Opinion
NOT TO BE PUBLISHED
APPEAL from the Superior Court of San Bernardino County Super.Ct.No. VCVVS036018, Kurt Lewin, Judge. (Retired judge of the L.A. Super. Ct. assigned by the Chief Justice pursuant to art. VI, § 6 of the Cal. Const.).
Law Offices of Valerie Ross and Valerie Ross for Defendant and Appellant.
John E. Douglass for Plaintiff and Respondent.
OPINION
RICHLI, J.
Plaintiff Jones Fuller Malone (Malone) sued defendant Michaelene Thrush (Thrush) to enjoin her from using the trade names “Miss Hesperia,” “Miss Apple Valley,” and “Miss Victorville” (the names or marks) in her beauty pageants held in the San Bernardino County high desert area. Malone had been conducting beauty pageants under those names since 1999 and claimed he had the exclusive common law right of use of the names despite the fact that he had let the fictitious business license registrations on the names expire. Malone also brought a cause of action for slander against Thrush, claiming she made false statements to a newspaper reporter that he employed a convicted sex offender as a photographer for his beauty pageants. Thrush cross-complained on the ground that, since Malone had allowed the fictitious business name registrations for the trade names to expire and she had filed registrations for the names, she had the exclusive rights to use the names.
The trial court ruled that the trade names were protectable under common law and that Malone had the exclusive rights to the names. The trial court enjoined Thrush from using the trade names. Thrush appeals that ruling.
We find that the trial court’s ruling was in fact a permanent injunction and conclude that it is an appealable order. We also find that the trial court did not abuse its discretion by issuing the injunction on the ground that Malone had the exclusive right to use the names.
I
FACTUAL AND PROCEDURAL BACKGROUND
On July 15, 2005, Malone filed his second amended complaint. He listed four causes of action: (1) to enjoin infringement of common law trade name and for accounting of profits; (2) likelihood of injury to Malone’s business reputation and/or dilution of the distinctive quality of Malone’s trade names; (3) infringement of trade names to enhance the commercial value of Thrush’s services; and (4) slander per se for statements made to the Daily Press newspaper about Malone’s company. On May 26, 2006, defendant filed a cross-complaint. Thrush essentially argued she had duly registered the names as fictitious business names after Malone had failed to timely register the names, and therefore she was entitled to the exclusive use of the names. She claimed that Malone infringed on her lawful fictitious business name registrations.
On July 25, 2006, the trial court issued an order that it would hear the nonjury portion of the case, which was the issue of who possessed the right to use the names and that all other matters would be submitted to arbitration. The parties agreed upon a stipulated statement of facts as follows.
Malone registered the fictitious business names (DBA’s) for the names on March 22, 1999, and conducted beauty pageants under these names in the San Bernardino County high desert area. On April 20, 2004, the DBA registrations expired, and Thrush, whose daughter had won one of the contests in 2001, registered the names on April 21, 2004. In September 2004, Malone became aware that Thrush was using the names to promote her own beauty pageants and sent her a cease and desist letter in October 2004. On November 4, 2004, Malone filed his first complaint in this case. On November 6, 2004, Thrush held a beauty pageant using the three contested names. Thrush admitted that she knew Malone had previously used and continued to use the names. On July 15, 2005, a preliminary injunction was issued enjoining Thrush from using the names.
In addition to the stipulated facts, Thrush filed a trial brief on what she termed the bifurcated court trial issues, arguing that purely geographical names are excepted from common law trade name protection. A geographical business name could only be protected by registration of a fictitious business statement. Thrush concluded that since she possessed the registered names, Malone should be enjoined from using them. She argued the same claims in a subsequent brief.
Malone also filed a trial brief arguing that the names were composite trade names, not merely geographical names (which he admitted were not protected under the common law). He asked that a permanent injunction be issued enjoining Thrush from using the names.
On November 29, 2006, the trial court issued its ruling on the submitted matter. It concluded that Malone had been the first user of the three contested names. It also found that the marks were composite marks, which were entitled to protection under the common law. It concluded that Malone was entitled to “injunctive relief to protect his interest in those trade names,” and Thrush was enjoined from using the names Miss Apple Valley, Miss Hesperia, and Miss Victorville, in connection with beauty pageants in the Victor Valley area.
