unfair competition claim for confusion caused by false suggestion of sponsorship and a claim for trademark infringement."). To succeed on the merits of its claims, Milwaukee World Festival must show: (1) the mark is protectable, and (2) the defendant's use of the mark is likely to cause confusion among consumers. Phoenix Entm't Partners v. Rumsey, 829 F.3d 818, 822 (7th Cir. 2016). On the merits, both elements are heavily tilted in favor of Milwaukee World Festival. i. The SUMMERFEST Mark is Protectable. Milwaukee World Festival's SUMMERFEST Mark is federally registered (Reg. No ) and has been since (Polakowski Decl. Ex. A; Nicotera Decl. 6.) Ordinarily, registration on the principal register is prima facie evidence of the mark's validity and thus establishes a rebuttable presumption of protectability. 15 U.S.C. 1115(a); Packman v. Chi. Tribune Co., 267 F.3d 628, (7th Cir. 2001) (registration affords registrant benefit of presumption either that mark is more than generic or descriptive, or that it has acquired secondary meaning). 8 Case 2:17-cv Filed 06/30/17 Page 8 of 19 Document 4

9 But here, because of the length of time the SUMMERFEST Mark has been registered, that registration means something more still. Specifically, when a registered mark has been in continuous use for five consecutive years following the date of registration and is still in use in commerce, "the right of the owner to use such registered mark in commerce for the goods or services on or in connection with such registered mark has been in continuous use shall be incontestable." 15 U.S.C When an owner's right to use a mark has become incontestable under 1065, the owner is entitled to more than a rebuttable presumption: rather, "the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant s ownership of the mark, and of the registrant s exclusive right to use the registered mark in commerce." 15 U.S.C. 1115(b) (emphasis added). Milwaukee World Festival's SUMMERFEST Mark has been registered for nearly fortyfive years. It is thus incontestable under 1065 of the Lanham Act, and the registration serves as conclusive evidence of its status as a protectable trademark (subject to a limited subset of defenses that are not applicable here). Accordingly, Milwaukee World Festival is likely to succeed in proving that the SUMMERFEST Mark is a protectable trademark, as required by all three of its claims. ii. Defendant's Use of the SUMMERFEST Mark Is Likely to Cause Consumer Confusion. Turning to the second requirement, Milwaukee World Festival is likely to succeed in demonstrating that Defendant's use of the SUMMERFEST Mark is likely to cause consumer confusion. The test for likelihood of confusion involves the application of seven factors: (1) the degree of similarity between the marks; (2) the similarity of the products for which the mark is used; (3) the area and manner of concurrent use; (4) the degree of care likely to be exercised by 9 Case 2:17-cv Filed 06/30/17 Page 9 of 19 Document 4

10 consumers; (5) the strength of the mark; (6) actual confusion; and (7) the infringer's intent to palm off his goods or services as those of another. Fortres Grand Corp. v. Warner Bros. Entm't Inc., 763 F.3d 696, 702 (7th Cir. 2014) (quoting McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, (7th Cir. 1986)). No single factor is alone determinative, and courts may assign varying weights to each factor depending on the facts presented. CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 678 (7th Cir. 2001). First, there can be no doubt that the marks are confusingly similar. Defendant has appropriated the SUMMERFEST Mark wholesale, without any alteration that might serve to distinguish it from Plaintiff's protected SUMMERFEST Mark. The addition of the descriptive "Lobster and Shrimp" to introduce the word "Summerfest" does not change the fact that the salient portions of the marks are virtually indistinguishable from one another. Cf. Int'l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1088 (7th Cir. 1988) (addition of "common geographic term 'of Chicago'" did not alter conclusion that marks were otherwise identical; "under these circumstances, we are convinced beyond doubt that the 'similarity' factor weighs in favor of the conclusion that the alleged infringer has appropriated the dominant portion of the mark"). Second, the products are similar within the meaning of the Lanham Act. Though Plaintiff uses the SUMMERFEST Mark in connection with an entertainment festival, and Defendant uses it in connection with a restaurant promotion, under the Lanham Act, the question is not whether the products themselves are dissimilar but "whether the products are the kind the public attributes to a single source," Fortres, 763 F.3d at 703 (quoting McGraw-Edison, 787 F.2d at 1169), or whether the infringer's products are those that might be "thought to be affiliated with, connected with, or sponsored by, the trademark owner." CAE, Inc., 267 F.3d at 679 (quoting Sands, Taylor 10 Case 2:17-cv Filed 06/30/17 Page 10 of 19 Document 4

