In US District Court Central District of California, Judge Valerie Baker Fairbank on Wednesday, denied claims by Ninn Worx SR in its case against Michael Fitzgerald aka Michael Ninn.

The judge ruled that “oral arguments would be unnecessary” and vacated a hearing set for March 9th, denying every one of the Ninn Worx SR’s motions.

Ninn Worx had moved for a preliminary injuction against Fitzgerald attempting to enjoin him from directly or indirectly infringing on or exploiting the trademarks “Michael Ninn,” or “Ninn,” [collectively the Ninn Marks].

In the case, Ninn Worx also sought to enjoin Fitzgerald from “infringing upon the Ninn Marks through videos and other adult-themed goods including his latest movie Nymphetamine.”

Judge Baker Fairbank denied that motion because Ninn Worx did not make an adequate showing of either probable success on the merits or the existence of serious question going to the merits. On common law trademark infringement grounds, according to Judge Baker Fairbank, Ninn Worx provided insufficient support for their argument that the Ninn Marks are valid protectable trademarks.

Ninn Worx did not sufficiently show that they now own the Marks, continued JudgerBaker Fairbank. It was also ruled that Ninn Worx’s briefing on unfair competition grounds was also inadequate particularly in light of the above concerns to support a preliminary injunction. The court also denied Fitzgerald’s request for sanctions saying that Fitzgerald did not make an adequate showing to support sanctions.

On the other hand, the court did not find that Ninn Worx or their counsel acted recklessly or in bad faith and did not find a violation of rule 11B which states:

“A plaintiff is entitled to a preliminary injunction in a trademark case when it demonstrates either [1] a combination of probable success on the merits and the possibility of irreparable injury or [2] the existence of serious questions going to the merits and that the balance of hardships tips sharply in his favor.”

The court denied the motion because Ninn Worx failed to meet their burden of showing probable of success on the merits. Ninn Worx also failed to show the existence of serious questions going to the merits. Because the Ninn Marks are unregistered as Ninn Worx conceded, Ninn Worx bears the burden of proving a case of common law trademark infringement.

Ninn Worx also failed to sufficiently demonstrate that the Ninn Marks are valid, protectable trademarks particularly in light of prior and ongoing use of the Ninn Marks by various third parties.

Judge Baker Fairbank also said that even if the Ninn Marks are valid protectable trademarks, Ninn Worx provided insufficient support for their argument that they now own the Marks. The Stock Purchase Agreement at issue states that Ninn Worx Media Inc “owns all intellectual property necessary or required for the conduct of its business as presently conducted.”

It was also ruled that Ninn Worx provided insufficient support for their claim that they now own the Marks.

[Back story]- The director, whose real name is Michael Fitzgerald, has been hit with a claim by Ninn Worx_SR, which was originally owned by Ninn, over the use of his pseudonym.

That suit, filed at U.S. District Court in Los Angeles, alleges Ninn is using a trademark he doesn’t own to direct and produce movies, thereby creating confusion in the marketplace and harming Ninn Worx_SR, which is majority owned by the operator of gentlemen’s club chain Spearmint Rhino.

Ninn, both parties agree, sold 100 percent of N Worx (his company’s fictitious business name at the time) in exchange for 49 percent interest to Ninn Worx_SR, plus $1,000. In addition, Ninn Worx_SR paid off N Worx accounts payable of about $221,000.

Further, Ninn claimed in the suit that he was to receive $300,000 per year and would become Ninn Worx_SR’s CEO.

The deal also included domain names MichaelNinn.com, MichaelNinn.tv, MichaeleNinn.net, NinnWorx.com, NinnWorx.net, NinnWorx.tv and NinnWorxCnema.com.

In the suit, Ninn Worx_SR claims that a year after the sale, Ninn began competing against the company, advertising the “Michael Ninn” mark and variations for competing products.

Ninn Worx_SR officials were particularly incensed, according to the suit, after Ninn distributed “Nymphetamine,” in which he represents the film was “directed by Michael Ninn.” They claim that Ninn marketed “Nymphetamine” using the pseudonym at ImNinn.com and promoted it at the AEE show in January.

In the suit, Ninn Worx_SR counsel are asking for a temporary restraining order over the use of his pseudonym, which was never registered with the U.S. Patent and Trademark Office until this year. Ninn Worx_SR filed for the mark on Jan. 20, just nine days before the federal suit was filed.

“If [Ninn’s] infringing use of the Ninn marks and use of his other infringing marks does not immediately cease, [Ninn Worx_SR] will lose a significant number of customers due to the confusion between the marks and [Ninn Worx_SR] will be unable to recoup their businesses losses.”

Ninn, who has directed more than 60 adult films in 18 years, has mounted 18 points of defense, according to court documents filed Tuesday, including ones of fair use, fraud upon the trademark office, copyright preemption and failure to comply with trademark law requirements.

His attorney, Tim Riley, also has lashed out in a preliminary statement to the court that the real party behind plaintiff Ninn Worx_SR is John Gray.

“On May 29, 2008, shortly after Gray got a hold of N Worx film masters and a large budget film that Ninn was in the process of completing entitled ‘The Four,’ Gray locked Ninn out of his office, fired him as CEO of Ninn Worx and ceased all payments under the agreement,” said a filing opposing the proposed injunction.

Ninn, according to the filing, said Gray initially promised him “to grow N Worx from a $2 million company to a $20 million company.” But that would not be the case.

According to Ninn, Gray gave him an ultimatum.

“He told Ninn that unless he entered into an onerous settlement agreement that he would destroy Ninn, bankrupt him with legal fees and strip him of his lifelong pseudonym,” Ninn’s attorney wrote.

The settlement agreement, Ninn said, demanded that he sell his stock in Ninn Worx_SR to Gray for a “mere $300,000.” Ninn responded to Gray’s proposal informing him he would not give up his name.

Later, Gray and Ninn Worx_SR filed a suit separate of the federal one at Los Angeles Superior Court alleging that Ninn had breached his fiduciary duty by exceeding a budget relative to “The Four” and by not delivering a completed film.

“At the same time, Gray began delivering accounting statement to Ninn showing that the fees for his team of lawyers was being charged against the profits of the Ninn Worx_SR library, further miring the company in debt and rendering Ninn’s 49 percent worthless,” Ninn’s attorney wrote.

In the ongoing suit filed at Los Angeles Superior Court, Ninn brought counterclaims against Gray alleging fraud, misrepresentation, rescission of an agreement and breach of fiduciary duty.

Ninn, who did not return calls for comment this week, told XBIZ last year that he felt used as a pawn for Spearmint Rhino to make entry into the adult video market and get its own imprint, Spearmint Rhino Films, off the ground.

“I stand on the outside of Ninn Worx_SR along with my contract stars and my crew, knowing that I no longer have to live with the lie that the check is in the mail or that the corporate committee will get back to you as soon as they have reviewed your invoice and have reached a decision on paying you,” Ninn said.

Meanwhile, Spearmint Rhino COO Kathy Vercher told XBIZ last year that Ninn Worx_SR “invested in Michael’s vision.”

“We were to put the money in and we did that,” she said at the time. “We just could not fuel his fantasies anymore, making movies with no end to the budget in sight or whatever it was; it no longer made business sense. More money was going in than what was coming out.”

Ninn’s latest movie, “Solamente,” will be released on DVD and hits stores on March 3. The video features performers Jana Cova, Jennifer Dark, Heather Carolin and Georgia Jones, among others, as well as “Ninn’s signature lush style, breathtaking locations and high production values,” according to Celluloid Addiction.