### IN THE UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT

No. 15

- 40446

EMERALD CITY MANAGEMENT , L

. L

. C .; EMERALD CITY BAND, INC.,

Plaintiff s

– Appellee s , v. JORDAN KAHN; JORDAN KAHN MUSIC COMPANY, L.L.C.,

Defendant s

– 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., a nd 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 5 TH C IR

. R. 47.5 , the court has determined that this opinion should not be published and is not precedent except under the limited circumstances set forth in 5 TH C IR

. R. 47.5.4. United States Court of Appeals Fifth Circuit 

### FILED March 8, 2016 Lyle W. Cayce Clerk Case: 15-40446 Document: 00513410503 Page: 1 Date Filed: 03/08/2016No. 15

- 40446

2 I. Plaintiffs Emerald City , which operate p arty 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 Jor dan Kahn Music Company, L.L.C. While in high school, Jordan allegedly met Taglioli and played with an Emerald City party band called th e 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 wel l 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 ultimate ly also given the name Downtown Fever

. 1 Jordan eventually agreed to move to Dallas and work for Emeral d 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 F ever 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 employ ment or a partnership interest in Emerald City. Taglioli asserts that Jord an agreed to be an employee, while Kahn asserts that Tag lioli agreed to a partnership deal. Kahn asserts that Jordan resigned from Emerald City in 2014 because of Taglioli’s continued refusal to memor i alize the partnership deal.
2 Emerald City asserts that Jordan agreed to allow Emerald City to own the Downtow n 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

. Case: 15-40446 Document: 00513410503 Page: 2 Date Filed: 03/08/2016No. 15

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3 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 g ain 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 reli ef, 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 cr eated 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 Em erald 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 Dow ntown Fever band has disbanded. Case: 15-40446 Document: 00513410503 Page: 3 Date Filed: 03/08/2016No. 15

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4 that Emerald City had been “locked out” of accessing the adminis trat or 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 recommend ed that the district court
i ssue a preliminary inju nction 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.” T he district court adopted the R&R in full and without further analysis , or dered 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 wit hin 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 t he 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 thei r 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 fu ll, based its decision to issue the preliminary injunction on the “Lanham Act,” Case: 15-40446 Document: 00513410503 Page: 4 Date Filed: 03/08/2016No. 15

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5 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 any one 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 e stablishes 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 mi ght cause the defendant; and (4) that the injunction will no t 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 canno t 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 Secon d Application for injunctive

4 “As to eac h element of the district court’ s preliminary

- injuncti on analysis, the district court’ s findings of fact are subject to a clearly

- erroneous standard of review, while conclus ions 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 prel iminary 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)). Case: 15-40446 Document: 00513410503 Page: 5 Date Filed: 03/08/2016No. 15

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6 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

. T he R&R cite s 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 su fficient 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 ma ke 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

es tablish Emerald City’s likelihood of success on the merits for a Lanham Act
claim . Such a conclusion amounts to a n abuse of d iscretion, for w e agree with
Kahn that neither shut ting down a Facebook account nor blocking administrator access to a Facebook ac count constitute s “use in commerce” of a
trade mark. 6 See Paulsson , 529 F.3d at 306 , 309. As i t is undisputed that t he Facebook page is not accessible to an y one , Kahn’s Facebook

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

6 Emerald City argues that its clai ms 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 beca use Emerald City failed to make any showing linking those claims to Kahn’s Facebook

- related actions p rior to the issuance of the injunction. As such, w e agree with Kahn that Emerald City failed to satisfy its burden of proving that all four prerequisites for a preliminary injunction wer e 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 magistra te judge stating Case: 15-40446 Document: 00513410503 Page: 6 Date Filed: 03/08/2016No. 15

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7 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.” Case: 15-40446 Document: 00513410503 Page: 7 Date Filed: 03/08/2016