Supreme Court Denies Cert In Herb Reed: Circuits To Remain Out Of Tune As To Presumption Of Irreparable Harm

The United States Supreme Court denied certiorari on October 6, 2014, in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., leaving trademark litigants uncertain as to whether to apply the traditional presumption of irreparable harm at the preliminary injunction stage.

Before 2006, it was well-established that a trademark owner seeking a preliminary injunction was entitled to a rebuttable presumption of irreparable harm upon a showing of a likelihood of success on the merits. But, following the Supreme Court's decisions in eBay v. MercExchange, 547 U.S. 388 (2006), and Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008), application of the presumption has been inconsistent in trademark cases. The denial of certiorari means the rule varies depending on the circuit in which the case is brought.

The eBay and Winter Decisions

Courts and commentators have struggled with the applicability of eBay and Winter in the trademark context. In eBay, the Supreme Court rejected the Federal Circuit's categorical rule that a permanent injunction should automatically issue once patent infringement has been shown. The Court held that in cases involving patent infringement claims, lower courts must analyze the traditional four-factor test to determine whether a preliminary injunction should issue.

Similarly, in Winter, an environmental case, the Supreme Courtexamined the level of harm that must be shown before a preliminary injunction will issue, ultimately rejecting the Ninth Circuit's generally applicable rule that "when a plaintiff demonstrates a strong likelihood of prevailing on the merits, a preliminary injunction may be entered based only on a 'possibility' of irreparable harm." To the contrary, the Supreme Court reinforced that "irreparable injury [must be] likely in the absence of an injunction."

As a result of the eBay and Winter decisions, most courts have discarded the presumption of irreparable harm in patent and copyright cases. But, it has been unclear whether, and to what extent, eBay and Winter should apply to trademark cases.

Should eBay and Winter Apply to Trademark Cases?

Some advocate that the differences between trademark rights and other intellectual property rights make applicability of eBay and Winter inappropriate in the trademark context. First, the harm caused by infringement is different. For patent and copyright owners, infringement causes monetary harm that can be measured. But, for trademark...