11 & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 958 (7th Cir. 1992)). Summerfest contracts with numerous food and beverage vendors, many of whom are authorized to use the SUMMERFEST Mark in connection with their products through the duration of Summerfest. (Nicotera Decl. 910.) Summerfest also offers food and beverages at the festival itself through these vendors. (Id. 9.) Thus, the products and services in question -- the provision of an entertainment festival and the food and beverages served in connection with that festival -- are closely linked, and consumers are highly likely to believe that Defendant's restaurant promotion is affiliated or connected with, or sponsored by, Plaintiff based on Defendant's use of the SUMMERFEST Mark. Third, there is overlap in the area and manner of use of the marks. Summerfest is known nationwide and is particularly famous in the Wisconsin and Northern Illinois markets. (Id. 3.) Defendant's promotion is nationwide; moreover, Defendant has run its promotion in the Wisconsin-Illinois markets where Summerfest, and the goodwill and recognition built by Plaintiff's years of use of the SUMMERFEST Mark, are most strongly established. (Id. 16.) Fourth, consumers are unlikely to exercise significant care in purchasing Defendant's goods and services. Defendant's food products are inexpensive and widely available, which weighs in favor of a likelihood of confusion. CAE, Inc., 267 F.3d at 683 ("The more widely accessible and inexpensive the products and services, the more likely that consumers will exercise a lesser degree of care and discrimination in their purchases."). Moreover, it is highly unlikely that Defendant will be able to produce evidence that its customers "are particularly sophisticated or deliberative." AutoZone, Inc. v. Strick, 543 F.3d 923, 933 (7th Cir. 2008) (quoting AutoZone, Inc. v. Strick, 466 F. Supp. 2d 1034, 1042 (N.D. Ill. 2006)). This, again, weighs in favor of a finding of confusion. 11 Case 2:17-cv Filed 06/30/17 Page 11 of 19 Document 4

12 Fifth, the SUMMERFEST Mark is strong. "The 'strength' of a trademark refers to the mark's distinctiveness, meaning its propensity to identify the products or services sold as emanating from a particular source." CAE, Inc., 267 F.3d at 684. The fame of the SUMMERFEST Mark, particularly in the Wisconsin-Illinois market, is thus of significant relevance. (See Nicotera Decl. 3.) Plaintiff has been using the SUMMERFEST Mark since (Id. 6.) Its festival is known nationwide; Summerfest attracts hundreds of thousands of visitors annually from all over the country, in addition to the world-renowned performers it is able to book as part of the entertainment services it offers. (Nicotera Decl. 4 5.) Cf. CAE, Inc., 267 F.3d at 685 (relying on decades of use and size of company to conclude that the CAE mark at issue was strong). Plaintiff "has built, and continues to build, a reputation for the quality" of its yearly festival under the SUMMERFEST Mark, id., and so the Court should find that the SUMMERFEST Mark is strong. 2 Sixth, the evidence supports a finding that Defendant is intending to palm off its restaurant promotion as associated with Summerfest and profit from the goodwill and consumer recognition that Plaintiff has built in the SUMMERFEST Mark. Defendant was unquestionably aware of Plaintiff's SUMMERFEST Mark when it began promoting its "Lobster and Shrimp Summerfest" for the second year in a row, after being apprised of its trademark infringement (and the accompanying confusion) during the first promotion in (See generally Polakowski Decl. 3 8, Exs. B F.) Though simple knowledge of a mark is not enough to show intent, Sorensen v. W-D 40 Co., 792 F.3d 712, 731 (7th Cir. 2015), this situation goes far 2 To the extent that Defendant argues that alleged third-party uses weaken the SUMMERFEST Mark, Defendant is incorrect. Third-party uses or registrations affect the strength of a mark only to the extent that those other uses have been promoted or become recognized by consumers in the marketplace. AutoZone, 543 F.3d at 933 (citing CAE, Inc., 267 F.3d at 685). Thus, the possible existence of other "Summerfests" around the U.S. does not by itself affect the strength of Plaintiff's incontestable mark, in use for nearly five decades. 12 Case 2:17-cv Filed 06/30/17 Page 12 of 19 Document 4