The trial court’s ruling was not included in the clerk’s transcript on appeal. On May 10, 2007, we granted defendant’s motion to augment the record with the trial court’s ruling on submitted matter filed on November 29, 2006.
II
ANALYSIS
Thrush contends that the trial court erroneously enjoined her from using the names because they were not entitled to protection under the common law. She claims that geographical names are not entitled to common law protection, and since she registered the names as her fictitious business names, she had the exclusive right to use them.
A. Appealability
Initially, we believe that the appealability of the trial court’s order needs to be addressed. Thrush contends in her statement of appealability that the trial court’s ruling is appealable under Code of Civil Procedure section 904, subdivision (a)(1) because the ruling disposes of all the equitable issues having to do with the parties’ businesses. Malone does not address Thrush’s right to appeal the order. The litigation in this case is still ongoing. The issue of damages arising from Thrush’s infringement of Malone’s trade names, and the fourth cause of action for slander, must still be resolved. As such, if the trial court’s ruling is characterized as a resolution of the equitable issues, it would be an interlocutory order that could not be appealed under the one final judgment rule.
Thrush in fact characterizes the trial court’s ruling as a determination of the equitable issues in the case. The trial court characterized its order as a ruling on the submitted matter. However, Malone specifically requested that the trial court grant a permanent injunction in his trial brief. The trial court ruled that Thrush “shall be and hereby is enjoined from using plaintiff’s common law service marks . . . .” We believe the trial court’s ruling is properly considered a permanent injunction. (See Art Movers, Inc. v. Ni West, Inc. (1992) 3 Cal.App.4th 640, 646 [“[a] permanent injunction is a determination on the merits that a plaintiff has prevailed on a cause of action for tort or other wrongful act against a defendant and that equitable relief is appropriate. A permanent injunction is not issued to maintain the status quo but is a final judgment on the merits”].) The question remains whether the granting of a permanent injunction is an appealable order.
Although the trial court’s order could be characterized as a preliminary injunction, which is unquestionably an appealable order, we believe that the trial court’s ruling disposed of the issue and is better characterized as a permanent injunction.
Code of Civil Procedure section 904.1, subdivision (a)(6) provides a statutory right of appeal “[f]rom an order granting or dissolving an injunction, or refusing to grant or dissolve an injunction.” One court has concluded that, despite this statutory appellate right, the nonstatutory one final judgment rule is applicable to the appeal from a granting of a permanent injunction. (Guntert v. City of Stockton (1974) 43 Cal.App.3d 203, 207-209.) It concluded, however, there is appellate court discretion to hear such an appeal when “inflexible application of the nonstatutory rule would produce inutility or hardship . . . .” (Id. at p. 208.) Since Thrush has provided no evidence of inutility or hardship, the exception in Guntert does not apply.
However, other courts have concluded that an order granting a permanent injunction is appealable. (See, e.g., Western Electroplating Co. v. Henness (1959) 172 Cal.App.2d 278, 282-284 [granting of permanent injunction appealable because it is sufficiently final]; Cabrini Villas Homeowners Assn. v. Haghverdian (2003) 111 Cal.App.4th 683, 688 [grant of permanent injunction appealable under Code of Civil Procedure section 904.1, subdivision (a)(6)].) In Bishop Creek Lodge v. Scira (2000) 82 Cal.App.4th 631, 633, we concluded that the denial of a permanent injunction is not appealable. In analyzing the issue, however, we stated, “We would be reluctant to suggest that, when a permanent injunction is granted, the litigant who is under the burdens of the injunction cannot appeal until final judgment. Indeed, it would seem that the very permanence of the injunction should militate in favor of, rather than against, an immediate appeal.” (Id. at p. 634.) We believe given the express language of Code of Civil Procedure section 904.1, subdivision (a)(6), and the need for clear jurisdictional rules, the better practice is to allow the appeal of the permanent injunction in this case.
