Ninth Circuit Rejects Presumption Of Irreparable Harm For Trademark Owners

Reversing decades of precedent, the Ninth Circuit Court of Appeals recently eliminated the presumption of irreparable harm for trademark owners seeking a preliminary injunction. The presumption of irreparable harm had been in doubt for several years following Supreme Court precedent in the patent context. In Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013), the Ninth Circuit finally confronted whether that precedent applied in the trademark context, holding: "Those seeking injunctive relief must proffer evidence sufficient to establish a likelihood of irreparable harm."

Although plaintiffs seeking preliminary injunctions must normally prove irreparable harm, for decades trademark owners could presume such harm once they had shown a likelihood of success on their infringement claims. Two Supreme Court decisions in 2006 and 2008 threw that presumption into question. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) jettisoned presumption in patent cases. Then Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) required parties in a non-patent case to show that irreparable harm was "likely," not merely "possible."

The Ninth Circuit did not immediately extend eBay and Winter to trademark cases. In fact, three years after eBay, the Ninth Circuit invoked the presumption in affirming a preliminary trademark injunction. Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873 (9th Cir. 2009). But shortly after, Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., 654 F.3d 989 (9th Cir. 2011), a copyright case, criticized, but did not reverse, Marlyn Nutraceuticals' "summary treatment of the presumption." With the Herb Reed decision, the presumption is officially dead.

The underlying dispute in Herb Reed Enterprises concerned trademark rights to "The Platters," the name of the successful 1950s vocal group. On appeal from the district court's grant of a preliminary injunction, the Ninth Circuit reversed the district court's finding of irreparable harm.

Addressing the crux of the matter, the Ninth Circuit clarified its new rule: "We now join other circuits in holding that the eBay principle—that a plaintiff must establish irreparable harm—applies to a preliminary...