13 beyond mere knowledge of the SUMMERFEST Mark. When it began its "Lobster and Shrimp Summerfest" promotion in 2017, Defendant did not merely know that the SUMMERFEST Mark existed; rather, it knew full well from the parties' previous correspondence that its appropriation of that mark for purposes of its "Lobster and Shrimp Summerfest" had caused actual confusion in the past. (See generally Polakowski Dec. 3 8 & Exs. B F.) But instead of returning to the non-infringing "Crabfest" mark, Defendant knowingly elected to appropriate the SUMMERFEST Mark for the second year running. (Nicotera Decl. 15.) Moreover, when Plaintiff reached out to Defendant to address the infringement, Defendant declined to engage in any meaningful discussions, ultimately stating that it would respond on July 5, when Summerfest will be nearly over for the year, thus giving it the benefit of uninterrupted infringement at the time when such infringement is most likely to cause confusion among consumers. (Polakowski Decl. 13 & Ex. J.) These circumstances, taken together, strongly support a finding of intent and weighs heavily in favor of injunctive relief. Accordingly, six of the seven factors weigh strongly in favor of a finding of likelihood of confusion, and thus in favor of Plaintiff's case on the merits. Though the record presently contains no evidence of actual confusion, such evidence is not necessary for the likelihood-ofconfusion finding. See CAE, Inc., 267 F.3d at 685. It is also worth noting that in 2016, when Defendant engaged in identical infringing behavior, instances of confusion did arise: Plaintiff was approached by numerous business leaders and city officials inquiring as to whether Plaintiff and Defendant were affiliated. (Nicotera Decl. 13.) There is no reason to believe that this time will be any different -- unless the Court enters the requested temporary restraining order and preliminary injunction to protect Plaintiff's goodwill and ability to safeguard its reputation and 13 Case 2:17-cv Filed 06/30/17 Page 13 of 19 Document 4

14 intellectual property. As discussed above, the likelihood of confusion analysis heavily favors Plaintiff on the merits and militates strongly in favor of such relief. c. Defendant's Infringement Will Cause Irreparable Harm Unless Enjoined, and Milwaukee World Festival Lacks an Adequate Remedy at Law. Next, Plaintiff must show that it will suffer irreparable harm in the absence of preliminary relief -- that is, harm "not fully compensable or avoidable by the issuance of a final judgment...." Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, 735 F.3d 735, 740 (7th Cir. 2013). "[I]t is well settled that injuries arising from Lanham Act violations are presumed to be irreparable, even if the plaintiff fails to demonstrate a business loss." Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002); see also Kraft Foods, 735 F.3d at 741 (noting that "irreparable harm is especially likely in a trademark case because of the difficulty of quantifying the likely effect on a brand of a nontrivial period of consumer confusion (and the interval between the filing of a trademark infringement complaint and final judgment is sure not to be trivial)"); Abbott Labs., 971 F.2d at 16 (acknowledging the "well-established presumption that injuries arising from Lanham Act violations are irreparable" and collecting cases). This "readiness to find irreparable injury arises in part from the realization that the most corrosive and irreparable harm attributable to trademark infringement is the inability of the victim to control the nature and quality of the defendants' goods." Int'l Kennel Club, 846 F.2d at 1092 (quoting Processed Plastic Co. v. Warner Commc'ns, Inc., 675 F.2d 852, 858 (7th Cir. 1982)) (internal quotation marks omitted). Such is the case here. Plaintiff carefully selects its food and beverage vendors and extends to them the limited right to use the SUMMERFEST Mark for the duration of the festival. But it entered into no such partnership with Defendant and has no control over Defendant's use 14 Case 2:17-cv Filed 06/30/17 Page 14 of 19 Document 4

