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Herb Reed Enters., LLC v. Fla. Entertainment Mgmt.

Ninth Circuit reverses district court’s ruling that enjoined entertainment company from using “The Platters” mark for vocal groups, holding that likelihood of irreparable harm must be established, rather than presumed, by plaintiff seeking injunctive relief in trademark context.

“The Platters” is the name of one of the most successful vocal groups of the 1950s, and over the years since the group’s dissolution, there have been multiple legal disputes among the original members and the current and former managers over ownership of “The Platters” mark. This litigation began when Herb Reed Enterprises (HRE), the company of one of the founding members, brought suit against Larry Marshak and his company Florida Entertainment Management (collectively, Marshak), alleging trademark infringement and seeking a preliminary injunction against Marshak’s continued use of “The Platters” mark.

The district court granted the preliminary injunction, enjoining Marshak from using “The Platters” mark in connection with any vocal group. The court held that HRE had established a likelihood of success on the merits, a likelihood of irreparable harm and a balance of hardships in its favor, as well as that a preliminary injunction would serve public interest. In addition, the district court held that HRE was not precluded from asserting a right in “The Platters” mark either by res judicata or by the equitable doctrine of laches. Marshak appealed.

The Ninth Circuit reversed the district court’s grant of a preliminary injunction, holding that courts may not presume the likelihood of irreparable harm in the context of trademark claims, but rather that a plaintiff seeking injunctive relief must establish that likelihood of irreparable harm. The appellate court held that two recent Supreme Court cases have cast doubt on the previous Ninth Circuit rule that the likelihood of irreparable injury may be presumed from a showing of likelihood of success on the merits of a trademark infringement claim. In eBay Inc. v. MercExchange, L.L.C., the Supreme Court held, in the patent context, that the plaintiff must establish irreparable injury in seeking a permanent injunction and noted that the same is true for copyright infringement cases. In Winter v. Natural Res. Def. Council, the Supreme Court held that in seeking a preliminary injunction, a plaintiff must demonstrate that irreparable injury is likely in the absence of an injunction. The Ninth Circuit, joining other circuits, held that the eBay principle applies to a preliminary injunction in a trademark infringement case.

Noting that the district court anticipated the application of eBay to preliminary injunctions in the trademark context and attempted to evaluate the likelihood of irreparable harm, the Ninth Circuit nonetheless concluded that “[a]lthough the district court identified the correct legal principle … the record does not support a determination of the likelihood of irreparable harm.” Rather, the district court conducted cursory examination of the likelihood of irreparable harm and abused its discretion by relying on unsupported and conclusory statements, without any evidence or showing offered by HRE. Even if the court “comb[ed] the record for support or inferences of irreparable harm,” the strongest evidence, which was not even cited by the district court, is an e-mail from a potential customer complaining to Marshak’s booking agent that the customer wanted Herb Reed’s band rather than a tribute band, which “underscores customer confusion, not irreparable harm.” According to the Ninth Circuit, the district court’s decision, which included no factual findings, applied a presumption of irreparable harm based solely on a strong case of trademark infringement, improperly collapsing the likelihood of success and the irreparable harm factors. Plaintiffs seeking injunctive relief, including in the trademark infringement context, must provide evidence sufficient to establish a likelihood of irreparable harm, the court concluded. The court reversed and remanded the district court’s order granting the preliminary injunction.

For more information, please contact Jonathan Zavin, W. Allan Edmiston, David Grossman, Tal Dickstein or Meg Charendoff.

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