Neo4j, Inc. v. Purethink, LLC ( 2022 )

UNITED STATES COURT OF APPEALS FILED
FOR THE NINTH CIRCUIT MAR 14 2022
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
NEO4J, INC.; NEO4J SWEDEN AB, No. 21-16029
Plaintiffs-counter- D.C. No. 5:18-cv-07182-EJD
defendants-Appellees, Northern District of California,
San Jose
v.
ORDER
PURETHINK, LLC; IGOV, INC.; JOHN
MARK SUHY,
Defendants-counter-
claimants-Appellants.
Before: HURWITZ and VANDYKE, Circuit Judges, and ERICKSEN,* District
Judge.
The memorandum disposition filed on February 18, 2022 is amended as
follows:
• At page 1, lines 1–2, the phrase “and three corporations, PureThink,
LLC, iGov, Inc., and Graph Foundation, Inc.” is replaced by “and, as
relevant here, two corporations, PureThink, LLC, and iGov, Inc.”
• At page 2, line 1, footnote 1 has been added, which reads, “An action
stating substantially the same claims against another corporation,
Graph Foundation, Inc. (“GFI”), settled.”
• At page 2, line 14, the phrase “not Neo4j® Enterprise Edition” has
been deleted.
• At page 2, footnote 2, the phrase “to denote the Neo4j USA-licensed
platforms, Neo4j® Community Edition and Neo4j® Enterprise
*
The Honorable Joan N. Ericksen, United States District Judge for the
District of Minnesota, sitting by designation.
Edition” has been replaced by “to denote the licensed platforms at
issue.”
• At page 3, lines 2–3, the phrase “and others” has been added.
• At page 3, line 9, the word “Defendants’” has been replaced by “The”.
• At page 3, line 12, the word “Defendants’” has been replaced by
“And”.
• At page 3, line 13, the phrase “even taking Defendants’ own definition
of the term—‘compatibility’” has been deleted.
The petition for panel rehearing, Dkt. 47, is DENIED. No future petitions for
rehearing or rehearing en banc will be entertained.
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NOT FOR PUBLICATION FILED
UNITED STATES COURT OF APPEALS MAR 14 2022
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
NEO4J, INC.; NEO4J SWEDEN AB, No. 21-16029
Plaintiffs-counter- D.C. No. 5:18-cv-07182-EJD
defendants-Appellees,
v. AMENDED MEMORANDUM*
PURETHINK, LLC; IGOV, INC.; JOHN
MARK SUHY,
Defendants-counter-
claimants-Appellants.
Appeal from the United States District Court
for the Northern District of California
Edward J. Davila, District Judge, Presiding
Argued and Submitted February 7, 2022
San Francisco, California
Before: HURWITZ and VANDYKE, Circuit Judges, and ERICKSEN,** District
Judge.
Neo4j, Inc. (“Neo4j USA”) sued John Mark Suhy and, as relevant here, two
corporations, PureThink, LLC and iGov, Inc. (collectively, “Defendants”), asserting
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The Honorable Joan N. Ericksen, United States District Judge for the
District of Minnesota, sitting by designation.
claims under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and California law.1 The
district court entered a preliminary injunction enjoining Defendants from infringing
the registered NEO4J mark2 and from making misrepresentations to consumers
about their products. Reviewing for abuse of discretion, see Dev’l Servs. Network
v. Douglas, 666 F.3d 540, 544 (9th Cir. 2011), we affirm.
1. Because Neo4j USA registered the NEO4J mark, U.S. Trademark
Registration No. 4,784,280, the district court correctly held it has standing to sue for
infringement. See 15 U.S.C. § 1114(1) (infringers “shall be liable in a civil action
by the registrant”); Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1214,
1226–28 (9th Cir. 2008).
2. The court did not abuse its discretion by enjoining Defendants from
infringing the NEO4J mark in the names of their own products. Defendants’ use of
the NEO4J mark was not nominative fair use, as it referred to their competing
products, “Neo4j Enterprise” and “Government Package for Neo4j.” See Toyota
Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171, 1183 (9th Cir. 2010) (holding that
nominative use of a trademark requires that the mark “refer to the trademarked good”
not the defendant’s good); New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d
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An action stating substantially the same claims against another corporation,
Graph Foundation, Inc. (“GFI”), settled.
2
We use the term “NEO4J” to refer to the word mark registered by Neo4j USA.
We use the term “Neo4j®” to denote the licensed platforms at issue.
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302, 308 (9th Cir. 1992).
3. Nor did the court abuse its discretion by enjoining Defendants and
others from “[a]dvertising, promoting, representing or referring to ONgDB as a free
and open source drop-in replacement of Neo4j Enterprise Edition,” and making other
false representations about ONgDB to consumers. Lanham Act falsity is established
either if a “statement was literally false, either on its face or by necessary
implication,” or if a “statement was literally true but likely to mislead or confuse
consumers.” Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1139 (9th
Cir. 1997). The representation that ONgDB is a “free and open-source” version of
Neo4j® EE was literally false, because Section 7 of the Sweden Software License
only permits a downstream licensee to remove “further restrictions” added by an
upstream licensee to the original work. And advertisements of ONgDB as a “drop-
in replacement” for Neo4j® EE were also false. And, even if the “drop-in
replacement” representations were not literally false, substantial evidence showed
that consumers were confused by Defendants’ use of the term.
4. The district court did not abuse its discretion by enjoining Defendants
from suggesting Neo4j USA endorsement of their products. Defendants argue that
two of the eight factors identified in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348–49 (9th Cir. 1979)—the “type of goods and the degree of care likely to be
exercised by the purchaser” and “evidence of actual confusion”—weigh in their
3
favor. But the “presence or absence of a particular factor does not necessarily drive
the determination of a likelihood of confusion.” E. & J. Gallo Winery v. Gallo
Cattle Co., 967 F.2d 1280, 1290–91 (9th Cir. 1992). A particularly strong showing
of some factors will suffice to demonstrate confusion. See Pom Wonderful LLC v.
Hubbard, 775 F.3d 1118, 1125 (9th Cir. 2014). It was not an abuse of discretion for
the district court to rely on the other six Sleekcraft factors in entering the preliminary
injunction.
AFFIRMED.
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