Earlier this year, we wrote about the Ninth Circuit decision in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., in which the Ninth Circuit found that there is no presumption of irreparable harm in trademark preliminary injunction matters and concluded that the plaintiff must demonstrate irreparable harm to obtain a preliminary injunction in a trademark case.
In light of the Ninth Circuit’s decision , the Estate of Herb Reed (a member of 1950s rock band The Platters), filed a petition for certiorari to the United States Supreme Court, asking the Court to consider the Ninth Circuit’s decision on this issue to resolve a split in the circuits and arguing that the Ninth Circuit’s holding that actual evidence is necessary to establish irreparable harm sets the wrong precedent.
On October 6, 2014, the US Supreme Court denied Reed’s petition for certiorari. The US Supreme Court’s denial of Reed’s petition leaves split in the circuits on whether a court will presume irreparable harm when considering a preliminary injunction in the trademark context (if success on the merits of the issue of likelihood of confusion, dilution, etc. is shown by the plaintiff), although the number of circuits that reject the presumption of irreparable harm is growing. In 2013, the Fifth Circuit held that a lower court could still recognize the presumption of irreparable harm when considering a preliminary injunction in a trademark case. However, as we recently reported, the Third Circuit held in September of this year that courts can no longer recognize the presumption of irreparable harm when considering a preliminary injunction in a Lanham Act false advertising case. Several other circuits have not yet had the opportunity to consider the issue, or have declined to definitively address the issue, so it is unclear how those circuits would apply Ebay.
In addition to the circuit split on the issue, courts that do require a showing of irreparable harm have provided little guidance as to what evidence is sufficient to show irreparable harm. In Reed, the Ninth Circuit stated that mere conclusory statements will not be sufficient but that “e]vidence of loss of control over business reputation and damage to goodwill could constitute irreparable harm.” Herb Reed Enterprises v. Florida Entertainment Management, 736 F.3d 1239, 1250 (9th Cir. 2013).
In light of the ruling and the ongoing circuit split, brand owners should consider what standard will be applied to a request for TRO or preliminary injunction. In cases where preliminary injunctive relief is crucial, the answer to that question will impact and possibly determine the choice of forum.
Source(s): Herb Reed Enterprises v. Florida Entertainment Management, 736 F.3d 1239 (9th Cir. 2013)