HRE v. Florida Entertainment Mgmt., No. 12-16868 (9th Cir. 2013)
Annotate this CaseMarshak appealed the district court's preliminary injunction for HRE enjoining Marshak from using the "The Platters" mark in connection with any vocal group with narrow exceptions. At issue was whether the likelihood of irreparable harm must be established - rather than presumed, as under prior Ninth Circuit precedent - by a plaintiff seeking injunctive relief in the trademark context. Following eBay v. MarcExchange and Winter v. Natural Res. Def. Council, Inc., a plaintiff seeking a preliminary injunction in a trademark infringement case must establish irreparable harm. The court concluded that HRE was not foreclosed from bringing the underlying suit where prior New York actions (Marshak I and Marshak II) did not have res judicata effect; HRE's trademark infringement claim and request for preliminary injunction was not precluded by the doctrine of laches; the record supported the district court's determination that HRE did not abandon "The Platters" mark; but the fact that the district curt made no factual findings that would support a likelihood of establishing irreparable harm, led the court to reverse the preliminary injunction and to remand to the district court.
Court Description: Trademark/Preliminary Injunction. Reversing the district court’s grant of a preliminary injunction against defendants’ use of the mark “The Platters” in connection with a vocal group, the panel held that the likelihood of irreparable harm must be established, rather than presumed, by a plaintiff seeking injunctive relief in the trademark context. The panel affirmed the district court’s holding that earlier New York actions did not have res judicata effect. The panel also held that the plaintiff was not barred by laches from challenging defendants’ use of the mark. As to the plaintiff’s likelihood of success on the trademark infringement claim, the panel held that the district court did not err in concluding that the defendants failed to meet their burden of strictly proving the affirmative defense of trademark abandonment. The panel held that in light of eBay v. MarcExchange, LLC, 547 U.S. 388 (2006), and Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008), a plaintiff seeking a preliminary injunction in a trademark infringement case must establish irreparable harm. The panel concluded that even though the district court identified the correct legal principle, the record did not support a determination of the likelihood of irreparable harm. Concurring, Judge Wallace agreed that the district court’s preliminary injunction should be reversed. He wrote separately to emphasize that the panel was solely reviewing a preliminary injunction and thus could express no views on issues arising after a trial dealing with a permanent injunction.
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