Apparently, “the smoke gets in your eyes” when a court is asked to determine irreparable harm in a trademark injunction. Last year, the Ninth Circuit vacated an injunction granted in favor of the owner of “The Platters” trademark in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013). Herb Reed, owner of the original trademark for the Rock and Roll Hall of Fame group with such notable classic hits as “The Great Pretender” and “Smoke Gets in your Eyes,” obtained a permanent injunction in district court preventing a tribute group from using the name “The Platters.” The District Court found that the Plaintiff had established the likelihood of success in proving ownership of a valid, protectable mark in “The Platters,” and that Respondents were using a confusingly similar mark, i.e., The Platters. The District Court focused upon the ordinary caution exercised by music show ticket purchasers and found, without evidence of actual confusion, that the identical names, clothing styles and musical hits could confuse a consumer into believing they were seeing the modern iteration of the original group. The Ninth Circuit disagreed and found that the District Court’s consideration of evidence on “irreparable harm” was simply conclusory and vague. The Ninth Circuit essentially extended the Supreme Court’s ruling in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006) – which rejected the longstanding presumption of irreparable harm in patent cases – and ruled that irreparable harm cannot be presumed in trademark cases. Without additional evidence of irreparable harm, the Ninth Circuit found the District Court’s opinion erroneous because it effectively and improperly applied a presumption of irreparable harm based solely on a strong case of trademark infringement. Plaintiff petitioned the Supreme Court to consider the appeal to resolve the question of what evidentiary proof is necessary to support a trademark injunction and whether eBay should be extended to trademark cases.
The Supreme Court recently declined to accept the petition and resolve the legal questions involved. The refusal to hear the case leaves circuit and district courts in disarray as there is no clear guidance for exactly what a plaintiff must show to prove “irreparable harm” when plaintiff has already established a strong case of trademark infringement based upon confusingly similar marks. The current case law lacks direction on whether Herb Reed Enterprises must drag into court actual ticket buyers to testify as to their real confusion in attending The Platters concert without seeing any senior citizen or octogenarian original singers and dancers or disappointingly being led to believe the owner of The Platters trademark was in control of the performances.
Counsel for Herb Reed Enterprises gave strong reasons for the Supreme Court to grant the petition in order to clarify that eBay should not be extended to trademark cases: (1) significant differences between patent and trademark cases necessitate guidance from the Supreme Court on whether the eBay logic should apply or to what extent; (2) Circuits are divided on the evidence necessary for preliminary injunctive relief in trademark cases; (3) district courts hear injunction cases often on hurried records which necessitates specific guidance for the judges to evaluate the evidence necessary to show irreparable harm; and (4) likely irreparable injury is most often established from the same evidence as likely success on the merits in trademark infringement. The leading scholars on trademark injunctions agree with this last and important point:
“Where there is substantial probability of confusion because of defendant’s use of the same or a confusingly similar trademark, irreparable injury ordinarily follows.” 3 Jerome Gilson, et al. Trademark Protection and Practice § 8-7 at 8-150 (Matthew Bender) (2002). 11A Wright, Miller & Kane, Federal Practice & Procedure §2948.1 at 166 (3rd Ed. 2013) (“In trademark infringement cases, a showing of ‘likelihood of confusion’ between the trademarks suffices to establish both irreparable injury and likelihood of success on the merits.”)
This logic should prevail over the logic in eBay which overturned the presumption of irreparable harm in patent cases. One of the fundamental rights of a trademark owner is to control the use of the mark whether it is associated with food, clothing, merchandise, or Motown music and dance. Once a confusingly similar mark is being used outside of that control, the harm to reputation and good will cannot be easily quantified in dollars.
In declining to address the issue of whether its ruling in eBay should be extended to trademark cases, the Supreme Court substantially weakened a trademark owner’s ability to obtain preliminary and permanent injunction relief. Once a trademark owner loses control over the use of its own trademark by finding an infringer using a confusingly similar mark, irreparable harm can and should be presumed without detailed showing of additional evidence of actual confusion. Without this clarification, a trademark owner is left to a less than savory practice of forum shopping to seek relief in a circuit that does not apply eBay to trademark cases.