IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 15-40446

EMERALD CITY MANAGEMENT, L.L.C.; EMERALD CITY BAND, INC.,

Plaintiffs–Appellees,

v.

JORDAN KAHN; JORDAN KAHN MUSIC COMPANY, L.L.C.,

Defendants–Appellants.

Appeal from the United States District Court 

for the Eastern District of Texas

USDC No. 4:14-CV-358

Before DENNIS, ELROD, and GRAVES, Circuit Judges.

PER CURIAM:*

In this dispute about the use of the name “Downtown Fever” for a party 

band in Texas, Appellants Jordan Kahn and Jordan Kahn Music Company, 

L.L.C., (collectively, “Kahn”) appeal the district court’s order issuing a 

preliminary injunction ordering them to transfer control of a Facebook account 

to Plaintiffs Emerald City Management, L.L.C., and Emerald City Band, Inc. 

(collectively, “Emerald City”). Because the requirements for a preliminary 

injunction were not satisfied here, we VACATE the preliminary injunction.

 

* Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not 

be published and is not precedent except under the limited circumstances set forth in 5TH 

CIR. R. 47.5.4.

United States Court of Appeals

Fifth Circuit

FILED

March 8, 2016

Lyle W. Cayce

Clerk

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I.

Plaintiffs Emerald City, which operate party bands in the Dallas, Texas

area, are owned by Dean Taglioli. Defendant Jordan Kahn is a musician from 

Plano, Texas, and the owner of Defendant Jordan Kahn Music Company, 

L.L.C. While in high school, Jordan allegedly met Taglioli and played with an 

Emerald City party band called the Emerald City Band in 2004 and 2005. In 

2006, while Jordan was in college at Berklee College of Music in Boston, 

Massachusetts, Jordan formed a party band he named Downtown Fever. The 

band grew in popularity, playing in various northeast states as well as in 

Nashville and New Orleans. Taglioli allegedly took notice of the band’s success 

and contacted Jordan in an effort to recruit him to move to Dallas and work for 

Emerald City as a bandleader for a new band managed by Emerald City, which 

was ultimately also given the name Downtown Fever.1 Jordan eventually 

agreed to move to Dallas and work for Emerald City in 2009. In Dallas, Jordan 

auditioned and hired new musicians for the new Downtown Fever band. 

Jordan worked as the bandleader of the Downtown Fever band and also 

worked for Emerald City as the Director of Operations, overseeing Emerald 

City’s other bands. Allegedly unbeknownst to Jordan, Emerald City obtained 

a trademark registration for the mark “Downtown Fever” from the State of 

Texas in 2011.2 

 

1 It is disputed whether Taglioli offered Jordan mere employment or a partnership 

interest in Emerald City. Taglioli asserts that Jordan agreed to be an employee, while Kahn 

asserts that Taglioli agreed to a partnership deal. Kahn asserts that Jordan resigned from 

Emerald City in 2014 because of Taglioli’s continued refusal to memorialize the partnership 

deal.

2 Emerald City asserts that Jordan agreed to allow Emerald City to own the 

Downtown Fever mark when Jordan agreed to move to Dallas and work for Emerald City. 

Kahn denies this allegation and asserts that Jordan at all times owned the Downtown Fever 

mark and gave Emerald City only a license to use the mark while he worked for them.

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In 2014, Jordan resigned from Emerald City. Soon thereafter, Emerald 

City filed suit against Kahn for claims of state and federal trademark 

infringement and other business torts. Emerald City asserts, among other 

things, that Kahn is infringing on Emerald City’s “Downtown Fever” mark. 

Emerald City sought a preliminary injunction and temporary restraining order 

to prevent Kahn from operating under the Downtown Fever mark, recover 

alleged Emerald City data from Kahn, and gain access to the Downtown Fever 

website and social media accounts. The district court granted injunctive relief 

but did not order, among other things, that Kahn turn over control of the 

Downtown Fever Facebook account.

After the order granting injunctive relief issued, Jordan voluntarily

inactivated the Downtown Fever Facebook account such that no one can

currently view the Downtown Fever Facebook page. Based upon this change 

to the status quo,3 Emerald City filed a second application for injunctive relief, 

which requested, among other things, an order forcing Kahn to give Emerald 

City control over the Downtown Fever Facebook account. The second 

application was stricken but was replaced by an amended second application 

requesting the same. The district court transferred the matter to the 

magistrate judge, who held a hearing on the Application.

At the hearing, Emerald City’s witness—a web designer who had 

designed Emerald City’s website—testified that an Emerald City employee

named Phillip Nestreda had created the Downtown Fever Facebook account 

and had given Jordan administrator access to the account. The witness 

testified that the Downtown Fever Facebook page was no longer viewable and 

 

3 Emerald City was previously blocked from controlling the Downtown Fever Facebook 

account whereas now the Facebook page has been “shut down” such that customers and 

potential customers can no longer access the page and may be under the impression that the 

Downtown Fever band has disbanded.

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that Emerald City had been “locked out” of accessing the administrator 

functions for the page. At the conclusion of the evidence, the magistrate judge 

announced that Kahn would have to re-activate the Downtown Fever Facebook 

page so that it could be viewed and would have to transfer control of the 

Facebook page to Emerald City. 

