From the final conclusion of the Louboutin/YSL red shoe spat, to the creation of the Trademarks Clearinghouse for new gTLDs, trademark law was in the news in 2013. This article highlights what we have learned from five key cases and developments in 2013.
4. Presumption of irreparable harm rejected
Joining the 11th and 6th Circuit Courts of Appeal, the 9th Circuit has held that trademark owners no longer enjoy a presumption of irreparable harm when seeking a preliminary injunction. In 2006, the Supreme Court had 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. Two years later, the Court held that a party seeking an injunction in a non-patent case must show that irreparable harm is “likely” not merely “possible.” These two decisions called into question whether the presumption could be applied in trademark cases, an issue squarely addressed in Herb Reed Enter. LLC v. Florida Enterm’t Management (PDF). The plaintiff in Herb Reed had obtained a preliminary injunction prohibiting the use of THE PLATTERS in connection with any vocal group and the defendant appealed. The 9th Circuit determined that the district court erred in presuming irreparable harm noting that the decision was “cursory and conclusory rather than being grounded in any evidence”. In a footnote, the circuit reminded litigants that the rules of evidence do not apply strictly at the preliminary injunction stage, and hearsay evidence may be offered to support a finding of irreparable harm.