Ninth Circuit Rejects Presumption Of Irreparable Harm For Trademark Owners

Reversing decades of precedent, on Monday the Ninth Circuit ruled that trademark owners no longer enjoy a presumption of irreparable harm when seeking a preliminary injunction. As we wrote last year, the presumption of irreparable harm had been in doubt in light of Supreme Court precedent in the patent context. In Herb Reed Enterprises, LLC v. Florida Entertainment Management, No. 12-16868 (Dec. 2, 2013), the Ninth Circuit finally confronted the issue directly, holding: "Those seeking injunctive relief must proffer evidence sufficient to establish a likelihood of irreparable harm."

The Way It Was: The Presumption of Irreparable Harm in Trademark Cases

Although plaintiffs seeking preliminary injunctions must normally show that they will be irreparably harmed without an injunction, for decades trademark owners—once they had shown a likelihood of success on their infringement claims—have enjoyed a presumption of irreparable harm. Two Supreme Court decisions in 2006 and 2008 threw that presumption into question. First, in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Court held that it was error to apply a "general rule" in patent cases that permanent injunctions should issue once validity and infringement had been determined. Second, in Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), the Court held that a party seeking an injunction in a non-patent case must show that irreparable harm is "likely," not merely "possible."

Following these decisions, the fate of the presumption of irreparable harm in trademark cases was unclear. Shortly after eBay, the Ninth Circuit cited that decision in affirming a permanent trademark injunction, but without discussing the presumption of irreparable harm. Reno Air Racing Ass'n, Inc., v. McCord, 452 F.3d 1126, 1137-38 (9th Cir. 2006). Several years later, the Ninth Circuit applied the presumption or irreparable harm to a preliminary trademark injunction, without discussing eBay or Winter. Marlyn Nutraceuticals v. Mucos Pharma GMBH, 571 F.3d 873, 877 (9th Cir. 2009).

While some practitioners argued that Marlyn Nutraceuticals signaled the presumption's continuing survival, at least in the preliminary injunction context, a subsequent Ninth Circuit decision cautioned against reliance on Marlyn. In Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., 654 F.3d 989 (9th Cir. 2011) the court noted that Marlyn Nutraceuticals' "summary treatment of the presumption without...