After the hearing, the magistrate judge issued its Report and 

Recommendation (“R&R”). The R&R recommended that the district court 

issue a preliminary injunction ordering Kahn to “transfer to Plaintiffs complete 

control of Downtown Fever’s account on Facebook” and prohibit Kahn from 

“making any alterations to or accessing (for any purpose other than to transfer 

the control to Plaintiffs) Downtown Fever’s Facebook account.” The district 

court adopted the R&R in full and without further analysis, ordered Kahn to 

“transfer to Plaintiffs complete control of Downtown Fever’s account on 

Facebook by providing Plaintiffs’ counsel with the password and any other 

required materials to access and assume control of the account under an 

administrator status within five (5) days of the entry of this order” and 

enjoined Kahn “from making any alterations to or accessing (for any purpose 

other than to transfer the control of the administrator status to Plaintiffs) 

Downtown Fever’s Facebook account.” 

Kahn appeals the order, arguing that Emerald City failed to carry its 

burden to show that each requirement for a preliminary injunction was 

satisfied. Specifically, Kahn argues that Emerald City never showed how they 

were likely to succeed on the merits for any of their claims—either in their 

Amended Second Application for injunctive relief or at the hearing—and the 

R&R and district court order also fail to discuss likelihood of success on the 

merits. Kahn points out that the district court, which adopted the R&R in full,

based its decision to issue the preliminary injunction on the “Lanham Act,” 

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which requires a plaintiff to show “use in commerce” of a mark. Kahn argues 

that neither shutting down a Facebook page nor blocking Emerald City from 

administrator access to a Facebook page is “use” of a mark “in commerce.” 

Kahn notes that the Downtown Fever Facebook page, because it is inactivated, 

cannot be viewed by anyone and thus Kahn’s activity cannot constitute “use in 

commerce” of a mark.

II.

We review a district court’s grant of a preliminary injunction for abuse 

of discretion.4 Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 306 

(5th Cir. 2008). A preliminary injunction “is an extraordinary equitable 

remedy that may be granted only if the plaintiff establishes four elements: (1) 

a substantial likelihood of success on the merits; (2) a substantial threat that 

the movant will suffer irreparable injury if the injunction is denied; (3) that 

the threatened injury outweighs any damage that the injunction might cause 

the defendant; and (4) that the injunction will not disserve the public interest.” 

Brennan’s, Inc. v. Brennan, 289 F. App’x 706, 707 (5th Cir. 2008) (emphasis 

added) (citing Speaks v. Kruse, 445 F.3d 396, 399–400 (5th Cir. 2006)).

Here, we cannot find in any party filing, hearing transcript, or court 

filing an analysis of the four elements that must be satisfied before the 

“extraordinary remedy” of a preliminary injunction can be granted.5 As Kahn 

notes, Emerald City nowhere in its Amended Second Application for injunctive 

 

4 “As to each element of the district court’s preliminary-injunction analysis, the 

district court’s findings of fact are subject to a clearly-erroneous standard of review, while 

conclusions of law are subject to [de novo] review and will be reversed if incorrect.” Sell v. 

Livingston, 561 F. App’x 342, 343 (5th Cir. 2014) (quoting Janvey v. Alguire, 647 F.3d 585, 

591–92 (5th Cir. 2011)). 5 See Petrello v. Nath, 350 F. App’x 887, 890 (5th Cir. 2009) (“When granting a 

preliminary injunction, the district court . . . ‘must . . . state the findings and conclusions that 

support its action.’” (citing Fed. R. Civ. P. 52(a)(2) and Chandler v. City of Dallas, 958 F.2d 

85, 88–89 (5th Cir. 1992)).

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relief, or at the hearing, tied Kahn’s actions related to the Facebook account to 

any one of Emerald City’s sixteen causes of action. 

The R&R cites only to the standard for “Lanham Act liability,” explaining 

that such liability requires a “showing that the defendant ‘uses in commerce 

any word, term, name, symbol, or device.’” Thereafter, the R&R states: “As 

noted at the hearing and in the Court’s post-hearing order, . . . the Court finds 

that Plaintiffs have offered sufficient evidence regarding Defendants’ control 

of Downtown Fever’s Facebook account to warrant additional injunctive relief.” 

The R&R reasons that because Kahn “has prevented Plaintiffs from accessing 

their Downtown Fever Facebook account and will not make the password 

available to them[,] . . . [s]uch . . . causes them irreparable harm in the Texas 

marketplace.” 

The implied conclusion in the R&R, and the basis upon which the 

preliminary injunction was granted, is that Kahn’s Facebook-related actions 

establish Emerald City’s likelihood of success on the merits for a Lanham Act 

claim. Such a conclusion amounts to an abuse of discretion, for we agree with 

Kahn that neither shutting down a Facebook account nor blocking

administrator access to a Facebook account constitutes “use in commerce” of a 

trademark.6 See Paulsson, 529 F.3d at 306, 309. As it is undisputed that the 

Facebook page is not accessible to anyone, Kahn’s Facebook-related actions 

cannot be characterized as “use in commerce” of a trademark.7

 

6 Emerald City argues that its claims for tortious interference with business relations 

and breach of fiduciary duty support the injunction. That may be so, but it is of no account 

now because Emerald City failed to make any showing linking those claims to Kahn’s 

Facebook-related actions prior to the issuance of the injunction. As such, we agree with Kahn

that Emerald City failed to satisfy its burden of proving that all four prerequisites for a 

preliminary injunction were satisfied.

7 Moreover, upon review of the hearing transcript and post-hearing order referred to 

in the R&R, we find nothing in either to justify the preliminary injunction. At the hearing, 

the only “findings” related to the Facebook activity consisted of the magistrate judge stating 

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III.

Because the requirements for a preliminary injunction were not satisfied

here, we VACATE the preliminary injunction.

 

that he was “troubled” and “concerned” by Kahn’s shutting down and locking Emerald City 

out of the Facebook page and he believed those actions were “dirty pool.” 

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