United States District Court, E.D. Texas, Sherman Division
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE.
before the Court is Plaintiff Sparrow Barns & Events,
LLC's (“Sparrow Barns”) Emergency Motion for
Temporary Restraining Order and Preliminary Injunction (Dkt.
#3). Having considered the motion and the relevant pleadings,
the Court finds that the motion should be granted.
The White Sparrow
Barns is owned and operated by the Huerta and Ramos families.
Nadia Ramos dreamed of a custom-designed barn that could be
used as a wedding and events venue. Nadia Ramos and her
mother, Wanna Huerta, began developing plans for a venue in
2012. After completing the plans, Nadia's father, John
Huerta-a general contractor-constructed the venue in Quinlan,
Texas sometime between 2012 and 2014. The family named the
venue the White Sparrow. Sparrow Barns is the official owner
of the White Sparrow.
White Sparrow is not simply a traditional barn used for
weddings and events. Inside the White Sparrow is the Grand
Hall. The Grant Hall is framed like a traditional barn but
includes vaulted ceiling beams and wrapped vertical columns
(Dkt. #3 at p. 10). Lighting the Grand Hall are
“ornate, tiered candelabra chandeliers” and a
“selective back wall window design.” (Dkt. #3 at
p. 10). The walls of the Grand Hall are “rustically
whitewashed” from floor to ceiling (Dkt. #3 at p. 10).
Due to the unique aesthetic of the White Sparrow, Nadia Ramos
and Wanna Huerta sought copyright registration for the White
Sparrow (Dkt. #3 at p. 3). On August 15, 2015, the United
States Copyright Office issued a Certificate of Registration
for the White Sparrow as an architectural work (Dkt. #3-5).
its opening in 2014, the White Sparrow gained a reputation in
the wedding industry. Publications recognize the White
Sparrow for its design, and the White Sparrow has been voted
one of the best wedding venues in the United States (Dkt. #3
at p. 3). Additionally, couples travel from across the United
States, and other parts of the world, to host their weddings
in the White Sparrow while certain celebrities and large
corporations use the White Sparrow for commercial photography
shoots (Dkt. #3 at p. 1). As a result, Sparrow Barns
accumulated significant business from the White Sparrow and
gained substantial customer goodwill (Dkt. #3 at p. 3). But
success often attracts imitation, and the success of the
White Sparrow appears to have attracted the attention of
another Texas family.
Barns alleges that on June 29, 2016, Courtney Wood contacted
Sparrow Barns requesting a tour of the White Sparrow for her
upcoming wedding (Dkt. #3 at p. 4). Sparrow Barns arranged
for Courtney Wood and her parents, Christopher and Lawanna
Thompson, to take a private, guided tour of the venue on July
14, 2016 (Dkt. #3 at p. 4). During the tour, Courtney Wood
and her parents took multiple photographs and hand-written
notes (Dkt. #3 at p. 4). Christopher Thompson also reportedly
left the tour to view other areas of the venue before a
Sparrow Barns manager asked him to rejoin the tour (Dkt. #3
at p. 4). A few months later, someone from the Thompson
family contacted Sparrow Barns to ask about payment options
and discounts (Dkt. #3 at p. 5).
February 19, 2017, Sparrow Barns held an open house for the
public and interested vendors to view the White Sparrow (Dkt.
#3 at p. 5). Christopher and Lawanna Thompson attended the
open house (Dkt. #3 at p. 5). Learning that John Huerta was a
general contractor, Christopher Thompson asked John Huerta
detailed questions about the construction of the White
Sparrow (Dkt. #3 at p. 5). Later, Nadia Ramos found
Christopher Thompson in a closed-off area of the White
Sparrow and asked him to leave (Dkt. #3 at p. 5).
Barns subsequently learned that Christopher and Lawanna
Thompson were owners of Defendant the Ruth Farm Inc.
(“Ruth Farm”) (Dkt. #3 at p. 4). In 2017, Ruth
Farm began constructing another avian-themed wedding and
events barn in Ponder, Texas-about ninety miles northwest of
the White Sparrow (Dkt. #3 at p. 4). Ruth Farm called its
venue the Nest (Dkt. #3 at p. 4). Sparrow Barns provides a
picture-to-picture comparison of the White Sparrow and the
#1-2; Dkt. #1-4; Dkt. #3 at pp. 14-15).
Farm planned and constructed the Nest, it released concept
photographs of the venue (Dkt. #3 at p. 6). After the release
of the photographs, Sparrow Barns received questions from
customers and vendors asking whether it was the owner of the
Nest or whether it granted permission for Ruth Farm to build
the Nest (Dkt. #3 at p. 6).
Ramos-a Sparrow Barns manager-called the Nest to inform its
owners that the White Sparrow was protected by copyright and
trade dress law (Dkt. #3-3). Whitney Wood, another daughter
of Christopher and Lawanna Thompson, answered the call.
Whitney Wood explained to Anthony Ramos that she knew of the
White Sparrow but did not know it was protected by law (Dkt.
#3-3 ¶ 11). Whitney Wood also explained that the
Thompsons “tried to make changes” to their venue
before construction, but would talk to the builder again
(Dkt. #3-3 at ¶¶ 11-12).
later, Christopher Thompson called Anthony Ramos. Christopher
Thompson told Anthony Ramos never to call and threaten his
daughter again (Dkt. #3-3 ¶¶ 13-17). Anthony Ramos
explained that he did not threaten Whitney Woody, but called
to inform her of the intellectual property violations (Dkt.
#3-3 ¶¶ 13-17). Christopher Thompson then called
Anthony Ramos “dumb” and stated, “you
can't copyright a barn.” (Dkt. #3-3 ¶ 17).
