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July 1, 2014 Vol. 69 No. 12 Back to Bulletin Main Page

INTA Asks U.S. Supreme Court to Hear Case on Whether Presumption of Irreparable Harm Applies in Lanham Act Cases


On May 21, 2014, INTA filed an amicus brief with the U.S. Supreme Court in a case that raises the question of whether a rebuttable presumption of irreparable harm exists in Lanham Act trademark infringement cases once likelihood of success is established. The brief, filed in support of petition for certiorari, argued that longstanding precedent supports a presumption of irreparable harm in Lanham Act cases upon a showing of likelihood of success on the merits, notwithstanding the Court’s rejection of the presumption in patent cases.

The case, Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013), involves a trademark dispute in which petitioner Reed—which owns the trademark THE PLATTERS, for live musical performances—sought to enjoin respondents from promoting an unlicensed show featuring a group called “The Platters.” The district court preliminarily enjoined respondents from holding themselves out as “The Platters,” finding that petitioner was likely to succeed in proving ownership of a valid, protectable mark and that respondents were using a confusingly similar mark. Further, the district court found that Reed’s legacy would likely suffer irreparable reputational harm absent a preliminary injunction.

On appeal, the Ninth Circuit agreed with the district court that Reed was likely to succeed on the merits of the trademark dispute. It nonetheless reversed the grant of injunctive relief, finding Reed’s evidence of irreparable injury unsupported and conclusory. Applying the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), and citing an earlier Supreme Court decision, Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), the Ninth Circuit held that a presumption of irreparable harm does not apply in trademark cases and that a plaintiff instead must establish irreparable harm.

The Association disagrees that eBay and Winter should apply in the Lanham Act context: eBay was a patent case, and Winter was wholly outside the intellectual property context. The Lanham Act is a consumer protection law rather than a law designed principally to protect private property rights such as patents—thus, the harm suffered by the trademark owner is suffered by the public as well. Further, the nature of the injury to intangible goodwill caused by trademark infringement and the use of a plaintiff’s mark without its permission or oversight is inherently irreparable and can be difficult, if not impossible, to quantify.

In its brief in support of certiorari, INTA also argued that the categorical rule rejected by eBay is distinct from the Lanham Act presumption of harm, which is rebuttable in that it shifts to the infringer the burden of adducing at least some evidence that the harm is not irreparable (for example, by showing that infringement has permanently ceased or that the trademark owner can be readily compensated).

Both parties consented to the filing of INTA’s brief.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. 

© 2014 International Trademark Association