1

No responses or replies were filed to Defendants’ August 5 motion or Defendants’ August 10 motion.

Memorandum Opinion and Preliminary Injunction Order – Page 1

IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

GLOBAL 360, INC., § 

f/k/a EISTREAM WMS, INC., §

f/k/a EISOLUTIONS, INC., §

§

Plaintiff, §

§

v. § Civil Action No. 3:04-CV-1857-L

§

SPITTIN’ IMAGE SOFTWARE, INC., §

IMAGEMAKER DEVELOPMENT INC., §

and KEN DAVIES, §

§

Defendants. §

MEMORANDUM OPINION AND PRELIMINARY INJUNCTION ORDER

Before the court is Plaintiff’s Motion for Preliminary Injunction, filed October 15, 2004,

Defendants’ Motion for Entry of Unopposed Preliminary Injunction, filed August 5, 2005 and

Defendants’ Unopposed Withdrawal of Defendants’ Motion for Entry of Unopposed Preliminary

Injunction, filed August 10, 2005. After careful consideration of the motions, response, reply, the

record evidence, and the applicable law, the court grants Plaintiff’s Motion for Preliminary

Injunction, denies as moot Defendants’ Motion for Entry of Unopposed Preliminary Injunction and

grants Defendants’ Unopposed Withdrawal of Defendants’ Motion for Entry of Unopposed

Preliminary Injunction.1

 

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2

On December 31, 2004, eiStream WMS, Inc. f/k/a eiSolutions, Inc. changed its name to Global 360, Inc. On

February 3, 2005, the court issued an order granting Plaintiff’s Unopposed Motion for Party Name Change, filed

February 2, 2005. 

Memorandum Opinion and Preliminary Injunction Order – Page 2

I. Factual and Procedural Background

Plaintiff Global 360, Inc., f/k/a eiStream WMS, Inc., f/k/a eiSolutions, Inc. (“Global” or

“Plaintiff”) is a Delaware corporation with a principal place of business in Dallas, Texas.2

 Global

develops, implements and sells computer software programs. Global created, registered and owns

the copyright in a software program named “Imaging for Windows” (the “Copyrighted Software”).

The Copyrighted Software transforms paper documents into electronic documents that users can

view, edit, distribute via e-mail, post to and download from the Internet. Global also created, and

obtained copyright registrations for, supporting documentation and website text related to Imaging

for Windows. Global has used the mark “Imaging for Windows” continuously since 1995. 

Defendant Ken Davies (“Davies”), a Canadian citizen, is the president, managing director,

bookkeeper, and sole employee of Defendant ImageMAKER Development, Inc. (“ImageMAKER”).

Davies writes software and designs and develops Windows-based viewer technology. Defendant

ImageMAKER is a Canadian corporation formed in 1990, and is the developer of “ImageMAKER

Imaging for Windows,” a software product that provides image viewing, editing, storing and

annotating capabilities. Davies formed ImageMAKER in 2000 for the purpose of selling

ImageMAKER products. Beginning in 2003, ImageMAKER began operating an Internet website

named ImagingforWindows.com to advertise and sell its products. Ken Davies is a registered owner

of the domain name ImagingforWindows.com. 

 In June 2004, Global first learned of Defendants’ “Imaging for Windows” software program

and its ImagingforWindows.com website. Representatives from Global and IMAGEMaker,

 

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Memorandum Opinion and Preliminary Injunction Order – Page 3

including Ken Davies, met at Global’s offices in Dallas, Texas, where Global demanded that

Defendants cease and desist their allegedly infringing activities. At that meeting, Defendants

proposed selling the company to Global for $18 million, but did not agree to stop selling the

“Imaging for Windows” product. Global responded by filing this lawsuit on August 25, 2004,

asserting claims against Defendants for copyright infringement, violations of the Lanham Act, state

law trademark dilution, and unfair competition. Global alleges that Defendants: (i) willfully

infringed Global’s copyrighted software and supporting documentation by copying and distributing

both, as well as by copying portions of Global’s website text in order to advertise the infringing

software; (ii) infringed Global’s trademark by using the product name “Imaging for Windows” and

the domain name ImagingforWindows.com, which acts of infringement are further likely to dilute

the distinctiveness of Global’s mark and harm its business reputation; and (iii) by using Global’s

trademark, caused confusion, mistake and deception as to the source and origin of Defendants’

computer software products. In addition, in its request for relief, Global 360 sought preliminary and

permanent injunctive relief with regard to Defendants’ alleged infringing and unlawful conduct. See

Compl. at 22-23, ¶ 74. 