Anthony Ramos responded that you can copyright a barn and
“we go after venues who try to copy us.” (Dkt.
#3-3 ¶ 17). Christopher Thompson then threatened to
drive to the White Sparrow and “kick [Anthony
Ramos's] a[**].” (Dkt. #3-3 ¶ 18).
Barns indicates that after the construction of the Nest,
customer confusion grew. Specifically, social media users
began mistaking the White Sparrow for the Nest in their
comments on and tags of the venues (Dkt. #3 at p. 7). Sparrow
Barns also began receiving inquiries from vendors who
confused the venues (Dkt. #3 at p. 7).
28, 2017, Sparrow Barns sent a cease-and-desist letter to
Ruth Farm urging Ruth Farm to cease its copyright and trade
dress infringement (Dkt. #3 at p. 7). Ruth Farm responded
denying any infringement (Dkt. #3 at p. 7). Sparrow Barns
replied outlining specific acts of infringement (Dkt. #3 at
p. 8). Ruth Farm did not respond to Sparrow Barns' second
receiving no response to its second letter, Sparrow Barns
filed suit against Ruth Farm in this Court on August 10, 2016
(the “First Suit”). Sparrow Barns &
Events LLC v. Ruth Farm Inc., 4:17-CV-558-KPJ.
On April 17, 2018, the parties mediated the case and reached
a compromise (Dkt. #3 at p. 8). In the following Settlement
Agreement, Ruth Farm agreed to make certain changes to the
Nest by January 1, 2019, and to notify Sparrow Barns within
seven days of completing the changes (Dkt. #3 at p. 8; Dkt.
#7). Sparrow Barns agreed to release its claims after
confirming Ruth Farm completed the changes (Dkt. #3 at p. 8;
Back to Court
Barns filed this suit against Ruth Farm on January 30, 2019
(“Second Suit”) (Dkt. #1). Sparrow Barns alleges
that Ruth Farm did not comply with the Settlement Agreement.
Sparrow Barns reasserts its claims from the First Suit along
with a breach of contract claim. Ruth Farm filed an answer to
the Second Suit on March 29, 2019 (Dkt. #15).
Ruth Farm filed its answer, Sparrow Barns filed the motion at
issue on February 18, 2019 (Dkt. #3). Sparrow Barns requests
the Court enjoin Ruth Farm from:
(a) . . . from selling, offering for sale, distributing or
advertising in commerce its services displaying the trade
dress owned by [Sparrow Barns] and (b) must remove from
commerce any advertisement or offer to sale in commerce its
services displaying the trade dress owned by [Sparrow Barns]
on its website, social media, and accounts with third
Court set a hearing on the motion for March 1, 2019, and
ordered Sparrow Barns to serve the order setting the hearing
on Ruth Farm (Dkt. #6). The Court then reset the hearing for
March 11, 2019 (Dkt. #9). Despite service and the resetting,
Ruth Farm filed a response to the motion only seventeen
minutes before the hearing (Dkt. #11). At the hearing, the
Court allowed both parties to argue the motion and present
evidence (Dkt. #12). The Court then provided Sparrow Barns a
week to file a reply to the motion and denied Ruth Farm's
request to amend its response (Dkt. #12). Sparrow Barns filed
its reply on March 15, 2019 (Dkt. #13).
opposing party receives adequate notice of, and an
opportunity to be heard on, a motion for a temporary
restraining order, the procedure that follows does not
functionally differ from that of an application for a
preliminary injunction. See Harris Cty., Tex. v. CarMax
Auto Superstores Inc., 177 F.3d 306, 326 (5th Cir.
1999); Dilworth v. Riner, 343 F.2d 226, 229 (5th
Cir. 1965) (citation omitted); Empower Texans, Inc. v.
Nodolf, 306 F.Supp.3d 961, 965 (W.D. Tex. 2018) (citing
Dilworth, 343 F.2d at 229); Jaroy Constr., Inc.
v. La. State Licensing Bd. for Contractors, CIV.A.
10-958, 2010 WL 1254717, at *1 (E.D. La. Mar. 24, 2010)
(citation omitted). A party seeking a preliminary injunction
must establish the following elements: (1) a substantial
likelihood of success on the merits; (2) a substantial threat
that plaintiffs will suffer irreparable harm if the
injunction is not granted; (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. Nichols v. Alcatel USA, Inc., 532
F.3d 364, 372 (5th Cir. 2008). “A preliminary
injunction is an extraordinary remedy and should only be
granted if the plaintiffs have clearly carried the burden of
persuasion on all four requirements.” Id.
Nevertheless, a movant “is not required to prove its
case in full at a preliminary injunction hearing.”
Fed. Sav. & Loan Ins. Corp. v. Dixon, 835 F.2d
554, 558 (5th Cir. 1985) (quoting Univ. of Tex. v.
Comenisch, 451 U.S. 390, 395 (1981)). The decision
whether to grant a preliminary injunction lies within the
sound discretion of the district court. Weinberger v.
Romero-Barcelo, 456 U.S. 305, 320 (1982).
Court ordered Sparrow Barns to serve its order setting the
hearing on Ruth Farm (Dkt. #6). Ruth Farm filed a response to
Sparrow Barns' motion and Counsel for Ruth Farm appeared
at the March 11 hearing to argue against the motion and
present evidence (Dkt. #11; Dkt. #12). As Ruth Farm received
notice of, and a fair opportunity to be heard on, the motion,
the Court treats the motion as a motion seeking a preliminary
injunction. See CarMax Auto Superstores Inc., 177