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Following eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, and Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, the U.S. Court of Appeals for the Ninth Circuit held that likely irreparable harm must be demonstrated to obtain a preliminary injunction in a copyright infringement case and that actual irreparable harm must be demonstrated to obtain a permanent injunction in a trademark infringement action. Imposition of the irreparable harm requirement for a permanent injunction in a trademark case applies with equal force in the preliminary injunction context. The standard for a preliminary injunction is essentially the same as for a permanent injunction except that "likelihood of" is replaced with "actual". The Ninth Circuit now joins other circuits in holding that the eBay principle—that a plaintiff must establish irreparable harm—applies to a preliminary injunction in a trademark infringement case.
"The Platters"—the legendary name of one of the most successful vocal performing groups of the 1950s—lives on. Larry Marshak and his company Florida Entertainment Management, Inc. (collectively "Marshak") challenged the district court's preliminary injunction in favor of Herb Reed Enterprises ("HRE"), enjoining Marshak from using the "The Platters" mark in connection with any vocal group with narrow exceptions.
Must the likelihood of irreparable harm be established—rather than presumed, as under prior Ninth Circuit precedent—by a plaintiff seeking injunctive relief in the trademark context?
The court held that prior actions did not have issue or claim preclusion effect because the holder was not relitigating issues that were or could have been raised in prior actions and certain prior actions did not come to final judgments on the merits. There was no abandonment of the mark under 15 U.S.C.S. § 1127 because the receipt of royalties was a limited usage of the mark, particularly as the holder was constrained by a settlement agreement. Rather than relying on a presumption of irreparable harm, the holder was required to establish irreparable harm to obtain a preliminary injunction under 15 U.S.C.S. § 1116(a), and the record did not support such a determination because there was no irreparable harm evidence in the record.