On October 19, 2004, Global filed a Motion for Preliminary Injunction and Brief in Support,

asking the court to enter a preliminary injunction to stop Defendants from selling, distributing, or

developing the ImageMAKER Imaging for Windows product, the Global Imaging for Windows

product (sometimes also referred to as the “eiStream Imaging for Windows product”) and any

variation, including but not limited to, derivative works of either product, or from destroying or

altering documents relating to the sale, distribution, or development of the infringing software,

 

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3

Although Plaintiff’s Motion for Preliminary Injunction was filed October 19, 2004, it was preceded by

Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction, filed October 15, 2004. The court ruled on the motion

to dismiss, denying it with regard to Defendant ImageMAKER Development, Inc., and Defendant Ken Davies, and

granting it with regard to Defendant Spittin’ Image Software, Inc. Global 360, Inc. v. Spittin’ Image Software, Inc., et

al., C.A. No. 3:04CV1857-L (N.D. Tex. March 17, 2005). Plaintiff’s Motion for Preliminary Injunction became ripe on

August 22, 2005, when Plaintiff filed its reply brief.

4

On August 5, 2005, instead of filing a response to Plaintiff’s Motion for Preliminary Injunction, as ordered by

the court in its July 15, 2005 Briefing Schedule, Defendants instead filed “Defendants’ Motion for Entry of Unopposed

Preliminary Injunction” which failed to respond to Plaintiff’s Motion, and instead sought entry of an alternative order

of injunctive relief against Defendants. On August 10, 2005, Defendants filed an Unopposed Withdrawal of

Defendants’ Motion for Entry of Unopposed Preliminary Injunction, thereby mooting Defendants’ Motion for Entry of

Unopposed Preliminary Injunction. 

Memorandum Opinion and Preliminary Injunction Order – Page 4

documentation and website.3 On August 10, 2005, Defendants filed their Response to Plaintiff’s

Motion for Preliminary Injunction (“Defendants’ Response”) in which Defendants concede that a

preliminary injunction should be entered. As set forth in Defendants’ Response to Plaintiff’s Motion

for Preliminary Injunction, filed August 10, 2005: “Defendants, while sharply disputing the liability

issues of Plaintiff as it pertains to its alleged trademark and its alleged copyright, nonetheless agree

to the entry of an [sic] Preliminary Injunction . . . .” Def. Resp. at 1.4 Plaintiff filed a reply under

seal on August 22, 2005.

II. Analysis

There are four prerequisites for the extraordinary relief of a temporary restraining order or

preliminary injunction. To prevail, the moving party must demonstrate: (i) a substantial likelihood

of success on the merits; (ii) a substantial threat of immediate and irreparable harm for which it has

no adequate remedy at law; (iii) that greater injury will result from denying the temporary

restraining order than from its being granted; and (iv) that a temporary restraining order will not

disserve the public interest. Clark v. Prichard, 812 F.2d 991, 993 (5th Cir. 1987); Canal Authority

of State of Florida v. Callaway, 489 F.2d 567, 572 (5th Cir. 1974) (en banc).

 

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5

Noting that Plaintiff’s Motion for Preliminary Injunction, filed October 14, 2004, lacked a proposed order, in

violation of Local Rule 7.1(c), the law clerk for the court requested that Plaintiff submit a proposed order. On September

8, 2005, Plaintiff submitted a proposed order. As the proposed order is not entirely consistent with the original prayer

for injunctive relief (see Motion for Preliminary Injunction at 27-28), the court relies on the original prayer for injunctive

relief contained in Plaintiff’s Motion for Preliminary Injunction. 

