Neo4j, Inc.; Neo4j Sweden Ab v. Purethink, LLC; Igov, Inc.; John Mark Suhy

NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
NEO4J, INC.; NEO4J SWEDEN AB,
Plaintiffs-counter-
defendants-Appellees,
v.
PURETHINK, LLC; IGOV, INC.; JOHN
MARK SUHY,
Defendants-counter-
claimants-Appellants.
No. 21-16029
D.C. No. 5:18-cv-07182-EJD
MEMORANDUM*
Appeal from the United States District Court
for the Northern District of California
Edward J. Davila, District Judge, Presiding
Argued and Submitted February 7, 2022
San Francisco, California
Before: HURWITZ and VANDYKE, Circuit Judges, and ERICKSEN,** District
Judge.
Neo4j, Inc. (“Neo4j USA”) sued John Mark Suhy and three corporations,
PureThink, LLC, iGov, Inc., and Graph Foundation, Inc. (collectively,
* This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
** The Honorable Joan N. Ericksen, United States District Judge for the
District of Minnesota, sitting by designation.
FILED
FEB 18 2022
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS

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“Defendants”), asserting claims under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a),
and California law. The district court entered a preliminary injunction enjoining
Defendants from infringing the registered NEO4J mark1 and from making
misrepresentations to consumers about their products. Reviewing for abuse of
discretion, see Dev’l Servs. Network v. Douglas, 666 F.3d 540, 544 (9th Cir. 2011),
we affirm.
1. Because Neo4j USA registered the NEO4J mark, U.S. Trademark
Registration No. 4,784,280, the district court correctly held it has standing to sue for
infringement. See 15 U.S.C. § 1114(1) (infringers “shall be liable in a civil action
by the registrant”); Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1214,
1226–28 (9th Cir. 2008).
2. The court did not abuse its discretion by enjoining Defendants from
infringing the NEO4J mark in the names of their own products. Defendants’ use of
the NEO4J mark was not nominative fair use, as it referred to their competing
products, “Neo4j Enterprise” and “Government Package for Neo4j,” not Neo4j®
Enterprise Edition. See Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171,
1183 (9th Cir. 2010) (holding that nominative use of a trademark requires that the
mark “refer to the trademarked good” not the defendant’s good); New Kids on the
1 We use the term “NEO4J” to refer to the word mark registered by Neo4j USA.
We use the term “Neo4j®” to denote the Neo4j USA-licensed platforms, Neo4j®
Community Edition and Neo4j® Enterprise Edition.

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Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992).
3. Nor did the court abuse its discretion by enjoining Defendants from
“[a]dvertising, promoting, representing or referring to ONgDB as a free and open
source drop-in replacement of Neo4j Enterprise Edition,” and making other false
representations about ONgDB to consumers. Lanham Act falsity is established
either if a “statement was literally false, either on its face or by necessary
implication,” or if a “statement was literally true but likely to mislead or confuse
consumers.” Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1139 (9th
Cir. 1997). Defendants’ representation that ONgDB is a “free and open-source”
version of Neo4j® EE was literally false, because Section 7 of the Sweden Software
License only permits a downstream licensee to remove “further restrictions” added
by an upstream licensee to the original work. Defendants’ advertisements of
ONgDB as a “drop-in replacement” for Neo4j® EE were also false, even taking
Defendants’ own definition of the term—“compatibility.” And, even if the “drop-in
replacement” representations were not literally false, substantial evidence showed
that consumers were confused by Defendants’ use of the term.
4. The district court did not abuse its discretion by enjoining Defendants
from suggesting Neo4j USA endorsement of their products. Defendants argue that
two of the eight factors identified in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348–49 (9th Cir. 1979)—the “type of goods and the degree of care likely to be

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exercised by the purchaser” and “evidence of actual confusion”—weigh in their
favor. But the “presence or absence of a particular factor does not necessarily drive
the determination of a likelihood of confusion.” E. & J. Gallo Winery v. Gallo
Cattle Co., 967 F.2d 1280, 1290–91 (9th Cir. 1992). A particularly strong showing
of some factors will suffice to demonstrate confusion. See Pom Wonderful LLC v.
Hubbard, 775 F.3d 1118, 1125 (9th Cir. 2014). It was not an abuse of discretion for
the district court to rely on the other six Sleekcraft factors in entering the preliminary
injunction.
AFFIRMED.

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