15 of the SUMMERFEST Mark, how that mark is employed, or the quality of the food which Defendant is using the mark to promote. Defendant's infringement is thus causing harm to Milwaukee World Festival that cannot simply be remedied with an award of monetary damages or with a permanent injunction at the end of litigation; by that time, Summerfest 2017 will be over, and Plaintiff will have lost the ability to control its mark, its reputation, and the quality of the food it provides at its festival for the whole of the 2017 celebration. (Nicotera Decl ) And, because the harm Plaintiffs will suffer due to infringement is irreparable, the conclusion that Plaintiff lacks an adequate remedy at law necessarily follows. Fleet Wholesale Supply Co. v. Remington Arms Co., 846 F.2d 1095, 1098 (7th Cir. 1988) ("To say that the injury is irreparable means that the methods of repair (remedies at law) are inadequate."); see, e.g., Re/Max N. Cent., Inc. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001) (analyzing irreparable harm and lack of adequate remedy at law together and concluding lack of control over quality of services provided by alleged infringer and possible damage to goodwill constituted "an irreparable injury for which there is no adequate remedy at law"). d. The Balance of Harms and the Public Interest Favor Plaintiff. Because Plaintiff has established a likelihood of success on the merits and irreparable harm for which it lacks an adequate remedy at law, the analysis now proceeds to the balance of harms, taking into account where appropriate the interest of the public. The Seventh Circuit has repeatedly stated that a court should not consider a defendant's economic risk related to an injunction when the defendant knew of the plaintiff's rights prior to its infringing use. See Ty, Inc., 237 F.3d at , 903 ("In assessing Defendant's irreparable harm, the court excludes the burden [the defendant] voluntarily assumed by proceeding in the face of a known risk."); Int'l Kennel Club, 846 F.2d at 1091 ("defendants brought any alleged harm onto themselves through 15 Case 2:17-cv Filed 06/30/17 Page 15 of 19 Document 4

16 their blatant use of the plaintiff's name in spite of their unequivocal knowledge of plaintiff's prior use of the name.") This principle is directly applicable here. Defendant cannot credibly contend that it was unaware of the risk it took in branding its promotion "Lobster and Shrimp Summerfest," because it attempted the exact same branding in (Nicotera Decl. 12.) Then, as now, Plaintiff became aware of Defendant's infringement and contacted Defendant to demand that the infringing activity cease, laying out its position in thorough correspondence. (See Polakowski Decl. 3 8 & Exs. B F.) Though Defendant nevertheless denied infringing, it ultimately transitioned to the non-infringing "Crabfest" mark, resolving the problem in (Nicotera Decl. 14.) Defendant's decision to return to the infringing "Lobster and Shrimp Summerfest" this year, knowing full well of Plaintiff's trademark rights in the SUMMERFEST Mark and the likelihood of confusion its own use occasioned, was entirely at its own risk; any monetary harm that will be caused by the need for Defendant to rebrand its promotion should not enter this Court's calculus in balancing the harms. With this principle in mind, it is clear that the balance of harms weighs in favor of Plaintiff. Defendant need not end its promotion. It need not stop selling or advertising the food products that make up that promotion. Instead, all it need do is return to the use of the noninfringing "Crabfest" mark, which it saw fit to employ in 2016, or an alternative non-infringing mark. Defendant's business operations will thus be almost entirely unaffected. Cf. Re/Max, 272 F.3d at (balance of harms weighed in favor of movant where it required only that the enjoined party remove the infringing marks and logos following termination of franchise; enjoined party was still free to maintain and develop client relationships and "to maintain her same office and listings and to work as an independent real estate agent or to select another real 16 Case 2:17-cv Filed 06/30/17 Page 16 of 19 Document 4