B. Standard of Review
“‘A permanent injunction is a determination on the merits that a plaintiff has prevailed on a cause of action . . . against a defendant and that equitable relief is appropriate.’ [Citation.] The grant or denial of a permanent injunction rests within the trial court’s sound discretion and will not be disturbed on appeal absent a showing of a clear abuse of discretion. [Citation.] The exercise of discretion must be supported by the evidence and, ‘to the extent the trial court had to review the evidence to resolve disputed factual issues, and draw inferences from the presented facts, [we] review such factual findings under a substantial evidence standard.’ [Citation.] We resolve all factual conflicts and questions of credibility in favor of the prevailing party and indulge all reasonable inferences to support the trial court’s order. [Citation.]” (Horsford v. Board of Trustees of California State University (2005) 132 Cal.App.4th 359, 390; see also Shapiro v. San Diego City Council (2002) 96 Cal.App.4th 904, 912; City of Vernon v. Central Basin Mun. Water Dist. (1999) 69 Cal.App.4th 508, 516.)
C. Merits
Thrush’s sole claim that the trial court’s ruling was erroneous is that geographical names are excepted from the doctrine of common law trade names, and only her fictitious business name registration can protect their exclusive use, since Malone let the registrations expire and she duly registered them.
Since the parties submitted stipulated facts, we accept as true that Malone was the first in time to use the trade names of Miss Hesperia, Miss Apple Valley, and Miss Victorville and that he let the DBA’s on the names expire. Furthermore, we accept that Thrush properly registered the names, being fully aware that Malone had previously used the names and had not abandoned them.
Business and Professions Code section 14220, subdivision (e) provides that geographic and other purely descriptive words, used in their descriptive sense, are not protected as trade names. “[P]ublic policy has directed that the exclusive right to the use of a name or mark cannot consist of words in common use as designating locality or region of a country. [Citation.]” (Cebu Association of California Inc. v. Santo Nino De Cebu USA, Inc. (1979) 95 Cal.App.3d 129, 133.) However, composite marks must be considered in their totality. (Id. at p. 134.) Beauty pageant marks have been both identified as being distinctive and analyzed as composite marks. (See Miss World (UK) Ltd. v. Mrs. America Pageants (9th Cir. 1988) 856 F.2d 1445, 1450.)
We agree with the trial court that the names were properly analyzed as composite marks. As found by the trial court, these names, when analyzed in their totality, were entitled to protection under common law. As such, the trial court did not abuse its discretion in determining that the trade names were protectable common law service marks, and therefore Malone possessed the exclusive use of the marks.
Thrush errs in stating that the geographical names in the instant case were used in their purely geographical descriptive sense. Thrush ignores the fact that these were clearly composite marks and that the trade names must be analyzed in their totality. Furthermore, these names have come to signify beauty contests held in the high desert area, a secondary meaning for these seemingly descriptive names. (See California Western School of Law v. California Western University (1981) 125 Cal.App.3d 1002, 1009; North Carolina Dairy Foundation, Inc. v. Foremost-Mackesson, Inc. (1979) 92 Cal.App.3d 98, 107 [“[a]n otherwise descriptive term or mark may achieve a protectable status whenever the quality of distinctiveness has — in fact — been acquired through a demonstrated secondary meaning”].)
Since Malone had the common law rights to the names because, as admitted by the parties, he used them first, Thrush’s subsequent registration of the marks did not entitle her to the use of the names. (Bus. & Prof. Code, § 14418.) As such, the trial court did not abuse its discretion by issuing the instant injunction against Thrush’s use of the names Miss Hesperia, Miss Victorville, and Miss Apple Valley.
Since Thrush raises no further issues on appeal, we will not address other findings made by the trial court in issuing the injunction. (See Locke v. Warner Bros., Inc. (1997) 57 Cal.App.4th 354, 368 [defendant’s failure to raise issue in opening brief ordinarily waive issue on appeal].)
III
DISPOSITION
We affirm the trial court’s ruling. Respondent shall recover costs on appeal.
We concur: HOLLENHORST, Acting P.J., GAUT, J.