Supreme Court Declines Opportunity to Clarify Irreparable Harm Prong for Trademark Practitioners

Author: Whitney Devin Cooke

The U.S. Supreme Court has declined a petition filed by the estate of Herb Reed and thereby the opportunity to define the showing of irreparable harm that a trademark plaintiff must make to obtain a preliminary injunction.

In Herb Reed Enterprises LLC v. Florida Entertainment Management Inc. (Case No. 13-1271), the estate of Herb Reed, lead singer of the Platters, appealed the Ninth Circuit’s decision that a trademark infringement plaintiff must establish irreparable harm to obtain preliminary injunctive relief. The Ninth Circuit decision followed a trial court’s ruling that enjoined concert promoter Larry Marshak from using the “Platters”’ famous name in tribute concerts. On appeal, the Ninth Circuit held that the district court’s assessment of the irreparable harm prong had been “cursory and conclusory,” and was not grounded in evidence.

The Supreme Court’s denial of certiorari in Herb Reed means that trademark plaintiffs must continue to await clarification on the impact of the Court’s holding in eBay Inc. v. MercExchange, L.L.C. In that patent case, the Supreme Court found that plaintiffs could not presume irreparable harm once they had shown a likelihood of success on their infringement claims, but needed to actually prove such harm. Ever since, circuit courts, including the Ninth Circuit, have grappled with whether the eBay standard applies equally to trademark cases.

Though the Ninth Circuit decision in Herb Reed did not explicitly state that eBay removed the presumption of irreparable harm, its analysis of the trial court’s decision reached the same result, finding that the trial court was trying to effectively “reinsert the now rejected presumption.” Without further clarification from the Supreme Court, the continued application of eBay to preliminary injunction analyses in trademark cases will have a sizable impact on trademark owners’ ability to obtain preliminary injunctive relief. Under such circumstances, a plaintiff’s unsubstantiated statements about “loss of control over business reputation” and “damage to goodwill” may prove inadequate to demonstrate irreparable harm absent actual proof showing the risk of continued use of an allegedly infringing mark, such as lost sales, angry customers or threats to market share.


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