Memorandum Opinion and Preliminary Injunction Order – Page 5

In this case, Defendants have conceded that entry of preliminary injunctive relief is

warranted. See Def. Resp. at 1. Further, in their Response, Defendants do not dispute the evidence

and do not argue that Global 360 has failed to satisfy the four prerequisites to entry of preliminary

injunctive relief. Based on Defendants’ concession, the court determines that the four prerequisites

to entry of preliminary injunctive relief have necessarily been satisfied. Accordingly, the court

hereby grants Plaintiff’s Motion for Preliminary Injunction.

III. Preliminary Injunction

The court has considered the parties’ briefing on this matter, the record evidence, and the

applicable case law.5

 For the reasons stated herein, the court grants Defendants’ Unopposed

Withdrawal of Defendants’ Motion for Entry of Unopposed Preliminary Injunction, filed August 10,

2005. Further, the court denies as moot Defendants’ Motion for Entry of Unopposed Preliminary

Injunction, filed August 5, 2005. Finally, the court grants Plaintiff’s Motion for Preliminary

Injunction and enjoins Defendants ImageMAKER Development, Inc. and Ken Davies

(“Defendants”) as follows: 

With respect to the ImageMAKER Imaging for Windows product, the Global Imaging for

Windows product (sometimes also referred to as the “eiStream Imaging for Windows product”) or

any variation, including but not limited to, derivative works of either product (hereinafter, the

“Products”), the court hereby orders Defendants, including their representatives, officers, agents,

employees, stockholders, other investors, non-commercial creditors and assigns and any and all

 

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Memorandum Opinion and Preliminary Injunction Order – Page 6

persons, firms, associations and corporations acting by, through or under the direction of the

Defendants or acting in concert or active participation with the Defendants, to:

(1) Immediately cease and desist from selling, offering for sale,

distributing, licensing, removing, assigning, transferring,

encumbering, advertising, promoting, concealing, altering,

hypothecating, maintaining, reproducing or supporting the Products,

or providing counseling or customer service for the Products in or

into the United States;

(2) Immediately cease and desist from selling, offering for sale,

distributing, licensing, removing, assigning, transferring,

encumbering, advertising, promoting, concealing, altering,

hypothecating, maintaining, reproducing or supporting the Products,

or providing counseling or customer service for any products that are

substantially similar to the Products or engage in any activity

concerning the Products that would generate any revenue for

Defendants or its designees in or into the United States;

(3) Not disclose, sell, distribute, license, assign, transfer, encumber,

advertise, promote, conceal or hypothecate any computer code or

other information about the Products, except to Global 360 or its

designees;

(4) Not destroy, alter, dispose of, conceal, tamper with, or in any

manner secret, any and all business records, invoices,

correspondence, books of account, receipts or other documentation,

whether in hard copy or electronic form, relating or referring in any

manner to the design, development, sale, receipt, importation,

advertising, promotion, purchase, support, maintenance service, offer

for sale, or distribution of any of the Products, specifically including

any documentation, user manuals, and website content related to the

Products;

(5) Not use the term IMAGING FOR WINDOWS in connection with

the promotion or sale of any software product or related counseling

or customer service; and 

(6) Not affix, apply, annex, use or mark in connection with the sale

of any goods or services any false designation of origin, false

description or false representation, including words or other symbols

tending to falsely describe, or represent that goods or services sold,

 

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Memorandum Opinion and Preliminary Injunction Order – Page 7

provided or distributed by either of the Defendants originate from, or

are sponsored, approved or licensed by the Plaintiff.

This preliminary injunction shall not be effective unless and until Plaintiff executes and files

with the clerk of court, a bond, in conformity with the law, or a cash deposit in lieu thereof, in the

amount of $10,000. This preliminary injunction shall remain in effect until dissolved, or otherwise

modified, by the court.

It is so ordered this 9th day of September, 2005. 

_________________________________

Sam A. Lindsay

United States District Judge

 

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