17 estate company to contract with"). And to the extent Defendant incurs expenses in changing its advertising and promotional materials to employ an alternative non-infringing mark, that was a risk Defendant knowingly took when it misappropriated Plaintiff's trademark for the second year running. See Ty, Inc., 237 F.3d at , 903; Int'l Kennel Club, 846 F.2d at In contrast, Plaintiff is without a remedy to stop Defendant from employing its SUMMERFEST Mark or to control the Mark's use in any way, and there is no possibility that this suit will be resolved in its entirety before Summerfest 2017 ends -- meaning that Defendant will have free rein as to Plaintiff's property for the whole of the festival absent immediate relief. Accordingly, the balance of harms weighs in Milwaukee World Festival's favor. Finally, the public interest also weighs in favor of an injunction. Preliminary relief that prevents consumer confusion in the marketplace serves the public interest. Promatek Indus., 300 F.3d at ; see also Int'l Kennel Club, 846 F.2d at 1092 n.8 ("In trademark infringement cases, we have stated that 'the relevant consideration [in determining whether the public interest will be disserved by the grant of an injunction] is the consumer's interest in not being deceived about the products they purchased.'") (citation omitted) (alterations in original). A temporary restraining order, followed by a preliminary injunction, will prevent consumers from believing that Defendant's Lobster and Shrimp Summerfest is in some way affiliated with Summerfest itself or sponsored, provided, or authorized by Plaintiff. This serves the public interest and weighs in favor of relief. IV. CONCLUSION Plaintiff satisfies all the factors necessary for the entry of a temporary restraining order, followed by preliminary injunctive relief. It is likely to succeed on the merits with respect to its three trademark infringement claims; it will suffer irreparable harm for which it has no adequate remedy at law in the absence of preliminary relief; and the balance of harms and public interest alike weigh in favor of an injunction. 17 Case 2:17-cv Filed 06/30/17 Page 17 of 19 Document 4

18 Accordingly, pending resolution of this case on the merits, Plaintiff respectfully requests that this Court enter a temporary restraining order and/or preliminary injunction: Preliminarily enjoining and restraining Defendant, its employees, agents and representatives, and all persons acting in concert or in participation with them, from using on or in connection with any business, service, or the sale, offering for sale, distribution, advertising, promotion, labeling, or packaging, of any services or goods, or from using for any commercial purpose whatsoever, the SUMMERFEST Mark or any other name confusingly similar to the SUMMERFEST Mark, including but not limited to "Lobster and Shrimp Summerfest"; Requiring Defendant to deliver up to the Court for destruction, or to show proof (upon the oath of Defendant made subject to penalty of perjury) of said destruction, of any and all products, promotional and business materials, and all other matter in the possession, custody, or control of Defendant or its agents, distributors, or franchisees, including any materials posted on Defendant's website, which bear or depict the SUMMERFEST Mark or any other name confusingly similar to the SUMMERFEST Mark, including but not limited to "Lobster and Shrimp Summerfest"; and Directing Defendant to recall any products and advertising and promotional materials bearing any matter in violation of any injunction entered in this action, or bearing or depicting the SUMMERFEST Mark or any other name confusingly similar to the SUMMERFEST Mark, including but not limited to "Lobster and Shrimp Summerfest"; and 18 Case 2:17-cv Filed 06/30/17 Page 18 of 19 Document 4

19 Awarding such other relief as the Court finds to be just and proper. Dated this 30th day of June, s/ Jessica H. Polakowski Jessica H. Polakowski WI State Bar ID No Monica A. Mark WI State Bar ID No Reinhart Boerner Van Deuren s.c. P.O. Box 2018 Madison, WI Telephone: Facsimile: Attorneys for Plaintiff, Milwaukee World Festival, Inc v2 19 Case 2:17-cv Filed 06/30/17 Page 19 of 19 Document 4